Case 2:12-cv-00292-LKK—DAD Document 1
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`Filed 02/03/12 Page 1 of 11
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`James J. Ficenec (SBN - 152172)
`William E. Manning (SBN - 120856)
`SELLAR HAZARD MANNING FICENEC & LUCIA
`A Professional Law Corporation
`1800 Sutter Street, Suite 460
`Concord, CA 94520
`Telephone:
`(925) 938-1430
`Facsimile:
`(925) 256-7508
`Email:
`jficenee@sellarlaw.com
`
`Attorneys for Plaintiff:
`EXPONENT. INC. a Delaware corporation
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF CALIFORNIA
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`EXPONENT, INC., a Delaware corporation,
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`Case No.:
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`924204doc
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`defendant Exponent Engineering Associates, Inc. ("EEAI").
`2.
`By using a trade name incorporates plaintiff‘s famous trade name, EEAI has caused and
`is likely to continue to cause confusion that Exponent is the source or sponsor of EEAI's services, or
`that there is an association between Exponent and EEAI. In addition, EEAI‘s acts are causing, and/or
`are likely to cause, dilution ofthe EXPONENT® trademark. Consequently, Exponent seeks injunctiVe
`relief and damages under the federal Lanham Act (15 U.S.C. §§ 1051, et seq.), the California Business
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`COMPLAINT FOR DAMAGES AND
`INJUNCTIVE RELIEF
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`Plaintiff,
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`V.
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`EXPONENT ENGINEERING ASSOCIATES,
`INC., a California corporation,
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`Defendant.
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`
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`Plaintiff Exponent, Inc, a Delaware corporation ("Exponent") alleges as follows:
`1.
`This action arises from unauthorized use of the trade name Exponent Engineering by
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`and Professions Code, and the common law doctrines of passing off and unfair competition.
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`-1-
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`
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`

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`Case 2:12-cv—OO292—LKK-DAD Document 1
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`Filed 02/03/12 Page 2 of 11
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`JURISDICTION
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`3.
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`This Court has personal jurisdiction over EEAI because, on information and belief, it
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`conducts or has conducted business, as well as advertised and promoted its goods and services, in the
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`State of California and within this judicial district, and the effects of those acts have been felt in this
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`district.
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`4.
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`This Court has jurisdiction over this matter pursuant to 15 U.S.C. § 112] and 28 U.S.C.
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`§§ 1331, 1332, 1338 and 1367. Exponent‘s claims are, in part, based on violations of the Lanham Act,
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`as amended, 15 U.S.C. §§ 105], et seq. The Court has jurisdiction over the state law claims pursuant to
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`92420rdoc
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`principal place of business in Fairfield, California, and offers engineering services in California under
`the trade name EXPONENT ENGINEERING. EEAI promotes its services on the World Wide Web at
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`28 U.S.C. §§ 1332,1338(b), and 1367.
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`II.
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`THE PARTIES
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`5.
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`Plaintiff Exponent is a Delaware corporation having its principal place of business in
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`Menlo Park, California. Exponent offers a wide variety of engineering and scientific services
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`worldwide and throughout the United States, including in the Eastern District of California.
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`6.
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`Upon information and belief, Defendant EEAI is a California corporation with its
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`the address http://www.EXPENGR.com. Upon information and belief, EEAI targets consumers over
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`its website, including consumers in California, and has consumers in California.
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`III. EXPONENT'S BUSINESS AND MARKS
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`7.
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`Exponent is an internationally known company that provides a wide variety of
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`Engineering and scientific services. Exponent's customers include individuals, businesses, and the
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`United States government.
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`8.
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`Since 1998, Exponent has used EXPONENT as a trade name, trademark and service
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`mark to identify its engineering and scientific services.
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`9.
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`Exponent has 19 offices in the United States and five international offices. Exponent
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`has undertaken many high profile engineering assignments including assisting a microwave oven
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`manufacturer identify causes of potentially dangerous fires, identifying the causes of a crane failure
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`-2.
