Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA779593
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`Filing date:
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`10/28/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`92063390
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Mr.ArjunWaney
`
`NEDA LAJEVARDI
`LOTT & FISCHER PL
`PO DRAWER 141098
`CORAL GABLES, FL 33114-1098
`UNITED STATES
`kclayman@lottfischer.com, nlajevardi@lottfischer.com, ljlott@lottfischer.com
`
`Motion to Suspend for Civil Action
`
`Neda Lajevardi
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`nlajevardi@lottfischer.com, kclayman@lottfischer.com
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`s/Neda Lajevardi/
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`10/28/2016
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`Motion for Suspension 10.28.2016.pdf(38568 bytes )
`EXHIBIT A.pdf(2090733 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Mr. Arjun Waney, a citizen of the United
`States and the United Kingdom,
` Petitioner,
`
`v.
`
`305 Concepts Holdings, LLC, a Florida
`limited liability company,
` Registrant.
`
`
`
`
`Cancellation No.: 92063390
`
`PETITION TO CANCEL
`Registration No. 4,809,293
`Issued: September 8, 2015
`Mark: COYO
`
`
`PETITIONER’S MOTION TO SUSPEND PROCEEDINGS
`
`
`
`
`Petitioner, MR. ARJUN WANEY, a citizen of the United States and the United
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`Kingdom (“Mr. Waney” or “Petitioner”), pursuant to TBMP § 510.02(a) and 37 C.F.R. §
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`2.117(a), hereby notifies the Trademark Trial and Appeal Board (“TTAB” or “Board”)
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`that all of the parties to this action are currently parties to a civil action before the United
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`States District Court for the Southern District of Florida, styled Mr. Arjun Waney, a
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`citizen of the United States and the United Kingdom and Coya Restaurants LLC, a
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`Florida limited liability company v. 305 Concepts, LLC, a Florida limited liability
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`company, 305 Concepts Holdings, LLC, a Florida limited liability company, 305
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`Concepts Wynwood, LLC, a Florida limited liability company, and Latino Concepts LLC,
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`a Florida limited liability company, Case No. 1:16-cv-24398/Cooke-Torres (S.D. Fla.
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`October 18, 2016) (the “Federal Court Action”). A copy of the Complaint of the Federal
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`Court Action is attached hereto as Exhibit A.
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`
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`The Federal Court Action involves the same parties (plus additional parties) and
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`the subject trademarks. Determination of the issues before the Southern District of
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`1
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`LOTT & FISCHER, PL • P.O. Drawer 141098 • Coral Gables, Florida 33114-1098
` Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Florida will be dispositive of the issue of entitlement to registration that is before the
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`TTAB. They include Petitioner’s prior constructive use and Registrant’s knowledge of
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`Petitioner’s prior constructive use and rights in his trademark. The Federal Court Action
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`also concerns issues of infringement and use, and seeks relief that is not available from
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`the TTAB including preliminary and permanent injunctions, damages and attorney’s fees.
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`See General Motors Corp v. Cadillac Club Fashions, Inc., 22 USPQ2d 1933 (TTAB
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`1992) (relief sought in federal district court included an order directing Office to cancel
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`registration involved in cancellation proceeding); Goya Foods Inc. v. Tropicana Products
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`Inc., 846 F.2d 848, 6 USPQ2d 1950, 1954 (2nd Cir. 1988) (doctrine of primary
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`jurisdiction might be applicable if a district court action involved only the issue of
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`registrability, but would not be applicable where court action concerns infringement
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`where the interest in prompt adjudication far outweighs the value of having the views of
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`the USPTO); American Bakeries Co. v. Pan-O-Gold Baking Co., 650 F. Supp. 563, 2
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`USPQ2d 1208 (D. Minn. 1986) (primary jurisdiction should not be invoked where, inter
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`alia, the district court action includes claims which cannot be raised before the Board).
