Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA846438
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`Filing date:
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`09/18/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`92066877
`
`Party
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`Correspondence
`Address
`
`Defendant
`Spin80, Inc.
`
`SPIN80 INC
`6191 NW 66 AVE
`PARKLAND, FL 33067
`UNITED STATES
`
`Submission
`
`Filer's Name
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`Filer's email
`
`Signature
`
`Date
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`Motion to Suspend for Civil Action
`
`Darren Heitner
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`darren@heitnerlegal.com, alan@heitnerlegal.com
`
`/Darren Heitner/
`
`09/18/2017
`
`Attachments
`
`Motion for Suspension w Exhibits.pdf(444617 bytes )
`
`

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`Petitioner,
`
`
`
`
`
`
`
`
`
`
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`Cancellation No. 92066877
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Registration No. 5189704
`For the mark: MODE NUTRITION
`Registered: April 25, 2017
`
`-----------------------------------------------------x
`MODE LLC,
`
`
`
`
`
`
`
`SPIN80, INC.
`
`
`
`
`----------------------------------------------------x
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`
`
`
`
`
`Registrant
`
`MOTION FOR SUSPENSION IN VIEW OF CIVIL PROCEEDING
`
`Pursuant to Trademark Trial and Appeal Board Manual of Procedure § 510.02(a) and 37
`
`CFR § 2.117(a), SPIN80, INC. (“Registrant”) hereby requests that Cancellation Proceeding No.
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`92066877 (the “Cancellation”) be suspended pending the outcome of civil action Case No.: 17-
`
`cv-61793, pending before the United States District Court, Southern District of Florida, as
`
`further set forth below, and, in support thereof, states as follows:
`
`1.
`
`On September 14, 2017, Registrant filed civil action Case No.: 17-cv-61793 (the
`
`“Civil Action”), wherein Registrant and MODE LLC (“Petitioner”) were listed as named parties
`
`therein.
`
`2.
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`Registrant believes that the issues set forth in the Civil Action will have direct
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`bearing on the issues presented in the Cancellation.
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`

`

`3.
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`A true and correct copy of the Complaint (without exhibits) and Cover Sheet filed
`
`in the Civil Action is attached hereto as Exhibit A. Notice of the Civil Action has been provided
`
`by undersigned counsel to counsel for the Petitioner.
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`4.
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`If the parties engaged in a proceeding before the Trademark Trial and Appeal
`
`Board (TTAB) are or become involved in a civil action during the pendency of such proceeding
`
`involving the same or similar marks, or involving any issue of law or fact that are also in such
`
`proceeding, the TTAB must be notified immediately. See Trademark Rule § 2.106(b)(3)(i).
`
`Upon notification, the TTAB shall consolidate and/or suspend related TTAB proceedings, as
`
`appropriate. See Trademark Rule 2.117(c); TBMP §§ 510 and 511.
`
`5.
`
`Furthermore, TTAB may suspend proceedings when the parties engaged in such
`
`proceeding are also engaged in a civil action that may have a bearing on the proceeding. See
`
`Trademark Rule § 2.117(a); TBMP § 510.02(a).
`
`6.
`
`Here, the Civil Action involves the same marks at issue in the Cancellation, and
`
`the parties to the Cancellation are also parties to the Civil Action. Moreover, the Civil Action
`
`seeks declaratory relief regarding whether Petitioner has prior use regarding the marks at issue,
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`or, alternatively, if Registrant’s Registered Mark is substantially similar to the mark for which
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`Petitioner claims common law trademark rights in. Thus, as the issues that are the subject of the
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`Civil Action directly relate on the issues and allegations contained in the Cancellation, Registrant
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`respectfully requests that the Cancellation be suspended immediately.
`
`
`
`September 18, 2017
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`
`
`
`
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`
`
`
`
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`
`
`Respectfully Submitted,
`
`
`
`
`
`

`

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`
` DARREN A. HEITNER
`
`
`Attorney for Registrant
`
`Florida Bar No. 85956
`
`Heitner Legal, PLLC
`215 Hendricks Isle
`Fort Lauderdale, FL 33301
`
`
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that the foregoing motion is being deposited with U.S. mail for
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`service, or is being served via email, to listed correspondent of record for Petitioner:
`
`Katherine M. Basile
`Reed Smith LLP 1510 Page Mill Road, #110 Palo Alto, CA 94304 (650) 352-0500
`Email: KBasile@reedsmith.com
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`Attorneys for Opposer, MODE LLC
`
`
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`

