Case 2:20-cv-02686-NJB-MBN Document 1 Filed 10/01/20 Page 1 of 12
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`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF LOUISIANA
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`
`
`ALIGN TECHNOLOGIES, INC.
`
`Plaintiff
`
`v.
`
`O.C. TANNER COMPANY, INC.,
`
`Defendant
`
`
`CASE NO.:
`
`JUDGE:
`
`MAGISTRATE JUDGE:
`
`SECTION:
`
`
`
`
`
`Plaintiff Align Technologies, Inc. (“Plaintiff”) hereby brings this complaint for damages
`
`and injunctive relief against Defendant O.C. Tanner Company, Inc. (“Defendant”), and
`
`respectfully avers the following:
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`INTRODUCTION
`
` This is an action for federal service mark infringement, unfair competition, and
`
`1.
`
`false designation of origin under the Trademark Act of 1946, as amended [The Lanham Act, 15
`
`U.S.C. § 1051 et seq.], as well as common law infringement and deceptive trade practices under
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`Louisiana law, arising from the use, by Defendant, of the name and trademark ALIGN.
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`2.
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`Plaintiff specializes in providing company goal tracking and communication
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`software under its ALIGN trademark.
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`3.
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`As a result of its innovation and marketing efforts over the past several years,
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`Plaintiff has positioned itself as a market leader providing its software services to a national and
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`international clientele.
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`4.
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`Upon information and belief, Defendant is a global company based in Utah that has
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`long focused on developing strategic employee recognition and reward solutions.
`
`
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF LOUISIANA
`
`
`
`ALIGN TECHNOLOGIES, INC.
`
`Plaintiff
`
`v.
`
`O.C. TANNER COMPANY, INC.,
`
`Defendant
`
`
`CASE NO.:
`
`JUDGE:
`
`MAGISTRATE JUDGE:
`
`SECTION:
`
`
`
`
`
`Plaintiff Align Technologies, Inc. (“Plaintiff”) hereby brings this complaint for damages
`
`and injunctive relief against Defendant O.C. Tanner Company, Inc. (“Defendant”), and
`
`respectfully avers the following:
`
`INTRODUCTION
`
` This is an action for federal service mark infringement, unfair competition, and
`
`1.
`
`false designation of origin under the Trademark Act of 1946, as amended [The Lanham Act, 15
`
`U.S.C. § 1051 et seq.], as well as common law infringement and deceptive trade practices under
`
`Louisiana law, arising from the use, by Defendant, of the name and trademark ALIGN.
`
`2.
`
`Plaintiff specializes in providing company goal tracking and communication
`
`software under its ALIGN trademark.
`
`3.
`
`As a result of its innovation and marketing efforts over the past several years,
`
`Plaintiff has positioned itself as a market leader providing its software services to a national and
`
`international clientele.
`
`4.
`
`Upon information and belief, Defendant is a global company based in Utah that has
`
`long focused on developing strategic employee recognition and reward solutions.
`
`
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`Case 2:20-cv-02686-NJB-MBN Document 1 Filed 10/01/20 Page 2 of 12
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`5.
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`In 2019, in an effort to seemingly trade off of the goodwill established by Plaintiff,
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`Defendant unveiled its new software under the name “Align,” and promoted the software as a
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`service tool focused on employee management and designed to aid managers into becoming
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`leaders through communication and goal tracking.
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`6.
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`The goodwill and reputation for quality that Plaintiff has worked so hard to cultivate
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`has been threatened by Defendant’s actions. Defendant has used and continues to use its identical
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`ALIGN word mark to sell competing goods and services to the same market served by Plaintiff.
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`Unless Defendant is enjoined from using the ALIGN mark, such use will continue to cause
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`consumer confusion and will cause irreparable harm to Plaintiff.
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`7.
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`This action seeks injunctive relief, damages and other appropriate relief arising
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`from Defendant’s ongoing and willful acts of trademark infringement and unfair competition.