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`
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`In light of the Federal Court Action and the relief sought that is not available from
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`the TTAB, Petitioner moves the TTAB to suspend this proceeding until termination of
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`the Federal Civil Action. Should this motion be granted, Petitioner undertakes to
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`promptly notify the TTAB upon termination of the Federal Civil Action.
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`
`
`
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`Currently, there are no pending motions before the TTAB.
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`For all of the reasons discussed herein, Petitioner respectfully requests suspension
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`of all remaining deadlines in the instant proceeding pending termination of the Federal
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`Civil Action.
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`2
`
`LOTT & FISCHER, PL • P.O. Drawer 141098 • Coral Gables, Florida 33114-1098
` Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

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`
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`Date: October 28, 2016
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`
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`
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`Docket No. 23055-1-8810
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`Respectfully submitted,
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`LOTT & FISCHER, PL
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`s /Neda Lajevardi/
`
`Neda Lajevardi, Esq.
`Leslie J. Lott, Esq.
`P.O. Drawer 141098
`Coral Gables, FL 33114-1098
`(305) 448-7089
`
`Attorneys for Petitioner
`Mr. Arjun Waney
`
`
`
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`
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that the foregoing PETITION TO CANCEL was served
`upon the Registrant by delivering true and correct copies of same to Registrant and
`counsel for Registrant via Federal Express on October 28, 2016 as follows:
`
`Michael B. Chesal, Esq.
`Josh E. Saltz, Esq.
`Peretz Chesal & Herrmann, PL
`2 South Biscayne Blvd.
`Suite 3700
`Miami, FL 33131
`Telephone: 305-341-3000
`
`305 Concepts Holdings, LLC
`7929 West Drive
`Suite 1001
`North Bay Village, Florida 33141
`
`
`
`s /Neda Lajevardi/
`Neda Lajevardi
`
`
`
`3
`
`LOTT & FISCHER, PL • P.O. Drawer 141098 • Coral Gables, Florida 33114-1098
` Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`
`
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`EXHIBIT A
`EXHIBIT A
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`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 1 of 17
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`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`
`CASE NO.
`
`
`
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`
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`Plaintiffs,
`
`
`
`
`
`
`
`
`
`
`
`
`JURY TRIAL DEMANDED
`
`MR. ARJUN WANEY, a citizen of the United
`States and the United Kingdom, and COYA
`RESTAURANTS LLC, a Florida limited
`liability company,
`
`
`
`
`
`vs
`
`305 CONCEPTS, LLC, a Florida limited
`liability company, 305 CONCEPTS
`HOLDINGS, LLC, a Florida limited liability
`company, 305 CONCEPTS WYNWOOD,
`LLC, a Florida limited liability company, and
`LATINO CONCEPTS LLC, a Florida limited
`liability company,
`
`Defendants.
`
`
`________________________________/
`
`PLAINTIFFS MR. ARJUN WANEY AND COYA RESTAURANTS LLC’S COMPLAINT
`AND DEMAND FOR JURY TRIAL
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`Plaintiffs, MR. ARJUN WANEY, (“Mr. Waney”), a citizen of the United States and the
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`
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`United Kingdom, and COYA RESTAURANTS LLC (“COYA Restaurants”), a Florida limited
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`liability company, (collectively, “Plaintiffs”), bring this action for Federal Trademark
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`infringement, False Designation of Origin, and Cancellation of a U.S. Trademark Registration,
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`against Defendants 305 CONCEPTS, LLC (“305 Concepts”); 305 CONCEPTS HOLDINGS,
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`LLC (“305 Concepts Holdings”); 305 CONCEPTS WYNWOOD, LLC (“305 Concepts
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`Wynwood”); and LATINO CONCEPTS LLC (“Latino Concepts”), Florida limited liability
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`companies (collectively “Defendants”) and, in support thereof, state as follows:
`
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 2 of 17
`
`NATURE OF ACTION
`
`1.