`

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`EXHIBIT A
`EXHIBIT A
`
`

`

`O JS 44 (R ev. 2/08)
`
` CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided
`by local rules of court. This form, approved by the Judicial Conference 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 IN STR U C TIO N S O N TH E R EV ER SE O F T H E FO R M .) NOTICE: Attorneys MUST Indicate All Re-filed Cases Below.
`
`I. (a) PLAINTIFFS
`BRAND-LADDER, a Nevada Corporation, and
`SPIN80, INC., a Florida Corporation
`
`(b) County of Residence of First Listed Plaintiff
`(EX C EPT IN U .S. PLA IN TIFF C ASES)
`
`(c) Attorney’s (Firm N ame, A ddress, and Telephone N um ber)
`
`Heitner Legal, P.L.L.C.
`215 Hendricks Isle
`Fort Lauderdale, FL 33301
`954-558-6999
`
`DEFENDANTS
`
`Mod_e LLC aka MODE LLC
`
`County of Residence of First Listed Defendant
`(IN U .S. PLA IN TIFF C ASES O N LY )
`
`N O TE: IN LA N D C O N D EM N A TIO N C ASES, U SE TH E LO C ATIO N O F TH E TR AC T
`
` LA N D IN V O LV ED .
`
` Attorneys (If K now n)
`
`✔
`(d ) Check County Where Action Arose: í M IAM I- D AD E í M O N R O E í B R O W A R D í P ALM B EA C H í M A R TIN í ST. LU C IE í IN D IA N R IV ER í O KEEC HO BEE
` H IG H LA N D S
`
`II. BASIS O F JURISDICTIO N (Place an “ X ” in O ne B ox O nly)
`
`III. CITIZENSH IP OF PRINCIPAL PARTIES(Place an “ X ” in O ne B ox for Plaintiff
`(For D iversity C ases O nly)
` and O ne B ox for D efendant)
`
`í 1 U .S. G overnment
`
`✔
`í 3
`
`Federal Q uestion
`
`Plaintiff
`
`(U .S. G overnment N ot a Party)
`
` P T F D E F
`C itizen of This State
`1
`í 1
`
`í
`
` P T F
`Incorporated o r Principal Place
`4
`
`í
`
` D E F
`í 4
`
`í 2 U .S. G overnment
`
`í 4
`
` D iversity
`
`C itizen of A nother State
`
`í
`
`D efend ant
`
`(Indicate C itizenship of Parties in Item III)
`
`C itizen or Subject of a
`
`í
`
` Fo reign C ountry
`
`of B usiness In T his State
`
`2
`
`3
`
`í 2
`
`Incorporated a n d Principal Place
`
`í
`
`of B usiness In A nother State
`
`í 3
`
`Foreign N ation
`
`í
`
`5
`
`6
`
`í 5
`
`í 6
`
`IV. NATURE OF SUIT (Plac e a n “ X ” in O ne B ox O nly)
`C O N T R A C T
`T O R T S
`
`F O R F E IT U R E /P E N A L T Y
`
`B A N K R U P T C Y
`
`O T H E R ST A T U T E S
`
`í 110 Insurance
`
`í 120 M arine
`
`í 130 M iller A ct
`
` P E R SO N A L IN JU R Y
`
` P E R SO N A L IN JU R Y
`
`í 610 A griculture
`
`í 422 A ppeal 28 U SC 158
`
`í 400 State R ea pportionment
`
`í 310 A irplane
`
`í 362 Personal Injury -
`
`í 620 O ther Food & D rug
`
`í 423 W ithdraw al
`
`í 410 A ntitrust
`
`í 315 A irplane Product
`
`M ed. M alpractice
`
`í 625 D rug R elated Seizure
`
`28 U SC 157
`
`í 430 B ank s and B ank ing
`
`í 140 N ego tiab le Instrument
`
`Liab ility
`
`í 365 Personal Injury -
`
`of Property 21 U SC 881
`
`í 150 R ecovery of O verpaym ent
`
`í 320 A ssault, Libel &
`
`Product Liab ility
`
`í 630 Liquor Law s
`
`& Enforcement of Judgm ent
`
`Slander
`
`í 368 A sbesto s Personal í 640 R .R . & Truck
`
`í 151 M edicare A ct
`
`í 330 Federal Employers’
`
`Injury P roduct
`
`í 650 A irline R egs.
`
`P R O P E R T Y R IG H T S
`í 820 C opyrights
`
`Liab ility
`
`Liab ility
`
`í 660 O ccupational
`
`í 450 C ommerce
`
`í 460 D eportation
`
`í 470 R ac keteer Influenc ed and
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`C orrupt O rganiza tions
`
`í 480 C onsumer C redit
`
`í 152 R ec overy of D efaulted
`
`í 830 Patent
`í 840 Trademark
`✘
`
`Student Loans
`
`(Excl. V eterans)
`
`í 340 M arine
`
`í 345 M arine Product
`
` P E R SO N A L P R O P E R T Y
