Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1205306
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`Filing date:
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`04/26/2022
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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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`92078354
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Plaintiff
`Shanti Wines, LLC
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`STUART J. WEST
`WEST & ASSOCIATES, A PC
`3050 CITRUS CIRCLE, STE. 207
`WALNUT CREEK, CA 94598
`UNITED STATES
`Primary email: trademark@westpatentlaw.com
`925-262-2220
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`Motion to Suspend for Civil Action
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`Stuart J. West
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`court@westpatentlaw.com, trademark@westpatentlaw.com
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`/Stuart J. West/
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`04/26/2022
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`Attachments
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`20220426-CompleteMotionToSuspend-SHANT-41001L.pdf(1889459 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re Registration No. 6351330
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`For the mark:
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`Registered: May 18, 2021
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`Cancellation No. 92078354
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`Shanti Wines, LLC,
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`Shanti Elixirs, L.L.C.,
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`Petitioner,
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`Registrant.
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`MOTION TO SUSPEND PROCEEDINGS PENDING DISPOSITION OF DISTRICT
`COURT ACTION
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`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Petitioner, through its counsel,
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`hereby moves the Board to suspend the above-referenced proceeding (the “TTAB Proceeding”)
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`pending final disposition of Federal district court case No. 4:22-cv-02511-SK, filed April 25,
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`2022, in the Northern District Court of California. Copies of the complaint and civil cover sheet
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`are attached as Exhibit 1 to allow the Board to determine if the outcome of the civil action will
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`have a bearing on the issues before the Board.
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`The civil action involves issues in common with those in the above-referenced
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`proceeding before the Board and the decision in the Federal Court will be binding upon the
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`Board, while the Board’s decision may not be binding upon the Court. Petitioner is the sole
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`Plaintiff and Registrant is a Defendant in the civil action. In the civil action, Petitioner brought
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`Federal Trademark Infringement claims against Registrant under the Lanham Act in addition to a
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`Request for Refusal to Register, Federal Unfair Competition, CA Trademark Infringement, CA
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`Unfair Competition, Defamation, Public Disclosure of Private Facts. One of the marks at issue
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`in the civil action is the same mark at issue in this cancellation. When parties are involved in a
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`civil action concerning the same marks and issues, the standard procedure of the Board is to
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`suspend its administrative proceedings pending the outcome of the civil action. New Orleans
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`Louisiana Saints LLC v. Who dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011)(quoting 6
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`McCarthy on Trademarks and Unfair Competition § 32:47 (5th ed. Updated September 2017)).
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`Petitioner’s counsel contacted Registrant’s counsel regarding this motion to suspend
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`pending the outcome of the civil action. As of the filing of this motion Registrant’s counsel has
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`not yet responded to Petitioner’s counsel.
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`For the reasons mentioned above, Petitioner respectfully requests that the Board suspend
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`the above-referenced proceeding pending the outcome of the civil action referenced above.
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`Respectfully Submitted,
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`West & Associates, A PC
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`/s/ Stuart J. West
`Stuart J. West
`3050 Citrus Circle, Ste. 207
`Walnut Creek, CA 94598
`Tel 925-262-2220
`Email: court@westpatentlaw.com
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Motion to Suspend
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`Proceedings Pending Disposition of District Court Action was served this 26th day of April
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`2022, by sending it via e-mail to counsel for Registrant at RCrandall@mwblawyers.com,
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`swinkler@mwblawyers.com.
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`/s/ Dawn Callender
`Dawn Callender
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`Exhibit 1
`Exhibit 1
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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 1 of 32
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`Stuart J. West
`SBN 202041
`West & Associates, A PC
`3050 Citrus Circle, Ste. 207
`Walnut Creek, CA 94598
`Attorney for Plaintiff
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`Plaintiff,
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`Shanti Elixirs, L.L.C.