`
`This is an action for injunctive and other relief under the Federal Trademark Act,
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`15 U.S.C. § 1051, et seq. (“Lanham Act”), particularly for i) trademark infringement, 15 U.S.C.
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`§ 1114; ii) false designation of origin, 15 U.S.C. § 1125(a); and iii) cancellation of a federal
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`trademark registration, 15. U.S.C. § 1119.
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`JURISDICTION AND VENUE
`
`2.
`
`This Court has original subject matter jurisdiction over the federal trademark
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`infringement and false designation of origin claims, and jurisdiction to direct that a federal
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`trademark registration be cancelled, pursuant to 15. U.S.C. §§ 1119 and 1121, and 28 U.S.C. §§
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`1331, 1332 and 1338, in that these claims arise under federal statutes.
`
`3.
`
`This Court has personal jurisdiction over Defendants, pursuant to Fla. Stat. §
`
`48.193(1)(a)(1) and (2), because: (i) Defendants conduct business, namely, rendering and/or
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`offering to render services, including those central to the allegations of this lawsuit, in the state
`
`of Florida and in this judicial district; and (ii) Defendants have committed tortious acts within the
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`state of Florida and in this judicial district.
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`4.
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` Alternatively, this Court has personal jurisdiction over Defendants pursuant to
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`Fla. Stat. § 48.193(2) because Defendants are engaged in substantial and not isolated activity
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`within the state of Florida, namely, restaurant services.
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`5.
`
`Venue is proper in this District, pursuant to 28 U.S.C. §§ 1391(b) and 1391(c),
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`because the injuries from the Defendants’ actions are felt in this district, where COYA
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`Restaurants’ principal place of business is located, and because Defendants are subject to
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`personal jurisdiction in this district.
`
`2
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 3 of 17
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`THE PARTIES
`
`6.
`
`Mr. Waney is a citizen of the United States and the United Kingdom, with an
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`address at 118 Piccadilly, London, United Kingdom, W1J 7NW.
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`7.
`
`COYA Restaurants is a Florida limited liability company with a principal address
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`at 8950 SW 74th Court, Suite 1704, Miami, Florida, 33158. COYA Restaurants has rendered and
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`offered to render, and continues to render and offer to render, restaurant services bearing the
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`COYA mark, in this district.
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`8.
`
`Upon information and belief, Defendant 305 Concepts is a Florida limited liability
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`company with an address at 2300 NW 2nd Avenue, Miami, Florida 33127. 305 Concepts has
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`rendered and offered to render restaurant services bearing the COYO mark, in this district.
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`9.
`
`Upon information and belief, Defendant 305 Concepts Holdings is a Florida
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`limited liability company with an address at 250 SW 23rd Street, #312, Miami, Florida 33127.
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`305 Concepts Holdings has rendered and offered to render, and continues to render and offer to
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`render, restaurant services bearing the COYO mark, in this district.
`
`10.
`
`Upon information and belief, Defendant 305 Concepts Wynwood is a Florida
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`limited liability company with an address at 250 SW 23rd Street, #312, Miami, Florida 33127.
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`305 Concepts Wynwood has rendered and offered to render, and continues to render and offer to
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`render, restaurant services bearing the COYO mark, in this district.
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`11.
`
`Upon information and belief, Defendant Latino Concepts is a Florida limited
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`liability company with an address at 250 SW 23rd Street, #312, Miami, Florida 33127. Latino
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`Concepts has rendered and offered to render, and continues to render and offer to render,
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`restaurant services bearing the COYO mark, in this district.
`
`3
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 4 of 17
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`FACTUAL BACKGROUND
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`12. Mr. Waney is the owner of, and has used worldwide, the mark COYA in
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`connection with restaurant services for many years. Mr. Waney holds a federal trademark
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`registration for COYA, Trademark Registration No. 4,748,311 for “[r]estaurant, bar and catering
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`services” in International Class 043, filed on June 14, 2012 and registered on June 2, 2015 (the
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`“COYA Federal Registration”). Mr. Waney and COYA Restaurants have engaged in the
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`restaurant business in the United States in connection with the COYA mark since at least as
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`early as March 12, 2015. A true and correct copy of the registration certificate for the COYA
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`Federal Registration is attached as Exhibit A.
