Case 2:21-cv-01105 Document 1 Filed 02/08/21 Page 1 of 10 Page ID #:1
`
`
`Kamran Fattahi (SBN 150343)
`LAW OFFICES OF KAMRAN FATTAHI
`(a professional corporation)
`15303 Ventura Blvd., Suite 900
`Sherman Oaks, California 91403
`Tel: 818-205-0140
`Fax: 818-205-0145
`Email: Kamran@FattahiLaw.com
`
`Attorneys for Plaintiff,
`Netbus Inc.
`
`
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
` Civil Case No.
`
`
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT RE TRADEMARK
`INFRINGEMENT AND UNFAIR
`COMPETITION
`
`DEMAND FOR JURY TRIAL
`
`NETBUS INC.,
`a Delaware corporation,
`
`Plaintiff,
`
`vs.
`
`PHARMAVITE LLC,
`a California limited liability company,
`
`Defendant.
`
`
`
`For its Complaint, Plaintiff Netbus Inc. (“Netbus”) alleges against Defendant
`
`Pharmavite LLC (“Pharmavite”) as follows:
`Jurisdiction and Venue
`1.
`This civil action is for declaratory judgment that Netbus’ use of the
`trademark “NatureM.D.” (or its earlier version “NatureMD”) in marketing and
`selling its dietary and nutritional supplements is lawful and has not resulted in acts of
`trademark infringement, false designation of origin, misrepresentation, unfair
`competition, passing off, or dilution in violation of any rights asserted by Phamavite in
`its use of the mark NATURE MADE under federal trademark law, the Lanham Act, 15
`U.S.C. §1051 et seq., or under California statutory or common law.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Law Offices of
`Kamran Fattahi
`
`COMPLAINT FOR TRADEMARK INFRINGEMENT AND
`UNFAIR COMPETITION
`
`
`
`
`
`
`
`

`

`Case 2:21-cv-01105 Document 1 Filed 02/08/21 Page 2 of 10 Page ID #:2
`
`2.
`This Court has jurisdiction over the subject matter of this action pursuant to
`
`
`the Declaratory Judgment Act, 28 U.S.C. §§2201-2202; the Lanham Act, 15 U.S.C. §
`
`
`1121, 15 U.S.C. §1051 et seq.; and 28 U.S.C. §1338 (trademarks). The Court has
`
`
`supplemental jurisdiction over the state law claims under 28 U.S.C. § 1367.
`
`
`3.
`Venue is proper in this district pursuant to 28 U.S.C. §1391, including 28
`
`
`U.S.C. §§ 1391(b) and (c), in that on information and belief, Plaintiff and Defendant are
`
`
`subject to jurisdiction and are doing business in this district; Pharmavite is a California
`
`
`LLC with its principal place of business in this judicial district; Netbus is a Delaware
`
`
`corporation with its principal place of business in Newark, California, and also having
`
`
`employees in this judicial district; the parties have sold and sell goods under their
`respective marks to customers in this judicial district; and/or a substantial part of the
`events giving rise to the claims hereunder occurred in this judicial district; and/or a
`substantial part of the property that is the subject of the action is situated in this judicial
`district.
`
`The Parties
`4.
`Plaintiff Netbus Inc. (“Netbus”) is a corporation organized under the laws
`of the State of Delaware with a principal place of business at 39773 Seal Drive, Newark,
`California 94560. Netbus also has employees located in this judicial district and
`conducts business in this judicial district.
`5.
`On information and belief, Defendant Pharmavite LLC (“Pharmavite”) is a
`limited liability company organized under the laws of the State of California with a
`principal place of business at 8531 Fallbrook Avenue, West Hills, California 91304.
`GENERAL ALLEGATIONS
`Plaintiff’s Business and Its “NatureM.D.” Mark
`6.
`Netbus is engaged in the marketing, advertising, and selling of nutritional
`and dietary supplements in the United States.
`7.
`Netbus is the owner of the “NatureM.D.” trademark which is the subject of
`Application Serial No. 88/905,682 for registration of the “NatureM.D.” mark which was
`
`-2-
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Law Offices of
`Kamran Fattahi
`
`

