Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1261239
`
`Filing date:
`
`01/20/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92081198
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Bully Max
`
`BULLY MAX
`#413
`4885-A MCKNIGHT ROAD
`PITTSBURGH, PA 15237
`UNITED STATES
`Primary email: matt@bullymax.com
`844-285-5987
`
`Motion to Suspend for Civil Action
`
`Anthony W. Brooks
`
`trademarks@webblaw.com, abrooks@webblaw.com, jmcilvaine@webblaw.com,
`bcoyne@webblaw.com, gvadala@webblaw.com
`
`/Anthony W. Brooks/
`
`01/20/2023
`
`Motion to Suspend.pdf(219856 bytes )
`Exhibit 1 part 1.pdf(3398126 bytes )
`Exhibit 1 part 2.pdf(4090446 bytes )
`Exhibit 1 part 3.pdf(4257876 bytes )
`Exhibit 1 part 4.pdf(3653837 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Petitioner,
`
`
`
`v.
`
`REPLENISH PET INC.,
`
`
`
`
`
`BULLY MAX LLC,
`
`
`
`
`
`Registrant.
`
`Cancellation No. 91216249
`
`Registration No. 6,051,700
`
`Mark: BULLY MAX
`
`Registered: May 12, 2020
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`REGISTRANT’S MOTION TO SUSPEND PROCEEDING IN VIEW OF
`PENDING CIVIL ACTION PURSUANT TO 37 C.F.R. 2.117
`
`Registrant Bully Max LLC (“Bully Max” or “Registrant”) hereby moves for suspension of
`
`these proceedings pursuant to 37 C.F.R. § 2.117(a). In support of this Motion, Registrant submits
`
`herewith Exhibit A, which is a copy of a Complaint filed on January 19, 2023, by Registrant. See
`
`Bully Max LLC v. Replenish Pet Inc., No. 2:23-cv-00101-MJH (W.D. Pa.) (“Civil Action” or
`
`“Complaint”). The Civil Action is pending in the United States District Court for the Western
`
`District of Pennsylvania.
`
`In the Complaint, Registrant alleges that Petitioner Replenish Pet, Inc. (“Replenish Pet” or
`
`“Petitioner”) is infringing the registration at issue in this cancellation proceeding, Registration No.
`
`6,051,700 for the mark BULLY MAX (“the ‘700 Registration”). Specifically, in its allegations,
`
`Registrant contends that Petitioner is infringing the ‘700 Registration under 15 U.S.C. § 1114(1)
`
`by using Registrant’s BULLY MAX mark and variations thereof, and that use of the MAXIMUM
`
`BULLY and ULTIMATE BULLY names and marks and variations thereof in commerce in
`
`association with Petitioner’s goods is and was likely to cause confusion, mistake or to deceive.
`
`Registrant has also alleged in the Civil Action that Petitioner’s actions constitute false designation
`
`of origin and trademark infringement under 15 U.S.C. § 1125(a). Petitioner admitted in its
`
`

`

`Cancellation No. 91216249
`
`cancellation petition in this proceeding that Bully Max’s “Mark (“BULLY MAX”) is confusingly
`
`similar to [Replenish Pet]’s Mark (“MAXIMUM BULLY”)”. See Cancellation Petition at ¶ 15.
`
`Registrant has also alleged in the Civil Action that Petitioner’s Registration No. 4,553,200
`
`for the mark MAXIMUM BULLY (“the ‘200 Registration”) should itself be cancelled. The ‘200
`
`Registration is the mark cited by the Petitioner as the basis for cancellation of Registrant’s ‘700
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`Registration at issue in this proceeding.
`
`It is Registrant’s position that the Civil Action, given that it directly involves the same
`
`registrations, namely the ‘200 Registration and the ‘700 Registration, at issue in this proceeding,
`
`will have a direct and potentially dispositive impact on this cancellation proceeding. Accordingly,
`
`Registrant hereby moves to stay this cancellation proceeding.
`
`Whenever it comes to the attention of the Board that the parties to a case before it are
`
`involved in a civil action which may be dispositive of the Board case, the proceedings before the
`
`Board may be suspended upon final determination of the civil action. TBMP § 510.02(a).
`
`Ordinarily, the Board will suspend proceedings in the case before it if the final determination of
`
`the other proceedings may have a bearing on the issues before the Board. TBMP § 510.02, citing
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`37 C.F.R. § 2.117(a); see, e.g., New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99
`
`U.S.P.Q.2d 1550, 1552 (TTAB 2011).
`
`Suspension of Board proceedings is within the discretion of the TTAB, and will generally
`
`be granted when a final decision of the court will likely be controlling on the issues to be decided
`
`by the TTAB. In Whopper Burger, Inc. v. Burger King Corp., 171 U.S.P.Q. 805, 807 (TTAB
`
`1971), the Board suspended proceedings, finding that “There can be no doubt ... that the outcome
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`of the civil action will have a direct bearing on the question of the rights of the parties herein and
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`2
`
`

