Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1198188
`03/22/2022
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`92079044
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
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`Filer's email
`
`Signature
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`Date
`
`Attachments
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`Defendant
`Loba GmbH & Co. KG
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`LOBA GMBH & CO. KG
`LOENBERGER STR. 56-62
`DITZINGEN, 71254
`GERMANY
`Primary email: service@loba.de
`No phone number provided
`
`Motion to Suspend for Civil Action
`
`Tasneem A. Dharamsi
`
`trademarks@parkerpoe.com, amyhinson@parkerpoe.com, tasneemdharam-
`si@parkerpoe.com, janekoltura@parkerpoe.com
`
`/Tasneem A. Dharamsi/
`
`03/22/2022
`
`LOBA GmbH_WOCA Motion to Suspend for Civil Action_ Cancellation No. 9
`2079044.pdf(115954 bytes )
`Exhibit A 92079044.pdf(1984383 bytes )
`
`
`ESTTA1198188
`03/22/2022
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92079044
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Loba GmbH & Co. KG
`
`LOBA GMBH & CO. KG
`LOENBERGER STR. 56-62
`DITZINGEN, 71254
`GERMANY
`Primary email: service@loba.de
`No phone number provided
`
`Motion to Suspend for Civil Action
`
`Tasneem A. Dharamsi
`
`trademarks@parkerpoe.com, amyhinson@parkerpoe.com, tasneemdharam-
`si@parkerpoe.com, janekoltura@parkerpoe.com
`
`/Tasneem A. Dharamsi/
`
`03/22/2022
`
`LOBA GmbH_WOCA Motion to Suspend for Civil Action_ Cancellation No. 9
`2079044.pdf(115954 bytes )
`Exhibit A 92079044.pdf(1984383 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Registered Trademark Registration Number: 6360515
`__________________________________________
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`WOCA DENMARK A/S
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`)
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`Petitioner,
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`)
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`)
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`v.
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`)
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`LOBA GmbH & Co. KG
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`)
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`)
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`Respondent.
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`__________________________________________)
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`Cancellation No. 92079044
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`Respondent LOBA GmbH & Co. KG requests that the Board suspend the current
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`MOTION TO SUSPEND
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`proceeding, because the parties are now engaged in a civil action which may have a bearing on
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`the case. That case, styled as LOBA GmbH & Co. KG and WOCA DENMARK A/S (1:22-cv-
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`01137-LMM), is currently pending in the United States District Court for the Northern District
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`of Georgia. A copy of the operative pleadings is attached hereto as Exhibit A.
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`
`
`
`
`By:
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`PARKER POE ADAMS & BERNSTEIN LLP
`
`
`/Amy Allen Hinson/
`S.C. Bar No. 73919
`/Tasneem A. Dharamsi/
`N.C. Bar No. 47697
`Attorneys for LOBA GmbH & Co. KG
`110 East Court Street, Suite 200
`Greenville, South Carolina 29601
`Telephone: 864-577-6368
`
`
`PPAB 7037444v1
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this day I caused a true and correct copy of the foregoing
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`MOTION TO SUSPEND to be served upon counsel for Petitioner WOCA DENMARK A/S via
`email.
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`This the 22nd day of March, 2022.
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`
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`PARKER POE ADAMS & BERNSTEIN LLP
`
`
`
`
`/Amy Allen Hinson/
`S.C. Bar No. 73919
`/Tasneem A. Dharamsi/
`N.C. Bar No. 47697
`Attorneys for LOBA GmbH & Co. KG
`110 East Court Street, Suite 200
`Greenville, South Carolina 29601
`Telephone: 864-577-6368
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`
`
`
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`
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`
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`By:
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`PPAB 7037444v1
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`
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`Exhibit A
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`PPAB 7037444v1
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`
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 1 of 31
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
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`
`
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`
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`
`
`
`
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`vs.
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`LOBA GMBH & CO. KG,
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`
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`
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`NATURAL COATINGS, LLC,
`WOODCAREUSA LLC, and
`WOCA DENMARK A/S
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`
`
`
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`Plaintiff,
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`Defendants.
