Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1130482
`04/29/2021
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding No.
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`92076993
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`Filing Party
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`Other Party
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`Plaintiff
`TP ICAP Americas Holdings Inc.
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`Defendant
`ICAP Enterprises, Inc.
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`Pending Motion
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`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
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`Attachments
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`Complaint.PDF(5782579 bytes )
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`Consent Motion for Suspension in View of Civil Proceeding
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`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, TP ICAP
`Americas Holdings Inc. hereby requests suspension of this proceeding pending a final determination of the
`civil action. Trademark Rule 2.117.
`TP ICAP Americas Holdings Inc. has secured the express consent of all other parties to this proceeding for
`the suspension requested herein.
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`Certificate of Service
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`The undersigned hereby certifies that a copy of this submission has been served upon all parties, at their ad-
`dress of record by Email on this date.
`Respectfully submitted,
`/jeanne hamburg/
`Jeanne Hamburg
`jhamburg@norris-law.com, csevilla@norris-law.com, tmdept@norris-law.com, dsiegel@norris-law.com
`04/29/2021
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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`TP ICAP AMERICAS HOLDINGS INC.,
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`Plaintiff,
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`Case No.
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`v.
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`ICAP ENTERPRISES, INC. and
`HARBOR PLATFORM, INC.,
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`Defendants.
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`COMPLAINT FOR TRADEMARK
`INFRINGEMENT AND RELATED
`CLAIMS
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`JURY DEMAND
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`Plaintiff TP ICAP AMERICAS HOLDINGS INC. (“Plaintiff”) files this Complaint
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`against Defendants ICAP ENTERPRISES, INC. (“iCap”), and HARBOR PLATFORM, INC.
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`(“Harbor”) (collectively “Defendants”), alleging as follows:
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`I. NATURE OF THIS CASE
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`1.
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`Plaintiff brings this action as a result of Defendants’ infringement of Plaintiff’s
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`rights in the trademark ICAP (the “ICAP Mark”), under Section 31(1) of the Lanham Act,
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`15 U.S.C. § 1114(1), Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and for related
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`claims under the statutory and common laws of the state of Washington. Plaintiff seeks
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`injunctive relief and damages arising from the Defendants’ infringement of the Lanham Act,
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`15 U.S.C. §§ 1051 et seq., and Washington State common law.
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`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`RELATED CLAIMS - 1
`4853-0527-3830.1
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`MILLER NASH GRAHAM & DUNN LLP
`AT T O R N E Y S AT L AW
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`2.
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`Plaintiff’s ICAP Mark has been in continuous use for two decades (since 2001)
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`and is widely known among broker dealers in the financial services industry. Plaintiff’s services
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`under the ICAP Mark are intermediary services connecting broker dealers to trading platforms
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`and other services enabling them to trade a wide array of financial instruments, securities, shares,
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`options, and other derivative products; stocks and bond brokerage; as well as the provision of
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`financial information; and clearing and reconciling financial transactions via a global computer
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`network; and stock and securities exchange price quotation. Many of these services are rendered
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`through the provision of electronic trading platforms.
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`3.
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`For some time Defendant iCap marketed real estate investment trusts under
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`various designations including the term “iCap” or “ICAP” (the “Infringing Marks”). This action
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`arises from iCap’s expansion, unbeknownst to Plaintiff until recently, of use of the Infringing
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`Marks to offer and sell investment shares to broker dealers, the same customers to whom
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`Plaintiff markets its products in connection with the ICAP Mark, without authorization or license
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`from Plaintiff. This action also arises from iCap’s recent offering, with Defendant Harbor, of a
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`trading platform enabling broker dealers and others to trade investment shares. Defendants
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`undoubtedly knew of Plaintiff’s ICAP Mark, given the latter’s long use and renown, and
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`therefore Defendants are willfully trading upon the goodwill and recognition that Plaintiff has
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`built up for many years in and to its ICAP Mark. Unless enjoined by this Court, Defendants’
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`actions are likely to cause irreparable injury to Plaintiff by willfully causing confusion among the
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`parties’ broker dealer customers as to whether Defendants’ activities under the ICAP Mark are
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`endorsed by Plaintiff, when those activities are for Defendants’ own financial and reputational
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`benefit.
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`4.
