ESTTA Tracking number:
`
`ESTTA1312719
`
`Filing date:
`
`09/28/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92083281
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Skydiving School, Inc.
`
`SKYDIVING SCHOOL, INC.
`PO BOX 75520
`HONOLULU, HI 96836
`UNITED STATES
`Primary email: frank@skydivehawaii.com
`808 637-5498
`
`Motion to Suspend for Civil Action
`
`George E. Darby
`
`ged@darbyip.com
`
`/ George E. Darby /
`
`09/28/2023
`
`Can 2083281 Motion to Suspend for Civil Action 27Sept2023.pdf(87201 bytes )
`Exh. A CV 23-00292 DKW-WRP (D.Haw. 2023) DKT 1 Trademark Infrgmt file d
`2023-07-13 SKYDIVE HAWAII v. GOJUMP Complaint .PDF(1717024 bytes )
`
`
`
`ESTTA1312719
`
`Filing date:
`
`09/28/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92083281
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Skydiving School, Inc.
`
`SKYDIVING SCHOOL, INC.
`PO BOX 75520
`HONOLULU, HI 96836
`UNITED STATES
`Primary email: frank@skydivehawaii.com
`808 637-5498
`
`Motion to Suspend for Civil Action
`
`George E. Darby
`
`ged@darbyip.com
`
`/ George E. Darby /
`
`09/28/2023
`
`Can 2083281 Motion to Suspend for Civil Action 27Sept2023.pdf(87201 bytes )
`Exh. A CV 23-00292 DKW-WRP (D.Haw. 2023) DKT 1 Trademark Infrgmt file d
`2023-07-13 SKYDIVE HAWAII v. GOJUMP Complaint .PDF(1717024 bytes )
`
`
`
`DARBY IP & LAW CORP.
`GEORGE E. DARBY
`Hawaii Bar No. 4214
`USPTO Reg. No. 44,053
`Post Office Box 893010
`Mililani, Hawai‘i 96789
`Email: ged@darbyip.com
`Phone: (808) 626-1300
`Attorney for Respondent/Registrant
`SKYDIVING SCHOOL, INC.,
`dba SKYDIVE HAWAII
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`GOJUMP HAWAII LLC, a Hawai‘i
`limited liability company
`Petitioner
`
`vs.
`
`
`SKYDIVING SCHOOL, INC. dba
`SKYDIVE HAWAII, a Hawai‘i
`corporation,
`
`Respondent/Registrant
`
`Cancellation No. 92083281
`
`RESPONDENT/REGISTRANT’S
`MOTION TO SUSPEND FOR
`CIVIL ACTION; EXHIBIT A;
`CERTIFICATE OF SERVICE
`Mark: SKYDIVE HAWAII
`Reg. Nos.: 4182071 (word)
` 4194803 (word)
` 4246149 (design)
` 5627055 (design)
`
`
`
`RESPONDENT/REGISTRANT’S
`
`MOTION TO SUSPEND FOR CIVIL ACTION
`
`COMES NOW, RESPONDENT/REGISTRANT SKYDIVING SCHOOL,
`
`
`
`
`
`
`
`INC. dba SKYDIVE HAWAII (“Registrant”), by and through its attorney, DARBY
`
`IP & LAW CORPORATION, who respectfully moves the Trademark Trial and
`
`Appeal Board (“Board”) to suspend the proceedings in Cancellation Proceeding
`
`92083281 (“the Proceeding”) pending the resolution of the civil action captioned
`
`Civil No. CV 23-00292 DKW-WRP (Trademark Infringement) (“Civil Action”),
`
`filed on July 13, 2023, in the U.S. District Court – District of Hawaii. Registrant is
`
`the plaintiff, and Petitioner is a defendant, in the Civil Action. A true and complete
`
`copy of the Complaint in the Civil Action (DKT 1) is submitted herewith as Exhibit
`
`A (“Complaint”).
`
`This Motion is brought pursuant to TBMP Rule 510.2(a) and 37 CFR §
`
`2.117(a), and is supported by good cause, namely the District Court’s
`
`determinations in the Civil Action of Petitioner’s assertions of genericness of the
`
`Marks and of Registrant’s representations under 15 USC § 1052(2)(f) have a bearing
`
`on the issues before the Board.
`
`I.
`
`FACTS
`
`Paragraphs 5 to 97 of the Complaint provide the factual background of the
`
`Civil Action. Infringement of Reg. Nos. 4182071 (word), 4194803 (word),
`
`4246149 (design), and 5627055 (design) (collectively, “the Marks”) by Petitioner
`
`and other defendants is alleged in the Complaint.
`
`¶¶ 98 to 109 of the Complaint comprise a count for trademark infringement
`
`
`
`
`2
`
`
`
`under 15 USC § 1125 and remedies under 15 USC §§ 1114, 1116, and 1117.
`
`¶¶ 98 to 113 of the Complaint comprise a count for unfair competition under
`
`15 USC § 1125 and remedies under 15 USC §§ 1116 and 1117.