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`13.
`
`COYA Restaurants is a licensee of the COYA mark, and is licensed to render and
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`offer to render restaurant services bearing the COYA mark. COYA Restaurants renders
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`restaurant services bearing the COYA mark, in this district, at 999 Brickell Avenue, Miami,
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`Florida, 33131.
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`14. Mr. Waney is the owner of a number of other trademark applications and
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`registrations for COYA and COYA and Design, including United Kingdom trademark
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`registrations for COYA and COYA and Design; a European Union trademark registration for
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`COYA; a European Union trademark application for COYA and Design; a China trademark
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`application for COYA and Design; a Hong Kong trademark registration for COYA; a Hong
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`Kong trademark application for COYA and Design; a Switzerland trademark registration for
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`COYA; a Singapore trademark application for COYA; and a Turkey trademark application for
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`COYA. Mr. Waney’s COYA mark identifies Mr. Waney’s world-renowned COYA restaurants
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`with locations in London, England; Dubai, United Arab Emirates; and Miami, Florida, which are
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`advertised and promoted internationally at www.coyarestaurant.com.
`
`4
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 5 of 17
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`15. Mr. Waney’s COYA mark is a widely recognized and distinctive trademark
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`which has been validly used by Plaintiffs in the United States, in interstate commerce,
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`continuously and exclusively since at least as early as March 12, 2015, in connection with
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`restaurant services, when it opened its Miami, Florida restaurant at 999 Brickell Avenue, Miami,
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`Florida (the “Brickell COYA Restaurant”).
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`16. Mr. Waney, through his predecessor in interest, has had constructive use of the
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`COYA mark in the United States since at least as early as the COYA Federal Registration
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`application filing date on June 14, 2012.
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`17.
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`The COYA mark is symbolic of extensive goodwill and consumer recognition
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`built by Mr. Waney through substantial amounts of time, resources and effort in advertising and
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`promotion. Copies of the Brickell COYA Restaurant website homepage as it appeared on or
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`about March 30, 2015, and on or about the filing date of this action, are attached as Exhibits B &
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`C, respectively, and represent Plaintiffs’ typical use of the COYA mark.
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`DEFENDANTS’ INFRINGING ACTIVITIES
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`18.
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`On or about December 10, 2013, nearly one and a half years after Mr. Waney,
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`through his predecessor in interest, established nationwide constructive use and priority in and to
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`the COYA mark in connection with restaurant services, and unbeknownst to Plaintiffs, 305
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`Concepts filed a federal “intent-to-use” trademark application for the mark COYO, Trademark
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`Application Serial No. 86/139,490 (the “COYO Application”), in connection with “[r]estaurant
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`services” in International Class 043, which registered on September 8, 2015 as Trademark
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`Registration No. 4,809,293 (the “COYO Federal Registration” or the “Infringing Mark”).
`
`19.
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`On information and belief, on or about December 23, 2014, 305 Concepts, and
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`305 Concepts Wynwood, began using the mark COYO in the state of Florida in connection with
`
`5
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 6 of 17
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`its restaurant services at 2300 NW 2nd Ave in Wynwood, Miami, Florida (the “Wynwood
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`COYO”).
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`20.
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`On information and belief, based solely upon the records of the United States
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`Patent and Trademark Office, on or about February 24, 2016, 305 Concepts assigned the COYO
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`Federal Registration to 305 Concepts Holdings.
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`21.
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`On information and belief, 305 Concepts Holdings, together with Latino
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`Concepts, renders restaurant services at a COYO restaurant at 1111 SW 1st Street in Brickell,
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`Miami, Florida, which opened on or about May 11, 2016 (the “Brickell COYO”).