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`JURISDICTION AND VENUE
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`8.
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`This is an action for trademark infringement and unfair competition in violation of
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`Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)).
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`9.
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`This Court has subject matter jurisdiction over this action under 28 U.S.C. §§ 1331
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`and 1338 because it involves substantial claims arising under the federal Lanham Act.
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`10.
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`This Court has supplemental jurisdiction over Plaintiff’s state law claims under 28
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`U.S.C. § 1367.
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`11.
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`This Court has personal jurisdiction over Defendant. Defendant’s acts of
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`infringement of Plaintiff’s ALIGN mark were committed in the Eastern District of Louisiana,
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`within the jurisdiction of this Court. Defendant is a sophisticated company that markets and sells
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`its products throughout the United States, including Louisiana. Prior to unveiling its product,
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`Defendant retained the Utah based law firm of Kirkton McConkie to apply for a federal trademark
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`Page 2 of 12
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`Case 2:20-cv-02686-NJB-MBN Document 1 Filed 10/01/20 Page 3 of 12
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`registration of the ALIGN name at the United States Patent and Trademark Office (“USPTO”).
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`According to its website, Kirkton McConkie is “one of the largest Intellectual Property law firms
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`in the Intermountain West” region of the United States. Considering Defendant’s size and
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`sophistication, as well as the law firm it retained to pursue its trademark rights in the “Align” name,
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`Defendant must have known of Plaintiff’s successful business located in this district and the
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`notoriety its ALIGN trademark had achieved both locally and throughout the United States.
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`Despite its prior knowledge, Defendant intentionally marketed and sold its infringing goods and
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`services to customers in this district through its active website as well as other localized outlets,
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`including, its subsidiary sales company registered to do business in Louisiana, O.C. Tanner
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`Recognition Company. Defendant’s contacts and conduct in Louisiana, and in this district, are
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`tantamount to an approximate physical presence in this district such that it is reasonable and
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`foreseeable that Defendant would be hailed into this Court.
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`12.
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`Venue is proper in this district pursuant to 28 U.S.C. § 1391 as this Court has
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`personal jurisdiction over the Defendant, and upon information and belief, Defendant has and
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`continues to transact business in this district and a substantial part of the events giving rise to the
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`Plaintiff’s claims occurred and are continuing to occur in this district.
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`THE PARTIES
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`Plaintiff is a corporation, organized under the laws of the State of Delaware, with
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`13.
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`its principal place of business in New Orleans, Louisiana.
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`14.
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`Defendant is a corporation, organized under the laws of the State of Utah, with its
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`principle place of business located in Salt Lake City, Utah, and its registered agent located at 1108
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`E South Union Avenue, Midvale Utah 84047.
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`Page 3 of 12
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`Case 2:20-cv-02686-NJB-MBN Document 1 Filed 10/01/20 Page 4 of 12
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`STATEMENT OF FACTS
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`Plaintiff, and its predecessor, have been consistently using the ALIGN word mark
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`15.
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`since 2012 in connection with its services, including its company goal tracking and communication
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`software.
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`16.
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`Over the past several years, Plaintiff has successfully marketed and sold its software
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`service to thousands of companies, both nationally and internationally.
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`17.
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`Plaintiff has consistently maintained an active website that contains information
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`about each of its services. Indeed, a Google search using search terms “Align business,” “Align
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`software,” “Align employee,” “Align manager,” or “Align meeting” all return Plaintiff’s website
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`as a top match.
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`18.
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`Plaintiff has invested substantial time, money, and effort, in the development,
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`enhancement, advertisement, promotion, and marketing of its goods and services under the ALIGN
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`mark. As a result of these efforts, the goodwill built up under Plaintiff’s ALIGN mark, and the
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`consistent, high quality of goods and services rendered thereunder, makes the ALIGN mark a
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`valuable asset to Plaintiff. Members of the public, and relevant consumers, have grown to
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`recognize the ALIGN mark as being associated with Plaintiff’s high caliber services in the field of
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`company goal tracking and communication software.