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`and
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`Shanti Volpe
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` Defendants and
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` DOES 1-100
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`Case No.:
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`Complaint for Federal Trademark
`Infringement, Request for Refusal to
`Register, Federal Unfair Competition, CA
`Trademark Infringement, CA Unfair
`Competition, Defamation, Public Disclosure
`of Private Facts
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` Plaintiff Shanti Wines, LLC ("Plaintiff"), by and through its attorneys, West &
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`Associates, A PC, for its Complaint against Defendant Shanti Elixirs, L.L.C. ("Shanti Elixirs"),
`and Shanti Volpe (“Volpe”) alleges, on knowledge as to its own actions, and otherwise upon
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`information and belief, as follows:
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`PRELIMINARY STATEMENT
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`1. This is an action for infringement of Plaintiff's federally-registered trademarks for Shanti
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`under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), for unfair competition and
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`false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),
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`all arising from the Defendant Shanti Elixirs unauthorized uses of the marks Shanti-Jun,
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`Shanti Elixirs, and
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` in connection with the manufacture,
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`Complaint - 1
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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 2 of 32
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`distribution, marketing, advertising, promotion, offering for sale, and/or sale of
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`Defendant's kombucha tea; tea; tea-based beverages; jun; honey; honey infused with green
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`tea; mixes in the nature of concentrates, syrups or powders to be used in the preparation of
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`tea based beverages; tea extracts; tea for infusions; tea substitutes; tea-based beverages
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`with fruit flavoring; tea-based iced beverages; beverages made of tea; beverages with a tea
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`base; chamomile tea; ginger tea; green tea; herbal tea; mixes for making tea; mixes for
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`making kombucha and honey based green tea.
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`2. This action also requests refusal to register Defendant’s Shanti Junery mark (US
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`Application Serial No. 88685322) for Café; Taproom services featuring non-alcoholic
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`beverages; Taproom services featuring jun; Tea bars; Tea rooms.
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`3. This is also an action for Federal Unfair Competition, CA Trademark Infringement, CA
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`Unfair Competition, Defamation and Public Disclosure of Private Fact.
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`4. Plaintiff seeks injunctive and monetary relief.
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`JURISDICTION
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`5. This court has jurisdiction over this action pursuant to 15 U.S.C. § 1121, 28 U.S.C. §§
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`1331, 1332(a), and pursuant to the principles of supplemental jurisdiction under 28 U.S.C.
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`§ 1367.
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`6. Personal jurisdiction over Defendant Shanti Elixirs is proper in this District because it has
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`availed itself of the rights and benefits of the laws of California, it has derived revenue
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`from the sales of products in California, and it has systematic and continuous business
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`contacts with California.
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`Complaint - 2
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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 3 of 32
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`7. Personal jurisdiction over Defendant Volpe is proper in this District because she has
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`directed communications into the Northern District of California.
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`VENUE
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`8. Venue is proper in this district under 28 U.S.C. § 1391(b)(2), in that a substantial part of
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`the events or omissions giving rise to the claim occurred in this district, and 28 U.S.C. §
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`1391(b)(3), in that Defendant is subject to personal jurisdiction in this district with respect
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`to this action, and there is no other district in which the action may otherwise be brought.
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`PARTIES
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`9. Plaintiff Shanti Wines, LLC is a limited liability company formed under the laws of the
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`state of California and has a business address of 2551 San Ramon Valley Blvd. #107-A,
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`San Ramon, CA 94583.
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`10. Upon information and belief, Defendant Shanti Elixirs, L.L.C. is a limited liability
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`company formed under the laws of the state of North Carolina and has an address of 92
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`Dorothy Lille Ln, Weaverville, NC, 28787-9772.
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`11. Upon information and belief, Defendant Shanti Volpe is an individual with an address of
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`92 Dorothy Lille Ln, Weaverville, NC, 28787-9772.
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`FACTS
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`A. Plaintiff and its Shanti Marks
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`12. Plaintiff is a producer and seller of various types of beverages and food products.
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`Complaint - 3
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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 4 of 32
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`13. Plaintiff is the owner of multiple valid and subsisting United States Trademark
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`Registrations on the Principal Register in the United States Patent and Trademark Office
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`for the trademark “Shanti”.
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`14. Plaintiff is the owner of valid and subsisting United States Trademark Registration No.
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`5116089 on the Principal Register in the United States Patent and Trademark Office for
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`the trademark Shanti for wine. Attached as Exhibit 1 is a true and correct copy of the
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`registration certificate for Plaintiff's United States Trademark Registration No. 5116089,
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`which was issued by the United States Patent and Trademark Office on January 3, 2017.