`
`¶¶ 114 to 122 of the Complaint comprise counts under Hawaii law for
`
`breach of settlement agreement and for intentional interference with contractual
`
`relations.
`
`II.
`
`PROCEDURAL CONSIDERATIONS
`
`In ¶¶ 16 and higher of Petitioner’s Consolidated Petition for Cancellation
`
`(“Petition”), Petitioner alleges as bases for cancellation of the Marks: genericness
`
`of the Marks (Count I), fraud in Registrant’s claiming the benefit of “Lanham Act
`
`2(f)” (Count II), and non-use of the Marks (Count III).
`
`Petitioner’s bases for moving to dismiss the entire Complaint (DKT 42 in
`
`the Complaint) are identical to Counts I and II of the Petition, and presumably will
`
`be among Petitioner’s defenses in the ongoing Civil Action. A hearing on
`
`Registrant’s Motion for Preliminary Injunction against Petitioner and other
`
`defendants, and on Petitioner’s (and other defendants’) Motions to Dismiss, is
`
`currently scheduled for October 12, 2023, before Chief Judge Derrick K. Watson
`
`in U.S. District Court (District of Hawai‘i). Registrant will promptly file in the
`
`Proceeding a status update that relays the District Court’s decisions on those
`
`Motions.
`
`
`
`
`3
`
`
`
`Counts III and IV of the Complaint are state law matters outside the
`
`jurisdiction of the Board. “A civil action may involve other matters outside Board
`
`jurisdiction and may consider broader issues beyond the right to registration and,
`
`therefore, judicial economy is usually served by suspension. * * * Unless there are
`
`unusual circumstances, the Board will suspend proceedings in the case before it if
`
`the final determination of the other proceeding may have a bearing on the issues
`
`before the Board.” TBMP Rule 510.2(a)
`
`The District Court’s determinations of Petitioner’s assertions of genericness
`
`of the Marks and of Registrant’s representations under 15 USC § 1052(2)(f) have a
`
`bearing on the issues before the Board. Therefore, Registrant respectfully moves
`
`the Board to suspend the Proceeding pending the resolution of the Civil Action.
`
`
`
`DATED: Honolulu, Hawai‘i, September 27, 2023
`
` /
`
` George E. Darby /
`GEORGE E. DARBY
`Attorney for Respondent/Registrant
`SKYDIVING SCHOOL, INC.,
`dba SKY DIVE HAWAII
`
`
`
`
`4
`
`
`
`GOJUMP HAWAII LLC, a Hawai‘i
`limited liability company
`Petitioner
`
`vs.
`
`
`SKYDIVING SCHOOL, INC. dba
`SKYDIVE HAWAII, a Hawai‘i
`corporation,
`
`Respondent/Registrant
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Cancellation No. 92083281
`
`DEFENDANT/REGISTRANT’S
`MOTION TO SUSPEND FOR
`CIVIL ACTION; EXHIBIT A;
`CERTIFICATE OF SERVICE
`Mark: SKYDIVE HAWAII
`Reg. Nos.: 4182071 (word)
` 4194803 (word)
` 4246149 (design)
` 5627055 (design)
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Motion to
`
`Suspend for Civil Action, including Exhibit A, has been served on Michael Lane
`
`and Joshua J. Richman, counsel for Petitioner GoJump Hawaii LLC, on September
`
`27, 2023 (Hawai`i time) via email to:
`
`
`
`Michael T. Lane mlane@lewiskohn.com
`Joshua J. Richman jrichman@lewiskohn.com
`
`Lewis Kohn & Walker LLP
`17085 Via Del Campo
`San Diego, CA 92127
`
`Attorneys for Petitioner, GOJUMP HAWAII LLC
`
`
`
`
`
`5
`
`
`
`
`DATED: Honolulu, Hawai‘i, September 27, 2023
`
` /
`
` George E. Darby /
`GEORGE E. DARBY
`Attorney for Respondent/Registrant
`SKYDIVING SCHOOL, INC.,
`dba SKY DIVE HAWAII
`
`
`
`
`6
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 1 of 32 PageID.1
`
`ANDREWS & ZALEWSKI LLC
`JOHN D. ZALEWSKI 4718
`LISSA H. ANDREWS 3390
`1001 Bishop Street, Suite 1540
`Honolulu, Hawai‘i 96813
`Email: jdz@andrewszalewski.com
`Email: lha@andrewszalewski.com
`Phone: (808) 784-4660
`
`PETTIT LAW HAWAII LLLC
`TED N. PETTIT 4287
`1003 Bishop Street, Suite 2700
`Honolulu, Hawai‘i 96813
`Email: ted@pettitlawhawaii.com
`Phone: (808) 237-2477
`
`DARBY IP & LAW CORP.
