Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1158747
`
`Filing date:
`
`09/10/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92074200
`
`Party
`
`Correspondence
`Address
`
`Defendant
`JT Legal Group APC
`
`SEVAG DEMIRJIAN
`FOUNDATION LAW GROUP LLP
`4605 LANKERSHIM BLVD SUITE 650
`NORTH HOLLYWOOD, CA 91203
`UNITED STATES
`Primary Email: Sevag@foundationlaw.com
`Secondary Email(s): michael@jtlegalgroup.com
`310-870-3977
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Motion to Suspend for Civil Action
`
`Sevag Demirjian
`
`sevag@foundationlaw.com, valerie@foundationlaw.com
`
`/sevag demirjian/
`
`09/10/2021
`
`Motion To Suspend.pdf(14007 bytes )
`JT Legal Complaint wExhibits.pdf(2691700 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`Petitioner,
`
`
`
`YAGOUBZADEH LAW FIRM, LLP
`
`
`
`v.
`
`JT LEGAL GROUP, APC
`
` Registrant.
`
`
`__________________________________
`
`
`
`
`Cancellation No. 92074200
`
`Mark: LUCHADORES LEGALES
`
`
`
`
`
`MOTION TO SUSPEND
`
`JT Legal Group, APC (JTL), by its undersigned counsel, requests that the
`
`Board suspend the above captioned proceeding (Opposition Proceeding), pending
`
`disposition of a recently filed civil action between JTL and Yagoubzadeh Law
`
`Firm, LLP (YLF), as the litigation involves issues and claims in common with the
`
`Opposition Proceeding. In support of this motion, JTL, by its undersigned
`
`attorney, directs the Board to a copy of the Complaint and its corresponding
`
`exhibits that it filed on August 31, 2021 in the United States District Court for the
`
`Central District of California against YLF entitled JT Legal Group APC v.
`
`Yagoubzadeh Law Firm LLP, which is attached hereto.
`
`Dated: September 10, 2021
`
`
`
`
`Respectfully submitted,
`
`______/Sevag Demirjian/_______
`Sevag Demirjian
`Foundation Law Group
`
`

`

`4605 Lankershim Blvd., Suite 650
`North Hollywood, CA 91602
`Phone: 310-870-3977
`Email: sevag@foundationlaw.com
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and accurate copy of the foregoing was served
`
`this 10th day of September, 2021, via electronic mail upon the following:
`
`
`
`
`
`
`
`OMID E KHALIFEH
`OMNI LEGAL GROUP
`2029 CENTURY PARK E, SUITE 400
`LOS ANGELES, CA 90067
`UNITED STATES
`info@omnilegalgroup.com
`Phone: 310-276-6664
`Attorney for Petitioner
`
`______/Valerie Nichols/_______
`
`Valerie Nichols
`
`Foundation Law Group
`
`