`í 370 O ther Fraud
`
`Safety/H ea lth
`
`í 690 O ther
`
`í 490 Cable/Sat TV
`
`í 810 Selective Service
`
`í 153 R ec overy of O verpaym ent
`
`Liab ility
`
`í 371 Truth in Lending
`
` of V eteran’s Benefits
`
`í 350 M otor V ehicle
`
`í 380 O ther Personal
`
`L A B O R
`í 710 Fair Labor Standards
`
`SO C IA L SE C U R IT Y
`í 861 H IA (1395ff)
`
`í 850 Securities/C ommodities/
` Excha nge
`
`í 160 Stockholders’ Suits
`
`í 355 M otor V ehicle
`
`Property D amage
`
`A ct
`
`í 862 B lack Lung (923)
`
`í 875 C ustom er C hallenge
`
`í 190 O ther C ontract
`
`Product Liab ility
`
`í 385 Property D amage
`
`í 720 Labor/M gmt. R elations
`
`í 863 D IW C /D IW W (405(g))
`
`12 U SC 3410
`
`í 195 C ontract Product Liab ility
`
`í 360 O ther Perso nal
`
`Product Liab ility
`
`í 730 Labor/M gmt.R ep orting
`
`í 864 SSID Title X V I
`
`í 890 O ther Statutory Actions
`
`í 196 Franchise
`
`Injury
`
`& D isclosure A ct
`
`í 865 R SI (405(g))
`
`í 891 A gricultural A cts
`
` R E A L P R O P E R T Y
`
` C IV IL R IG H T S
`
` P R ISO N E R P E T IT IO N S í 740 R ailw ay Labor A ct
`
`F E D E R A L T A X SU IT S
`
`í 892 Economic Stabilization A ct
`
`í 210 Land C ondem nation
`
`í 441 V oting
`
`í 510 M otions to V acate í 790 O ther Labor Litigation
`
`í 870 Taxes (U .S. Plaintiff
`
`í 893 Environm ental M atters
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`í 220 Foreclosure
`í 230 R ent Lease & Ejectment
`í 240 Torts to Land
`í 245 Tort Product Liab ility
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`í 290 A ll O ther R ea l Property
`
`í 442 Employment
`í 443 H ousing/
`A cc ommodations
`í 444 W elfare
`í 445 A mer. w /D isabilities -
`Employment
`í 446 A mer. w /D isabilities -
`O ther
`
`í 440 O ther C ivil R ights
`
`Sentence
`H abeas C orpus:
`í 530 G eneral
`í 535 D eath Penalty
`IM M IG R A T IO N
`í 540 M andamus & O ther í 462 N aturalization
`A pplication
`í 463 H abeas C orpus-A lien
`D etainee
`í 465 O ther Immigration
`A ctions
`
`í 550 C ivil R ights
`
`í 555 Prison C ondition
`
`í 7 9 1 E m p l. R e t. Inc . S e c urity
`A ct
`
`or D efendant)
`í 871 IR S— Third Party
`26 U SC 7609
`
`í 894 Energy A llocation A ct
`í
`
`895 Freedom of Information A ct
`
`í 900 A ppeal of Fee D etermination
` U nder Equal A ccess to Justice
`
`í 950 C onstitutionality of State
` Statutes
`
`V. ORIGIN
`í 1 Original
`✔
`Proceeding
`
` (Plac e a n “ X ” in O ne B ox O nly)
`í 2 Removed from
`í 3 Re-filed-
`State Court
`(see VI below)
`
`í 4 Reinstated or
`Reopened
`
`í 5
`
`Transferred from
`another district
`(specify)
`
`í 6 Multidistrict
`Litigation
`
`í 7
`
`Appeal to District
`Judge from
`Magistrate
`Judgment
`
`VI. RELATED/RE-FILED
`CASE(S).
`
`(See instructions
`second page):
`
`a) Re-filed Case í YES í NO b) Related Cases í YES í NO
`✔
`✔
`
`JUDGE
`
`DOCKET NUMBER
`
`VII. CAUSE O F ACTIO N
`
`Cite the U.S. Civil Statute under which you are filing and Write a Brief Statement of Cause (Do not cite jurisdictional statutes unless
`diversity):
`Declaratory Judgment Action re: Federal Question (Trademark)
`
`LENGTH OF TRIAL via ______ days estimated (for both sides to try entire case)
`
`VIII. REQUESTED IN
` COM PLAINT:
`
`í CHECK IF THIS IS A CLASS ACTION
`UNDER F.R.C.P. 23
`
`DEMAND $
`
`CHECK YES only if demanded in complaint:
`
`JURY DEMAND:
`
`í Yes í No
`
`ABOVE INFORMATION IS TRUE & CORRECT TO
`THE BEST OF MY KNOWLEDGE
`
`SIG N ATU R E O F ATTO R N EY O F R EC O R D D ATE
`September 14, 2017
`
`F O R O F F IC E U SE O N L Y
`
`A M O U N T
`
`R EC EIPT #
`
`IFP
`
`