`GEORGE E. DARBY 4214
`Post Office Box 893010
`Mililani, Hawai‘i 96789
`Email: ged@darbyip.com
`Phone: (808) 626-1300
`
`Attorneys for Plaintiff
`SKYDIVING SCHOOL, INC.,
`dba SKY DIVE HAWAII
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF HAWAI‘I
`
`
`
`
`
`
`
`
`
`
`
`
`SKYDIVING SCHOOL, INC. dba
`SKYDIVE HAWAII, a Hawai‘i
`corporation,
`
`Plaintiff,
`
`vs.
`
`SKY-MED, INC. dba PACIFIC
`SKYDIVING, a Hawai‘i corporation,
`GOJUMP AMERICA, LLC, a Nevada
`
`{00094362:1}
`
`
`
`Civil No.
`
`COMPLAINT FOR TRADEMARK
`INFRINGEMENT, INJUNCTIVE
`RELIEF, AND MONETARY
`DAMAGES
`
`
`
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 2 of 32 PageID.2
`
`limited liability company; GOJUMP
`HAWAII LLC, a Hawai‘i limited
`liability company; MICHAEL
`VETTER; and GUY BANAL,
`
`Defendants.
`
`
`COMPLAINT FOR TRADEMARK INFRINGEMENT,
`INJUNCTIVE RELIEF, AND MONETARY DAMAGES
`
`COMES NOW, Plaintiff SKYDIVING SCHOOL, INC. dba SKYDIVE
`
`HAWAII (“SKYDIVE HAWAII”), by and through its attorneys, ANDREWS &
`
`ZALEWSKI LLC, PETTIT LAW HAWAII LLLC, and DARBY IP & LAW
`
`CORP., and hereby files this COMPLAINT FOR TRADEMARK
`
`INFRINGEMENT, INJUNCTIVE RELIEF, AND MONETARY DAMAGES, and
`
`alleges and avers as follows:
`
`JURISDICTION AND VENUE
`
`This Court has original jurisdiction over this action under 15 USC §
`
`1.
`
`1121 and 28 USC § 1338(a). This action arises under the Lanham Act, 15 USC §§
`
`1051, et seq., including but not limited to 15 USC § 1116 (Injunctive Relief), 15
`
`USC § 1117 (Recovery for Violation of Rights), and 15 USC § 1125(a) (Civil
`
`Action), which pertain to SKYDIVE HAWAII’s trademark infringement claim
`
`herein.
`
`{00094362:1}
`
`
`2
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 3 of 32 PageID.3
`
`2.
`
`This Court has original jurisdiction under 28 USC § 1338(b) because
`
`the SKYDIVE HAWAII’s unfair competition claim herein is being brought
`
`together with its substantial and related claim under federal trademark law.
`
`3.
`
`This Court has supplemental jurisdiction under 28 USC § 1367
`
`because SKYDIVE HAWAII’s state law claim herein is so related to its federal
`
`trademark claim for which there is original jurisdiction that they form part of the
`
`same case or controversy under Article III of the United States Constitution.
`
`4.
`
`Venue is vested in the United States District Court for the District of
`
`Hawai‘i under 28 USC §1391(b) because a substantial part of the events or
`
`omissions giving rise to the claims herein occurred in this District.
`
`THE PARTIES
`
`5.
`
`SKYDIVE HAWAII is a locally owned and managed skydiving
`
`company organized as a Hawai‘i business corporation which is engaged in the
`
`business of skydiving instruction, skydiving services, air transportation for
`
`skydiving purposes, and related training and sales of merchandise. SKYDIVE
`
`HAWAII is based at Dillingham Airfield (a.k.a., Kawaihapai Airfield), located at
`
`68-760 Farrington Highway, Waialua, Hawaii.
`
`6.
`
`Defendant SKY-MED, INC. dba PACIFIC SKYDIVING (“PACIFIC
`
`SKYDIVING” or “PS”) is a Hawai‘i corporation that is in direct competition with
`
`{00094362:1}
`
`
`3
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 4 of 32 PageID.4
`
`SKYDIVE HAWAII, and is engaged in the same business at the same location as
`
`SKYDIVE HAWAII at Dillingham Airfield.
`
`7.
`
`Defendant GOJUMP AMERICA, LLC (“GOJUMP AMERICA”) is a
`
`Nevada limited liability company and is engaged in the same business as
`
`SKYDIVE HAWAII.
`
`8.
`
`Defendant GOJUMP HAWAII LLC (“GOJUMP HAWAII”)
`
`GOJUMP HAWAII is a Hawai‘i limited liability company, is engaged in the same
`
`business and at the same location as SKYDIVE HAWAII at Dillingham Airfield,
`
`and uses the same facilities of PACIFIC SKYDIVING. GOJUMP HAWAII has
`
`been in direct competition with SKYDIVE HAWAII since GOJUMP HAWAII
`
`was organized in September 2022.
`
`9.
`
`Upon information and belief, GOJUMP HAWAII is owned,
`
`controlled, and/or commonly managed by GOJUMP AMERICA (collectively,
`
`“GOJUMP”).