`

`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 1 of 17 Page ID #:1
`
`
`
`SEVAG DEMIRJIAN (SBN 243656)
`FOUNDATION LAW GROUP LLP
`4605 Lankershim Boulevard, Suite 650
`North Hollywood, California 91602
`Telephone: 310-870-3977
`sevag@foundationlaw.com
`
`Attorneys for Plaintiff and Registrant JT LEGAL GROUP APC
`
`
`UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
`
`
`JT LEGAL GROUP APC, a California
`Corporation,
`
`
`
`vs.
`
`YAGOUBZADEH LAW FIRM LLP,
`and DOES 1-10, inclusive.
`
`
`
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`Defendants.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Case No.: 21-CV-7033
`
`COMPLAINT:
`
`1. DECLARATORY JUDGEMENT
`OF TRADEMARK NON-
`INFRINGEMENT;
`
`2. DECLARATORY JUDGMENT OF
`TRADEMARK INVALIDITY;
`
`3. CANCELLATION OF FEDERAL
`TRADEMARK APPLICATION
`
`4. FEDERAL TRADEMARK
`INFRINGEMENT
`
`5. FALSE DESIGNATION OF ORIGIN
`AND ASSOCIATION
`
`6. TRADEMARK INFRINGEMENT –
`COMMON LAW
`
`7. UNFAIR COMPETITION – CAL.
`BUS. & PROF. CODE §§ 17200
`8. UNFAIR COMPETITION-
`COMMON LAW
`
`DEMAND FOR JURY TRIAL
`
`
`
`
`
`
`
`____________________________________________________________________________
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`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 2 of 17 Page ID #:2
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`
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`
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`Plaintiff JT LEGAL GROUP APC (hereinafter “Plaintiff” or “JTLG”) hereby
`
`brings this action for a declaratory judgment of non-infringement of any purported
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`trademark rights allegedly owned by YAGOUBZADEH LAW FIRM LLP
`(hereinafter, “Defendant” or “YLF”), and of invalidity with respect to certain rights, as set
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`forth herein against Defendant and Does 1-10, and alleges as follows:
`
`PRELIMINARY STATEMENT
`
`1.
`
`Plaintiff JT LEGAL GROUP APC is a law firm that provides personal
`
`injury services. JT LEGAL GROUP APC own valuable intellectual property rights in their
`
`LUCHADORES LEGALES names and logo marks, comprising of trademarks, trade
`
`dress, and copyrights in connection with their Spanish speaking legal services.
`
`2.
`JT LEGAL GROUP APC holds a federal trademark registration for
`“LUCHADORES LEGALES” in connection with legal services with priority rights
`
`beginning in 2019.
`
`3.
`On information and belief, sometime in 2020, Defendant Yagoubzadeh Law
`Firm LLP became aware of Plaintiff’s extensive use of the mark. Defendant had allegedly
`
`previously used the mark 1-800-LUCHADOR to provide legal services. If Defendant has
`ever used such a mark, it had abandoned such use years ago. Upon seeing Plaintiff’s
`
`extensive successful use of the mark, Defendant filed its own application and brought a
`cancellation action against Plaintiff’s trademark registration in the Trademark Trial and
`Appeal Board, deciding to restart use of their mark. Plaintiff’s mark is abandoned and/or
`
`invalid. If there is any confusion between these trademarks, it is Defendant who is
`infringing Plaintiff’s trademark.
`
`PARTIES
`
`4.
`
`Plaintiff JT Legal Group APC is a California Corporation having its
`
`principal place of business at 801 N Brand Blvd Suite 1130, Glendale, CA 91203.
`(hereinafter “Plaintiff” or “JTLG”)
`
`5.
`
`Defendant Yagoubzadeh Law Firm LLP, is a self-proclaimed California
`
`limited liability company, and upon information and belief, having its principal place of
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`____________________________________________________________________________
`
`- 2 -
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`

`

`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 3 of 17 Page ID #:3
`
`
`
`business at 10866 Wilshire Blvd STE 600, Los Angeles, CA 90024. (hereinafter “YLF”
`or “Defendant”)
`
`6.
`The true names, identities and capacities, whether individual, associate,
`corporate or otherwise, of Defendants DOES 1 to 10, inclusive, and each of them (“the
`DOE Defendants”), are unknown to Plaintiff at this time, who therefore sues the DOE
`
`Defendants by such fictitious names. When the true names and capacities or participation
`
`of the DOE Defendants are ascertained, Plaintiff will amend this complaint to assert the
`
`true names, identities and capacities. Plaintiff is informed and believes and thereon alleges
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`that each of the DOE Defendants sued herein is responsible for the wrongful acts alleged
`
`herein, and is therefore liable to Plaintiff in some manner for the events and happenings
`
`alleged in this complaint. Plaintiff is informed and believes and thereon alleges that at all
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`times herein mentioned, the DOE Defendants were and are doing business and/or residing
`
`in this District.
`
`JURISDICTION AND VENUE
`
`7.
`
`This action arises under the trademark Federal laws, 15 U.S.C. § 1051, et
`
`seq. and under the statutory and common law of unfair competition in the state of
`
`California.
`
`8.
`
`This Court has federal subject matter jurisdiction over the claims asserted in
`
`this action pursuant to 28 U.S.C. §§ 1331 and 1338(a), 15 U.S.C. § 1121 as an action
`
`arising out of the Lanham Act, and the Declaratory Judgment Act
`
`9.
`
`The Court has personal jurisdiction over Defendants by virtue of the fact
`
`that, upon information and belief, they have transacted business within the State of
`
`California; and/or otherwise avails itself of the privileges and protections of the laws of
`the State of California and have infringed Plaintiff’s trademarks within the state and this
`
`District.
`
`10. Venue is proper in the Central District of California and the County of Los
`
`Angeles under 28 U.S.C. 1391(b) and (c) because Defendant does business in, has
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`____________________________________________________________________________
`
`- 3 -
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`