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`C.A. No. ________________
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`JURY TRIAL DEMANDED
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`
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`
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`COMPLAINT
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`LOBA GmbH & Co. KG (“Plaintiff”) for its Complaint against Defendants
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`Natural Coatings, LLC, WoodcareUSA LLC, and WOCA Denmark A/S
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`(collectively, “Defendants”) alleges:
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`THE PARTIES
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`1.
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`Plaintiff LOBA GmbH & Co. KG is a German entity with an address
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`of Loenberger Str. 56-63, Ditzingen, Fed Rep Germany 71254. Plaintiff is the
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`owner of the trademark 2K INVISIBLE PROTECT and 2K INVISIBLEPROTECT
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`for use in connection with, inter alia, wood floor finishes.
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`
`
`
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 2 of 31
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`
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`2.
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`LOBA-WAKOL LLC (“Loba-Wakol”) is Plaintiff’s United States
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`subsidiary entity for distributing, promoting, and selling Plaintiff’s floor finishing
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`products in the United States, including Plaintiff’s 2K INVISIBLE PROTECT and
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`2K INVISIBLEPROTECT floor finishes. Plaintiff is the parent entity of Loba-
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`Wakol.
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`3.
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`Upon information and belief, Defendant Natural Coatings, LLC
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`(“Natural Coatings”) is a limited liability company registered in Georgia having
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`corporate headquarters at 2670 North Berkeley Lake Road, Suite 7, Duluth,
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`Georgia 30096.
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`4.
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`Upon
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`information and belief, Defendant WoodcareUSA LLC
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`(“WoodcareUSA”) is a limited liability company registered in Georgia having
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`corporate headquarters at 2670 North Berkeley Lake Road, Suite 7, Duluth,
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`Georgia 30096.
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`5.
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`Upon information and belief, Defendant WOCA Denmark A/S
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`(“WOCA”) is an Aktieselskab of Denmark and has a business address of Tværvej
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`6 DK-6640 Lunderskov Denmark.
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`6.
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`Upon information and belief, Defendant WOCA makes, sells, and/or
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`imports into the United States a line of floorcare products using the term
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`“INVISIBLE.” For example, such products at least include products identified as
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`
`
`2
`
`
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 3 of 31
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`
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`“INVISIBLE OIL,” “INVISIBLE OIL CARE,” “INVISIBLE OIL PRIMER,”
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`“INVISIBLE HARDENER,” “INVISIBLE 2K,” and “INVISIBLE 2K FINISH”
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`(collectively, “Defendants’ Invisible Products”).
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`7.
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`Upon information and belief, Defendant Natural Coatings is a
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`subsidiary of WOCA and distributes, promotes, and sells WOCA-manufactured
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`products within the United States, such as via the websites www.wocadirect.com
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`and www.wocawoodcare.com. Upon information and belief, Defendant Natural
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`Coatings distributes, promotes, and sells Defendants’ Invisible Products.
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`8.
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`Upon
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`information and belief, Defendant WoodcareUSA
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`is a
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`subsidiary of WOCA and distributes, promotes, and sells WOCA manufactured
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`products within the United States, such as via the website www.woodcareuse.com.
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`Upon information and belief, Defendant WoodcareUSA distributes, promotes, and
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`sells Defendants’ Invisible Products.
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`NATURE OF ACTION
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`9.
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`This is a civil action seeking injunctive relief and damages against
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`Defendants for: (i) trademark infringement and unfair competition in violation of
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`the Federal Trademark Act of 1946, also known as the Lanham Act, codified at 15
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`U.S.C. § 1051, et seq.; (ii) unfair competition and false designation of origin in
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`violation of § 43(a) of the Lanham Act, codified as 15 U.S.C. § 1125(a), et seq.;
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`
`
`3
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`
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 4 of 31
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`
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`(iii) trademark infringement in violation of O.C.G.A. § 10-1-440 et seq.; (iv) unfair
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`competition in violation of Georgia common law; (v) unfair and deceptive trade
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`practices under O.C.G.A. § 10-1-370 et seq.; and (vi) trademark infringement in
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`violation of Georgia common law.