`

`Case 2:21-cv-01105 Document 1 Filed 02/08/21 Page 3 of 10 Page ID #:3
`
`filed on May 7, 2020 with the United States Patent and Trademark Office (PTO) in
`
`
`connection with “dietary and nutritional supplements” in International Class 5
`
`
`(hereinafter “the ‘682 Application”). A true and correct copy of the PTO’s TESS
`
`
`summary record of the ‘682 Application is attached hereto as Exhibit 1.
`
`
`8.
`The ‘682 Application was originally filed on the basis of intent-to-use of
`
`
`the mark spelled as “NatureMD”. Following an examination by the PTO’s Examining
`
`
`Attorney, which included a trademark search of third-party marks, the PTO did not find
`
`
`a likelihood of confusion between the “NatureMD” mark and any other federally
`
`
`registered mark or any other mark that was the subject of any pending application, and
`
`
`the “NatureMD” mark was approved by the PTO for publication which took place on
`August 4, 2020. Netbus then filed a voluntary amendment with the PTO on August 5,
`2020 and revised the mark to “NatureM.D.” and the amendment was approved by the
`PTO on September 1, 2020 without requiring the application to be republished.
`9.
`Since the filing of the ‘682 Application, Netbus has begun marketing and
`selling in this judicial district dietary and nutritional supplements under the
`“NatureM.D.” mark (or the earlier variation “NatureMD”).
`10. The dietary and nutritional supplements being advertised and sold under
`the “NatureM.D.” mark are offered under the specific product names and brands of
`“GutConnect 365,” “Synbiotic 365,” “Enzyme 365,” “RevBiotics,” and “NutriProtein.”
`The packaging and advertising of these products also use and display a design logo of
`the letter “N” with a distinctive leaf design (hereinafter “the N & Leaf logo”).
`11. Netbus offers these products through direct online sales to customers via
`the website www.NatureMD.com. Attached as Exhibit 2 are true and correct copies of
`pages from this website and exemplars and photographs of the packaging and labels for
`these Netbus supplements.
`12. Netbus advertises its NatureM.D. supplements for the following purposes
`and benefits: “GutConnect 365” supports digestive health and gut integrity; “Synbiotic
`365” supports gut health and weight management; “Enzyme 365” supports digestive
`-3-
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Law Offices of
`Kamran Fattahi
`
`

`

`Case 2:21-cv-01105 Document 1 Filed 02/08/21 Page 4 of 10 Page ID #:4
`
`balance and nutrient absorption; “RevBiotics” supports energy, mood and digestive
`
`
`health; and “NutriProtein” supports muscle, metabolism and weight management.
`
`
`13. Dr. Vincent Pedre, M.D., a prominent and well-known medical doctor,
`
`
`leading gut-health expert, author, and TV personality, is the Chief Wellness Officer for
`
`
`NatureM.D. and is prominently featured as a spokesperson for the NatureM.D.
`
`
`supplements in the marketing and advertising thereof. [See Ex. 2]
`
`
`14. Netbus’ NatureM.D. mark and the associated marketing and information
`
`
`that are provided signify that the supplements include ingredients that are found in
`
`
`nature, are sourced from environmentally-friendly practices, are known to offer health
`
`
`benefits, and there is association and collaboration of a medical doctor with the
`creation, development, and marketing of such products.
`Pharmavite’s NATURE MADE Mark, Opposition Against the ‘682 Application,
`and Its Threats of Legal Action
`15. On information and belief, Pharmavite is engaged in manufacturing and
`selling of vitamins, minerals, and dietary supplements under the NATURE MADE mark
`in the United States, including in this judicial district.
`16. Attached hereto as Exhibit 3 are true and correct copies of photographs of
`the packaging (front and back) of representative samples of several Pharmavite products
`sold under the NATURE MADE mark.
`17. On July 1, 2020, Pharmavite’s attorney sent a cease and desist letter to
`Netbus’ attorney, claiming that Pharmavite owns U.S. trademark registrations for the
`mark NATURE MADE in connection with dietary and nutritional supplements. In that
`cease and desist letter, Pharmavite referred to Netbus’ ‘682 Application and alleged that
`“Netbus’ use of NATUREMD would infringe the industry-leading NATURE MADE
`brand, and will otherwise detrimentally affect our client’s long-standing prior rights in
`NATURE MADE on dietary supplement goods. Pharmavite is therefore compelled to
`take action against your use or proposed use of this mark.” Pharmavite claimed that
`NATUREMD would likely be pronounced by consumers as “Nature Med” which
`-4-
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Law Offices of
`Kamran Fattahi
`
`