`

`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 4 of 17 Page ID #:4
`
`
`
`substantial contacts with and/or may be found in the Central District of California, and a
`
`substantial portion of the events at issue have arisen and will arise in this judicial district.
`PLAINTIFF’S BUSINESS AND TRADEMARKS
`
`11.
`
`Plaintiff JTLG has been active in the legal industry for over 7 years, since it
`
`registered as a business entity on June 6, 2014.
`Starting on and around March of 2019 JTLG began using “LUCHADORES
`12.
`LEGALES” and related design logos in commerce to market to its Spanish speaking
`
`clients and consequently applied for and registered a corresponding federal trademark as
`
`follows:
`
`Mark
`
`Reg. No.
`
`Class and
`
`Filing Date:
`
`Reg. Date
`
`Goods/Services
`
`LUCHADORES
`LEGALES
`
`(hereinafter collectively referred to as the “JTLG MARK”).
`
`4/17/19
`
`10/15/19
`
`5885351
`
`IC 045. Legal
`services
`
`13. A true and correct copy of the certificate of registration of the JTLG MARK
`
`is attached hereto as Exhibit A.
`The English language translation of the Spanish words “LUCHADORES
`14.
`LEGALES” is “LEGAL FIGHTERS.”
`
`15.
`
`16.
`
`JTLG uses the JTLG MARK in connection with legal services.
`
`These services are offered to potential clients through their full service
`
`website found at www.luchadoreslegales.com, as well as through their social media
`
`accounts at https://www.facebook.com/LuchadoresLegales/,
`
`https://www.instagram.com/LuchadoresLegales/ and through their attorneys, numerous
`
`physical offices located in Los Angeles, Glendale, Huntington Park, Downey and Las
`
`Vegas, and other phone numbers and websites, including (562) 553-6500 and 1-800-210-
`
`0000 (See Exhibit B).
`JTLG owns and operates a “Luchadores Legales” branded physical office
`
`17.
`
`location in Huntington Park located at 2864 E Florence Ave Unit 101, Huntington Park,
`
`____________________________________________________________________________
`
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`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 5 of 17 Page ID #:5
`
`
`
`CA 90255 and advertises its services under LUCHADORES LEGALES through the use
`
`of billboards, bus tails and live events.
`
`18.
`
`JTLG has a stellar reputation representing individuals in the Los Angeles
`
`area in personal injury actions with a successful track record in obtaining high value
`
`settlements and judgments.
`
`TIMELINE
`JTLG’s federal trademark application for “Luchadores Legales” was filed
`
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`
`on April 17, 2019, and given the serial number: 88389892. Despite the USPTO giving the
`public a thirty day opportunity to oppose the ‘892 Application beginning on July 30, 2019,
`no opposition was filed. Thereafter, JTLG’s trademark for “LUCHADORES LEGALES”
`in connection with “legal services” was registered as a federal trademark on October 15,
`2019, and given the registration number “5885351.”
`20. On December 20, 2019, Defendant, Yagoubzadeh Law Firm LLP (“YLF”)
`filed an application to register “1-800-LUCHADOR”, USPTO serial number 88736099,
`claiming a date of first use of October 1, 2013 (hereinafter “Defendant’s Application”).
`The Spanish language word “LUCHADOR” is translated in English to
`21.
`“FIGHTER.”
`22. On March 23, 2020, the USPTO issued an office action, rejecting YLF’s
`trademark application in light of Plaintiff/Registrant’s registered trademark for
`“LUCHADORES LEGALES” based upon likelihood of confusion and JTLG’s priority.
`
`23. YLF refused to co-exist with Plaintiff, and therefore on May 8, 2020, YLF
`filed a cancellation proceeding in the Trademark Trial and Appeal Board (“TTAB”)
`against JTLG’s registered trademark, claiming priority based on the alleged first use of
`
`the mark 1-800-LUCHADOR, having the cancellation number 92074200.
`24. On information and belief, YLF never used “1-800-LUCHADOR” as a
`
`trademark and/or continuously used in commerce since the alleged first use date of
`
`October 1, 2013.
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`____________________________________________________________________________
`
`- 5 -
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`