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`Plaintiff is a corporation organized under the laws of the State of Delaware,
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`II. PARTIES
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`located at 200 Vesey Street, New York, NY 10281.
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`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`RELATED CLAIMS - 2
`4853-0527-3830.1
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`MILLER NASH GRAHAM & DUNN LLP
`AT T O R N E Y S AT L AW
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`5.
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`Upon information and belief, iCap is a corporation organized under the laws of
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`the State of Washington, located at 3535 Factoria Blvd. SE, Suite 500, Bellevue, WA 98006.
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`6.
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`Upon information and belief, Harbor is a corporation organized under the laws of
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`the State of Delaware, located at 580 Pacific Avenue, San Francisco, CA 94133.
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`III. JURISDICTION AND VENUE
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`7.
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`This Court has jurisdiction over the subject matter of this action pursuant to 15
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`U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a), as this action involves federal questions
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`arising from Defendants’ violations of the Lanham Act. This Court has supplemental
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`jurisdiction over the related state law claims pursuant to 28 U.S.C. § 1367.
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`8.
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`This Court has both general and specific jurisdiction over iCap and Harbor
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`because each of them has committed acts within this District giving rise to this action and has
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`established minimum contacts with this forum such that the exercise of jurisdiction over each of
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`the named Defendants would not offend traditional notions of fair play and substantial justice.
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`9.
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`Upon information and belief, Defendant iCap is domiciled in this District and has
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`committed and continues to commit acts of trademark infringement in this District by, among
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`other things, offering its investment products and services in connection with the Infringing
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`Marks and providing financial trading platform services in connection with the Infringing Marks.
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`10.
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`Upon information and belief, Defendant Harbor has committed and continues to
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`commit acts of trademark infringement and contributory trademark infringement in this District
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`by, among other things, providing financial trading platform services in connection with the
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`Infringing Marks.
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`11.
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`Venue is proper as to the Lanham Act and common law claims in this district
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`pursuant to 28 U.S.C. § 1391(b) because a substantial part of the events or omissions giving rise
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`to this action occurred in this district.
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`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`RELATED CLAIMS - 3
`4853-0527-3830.1
`
`MILLER NASH GRAHAM & DUNN LLP
`AT T O R N E Y S AT L AW
`T : 2 0 6 . 6 2 4 . 8 3 0 0 | F : 2 0 6 . 3 4 0 . 9 5 9 9
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`IV. FACTUAL BACKGROUND
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`A. MARKET DOMINANCE OF PLAINTIFF AND THE ICAP MARK OVER TWO
`DECADES
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`12.
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`Plaintiff is the American subsidiary of TP ICAP Group plc, the world’s largest
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`inter-dealer broker and a provider of broking, execution, liquidity, and information services
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`across many sectors and asset classes in the financial industry.
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`13.
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`Under the ICAP Mark, Plaintiff offers comprehensive trading, brokerage, and
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`information services to the financial industry. Plaintiff’s voice and electronic trading platforms
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`offered under the ICAP Mark allow Plaintiff’s customers to trade various types of financial
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`instruments including, without limitation, securities, commodities, credit products and
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`derivatives, equities, currencies, funds, and interest rate products.
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`14.
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`Since at least as early as 2001, Plaintiff and its predecessors-in-interest have used
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`the ICAP Mark for voice and electronic trading and broking software and services in the United
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`States. Additionally, since at least as early as 2017, Plaintiff has offered intermediary interdealer
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`brokerage services for a broad range of financial instruments in the United States under the
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`trademark ICAP EQUITIES. Furthermore, since 2015 Plaintiff has offered under the mark ICAP
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`FUSION computer software enabling, inter alia, broker dealers and large institutional investors
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`access to electronic trading exchanges, and market information services.
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`15.
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`As a result of Plaintiff’s and its predecessor-in-interest’s continuous use of the
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`ICAP Mark over the past two decades, consumers of ICAP products and services have come to
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`associate the ICAP Mark exclusively with a single source of such products and services, namely,
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`Plaintiff.
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`Plaintiff provides its intermediary interdealer brokerage services under the ICAP
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`Mark to a wide array of participants in the financial industry and markets, including broker-
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`dealers, banks of various sizes, institutional investors, fund managers, investment advisors, and
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`governments.