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`19.
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`At no time has Plaintiff licensed or otherwise authorized Defendant to use the
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`ALIGN mark, or any confusingly similar mark, in connection with goods or services relating to
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`the software services offered by the Plaintiff.
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`20.
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`On January 11, 2019, without permission and without Plaintiff’s knowledge,
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`Defendant sought to register the ALIGN mark with the United States Patent and Trademark Office
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`(“USPTO”) in class 042 for services in the field of “providing temporary use of on-line non-
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`Page 4 of 12
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`Case 2:20-cv-02686-NJB-MBN Document 1 Filed 10/01/20 Page 5 of 12
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`downloadable software for use in the facilitation of productive conversations, namely, software
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`for facilitating productive conversations between managers and employees and featuring templates
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`for creating conversation guides, meeting agendas and recognition history reports.” The
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`application states that Defendant first used the mark on February 1, 2019, more than five years
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`after Plaintiff began using the ALIGN mark in commerce for similar services.
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`21.
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`Defendant retained the Utah based law firm of Kirkton McConkie to file its
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`trademark application for the ALIGN mark. According to its website, Kirkton McConkie is the
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`largest law firm in Utah and the largest intellectual property law firm in the Intermountain West
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`region of the United States.
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`22.
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`Considering Plaintiff’s online presence and commercial success in combination
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`with Defendant’s size and sophistication, and the reputable law firm representing its trademark
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`interest, Defendant must have been aware of Plaintiff’s ALIGN mark and the highly regarded
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`services sold under its mark.
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`23.
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`Defendant has and continues to advertise and promote its competing software
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`services
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`under
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`the
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`ALIGN
`
`trademark
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`on
`
`its
`
`website
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`https://www.octanner.com/products/leadership.html.
`
`24.
`
`The “Align” designation used by Defendant for its employee management and
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`communication software is identical in appearance, pronunciation, meaning, and commercial
`
`impression, to Plaintiff’s ALIGN trademark.
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`25.
`
`The goods and services provided by Plaintiff and Defendant under their respective
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`names and marks, as aforesaid, also are nearly identical; are marketed to the same class of business
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`consumers; and, are advertised and promoted through the same channels of trade.
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`Page 5 of 12
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`Case 2:20-cv-02686-NJB-MBN Document 1 Filed 10/01/20 Page 6 of 12
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`26.
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`Upon information and belief, Defendant deliberately chose the ALIGN mark in
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`order to trade on the goodwill, reputation and fame established by Plaintiff in its ALIGN mark and
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`to unjustly enrich itself at the expense of Plaintiff. Upon information and belief, Defendant has
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`willfully and intentionally sought to imply an association with Plaintiff in adopting its mark.
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`27.
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`Defendant’s adoption and continued use of the ALIGN name constitutes trademark
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`infringement, unfair competition, and false designations of origin, under federal and state law.
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`28.
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`Defendant’s conduct has caused, and if allowed to continue, will continue to cause
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`irreparable damage to Plaintiff’s business, reputation, and goodwill for which Plaintiff has no
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`adequate remedy at law.
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`FIRST CLAIM FOR RELIEF
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`(Trademark Infringement Under 15 U.S.C. § 1125(a))
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`29.
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`Plaintiff repeats and reasserts the allegations set forth in Paragraphs 1 to 28 above,
`
`as if fully set forth herein.
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`30.
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`This Count, arising under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), is
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`for infringement of Plaintiff’s trademark.
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`31.
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`Plaintiff has and continues to offer company goal tracking and communication
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`software services in commerce and throughout the United States under its ALIGN trademark since
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`2012.
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`32.
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`Plaintiff’s goods and services are sold and advertised on its active company
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`website.
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`33.
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`Plaintiff’s ALIGN trademark covering services in the field of company goal
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`tracking and communication software, and related fields, is a valid and protectable trademark.
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`Page 6 of 12
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`Case 2:20-cv-02686-NJB-MBN Document 1 Filed 10/01/20 Page 7 of 12
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`34.