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`22.
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`On information and belief, 305 Concepts Holdings, together with 305 Concepts
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`Wynwood, rendered restaurant services at a COYO restaurant at a temporary location at 1901
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`Collins Avenue, South Beach, Florida, which opened on or about November 2015 (the “South
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`Beach COYO”). The South Beach COYO closed in the spring 2016.
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`23.
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`Attached as Exhibits D, E, and F to this Complaint are images of restaurant
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`signage, menu and Internet screenshots (“Infringing Materials”) used by Defendants, which
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`conspicuously depict their use of the Infringing Mark in connection with their restaurant
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`services, and provide a false impression to the public that Defendants are the same as, affiliated
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`with, or connected to Plaintiffs.
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`24. Well before the time that Defendants began using the Infringing Mark in
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`connection with restaurant services, and well before 305 Concepts filed its “intent-to-use”
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`trademark application for the Infringing Mark, Defendants had constructive notice of Mr.
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`Waney’s nearly identical COYA trademark and its use with identical services.
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`25.
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`On information and belief, 305 Concepts, together with 305 Concepts Wynwood,
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`opened the Wynwood COYO on December 23, 2014, and rendered, and offered to render,
`
`6
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 7 of 17
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`restaurant services employing the Infringing Mark as depicted in Paragraph 25.
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`26. Mr. Waney, shortly after learning of 305 Concepts’ conflicting COYO
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`Application and of the opening of the Wynwood COYO restaurant, sent a letter through his
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`counsel to counsel for 305 Concepts, advising of the infringement and of Mr. Waney’s interest in
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`resolving the matter whereby 305 Concepts would change its restaurant name and mark so that it
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`would not conflict with or appear confusingly similar to Mr. Waney’s restaurant name and mark.
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`27.
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`Thereafter, the parties attempted to resolve this matter amicably to eliminate any
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`likelihood of confusion; however, during the course of negotiations, unbeknownst to Plaintiffs,
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`Defendants opened the South Beach COYO restaurant on or about November 2015.
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`Subsequently, on March 23, 2016, Mr. Waney filed a Petition to Cancel the COYO Federal
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`Registration, Cancellation Proceeding No. 92063390 (“Petition to Cancel”).
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`28.
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`The parties resumed negotiations after the filing of the Petition to Cancel;
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`however, during the course of negotiations, and again unbeknownst to Plaintiffs, Defendants
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`opened the Brickell COYO restaurant.
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`29.
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`Subsequent to the opening of the Brickell COYO restaurant, Plaintiffs became
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`aware of instances of actual confusion between Plaintiffs’ COYA restaurant and mark and the
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`COYO restaurants and the COYO mark.
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`30.
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`Upon learning of instances of actual confusion, Plaintiffs insisted that Defendants
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`cease use of the Infringing Mark.
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`31.
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`Given the instances of actual confusion between Mr. Waney’s and 305 Concepts
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`Holdings’ respective marks, Defendants’ continued use of the Infringing Mark is likely to cause
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`confusion, to cause mistake, or to deceive consumers as to the source, origin or authenticity of
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`Defendants’ restaurant services, all to the detriment of Plaintiffs, and the COYA trademark.
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`7
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 8 of 17
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`32.
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`Defendants continue to infringe Mr. Waney’s COYA trademark in an attempt to
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`profit from the goodwill and consumer recognition associated with the COYA trademark.
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`33.
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`Defendants’ adoption and continued use of the Infringing Mark, with full
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`knowledge of Mr. Waney’s superior rights, a strong likelihood of confusion, and in the face of
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`evidence of actual confusion, constitutes willful infringement of Mr. Waney’s trademark rights.
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`34.
