Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA908088
`
`Filing date:
`
`07/09/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92068466
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Agilitas Partners LLP
`
`AGILITAS PARTNERS LLP
`BROADWALK HOUSE, 5 APPOLD STREET
`LONDON, EC2A2HA
`UNITED KINGDOM
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`Rose Auslander
`
`trademarks@clm.com
`
`/roseauslander/
`
`07/09/2018
`
`AGILITAS Response to TTAB Action - Civil Court papers attached.pdf(1445986
`bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Registration of:
`
`Registrant:
`Reg. No.:
`Mark:
`Registration Date:
`
`Agilitas Partners LLP
`4,0$2,030
`AGILITAS
`January 10, 2012
`
`AGILITAS CAPITAL, LLC
`Petitioner
`
`v.
`
`: Cancellation No. 92068466
`
`AGILITAS PARTNERS LLP
`Registrant/Respondent
`
`Commissioner for Trademarks
`Box TTAB. NO FEE
`P.O. Box 1451
`Alexandria. VA 22313-1451
`
`RESPONSE TO TTAB ACTION
`
`tn response to the TTAB Action dated June 15, 2018, and in further support of Registrant’s June
`8,2018 Motion To Suspend Proceedings, Registrant herewith submits copies of all pleadings
`filed to date in the civil action filed on June 5, 2018 in the District Court of the Southern District
`of New York, captioned Agilitas Partners, LLP v. Agilitas Capital, LLC and Agilitas Energy,
`LLC, No. 2:1 8-CV-03294, which will adjudicate all issues pleaded herein: (1) a filed copy of the
`Complaint, Civil Cover Sheet, and Proposed Summons; (2) a filed copy of the Declaration of
`Service of Summons and Complaint to Agilitas Capital, LLC; and (3) a filed copy of the
`Declaration of Service of Summons and Complaint to Agilitas Energy, LLC.
`
`Registrant urgently requests that prior to ruling on this response and suspending this
`proceeding, the TTAB act with special dispatch on the pending Motion On Consent To
`Amend Registration To Permit Filing Of Supplemental Specimen, filed in this proceeding
`on July 2, 2018 requesting expedited handling in light of the July 10, 2018 deadline to file
`that Supplemental Specimen in the U.S. Patent & Trademark Office.
`
`8305471
`
`

`

`Contemporaneously with the mailing of this response, a copy of this document and attachments
`hereto is being served via email on cotinsel for Opposer Agilitas Capital, LLC
`kielicebarclaydarnon.com, ip@barclaydamon.com,
`
`jnardiello@barclaydamon.com).
`
`Dated: New York, New York
`July 9, 2018
`
`Respectfully submitted,
`
`CARTER LEDYARD & MILBURN LLP
`
`By: /roseauslander/
`Rose Auslander
`John M. Griem, Jr.
`2 Wall Street
`New York, NY 10005
`(212) 238-8601
`
`Attorneys for Registrant Agilitas Partners LLP
`
`8305171.1
`
`

`

`Eastern District of New York - LIVE Database V6.2.1
`
`Page 1 of 2
`
`Complaints and Other Initiating Documents
`2:18-cv-03294 Aqilitas Partners, LLP v. Agilitas Catal, LLC et al
`
`U.S. District Court
`
`Eastern District of New York
`
`Notice of Electronic Filing
`
`The following transaction was entered by Griern, John on 6/5/2018 at 5:00 PM EDT and filed on
`6/5/2018
`Case Name:
`Agilitas Partners, LLP v. Agilitas Capital, LLC Ct al
`Case Number:
`2:1 8-cv-03294
`Filer:
`Agilitas Partners, LLP
`Document Number: I
`Judge(s) Assigned: The Court will contact you shortly on the Judge Assignment.
`
`Docket Text:
`COMPLAINT against Agilitas Capital, LLC, Agilitas Energy, LLC filing fee $ 400, receipt
`number 0207-10486578 Was the Disclosure Statement on Civil Cover Sheet completed
`-Yes,, filed by Agilitas Partners, LLP. (Attachments: # (1) Civil Cover Sheet, # (2)
`Proposed Summons as to Agilitas Capital, LLC, # (3) Proposed Summons as to Agilitas
`Energy, LLC) fGriem, John)
`
`2:18-cv-03294 Notice has been electronically mailed to:
`
`John Michael Griem griem@clm.com, jackgriem.corn
`
`2:1$-cv-03294 Notice will not be electronically mailed to:
`
`The following document(s) are associated with this transaction:
`
`Document description:Main Document
`Original filename:n!a
`Electronic document Stamp:
`[STAMP NYEDStamp 1D8 75559751 [Date=6/5/20 18] [FileNurnber= 12897232-01
`[4bba2edl 88f028b$cc1a2a30f4e9d2be2f5495e3a8762640960037e7b63739e0fac51
`afi b899ddc95b73e80291 682deebfc48308b97584158a950ff03ad4c5 13]]
`Document description: Civil Cover Sheet
`Original filename:nla
`Electronic document Stamp:
`[STAMP NYEDStamp_1D87555975 1 [Date=6/5/20 18] [F ileNumber 12897232-1]
`[2f6b3799605d051568d09464b95abc65105b149b59632a896d10de53a074a363a6df7
`el 72343e3debb95b94e74a2d97a5a47770256a96bc0599ee3eb43df274c]]
`Document description:Proposed Summons as to Agilitas Capital, LLC
`Original filename:nla
`Electronic document Stamp:
`[STAMP NYED$tamp_1D87555 9751 [Date6/5/20 18] [FileNumber 12897232-2]
`
`https ://ecf.nyed.uscourts.gov/cgi-binlDispatch.pl?680585585732547
`
`6/5/201 $
`
`