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`15. Plaintiff is the owner of valid and subsisting United States Trademark Registration No.
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`5303219 on the Principal Register in the United States Patent and Trademark Office for
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`the trademark Shanti for beer and bottled water. Attached as Exhibit 2 is a true and
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`correct copy of the registration certificate for Plaintiff’s United States Trademark
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`Registration No. 5303219, which was issued by the United States Patent and Trademark
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`Office on October 3, 2017.
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`16. Plaintiff is the owner of valid and subsisting United States Trademark Registration No.
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`5795344 on the Principal Register in the United States Patent and Trademark Office for
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`the trademark Shanti for cooking oil. Attached as Exhibit 3 is a true and correct copy of
`the registration certificate for Plaintiff’s United States Trademark Registration No.
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`5795344, which was issued by the United States Patent and Trademark Office on July 2,
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`2019.
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`17. Plaintiff is the owner of valid and subsisting United States Trademark Registration No.
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`6171197 on the Principal Register in the United States Patent and Trademark Office for
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`the trademark Shanti for liquor. Attached as Exhibit 4 is a true and correct copy of the
`registration certificate for Plaintiff’s United States Trademark Registration No. 6171197,
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`which was issued by the United States Patent and Trademark Office on October 6, 2020.
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`Complaint - 4
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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 5 of 32
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`18. Plaintiff has used the Shanti mark in interstate commerce in the United States
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`continuously since September 21, 2016, in connection with the manufacture, distribution,
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`offering for sale, sale, marketing, advertising, and promotion of wine.
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`19. Plaintiff has used the Shanti mark in interstate commerce in the United States
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`continuously since July 27, 2017, in connection with the manufacture, distribution,
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`offering for sale, sale, marketing, advertising, and promotion of beer and bottled water.
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`20. Plaintiff has used the Shanti mark in interstate commerce in the United States
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`continuously since May 8, 2019, in connection with the manufacture, distribution, offering
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`for sale, sale, marketing, advertising, and promotion of cooking oil.
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`21. Plaintiff has used the Shanti mark in interstate commerce in the United States
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`continuously since July 1, 2020, in connection with the manufacture, distribution, offering
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`for sale, sale, marketing, advertising, and promotion of liquor.
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`22. Registration right for Plaintiff’s Registration no. 5116089 for wine is perfected back to the
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`filing date of the application, April 11, 2016.
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`23. Registration right for Plaintiff’s Registration no. 5303219 for beer and bottled water is
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`perfected back to the filing date of the application, October 12, 2016.
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`24. As a result of its widespread, continuous, and exclusive use of the Shanti registrations to
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`identify its wine, beer, bottled water, cooking oil, and liquor and Plaintiff as their source,
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`Plaintiff owns valid and subsisting federal statutory and common law rights to the Shanti
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`marks.
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`25. Plaintiff's Shanti marks are distinctive to both the consuming public and Plaintiff's trade.
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`Complaint - 5
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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 6 of 32
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`26. Plaintiff has expended substantial time, money, and resources marketing, advertising, and
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`promoting the wine, beer, bottled water, cooking oil, and liquor sold under the Shanti
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`marks.
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`27. The wine, beer, bottled water, cooking oil, and liquor Plaintiff offers under the Shanti
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`marks are of high quality.
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`28. As a result of Plaintiff's expenditures and efforts, the Shanti marks have come to signify
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`the high quality of the goods designated by the Shanti marks, and acquired incalculable
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`distinction, reputation, and goodwill belonging exclusively to Plaintiff.
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`29. Plaintiff has scrupulously and successfully enforced and protected its Shanti marks against
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`past infringements.
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`30. On June 10, 2021, Plaintiff filed a notice of opposition of Defendant’s Shanti Junery
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`trademark application (Application Serial No. 88685322) which was assigned opposition
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`proceeding no. 91269822 by the Trademark Trial and Appeal Board.
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`31. On October 29, 2021, Plaintiff filed a petition to cancel Defendant’s Shanti-Jun trademark
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`registration (Registration No. 5602065) which was assigned cancellation proceeding no.