`

`may in fact completely resolve all the issues.” There can be no doubt that the very issues involved
`
`Cancellation No. 91216249
`
`in the Civil Action are involved here.
`
`CONCLUSION
`
`In view of the fact that the pending Civil Action involves the same registrations at issue in
`
`this cancellation proceeding, the determination of the issues in the Civil Action will likely be
`
`dispositive of, or will at least have bearing on, this proceeding. Registrant therefore respectfully
`
`requests suspension of these proceedings pending determination of the Civil Action pursuant to
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`Trademark Rule 2.117(a), 37 C.F.R. § 2.117(a). Petitioner was contacted but did not respond
`
`whether or not it would consent to this Motion by the time requested by Petitioner.
`
`Dated: January 20, 2023
`
`
`
`
`
`
`
`Respectfully submitted,
`
`THE WEBB LAW FIRM
`
`s/ Anthony W. Brooks
`
`John McIlvaine (PA ID No. 56773)
`Anthony W. Brooks (PA ID No. 307446)
`Barry J. Coyne (PA ID No. 77007)
`One Gateway Center
`420 Ft. Duquesne Blvd., Suite 1200
`Pittsburgh, PA 15222
`P: 412.471.8815
`F: 412.471.4094
`jmcilvaine@webblaw.com
`abrooks@webblaw.com
`bcoyne@webblaw.com
`
`Attorneys for Registrant Bully Max LLC
`
`
`
`
`
`
`3
`
`

`

`Cancellation No. 91216249
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing REGISTRANT’S MOTION
`
`TO SUSPEND PROCEEDING IN VIEW OF PENDING CIVIL ACTION PURSUANT TO
`
`37 C.F.R. 2.117 was served this 20th day of January, 2023, upon the following via email:
`
`Charles K. Crane
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street
`14th Floor
`Irvine, CA 92614
`charles.crane@knobbe.com
`efiling@knobbe.com
`(Counsel for Petitioner)
`
`
`THE WEBB LAW FIRM
`
`s/ Anthony W. Brooks
`Anthony W. Brooks
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`
`
`

`

`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 1 of 23
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`
`Civil Action
`
`2:23-cv-101
`No. _______________
`
`JURY TRIAL DEMANDED
`
`) ) ) ) ) ) ) ) ) ) )
`
`BULLY MAX LLC,
`
`Plaintiff,
`
`v.
`
`REPLENISH PET INC.,
`
`Defendant.
`
`COMPLAINT
`
`Plaintiff, Bully Max LLC, by and through its undersigned attorneys, respectfully sets
`
`forth this Complaint against Defendant, Replenish Pet Inc., alleging as follows:
`
`INTRODUCTION
`
`1.
`
`This dispute arises from the wrongful and intentional acts of Defendant Replenish
`
`Pet Inc. (“Replenish Pet” or “Defendant”) to misappropriate, infringe upon, and profit from
`
`trademarks and commercial reputation belonging to Plaintiff Bully Max LLC (“Bully Max” or
`
`“Plaintiff”).
`
`2.
`
`Bully Max uses the mark BULLY MAX in connection with its dog food and
`
`related goods and has been doing so since at least 2009. Bully Max owns a federal trademark
`
`registration protecting its trademark. Replenish Pet knowingly and willfully adopted the mark
`
`MAXIMUM BULLY for the same and similar products as those sold under the BULLY MAX
`
`mark for the purpose of causing confusion among the consuming public to improperly trade off
`
`of and benefit from the good will of Bully Max and its intellectual property.
`
`3.
`
`Bully Max is a Pennsylvania limited liability company with its principal place of
`
`THE PARTIES
`
`