`

`JS 44 R everse (R ev. 02/08)
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`
`Authority For Civil Cover Sheet
`
`The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading 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. Consequently, a civil cover sheet is submitted to the Clerk of Court for each civil complaint
`filed. The attorney filing a case should complete the form as follows:
`
`(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use only
`I.
`the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and then the official, giving
`both name and title.
`
`(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the time
`of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land condemnation cases,
`the county of residence of the “defendant” is the location of the tract of land involved.)
`
`(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
`in this section “(see attachment)”.
`
` (d) Choose one County where Action Arose.
`
`Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.C.P., which requires that jurisdictions be shown in pleadings. Place an “X” in one
` II.
`of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
`
`United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
`
`United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an “X” in this box.
`
`Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment to the
`Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes precedence, and box
`1 or 2 should be marked.
`
`Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the citizenship of the
`different parties must be checked. (See Section III below; federal question actions take precedence over diversity cases.)
`
`III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this section
`for each principal party.
`
`Nature of Suit. Place an “X” in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below, is sufficient
`IV.
`to enable the deputy clerk or the statistical clerks in the Administrative Office to determine the nature of suit. If the cause fits more than one nature of suit, select
`the most definitive.
`
`V.
`
`Origin. Place an “X” in one of the seven boxes.
`
`Original Proceedings. (1) Cases which originate in the United States District Courts.
`
`Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441. When the petition
`for removal is granted, check this box.
`
`Refiled (3) Attach copy of Order for Dismissal of Previous case. Also complete VI.
`
`Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
`
`Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or multidistrict
`litigation transfers.
`
`Multidistrict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 1407. When this box
`is checked, do not check (5) above.
`
`Appeal to District Judge from Magistrate Judgment. (7) Check this box for an appeal from a magistrate judge’s decision.
`
`Related/Refiled Cases. This section of the JS 44 is used to reference related pending cases or re-filed cases. Insert the docket numbers and the corresponding
`VI.
`judges name for such cases.
`
`VII. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional statutes
`unless diversity.
`Example:
`U.S. Civil Statute: 47 USC 553
`Brief Description: Unauthorized reception of cable service
`
`VIII. Requested in Complaint. Class Action. Place an “X” in this box if you are filing a class action under Rule 23, F.R.Cv.P.
`
`Demand. In this space enter the dollar amount (in thousands of dollars) being demanded or indicate other demand such as a preliminary injunction.
`
`Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
`
`Date and Attorney Signature. Date and sign the civil cover sheet.
`
`