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`92078353 by the Trademark Trial and Appeal Board.
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`32. On October 29, 2021, Plaintiff filed a petition to cancel Defendant’s Shanti Elixirs
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`trademark registration (Registration No. 6351329) which was assigned cancellation
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`proceeding no. 92078346 by the Trademark Trial and Appeal Board.
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`Complaint - 6
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`33. On October 29, 2021, Plaintiff filed a petition to cancel Defendant’s Shanti Elixirs stylized
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`trademark registration (Registration No. 6351330) which was assigned cancellation
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`proceeding no. 92078354 by the Trademark Trial and Appeal Board.
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`B. Defendant’s Unlawful Activities
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`34. Upon information and belief, Defendant Shanti Elixirs is engaged in the production and
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`sales of various types of beverages and beverage mixes.
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`35. Without Plaintiff's authorization, and upon information and belief, beginning after
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`Plaintiff acquired protectable exclusive rights in its Shanti marks, Defendant Shanti Elixirs
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`adopted and began using Shanti Elixirs, Shanti Elixirs in a stylized form, and Shanti-Jun
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`(hereinafter, the "Infringing Marks") in US commerce.
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`36. The Infringing Marks adopted and used by Defendant Shanti Elixirs are confusingly
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`similar to Plaintiff's Shanti marks in part because the dominant portion of the Infringing
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`Marks are identical to Plaintiff’s Shanti marks.
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`37. Defendant Shanti Elixirs has been engaged in the manufacture, distribution, advertising,
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`promotion, offering for sale, and sale of kombucha tea; tea; tea-based beverages; jun using
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`the word and stylized Shanti Elixirs marks throughout the United States, including into the
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`Northern District of California.
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`38. Upon information and belief, Defendant Shanti Elixirs has been engaged in the
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`manufacture, distribution, advertising, promotion, offering for sale, and sale of honey;
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`Honey infused with green tea; Kombucha tea; Mixes in the nature of concentrates, syrups
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`or powders used in the preparation of tea based beverages; Tea; Tea extracts; Tea for
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`infusions; Tea substitutes; Tea-based beverages; Tea-based beverages with fruit flavoring;
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`Complaint - 7
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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 8 of 32
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`Tea-based iced beverages; Beverages made of tea; Beverages with a tea base; Chamomile
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`tea; Ginger tea; Green tea; Herbal tea; Mixes for making tea; Mixes for making kombucha
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`and honey based green tea using Shanti-Jun mark throughout the United States.
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`39. Upon information and belief, the goods Defendant Shanti Elixirs has manufactured,
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`distributed, provided, marketed, advertised, promoted, offered for sale, and sold under the
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`Infringing Marks are highly related to the goods sold by Plaintiff as the goods are
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`beverages or items related to beverages.
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`40. Upon information and belief, Defendant Shanti Elixirs has manufactured, distributed,
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`provided, marketed, advertised, promoted, offered for sale, and sold its goods under the
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`Infringing Marks through the same trade channels as Plaintiff’s goods are sold.
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`41. Upon information and belief, Defendant Shanti Elixirs offers and sells its goods under the
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`Infringing Marks to the same types of consumers as those that purchase Plaintiff’s goods
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`in that the consumers are purchasers of beverages and food items.
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`42. Defendant Shanti Elixir’s infringing acts as alleged herein have caused and are likely to
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`cause confusion, mistake, and deception among the relevant consuming public as to the
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`source or origin of the Defendant Shanti Elixir’s goods and have and are likely to deceive
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`the relevant consuming public into believing, mistakenly, that Defendant Shanti Elixir’s
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`goods originate from, are associated or affiliated with, or otherwise authorized by
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`Plaintiff.
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`43. Defendant Shanti Elixirs has been aware of Plaintiff’s marks at least as early as June 10,
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`2021, when Plaintiff filed the notice of opposition of Defendant Shanti Elixir’s Shanti
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`Junery mark.
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`Complaint - 8
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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 9 of 32
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`44. Upon information and belief, Defendant Shanti Elixirs has been aware of Plaintiff’s Shanti
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`marks since before Defendant Shanti Elixirs filed its trademark applications.