`

`Case 2:18-cv-03294 Document 1 Filed 06/05/18 Page 1 at 18 PagelD #: 1
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT Of NEW YORK
`
`AGILJTAS PARTNERS, LLP.
`
`Plaintiff,
`
`V.
`
`AGILITAS CAPITAL, LLC
`AGILITAS ENERGY, LLC
`
`Defendants.
`
`x
`
`$
`
`)(
`
`Civil Action No.
`
`1
`
`9L/
`
`COMPLAINT
`
`Plaintiff, Agilitas Partners, LLP (“Agilitas” or “plaintiff’), by its undersigned attorneys,
`
`as and for its Complaint against Agilitas Capital, LLC and Agilitas Energy, LLC (“Agilitas
`
`Capital” or “defendants”) alleges:
`
`SUBSTANCE Of THE ACTION
`
`1.
`
`Defendants are related companies that are both using AGILITAS formative
`
`names, marks, and domain names, Plaintiff owns incontestable U.S. Registration No. 4082030
`
`for AGILITAS, has used that mark and the name Agilitas Partners, LLP name in the United
`
`States since at least as early as 2012, and has established a reputation for excellence in its field.
`
`Defendants adopted the Agilitas Capital and Agilitas Energy identifiers long after plaintiff began
`
`using its mark and name.
`
`2.
`
`Plaintiff has filed this action to enjoin defendants from using the AGILITAS
`
`CAPITAL and AGILITA$ ENERGY marks, the Agilitas Capital, LLC and Agilitas Energy,
`
`LLC names, and the agilitascapital.com and agilitasenergy.com domain names. Plaintiff has
`
`asserted claims for trademark infringement, unfair competition and false designation of origin,
`
`2732.3
`
`

`

`Case 2:18-cv-03294 Document 1 Filed 06/05/18 Page 2 of 13 PagelD #: 2
`
`and cyberpiracy pursuant to Sections 32 and 43(a) (d) of the Lanham Act, 15 U.S.C. § 1114,
`
`1 l25(a(d), and New York State common law. Plaintiff also seeks an accounting, profits and
`
`damages.
`
`JURISDICTION AND VENUE
`
`3.
`
`This Court has subject matter jurisdiction under 15 U.S.C. § 1121, 28 U.S.C. §
`
`1331, and 1338(a) and (b). This Court has supplemental jurisdiction over the state law claims
`
`under 1367(a) and the principles ofpendentjurisdiction. Personal jurisdiction and venue is
`
`proper in this district under 28 U.S.C. 1391(b)(2) and (c)(2) because a substantial part of the
`
`events or omissions giving rise to the claims occurred in this district, and plaintiff suffered
`
`substantial damage to its property interests in this district as a result of defendants’ violations of
`
`plaintiff’s asserted rights.
`
`THE PARTIES
`
`4.
`
`Agilitas Partners, LLP is a limited liability partnership organized and existing
`
`under the laws of the United Kingdom with its principal place of business at LI1 floor, 105
`
`Piccadil]y, United Kingdom WIJ7NJ.
`
`5.
`
`On information and belief, defendant Agilitas Capital LLC is a limited liability
`
`company incorporated under the Jaws of the State of New Hampshire on April 26, 2017; Agilitas
`
`Energy LLC is a related limited liability company incorporated under the laws of the State of
`
`Delaware on April 25, 2017; and both defendants have business activities in a number of states,
`
`incuding New York. On information and behicf the principal place of business for both
`
`companies is 401 Edgewater Place, Suite 265, Wakefield, MA 01880.
`
`&27632.3
`
`2
`
`