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`Plaintiffs have sustained damages and have been irreparably harmed by
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`Defendants’ continued infringement. Unless Defendants’ infringement is stopped, Plaintiffs will
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`continue to suffer damage and irreparable harm.
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`COUNT I
`FEDERAL TRADEMARK INFRINGEMENT
`15 U.S.C. § 1114
`(ASSERTED BY ALL PLAINTIFFS AGAINST ALL DEFENDANTS)
`
`The allegations of paragraphs 1 through 34 of the Complaint are repeated and
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`35.
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`realleged as though fully set forth herein.
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`36.
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`The actions of Defendants described above, including their infringement of the
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`COYA Federal Registration, in commerce, to advertise, promote, market and sell their services
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`throughout the United States, constitute trademark infringement in violation of the Lanham
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`Trademark Act, including, but not limited to 15 U.S.C. § 1114.
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`37.
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`The infringing services that Defendants have offered, and are continuing to offer,
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`advertise, market and/or render are likely to cause confusion, mistake, or deception as to their
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`source, origin, or authenticity.
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`38.
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`Further, Defendants’ activities are likely to lead the public to conclude,
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`incorrectly, that the infringing services that Defendants are advertising, marketing and/or
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`rendering originate with or are authorized by Plaintiffs, to the detriment and harm of Plaintiffs
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`and the public.
`
`8
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 9 of 17
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`39.
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`Upon information and belief, Defendants offered, advertised, marketed and/or
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`rendered infringing services intentionally, and with the purposes of willfully misleading,
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`deceiving, or confusing customers and the public as to the origin and authenticity of the
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`infringing services, and of trading upon Plaintiffs’ business reputation.
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`40.
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`As a result of their wrongful conduct, Defendants are liable to Plaintiffs for
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`trademark infringement under 15 U.S.C. § 1114.
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`41.
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`Plaintiffs have been injured by Defendants’ conduct and are entitled to recover,
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`pursuant to 15 U.S.C. § 1117(a), Defendants’ profits from the infringement, up to three times the
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`amount of actual damages sustained by Plaintiffs as a result of the infringement, and the costs of
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`this action.
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`42.
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`Plaintiffs are also entitled to injunctive relief, pursuant to 15 U.S.C. § 1116(a),
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`and to an order compelling the impounding of all infringing materials being offered, advertised,
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`marketed and/or rendered by Defendants.
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`43.
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`Plaintiffs have no adequate remedy at law for Defendants’ wrongful conduct
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`because, among other things, (a) the COYA Federal Registration and trademark are unique and
`
`valuable properties which have no readily determinable market value; (b) Defendants’
`
`infringement constitutes harm to Plaintiffs, such that Plaintiffs could not be made whole by any
`
`monetary award; (c) if Defendants’ wrongful conduct is allowed to continue, the public is likely
`
`to become confused, mistaken, or deceived as to the source, origin, or authenticity of the
`
`infringing services; and (d) Defendants’ wrongful conduct, and the resulting damage to
`
`Plaintiffs, is continuing.
`
`44.
`
`The actions of Defendants, if not enjoined, will continue. Plaintiffs have suffered
`
`and continue to suffer damages in an amount to be proven at trial consisting of, among other
`
`9
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

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`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 10 of 17
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`things, diminution in the value of and goodwill associated with the COYA Federal Registration
`
`and injury to Plaintiffs’ business. Plaintiffs are therefore entitled to injunctive relief pursuant to
`
`15 U.S.C. § 1116.
`
`45.
`
`This case is exceptional and Plaintiffs are entitled to recover their reasonable
`
`attorney’s fees pursuant to 15 U.S.C. § 1117(a).
`
`COUNT II
`FALSE DESIGNATION OF ORIGIN
`15 U.S.C. § 1125(A)
`(ASSERTED BY ALL PLAINTIFFS AGAINST ALL DEFENDANTS)
`
`The allegations of paragraphs 1 through 34 of the Complaint are repeated and
`
`46.
`
`realleged as though fully set forth herein.