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`Filed 02/03/12 Page 3 of 11
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`during the construction of the Milwaukee Brewers‘ baseball stadium, diagnosing failures of the Las
`Vegas Monorail, and the development ofrobots to help U.S. Army soldiers identify IEDs in Iraq and
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`Afghanistan.
`10.
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`Exponent uses EXPONENT as its "house mark" on or in connection with virtually
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`every service it provides.
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`11.
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`Exponent is the owner of a trademark registration for the mark EXPONENT. Exponent
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`is the owner of U.S. Trademark Registration No. 2402381 issued on November 7, 2000 for the mark
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`EXPONENT for use in connection with engineering and scientific research and consultation and other
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`services. This registration, duly and legally issued by the United States Patent and Trademark Office, is
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`valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065.
`12.
`Through its extensive use, Exponent also owns common law trademark rights in the
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`EXPONENT mark for all of the services and activities identified herein.
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`92420.doc
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`13.
`Exponent maintains an Internet site on the World Wide Web at the address
`http://www.exponent.com. Exponent has used its trade name and trademark as an Internet address in
`order to make it easy for clients to locate Exponent's web site, and to identify that the web site is
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`owned by Exponent. Exponent's web site features the EXPONENT mark.
`14.
`As a consequence ofthe extensive promotion and use of the EXPONENT marks,
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`Exponent has developed enormous recognition for its services under the EXPONENT mark and has
`acquired and enjoys an immensely valuable reputation and tremendous goodwill under the mark. The
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`EXPONENT mark is a "famous" mark for purposes of 15 U.S.C. § 1125(c)(l).
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`IV.
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`EEAI'S BUSINESS
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`15.
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`Exponent is informed and believes that EBAI offers for sale engineering and consulting
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`services in the State of California.
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`16.
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`The EXPONENT ENGINEERING trade name and the EXPONENT and
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`ENGINEERING trademarks wholly incorporate and emphasize the EXPONENT trademark, adding
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`only generic and non-distinctive terms. "EXPONENT" is the only distinctive element in defendant's
`name and marks, and is identical in sight and sound to the famous EXPONENT trademark.
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`Filed 02/03/12 Page 4 of 11
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`17.
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`Despite Exponent’s attempts to resolve the dispute amicably, EEAI has persisted in
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`this Complaint.
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`FIRST CAUSE OF ACTION
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`TRADEMARK INFRINGEMENT
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`(15 U.S.C. § 1114)
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`using the EXPONENT trade name and EXPONENT trademark, leaving Exponent no choice but to file
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`92420.doc
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`18.
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`Exponent realleges and incorporates herein by reference the matters alleged in
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`Paragraphs 1 through 17 of this Complaint.
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`19.
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`Upon information and belief, EEAI was aware of Exponent's business and its
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`EXPONENT mark prior to the adoption and use of the BXPONENT ENGINEERING trade name, and
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`EXP ONENT trademark.
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`20.
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`EEAI either had actual notice and knowledge, or had constructive notice, of Exponent‘s
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`ownership and registrations of the EXPONENT mark pursuant to 15 U.S.C. § 1072 prior to EEAI’S
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`adoption and use of the EEAI PUBLISHING trade name, and EXPONENT name and EXPONENT
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`trademarks.
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`21.
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`EEAI is using the EXPONENT ENGINEERING trade name, and EXPONENT
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`trademark, in connection with the sale of its services without Exponent’s consent, and with knowledge
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`of Exponent's rights.
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`22.
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`EEAI'S unauthorized use of the EXPONENT ENGINEERING trade name, and
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`EXPONENT trademark falsely indicates to consumers that EEAI‘s products and services are in some
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`manner connected with, sponsored by, affiliated with, or related to Exponent, or the services of
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`Exponent.
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`23.
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`EEAI's unauthorized use of the EXPONBNT ENGINEERING trade name, and
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`EXPONENT trademark, is also likely to cause consumers to be confused as to the source, nature and
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`quality of the services EEAI is promoting or selling.
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`24.