`
`10. Defendant MICHAEL VETTER (“VETTER”) is the Manager of
`
`GOJUMP HAWAII and GOJUMP AMERICA. Upon information and belief,
`
`VETTER is a resident of Nevada.
`
`11. Defendant GUY BANAL (“BANAL”) is the President of PACIFIC
`
`SKYDIVING and has been its President since its formation. BANAL is a resident
`
`of Hawai‘i.
`
`{00094362:1}
`
`
`4
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 5 of 32 PageID.5
`
`12. GOJUMP HAWAII and GOJUMP AMERICA are collectively
`
`referred to herein as “GOJUMP.” GOJUMP and PACIFIC SKYDIVING are
`
`collectively referred to herein as “GOJUMP/PS.” GOJUMP/PS is a de facto
`
`partnership of GOJUMP and PACIFIC SKYDIVING that shares facilities and
`
`operations at Dillingham Airfield. GOJUMP, PACIFIC SKYDIVING, VETTER,
`
`and BANAL are collectively referred to herein as “DEFENDANTS.”
`
`13. The services of SKYDIVE HAWAII and GOJUMP/PS are identical,
`
`their location, primary business (tandem skydiving services), and marketing
`
`channels (websites and social media) are identical, and they use the same or similar
`
`marketing, operational methods, business model, staffing model, instructional
`
`procedures, and types of aircraft.
`
`SKYDIVE HAWAII’S REGISTERED TRADEMARKS
`
`
`
`14. From 2012 to present, SKYDIVE HAWAII has owned six trademarks
`
`registered for goods and services in the Principal Register of the United States
`
`Patent and Trademark Office (“PTO”) (collectively, “SKYDIVE HAWAII
`
`TRADEMARKS”).
`
`15. SKYDIVE HAWAII owns trademarks for the text phrase “SKYDIVE
`
`HAWAII,” registered on July 31, 2012 (Classes 012 and 041) and August 21, 2012
`
`(Class 035), which the PTO has recognized remain in force and became
`
`{00094362:1}
`
`
`5
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 6 of 32 PageID.6
`
`incontestable on March 31, 2018 and April 14, 2018, and which were renewed for
`
`10 years on December 14, 2021 and February 18, 2022.
`
`16. At no time has the PTO required SKYDIVE HAWAII to provide
`
`proof of a secondary meaning for its marks.
`
`17. At all relevant times, SKYDIVE HAWAII has actively and
`
`continuously used the SKYDIVE HAWAII TRADEMARKS, which remain in
`
`force currently, which has enabled SKYDIVE HAWAII to build its business and
`
`presence in the Hawaii skydiving market on a national and international basis..
`
`18. The SKYDIVE HAWAII TRADEMARKS are valid, protectable, and
`
`have acquired inherent distinctiveness, have attained incontestable status under 15
`
`U.S.C. § 1065, and should be conclusively presumed to have acquired secondary
`
`meaning.
`
`19.
`
`In 2001, SKYDIVE HAWAII registered its skydivehawaii.com website,
`
`which SKYDIVE HAWAII has used exclusively and continuously at all times,
`
`including presently.
`
`20. GOJUMP AMERICA holds only one registered trademark, for a design
`
`mark that has the literal element, “GoJump.”1
`
`21. Upon information and belief, DEFENDANTS hold no other registered
`
`marks.
`
`
`1 See https://tmsearch.uspto.gov/bin/showfield?f=doc&state=4804:x2txun.2.1.
`
`{00094362:1}
`
`
`6
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 7 of 32 PageID.7
`
`PACIFIC SKYDIVING’S PREVIOUS INFRINGMENT
`OF SKYDIVE HAWAII’S TRADEMARKS
`
`In 2004, PACIFIC SKYDIVING began using the websites
`
`22.
`
`skydivehawaiireservations.com and skydivereservatonshawaii.com which marketed
`
`“Skydiving in Hawaii” and led customers to believe that PACIFIC SKYDIVING was
`
`SKYDIVE HAWAII.
`
`23. After SKYDIVE HAWAII issued demand letters, PACIFIC
`
`SKYDIVING ceased its deceptive marketing for approximately 3 years beginning in
`
`2006.
`
`24.
`
`In 2009, PACIFIC SKYDIVING resumed using the websites
`
`skydivehawaiireservations.com and skydivereservatonshawaii.com and resumed
`
`masquerading as SKYDIVE HAWAII.
`
`25. Following another SKYDIVE HAWAII demand letter, PACIFIC
`
`SKYDIVING ceased its deceptive marketing for approximately two years beginning
`
`in 2009.
`
`26.
`
`In 2011, PACIFIC SKYDIVING resumed marketing itself as SKYDIVE
`
`HAWAII which led to litigation between the parties and others in this District.
`
`PREVIOUS TRADEMARK INFRINGEMENT
`ACTION IN THIS DISTRICT
`
`In 2013 and 2014, SKYDIVE HAWAII, PACIFIC SKYDIVING,
`
`27.