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`10. Trademark law and the law of unfair competition protects trademark
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`owners from the unauthorized use of their marks and unfair trade practices and also
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`protects the public from confusion regarding the source of products, services, and
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`the affiliation of those offering products or services. Confusion occurs when a
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`person or company uses a mark in a way that creates a likelihood that members of
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`the public will mistakenly believe that the person or company’s goods or services
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`originate from, or are affiliated with, the trademark owner when they are not.
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`JURISDICTION AND VENUE
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`11. This Court has subject matter jurisdiction under 15 U.S.C. § 1121
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`(actions arising under the Federal Trademark Act) and 28 U.S.C. §§ 1331 (federal
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`question) and 1338 (trademarks) because this action arises under the Lanham Act.
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`This Court has supplemental jurisdiction over Plaintiff’s related state law claims
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`under 28 U.S.C. § 1367(a).
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`
`
`4
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`
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 5 of 31
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`
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`12. Defendant Natural Coatings, which, as previously pleaded, is a
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`Georgia limited liability company, has a principal place of business in Duluth,
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`Georgia, and is subject to the general personal jurisdiction of this Court.
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`13. Defendant WoodcareUSA, which, as previously pleaded, is a Georgia
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`limited liability company, has a principal place of business in Duluth, Georgia, and
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`is subject to the general personal jurisdiction of this Court.
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`14. Defendant WOCA, which, as previously pleaded, is a Denmark entity,
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`does business with the other named Defendants in this judicial district and, upon
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`information and belief, is not subject to jurisdiction in any state’s courts of general
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`jurisdiction. Further, the primary claims arise under federal law and the exercise of
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`jurisdiction by this Court comports with due process because WOCA directs its
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`activities at residents of the United States and this judicial district by importing its
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`infringing goods into the United States with the intent of such goods being
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`distributed, promoted, and sold throughout the United States, including this judicial
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`district.
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`15. Venue is proper in this Court under 28 U.S.C. § 1391 in that a
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`substantial part of the events giving rise to the claims occurred in this judicial
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`district and all Defendants are, upon information and belief, subject to personal
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`jurisdiction in this judicial district.
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`
`
`5
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`
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 6 of 31
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`
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`FACTUAL BACKGROUND
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`Plaintiff’s Business & Trademarks
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`16. Plaintiff owns U.S. Trademark Registration No. 6,360,515 for the
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`mark “2K Invisible Protect” (“the ’515 Registration”) and U.S. Trademark
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`Registration No. 6,474,876 for the mark “2K INVISIBLEPROTECT” (“the ’876
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`Registration”) (collectively, “the 2K Invisible Protect Marks”).
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`17. Plaintiff’s above-referenced registrations are valid and subsisting and
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`are in full force and effect. Copies of the federal registration certificates are
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`attached hereto as Exhibit A and are incorporated herein by reference.
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`18. Since at least as early as November 2015, Plaintiff, via its subsidiary
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`Loba-Wakol, has used the 2K Invisible Protect Marks continuously and in good
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`faith in the United States in connection with goods, including, but not limited to,
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`“wood and cork floor finishes” in International Class 2. Additionally, Plaintiff, via
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`its subsidiary Loba-Wakol, has used the 2K Invisible Protect Marks continuously
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`and in good faith in the United States in connection with “chemicals used in
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`industry, namely chemicals used for the manufacture of cleaning, care, surface
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`treatment and sealing preparations used on wood, cork, stone, linoleum, laminate,
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`rubber, polyolefins and PVC floor, wall or ceiling coverings; adhesives used in
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`industry, in particular adhesives for gluing wood, cork, stone, linoleum, laminate,
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`6
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`
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 7 of 31
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`
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`rubber, polyolefins and PVC floor, wall or ceiling coverings” in International Class
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`1; “Paints, varnishes and lacquers, preservatives against deterioration of wood,
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`wood coatings for wood as paints, coatings in the nature of industrial sealants for
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`waterproofing and surface hardening; mordant dyes; colorants, radiation-hardening
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`coatings in the nature of finishes and oils for industrial applications, coatings in the