`

`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 6 of 17 Page ID #:6
`
`
`
`25. On information and belief, YLF has abandoned any and all rights to its mark,
`
`if any rights existed in the first place.
`
`26. On information and belief, there is not a likelihood of confusion between
`
`LUCHADORES LEGALES and 1-800-LUCHADOR and that both should be allowed to
`
`continue concurrent use of their respective marks.
`
`27.
`
`If Plaintiff is mistaken and a likelihood of confusion does exist between
`
`LUCHADORES LEGALES and 1-800-LUCHADOR, then Plaintiff is the senior user and
`priority holder and therefore YLF is infringing Plaintiff’s registered trademark rights, and
`
`Plaintiff is entitled to damages for trademark infringement.
`
`28. On information and belief, YLF has claimed ownership of the domain
`
`www.1800luchador.com as evidence of use, but as of the filing of this complaint, the
`
`website displays no content. A true and correct screenshot of the dead page viewable at
`YLF’s URL www.1800luchador.com is attached hereto as Exhibit C.
`29. On information and belief, the Internet Archive “Wayback Machine” is well
`
`regarded and trusted resource that archives internet domains, and is located at
`
`http://web.archive.org.
`
`30. On information and belief, if www.1800luchador.com ever displayed
`
`content, then the Wayback Machine would have archives of it.
`
`31. As of the writing on this Complaint, The Wayback Machine has zero
`
`archives for www.1800luchador.com, indicating the website was never used, and thus has
`no relevance to YLF’s alleged trademark rights.
`
`32. On information and belief, the United States Patent and Trademark Office
`(“USPTO”) Trademark Examiners made a mistake by referencing a conflict under
`Trademark Act Section 2(d) on the grounds that YLF’s applied-for mark 1-800-
`LUCHADOR so resembles Plaintiff’s LUCHADORES LEGALES mark that it is likely a
`
`potential consumer would be confused, mistaken, or deceived as to the source of the goods
`
`and/or services of the applicant and registrant.
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`____________________________________________________________________________
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`- 6 -
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`