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`45. Defendant Shanti Elixirs has continued to use the Infringing Marks even after Defendant
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`Shanti Elixirs was aware of Plaintiff’s Shanti marks.
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`46. Upon information and belief, Defendant Shanti Elixir’s acts are willful with the deliberate
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`intent to trade on the goodwill of Plaintiff's Shanti marks, cause confusion and deception
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`in the marketplace, and divert potential sales of Plaintiff's goods to Defendant Shanti
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`Elixirs.
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`47. Defendant Shanti Elixir’s acts are causing, and unless restrained, will continue to cause
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`damage and immediate irreparable harm to Plaintiff and to its valuable reputation and
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`goodwill with the consuming public for which Plaintiff has no adequate remedy at law.
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`48. Defendant Shanti Elixirs filed an intent-to-use application for Shanti Junery (U.S.
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`Application Serial No. 88685322) in connection with café; Taproom services featuring
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`non-alcoholic beverages; Taproom services featuring jun; Tea bars; Tea rooms.
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`49. Plaintiff has opposed Defendant Shanti Elixir’s Shanti Junery application as its
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`registration would likely cause confusion with Plaintiff’s Shanti marks due to the
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`similarity of the marks and the goods/services listed in the application and those provided
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`by Plaintiff.
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`50. Defendant Shanti Elixirs is the owner of US Registration No. 5602065 for Shanti-Jun for
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`Honey; Honey infused with green tea; Kombucha tea; Mixes in the nature of concentrates,
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`syrups or powders used in the preparation of tea based beverages; Tea; Tea extracts; Tea
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`Complaint - 9
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`

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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 10 of 32
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`for infusions; Tea substitutes; Tea-based beverages; Tea-based beverages with fruit
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`flavoring; Tea-based iced beverages; Beverages made of tea; Beverages with a tea base;
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`Chamomile tea; Ginger tea; Green tea; Herbal tea; Mixes for making tea; Mixes for
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`making kombucha and honey based green tea which registered on November 6, 2018.
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`51. Defendant Shanti Elixirs is the owner of US Registration No. 6351329 for Shanti Elixirs
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`for Kombucha tea; Tea; Tea-based beverages; Jun which registered on May 18, 2021.
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`52. Defendant Shanti Elixirs is the owner of US Registration No. 6351330 for
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` for Kombucha tea; Tea; Tea-based beverages; Jun which
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`registereted on May 18, 2021.
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`53. Upon information and belief, Defendant Volpe is a member of Shanti Elixirs, L.L.C.
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`54. Upon information and belief, Defendant Volpe made a GoFundMe page, on behalf of
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`Shanti Elixirs, to raise funds for legal proceedings.
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`55. The GoFundMe page states, “Shanti Elixirs invites you to support us as we navigate the
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`legal terrain of being “phished” by a larger company looking to take over our footprint.”
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`See Exhibit 5.
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`56. The GoFundMe page states, “Is it fair for a well-funded real estate mogul to bully a small-
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`time entrepreneur whose business has no impact on his winery? We think not.” See
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`Exhibit 5.
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`57. On the GoFundMe page there are false statements or purported facts about Plaintiff and
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`Ray Sharma, president of Plaintiff.
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`Complaint - 10
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`

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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 11 of 32
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`58. The false statements were published via the GoFundMe page by Volpe on behalf of Shanti
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`Elixirs.
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`59. The false statements were made negligently, recklessly or intentionally.
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`60. As a result of the false statements Plaintiff’s reputation was damaged.
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`61. Defendants publicly disclosed the fact that Plaintiff and Defendant had discussed specific
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`settlement terms.
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`62. The GoFundMe page states, “The winery's ‘generous’ offer is for everything to return to
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`business as usual prior to all this – except that I would have to voluntarily cancel my
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`registrations and abandon my application, stick to only the products we are currently
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`offering, and geographically limit our sales to our current footprint. How do you all feel
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`about that?” See Exhibit 6.
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`63. Plaintiff’s settlement terms were sent privately to Defendants’ counsel.
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`64. The contents of Plaintiff’s settlement terms were personal and private.
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`65. Defendants knew or should have known that Plaintiff’s settlement terms were personal
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`and private.