`

`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 2 of 23
`
`
`
`business at 4885-A McKnight Road #413, Pittsburgh, PA 15237.
`
`4.
`
`Replenish Pet is a California corporation with a principal place of business at
`
`1734 Illinois Avenue, Perris, CA 92571.
`
`JURISDICTION AND VENUE
`
`5.
`
`This Court has federal question jurisdiction for Bully Max’s trademark
`
`infringement claims under 28 U.S.C. §§ 1331 and 1338(a).
`
`6.
`
`In addition, this Court also has federal question jurisdiction over Bully Max’s
`
`unfair competition claim under Section 43(a) of the Lanham Act pursuant to 15 U.S.C. § 1121.
`
`7.
`
`Furthermore, this Court has supplemental jurisdiction over Bully Max’s state law
`
`claims under 28 U.S.C. § 1367, as Bully Max’s state law claims form part of the same case and
`
`controversy as its federal statutory claims.
`
`8.
`
`This Court has personal jurisdiction over Replenish Pet by virtue of Replenish Pet
`
`doing business in this Commonwealth, and in particular, this judicial district and/or engaging in
`
`tortious activity and intentional acts of infringement in this Commonwealth within this judicial
`
`district. Replenish Pet has further expressly aimed its intentional acts at Bully Max and this
`
`judicial district such that this judicial district is the focal point of such acts. For example, upon
`
`information and belief, Replenish Pet has sold infringing product to a retailer in Irvine,
`
`Pennsylvania, in Warren County, in this judicial district. See attached Exhibit A.
`
`9.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391.
`
`FACTUAL BACKGROUND
`
`10.
`
`Since at least 2009, Bully Max began using the mark BULLY MAX in connection
`
`with dog food and supplements. Examples of that usage are shown in attached Exhibit B.
`
`11.
`
`In the Commonwealth of Pennsylvania, the products sold by Bully Max were
`
`always and continue to be licensed as animal feed. A copy of Bully Max’s current feed license
`
`2
`
`

`

`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 3 of 23
`
`
`
`from the Commonwealth of Pennsylvania is attached hereto as Exhibit C. Dog food and dog
`
`supplements are typically sold in the same channels of trade and can be found in very close
`
`proximity, if not the aisle, in most retailing locations. They are offered on the same websites, are
`
`produced by the same companies, and show up in the same search results.
`
`12.
`
`Since its inception, Bully Max invested heavily into the marketing of the BULLY
`
`MAX mark and brand. Bully Max has built a strong reputation surrounding the BULLY MAX
`
`mark as a high-quality brand with products that deliver results. As a result, Bully Max has
`
`become a household name within the American Bully breed community as well as the larger
`
`bulldog and similar breed community.
`
`13.
`
`In 2013, Bully Max obtained U.S. Trademark Registration No. 4,347,610 (the
`
`’610 Registration”) for the mark BULLY MAX in connection with “dog vitamins.” That
`
`registration was subsequently cancelled because Bully Max did not file an affidavit of use after 5
`
`years of registration under Section 8 of the Lanham Act. In 2015, Bully Max filed a new
`
`trademark application, which ultimately registered as U.S. Trademark Registration No.
`
`4,950,796 (“the ’796 Registration”), also for the mark BULLY MAX, in connection with
`
`“Dietary supplements for pets; Food supplements for pets; Vitamins for pets” and “Pet food; Pet
`
`treats.” That registration was also cancelled due to the non-filing of an affidavit of use under
`
`Section 8 of the Lanham Act.
`
`14.
`
`Despite the ’610 Registration and ’796 Registration being cancelled, Bully Max
`
`has continuously used the BULLY MAX mark in commerce and built the good will and
`
`reputation surrounding the BULLY MAX mark and brand since its introduction in 2009. Since
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`2009, Bully Max has invested at least 21.5 million dollars into advertising and marketing of the
`
`BULLY MAX mark and brand and the products sold under it. As a result of Bully Max’s
`
`3
`
`