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`nature of finishes, oils and waxes, used for the treatment and sealing of floor, wall
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`or ceiling coverings made of wood, cork, stone, linoleum, laminate, rubber,
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`polyolefins and PVC; sealer coatings for use on wood, cork, stone, linoleum,
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`laminate, rubber, polyolefins and PVC floors, walls or ceilings; floor lacquer;
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`thinners for lacquers, paint thinners, primers for paints and lacquers; binding
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`agents for paints and lacquers, solvents in the form of additives to floor wax, floor
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`oil and floor lacquers” in International Class 2; and “Cleaning, polishing, scouring
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`and abrasive preparations; polishing waxes used on surface of floor, wall or ceiling
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`coverings made of wood, cork, stone, linoleum, laminate, rubber, polyolefins and
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`PVC; floor finishing preparations made of oils and wax/oil combinations used on
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`surfaces of floor, wall or ceiling coverings made of wood, cork, stone, linoleum,
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`laminate, rubber, polyolefins and PVC; floor finishing preparations, namely, floor
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`oil used on surfaces of floor, wall or ceiling coverings made of wood, cork, stone,
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`linoleum, laminate, rubber, polyolefins, and PVC; floor wax and floor oil; solvents
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`7
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 8 of 31
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`
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`used as scouring preparation of floor wax, floor oil and floor lacquer; wax, oil and
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`lacquer stripping or removing preparations; cleaning preparations, namely, basic
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`and industrial cleaners used for working apparatus which is used for the cleaning,
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`care, surface treatment and sealing of wood, cork, stone, linoleum, laminate,
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`rubber, polyolefins and PVC” in International Class 3 (collectively, “Plaintiff’s
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`Goods”).
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`19. Plaintiff’s Goods have had significant sales throughout the United
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`States due to Plaintiff’s extensive promotion of such goods, the high quality of
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`such goods, and the long established goodwill associated with such goods since at
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`least 2015. In fact, the 2K Invisible Protect Marks have become well-known
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`throughout the United States and other countries and are associated in the mind of
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`the relevant consuming public with Plaintiff and its business.
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`20. Further, Plaintiff’s use of the 2K Invisible Protect Marks has created,
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`and continues to create, a close association between the 2K Invisible Protect Marks
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`and Plaintiff’s Goods in the mind of the public.
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`21. Plaintiff has also spent substantial time, money, and effort in
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`developing, promoting, and marketing Plaintiff’s Goods under the 2K Invisible
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`Protect Marks throughout the United States. As a result, Plaintiff has built
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`extensive goodwill in, and owns extensive rights to, the 2K Invisible Protect
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`
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`8
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 9 of 31
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`
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`Marks, and the general public closely associates the 2K Invisible Protect Marks
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`with Plaintiff’s Goods.
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`Defendants’ Adoption and Use of Infringing Marks
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`22.
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`In late 2020, Plaintiff became aware of Defendants’ use of
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`confusingly similar variations of the 2K Invisible Protect Marks in connection with
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`Defendants’ wood floor care, primer, and finish products.
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`23. Particularly, upon
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`information and belief, Defendants
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`import,
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`distribute, and/or sell an “INVISIBLE” line or products, including, for example,
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`“INVISIBLE 2K FINISH” for wood floor finish, “INVISIBLE HARDENER” for
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`wood floor hardener treatment, “INVISIBLE OIL PRIMER” for surface treatment
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`for wood floors, “INVISIBLE OIL” for surface treatment for wood floors, and
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`“INVISIBLE OIL CARE” for wood care topcoat products as shown below
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`(collectively, “the Infringing Marks”), which are available at various retailers in
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`the United States. As can be seen, the terms INVISIBLE 2K FINISH, INVISIBLE
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`HARDENER, INVISIBLE OIL PRIMER, INVISIBLE OIL, and INVISIBLE OIL
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`CARE appear prominently in large, bolded text on the packaging of the products
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`set against a background of contrasting color in such a way that they immediately
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`catch the eye of the consuming public.
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`9
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 10 of 31
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`
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`Industry and Consumer Confusion
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`
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`24. Since introduction of Defendants’ Invisible Products into the United
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`States, it has become increasingly evident that confusion has already or will likely
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`result between Plaintiff’s Goods and Defendants’ Invisible Products.