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`66. Defendants knew or should have known that the disclosure of Plaintiff’s specific
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`settlement terms would be harmful to Plaintiff.
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`67. Defendants knew or should have known that the publication of Plaintiff’s specific
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`settlement terms would have no value to anyone other than Defendant.
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`Complaint - 11
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`

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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 12 of 32
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`68. Defendants published Plaintiff’s specific settlement terms with the intent to cause harm to
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`Plaintiff.
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`69. Defendants’ publication of private facts has harmed Plaintiff.
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`COUNT ONE (Federal Trademark Infringement)
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`Against Shanti Elixirs [Registration Number 5602065]
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`70. Plaintiff repeats and realleges paragraphs 1 through 69 hereof, as if fully set forth herein.
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`71. Defendant Shanti Elixir’s unauthorized use in commerce of the Infringing Marks as
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`alleged herein is likely to deceive consumers as to the origin, source, sponsorship, or
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`affiliation of Defendant Shanti Elixir’s goods, and is likely to cause consumers to believe,
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`contrary to fact, that Defendant Shanti Elixir’s goods are sold, authorized, endorsed, or
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`sponsored by Plaintiff, or that Defendant Shanti Elixirs is in some way affiliated with or
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`sponsored by Plaintiff. Defendant Shanti Elixir’s conduct therefore constitutes trademark
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`infringement in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
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`72. Upon information and belief, Defendant Shanti Elixirs has committed the foregoing acts
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`of infringement with full knowledge of Plaintiff's prior rights in the Shanti marks and with
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`the willful intent to cause confusion and trade on Plaintiff's goodwill.
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`73. Defendant Shanti Elixir’s conduct is causing immediate and irreparable harm and injury to
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`Plaintiff, and to its goodwill and reputation, and will continue to both damage Plaintiff and
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`confuse the public unless enjoined by this court. Plaintiff has no adequate remedy at law.
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`Complaint - 12
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`

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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 13 of 32
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`74. Plaintiff is entitled to, among other relief, injunctive relief and an award of actual
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`damages, Defendant Shanti Elixir’s profits, enhanced damages and profits, reasonable
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`attorneys' fees, and costs of the action under Sections 34 and 35 of the Lanham Act, 15
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`U.S.C. §§ 1116, 1117, together with prejudgment and post-judgment interest.
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`COUNT TWO (Federal Trademark Infringement)
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` Against Shanti Elixirs [Registration No. 6351329]
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`75. Plaintiff repeats and realleges paragraphs 1 through 74 hereof, as if fully set forth herein.
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`76. Shanti Elixir’s unauthorized use in commerce of the Infringing Marks as alleged herein is
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`likely to deceive consumers as to the origin, source, sponsorship, or affiliation of
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`Defendant Shanti Elixir’s goods, and is likely to cause consumers to believe, contrary to
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`fact, that Defendant Shanti Elixir’s goods are sold, authorized, endorsed, or sponsored by
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`Plaintiff, or that Defendant Shanti Elixirs is in some way affiliated with or sponsored by
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`Plaintiff. Defendant Shanti Elixir’s conduct therefore constitutes trademark infringement
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`in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
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`77. Upon information and belief, Defendant Shanti Elixirs has committed the foregoing acts
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`of infringement with full knowledge of Plaintiff's prior rights in the Shanti marks and with
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`the willful intent to cause confusion and trade on Plaintiff's goodwill.
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`78. Defendant Shanti Elixir’s conduct is causing immediate and irreparable harm and injury to
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`Plaintiff, and to its goodwill and reputation, and will continue to both damage Plaintiff and
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`confuse the public unless enjoined by this court. Plaintiff has no adequate remedy at law.
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`Complaint - 13
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`

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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 14 of 32
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`79. Plaintiff is entitled to, among other relief, injunctive relief and an award of actual
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`damages, Defendant Shanti Elixir’s profits, enhanced damages and profits, reasonable
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`attorneys' fees, and costs of the action under Sections 34 and 35 of the Lanham Act, 15
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`U.S.C. §§ 1116, 1117, together with prejudgment and post-judgment interest.