`

`Case 2:21-cv-01105 Document 1 Filed 02/08/21 Page 5 of 10 Page ID #:5
`
`purportedly could easily be confused with “Nature Made” when calling for the goods
`
`
`orally.
`
`
`18. The Pharmavite attorney’s letter continued: “Netbus should also understand
`
`
`that any sale of NATUREMD is an infringement of our client’s mark, and supports a
`
`
`claim for damages based on the same. We therefore also require that any use of
`
`
`NATUREMD cease immediately.” Unless Netbus would accede to all of Pharmavite’s
`
`
`demands that Netbus withdraw its application and confirm that it would not use
`
`
`NATUREMD or any other fomatives of NATURE and MD, Pharmavite further
`
`
`threatened to move forward with “oppositions or other proceedings.”
`
`
`19. Netbus’ attorney responded with a letter dated July 13, 2020, disputing and
`denying Pharmavite’ allegations of trademark infringement. Netbus’ attorney reminded
`that Pharmavite does not have a monopoly on all marks that include the word
`NATURE, that the parties’ respective marks have different spellings, appearances,
`sounds, meanings, and commercial impressions. Netbus’s attorney also explained that it
`was far-fetched and there was no reasonable basis for Pharmavite to assert that
`consumers would somehow just throw in a letter “E” between the letters “MD” which is
`a well-known abbreviation for “Medical Doctor.” Netbus also pointed out that it had
`filed a voluntary amendment with the PTO in the ‘682 Application to change “MD” to
`“M.D.” such that the mark would be spelled as “NatureM.D.” which “amendment
`virtually makes it impossible for any reasonable consumer to pronounce or view
`Netbus’ mark as ‘NATUREMED’ as you [Pharmavite] have asserted.”
`20.
`In a second letter dated July 29, 2020, Pharmavite’s attorney disagreed
`with Netbus’ contentions and restated Pharmavite’s demands that Netbus “must
`promptly withdraw the NATUREMD application, and cease any use of that mark,
`NATUREM.D., or similar marks.”
`21. True and correct copies of the above-referenced cease and desist letters by
`Pharmavite and Netbus’ response letter are attached hereto as Exhibit 4.
`22. On September 3, 2020 Pharmavite filed and initiated an opposition
`-5-
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Law Offices of
`Kamran Fattahi
`
`

`

`Case 2:21-cv-01105 Document 1 Filed 02/08/21 Page 6 of 10 Page ID #:6
`
`proceeding under Opposition No. 91264583 before the Trademark Trial and Appeal
`
`
`Board (TTAB) against the ‘682 Application for the “NatureM.D.” mark based on
`
`
`allegations of likelihood of confusion and dilution of the distinctive quality of
`
`
`Pharmavite’s NATURE MADE marks. A true and correct copy of Pharmavite’s Notice
`
`
`of Opposition filed in the opposition proceeding is attached hereto as Exhibit 5.
`
`
`23.
`In the referenced opposition proceeding, Pharmavite has pleaded several of
`
`
`its federal registrations for its NATURE MADE marks, namely: U.S. Registration Nos.
`
`
`1,963,505 for NATURE MADE; Reg. 3,520,080 for NATURE MADE & Design; Reg.
`
`
`5,951,312 for NATURE MADE & Design; Reg. 3,861,557 for NATURE MADE
`
`
`IMMUNI-C; and Reg. 4,321,748 for NATURE MADE VITAMELTS.
`24. Netbus has filed an Answer to the Notice of Opposition, denying the salient
`allegations of Pharmavite’s trademark infringement and dilution claims. A true and
`correct copy of Netbus’ Answer to the Notice of opposition is attached as Exhibit 6.
`25. The TTAB opposition proceeding is currently pending, but the TTAB will
`likely suspend that proceeding pending the outcome of this civil action.
`26.
`In response to Pharmavite’s threats, Netbus has refused to cease any use of
`the “NatureM.D.” (or “NatureMD”) mark in connection with dietary and nutritional
`supplements. In fact, Netbus has begun to market and sell dietary and nutritional
`supplements under the “NatureM.D.” mark (or “NatureMD”) and continues to do so.
`27. No matter how well-known the NATURE MADE brand may or may not
`be, Phamavite does not have a monopoly on all marks that include the word NATURE,
`even if they may be used in connection with dietary and nutritional supplements.
`28. There are numerous third-parties who have registered and/or are using in
`the marketplace marks and brands that include the word NATURE (or variations) in
`connection with dietary and nutritional supplements or related goods/services.
`29.
`Inherent in the meaning and relationship of the word NATURE to dietary
`and nutritional supplements, the word NATURE is not strong in a trademark sense or
`significance. Furthermore, as a result of the widespread registration and use by third-
`-6-
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Law Offices of
`Kamran Fattahi
`
`