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`25. For example, on or around May 2016, Plaintiff, including its
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`subsidiaries, and customers purchasing Plaintiff’s Goods, began using the
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`“#2KInvisible” hashtag on Instagram to promote Plaintiff’s Goods, which
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`continues to this day (see screenshot attached as Exhibit B).
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`26. Further, on or around December 2017, Plaintiff, including its
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`subsidiaries, and customers purchasing Plaintiff’s Goods, also began using the
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`10
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 11 of 31
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`
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`“#Invisible2K” hashtag on Instagram to promote Plaintiff’s Goods, which
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`continues to this day (see screenshot attached as Exhibit C).
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`27. On or around November 2019, a customer of Defendants’ Invisible
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`Products began using the “#Invisible2K” hashtag on Instagram to promote
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`Defendants’ Invisible Products and around this same time the Instagram user
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`@WOCAUSA began promoting Defendants’ Invisible Products using the
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`“#Invisible2K” hashtag which continues to this day (see screenshots attached as
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`Exhibits D & E). Upon information and belief, Instagram user @WOCAUSA is
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`controlled by one or more of the Defendants.
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`28. Since Defendants’ use of “#Invisible2K” on or around November
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`2019, confusion has become more evident based on customers of the respective
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`products interchangeably referring to both Plaintiff’s Goods and Defendants’
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`Invisible Products as “2K Invisible” or “Invisible 2K.” For example, the attached
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`Instagram post by @WOCAUSA and including the “#Invisible2K” hashtag
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`includes a flooring refinishing company asking about a “2K Invisible finish” (see
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`screenshot attached as Exhibit F).
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`Defendants’ Knowledge of 2K Invisible Protect Marks
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`29. On September 21, 2021, Plaintiff sent Defendant WoodcareUSA a
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`cease-and-desist letter demanding that Defendant WoodcareUSA cease using the
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`11
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 12 of 31
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`
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`Infringing Marks (the “First Letter”). A true and accurate copy of the First Letter
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`is attached hereto as Exhibit G and is incorporated by reference herein.
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`30. On December 14, 2021, Plaintiff sent a second cease-and-desist letter
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`to counsel for Defendants reiterating the demands made in the First Letter (the
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`“Second Letter”). A true and accurate copy of the Second Letter is attached hereto
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`as Exhibit H and is incorporated by reference herein.
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`31. To date, Defendants have not made any effort to comply with
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`Plaintiff’s demands.
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`32.
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`Indeed, Defendants have engaged in this conduct in spite of the fact
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`that Plaintiff’s rights in the 2K Invisible Protect Marks began accruing at least as
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`early as 2015.
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`33. Accordingly, Plaintiff’s rights in the 2K Invisible Protect Marks
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`precede any rights Defendants could claim in the Infringing Marks.
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`34. Defendants’ Infringing Marks are confusingly and deceptively similar
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`to the 2K Invisible Protect Marks for Plaintiff’s Goods such that the trade and
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`purchasing public is likely to be confused by and deceived into believing that the
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`goods offered in connection with the Infringing Marks originate with or are
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`otherwise authorized by, sponsored by, licensed by, or associated with Plaintiff.
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`Indeed, as described above, such confusion has already occurred.
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`12
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 13 of 31
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`35. Upon information and belief, Defendants adopted the Infringing
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`Marks in an effort to trade off of the goodwill already associated with the 2K
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`Invisible Protect Marks. Further, at least because Defendants have been on notice
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`of Plaintiff’s superior rights in the 2K Invisible Protect Marks since at least
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`September 21, 2021, Defendant’s infringement is willful.
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`36. The Infringing Marks closely resemble the 2K Invisible Protect
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`Marks.
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`37. Namely, the Infringing Mark “Invisible 2K Finish” begins with the
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`same two words “Invisible 2K” (in reverse order) as Plaintiff’s “2K Invisible
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`Protect” and “2K INVISIBLEPROTECT” marks.
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`38. The Infringing Mark “Invisible Hardener” includes the common
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`dominant term “Invisible” and the description above the Infringing Mark on the
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`packaging utilizes the term “2K.”
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`39. The Infringing Marks “Invisible Oil Primer” and “Invisible Oil” both
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`include the common dominant term “Invisible.”