`

`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 4 of 23
`
`
`
`efforts, the BULLY MAX mark has come to symbolize high-quality goods that deliver results in
`
`muscle and size growth for dogs.
`
`15.
`
`Today, Bully Max is the owner of U.S. Trademark Registration No. 6,051,700
`
`(“the ’700 Registration”) for the mark BULLY MAX in connection with “Dietary supplements
`
`for pets; Vitamins for pets”, “Pet toys” and “Pet food.” A copy of the ’700 Registration is
`
`attached hereto as Exhibit D.
`
`16.
`
`Upon information and belief, Replenish Pet’s predecessor-in-interest, Elite K9
`
`Nutrition, LLC (“Elite K9”), was founded by bulldog and American Bully breed owners and
`
`breeders. Three to four years after Bully Max began using the BULLY MAX mark in selling
`
`products targeted for American Bully, bulldog and other similar breed owners and breeders, Elite
`
`K9 began selling and marketing a dog food under the mark MAXIMUM BULLY. Elite K9 filed
`
`a U.S. trademark application on January 8, 2013, that later issued as U.S. Trademark Registration
`
`No. 4,553,200 (“the ’200 Registration), for the mark MAXIMUM BULLY. The ’200
`
`Registration was assigned to Defendant Replenish Pet in 2015.
`
`17.
`
`The MAXIMUM BULLY-bearing dog food product was and continues to be
`
`marketed to dog owners for the exact same purpose as the BULLY MAX-bearing product,
`
`namely to supplement and enhance the strength, size and muscle growth of dogs.
`
`18.
`
`Prior to the introduction of the MAXIMUM BULLY dog food product, Bully
`
`Max marketed and advertised its BULLY MAX product heavily to American Bully breeders and
`
`the American Bully community, generally, including in American Bully breed magazines, trade
`
`shows, forums, and every online outlet related to this dog breed.
`
`19.
`
`Elite K9’s introduction of MAXIMUM BULLY-bearing products into the market
`
`place caused actual confusion among the relevant consuming public. Shortly after introduction
`
`of MAXIMUM BULLY, Bully Max began receiving telephone calls and emails from customers
`
`4
`
`

`

`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 5 of 23
`
`
`
`expressing their belief that BULLY MAX products and MAXIMUM BULLY products were the
`
`same and/or were supplied by the same source. Pet stores and dog owners alike were under the
`
`mistaken impression that MAXIMUM BULLY was sold and/or were the same as the products
`
`sold under the BULLY MAX mark:
`
`20.
`
`Confusion between the parties’ respective brands continues today. Examples of
`
`
`
`
`
`
`
`the confusion caused by Defendant and its predecessor-in-interest’s use of the MAXIMUM
`
`BULLY mark are attached hereto as Exhibit E.
`
`21.
`
`Replenish Pet and its predecessor Elite K9 have been content to allow this
`
`confusion to exist so as to benefit from and trade off of Bully Max’s marketing, advertising and
`
`good will surrounding the BULLY MAX mark.
`
`22.
`
`In 2014, Bully Max sent a cease and desist letter to Elite K9, a copy of which is
`
`attached hereto as Exhibit F, asserting infringement of its rights in the BULLY MAX mark.
`
`Bully Max received no response.
`
`23.
`
`In 2016, clearly aware of Bully Max and its products due to the 2014 cease and
`
`desist letter, Replenish Pet introduced a pet supplement product ostensibly called “Ultimate
`
`Bully” which was a near identical copy of the original product offered in 2009 under the BULLY
`
`5
`
`

`

`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 6 of 23
`
`
`
`MAX mark. Indeed, the Ultimate Bully product contained every single vitamin and nutrient, of
`
`which there were and are thirty-seven (37), used in Bully Max’s formula.
`
`24.
`
`Despite knowing of Bully Max, its products and the BULLY MAX mark, on
`
`January 7, 2020 Replenish Pet filed a declaration of incontestability under Section 15 of the
`
`Lanham Act in connection with the ’200 Registration for the mark MAXIMUM BULLY.
`
`25.
`
`In 2018, Replenish Pet obtained U.S. Trademark Registration No. 5,807,900 (“the
`
`’900 Registration”) for the mark ULTIMATE BULLY in connection with “Vitamins for pets;
`
`food supplements for pets; dietary supplements for pets.”
`
`26.
`
`Despite obtaining a registration for the mark ULTIMATE BULLY, Replenish Pet
`
`marketed its pet supplement product as “ULTIMATE BULLY MAXIMUM PERFORMANCE
`
`CANINE SUPPLEMENT” in a further and surreptitious attempt to trade on the good will of the
`
`BULLY MAX mark. Indeed, Replenish Pet’s Amazon advertisement when compared with
`
`Bully Max’s demonstrates a clear attempt to infringe and copy:
`
`27.
`
` As demonstrated in the above photos, like Bully Max’s product, Replenish Pet
`
`utilizes a white plastic bottle with a screw cap, both bottles depict muscular dogs as the focal
`
`
`
`6
`
`