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`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`RELATED CLAIMS - 4
`4853-0527-3830.1
`
`MILLER NASH GRAHAM & DUNN LLP
`AT T O R N E Y S AT L AW
`T : 2 0 6 . 6 2 4 . 8 3 0 0 | F : 2 0 6 . 3 4 0 . 9 5 9 9
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`S E AT T LE , W A S H I N G T O N 9 8 1 2 1
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`17.
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`Plaintiff, its ICAP Mark, and the products and services that Plaintiff offers in
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`connection with its ICAP Mark, are renowned within the financial industry as a result of its
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`market dominance. From 2014 through 2016, Plaintiff’s predecessor-in-interest ICAP plc’s
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`global revenue totaled more than 3.4 billion British pounds (4.7 billion U.S. dollars, at today’s
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`currency exchange rate). From 2017 through the last calendar year (2020), Plaintiff’s North and
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`South American revenue has totaled 2.6 billion British pounds, which at today’s currency
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`exchange rate is 3.6 billion U.S. dollars. Plaintiff’s United States revenue from its voice,
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`electronic, and hybrid brokerage platforms and information services offered under the ICAP
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`Mark has totaled 1.6 billion U.S. dollars during that same period from 2017 through 2020.
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`Plaintiff is the largest interdealer broker, by revenue, in the United States and globally.
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`18.
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`Plaintiff has won numerous awards, further contributing to the fame of its ICAP
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`Mark, as is evident from a review of just the past few years. In 2017, its CEO won CEO of the
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`Year in FOW (Futures and Options World) Magazine. In 2018, it won the recognition of “Inter-
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`dealer Broker of the Year” at the Financial News Annual Trading & Technology Awards. It was
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`also ranked in 2018’s Energy Risk Commodity Rankings as number one Precious Metals Broker,
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`number one US Power Broker, number one Gold Broker, number one Silver Broker, and number
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`one Platinum and Palladium Broker. In 2019, Plaintiff’s ICAP division received the
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`GlobalCapital Americas Derivatives Awards in the following categories: Interdealer Broker of
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`the Year, FX Derivatives Interdealer Broker of the Year, and Credit Derivatives Interdealer
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`Broker of the Year. In 2020, Plaintiff’s TP ICAP division was named Interdealer Broker of the
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`Year and Plaintiff’s ICAP division was named both Equity Derivatives Interdealer Broker of the
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`Year and Interest Rate derivatives Interdealer Broker of the Year by GlobalCapital Americas
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`Derivatives Awards. In 2021, Plaintiff’s TP ICAP and ICAP divisions have both received
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`additional awards recognizing their excellence in the United States; however, Plaintiff is not yet
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`permitted to publicize them.
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`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`RELATED CLAIMS - 5
`4853-0527-3830.1
`
`MILLER NASH GRAHAM & DUNN LLP
`AT T O R N E Y S AT L AW
`T : 2 0 6 . 6 2 4 . 8 3 0 0 | F : 2 0 6 . 3 4 0 . 9 5 9 9
`P I E R 7 0
`2 8 0 1 A L A S K A N W A Y , S U I T E 3 0 0
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`19.
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`These awards recognized the excellence of Plaintiffs’ ICAP-branded services
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`offered, among other places, in the U.S.
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`B.
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`PLAINTIFF’S U.S. TRADEMARK REGISTRATIONS
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`20.
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`Beginning in 2004, Plaintiff registered several marks comprising or including the
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`ICAP Mark.
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`21.
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`Specifically, Plaintiff is the owner of U.S. Trademark Registration Numbers
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`3,023,673 and 5,740,135 for ICAP; U.S. Trademark Registration Number 3,618,030; and U.S.
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`Trademark Registration Number 5,034,049 for ICAP FUSION.
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`22.
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`Plaintiff has also applied to register, via the U.S. Trademark application assigned
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`Serial Number 90/383,795, the mark ICAP EQUITIES.
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`23.