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`40. Moreover, the additional terms contained in the Infringing Marks
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`(“OIL,” “PRIMER,” “HARDENER,” and “FINISH”) are all descriptive of
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`Defendants’ goods and therefore do not serve to distinguish the Infringing Marks
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`from Plaintiff’s 2K Invisible Protect Marks.
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`13
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 14 of 31
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`41. The Infringing Marks and the 2K Invisible Protect Marks convey
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`similar commercial impressions.
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`42. The Infringing Marks are being used in connection with goods that are
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`at least substantially similar to the goods sold in connection with the 2K Invisible
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`Protect Marks, namely, goods related to wood floor care, primer, and finish
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`products.
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`43. Defendants do not have a license or permission from Plaintiff to use
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`the 2K Invisible Protect Marks or any mark confusingly similar to the 2K Invisible
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`Protect Marks.
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`44. Because of the striking and confusing similarities between the 2K
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`Invisible Protect Marks and the Infringing Marks, ordinary observers would likely
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`overlook any differences and regard the marks as aesthetically the same.
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`45. The types of goods offered and sold by Defendants under or in
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`connection with the Infringing Marks are identical and/or closely similar to the
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`goods Plaintiff offers and sells under or in connection with the 2K Invisible Protect
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`Marks.
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`46. Defendants’ actions alleged herein have caused, likely will cause, and
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`likely will continue to cause confusion, mistake, or deception among the public
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`and consumers as to the affiliation, connection, association, origin, sponsorship,
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`14
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 15 of 31
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`approval, or source of the goods that Defendants market and sell under the
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`Infringing Marks, resulting in damage to Plaintiff’s business, trade, reputation, and
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`goodwill. Indeed, as discussed above, some damage has already occurred as a
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`result of the aforementioned actual confusion.
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`FIRST CLAIM FOR RELIEF
`(INFRINGEMENT OF FEDERALLY REGISTERED TRADEMARKS
`UNDER 15 U.S.C. §§ 1114, et seq.)
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`47. Plaintiff repeats and incorporates by reference, as though specifically
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`pleaded herein, the allegations of paragraphs 1 through 46 of this complaint.
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`48. This is an action for an injunction arising under 15 U.S.C. §§ 1114
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`and 1116, and for damages arising under 15 U.S.C. §§ 1114 and 1117 for
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`infringement of Plaintiff’s federally registered marks, the 2K Invisible Protect
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`Marks.
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`49. The 2K Invisible Protect Marks are valid and enforceable pursuant to
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`15 U.S.C. §§ 1065, 1115(b).
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`50. Plaintiff’s use of the 2K Invisible Protect Marks predates any use by
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`Defendants of the Infringing Marks on which the Defendants may rely.
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`51. Defendants’ use of the Infringing Marks in commerce in the United
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`States in connection with the sale, offering for sale, distribution, importation, and
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`advertising of goods, which are in direct competition and/or overlap with goods
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`15
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 16 of 31
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`offered by Plaintiff under the 2K Invisible Protect Marks, is likely to cause
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`confusion, or to cause mistake, and/or to deceive the public in violation of 15
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`U.S.C. § 1114 and infringes Plaintiff’s federally registered marks.
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`52. On
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`information and belief, Defendants’ acts of
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`trademark
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`infringement have been committed with the intent to cause confusion, mistake, or
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`deception, and are in violation of Plaintiff’s rights under section 32(a) of the
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`Lanham Act, 15 U.S.C. § 1114(a), and have been deliberate, willful, and in callous
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`disregard of Plaintiff’s rights.
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`53. Defendants had constructive knowledge of Plaintiff’s federal
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`registration of the 2K Invisible Protect Marks prior to Defendant’s adoption and
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`use of the Infringing Marks.
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`54. On information and belief, in view of Plaintiff’s extensive use and
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`promotion of the 2K Invisible Protect Marks in the United States and foreign
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`jurisdictions, Defendants likely had actual knowledge of Plaintiff’s prior use of the
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`2K Invisible Protect Marks prior to Defendant’s first use of the Infringing Marks.
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`Defendants at least had actual knowledge of Plaintiff’s prior use of the 2K
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`Invisible Protect Marks at least as of the date of the First Letter.