`

`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 7 of 17 Page ID #:7
`
`
`
`33. YLF claims
`
`they have been damaged by Plaintiff’s use of
`
`the
`
`LUCHADORES LEGALES mark, alleging consumer confusion that benefits Plaintiff.
`
`Plaintiff has not had a single instance of a client confusing them with Defendants since
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`they launched legal services under the LUCHADORES LEGALES mark almost two and
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`a half years ago on March 01, 2019.
`
`34.
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`This dispute began a cancellation proceeding initiated by YLF in the
`
`Trademark Trial and Appeal Board, which does not have the power to award monetary
`
`damages.
`35. Defendant’s allegations that Plaintiff’s use of the its mark infringes
`Defendant’s purported trademark rights, coupled with its unreasonable settlement
`
`demands, and its likelihood that it would be filing a lawsuit for damages if successful in
`
`the TTAB, collectively creates a substantial justiciable controversy between the parties,
`
`having adverse legal interests of sufficient immediacy and reality to warrant the issuance
`
`of a declaratory judgment in this instance. Such accusations have given rise to a case of
`
`actual controversy within the jurisdiction of this Court pursuant to the Declaratory
`
`Judgment Act.
`
`FIRST CAUSE OF ACTION
`
`(Declaratory Judgement of Trademark Non-Infringement of 1-800-LUCHADOR)
`
`36.
`
`Plaintiff repeats and realleges each and every allegation in the foregoing
`
`paragraphs as though fully set forth herein.
`Plaintiff’s LUCHADORES LEGALES Mark does not infringe any alleged
`
`37.
`
`trademark rights held by Defendant, including, without limitation, 1-800-LUCHADOR
`
`mark.
`
`38.
`There is no likelihood of consumer confusion as to source, affiliation,
`sponsorship, or connection with Defendant that is caused by Plaintiff’s use of their
`
`LUCHADORES LEGALES mark.
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`____________________________________________________________________________
`
`- 7 -
`
`

`

`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 8 of 17 Page ID #:8
`
`
`
`SECOND CAUSE OF ACTION
`
`(Declaratory Judgment of Trademark Invalidity of 1-800-LUCHADOR)
`
`39.
`
`Plaintiff repeats and realleges each and every allegation set forth in the
`
`foregoing paragraphs as though fully set forth herein.
`
`40. Upon information and belief, the 1-800-LUCHADOR mark covered by
`Defendant’s Trademark Application is not currently in use in commerce and/or has not
`
`been used in commerce for three (3) consecutive years for some of the goods/services set
`forth in Defendant’s Application (“Abandoned Goods/Services”). Specifically, there is no
`
`evidence that Defendant has ever used 1-800-LUCHADOR in commerce, or that it has
`
`used it in commerce continuously, and the mark has only ever been used by Defendant on
`an obscure sub-page on Defendant’s main website at www.yaglaw.com, namely
`
`https://www.yaglaw.com/1800luchador, as seen in the singular specimen submitted by
`
`Defendant in their trademark application.
`
`41. Upon information and belief, Defendant has abandoned any and all rights it
`
`may have, or may have had (if any) in and to the 1-800-LUCHADOR mark covered by
`Defendant’s Application with respect to the Abandoned Goods/Services.
`
`42. Consequently, upon information and belief, Defendant has abandoned all or
`
`some of its rights in and to the 1-800-LUCHADOR mark.
`
`43. By reason of the foregoing, Plaintiff will be damaged by the registration of
`
`the 1-800-LUCHADOR Mark.
`
`THIRD CAUSE OF ACTION
`(Cancellation of Federal Trademark Application– 15 U.S.C. § 1119)
`
`44.
`
`Plaintiff repeats and realleges each and every allegation set forth in the
`
`foregoing paragraphs as though fully set forth herein.
`45. Defendant’s Federal trademark application to register 1-800-LUCHADOR
`so resembles Plaintiff’s registered trademarks as to be likely, when used on or in
`
`connection with the services identified in the applications, to cause confusion, cause
`
`mistake, or deceive, in violation of 15 U.S.C. § 1052(d).
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`____________________________________________________________________________
`
`- 8 -
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`