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`EEAI's unauthorized use of the EXPONENT ENGINEERING trade name, and
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`EXPONENT trademark in connection with the sale of its products and services allows, and will
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`COMPLAINT FOR DAMAGES AND INJU'NCTIVE RELIEF
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`Filed 02/03/12 Page 5 of 11
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`continue to allow, EEAI to receive the benefit of the goodwill established at great labor and expense by
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`Exponent's reputation and goodwill.
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`25.
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`EEAI's unauthorized use of the EXPONEN’I‘ ENGINEERING trade name, and
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`EXPONENT trademark in connection with the sale of its goods and services deprives Exponent of the
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`ability to control the consumer perception of the quality of the services provided under the
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`EXPONBNT mark, and places Exponent's valuable reputation and goodwill in the hands of EEAI, over
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`which Exponent has no control.
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`26.
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`EEAI has caused confusion and is likely to cause further confusion, or to cause mistake,
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`or to deceive consumers or potential consumers in violation of 15 U.S.C. § 1114.
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`27.
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`Exponent has been, is now, and will be irreparany injured and damaged by EEAI's
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`trademark infringement, and unless enjoined by the Court, Exponent will suffer further harm to its
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`name, reputation and goodwill. This harm constitutes an injury for which Exponent has no adequate
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`remedy at law.
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`Exponent and to gain acceptance of EEAI's services, not based on the merits ofthose services, but on
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`92420.doc
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`SECOND CAUSE OF ACTION
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`FALSE DESIGNATION OF ORIGIN
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`(15 U.S.C. § 1125(A))
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`28.
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`Exponent realleges and incorporates herein by reference the matters alleged in
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`Paragraphs 1 through 27 of this Complaint.
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`29.
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`EEAI's unauthorized use of the EXPONENT ENGINEERING trade name, and
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`EXPONENT trademark,-falsely suggests that its services are connected with, sponsored by, affiliated
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`with, or related to Exponent, and constitutes a false designation of origin in violation of 15 U.S.C. §
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`1 125(a).
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`30.
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`Exponent has been, is now, and will be irreparably injured and damaged by EEAI's
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`aforementioned acts, and unless enjoined by the Court, Exponent will suffer further harm to its name,
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`reputation and goodwill. This harm constitutes an injury for which Exponent has no adequate remedy
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`at law.
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`-5.
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`

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`Case 2:12-cv-00292-LKK-DAD Document 1
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`Filed 02/03/12 Page 6 of 11
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`THIRD CAUSE OF ACTION
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`FEDERAL TRADEMARK DILUTION
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`(15 U.S.C. § 1125(C))
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`31.
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`Exponent realleges and incorporates herein by reference the matters alleged in
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`paragraphs 1 through 30 of this Complaint.
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`32.
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`The EXPONENT mark is world-renowned. It is a famous mark that is widely
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`recognized by clients, businesses and industry, and that identifies the products and services of
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`Exponent in the minds of clients and potential clients.
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`33.
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`EEAI's unauthorized use of the EXPONENT ENGINEERING trade name, and
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`EXPONENT trademark, began after Exponent's mark had become famous.
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`34.
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`EEAI's unauthorized use of the EXPONENT ENGINEERING trade name, and
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`EXPONENT trademark has, and will continue to have, an adverse effect upon the value and distinctive
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`quality of the EXPONENT mark. EEAI's acts blur and Whittle away at the distinctiveness and identity-
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`evoking quality of the EXPONENT mark. EEAI's acts have diluted and are likely to continue diluting
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`the famous EXPONENT mark in violation of 15 U.S.C. § 1125(c).
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`35.
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`Exponent has been, is now, and will be irreparany injured and damaged by EEAI's
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`aforementioned acts, and unless enjoined by the Court, Exponent will suffer further harm to its name,
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`reputation and goodwill. This harm constitutes an injury for which Intel has no adequate remedy at
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`law.
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`92420.doc
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`FOURTH CAUSE OF ACTION
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`INJURY TO BUSINESS REPUTATION AND
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`DILUTION UNDER CALIFORNIA LAW
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`(CAL. BUS. & PROF. CODE §14247)
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`36.