`

`Case 2:1S-cv-03294 Document 1 EHed 06/05/18 Page 3 of 18 PagelD #: 3
`
`FACTS COMMON TO ALL CLAIMS FOR RELIEF
`
`Plaintiff Agilitas Partners. LLP
`
`6.
`
`Agilitas was founded in 2011. Its authorized U.S. representative is the related
`
`company Agilitas Private Equity LLP (“Agilitas Equity”), which files as an exempt reporting
`
`advisor (ERA) with the S.E.C.
`
`7.
`
`In connection with Agilitas Energy, Agilitas acts as an advisor to a number of
`
`private funds, all of which are identified by the AGILITA$ mark. Three AGILITAS funds
`
`include U.S. investors, including one composed 28 percent of US investors, and Agilitas has
`
`assets under management in the U.S. of under $150 million.
`
`In total, AGILITAS funds have
`
`over $450 million dollars in equity. Agilitas submits form ADV to the SEC, which is pubtically
`
`accessible:
`
`https ://www.advi serin fo .sec. czov/IAPD/content/viewforrn/adv 10201 2/Scctions/iapd AdvSchedul
`
`eDSection.asijx?ORCPt(1 71 478&FLNO PK=02D 12513600080191 0349ACC 10031 6BC 1056
`
`C8CCO
`
`8.
`
`In connection with Agilitas Energy, Agilitas acts as an investment advisor to
`
`prominent New York based clients, among others; actively markets its funds to New York
`
`investors; and provides investment advisory services to investors located in New York, as well as
`
`elsewhere. These clients recognize the AGILITAS mark and exclusively associate it with
`
`Agilitas and the financial services Agilitas provides.
`
`9.
`
`Agilitas recently successfully backed the buyout of Hydro International Limited
`
`(“1-lydro”), a leading global provider of advanced products, services and technology for the
`
`treatment of wastewater and the control of stormwater for municipal, industrial and construction
`
`customers. Hydro has significant US operations, with staff in more than one state, and is the US
`
`technology leader in grit removal equipment.
`
`3
`
`g273S2_
`
`

`

`Case 2:18-cv-03294 Document 1 Filed 06/05/18 Page 4 of 18 Page ID #: 4
`
`10.
`
`Agilitas has achieved an excellent reputation for its expertise in the mid-market
`
`segment, making transformational investments in defensible businesses, successfully improving,
`
`growing and strengthening businesses. Agilitas is the recipient of a Private Equity Exchange
`
`Award, winning the 2015 Special Distinction Award for Best UK LBO fund. Agilitas also was
`
`a Rising Star winner at the 2014 Private Equity Exchange Awards.
`
`11.
`
`On January 10, 2012, the United States Patent and Tradernaric Office issued U.S.
`
`Registration No. 4082030 for AGILITAS, currently registered for “financial consultancy;
`
`investment services, namely, asset acquisition; investment of funds for others; financial services,
`
`namely, investment advice, investment management, investment consultation and investment of
`
`funds for others; financial services, namely, raising debt and equity capital for others; financing
`
`services; capital investment services; repair cost evaluations,” in International Class 36, with a
`
`priority date of prjl 16 Wi0 (copy of uspto.gov online entry for this registration attached as
`
`Exhibit A). This registration is valid, subsisting, and in full force and effect, and is incontestable
`
`under Section 15 oftheTrademarkAct. 15 U.S.C. §1065.
`
`12.
`
`AgilItas also owns European Union Registration No. 009035262 for AGJLITAS
`
`in Classes 35, 36, and 45, which issued on December 9, 2010.
`
`13.
`
`Agilitas’ rights in its name and mark in the U.S. began long prior to any date on
`
`which defendants can rely.
`
`14.
`
`Given plaintiffs use of the AGILITA$ mark and the Agilitas Partners, LLP name,
`
`investors and others in the investment advisory business throughout the U.S. and internationally
`
`have come to associate AGILITAS as identifying plaintiff, its financial services, and its funds.
`
`Through plaintiffs untarnished reputation, years of effort, and investments of time, money and
`
`R2738i3
`
`4
`
`