`

`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 9 of 17 Page ID #:9
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`
`
`46.
`
`Plaintiff is being damaged each day the Infringing Defendant’s Marks are
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`used because its LUCHADORES LEGALES Marks have priority and there is a likelihood
`
`of confusion between the Infringing 1-800-LUCHADOR Mark and the LUCHADORES
`LEGALES Mark. and as such Defendant’s application should be cancelled.
`
`47.
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`Plaintiff accordingly prays for the Court to use its power under 15 U.S.C.
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`§1119 to cancel the application for the Infringing 1-800-LUCHADOR mark on the
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`grounds of likelihood of confusion.
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`FOURTH CAUSE OF ACTION
`Federal Trademark infringement – 15 U.S.C. §§ 1114 – Against Defendant
`48.
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`Plaintiff repeats and realleges each and every allegation set forth in the
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`foregoing paragraphs as though fully set forth herein.
`In the event, there is a likelihood of confusion between Plaintiff’s registered
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`trademark and Defendant’s alleged trademark 1-800-LUCHADOR, it is Defendant that is
`liable for piggybacking off the massive goodwill established by Plaintiff’s success.
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`50. On information and belief, in and around 2020, Defendant noticed
`Plaintiff’s massive recent successful use in commerce of LUCHADORES LEGALES and
`willfully and knowingly attempted to benefit off Plaintiff’s goodwill by creating, re-
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`launching or identifying its obscure sub-page https://www.yaglaw.com/1800luchador,
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`without authority, permission, or authorization in a bold yet transparent attempt to usurp
`Plaintiff’s superior trademark rights.
`51. On information and belief, if Defendant’s 1-800-LUCHADOR marks are
`found to be confusingly similar to Plaintiff’s registered LUCHADORES LEGALES
`mark–in a manner that is likely to cause confusion with respect to the source and origin
`of the parties’ services and is likely to cause confusion or mistake and to deceive
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`consumers as to an affiliation, connection, or association with, or approval or sponsorship
`of Plaintiff’s businesses, and/or its services, then Defendant’s recent acts constitute
`trademark infringement of Plaintiff’s Marks in violation of 15 U.S.C. § 1114.
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`____________________________________________________________________________
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`- 9 -
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`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 10 of 17 Page ID #:10
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`52.
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`Plaintiff will then be entitled to recover from Defendant either statutory or
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`the actual damages that Plaintiff has sustained, is sustaining, and/or is likely to sustain as
`a result of Defendants’ wrongful acts.
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`53.
`Pursuant to 15 U.S.C. § 1117, Plaintiff is also entitled to recover its costs of
`suit, and its attorneys’ fees because this is an exceptional case.
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`FIFTH CAUSE OF ACTION
`(False Designation of Origin and Association – 15 U.S.C. § 1125(a) – Against
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`Defendants)
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`54.
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`Plaintiff repeats and realleges each and every allegation set forth in the
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`foregoing paragraphs as though fully set forth herein.
`55. Defendant’s unauthorized use of Plaintiff’s Marks or marks confusingly
`similar thereto in conjunction with Defendant’s business and their offering of legal
`services, Defendant’s false designation of origin, and Defendant’s false and misleading
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`descriptions and representations of fact, as alleged herein, are likely to cause confusion,
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`or to cause mistake, or to deceive as to the affiliation, connection, or association of
`Defendant with Plaintiff’s Marks, or as to the origin, sponsorship, or approval of
`Defendant’s services or commercial activities by Plaintiff in violation of 15 U.S.C. §
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`1125(a).
`56. As a direct and proximate result of Defendant’s wrongful acts, Plaintiff has
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`suffered and continues to suffer and/or is likely to suffer damage to its trademarks, trade
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`name, business reputation, and goodwill. Defendant will continue, unless restrained, to
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`conduct their business and offer services using their Marks or other trademarks
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`confusingly similar thereto and will cause irreparable damage to Plaintiff. Plaintiff has no
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`adequate remedy at law and is entitled to an injunction restraining Defendant and, as
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`applicable, its officers, members, agents, servants, and employees, and all persons acting
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`in concert with them, from engaging in further acts of false designation of origin or
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`association.
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`____________________________________________________________________________
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`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 11 of 17 Page ID #:11
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`57.
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`Plaintiff is further entitled to recover from Defendant statutory damages or