`

`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 7 of 23
`
`
`
`point, both contain 60 tablets per bottle, and they are sold in the same category (dog supplement)
`
`for the exact same benefits (muscle support).
`
`28. Most glaringly, however, Replenish Pet uses the term “Ultimate,” as used by
`
`Bully Max’s product listings for the BULLY MAX product. Replenish Pet positions the word
`
`“Bully” directly preceding the word “Maximum” in the phrase “Ultimate Bully Maximum.”
`
`Indeed, consumers referred to the product as “Ultimate Bully Maximum”:
`
`
`
`29.
`
`Replenish Pet is attempting to create the same commercial impression as the
`
`BULLY MAX mark and products in order to mislead consumers into believing Replenish Pet’s
`
`product originates from the same source. This thinly veiled attempt to benefit from Bully Max’s
`
`BULLY MAX mark, reputation and marketing is consistent across Replenish Pet’s various retail
`
`channels:
`
`
`
`
`
`
`
`7
`
`

`

`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 8 of 23
`
`
`
`30.
`
`Additional examples of this are shown attached hereto as Exhibit G.
`
`31.
`
`Replenish Pet also uses the term “Bully Maximum” and “Max Bully” on eBay
`
`and other various online retail sites, and on social media channels. See, e.g., attached Exhibit M.
`
`This resulted in MAXIMUM BULLY-branded products appearing in Google search results for
`
`the exact search term “Bully Max.” Given the identical products offered, this exacerbated the
`
`confusion among Bully Max's customers.
`
`32.
`
` Even on the Spanish-language MAXIMUM BULLY webpage, Replenish Pet
`
`again, surreptitiously attempts to hide usage of the BULLY MAX mark by referring to its
`
`product as “Bully máxima” despite the page header referring to “Maximo Bully”:
`
`33.
`
`A full copy of the Spanish-language MAXIMUM BULLY webpage is attached
`
`
`
`hereto as Exhibit H.
`
`34.
`
` Replenish Pet’s bad faith conduct has caused its products to be discovered by
`
`customers searching for BULLY MAX brand products.
`
`35.
`
`Online searches for BULLY MAX products return results for Replenish Pet’s
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`products:
`
`8
`
`

`

`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 9 of 23
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`
`
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`
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`36.
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`Indeed, Amazon even notes that consumers frequently buy BULLY MAX and
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`MAXIMUM BULLY products together:
`
`
`
`
`
`9
`
`

`

`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 10 of 23
`
`
`
`37.
`
`Since introduction of the MAXIMUM BULLY products into the marketplace,
`
`Replenish Pet and Elite K9 have tip-toed around the literal version Plaintiff’s BULLY MAX
`
`mark using numerous variations of the same in order to trade off Bully Max’s good will and
`
`reputation.
`
`38.
`
`Given Replenish Pet’s and/or Elite K9’s bad faith conduct demonstrated above,
`
`the MAXIMUM BULLY mark was adopted for, used and continues to be used on identical
`
`goods to those sold by Bully Max for the purpose of intentionally trading on the good will and
`
`reputation surrounding the BULLY MAX mark.
`
`39.
`
`In October 2022, Replenish Pet sent a cease and desist letter to Bully Max
`
`alleging improper complaints submitted to certain e-retailers. A copy of this cease and desist
`
`letter is attached hereto as Exhibit K. Subsequently, Bully Max responded that it, in fact, was the
`
`senior user and Replenish Pet’s use of the mark MAXIMUM BULLY infringed Bully Max’s
`
`trademark rights. A copy of Bully Max’s response letter is attached hereto as Exhibit L.
`
`40.
`
`On December 12, 2022, Replenish Pet’s response was to file a cancellation
`
`petition at the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark
`
`Office based in part on Replenish Pet’s ’200 Registration for the mark MAXIMUM BULLY. A
`
`copy of Replenish Pet’s cancellation petition is attached hereto as Exhibit N.
`
`41.
`
`Replenish Pet admitted in its cancellation petition before the TTAB that Bully
`
`Max’s “Mark (“BULLY MAX”) is confusingly similar to [Replenish Pet]’s Mark (“MAXIMUM
`
`BULLY”). Ex. N (Cancellation Petition) at ¶ 15.
`
`COUNT I:
`TRADEMARK INFRINGEMENT OF U.S. REG. NO. 6,051,700
`UNDER 15 U.S.C. § 1114(1)
`
`The preceding paragraphs of the Complaint are hereby incorporated by reference
`
`42.
`
`as if fully set forth herein.
`
`10
`
`