`

`Case 2;18-cv-03294 Document 1 Filed 06/05/18 Page 5 of 18 PagelD #; 5
`
`creativity, its AGILITAS mark and Agilitas Partners, LLP name have acquired highly valuable
`
`goodwill in the U.S. and abroad.
`
`Defendants’ Unlawful Activities
`
`15.
`
`Both of defendants’ domain names direct to a single website at
`
`http://www.ailitascapitaLcom. On that web site, AGILIIAS CAPITAL has described itself as a
`
`“boutique private investment firm creating value for its stakeholders within the renewable energy
`
`and real estate sectors.” Defendants’ website is directed at clients and potential clients located in
`
`this disttict as well as New York and other states.
`
`16.
`
`On information and belief, defendants wereor should have been aware of
`
`plaintiffs registered AGILITAS maric before defendants adopted their AGILITAS formative
`
`names, marks, and domain names.
`
`17.
`
`Agilitas has advised defendants that their unauthorized adoption and use of
`
`AGILITAS formative names, marks, and domain names violates Agilitas’ prior established and
`
`exclusive rights in its name and registered mark. Despite being placed on notice of plaintiffs
`
`piior rights, defendants have refused to curtail their unlawful activities.
`
`18.
`
`Defendants’ use of the AGIL1TAS CAPITAL and AGILITAS ENERGY marks,
`
`the Agilitas Capital, LLC and Agilitas Energy, LLC business names, and the agi1itascapitl.corn
`
`and agilitasenergy.com domain names to identify services closely related to those of plaintiff
`
`Agilitas is likely to confuse and deceive the trade and the public unless enjoined.
`
`19.
`
`On information and belief, Defendants unlawful use of plaintiffs AGILITAS
`
`mark has extended to New York and this district, including without limitation in connection with
`
`projects under construction in Hauppauge, Holbrook, and elsewhere on Long Island.
`
`20.
`
`Defendants’ acts are willful, as they have continued to use the AGILITAS
`
`formative names, marics, and domain names despite receiving a cease and desist letter from
`5
`
`827632.3
`
`

`

`Case 2:18-cv-03294 Document 1 Piled 06/05)18 Page 6 of 18 PagelD #: 6
`
`plaintiff Agilitas to Agilitas Capital LLC (copy attached as Exhibit B), and despite plaintiff’s
`
`patient efforts to settle this case without need of litigation.
`
`21.
`
`Regardless of defendants’ intent, their use of AGILITAS formative marks, names,
`
`and domain names will create a false impression as to the source or sponsorship of defendants’
`
`business and services. Such use places plaintiff’s valuable reputation in defendant’s hands.
`
`Particularly in the investment field, which is built on trust, this will destroy the value ofAgilitas’
`
`name and mark, because it will destroy its ability to indicate quality services emanating from a
`
`single source,
`
`22.
`
`Defendants’ infringement on plaintiff’s name and incontestably-registered mark is
`
`causing irreparable injuiy to Agilitas and will continue to damage Agilitas and deceive the public
`
`unless enjoined by this Court. Agilitas has no adequate remedy at law.
`
`FIRST CLAIM FOR RELIEF BY PLAtNTIFF
`FOR FEDERAL TPADEMAPJ( INFRINGEMENT
`(15 U.S.C. l1l4)
`
`23.
`
`Plaintiff realleges each and every allegation set forth in paragraphs I through 22
`
`above, and incorporates them herein by this reference.
`
`24,
`
`Defendants’ tise of the AGILITAS CAPiTAL and AGILITAS ENERGY marks,
`
`the Agilitas Capital, LLC and AgHitas Energy, LLC business names, and the agilitascapital.com
`
`and agilitasenergy.com domain names in connection with the sale, offering for sale, distribution,
`
`promotion, and advertising of related products and services infringes plaintiff’s incontestable
`
`Registration No. 4082030 for AGILITAS. Such use is likely to cause confusion, to cause
`
`mistake, or to deceive, and constitutes federal trademark infringement.
`
`25.
`
`Consumers and the trade are likely to be confused, mistaken, or deceived, and to
`
`believe that defendants’ products and services arc those of plaintiff, or are sponsored, authorized,
`
`827G3 82.3
`
`6
`
`