`
`47.
`
`This is an action for unfair competition and false designation of origin in violation
`
`of 15 U.S.C. § 1125(a).
`
`48.
`
`Defendants render and offer to render services under the Infringing Mark
`
`complained of herein which is confusingly similar to Mr. Waney’s COYA trademark in sound,
`
`appearance, and commercial impression. Such use unlawfully exploits the commercial value Mr.
`
`Waney has developed in the COYA trademark, and is likely to cause, and indeed has already
`
`caused, confusion or mistake as to the origin of Defendants’ restaurant and restaurant services.
`
`49.
`
`The Infringing Mark is nearly identical to Mr. Waney’s COYA trademark in that
`
`the only difference between the trademarks is the last letter of each (“A” versus “O”); the
`
`services offered under the trademarks are identical, namely, restaurant services; the restaurant
`
`services are offered through similar trade channels, target similar customers, and are specifically
`
`geared towards consumers who frequent dining establishments.
`
`50.
`
`Defendants’ use of the Infringing Mark is likely to cause, and indeed has already
`
`caused, confusion, mistake, and deception as to the affiliation of Defendants and their Infringing
`
`10
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 11 of 17
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`Mark to Plaintiffs’ restaurant and the COYA trademark.
`
`51.
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`Defendants’ use of the Infringing Mark is without the authorization, consent or
`
`approval of Plaintiffs.
`
`52.
`
`Defendants’ continued use of the Infringing Mark is likely to cause and is causing
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`Plaintiffs substantial and irreparable injury.
`
`53.
`
`As a result of its wrongful conduct, Defendants are liable to Plaintiffs for false
`
`designation of origin under 15 U.S.C. § 1125(a).
`
`54.
`
`Plaintiffs have been injured by Defendants’ conduct and are entitled to recover,
`
`pursuant to 15 U.S.C. § 1117(a), Defendants’ profits from the infringement, up to three times the
`
`amount of actual damages sustained by Plaintiffs as a result of the infringement, and the costs of
`
`this action.
`
`55.
`
`Plaintiffs have no adequate remedy at law for Defendants’ wrongful conduct
`
`because, among other things, (a) the COYA Federal Registration and trademark are unique and
`
`valuable properties which have no readily determinable market value; (b) Defendants’
`
`infringement constitutes harm to Plaintiffs such that Plaintiffs could not be made whole by any
`
`monetary award; (c) if Defendants’ wrongful conduct is allowed to continue, the public is likely
`
`to continue to become confused, mistaken, or deceived as to the source, origin, or authenticity of
`
`the infringing services; and (d) Defendants’ wrongful conduct, and the resulting damage to
`
`Plaintiffs, is continuing.
`
`56.
`
`The actions of Defendants, if not enjoined, will continue. Plaintiffs have suffered
`
`and continue to suffer damages in an amount to be proven at trial consisting of, among other
`
`things, diminution in the value of and goodwill associated with the COYA trademark and injury
`
`11
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 12 of 17
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`to Plaintiffs’ business. Plaintiffs are therefore entitled to injunctive relief pursuant to 15 U.S.C. §
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`1116.
`
`57.
`
`This case is exceptional and Plaintiffs are entitled to recover their reasonable
`
`attorney’s fees pursuant to 15 U.S.C. § 1117(a).
`
`COUNT III
`CANCELLATION OF U.S. TRADEMARK REGISTRATION NUMBER 4,809,293
`15 U.S.C. §§ 1052(D) AND 1119
`(ASSERTED BY MR. WANEY AGAINST 305 CONCEPTS HOLDINGS)
`
`The allegations of paragraphs 1 through 34 of the Complaint are repeated and
`
`58.
`
`realleged as though fully set forth herein.
`
`59.
`
`This is an action for cancellation of 305 Concepts Holdings’ registration for its
`
`COYO Federal Registration, U.S. Trademark Registration No. 4,809,293, pursuant to 15 U.S.C.