`
`BANAL, and others who were then-affiliated with PACIFIC SKYDIVING were
`
`{00094362:1}
`
`
`7
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 8 of 32 PageID.8
`
`parties in a trademark infringement action in this District entitled, Sky-Med., Inc.
`
`dba Pacific Skydiving Hawaii vs. Skydiving School, Inc. dba Skydive Hawaii,
`
`Civil No. CV-13-00193 DKW/BMK (“2013 ACTION”).
`
`28. The 2013 ACTION was resolved in 2014 pursuant to a settlement
`
`agreement and a stipulation for dismissal filed by the parties.
`
`THE SETTLEMENT AGREEMENT
`THAT DEFENDANTS HAVE BREACHED
`
`29. On May 23, 2014, SKYDIVE HAWAII, PACIFIC SKYDIVING,
`
`BANAL, and others then-affiliated with PACIFIC SKYDIVING entered into a
`
`Settlement Agreement to resolve the 2013 ACTION (“SETTLEMENT
`
`AGREEMENT”).
`
`30. PACIFIC SKYDIVING and BANAL owe contractual obligations to
`
`SKYDIVE HAWAII under the SETTLEMENT AGREEMENT which they have
`
`materially breached.
`
`31. By partnering with PACIFIC SKYDIVING, GOJUMP and VETTER
`
`owe contractual obligations to SKYDIVE HAWAII under the SETTLEMENT
`
`AGREEMENT which they have materially breached.
`
`32. SKYDIVE HAWAII is not presently able to publicly identify the
`
`terms of the SETTLEMENT AGREEMENT which DEFENDANTS have breached
`
`due to a confidentiality provision which limits disclosure thereof.
`
`{00094362:1}
`
`
`8
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 9 of 32 PageID.9
`
`33. The SETTLEMENT AGREEMENT provides, among other things,
`
`that this Court retains jurisdiction to enforce the SETTLEMENT AGREEMENT.
`
`34. Although GOJUMP and VETTER were not originally parties to the
`
`SETTLEMENT AGREEMENT, they owe contractual obligations to SKYDIVE
`
`HAWAII because of their de facto partnership with PACIFIC SKYDIVING and
`
`BANAL, and such obligations to SKYDIVE HAWAII will continue under
`
`successor liability principles in the event GOJUMP and VETTER survive
`
`cessation of PACIFIC SKYDIVING’s and BANAL’s involvement in the skydiving
`
`business at Dillingham Airfield.
`
`35. Upon information and belief, DEFENDANTS have been jointly
`
`operating an unregistered partnership or joint venture or common enterprise since
`
`2022 under which GOJUMP: (i) has acquired all or a part of the assets and/or
`
`ownership of PACIFIC SKYDIVING; (ii) has expressly or impliedly assumed the
`
`liabilities of PACIFIC SKYDIVING; (iii) has closely coordinated activities to
`
`enable GOJUMP to expand and/or continue the business and operations of
`
`PACIFIC SKYDIVING; (iv) is the process of obtaining or has obtained permits for
`
`the same spaces at Dillingham Airfield held by PACIFIC SKYDIVING; (v) has
`
`used PACIFIC SKYDIVING staff, reservation system, and aircraft to serve
`
`skydiving customers; (vi) has agreed to assume PACIFIC SKYDIVING’s
`
`obligation to perform facilities management at Dillingham Airfield; and (vii) is
`
`{00094362:1}
`
`
`9
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 10 of 32 PageID.10
`
`operating at the same business location, 68-760 Farrington Highway, Waialua, HI
`
`96791, as PACIFIC SKYDIVING.
`
`GOJUMP’S EXPANSION TO THE HAWAII MARKET
`AND ONGOING ACTIONABLE CONDUCT
`
`36. On September 19, 2022, GOJUMP HAWAII registered and filed
`
`Articles of Organization for Limited Liability Company with the Department of
`
`Commerce and Consumer Affairs of the State of Hawaii, which identified
`
`VETTER as its Manager.
`
`37. Starting in late 2022, visitors to the landing page of GOJUMP’s
`
`website who clicked “Book Hawaii” were sent to a booking calendar at
`
`https://book.dzmanage.com/hawaii/, which instructed visitors to call (702) 900-
`
`4000 to book skydiving services in Hawai‘i. Visitors who called that number to
`
`book reservations or make inquiries were informed that they should call PACIFIC
`
`SKYDIVING or visit pacificskydivinghonolulu.com to make a reservation.
`
`38. Upon information and belief, on or about November 1, 2022,
`
`GOJUMP and PACIFIC SKYDIVING executed an asset purchase agreement
`
`(“Purchase Agreement”).