`

`Case 2;18-cv-03294 Document 1 Filed 06/05/18 Page 7 of 18 Page ID #: 7
`
`licensed by or otherwise connected with plaintiff, or that defendants are plaintiff or are
`
`connected with it. By their acts, defendants unjustly enriches themselves and damage plaintiff.
`
`26.
`
`Defendant’s acts are in violation of Section 32 of the Lanharn Act, 15 U.S.C.
`
`§1114.
`
`27.
`
`2$.
`
`Defendants’ acts are willful and deliberate.
`
`Defendants’ conduct will cause irreparable injury to plaintiff Agilitas unless
`
`enjoined by this Court. Plaintiff Agilitas has no adequate remedy at law.
`
`SECOND CLAIM FOR RELIEF
`FEDERAL UNFAIR COMPETITION
`(15 U.S.C. S 1125(a))
`
`29.
`
`Plaintiff realleges each and every aLlegation set forth in paragraphs I through 28
`
`above, and incorporates them herein by this reference.
`
`30.
`
`Defendants’ use of the AGILITAS CAPITAL and AGILITAS ENERGY marks,
`
`the Agilitas Capital, LLC and Agilitas Energy, LLC business names, and the agilitascapital.com
`
`and agilitasenergy.com domain irnines, which aie highly similar to plaintiff’s AGILITAS mark
`
`and Agilitas Partners, LLP business name -- iii connection with the advellisi]lg, promotion and
`
`sale of services that arc related to, or competitive with those offered by plaintiff, but that are not
`
`under plaintiffs control or management -- constitutes unfair competition. Defendants’ acts
`
`constitute the use of a false designation of origin and a false representation that defendants’
`
`services are plaintiffs services, or are sponsored, authorized, licensed by or otherwise connected
`
`with plaintiff and their quality assured thereby.
`
`31.
`
`Defendants’ acts are in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §
`
`1125(a).
`
`32.
`
`Defendants’ conduct will cause irreparable injury to plaintiff unless enjoined by
`
`this Court. Plaintiff has no adequate remedy at law.
`7
`
`82
`
`82 .2
`
`

`

`Case 2:18-cv-03294 Document 1 Filed 06/05/18 Page 8 of 18 Page ID #: 8
`
`THIRD CLAIM FOR RELIEF
`COMMON LAW UNFAIR COMPETITION
`
`33.
`
`Plaintiff reaHeges each and every allegation set forth in paragraphs I through 32
`
`above, and incorporates them herein by this reference.
`
`34.
`
`Defendants have prominently used AGTLITA$ CAPITAL and AGILITAS
`
`ENERGY marks, the Agilitas Capital, LLC and Agilitas Energy, LLC business names, and the
`
`agilitascapitaLcom and agilitasenergy.com domain names, in connection with their business and
`
`the advertising, promotion and provision of their own services. Defendants’ use of AGILITAS
`
`formative marks, names, and domain names for its own, related services is likely to confuse the
`
`public as to the origin, source, sponsorship or quality of defendants’ business and services and is
`
`likely to mislead persons to believe that defendant’s business and services are authorized by or
`
`affiliated with plaintiff.
`
`35.
`
`Defendants’ use of the AGILITAS CAPITAL and AGILITAS ENERGY marks,
`
`the Agilitas Capital, LLC and Agilitas Energy, LLC business names, and the agilitascapital.com
`
`and agilitasenergy.com domain names is with knowledge of plaintiffs prior rights in the
`
`AGILITAS name and mark. By appropriating the goodwill of plaintiffs name and mark,
`
`defendants unjustly enrich themselves and damage plaintiff.
`
`36.
`
`Defendants’ conduct constitutes New York common law unfair competition with
`
`plaintiff, which will cause irreparable injury to plaintiffs good will and reputation unless
`
`enjoined by this Court.
`
`FOURTH CLAIM fOR RELIEF
`FEDERAL CYBERPIRACY
`(15 U.S.C. 1 l25(d
`
`37.
`
`Plaintiff real leges each and every allegation set forth in paragraphs I through 36
`
`above, and incorporates them herein by this reference.
`
`827G323
`
`8
`
`

`

`Case 2:18-cv-03294 Document 1 Filed 06/05/18 Page 9 of 1$ PagelD #: 9
`
`32.
`
`Defendants have registered and used the domain names agilitascapitaLcom and
`
`agilitasenergy.com. That adoption was made on constructive notice of plaintiff Agilitas’ mark,
`
`which existed as a distinctive, federally-registered mark at the time defendants registered their
`
`domain names. Therefore defendants’ actions constitute federal cyberpiracy pursuant to Section
`
`43(d) of the Lanham Act, 15 U.S.C. §1125(d).
`
`39,
`
`There exists no relationship between plaintiff Agi]itas and defendants that would
`
`give rise to any license, permission or other right by which defendants could own or use any
`
`domain names incorporating plaintiffs mark.
`
`40.
`
`Defendants registered and are using their domain names, both of which direct to a
`
`website at http://vw.agiHtascapitaLcom, in bad faith under Section 43(d) of the Lanham Act,
`
`15 U.S.C. §1125(d). Defendants clearly are without any trademark or intellectual properly rights
`
`in the domain names because, inter alia: (a) there was no use of the domain names in connection
`
`with the bona fide offering of any goods or services prior to plaintiffs use and registration of the
`
`AGILITAS mark; and (b) there is no bona fide noncommercial or fair use of the mark in a web
`
`site under the domain names. Defendants did not have reasonable grounds to believe that the use
`
`of the domain names agilitascapital.com or agilitasenergy.com was a fair use of the mark or was
`
`otherwise lawful.
`
`41.
`
`Defendants’ conduct will cause irreparable injury to plaintiff Agilitas unless this
`
`Court acts to transfer the domain names at issue to plaintiff or orders the forfeiture or
`
`cancellation of that domain names. Plaintiff has no adequate remedy at law.
`
`WI-IEREFORE, plaintiff demands judgment as follows:
`
`1.
`
`Permanently enjoining defendants, their employees, agents, officers, directors,
`
`attorneys, successors, affiliates, subsidiaries and assigns, and all those in active concert and
`
`participation with defendants from:
`
`9
`
`g276382.3
`
`