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`the actual damages that Plaintiff has sustained, is sustaining, and/or is likely to sustain as
`a result of Defendant’s wrongful acts. Plaintiff is presently unable to ascertain the full
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`extent of the monetary damages that it has suffered and/or is likely to sustain by reason of
`Defendant’s acts of false designation of origin or affiliation.
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`58.
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`Plaintiff is further entitled to recover from Defendant the gains, profits, and
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`advantages that Defendants have obtained as a result of their wrongful acts. Plaintiff is
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`presently unable to ascertain the extent of the gains, profits, and advantages that
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`Defendants have realized by reason of their acts of false designation of origin or affiliation.
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`59.
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`Plaintiff is further entitled to recover from Defendant either statutory or the
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`actual damages that Plaintiff has sustained, is sustaining, and/or is likely to sustain as a
`result of Defendants’ wrongful acts.
`60. Because of the willful nature of Defendant’s wrongful acts, Plaintiff is
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`entitled to an award of treble damages and increased profits under 15 U.S.C. § 1117.
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`SIXTH CAUSE OF ACTION
`(Trademark Infringement – Common Law)
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`61.
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`Plaintiff repeats and realleges each and every allegation set forth in the
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`foregoing paragraphs as though fully set forth herein.
`62. Defendant has used in commerce, without Plaintiff’s permission or
`authorization, Plaintiff’s Marks or marks confusingly similar to the Plaintiff’s Marks - in
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`a manner that is likely to cause confusion with respect to the source and origin of
`Defendant’s services and is likely to cause confusion or mistake and to deceive consumers
`as to Plaintiff’s affiliation, connection, or association with, or approval or sponsorship of,
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`Defendant, its businesses, and/or its services.
`63. Defendant’s acts constitute trademark infringement of Plaintiff’s Marks in
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`violation of the common law.
`64. As a direct and proximate result of Defendant’s wrongful acts, Plaintiff has
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`suffered and continues to suffer and/or is likely to suffer damage to its trademarks,
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`____________________________________________________________________________
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`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 12 of 17 Page ID #:12
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`business reputation, and goodwill. Defendant will continue to use Infringing Marks unless
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`restrained, and will cause irreparable damage to Plaintiff. Plaintiff has no adequate remedy
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`at law and is entitled to an injunction restraining Defendant and, as applicable, its officers,
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`members, agents, servants, and employees, and all persons acting in concert with them,
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`from engaging in further acts of infringement.
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`65.
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`Plaintiff is further entitled to recover from Defendant the actual damages
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`that Plaintiff has sustained, is sustaining, and/or is likely to sustain as a result of
`Defendant’s wrongful acts.
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`66.
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`Plaintiff is further entitled to recover from Defendant the gains, profits, and
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`advantages that Defendant has obtained as a result of their wrongful acts.
`67. Because of the willful nature of Defendant’s wrongful acts, Plaintiff is
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`entitled to an award of punitive damages.
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`SEVENTH CAUSE OF ACTION
`(Unfair Competition – Cal. Bus. & Prof. Code §§ 17200, et seq)
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`68.
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`Plaintiff repeats and realleges each and every allegation set forth in the
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`foregoing paragraphs as though fully set forth herein.
`The above described use by Defendant of Plaintiff’s Marks and marks that
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`are confusingly similar to Plaintiff’s trademarks and Defendant’s other conduct set out
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`above falsely suggests an association with, sponsorship by, licensing by or authorization
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`by Plaintiff.
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`70. Upon information and believe, the above described trademark use by
`Defendant confusingly similar to the Plaintiff’s Marks for services similar to those offered
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`by Plaintiff, and its other conduct as set out above was calculated to deceive or confuse
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`the public and to profit unjustly from the goodwill and reputation of Plaintiff.
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`71. By reason of the foregoing, Defendant has been, and are, engaged in
`“unlawful, unfair or fraudulent business practices” in violation of §§ 17200 et seq. of the
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`California Bus. & Prof. Code through its violations of the Lanham Act and common