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`Exponent realleges and incorporates herein by reference the matters alleged in
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`paragraphs 1 through 35 of this Complaint,
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`37.
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`EEAI's unauthorized uso of the EXPONENT ENGINEERING trade name, and
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`EXPONENT trademark, is likely to injure Exponent's business reputation, and has diluted, and/or is
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`Filed 02/03/12 Page 7 of 11
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`likely to dilute, the distinctive quality of the EXPONENT mark and trade name in violation of the
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`California Business and Professions Code § 14247.
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`38.
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`EEAI willfully intended to trade on Exponent's image and reputation and to 14 dilute
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`of its actions.
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`39.
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`EEAI's wrongful acts have caused and will continue to cause Exponent irreparable
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`harm. Exponent has no adequate remedy at law for EEAI's dilution.
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`40.
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`Exponent is therefore entitled to a judgment enjoining and restraining EEAl from
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`engaging in further acts of dilution pursuant to California Business and Professions Code § 14247.
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`the EXPONENT trademark, acted with reason to know, or was willfully blind as to the consequences
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`92420.doc
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`FIFTH CAUSE OF ACTION
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`INFRINGEMENT UNDER CALIFORNIA LAW
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`(CAL. BUS. & PROF. CODE §14245)
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`41.
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`Exponent realleges and incorporates herein by reference the matters alleged in
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`Paragraphs 1 through 40 of this Complaint.
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`42.
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`EEAI's unauthorized use of the EXPONENT ENGINEERING trade name, and
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`EXPONENT trademark, in connection with the sale, offering for sale, distribution or advertising of its
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`services is likely to cause confusion or mistake or to deceive as to the source or origin of its goods
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`and/or services in violation of California Business and Professions Code § 14245.
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`43.
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`Upon information and belief, EEAl's infringement has been with knowledge of
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`Exponent's rights.
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`44.
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`Exponent has been, is now, and will be irreparably injured and damaged by EEAI's
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`aforementioned acts, and unless enjoined by the Court, Exponent will suffer further harm to its name,
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`reputation and goodwill. This harm constitutes an injury for which Exponent has no adequate remedy
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`at law.
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`///
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`l//
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`Filed 02/03/12 Page 8 of 11
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`SIXTH CAUSE OF ACTION
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`COMMON LAW PASSING OFF
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`AND UNFAIR COMPETITION
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`45.
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`Exponent realleges and incorporates herein by reference the matters alleged in
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`paragraphs 1 through 44 of this Complaint.
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`46.
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`EEAI's unauthorized use of the EXPONENT ENGINEERING trade name, and
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`violation of the common law of California.
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`47.
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`EEAI‘s wrongful acts have caused and will continue to cause Exponent irreparable
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`harm. Exponent has no adequate remedy at law.
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`48.
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`Exponent is entitled to a judgment enjoining and restraining EEAI from engaging in
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`EXPONENT trademark, constitutes passing off and unfair competition of the EXPONENT mark in
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`92420.doc
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`further acts of infringement and unfair competition.
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`SEVENTH CAUSE OF ACTION
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`UNFAIR COMPETITION
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`(CAL. BUS & PROF. CODE § 17200)
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`49.
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`Exponent realleges and incorporates herein by reference the matters alleged in
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`Paragraphs 1 through 48 of this Complaint.
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`50.
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`EEAI's acts described above constitute unfair competition in violation of California
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`Business and Professional Code § 17200 et seq., as they are likely to deceive the public.
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`51.
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`EEAI's acts of unfair competition have caused and will continue to cause Exponent
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`irreparable harm. Exponent has no adequate remedy at law for EEAI's unfair competition.
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`52.
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`Exponent is'entitled to ajudgment enjoining and restraining EEAI from engaging in
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`further unfair competition.
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`//I
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`//l
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`Filed 02/03/12 Page 9 of 11
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`EIGHTH CAUSE OF ACTION
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`FEDERAL CYBERSQUATTING
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`(15 _U.S.C. § 1125(D))
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`53.
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`Exponent realleges and incorporates herein by reference the matters alleged in
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`paragraphs 1 through 52 of this Complaint.