`
`39. Upon information and belief, the Purchase Agreement requires: (i)
`
`PACIFIC SKYDIVING to terminate its revocable permits for the Permit Spaces at
`
`Dillingham Airfield (“Permits”) as of the closing date to allow GOJUMP to obtain
`
`the Permits for the same Permitted Spaces as of the same closing date; and (ii) to
`
`{00094362:1}
`
`
`10
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 11 of 32 PageID.11
`
`allow GOJUMP to continue the operations of PACIFIC SKYDIVING under its
`
`own name and the name of PACIFIC SKYDIVING using the same Permitted
`
`Spaces.
`
`40. On or about November 1, 2022, VETTER emailed the State of Hawaii
`
`Department of Transportation Airports Division (“DOTA”) to request use by
`
`GOJUMP HAWAII of Dillingham Airfield to conduct commercial skydiving
`
`operations.
`
`41. DOTA records indicate that GOJUMP has acquired PACIFIC
`
`SKYDIVING and its assets, facilities, equipment, office, and parking lot, and
`
`reveal coordination between GOJUMP and PACIFIC SKYDIVING to obtain
`
`permits from DOTA for the same spaces at Dillingham Airfield being used by
`
`PACIFIC SKYDIVING.
`
`42. On November 7, 2022, VETTER submitted to DOTA “Space
`
`Applications” and other materials to request use by GOJUMP HAWAII of tie-
`
`downs for specified aircraft at Dillingham Airfield for “Skydive” purposes.
`
`43. On November 15, 2022, Ben Devine of PACIFIC SKYDIVING
`
`emailed the DOTA regarding “Pacific Skydiving and GoJump Hawaii Permitting,”
`
`represented that BANAL is “seeking to retire and has found a capable operator to
`
`continue the business,” identified VETTER of GOJUMP AMERICA as the “new
`
`operator,” stated that they are “seeking to complete the permit process for the same
`
`{00094362:1}
`
`
`11
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 12 of 32 PageID.12
`
`spaces that Pacific Skydiving currently occupies” and that “Pacific would
`
`coordinate to have their permits end on the day GoJump’s begin,” and sought a
`
`meeting between DOTA, BANAL, and VETTER “to review the permit
`
`application.”
`
`44.
`
`In a letter to DOTA dated December 13, 2022, VETTER on behalf of
`
`GOJUMP stated that GOJUMP HAWAII is “submitting this letter simultaneously
`
`with its revocable permit applications for certain T-Hangers, Tie Downs, Parking,
`
`and Spaces at Kawaihapai Airfield” (“Permit Spaces”), that GOJUMP HAWAII
`
`and PACIFIC SKYDIVING, “the current holder of revocable permits for the
`
`Permit Spaces,” had “executed an asset purchase agreement dated November 1,
`
`2022,” with PACIFIC SKYDIVING “intending to terminate its revocable permits
`
`for the Permit Spaces as of closing and GoJump intending to apply for and obtain
`
`revocable permits for the Permit Spaces as of closing in order to operate its
`
`skydiving business thereafter.”
`
`45. GOJUMP’s December 13, 2022 letter to DOTA acknowledged that
`
`they understood that “there cannot be a transfer of any revocable permits currently
`
`held by [PACIFIC SKYDIVING] for the Permit Spaces” and that “all revocable
`
`permits (‘RP’) are issued by the state at its prerogative.”
`
`46. Despite having so acknowledged the prohibition on the transfer of
`
`existing permits, GOJUMP’s December 13, 2022 letter to DOTA sought to
`
`{00094362:1}
`
`
`12
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 13 of 32 PageID.13
`
`circumvent the prohibition, in which they stated, “GoJump simultaneously submits
`
`its RP applications with the [DOTA], seeking to obtain revocable permits for the
`
`Permit Spaces in connection with the termination of such permits currently held by
`
`[PACIFIC SKYDIVING].”
`
`47. GOJUMP has represented to the DOTA that they will assume
`
`PACIFIC SKYDIVING’S responsibility to update the onsite septic system.
`
`48. On December 15, 2022, VETTER emailed DOTA in which he
`
`referred to an attached “permit application with Excel showing the permits
`
`considering and a letter to confirm that we will take over all responsibilities from
`
`[PACIFIC SKYDIVING] at [the] day of our new permits becoming active while
`
`[PACIFIC SKYDIVING’s] permits will be terminated.” In essence, VETTER and
`
`GOJUMP sought to be the overnight successor of PACIFIC SKYDIVING’s
`
`permits, operations, rights, and obligations.
`
`49. PACIFIC SKYDIVING’s operations are ongoing and its current
`
`website enables consumers to book skydiving reservations that use GOJUMP’s
`
`aircraft.
`
`DEFENDANTS’ RECENT AND ONGOING
`INFRINGEMENT OF SKYDIVE HAWAII’S TRADEMARKS
`
`50. SKYDIVE HAWAII brings the present action in part to enforce the
`
`SETTLEMENT AGREEMENT to address Defendants’ post-settlement unlawful
`
`{00094362:1}
`
`
`13
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 14 of 32 PageID.14
`
`infringement of the SKYDIVE HAWAII TRADEMARKS, and for the additional
`
`reasons stated herein.