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`55. Defendants adopted and are using the Infringing Marks knowingly in
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`violation of, or in reckless disregard of, Plaintiff’s rights in the 2K Invisible Protect
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`16
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 17 of 31
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`Marks, particularly in light of the First and Second Letters Plaintiff sent
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`Defendants.
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`56. Actual confusion has resulted from Defendants’ use of the Infringing
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`Marks.
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`57. On information and belief, Defendants knew of Plaintiff’s prior use of
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`the 2K Invisible Protect Marks and intended to induce and did induce, and intend
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`to induce and will induce, consumers to purchase Defendants’ goods by trading off
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`of the extensive goodwill built up by Plaintiff in the 2K Invisible Protect Marks.
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`58. Defendants’ actions complained of herein have caused, and are
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`causing, irreparable harm to Plaintiff through a likelihood of confusion.
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`59. Through its use of the word “Invisible,” individually, and use of the
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`words “Invisible” and “2K” together, which are confusingly similar to, and include
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`identical elements of, the 2K Invisible Protect Marks, in connection with goods
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`that are identical, similar, and/or overlap with the goods provided by Plaintiff
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`under the 2K Invisible Protect Marks, Defendants have infringed the 2K Invisible
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`Protect Marks.
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`60. Defendants continued to use the Infringing Marks despite Plaintiff’s
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`repeated requests that Defendants stop their infringing activities. Thus, Defendants
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`have and are willfully infringing the 2K Invisible Protect Marks.
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`17
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 18 of 31
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`61. Defendants’ willful and callous misconduct makes this an exceptional
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`case, entitling Plaintiff to have any monetary remedies trebled and to recover its
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`attorneys’ fees under 15 U.S.C. § 1117.
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`62. Plaintiff has been and will continue to be irreparably injured by
`
`Defendants’ conduct. Plaintiff cannot be adequately compensated for these
`
`injuries by monetary remedies alone, and Plaintiff has no adequate remedy at law
`
`for Defendants’ infringement of its rights. Plaintiff is therefore entitled to
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`injunctive relief against Defendants, and, after trial, to recover any damages proven
`
`to have been caused, and/or any profits of Defendants which have been earned
`
`unjustly, by reason of Defendants’ acts of infringement.
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`SECOND CLAIM FOR RELIEF
`(FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION
`UNDER 15 U.S.C. § 1125(a), et seq.)
`
`63. Plaintiff repeats and incorporates by reference, as though specifically
`
`pleaded herein, the allegations of paragraphs 1 through 62 of this complaint.
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`64. This is an action for an injunction arising under 15 U.S.C. §§ 1125
`
`and 1116, and for damages arising under 15 U.S.C. §§ 1125 and 1117.
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`65. The 2K Invisible Protect Marks are valid and enforceable.
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`66. Plaintiff’s use of the 2K Invisible Protect Marks predates any use by
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`Defendants of the Infringing Marks.
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`
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`18
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 19 of 31
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`
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`67. Defendants have used the Infringing Marks in commerce in the United
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`States in connection with the sale, offering for sale, distribution, importation, and
`
`advertising of goods, which are in direct competition and overlap with goods
`
`offered by Plaintiff under the 2K Invisible Protect Marks.
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`68. Defendants’ adoption and use of the confusingly similar Infringing
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`Marks in commerce is likely to cause confusion, or to cause mistake, or to deceive
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`as to Defendants’ affiliation, connection, or association with Plaintiff, and/or as to
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`the origin, sponsorship, or approval of Defendants’ goods by Plaintiff, in violation
`
`of 15 U.S.C. § 1125(a).
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`69. On information and belief, Defendants adopted and are using the
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`Infringing Marks knowingly in violation of, or in reckless disregard of, Plaintiff’s
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`rights in the 2K Invisible Protect Marks, particularly in light of the First and
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`Second Letters.
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`70. Actual confusion has resulted from Defendants’ use of the Infringing
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`Marks.
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`71. The activities of Defendants complained of herein constitute willful
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`and intentional infringement of the 2K Invisible Protect Marks, and were
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`commenced and have continued in spite of Defendants’ actual and/or constructive
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`knowledge of Plaintiff’s rights in the 2K Invisible Protect Marks, and in spite of
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`19
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 20 of 31
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`
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`Defendants’ knowledge that these activities were and are in direct contravention of
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`Plaintiff’s rights.