`

`Case 2:21-cv-01105 Document 1 Filed 02/08/21 Page 7 of 10 Page ID #:7
`
`parties of marks and brands that include the word NATURE (or variations) in
`
`
`connection with dietary and nutritional supplements or related goods/services,
`
`
`consumers and purchasers have come to be able to consider the entirety of the marks,
`
`
`including differences between other portions of the marks, and they also look to a
`
`
`variety of other factors surrounding the presentation, marketing and sales of such
`
`
`products to be able to distinguish and understand that they do not share the same source,
`
`
`origin, sponsorship, or affiliation.
`
`
`30. Netbus’ “NatureM.D.” mark (or “NatureMD” or similar variations) and
`
`
`Pharmavite’s NATURE MADE marks have different spellings, appearances, sounds,
`
`
`meanings, and commercial impressions, and there is no likelihood of confusion between
`the parties’ respective marks.
`31. The packaging, labeling, presentation, price points, marketing, sale and
`purchasing conditions of Netbus’ products as offered and sold in the marketplace under
`“NatureM.D.” (or “NatureMD” or similar variations) are very different and have
`different commercial impressions from those of Pharmavite’s NATURE MADE
`branded products, and there is no likelihood of confusion between the sources, origins,
`sponsorships, or affiliations of the parties’ respective products or their marks.
`32. Pharmavite’s allegations, charges, and threats of legal action and litigation,
`including its claims for damages, are frivolous, lack reasonable factual and/or legal
`bases, and have been made in bad faith to harm Netbus and its business.
`33. Pharmavite’s allegations, charges, and threats of legal action and litigation,
`including its threats and claims for damages, have created a reasonable apprehension in
`Netbus that Pharmavite will bring legal action against it, and there is an actual and
`justiciable controversy.
`///
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`-7-
`
`Law Offices of
`Kamran Fattahi
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`
`
`
`
`
`

`

`Case 2:21-cv-01105 Document 1 Filed 02/08/21 Page 8 of 10 Page ID #:8
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Law Offices of
`Kamran Fattahi
`
`FIRST CAUSE OF ACTION
`
`
`
`
`
`(Declaratory Judgment of No Trademark Infringement, No Unfair Competition, No
`
`False Designation of Origin, No Misrepresentation, No Passing Off, And No Dilution
`
`
`- The Lanham Act, 15 U.S.C. §1125(a), §1125( c); Calif. Bus. & Prof. Code §17200 et
`
`seq.; and California Common Law)
`
`
`
`
`34. Netbus incorporates by reference as part of this cause of action the
`
`
`allegations contained in paragraphs 1 through 33 above.
`
`
`35. Netbus’ “NatureM.D.” mark (or “NatureMD” mark or similar variation) is
`
`
`not likely to cause confusion as to source, sponsorship, or affiliation with Pharmavite’s
`
`
`NATURE MADE marks, or other purported registered or unregistered marks of
`Pharmavite.
`36. Netbus’ use of “NatureM.D.” mark (or “NatureMD” mark or similar
`variation) does not infringe Pharmavite’s purported trademark rights in the NATURE
`MADE marks, or other purported registered or unregistered marks of Pharmavite.
`37. Netbus’ use of “NatureM.D.” mark (or “NatureMD” mark or similar
`variation) does not constitute unfair competition, false designation of origin, false or
`misleading description, misrepresentation, or passing off in violation of Pharmavite’s
`purported trade identity rights under the Lanham Act or any state laws.
`38. Pharmavite’s NATURE MADE marks are not “famous” under and within
`the meaning of 15 U.S.C. §1125(c).
`39. Netbus’ use of “NatureM.D.” mark (or “NatureMD” mark or similar
`variation) does not dilute Pharmavite’s purported trademark rights in the NATURE
`MADE marks or any other mark under the Lanham Act or any state laws.
`40. Netbus is entitled to judgment declaring that it has not committed
`trademark infringement, false designation of origin, misrepresentation, unfair
`competition, passing off, and/or trademark dilution in violation of any federal (The
`Lanham Act, 15 U.S.C. § 1051 et seq.; 15 U.S.C. § 1125(a); 15 U.S.C. § 1125(c)), state,
`or common law trademark or trade identity rights asserted by Pharmavite.
`-8-
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`
`
`
`
`
`