`
`51.
`
`In late 2022 and continuing presently, VETTER and GOJUMP have
`
`promoted “Skydiving in Hawaii” on GOJUMP’s website, https://gojump-
`
`america.com/hawaii/.
`
`
`
`52. The landing page for GOJUMP’s website features the GOJUMP
`
`HAWAII mark and the phrase in prominent text, “Oceanview Skydiving in
`
`Hawaii,” is the largest text on the page.
`
`53. The landing page for PACIFIC SKYDIVING’s website includes the
`
`phrase, “SKYDIVING OVER HAWAII.”
`
`54. Concurrent with the appearance of “Skydiving in Hawaii” content on
`
`GOJUMP’s website, GOJUMP/PS began to jointly market skydiving services at
`
`Dillingham Airfield.
`
`55. DEFENDANTS’ joint promotion, marketing, and delivery of
`
`skydiving services has infringed on the SKYDIVE HAWAII TRADEMARKS and
`
`led to actual consumer confusion which has damaged SKYDIVE HAWAII.
`
`56. DEFENDANTS’ infringement of SKYDIVE HAWAII
`
`TRADEMARKS is recent, ongoing, and intentional.
`
`57. GOJUMP/PS have been using the SKYDIVE HAWAII
`
`TRADEMARKS in association with the unregistered “GoJump Hawaii” mark and
`
`{00094362:1}
`
`
`14
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 15 of 32 PageID.15
`
`“Skydiving in Hawaii” mark, both verbatim and through similar variants,
`
`emphasized through font size, color, and boldness, use of capital letters, repetitive
`
`text, isolation from other text, and/or word proximity, i.e., “Oceanview Skydiving
`
`in Hawaii,” “SKYDIVING OVER HAWAII,” “Skydive Hawaii with GoJump,”
`
`“Skydive over Hawaii - GoJump,” “GoJump Hawaii Skydive – Hawaii Skydive,”
`
`“Skydiving in Hawaii,” “Hawaii Skydiving,” and “Pacific Skydiving Center
`
`Hawaii.”
`
`58. A Google search in December 2022 using the words “go jump” led to
`
`a GOJUMP ad featuring SKYDIVE HAWAII TRADEMARKS, in large blue font,
`
`“Skydive Hawaii with GoJump.” GOJUMP created and published the search
`
`results, using the “Skydive Hawaii” mark as their own.
`
`59. A Google search in June 2023 using the words “skydive over hawaii”
`
`led to a “Sponsored” listing purchased by GOJUMP featuring in large blue font,
`
`“GoJump Hawaii Skydive – Hawaii Skydive.”
`
`60. A search in June 2023 using the words “skydive hawaii” on the Trip
`
`Advisor website led to a GOJUMP ad featuring in large font, “Skydiving in
`
`Hawaii.”
`
`61. A Google search in July 2023 using the words “groupon skydive
`
`hawaii” led to an ad featuring in large blue font, “Hawaii Skydiving – Deals &
`
`Coupons in Hawaii.” Upon clicking that link, a listing appears in emboldened
`
`{00094362:1}
`
`
`15
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 16 of 32 PageID.16
`
`font, “Skydiving in Hawaii” with a “View Deal” button. Upon clicking the
`
`button, a GOJUMP ad appears in emboldened font, “Oceanview Skydiving with
`
`GoJump Hawaii.”
`
`62. The Google Maps App page for Skydive Hawaii includes a
`
`“Sponsored” link to GOJUMP HAWAII. The link leads to the GOJUMP
`
`HAWAII landing page, thereby misleading customers to believe that GOJUMP
`
`and SKYDIVE HAWAII are affiliated.
`
`RECENT, NUMEROUS, AND ONGOING
`CONFUSION CAUSED BY DEFENDANTS
`
`63. Prior to November 28, 2022, SKYDIVE HAWAII learned that
`
`VETTER and GOJUMP were engaging in improper and infringing use of
`
`SKYDIVE HAWAII’s trademark and trade name “Skydive Hawaii” in internet
`
`advertising by VETTER and GOJUMP HAWAII.
`
`64. On November 28, 2022, SKYDIVE HAWAII made written demand
`
`on VETTER and GOJUMP concerning their “improper and infringing use of the
`
`trademark and trade name ‘Skydive Hawaii’” in advertising, informed them of the
`
`SKYDIVE HAWAII TRADEMARKS and SKYDIVE HAWAII’s Hawaii-
`
`registered trade name and exclusive rights to the “Skydive Hawaii” mark,
`
`identified and supplied evidence of GOJUMP HAWAII’s improper use of the
`
`“Skydive Hawaii” trade name and trademark in VETTER’S and the GOJUMP
`
`ENTITIES’ internet advertising, and DEMANDED that GOJUMP HAWAII “(1)
`
`{00094362:1}
`
`
`16
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 17 of 32 PageID.17
`
`cease and desist any further use of the Skydive Hawaii mark; (2) provide any
`
`accounting of all profits made from the sale of all services or products using the
`
`Skydive Hawaii mark; and (3) surrender all profits” to SKYDIVE HAWAII no
`
`later than December 16, 2022.