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`COUNT THREE (Federal Trademark Infringment)
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`Against Shanti Elixirs [Registration No. 6351330]
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`80. Plaintiff repeats and realleges paragraphs 1 through 79 hereof, as if fully set forth herein.
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`81. Shanti Elixir’s unauthorized use in commerce of the Infringing Marks as alleged herein is
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`likely to deceive consumers as to the origin, source, sponsorship, or affiliation of
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`Defendant Shanti Elixir’s goods, and is likely to cause consumers to believe, contrary to
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`fact, that Defendant Shanti Elixir’s goods are sold, authorized, endorsed, or sponsored by
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`Plaintiff, or that Defendant Shanti Elixirs is in some way affiliated with or sponsored by
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`Plaintiff. Defendant Shanti Elixir’s conduct therefore constitutes trademark infringement
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`in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
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`82. Upon information and belief, Defendant Shanti Elixirs has committed the foregoing acts
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`of infringement with full knowledge of Plaintiff's prior rights in the Shanti marks and with
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`the willful intent to cause confusion and trade on Plaintiff's goodwill.
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`83. Defendant Shanti Elixir’s conduct is causing immediate and irreparable harm and injury to
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`Plaintiff, and to its goodwill and reputation, and will continue to both damage Plaintiff and
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`confuse the public unless enjoined by this court. Plaintiff has no adequate remedy at law.
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`Complaint - 14
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`

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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 15 of 32
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`84. Plaintiff is entitled to, among other relief, injunctive relief and an award of actual
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`damages, Defendant Shanti Elixir’s profits, enhanced damages and profits, reasonable
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`attorneys' fees, and costs of the action under Sections 34 and 35 of the Lanham Act, 15
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`U.S.C. §§ 1116, 1117, together with prejudgment and post-judgment interest.
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`COUNT FOUR (Refusal of Registration of US Application Serial No. 88685322
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`based on likelihood of confusion against Shanti Elixirs)
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`85. Plaintiff repeats and realleges paragraphs 1 through 84 hereof, as if fully set forth herein.
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`86. The registration of Defendant Shanti Elixir’s Application Serial No. 88685322 would
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`likely deceive consumers as to the origin, source, sponsorship, or affiliation of Defendant
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`Shanti Elixir’s goods, and is likely to cause consumers to believe, contrary to fact, that
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`Defendant Shanti Elixir’s goods are sold, authorized, endorsed, or sponsored by Plaintiff,
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`or that Defendant Shanti Elixirs is in some way affiliated with or sponsored by Plaintiff.
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`87. The registration of Defendant Shanti Elixir’s Application Serial No. 88685322 would
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`cause immediate and irreparable harm and injury to Plaintiff, and to its goodwill and
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`reputation, and would damage Plaintiff and confuse the public.
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`COUNT FIVE (Federal Unfair Competition) Against Shanti Elixirs
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`88. Plaintiff repeats and realleges paragraphs 1 through 87 hereof, as if fully set forth herein.
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`89. Defendant Shanti Elixir’s unauthorized use in commerce of the Infringing Marks as
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`alleged herein is likely to deceive consumers as to the origin, source, sponsorship, or
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`Complaint - 15
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`Case 4:22-cv-02511 Document 1 Filed 04/25/22 Page 16 of 32
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`
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`affiliation of Defendant Shanti Elixir’s goods, and is likely to cause consumers to believe,
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`contrary to fact, that Defendant Shanti Elixir’s goods are sold, authorized, endorsed, or
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`sponsored by Plaintiff, or that Defendant Shanti Elixirs is in some way affiliated with or
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`sponsored by Plaintiff.
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`90. Defendant Shanti Elixir’s unauthorized use in commerce of the Infringing Marks as
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`alleged herein constitutes use of a false designation of origin and misleading description
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`and representation of fact.
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`91. Upon information and belief, Defendant Shanti Elixir’s conduct as alleged herein is willful
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`and is intended to and is likely to cause confusion, mistake, or deception as to the
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`affiliation, connection, or association of Defendant Shanti Elixirs with Plaintiff.
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`92. Defendant Shanti Elixir’s conduct as alleged herein constitutes unfair competition in
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`violation of Section 43(a) o