`

`Case 2:18-cv-03294 Document 1 Filed 06/05/18 Page 10 of 18 PagelD #: 10
`
`(a)
`
`Using the AGILITAS CAPITAL and AGILITAS ENERGY marks, the
`
`Agilitas Capital, LLC and Agilitas Energy, LLC business names, and the
`
`agilitascapital.com and agilitasenergy.com domain names, or any confusingly
`
`similar mark or name as the name of any business or as a trademark, service
`
`mark, corporate name, domain name, social media name, or other designation;
`
`(b)
`
`Imitating, copying, using, reproducing, displaying or authorizing any third
`
`party to imitate, copy, use, reproduce or display plaintiffs AGILITAS mark,
`
`Agilitas Partners, LLP name, or any confusingly similar name or mark, in any
`
`manner or form or using any variation, reprodtiction, counterfeit, copy, colorable
`
`imitation, or simulation thereof on or in connection with any business or service
`
`or the advertisement or promotion thereof;
`
`(c)
`
`Using, authorizing or aiding in any way any third party to use any false
`
`designation of origin or false description, or performing any act that can, or is
`
`likely to, mislead members of the trade or public to believe that any service
`
`offered by defendant is in any manner associated or connected with plaintiff, or
`
`sponsored, approved or authorized by plaintiff;
`
`(U)
`
`Engaging in any other activity constituting unfair competition with
`
`plaintiff, or constituting an infringement of plaintiff’s AGILITAS mark or Agilitas
`
`Partners, LLP name;
`
`(e)
`
`(f
`
`Engaging in any of the acts complained of in the Complaint; and
`
`Assisting, aiding or abetting any other person or business entity in
`
`engaging in or performing any of the activities referred to in subparagraphs (a)
`
`through (e) above.
`
`82763823
`
`10
`
`

`

`Case 2:18cv-03294 Document 1 Piled 06105/18 Page 11 of 1$ PagelD #:11
`
`2.
`
`Directing that defendants deliver up to plaintiff within five (5) days after entry of
`
`judgment, all advertisements, promotional materials, brochures, catalogs, signs, displays,
`
`literature, stationary and all other matter in its possession, or under its control, incorporating,
`
`featuring the AGILITAS CAPITAL and AGILITAS ENERGY marks, the Agilitas Capital, LLC
`
`and Agilitas Energy, LLC business names, and the agilitascapital.com and agilitasenergy.com
`
`domain names, or any variations or colorable imitations thereof, or which could be used to
`
`reproduce the names or marks.
`
`3.
`
`Directing that dcfendants, within five (5) days after entry ofjudgment, make all
`
`books and records and other documents concerning all transactions relating to the AGTLITAS
`
`CAPITAL and AGILITAS ENERGY marks, the Agilitas Capital, LLC and Agilitas Energy,
`
`LLC business names, and the agilitascapital.com and agilitasenergy.com domain names, or any
`
`confusingly similar mark, name, domain name or social media name, concerning any services or
`
`products connected therewith, or featuring such name or mark availab]e to plaintiff for review
`
`and inspection.
`
`4.
`
`Directing that defendants, pursuant to Section 43(d) of the Lanham Act, 15 U.S.C.
`
`§ 1125(d), must transfer the domain names agilitascapital.com and agilitasenergycom to plaintiff.
`
`5.
`
`Directing such other relief as the Court may deem appropriate to prevent the trade
`
`and public from deriving the erroneous impression that any services or business advertisement
`
`promotion or product by defendants bearing the AGILITAS CAPITAL and/or AGIUTAS
`
`ENERGY marks, the Agilitas Capital, LLC and Agilitas Energy, LLC business names, and the
`
`agilitascapital.com and agilitasenergy.com domain names or any confusingly similar mark or
`
`name, is authorized by plaintiff or related in any way to plaintiff.
`
`27&3S2.3
`
`11
`
`