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`alleged in this complaint.
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`____________________________________________________________________________
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`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 13 of 17 Page ID #:13
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`72.
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`Plaintiff is informed and believes and thereon alleges that Defendant
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`undertook the acts alleged above willfully, for the purpose of enriching themselves to
`Plaintiff’s detriment.
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`73.
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`Plaintiff is entitled to disgorgement of profits earned by Defendant as a
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`direct and proximate result their unlawful and/or unfair business acts or practices.
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`74.
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`Plaintiff is entitled to damages in an amount to be proven at trial.
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`EIGHTH CAUSE OF ACTION
`(Unfair Competition – Common Law)
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`75.
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`Plaintiff repeats and realleges each and every allegation set forth in the
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`foregoing paragraphs as though fully set forth herein.
`The above describe use by Defendant of Plaintiff’s Marks and Marks that
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`are confusingly similar to Plaintiff’s trademarks and Defendant’s other conduct set out
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`above falsely suggests an association with, sponsorship by, licensing by or authorization
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`by Plaintiff.
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`77. Upon information and believe, the above described trademark use by
`Defendant confusingly similar to the Plaintiff’s Marks for services similar to those sold
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`and/or licensed by Plaintiff, and its other conduct as set out above was calculated to
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`deceive or confuse the public and to profit unjustly from the goodwill and reputation of
`Plaintiff. Defendant’s actions constitute unfair competition with Plaintiff under the laws
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`of the State of California.
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`78.
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`Plaintiff is informed and believes and thereon alleges that Defendant
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`undertook the acts alleged above willfully, for the purpose of enriching themselves to
`Plaintiff’s detriment.
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`79.
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`Plaintiff is entitled to disgorgement of profits earned by Defendant as a
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`direct and proximate result their unlawful and/or unfair business acts or practices.
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`80.
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`Plaintiff is entitled to damages in an amount to be proven at trial.
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`____________________________________________________________________________
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`Case 2:21-cv-07033 Document 1 Filed 08/31/21 Page 14 of 17 Page ID #:14
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays that this Court enter judgment against Defendant as
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`follows:
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`1.
`Declare that LUCHADORES LEGALES is not confusing with 1-800-
`LUCHADOR to the extent it does not violate any of Defendant’s rights under the
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`trademark laws of the United States;
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`2.
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`Declare that Plaintiff has the right to use LUCHADORES LEGALES free
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`from interference from Defendant, its officers, agents, servants, employees, attorneys,
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`privies, representatives, successors, and assigns, and any and all persons acting by,
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`through, under the authority of Defendant, or in concert or participation with Defendant;
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`3.
`In the alternative, if prayers 1 and 2 are not entered, the Plaintiff requests a
`finding that Defendant has: infringed Plaintiff’s Marks under 15 U.S.C. § 1114 and the
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`common law; violated 15 U.S.C. § 1125(a); violated Cal. Bus. & Prof. Code § 17200 by
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`engaging in unlawful, unfair, and fraudulent business practices; and committed unfair
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`competition under the common law;
`Ordering the cancellation of Defendant’s federal trademark application for
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`4.
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`1-800-LUCHADOR (Application No. 88736099).
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`5.
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`Ordering that Defendant and, as applicable, its officers, agents, servants,
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`directors, employees, servants, partners, representatives, assigns, successors, related
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`companies, and attorneys and all persons in active concert or participation with Defendant
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`or with any of the foregoing be enjoined preliminarily during the pendency of this action
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`and permanently thereafter from:
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`a.
`Promoting, advertising, publicizing, offering for sale, or selling any
`goods or services offered under Plaintiff’s Marks or any