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`Plaintiff’s U.S. Trademark Registration Number 5,740,135 for ICAP covers the
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`following services in Classes 35, 36, 38 and 42:
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`Commercial intermediation services, namely, mediating broking
`agreements regarding the sale of financial products and
`instruments, namely, futures, swaps and options, compilation of
`business price and statistical information in the nature of
`compilation of observable and modeled pricing data of financial
`products and instruments for business purposes; compilation and
`provision of financial, securities, trade and quote, order, execution,
`index value and other financial market information for business
`purposes; preparation and compilation of business reports;
`business, market research and information services in the nature of
`trade support information, market reports, providing information
`and commentary in the field of business, historical business and
`market data, straight through processing feeds and trade reports;
`and information services relating to all the foregoing; all of the
`foregoing services are provided to participants in the nonretail
`financial market (Class 35);
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`Financial services, namely, trading of financial instruments,
`securities, shares, options and other derivative products; stock
`broking services; stocks and bond brokerage; provision of financial
`information; and clearing and reconciling financial transactions via
`a global computer network; stock and securities exchange price
`quotations; all of the foregoing services are provided to
`participants in the nonretail financial market (Class 36);
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`Transmission of data, messages and information by computer,
`electronic mail; computer communication services;
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`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`RELATED CLAIMS - 6
`4853-0527-3830.1
`
`MILLER NASH GRAHAM & DUNN LLP
`AT T O R N E Y S AT L AW
`T : 2 0 6 . 6 2 4 . 8 3 0 0 | F : 2 0 6 . 3 4 0 . 9 5 9 9
`P I E R 7 0
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`S E AT T LE , W A S H I N G T O N 9 8 1 2 1
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`telecommunication services, namely, the transmission of
`information and data; electronic mail services; telecommunications
`services for providing multiple-user access to a global computer
`network; providing multi-user access to an electronic database for
`the dissemination of securities information and the direct on-line
`purchase of stock via wide-area computer network; providing
`multi-user access to a computer database in the field of securities,
`stocks, shares, options and warrants, featuring real time investment
`information in the stocks and securities market; all the aforesaid
`relating to the provision of connectivity to financial markets and
`trading systems and the provision of data related to financial
`markets and trading systems; not including any services relating to
`the development, sale, maintenance and support of software for
`transmitting messages and/or data on a communication network for
`voice and data processing, namely, software solutions, software
`products and services for mobile network operators with regard to
`all business areas (Class 38);
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`Design and development of computer software; computer
`programming; computer consultancy services; design and
`development of computer software; computer programming; all of
`the foregoing services relating to financial trading systems and
`provision of connectivity to financial markets, trading exchanges
`and platforms and to the provision of data related to financial
`markets and trading systems and to the provision of post-trade
`services in the financial markets, capture and matching of trade
`related data and trade tickets, transaction settlement services,
`netting and trade allocation services, trade and account
`reconciliation services, trade confirmation services, messaging
`services relating to post-trade activities, credit services and
`calculation and monitoring of credit limits and credit utilisation;
`design and development of software for testing trading strategies
`against live and historic market data and for development of
`proprietary trading strategies; updating of computer programs for
`third parties; computer systems analysis; rental of computer
`programs and computer database servers; software as a service
`("SAAS") featuring software for use in financial services, financial
`trading services, broking services, stock exchange services,
`equities exchange services, trade matching services and investment
`exchange services, and providing temporary use of on-line, non-
`downloadable software for use in financial services, financial
`trading services, broking services, stock exchange services,
`equities exchange services, trade matching services and investment
`exchange services (Class 42).
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`24.
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`A true and correct copy of the registration certificate for U.S. Trademark
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`Registration Number 5,740,135 is attached hereto as Exhibit A.
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`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`RELATED CLAIMS - 7
`4853-0527-3830.1
`
`MILLER NASH GRAHAM & DUNN LLP
`AT T O R N E Y S AT L AW
`T : 2 0 6 . 6 2 4 . 8 3 0 0 | F : 2 0 6 . 3 4 0 . 9 5 9 9
`P I E R 7 0
`2 8 0 1 A L A S K A N W A Y , S U I T E 3 0 0
`S E AT T LE , W A S H I N G T O N 9 8 1 2 1
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`

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`25.
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`Plaintiff’s U.S. Trademark Registration Number 3,023,673 for ICAP covers the
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`following Class 36 services:
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`Financial services, namely voice and electronic interdealer broker,
`of a wide range of securities products to the wholesale market,
`including without limitation, US Treasury products, GSE
`Agencies, US mortgages, Money market instruments, Euro-
`Government Bonds, Eurozone and US Repurchase Agreements,
`Credit Derivatives, Interest Rate Derivatives and other OTC
`Derivative instruments, Foreign Exchange Spot, Foreign Exchange
`Forwards, US Corporate securities, US Municipal securities,
`Equity instruments, Equity Derivatives, and Energy products
`inclusive of Oil, Power, Natural Gas and Coal.