`

`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`CASE NO.: 0:17-cv-61793
`
`Plaintiffs,
`
`
`BRAND-LADDER, a Nevada Corporation, and
`SPIN80, INC., a Florida Corporation,
`
`
`
`v.
`
`Mod_e LLC aka MODE LLC,
`
`Defendant.
`
`___________________________________________/
`
`
`COMPLAINT
`
`Plaintiffs, BRAND-LADDER and SPIN80, Inc. (collectively, “Plaintiffs”), by and
`
`
`
`through undersigned counsel, hereby sues MOD_E LLC aka MODE LLC (“MOD_E LLC” or
`
`“Defendant”), and, in support thereof, states as follows:
`
`JURISDICTION, VENUE, AND PARTIES
`
`1.
`
`This is an action for declaratory relief pursuant to the (i) Federal Declaratory
`
`Judgment Act, found at 28 U.S.C. § 2201 and 2202, (ii) the Trademark Act, found at 15 U.S.C. §
`
`1051, et seq., and (ii) Lanham Act, found at 15 U.S.C. § 1125, et seq.
`
`2.
`
`BRAND-LADDER is a corporation duly organized and existing under the laws of
`
`the State of Nevada, with a principal place of business located at 8242 Emerald Avenue,
`
`Parkland, FL 33076.
`
`3.
`
`SPIN80, Inc., is a corporation duly organized and existing under the laws of the
`
`State of Florida, with a principal place of business located 6191 NW 66th Avenue, Parkland FL
`
`33076.
`
`

`

`4.
`
`MOD_E LLC is a corporation duly organized and existing under the laws of the
`
`State of California, with a principal place of business located at 21921 Summer Cir., Huntington
`
`Beach, CA 92646.
`
`5.
`
`This Court has original jurisdiction over the subject matter of this action pursuant
`
`to 28 U.S.C. § 1331. Venue and jurisdiction is proper within this Court because Defendant
`
`operates commercial websites accessible in this district, directs business activities towards
`
`consumers residing in this district based on the operation of such commercial websites, and is
`
`engaged in and/or has the potential to cause harm to Plaintiffs within this district based upon its
`
`business activities and actions conducted herein.
`
`FACTUAL BACKGROUND
`
`A. Competing Marks
`
`6.
`
`BRAND-LADDER
`
`is
`
`the owner of
`
`the USPTO
`
`registered
`
`trademark
`
`“FITMODE” (Registration No. 5186663)
`
`in International Class 005 for “Nutritional
`
`supplements” (“FITMODE Goods and Services”). FITMODE Goods and Services are provided
`
`in pill and/or powder form, and a specimen detailing FITMODE Goods and Services is provided
`
`as Exhibit A, attached hereto.
`
`7.
`
`SPIN80, Inc. is the owner of the USPTO registered trademark “MODE
`
`NUTRITION” (Registration No. 5189704) in International Class 005 for “Nutritional
`
`Supplements” (“MODE NUTRITION Goods and Services,” and together with the FITMODE
`
`Goods and Services, “Plaintiffs’ Goods and Services”). MODE NUTRITION Goods and
`
`Services are provided in pill and/or powder form, and a specimen detailing MODE NUTRITION
`
`Goods and Services is provided as Exhibit B, attached hereto.
`
`