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`54.
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`55.
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`EEAI registered the http://www.expengr.com domain name.
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`EEAI registered and/or used the http://www.expengr.com domain names with a bad-
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`faith intent to profit from Exponent's EXPONENT trademark.
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`56.
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`The http://www.expengr.com domain name is confusingly similar to Exponent's
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`EXPONENT trademark, and/or dilutive of Exponent’s EXPONENT trademark. Exponent's
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`EXPONENT trademark is both distinctive and famous.
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`57.
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`Exponent's EXPONENT trademark was both distinctive and famous at the time of
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`EEAI's registration of the http://www.expengr.com domain name.
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`58.
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`EEAI's registration and/or usc of the http://www.expengr.com domain name constitutes
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`cyber piracy in violation of the 15 U.S.C. § 1125(d).
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`92420.doc
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`similar to or a colorable imitation of this mark; (b) doing any act or thing calculated or likely to cause
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`PRAYER FOR RELIEF
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`WHEREFORB, Exponent prays for relief as follows:
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`1.
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`Entry of an order and judgment requiring that ERA] and its agents, servants, employees,
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`owners and representatives, and all other persons, firms or corporations in active concert or
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`participation with it, be enjoined and restrained from (a) using in any manner the EXPONENT mark,
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`or any name, mark or domain name that wholly incorporates the EXPONENT mark or is confusingly
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`confusion or mistake in the minds of members of the public, or prospective customers of Bxponcnt's
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`services, as to the source of the services offered for sale, or sold, or likely to deceive members of the
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`public, or prospective customers, into believing that there is some connection between EEAI and
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`Exponent; and (c) committing any acts which will tarnish, blur, or dilute, or likely to tarnish, blur, or
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`dilute the distinctive quality of the famous EXPONENT mark;
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`2.
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`A judgment ordering EEAI, pursuant to 15 U.S.C. § 11 16(a), to file with this Court and
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`serve upon Exponent within thirty (30) days after entry of the injunction, a report in writing under oath
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`setting forth in detail the manner and form in which BBAI has complied with the injunction, ceased all
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`sales of goods and services under the BXPONENT ENGINEERING trade name, and EXPONENT
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`trademark, as set forth above;
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`3.
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`A judgment ordering EEAI, pursuant to 15 U.S.C. § 1118, to deliver up for destruction,
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`or to show proof of said destruction or sufficient modification to eliminate the infringing matter, all
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`articles, displays, labels, signs, vehicle displays or signs, circulars, kits, packaging, letterhead, business
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`cards, promotional items, clothing, literature, sales aids, receptacles or other matter in the possession,
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`custody, or under the control of EEAI or its agents bearing the trademark EXPONENT in any manner,
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`or any mark that is confusingly similar to or a colorable imitation of this mark, including without
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`limitation the EXPONENT ENGINEEIRNG trade name, and EXPONENT trademark, both alone and
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`in combination with other words or terms;
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`4.
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`A judgment ordering EEAI to take all steps necessary to cancel or transfer to Exponent,
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`92420.doc
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`in Exponent's sole discretion, the http://www.expengr.com domain name, and to remove all references
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`‘
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`to EXPONENT from all of its other websites, if any;
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`5.
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`A judgment in the amount of Exponent's actual damages, EEAI's profits, Exponent's
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`reasonable attorneys' fees and costs of suit, and pre—judgment interest pursuant to 15 U.S.C. § 1 117;
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`6.
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`A judgment for enhanced damages under 15 U.S.C. § 1117 and punitive damages under
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`state law as appropriate; and
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`7.
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`A judgment granting Exponent such other and further relief as the Court deems just and
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`proper.
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`///
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`Ill
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`Case 2:12-cv-00292-LKK-DAD Document 1
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`Filed 02/03/12 Page 11 of 11
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`l DATED: February 1, 2012
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`2
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`SELLAR HAZARD MANNING
`FICENEC & LUCIA
`
`. FICENEC
`»
`Attorney For Plaintiff
`Exponent, Inc., a Delaware corporation
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`92420.doc
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`-11-
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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