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`26.
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`A true and correct copy of the registration certificate for U.S. Reg. No. 3,023,673
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`is attached hereto as Exhibit B.
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`27.
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`Plaintiff’s U.S. Trademark Registration Number 3,618,030 for ICAP and Design
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`covers the following services in Classes 9 and 36:
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`Electronic publications, namely, magazines, newsletters and
`reports featuring market commentary, research and investment
`reports recorded on computer media (Class 9);
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`Investment, namely, inter-dealer broking, financing, brokerage in
`the field of a wide range of securities products to the wholesale
`market, namely, US Treasury products, GSE Agencies, US
`mortgages, Money market instruments, Euro-Government Bonds,
`Eurozone and US Repurchase Agreements, Credit Derivatives,
`Interest Rate Derivatives and other OTC Derivative instruments,
`Foreign Exchange Spot, Foreign Exchange Forwards, US
`Corporate securities, US Municipal securities, Equity instruments,
`Equity Derivatives, and Energy products inclusive of Oil, Power,
`Natural Gas and Coal; credit, namely, credit default swaps and
`related products; foreign currency exchange transactions, money
`transfer services and exchange services; financial guarantees; inter-
`dealer broking relating to interest rate swaps and interest rate
`options; equity derivatives; and commodity trading for others;
`brokerage for trading of financial instruments, financial products,
`and derivatives; debt trading services; on-line banking services;
`providing online financial information in the nature of trade
`support information, market reports, commentary services,
`historical data, straight-through-processing feeds and trade reports
`all of which services are provided to participants in the non-retail
`financial market; financial evaluations; fiscal assessments and
`valuations conducted for the purpose of facilitating the brokerage
`and trading of financial instruments. (Class 36)
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`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`RELATED CLAIMS - 8
`4853-0527-3830.1
`
`MILLER NASH GRAHAM & DUNN LLP
`AT T O R N E Y S AT L AW
`T : 2 0 6 . 6 2 4 . 8 3 0 0 | F : 2 0 6 . 3 4 0 . 9 5 9 9
`P I E R 7 0
`2 8 0 1 A L A S K A N W A Y , S U I T E 3 0 0
`S E AT T LE , W A S H I N G T O N 9 8 1 2 1
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`28.
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`A true and correct copy of the registration certificate for U.S. Registration
`
`Number 3,618,030 is attached hereto as Exhibit C.
`
`29.
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`Plaintiff’s U.S. Trademark Registration Number 5,034,049 for ICAP FUSION
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`covers computer software enabling the user to gain a single point of access to electronic
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`exchanges for the trading of securities, aggregated information about the financial markets, real
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`time financial market data, financial analytics, and streaming of news and commentary in
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`Class 9.
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`30.
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`A true and correct copy of the registration certificate for U.S. Registration
`
`Number 5,034,049 is attached hereto as Exhibit D.
`
`31.
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`Plaintiff’s U.S. Trademark Application Serial Number 90/383,795 for ICAP
`
`EQUITIES covers inter-dealer securities brokerage services in Class 36. A true and correct copy
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`of the application, together with an amended to allege use, is attached hereto as Exhibit E.
`
`C.
`
`DEFENDANT ICAP’S HIDDEN USE OF THE INFRINGING MARKS TO
`MARKET TO BROKER DEALERS AND LARGE INSTITUTIONAL
`INVESTORS
`
`32.
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`Upon information and belief, Defendant iCap and/or its predecessor in interest
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`iCap Equity, LLC, began using the Infringing Marks at some time after Plaintiff’s use and
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`registration of the ICAP Mark. Records accessible from the Internet Archive show Defendant
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`iCap’s first use of the Infringing Marks on the Internet on August 6, 2012 at the website
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`icapequity.com. See Exhibit F.
`
`33.