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`Long after Plaintiff established its trademark rights in the ALIGN mark, Defendant
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`adopted and has been using the same mark for its employee management and communication
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`software and related services.
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`35.
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`Defendant’s use of such an identical mark for the same or similar services is likely
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`to cause confusion, mistake, and/or deception as to the source of Defendant’s services, in that the
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`public, and others, are likely to believe that Defendant’s services are provided by, sponsored by,
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`approved by, licensed by, affiliated with, or in some other way legitimately connected to Plaintiff,
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`all to Plaintiff’s irreparable harm.
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`36.
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`Defendant, by its above-enumerated acts, has violated and infringed Plaintiff’s
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`trademark rights in the ALIGN mark.
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`37.
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`As a direct result of Defendant’s infringing activities, and threatened continued
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`infringement, Plaintiff has suffered, and will continue to suffer, damages in an amount presently
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`unknown and to be ascertained at trial.
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`38.
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`Said acts of infringement, and threatened continued infringement, will cause further
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`irreparable injury to Plaintiff and the public unless enjoined by this Court, and Plaintiff has no
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`adequate remedy at law.
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`SECOND CLAIM FOR RELIEF
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`(Unfair Competition and False Designation of Origin Under 15 U.S.C. § 1125(a))
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`39.
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`Plaintiff repeats and reasserts the allegations set forth in Paragraphs 1 to 38 as if set
`
`forth fully herein.
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`40.
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`This Count, arising under Section 43(a) of the Lanham Act [15 U.S.C. § 1125(a)],
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`is for unfair competition and false designation of origin.
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`Page 7 of 12
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`Case 2:20-cv-02686-NJB-MBN Document 1 Filed 10/01/20 Page 8 of 12
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`41.
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`The ALIGN mark has become uniquely associated with Plaintiff and the services
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`Plaintiff offers to the public.
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`42.
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`Defendant’s provision, sale, offering for sale, and advertising, of services which are
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`highly related to those of Plaintiff, in connection with a trademark that is identical to Plaintiff’s
`
`trademark, comprise unfair competition under 15 U.S.C. § 1125(a), through the passing off of
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`Plaintiff’s mark for that of Defendant’s, in a manner that is false, misleading, and misrepresents
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`the nature, characteristics, and qualities of Plaintiff’s services.
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`43.
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`Defendant’s provision, sale, offering for sale, and advertising, of services which are
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`highly-related to those of Plaintiff, in connection with a designation identical to Plaintiff’s mark,
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`comprise false designations of origin as to the services provided by Defendant, and constitute false
`
`and misleading representations, in violation of 15 U.S.C. § 1125(a).
`
`44.
`
`As a direct and proximate result of Defendant’s acts of unfair competition and false
`
`designation of origin, Plaintiff has suffered and will continue to suffer damages in an amount
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`presently unknown, and to be determined at trial.
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`45.
`
`Said acts of unfair competition and false designations of origin will cause further
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`irreparable injury to Plaintiff unless enjoined by this Court, and Plaintiff has no adequate remedy
`
`at law.
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`THIRD CLAIM FOR RELIEF
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`(Louisiana Common Law Trademark Infringement
`Pursuant to La. Rev. Stat. §51:222)
`
`Plaintiff repeats and reasserts the allegations set forth in Paragraphs 1 to 45 as if set
`
`46.
`
`forth fully herein.
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`47.
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`The acts of Defendant constitute trademark infringement under the law of the State
`
`of Louisiana, La. Rev. Stat. §51:222.
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`Page 8 of 12
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`Case 2:20-cv-02686-NJB-MBN Document 1 Filed 10/01/20 Page 9 of 12
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`48.
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`49.
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`Plaintiff’s ALIGN mark is a valid common law mark.
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`Defendant’s unauthorized use of the ALIGN mark is likely to cause confusion,
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`mistake, or deceive the consuming public as to the source of Defendant’s services.