`

`Case 2:18-cv-03294 Document 1 Filed 06/05/13 Page 12 of 18 Page ID #: 12
`
`6.
`
`Directing that defendants file with the Court and serve upon plaintiffs counsel
`
`within thirty (30) days after entry of such judgment, a report in writing under oath, setting forth
`
`in detail the manner and form in which defendants have complied with the above.
`
`7.
`
`Awarding plaintiff such damages as it has sustained or wilt sustain by reason of
`
`defendants’ acts of unfair competition; all gains, profits and advantages derived by defendants
`
`from such conduct; and, pursuant to 15 U.S.C. § 1107, an amount up to three times the amount
`
`of such actual damages sustained as a result of defendants’ violation of the Lanham Act.
`
`8.
`
`Awarding plaintiff exemplary and punitive damages to deter any future willful
`
`infringement as the Court finds appropriate.
`
`9.
`
`Awarding plaintiff its costs and disbursements incurred in this action, including
`
`its reasonable attorneys’ fees.
`
`1 0.
`
`Awarding plaintiff interest, including prejudgment interest, on the foregoing
`
`sums,
`
`proper.
`
`11.
`
`Awarding plaintiff such other and further relief as the court may deem just and
`
`DATED: June 5,2018
`
`CARTER LEDYARD & MILBURN, LLP
`
`By:___
`Jo,14 M. Griei i, Jr.
`2 Wall
`fre
`NewY rk, Y 1000
`(212)73
`00
`
`821O8.3
`
`12
`
`

`

`Case 2:18-cv-03294 Document 1 Filed 06105/18 Paqe 13 of 18 PagelD #: 13
`
`Exhibit A
`
`8?632.3
`
`13
`
`

`

`Case 2:18-cv-03294 Document 1 Filed 06105/18 Page 14 of 18 PagelD #: 14
`
`]avascript requited to view site-wide navigation bar. &gt;&gt; <a
`h ref=”http :I/www. uspto. 9 ov/sitenav. htm’>View Alternative Site Navigation <Ia>
`Trade;’narks > Trademark E)ectronic Search System (TESS)
`
`TESS was last updated on Fri May ‘18 04:52:27 EDT 2018
`
`fliTITTF1 flt Use the trBackl) button of the Internet
`Browser to return to TESS)
`
`AGILITAS
`
`Word Mark
`Translations
`Goods and
`Services
`
`AGILITAS
`The wording “AG ILITAS has no meaning in a foreign language.
`(CANCELLED) IC 035. US 100 101 102. G & 5: Business organisation and management
`consulting services; business planning; business administration; financial management
`consultancy; business appraisals; assistance with business management; business research;
`commercial and industrial management assistance; economic forecasting; tax consultation;
`business advice and information relating to loans, finance and capital
`
`IC 036, US 100 101 102. G & 5: Financial consuitancy; investment services, namely, asset
`acquisition; investment of funds for others; financial services, namely, investment advice,
`investment management, investment consultation and investment of funds for others;
`financial services, namely, raising debt and equity capital for others; financing services;
`capital investment services; repair cost evaluations
`
`Standard
`Characters
`Claimed
`Mark Drawing
`Code
`Serial Number
`Filing Date
`Current Basis
`Original Filing
`Basis
`Published for
`Opposition
`Change In
`Registration
`
`827682.3
`
`(4) STANDARD CHARACTER MARK
`
`85028899
`May 3,2010
`44 E
`
`44D
`
`October25, 2011
`
`CHANGE IN REGISTRATION HAS OCCURRED
`
`14
`
`

`

`Case 2:18-cv-03294 Document 1 ElIed 06/05/18 Page 15 of 18 PagelD 4: 15
`
`Registration
`Number
`Registration
`
`Owner
`
`Attorney of
`
`Priority Date
`Type of Mark
`Register
`Affidavit Text
`Live/Dead
`Indicator
`
`4082030
`
`nuary 10, 2012
`
`(REGISTRANT) AGILITAS PARTNERS LLP limited liability partnership UNITED KINGDOM
`BROADWALK HOUSE 5 APPOLD STREET London UNITED KINGDOM EC2A2HA
`
`Rose Auslander
`
`April 16, 2010
`SERVICE MARK
`PRINCIPAL
`SECT 15. PARTIAL SECT 8 (6-YR),
`
`LIVE
`
`I
`
`I ]iOII sIu I t3usiwgss
`
`llfiL I IRIVACY ‘oi,ICY
`
`827t382.
`
`15
`
`