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`Upon information and belief, Defendant iCap took great pains to not call attention
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`to its infringing use of the ICAP Mark. In 2012, for example, it described itself as an
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`“investment capital fund located in the Pacific Northwest with a focus on equity investment and
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`lending for real estate deals.” Id.
`
`34.
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`Upon information and belief, Defendant iCap launched, in the period from 2012
`
`to the present, approximately ten separate funds the names of which incorporated or incorporate
`
`the Infringing Marks including, inter alia, iCap Northwest Opportunity Fund, iCap Pacific
`
`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`RELATED CLAIMS - 9
`4853-0527-3830.1
`
`MILLER NASH GRAHAM & DUNN LLP
`AT T O R N E Y S AT L AW
`T : 2 0 6 . 6 2 4 . 8 3 0 0 | F : 2 0 6 . 3 4 0 . 9 5 9 9
`P I E R 7 0
`2 8 0 1 A L A S K A N W A Y , S U I T E 3 0 0
`S E AT T LE , W A S H I N G T O N 9 8 1 2 1
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`Income Fund, iCap Pacific Income Funds 2 through 5, iCap Pacific Northwest Income Fund,
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`iCap Pacific NW Opportunity & Income Fund, and iCap Pacific NW Opportunity & Income
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`Fund II (collectively, the “Funds”), all of which were marketed to investors and broker-dealers.
`
`35.
`
`Upon information and belief, Defendant iCap did not, at the time of the launch of
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`the Funds, while raising investment for the Funds, or at any point afterward, and does not now,
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`mention the Funds by name on the public website or otherwise promote the Funds by name in a
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`manner generally accessible to the public.
`
`36.
`
`Upon information and belief, commencing with Defendant iCap’s inception of the
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`first of the Funds, Defendant iCap deliberately sought investment solely through private channels
`
`rather than public marketing, so as to avoid notice of its use of the Infringing Marks in
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`connection with the Funds.
`
`37.
`
`It was not until 2018 that Defendant iCap began to attempt to secure nationwide
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`rights through U.S. trademark registrations. Even then, it was careful to tailor its trademark
`
`applications narrowly to real estate financing and investment services, presumably to avoid
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`attracting Plaintiff’s attention or a refusal to register from the U.S. Trademark Office. Defendant
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`iCap’s trademark applications make no mention of its investment fund products, such as the
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`Funds.
`
`38.
`
`Consequently, Plaintiff did not become aware of Defendant iCap until 2018, when
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`Defendant iCap first filed its U.S. trademark application for the ICAP VAULT (the “ICAP
`
`VAULT Mark”) that iCap would adopt one year later, in 2019. Specifically, on or about
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`June 29, 2018, Defendant iCap applied to the U.S. Patent and Trademark Office for registration
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`of the ICAP VAULT Mark, which application was assigned Serial Number 88/021,512 and was
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`registered on or about December 24, 2019 as U.S. Trademark Registration Number 5,945,188 for
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`real estate investment services; real estate financing services; financing of real estate
`
`development projects; holding company services, namely, financial management and operational
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`management of real estate holdings in Class 36.
`
`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`RELATED CLAIMS - 10
`4853-0527-3830.1
`
`MILLER NASH GRAHAM & DUNN LLP
`AT T O R N E Y S AT L AW
`T : 2 0 6 . 6 2 4 . 8 3 0 0 | F : 2 0 6 . 3 4 0 . 9 5 9 9
`P I E R 7 0
`2 8 0 1 A L A S K A N W A Y , S U I T E 3 0 0
`S E AT T LE , W A S H I N G T O N 9 8 1 2 1
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`39.
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`It was not until 2020 that Defendant iCap filed a U.S. trademark application for
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`ICAP EQUITY, which upon information and belief is being used by iCap to identify a
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`purportedly exclusive source of Defendant iCap’s business and entire investment product line,
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`including the Funds. Specifically, on or about May 13, 2020, Defendant iCap applied to the
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`U.S. Patent and Trademark Office for registration of the Infringing Design Mark, which
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`application was assigned Serial No. 88/914,478 (the “‘ICAP EQUITY Mark”); the ICAP
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`VAULT Mark and ICAP EQUITY Mark are included within the Infringing Marks as defined in
`
`Paragraph 3 above, together with all other infringing use of the ICAP Mark by defendant iCap.
`
`40.