`

`8.
`
`MOD_E LLC
`
`is
`
`the
`
`registrant and/or operator behind
`
`the website
`
`www.modenutrition.com, which automatically forwards to https://myfitmode.com/ (collectively,
`
`the “Websites”). Via the Websites, MOD_E LLC advertises and sells the following ready-to-eat
`
`(RTE) and ready-to-drink (RTD) products: (i) Beet & Berries Pre-Workout pack; (ii) Mango &
`
`Ginger Intra-Workout Pack; (iii) Cucumber & Lime Post-Workout Pack; and (iv) Energy Bites
`
`(collectively, “MOD_E LLC Goods and Services”).
`
`B. MOD_E, LLC Claims of Infringement / Demands
`
`9.
`
`On May 25, 2017, BRAND-LADDER and SPIN80, Inc. issued a cease and desist
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`letter (“Demand Letter”) to counsel for MOD_E LLC, demanding that MOD_E LLC: (i) cease
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`and desist use of the terms “MODE NUTRITION” and “FITMODE,” and any other marks
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`similar thereto, and (ii) transfer and assign the URLs to the Websites to Plaintiffs, as BRAND-
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`LADDER and SPIN80, Inc. are the rightful owners of the USPTO registrations for FITMODE
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`and MODE NUTRITION, respectively.
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`10.
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`However, upon conducting further diligence regarding the MOD_E LLC Goods
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`and Services offered for sale and advertised on the Websites, on July 27, 2017, Plaintiffs
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`retracted its Demand Letter and informed MOD_E LLC of its belief that the parties may co-exist
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`in the marketplace without concern of likelihood of confusion.
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`11.
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`Despite Plaintiffs’ retraction and proposal of co-existence, on August 24, 2017,
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`MOD_E LLC issued a cease and desist demanding that Plaintiffs discontinue use of the marks
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`FITMODE and MODE NUTRITION (despite Plaintiffs owning valid registrations for such
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`marks), asserting that MOD_E LLC has priority in the mark “MODE” and Plaintiffs continued
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`use of its registered marks creates a likelihood of confusion regarding thereto.
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`12.
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`In support of its cease and desist issued to Plaintiffs, MOD_E LLC provided the
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`following documentation: (i) MOD_E, LLC’s Articles of Organization; (ii) video from the 2016
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`IDEA World Convention that took place July 13 – 17, 2016 showing a customer talking to the
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`camera about MOD_E LLC Goods and Services; (iii) photos from the IDEA World Convention,
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`showing MOD_E LLC’s booth, team, and Goods and Services; and (iv) a screen capture of a
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`July 14, 2016 sale of MOD_E LLC Goods and Services in order to purportedly illustrate
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`consummated sales (collectively, “Alleged Prior Use Evidence,” samples of which are attached
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`hereto as Exhibit C).
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`13.
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`Furthermore, on September 12, 2017, MOD_E LLC filed a Petition for
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`Cancellation of registration of SPIN80, Inc.’s mark, MODE NUTRITION, alleging (i) priority
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`and (ii) likelihood of confusion, based on MOD_E LLC’s alleged common law trade name and
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`trademark rights in the mark “MODE,” also allegedly stylized as “MODe,” “MOD_E,” and
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`“MOD_e” (collectively, the “MODE Mark”).
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`14.
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`However, as made known via Plaintiffs’ retraction and proposal for co-existence
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`after conducting due diligence, MOD_E LLC’s Goods and Services provided under the MODE
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`Mark – specifically, its ready-to-eat (RTE) and ready-to-drink (RTD) products provided under
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`“MOD_E” – are substantially dissimilar and wholly distinguishable from Plaintiffs’ Goods and
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`Services, as MOD_E LLC’s Goods and Services are not provided in pill or powder form, and are
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`akin to pressed, all vegan, gluten free juices and snacks.
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`15.
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`As such, there presently exists a justiciable controversy between Plaintiffs and
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`MOD_E LLC regarding: (i) who is the prior user of, and has the exclusive right to use, their
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`respective marks based upon each parties’ respective inclusion of the term “MODE” therein, and
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`(ii) if MOD_E LLC is declared the prior user, whether the parties’ respective marks are
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`substantially similar for the purpose of finding likelihood of confusion, and Plaintiffs have been
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`forced to filed the instant lawsuit as a result thereof.
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`FIRST CLAIM FOR RELIEF
`UNENFORCABILITY OF TRADEMARK RIGHTS
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`16.
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`Plaintiffs re-adopt and re-allege the allegations contained in Paragraphs 1 through
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`15 as if fully stated herein and further allege:
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`17.
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`This is a count for declaratory judgment / relief under the (i) federal Declaratory
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`Judgment Act, found at 28 U.S.C. § 2201 and 2202, (ii) the Trademark Act, found at 15 U.S.C. §