`

`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 11 of 23
`
`
`
`43.
`
`Defendant’s above-described use in commerce of Plaintiff’s BULLY MAX mark
`
`and variations thereof and Defendant’s use of the MAXIMUM BULLY and ULTIMATE
`
`BULLY names and marks and variations thereof in association with its goods is and was likely
`
`to cause confusion, mistake or to deceive.
`
`44.
`
`The above-described acts of Defendant constitute trademark infringement of
`
`Plaintiff’s U.S. Trademark Registration No. 6,051,700 for BULLY MAX in violation of 15
`
`U.S.C. § 1114(1), entitling Plaintiff to relief.
`
`45.
`
`Defendant has unfairly profited from the infringing acts alleged, in an amount to
`
`be determined at trial.
`
`46.
`
`By reason of Defendant’s acts, Plaintiff has suffered damage to the goodwill
`
`associated with Plaintiff’s federally registered BULLY MAX mark.
`
`47.
`
`Defendant’s acts of infringement, as alleged herein and in violation of U.S.
`
`Trademark law, have caused and, unless enjoined by this Court, will continue to cause
`
`irreparable harm to Plaintiff and Plaintiff’s federally registered BULLY MAX mark for which
`
`Plaintiff has no adequate remedy at law.
`
`48.
`
`Defendant’s activities have irreparably harmed, and if not enjoined, will continue
`
`to irreparably harm the general public, who has an interest in being free from confusion, mistake,
`
`and deception.
`
`49.
`
`By reason of Defendant’s acts, Plaintiff’s remedy at law is not adequate to
`
`compensate Plaintiff for the injuries inflicted by Defendant. Accordingly, Plaintiff is entitled to
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`preliminary and permanent injunctive relief against Defendant pursuant to 15 U.S.C. § 1116.
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`50.
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`By reason of Defendant’s willful acts, Plaintiff is entitled to damages, and that
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`those damages be trebled under 15 U.S.C. § 1117.
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`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 12 of 23
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`51.
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`Due to Defendant’s acts of infringement, Plaintiff is entitled to reasonable
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`attorneys’ fees and costs of this action. This is an exceptional case, making Plaintiff eligible for
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`an award of attorneys’ fees under 15 U.S.C. § 1117.
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`52.
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`The infringement by the Defendant has been willful and deliberate, designed
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`specifically to trade upon the enormous goodwill associated with Plaintiff's federally registered
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`BULLY MAX mark.
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`53.
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`Defendant’s infringement will continue unless enjoined by this court.
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`COUNT II:
`FALSE DESIGNATION OF ORIGIN/TRADEMARK INFRINGEMENT
`UNDER 15 U.S.C. § 1125(A)
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`The preceding paragraphs of the Complaint are hereby incorporated by reference
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`54.
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`as if fully set forth herein.
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`55.
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`Plaintiff is the exclusive owner of the BULLY MAX mark.
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`56.
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`Defendant’s use of Plaintiff’s BULLY MAX mark and variations thereof and
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`Defendant’s use of the MAXIMUM BULLY and ULTIMATE BULLY names and marks and
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`variations thereof is confusingly similar to Plaintiff’s BULLY MAX mark.
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`57.
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` Defendant’s use in interstate commerce of the BULLY MAX, MAXIMUM
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`BULLY and ULTIMATE BULLY names and marks and variations thereof is likely to cause
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`confusion, or to cause mistake, or to deceive the relevant public that products offered by
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`Defendant are authorized, sponsored, or approved by, or are affiliated with, Plaintiff.
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`58.
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`Defendant’s use of the BULLY MAX, MAXIMUM BULLY and ULTIMATE
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`BULLY names and marks and variations thereof is likely to cause confusion among the general
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`public.
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`59.
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`Defendant’s use of the infringing BULLY MAX, MAXIMUM BULLY and
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`ULTIMATE BULLY names and marks and variations thereof constitutes a false designation of
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`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 13 of 23
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`origin which is likely to deceive consumers into believing that Defendant’s goods and services
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`are those of the Plaintiff, and, as a consequence, are likely to divert customers away from the
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`Plaintiff.
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`60.
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`Plaintiff has no control over the nature and quality of the goods provided by
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`Defendant. Any failure, neglect or default by Defendant in providing such goods will reflect
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`adversely on Plaintiff as the believed source of origin thereof, hampering efforts by Plaintiff to
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`continue to protect its reputation in the marketplace, resulting in loss of sales and the