`
`As noted, in each of these applications Defendant iCap limited its description to
`
`real estate financing and investment activities. Neither the ICAP VAULT nor the ICAP EQUITY
`
`trademark applications made any reference to software, online trading platform services, or
`
`intermediary services of any type.
`
`41.
`
`Upon information and belief, in recent years Defendant iCap began using the
`
`Infringing Marks to market its products, including investment funds, in connection with the
`
`Infringing Marks to individual investors, institutional investors, broker-dealers, banks, and others
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`in the investment and financial services industries.
`
`42.
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`However, upon information and belief, and as with its trademark applications,
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`which are publicly accessible, Defendant iCap also took pains to minimize any public mention of
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`its infringing use of ICAP in connection with marketing and sales to these parties, most
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`especially, broker-dealers and large institutional investors that Plaintiff also targeted, presumably
`
`to avoid objection or legal action from Plaintiff.
`
`43.
`
`Upon information and belief, Defendant iCap’s public-facing website makes no
`
`mention of broker-dealers and/or large institutional investors, and Defendant iCap deliberately
`
`does not make it public knowledge, that it markets its products to broker-dealers.
`
`44.
`
`Upon information and belief, Defendant iCap directs its publicly accessible
`
`materials and website towards individual investors, so it is difficult to discover its use of the
`
`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`RELATED CLAIMS - 11
`4853-0527-3830.1
`
`MILLER NASH GRAHAM & DUNN LLP
`AT T O R N E Y S AT L AW
`T : 2 0 6 . 6 2 4 . 8 3 0 0 | F : 2 0 6 . 3 4 0 . 9 5 9 9
`P I E R 7 0
`2 8 0 1 A L A S K A N W A Y , S U I T E 3 0 0
`S E AT T LE , W A S H I N G T O N 9 8 1 2 1
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`

`

`
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`Infringing Marks to promote its investment products to broker-dealers and large institutional
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`investors.
`
`45.
`
`Upon information and belief, Defendant iCap was aware of Plaintiff’s ownership
`
`and use of the ICAP Mark and Plaintiff’s trademark registrations for the ICAP Mark, yet
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`continued to expand its own use of the Infringing Marks despite its full knowledge of those
`
`trademark registrations and ICAP’s sale and offer of sale of its goods and services under the
`
`ICAP Mark to broker dealers as well as large institutional investors.
`
`46.
`
`Upon information and belief, iCap intentionally conducted its sales and marketing
`
`activities under the Infringing Marks in respect of broker dealers and large, institutional investors
`
`in such a way that it would not be publicly visible, and so that Plaintiff would not be able to
`
`discover its infringement.
`
`47.
`
`It took a document demand during a Trademark Trial and Appeal Board
`
`proceeding (followed by the threat of a motion to compel) for Plaintiff to learn of Defendant
`
`iCap’s infringing activities. Specifically, Plaintiff filed a Notice of Opposition to the ICAP
`
`EQUITY Application on October 21, 2020, commencing Opposition No. 91265540 (the
`
`“Opposition”), a proceeding that is currently pending before the Trademark Trial and Appeal
`
`Board. It was only upon the belated production of documents by Defendant iCap in the
`
`Opposition during late March and April 2021 that Plaintiff learned of Defendant iCap’s
`
`infringing activities, both in respect of marketing to broker dealers and large institutional
`
`investors, and as described below, in offering a trading platform under the Infringing Marks.
`
`D.
`
`DEFENDANTS’ USE OF THE INFRINGING MARKS FOR A TRADING
`PLATFORM
`
`48.
`
`Upon information and belief, in or about early 2019, Defendant iCap began to
`
`explore expanding its real estate investment products to include blockchain, token, and/or
`
`cryptocurrency offerings.
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`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`RELATED CLAIMS - 12
`4853-0527-3830.1
`
`MILLER NASH GRAHAM & DUNN LLP
`AT T O R N E Y S AT L AW
`T : 2 0 6 . 6 2 4 . 8 3 0 0 | F : 2 0 6 . 3 4 0 . 9 5 9 9
`P I E R 7 0
`2 8 0 1 A L A S K A N W A Y , S U I T E 3 0 0
`S E AT T LE , W A S H I N G T O N 9 8 1 2 1
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`49.
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`In the context of blockchain and cryptocurrency technology, “t