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`1051, et seq., and (ii) Lanham Act, found at 15 U.S.C. § 1125, et seq. An actual and justiciable
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`controversy exists by way of Defendant’s: (i) filing of the Petition of Cancellation of registration
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`of MODE NUTRITION, and (ii) demand for Plaintiffs to cease and desist use of its registered
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`marks MODE NUTRITION and FITMODE.
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`18.
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`Pursuant to the Lanham Act, “use in commerce” means use of a registered mark
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`in interstate commerce in connection with the sale or advertisement of goods.
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`19.
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`BRAND LADDER’s registration for FITMODE carries a first use date in
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`commerce of August 6, 2016, and SPIN80, Inc.’s registration for MODE NUTRITION carries a
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`first use date in commerce of November 17, 2016. According to the Alleged Prior Use Evidence
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`provided, MOD_E LLC has an alleged first use date in commerce of the mark, “MOD_E,” of
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`July 16, 2016.
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`20.
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`Pursuant to the Lanham Act, the filing of Articles of Organization does not
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`constitute “use in commerce” as such term is defined and contemplated therein. Nonetheless,
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`MOD_E LLC’s Articles of Organization filed December 14, 2015 (attached hereto as Exhibit D)
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`establishes the entity’s name as Mod_e LLC, and it wasn’t until Defendant’s filing of an
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`Amendment on April 26, 2017 (attached hereto as Exhibit E) that Defendant’s entity name was
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`changed to Mode LLC.
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`21.
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`Furthermore, in all of the Alleged Prior Use Evidence provided by MOD_E LLC,
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`there was no documentation or proof demonstrating MOD_E LLC’s alleged prior use of the term
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`“MODE,” as each alleged "use" presented therein is of either "mod_e" or "mod-e", neither of
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`which is "MODE" and none of which constitutes a specimen sufficient to assert or prove use of
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`the mark "MODE" in interstate commerce. Furthermore, none of the purported evidence
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`provided shows that MOD_E LLC engaged in providing, selling, or advertising MOD_E Goods
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`and Services in interstate commerce prior to Plaintiffs’ respective first use dates in commerce, as
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`the Alleged Prior Use Evidence focuses on activities that took place solely in the State of
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`California.
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`22. Moreover, on April 30 2016, MOD_E LLC filed a 1B intent-to-use application for
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`the mark “MOD_E” for various goods and services (none of which were in International Class
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`005 or substantially similar to Plaintiffs’ Goods and Services (see Exhibit F, attached hereto))
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`before expressly abandoning the application on April 3, 2017 via the filing of a Notice of
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`Abandonment (see Exhibit G, attached hereto).
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`23. Moreover, even if MOD_E LLC were to assert common law trademark rights in
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`“MODE” in order to defeat Plaintiffs’ first use dates, such assertion is futile as none of the
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`Alleged Prior Use Evidence illustrates MOD_E LLC’s use of such mark in commerce.
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`24.
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`Based thereon, it follows that MOD_E LLC’s Alleged Prior Use Evidence does
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`not constitute “use in commerce” to establish a first use date in commerce as contemplated by
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`the Lanham Act, as (i) MOD_E LLC’s Alleged Prior Use Evidence does not show use of the
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`mark “MODE” in commerce predating Plaintiffs’ respective first use dates set forth in their
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`registration, and (ii) MOD_E LLC does not own a registered trademark to assert exclusive
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`ownership therein.
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`25.
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`As such, there is a bona fide, actual, and present practical need for a declaration
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`regarding whether MOD_E LLC’s Alleged Prior Use Evidence constitutes “use in commerce” of
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`the mark “MODE” as contemplated by the Lanham Act.
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`WHEREFORE, for the reasons set forth herein, Plaintiffs request an Order declaring
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`that MOD_E LLC’s alleged trademark rights in the mark “MODE” lack the requisite legal
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`requirements to be protectable and enforceable under applicable law.
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`SECOND CLAIM FOR RELIEF
`NON-INFRINGEMENT OF TRADEMARK
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`Plaintiffs re-adopt and re-allege the allegations contained in Paragraphs 1 through
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`26.
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`15 as if fully stated herein and further allege:
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`27.