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`72. Defendants’ willful and callous misconduct makes this an exceptional
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`case, entitling Plaintiff to have any monetary remedies trebled and to recover its
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`attorneys’ fees under 15 U.S.C. § 1117.
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`73. Plaintiff has been and will continue to be irreparably injured by
`
`Defendants’ conduct. Plaintiff cannot be adequately compensated for these
`
`injuries by monetary remedies alone, and Plaintiff has no adequate remedy at law
`
`for Defendants’ infringement of its rights. Plaintiff is therefore entitled to
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`injunctive relief against Defendants, and, after trial, to recover any damages proven
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`to have been caused, and/or any profits of Defendants that have been earned
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`unjustly, by reason of Defendants’ acts of infringement.
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`THIRD CLAIM FOR RELIEF
`(TRADEMARK INFRINGEMENT AND FALSE DESIGNATION OF
`ORIGIN UNDER O.C.G.A. 10-1-440 et seq.)
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`74. Plaintiff repeats and incorporates by reference, as though specifically
`
`pleaded herein, the allegations of paragraphs 1 through 73 of this complaint.
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`75. This is a claim for trademark infringement and false designation of
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`origin arising under O.C.G.A. 10-1-440 et seq.
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`
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`20
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 21 of 31
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`76. Defendants are using in this State the Infringing Marks, which are
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`confusingly similar to the 2K Invisible Protect Marks, in connection with the
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`advertising, offering for sale, and sale of goods in direct competition with identical
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`or closely similar goods being advertised and sold by Plaintiff under the 2K
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`Invisible Protect Marks.
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`77. As such, Defendants’
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`infringing uses constitute unconsented
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`reproduction, copies, or colorable imitations of the 2K Invisible Protect Marks in
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`connection with the sale, offering for sale, and/or advertising of goods in a manner
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`likely to cause confusion or mistake or to deceive as to the source of origin of such
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`goods.
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`78. Such conduct is deceptive and fraudulent and has the natural and
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`probable tendency to deceive the public and create confusion as to the source of
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`Plaintiff’s and Defendants’ respective goods and as to the existence of an
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`affiliation between Plaintiff and Defendants. As a result, consumers are likely to
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`be confused and deceived by Defendants’ conduct alleged herein.
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`79. Defendants have committed these acts with knowledge and have used
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`the Infringing Marks with the intent to cause confusion or mistake or to deceive.
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`80. Defendants’ conduct complained of herein violates O.C.G.A. 10-1-
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`440 et seq.
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`
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`21
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 22 of 31
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`81. Defendants’ unlawful acts violate Plaintiff’s statutory and common
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`law trademark rights and Plaintiff has suffered and will suffer substantial damages,
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`as well as the continuing loss of the goodwill and reputation established by
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`Plaintiff. The continuing loss of goodwill cannot be properly calculated and thus
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`constitutes irreparable harm and an injury for which there is no adequate remedy at
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`law. Such unlawful acts and damage will continue to occur unless enjoined by this
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`Court.
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`82. Plaintiff is entitled to injunctive relief against Defendants, and, after
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`trial, to a recovery of any damages proven to have been caused, and/or profits
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`earned unjustly, by reason of Defendants’ acts of infringement.
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`83. On information and belief, Defendants have received revenues and
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`profits as a result of their conduct, to which Defendants are not entitled, and, as
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`pleaded, Plaintiff has suffered damages as a result of Defendants’ conduct, for
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`which Defendants are responsible.
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`FOURTH CLAIM FOR RELIEF
`(COMMON LAW UNFAIR COMPETITION)
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`84. Plaintiff repeats and incorporates by reference, as though specifically
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`pleaded herein, the allegations of paragraphs 1 through 83 of this complaint.
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`85. This is a claim for common law unfair competition arising under the
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`common law of the State of Georgia.
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`22
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`Case 1:22-cv-01137-LMM Document 1 Filed 03/21/22 Page 23 of 31
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`86. Defendants’
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