`

`Case 2:18-cv-03294 Document 1 Filed 06/05/18 Page 16 of 18 PagelD #: 16
`
`]xhibitB
`
`8273S2.3
`
`16
`
`

`

`Case 2:18-cv-03294 Document 1 RIed 06/05/18 Page 17 of 18 PagelD #: 17
`
`CARTER LEDRD & MILBURN LLP
`Counselors at Law
`
`ROSS AUShUIdSV
`Counse’
`
`Djred Dial 21 ‘-238-.S601
`E-mail: auslamkr@d,,,,pj
`
`2 WaIl St,cet
`New York, NY]0005-2072
`
`Tel (212) 732.3200
`Fax (212) 732.3232
`
`570 L inton
`Neir Yoi* NY 10022.8S6
`(212) 37J .2720
`
`EMAIL AND CERTIFIED MAIL, RETURN RECEI?T REQUESTED
`Contact2jgi litascapitalconi
`
`December 22, 2017
`
`Agilitas Capital, LLC
`40 I Edgewater Place, Suite 265
`Wakefield, MA 0)880
`
`21 Madbury Road
`Durham, NH 03824
`
`Re:
`
`Objection to infringement of the AGILITAS mark
`(Our Ref: AGIO2 001)
`
`Dear Sirs:
`
`We iepresent Agilitas Partners LLP (“Agilitas” or “our client”) in the United States. Agilitas is
`seriously concerned to learn that you are infringing their valuable AGILITAS name and mark.
`
`Our client owns incontestable U.S. Registration No. 4082030 for AGILITAS for investment and
`other financial services, as well as registrations for that mark internationally. Over the years, our
`client has invested Lime, energy and resources into creating and building goodwill and a valuable
`reputation in its AGILITAS name and mark. Your infringing use of AGILITAS CAPITAL in
`your business name, your http://www.agiliiascapital.com domain name, and as a mark, including
`without limitation on your website and on social media, is likely to cause confusion among our
`client’s customers, the pertinent trades, and the general public, and to lead to the false belief that
`you, your activities, and your websfte are part of Agilitas, or are sponsored, licensed, or
`otherwise approved by Agilitas—all to your great benefit and our client’s great harm. Your
`unauthorized use of AGILITAS CAPITAL constitutes, inter alto, trademark infringement,
`cybersquatling, and unfair competition, in violation of Sections 32 and 43 of the federal Lanham
`Act, as well as under various state laws, common law, and the laws of other countries. Remedies
`include injunctive relief and monetary damages, which may be trebled, domain name transfer,
`and attorneys’ fees.
`
`In view of the seriousness of this issue, and of our client’s long-standing prior rights, we demand
`a signed, completed copy of this letter by return email by January 5,2017, by which you and
`any and all individuals and entities associated with you, agree:
`
`8189961.1
`
`

`

`Case 2:18-cv-03294 Document 1 Filed 06/05/18 Page 18 of 18 PagelD #: 18
`
`Agilitas Capital, LLC
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`(5)
`
`to promptly take down the AGIUTAS CAPITAL mark from the
`agilitascapitaLcom website and from social media, inc]uding without
`limitation Linkedln, and from anywhere else it is displayed by you or on your
`behalf;
`to promptly cease and desist from all use of the Agilitas Capital, LLC name
`and agilitascapitaLcom site, and from all use, marketing, advertising,
`promotion and/or sale of any goods or services in connection with the
`AGILITAS CAPITAL mark and any other mark, business name, or domain
`name that is confusingly similar to AGILITAS, including without limitation
`such activities on the Internet, on your Infringing Website, arid on social
`media, including without limitation on your profiles on Linkedin;
`by that signed writing, to give your consent to transfer to Agilitas the
`agilitascapitaLcom domain name and any and all other domain names in your
`custody, possession, or control that include the AGILITAS mark or any
`marlcs confusingly similar thereto, and to provide the domain name unlock
`code(s) at the blank below in your signed letter or in your email:
`
`not to file any applications to register the AGILITAS CAPITAL mark, any
`other mark consisting of or containing AGILITAS or anything confusingly
`similar as a trademark, service mark, product or service identifier, brand
`name, business name, domain name or social media member name; and
`to cease and desist from any and all other acts of unfair competition with
`Agititas,
`
`We trust this will resolve this matter. If you have any questions or would like to discuss this
`matter, please contact the undersigned. This letter is written without prejudice to any of our
`client’s rights or remedies, all of which are expressly reserve