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`This is an alternative count for declaratory judgment / relief under the (i) federal
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`Declaratory Judgment Act, found at 28 U.S.C. § 2201 and 2202, (ii) the Trademark Act, found at
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`15 U.S.C. § 1051, et seq., and (ii) Lanham Act, found at 15 U.S.C. § 1125, et seq. In the event
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`the Court declares that MOD_E LLC’s Alleged Prior Use Evidence illustrates that MOD_E
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`LLC’s first use date in commerce predates Plaintiffs’ respective first use date in commerce, an
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`actual and justiciable controversy exists by way of Defendant’s: (i) filing of the Petition of
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`Cancellation of registration of MODE NUTRITION, and (ii) demand for Plaintiffs to cease and
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`desist use of its registered marks MODE NUTRITION and FITMODE.
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`28. While initially stating that MOD_E LLC’s use of the mark “MOD_E” was
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`substantially similar to Plaintiffs’ respective use of FITMODE and MODE NUTRITION, upon
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`further due diligence conducted, Plaintiffs concluded that the marks were substantially
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`dissimilar, were for substantially dissimilar products, and may co-exist in the marketplace.
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`29.
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`This conclusion was based on finding: (i) there existed no instances of actual
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`confusion between the parties regarding the source of goods and services provided via the
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`respective marks; (ii) MOD_E LLC’s use of the mark “MOD_E” was substantially different in
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`style and appearance than FITMODE and MODE NUTRITION; (iii) there existed a plethora of
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`applications with the USPTO for marks for nutritional supplements containing the term
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`“MODE” in various forms, some of which had proceeded to registration, therefore showing that
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`multiple marks containing the term “MODE” may coexist in the marketplace (see Exhibit H,
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`attached hereto); and (iv) Plaintiffs’ Goods and Services are substantially different and wholly
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`distinguishable from MOD_E LLC’s Goods and Services to the extent that no consumer would
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`be confused that they are in any way affiliated or provided by the same source.
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`30.
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`As such, in the event the Court declares that MOD_E LLC’s Alleged Prior Use
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`Evidence illustrates that MOD_E LLC’s first use date in commerce predates Plaintiffs’
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`respective first use date in commerce, there is a bona fide, actual, and present practical need for a
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`declaration regarding whether Plaintiffs’ respective use of FITMODE and MODE NUTRITION
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`constitutes infringement of MOD_E LLC’s trademark rights in the mark “MOD_E.”
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`WHEREFORE, for the reasons set forth herein, in the event the Court declares that
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`MOD_E LLC’s Alleged Prior Use Evidence illustrates that MOD_E LLC’s first use date in
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`commerce predates Plaintiffs’ respective first use date in commerce, Plaintiffs request an Order
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`declaring that Plaintiffs’ are not infringing, have not infringed, and are not liable for infringing
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`any enforceable trademark rights owned by MOD_E LLC based on Plaintiffs’ use of its
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`registered marks FITMODE and MODE NUTRITION in commerce.
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`REQUEST FOR RELIEF
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`WHEREFORE, Plaintiff seeks judgment awarding it the following relief:
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`(a) An Order declaring that MOD_E LLC’s alleged trademark rights in the mark
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`“MODE” lack the requisite legal requirements to be protectable and enforceable
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`under applicable law;
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`(b) An Order declaring that, in the event the Court declares that MOD_E LLC’s Alleged
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`Prior Use Evidence illustrates that MOD_E LLC’s first use date in commerce
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`predates Plaintiffs’ respective first use date in commerce, Plaintiffs’ have not
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`infringed any enforceable trademark rights owned by MOD_E LLC based on
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`Plaintiffs’ respective use of its registered marks FITMODE and MODE NUTRITION
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`in commerce;
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`(c) An Order awarding attorneys’ fees, costs, and expenses incurred in connection with
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`this action; and
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`(d) An Order granting such further relief as this Court deems just and appropriate.
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`September 14, 2017
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`Respectfully submitted.
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`HEITNER LEGAL, P.L.L.C
`Attorney for Plaintiffs
`215 Hendricks Isle
`Fort Lauderdale, FL 33301
`Phone: 954-558-6999
`Fax: 954-927-3333
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`By:
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`DARREN A. HEITNER
`Florida Bar No.: 85956
`Darren@heitnerlegal.com
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