`
`65. On December 12, 2022, VETTER and GOJUMP conceded in writing
`
`that they were using the phrases “Skydive Hawaii with GoJump” and “Skydiving in
`
`Hawaii with GoJump” in marketing their skydiving operations at Dillingham
`
`Airfield, but denied that their conduct infringed on the SKYDIVE HAWAII
`
`TRADEMARKS.
`
`66. Despite SKYDIVE HAWAII’s demand, VETTER and GOJUMP have
`
`failed, neglected, and refused to cease and desist in their improper and infringing
`
`use of the SKYDIVE HAWAII TRADEMARKS and SKYDIVE HAWAII’s
`
`exclusive rights to the “Skydive Hawaii” mark.
`
`67. Despite SKYDIVE HAWAII’s demand, VETTER and GOJUMP have
`
`failed, neglected, and refused to provide an accounting of profits realized from
`
`their improper and infringing use of the SKYDIVE HAWAII TRADEMARKS and
`
`SKYDIVE HAWAII’s exclusive rights to the “Skydive Hawaii” mark, or surrender
`
`all such profits to SKYDIVE HAWAII.
`
`{00094362:1}
`
`
`17
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 18 of 32 PageID.18
`
`68. Online searches and social media sites are the most important means
`
`used by the customers to identify and make reservations with skydiving businesses,
`
`including SKYDIVE HAWAII.
`
`69. Through use of the same online marketing channels (internet searches
`
`and social media websites) used by SKYDIVE HAWAII, GOJUMP/PS has
`
`continued to infringe on SKYDIVE HAWAII’s trademarks, cause customer
`
`confusion, and impair and harm SKYDIVE HAWAII’s business.
`
`70. On numerous occasions, customers of GOJUMP/PS have posted
`
`about skydiving in Hawaii on SKYDIVE HAWAII’s Instagram, Facebook, and
`
`Yelp pages, and on YouTube. SKYDIVE HAWAII’s business records reveal these
`
`customers were customers of GOJUMP/PS.
`
`71. From late 2022 to present, numerous incidents of confusion have
`
`arisen, often multiple times each day, such as customers of GOJUMP/PS
`
`presenting their reservations for check-in at SKYDIVE HAWAII’s offices.
`
`72. Confusion caused by GOJUMP/PS has caused its customers to use
`
`Skydive Hawaii’s space and facilities. GOJUMP/PS’s mistaken customers
`
`interfere with and harm SKYDIVE HAWAII’s operations, reputation, and brand,
`
`and undermine safety.
`
`73. Often, entire groups of customers of GOJUMP/PS arrive at
`
`SKYDIVE HAWAII and attempt to check-in, which requires customers to sign
`
`{00094362:1}
`
`
`18
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 19 of 32 PageID.19
`
`liability waivers that are cross-checked against a reservations list. SKYDIVE
`
`HAWAII staff have to redirect the groups to GOJUMP/PS.
`
`74. Over the past several months to present, up to 25 cars per day
`
`mistakenly park in SKYDIVE HAWAII’s lot. Often, the occupants exit their
`
`vehicles and then either realize their mistake and turn away or are redirected after
`
`attempting to check-in at SKYDIVE HAWAII.
`
`75. On December 16, 2022 a person who had skydived at Dillingham
`
`Airfield posted about his experience on SKYDIVE HAWAII’s Facebook page and
`
`recommended SKYDIVE HAWAII, although there is no record of this person
`
`having ever been a customer of SKYDIVE HAWAII.
`
`76.
`
` A Google search in June 2023 using the words “skydive hawaii” led
`
`to a “Sponsored” listing purchased by GOJUMP featuring in large blue font,
`
`“Skydive over Hawaii - GoJump.”
`
`77. On January 11, 2023, Ben Devine of PACIFIC SKYDIVING stated to
`
`the DOTA that BANAL of PACIFIC SKYDIVING “hopes to keep T-hanger 401-
`
`105 and parking permit 404-105 until he sells his aircraft N989BW. If you could
`
`put GoJump as 1st on the waitlist for those spaces so that once [BANAL] sells his
`
`aircraft and vacates, GoJump can take them over. Mr. Banal intends to vacate all
`
`his other RPs and PPs once GoJumps [sic] paperwork is processed.”
`
`{00094362:1}
`
`
`19
`
`
`
`Case 1:23-cv-00292 Document 1 Filed 07/13/23 Page 20 of 32 PageID.20
`
`78. On January 21, 2023, VETTER submitted Space Applications to
`
`DOTA for the use of tie-downs and hangers at Dillingham Airfield to conduct a
`
`“Commercial Skydiving Operation.”
`
`79. On Fe
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