`
`§§ 1052(d) and 1119.
`
`60.
`
`According to the records of the United States Patent and Trademark Office (the
`
`“USPTO”), 305 Concepts, LLC filed its “intent-to-use” trademark application for the Infringing
`
`Mark on December 10, 2013, and began using its COYO mark on December 23, 2014, long after
`
`Mr. Waney’s predecessor in interest filed the application for the COYA Federal Registration.
`
`61.
`
`305 Concepts Holdings’ COYO Federal Registration is confusingly similar in
`
`appearance, sound, and commercial
`
`impression
`
`to
`
`the COYA Federal Registration.
`
`Additionally, the services offered under 305 Concepts Holdings’ mark and Mr. Waney’s mark
`
`are identical, namely, restaurant services.
`
`62.
`
`In view of the similarity of the parties’ respective marks and the overlapping
`
`nature of the services, 305 Concepts Holdings’ COYO Federal Registration so resembles the
`
`COYA Federal Registration as to be likely to cause consumers to continue to be confused,
`
`12
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 13 of 17
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`mistaken, or deceived into believing that 305 Concepts Holdings’ services originate from Mr.
`
`Waney or are in some way related to, associated with, approved by, or sponsored by Mr. Waney.
`
`63.
`
`Accordingly, registration of 305 Concepts Holdings’ COYO mark is prohibited
`
`by the provisions of Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in that 305
`
`Concepts Holdings’ mark consists of or comprises a mark which so resembles a mark registered
`
`in the USPTO, and previously constructively used in the United States and not abandoned, by
`
`Mr. Waney, and his predecessor in interest, in respect of identical services, so as to be likely to
`
`cause the public to be confused, mistaken or deceived.
`
`64.
`
`The continued registration of 305 Concepts Holdings’ mark is damaging to Mr.
`
`Waney because consumers are likely to attribute, and continue to attribute, the source,
`
`sponsorship, or affiliation of 305 Concepts Holdings’ restaurant services to Mr. Waney, where
`
`no such relationship exists.
`
`65. Wherefore, Mr. Waney asks this Court to direct the Director of the USPTO to
`
`cancel U.S. Trademark Registration No. 4,809,293, and to remove it from the Principal Register.
`
`PRAYER FOR RELIEF
`
`
`
`WHEREFORE, Plaintiffs pray for judgment against Defendants as follows:
`
`1.
`
`That Defendants and their agents, servants, employees, attorneys, successors, and
`
`assigns, and any and all persons acting in concert or participating with them or their successors
`
`or assigns of any of them, be preliminarily and permanently enjoined and restrained from
`
`directly or indirectly:
`
`a. Using the Infringing Mark, or any other reproduction, counterfeit, copy,
`
`derivation or colorable imitation of the COYA trademark, including but not
`
`13
`LOTT & FISCHER, PL • 355 Alhambra Circle • Suite 1100 • Coral Gables, FL 33134
`Telephone: (305) 448-7089 • Facsimile: (305) 446-6191
`
`

`

`Case 1:16-cv-24398-XXXX Document 1 Entered on FLSD Docket 10/18/2016 Page 14 of 17
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`limited to using the term “COYA” or “COYO,” in connection with rendering or
`
`offering to render restaurant or related services;
`
`b. Making any false or misleading statements regarding Plaintiffs or their services,
`
`or the relationship between Plaintiffs or the COYA trademark on the one hand,
`
`and Defendants, on the other hand;
`
`c. Committing any other acts calculated to cause consumers, advertisers, or the
`
`general public to believe that Defendants’ restaurant services are related to
`
`Plaintiffs’ restaurant services;
`
`d. Shipping, delivering, holding for sale,
`
`importing, distributing, returning,
`
`transferring, or otherwise moving or disposing of in any manner materials bearing
`
`the Infringing Mark or any other reproduction, cou