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`considerable expenditures to promote its goods under Plaintiff’s BULLY MAX mark, all to the
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`irreparable harm of the Plaintiff.
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`61.
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`The above-described acts of the Defendant constitute trademark infringement of
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`Plaintiff’s BULLY MAX mark, and false designation of origin in violation of 15 U.S.C. §
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`1125(a), entitling Plaintiff to relief.
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`62.
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`Defendant has unfairly profited from the actions alleged in an amount to be
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`determined at trial.
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`63.
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`By reason of Defendant’s acts alleged herein, Plaintiff has suffered damage to the
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`goodwill associated with Plaintiff’s BULLY MAX mark.
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`64.
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`Defendant’s activities have irreparably harmed and, if not enjoined, will continue
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`to irreparably harm Plaintiff and Plaintiff’s BULLY MAX mark.
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`65.
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`Defendant’s activities have irreparably harmed and, if not enjoined, will continue
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`to irreparably harm the general public, which has an interest in being free from confusion,
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`mistake and deception.
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`66.
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`Defendant’s actions will cause Plaintiff to lose the benefit of the substantial
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`investment made in developing, marketing, and selling its goods. Defendant’s improper actions
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`were intended to cause harm to Plaintiff.
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`67.
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`By reason of Defendant’s acts alleged herein, Plaintiff’s remedy at law is not
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`adequate to compensate Plaintiff for the injuries inflicted by Defendant. Accordingly, Plaintiff is
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`entitled to preliminary and permanent injunctive relief against Defendant pursuant to 15 U.S.C. §
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`1116.
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`68.
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`By reason of Defendant’s willful acts, Plaintiff is entitled to damages, and that
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`those damages be trebled, under 15 U.S.C. § 1117.
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`69.
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`This is an exceptional case, making Plaintiff eligible for an award of attorneys’
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`fees under 15 U.S.C. §1117.
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`70.
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`Defendant’s false designation of origin and trademark infringement will continue
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`unless enjoined by this court.
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`COUNT III:
`UNFAIR COMPETITION/TRADEMARK INFRINGEMENT UNDER
`PENNSYLVANIA COMMON LAW
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`The preceding paragraphs of the Complaint are hereby incorporated by reference
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`71.
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`as if fully set forth herein.
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`72.
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`In addition to its federal registration of the BULLY MAX mark and its long time,
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`continuous common law use of the BULLY MAX mark, Plaintiff filed BULLY MAX as a
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`fictitious name with the Pennsylvania Department of State on February 11, 2002.
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`73.
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`By virtue of its intentional infringement and willful misappropriation of the
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`Plaintiff’s BULLY MAX mark, Defendant has engaged in unfair competition and trademark
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`infringement under Pennsylvania common law.
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`74.
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`Defendant has used Plaintiff’s BULLY MAX mark and confusingly similar
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`variations thereof and the MAXIMUM BULLY and ULTIMATE BULLY names and marks and
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`variations thereof to divert or damage Plaintiff’s business relationships, expectancies, and
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`opportunities to the detriment of Plaintiff. Defendant’s actions and use of Plaintiff’s BULLY
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`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 15 of 23
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`MAX mark and confusingly similar variations thereof and Defendant’s use of the MAXIMUM
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`BULLY and ULTIMATE BULLY names and marks and variations thereof have created
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`confusion between Plaintiff’s goods and Defendant’s goods.
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`75.
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`Defendant’s actions will cause Plaintiff to lose the benefit of the substantial
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`investment made in developing, marketing, and selling its goods. Defendant’s improper actions
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`were intended to cause harm to Plaintiff.