`

`Case 2:21-cv-01105 Document 1 Filed 02/08/21 Page 9 of 10 Page ID #:9
`
`
`
`
`
`
`I.
`
`
`
`
`
`
`II.
`
`
`
`
`
`
`
`
`PRAYER FOR RELIEF
`WHEREFORE, Plaintiff Netbus Inc. prays for and requests:
`Judgment declaring that there is no likelihood of confusion between Netbus’
`“NatureM.D.” mark (or “NatureMD or other similar variation) and Pharmavite’s
`NATURE MADE marks (or other mark asserted by Pharmavite).
`Judgment declaring that Netbus has not committed trademark infringement, false
`designation of origin, misrepresentation, unfair competition, passing off,
`trademark dilution, and has not violated any rights asserted by Pharmavite in and
`to the NATURE MADE marks, or other purported trade identity rights asserted
`
`by Pharmavite.
`III. An order enjoining Pharmavite, its officers, directors, owners, employees,
`servants, affiliates, partners, and agents, and all those in privity with or in active
`concert or participation with it from violating or interfering with Netbus’ rights
`by way of:
`A. Accusing Netbus and/or any of its officers, owners, employees, or agents of
`infringing or otherwise violating any trademarks or other trade identity
`rights claimed to be held by Pharmavite.
`B. Communicating to others claims that Netbus and/or any of its officers,
`owners, employees, or agents have committed trademark infringement,
`false designation of origin, misrepresentation, unfair competition, passing
`off, trademark dilution, or otherwise violated any rights held by
`Pharmavite.
`C. Coercing, inducing or intimidating third parties not to do business with
`Netbus; communicating to others false or misleading information about
`Netbus; communicating to others not to purchase, sell, market or distribute
`Netbus’ products, including those that carry the “NatureM.D.” mark (or
`other similar variation).
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`
`
`
`-9-
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Law Offices of
`Kamran Fattahi
`
`

`

`Case 2:21-cv-01105 Document 1 Filed 02/08/21 Page 10 of 10 Page ID #:10
`
`D. An award to Netbus of its costs and attorneys’ fees in this action.
`E. All other relief as the Court deems just and proper.
`
`Respectfully submitted,
`/s/Kamran Fattahi
`Kamran Fattahi, Esq.
`LAW OFFICES OF KAMRAN FATTAHI
`Attorneys for Plaintiff, Netbus Inc.
`
`
`
`
`
`
`
`
`
`Dated: February 8, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`Plaintiff Netbus Inc. hereby demands a trial by jury of all matters so triable.
`
`Respectfully submitted,
`/s/Kamran Fattahi
`Kamran Fattahi, Esq.
`LAW OFFICES OF KAMRAN FATTAHI
`Attorneys for Plaintiff, Netbus Inc.
`
`Dated: February 8, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`DEMAND FOR JURY TRIAL
`
`
`
`
`
`Law Offices of
`Kamran Fattahi
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`
`
`
`-10-
`
`
`
`