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`76.
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`Defendant’s actions constitute unfair competition. The actions were intentional
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`and calculated to injure Plaintiff in the marketplace and cause confusion in the marketplace and
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`among consumers between Plaintiff’s and Defendant’s goods. The actions are unfair and
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`wrongful and done with the intent of damaging Plaintiff’s business interests.
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`77.
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`Defendant’s conduct has caused and will continue to cause irreparable injury to
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`Plaintiff, its business reputation, and its goodwill. Plaintiff has no adequate remedy at law and
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`will continue to be irreparably harmed unless and until Defendant is preliminarily and
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`permanently enjoined from these actions.
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`78.
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`Defendant’s conduct was gross, wanton, malicious, oppressive, and showed spite,
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`ill will, and reckless indifference to the interests of others. The conduct evidences an evil hand
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`guided by an evil mind. As a result, Defendant is liable for punitive damages.
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`COUNT IV:
`CANCELLATION OF FEDERAL TRADEMARK REGISTRATION NO. 4,553,200
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`79.
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`The preceding paragraphs of the Complaint are hereby incorporated by reference
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`as if fully set forth herein.
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`80.
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`This count is brought under 15 U.S.C. § 1051 et. seq. based upon at least an
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`intentionally false and fraudulent misstatement of the dates of first use recited in the application
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`for the standard character word mark MAXIMUM BULLY (U.S. Reg. No. 4,553,200).
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`81.
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`In its intent-to-use trademark application that resulted in U.S. Reg. No. 4,553,200
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`for MAXIMUM BULLY filed on January 8, 2013, Defendant’s predecessor Elite K9, through its
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`signatory, upon information and belief, falsely declared: “to the best of his/her knowledge and
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`belief no other person, firm, corporation, or association has the right to use the mark in
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`commerce, either in the identical form thereof or in such near resemblance thereto as to be likely,
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`when used on or in connection with the goods/services of such other person, to cause confusion,
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`or to cause mistake, or to deceive.” See Exhibit J. Defendant’s predecessor Elite K9 did not
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`disclose Plaintiff’s prior use of the BULLY MAX mark to the USPTO and agreed to this
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`statement despite the fact, upon information and belief, that Defendant’s predecessor Elite K9
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`was aware of Plaintiff’s prior use of the BULLY MAX mark given Plaintiff’s marketing of its
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`BULLY MAX-branded products to American Bully, bulldog and other similar breed owners and
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`breeders.
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`82.
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`On information and belief, Defendant’s predecessor Elite K9 omitted its
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`knowledge of Plaintiff’s prior use of the BULLY MAX mark in its application for MAXIMUM
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`BULLY that resulted in U.S. Reg. No. 4,553,200 with the intent to deceive the USPTO in an
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`attempt to predate the Plaintiff’s use of, application for, and federal registration of the BULLY
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`MAX mark which was first federally registered in Registration No. 4,347,610 on June 4, 2013
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`and was subsequently federally registered for dog food in Registration No. 6,051,700 on May 12,
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`2020.
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`83.
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`Further, when Defendant’s predecessor Elite K9 filed its application for
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`Defendant’s trademark registration for MAXIMUM BULLY on January 8, 2013, it filed the
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`application as an intent-use-application under Trademark Act Section 1(b) that did not set forth a
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`date of first use or a date of first use in U.S. interstate commerce. See Exhibit J. When
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`Defendant’s predecessor Elite K9 subsequently filed a statement of use on May 24, 2014 in the
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`Case 2:23-cv-00101-MJH Document 1 Filed 01/19/23 Page 17 of 23
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`intent-to-use application for Defendant’s trademark registration for MAXIMUM BULLY, it
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`claimed a date of first use and a date of first use in U.S. interstate commerce of December 1,
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`2012, even though, upon information and belief, Defendant or its predecessor Elite K9 was not
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`using the MAXIMUM BULLY trademark on or in