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`50.
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`Upon information and belief, Defendant deliberately appropriated the ALIGN mark
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`with the intent to trade off the goodwill and reputation established by Plaintiff.
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`51.
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`By reason of Defendant’s conduct, Plaintiff has and will continue to suffer
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`irreparable harm, and unless Defendant is enjoined from continuing its wrongful acts, the damage
`
`to Plaintiff will continue.
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`52.
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`In addition to an injunction, Plaintiff is entitled to damages in an amount to be
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`determined at trial. Plaintiff is unable to ascertain, at present, the full extent of the monetary
`
`damages it has suffered.
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`FOURTH CLAIM FOR RELIEF
`
`(Louisiana Unfair and Deceptive Trade Practice Act
`Pursuant to La. Rev. Stat. §51:1405 , et seq.)
`
`Plaintiff repeats and reasserts the allegations set forth in Paragraphs 1 to 52 as if set
`
`53.
`
`forth fully herein.
`
`54.
`
`Plaintiff alleges violation of the Louisiana Unfair Trade Practices Act, Louisiana
`
`Revised Statute §51:1405 and is seeking damages arising under §51:1405 and §51:1409.
`
`55.
`
`Defendant has engaged in unfair and deceptive trade practices as evidence from the
`
`above-described actions which are in violation of La Rev.Stat §51:1405.
`
`56.
`
`Upon information and belief, Defendant has intentionally and deliberately persisted
`
`in its unfair and deceptive acts and practices and unfair methods of competition with Plaintiff.
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`
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`Page 9 of 12
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`Case 2:20-cv-02686-NJB-MBN Document 1 Filed 10/01/20 Page 10 of 12
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`57.
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`Plaintiff is entitled to profits, damages, and costs as provided by law including
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`treble damages and attorney’s fees in an amount to be determined at trial. Plaintiff is unable to
`
`ascertain, at present, the full extent of the monetary damages it has suffered.
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`WHEREFORE, in consideration of the foregoing, Plaintiff respectfully prays for the
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`following relief:
`
`1.
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`A judgment that Plaintiff’s ALIGN trademark has been and continues to be
`
`infringed by Defendant in violation of 15 U.S.C. § 1125(a).
`
`2.
`
`A judgment that Defendant’s use of the ALIGN trademark constitutes federal unfair
`
`competition and false designation of origin under § 1125(a).
`
`3.
`
`A judgment that Defendant’s use of the ALIGN trademark violates Louisiana
`
`Unfair Trade Practices Act and constitutes common law trademark infringement and unfair
`
`competition under Louisiana law.
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`4.
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`A permanent injunction enjoining and restraining Defendant, its officers,
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`shareholders, directors, agents, servants, employees, attorneys, representatives, successors,
`
`assigns, parents, subsidiaries, related companies, and all other persons, firms, or corporations
`
`acting in concert with Defendant or in privity therewith, from the following:
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`a. Using the ALIGN mark or any other name or mark confusingly similar to the
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`ALIGN mark, or any reproduction, counterfeit, copy, or colorable limitation
`
`thereof, alone, or in connection with other words, names, styles, titles, logos,
`
`artwork, or designs, as service marks, trademarks, trade names, assumed
`
`business names, or otherwise, in connection with Defendant’s services or
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`goods relating to company goal tracking and communication software, or the
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`marketing advertising, promotion, or identification of same;
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`Page 10 of 12
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`Case 2:20-cv-02686-NJB-MBN Document 1 Filed 10/01/20 Page 11 of 12
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`b. Representing to be the owners of, entitled to, or otherwise authorized to use
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`the ALIGN mark, or any mark confusingly similar thereto, in connection with
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`any service or product relating to company goal tracking and communication
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`software.
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`c. Applying said ALIGN name or mark, or any such reproduction, counterfeit,
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`copy, or colorable limitation thereof, to any document or thing, including to
`
`any business card, label, sign, Web site, domain name, or advertisement, in
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`any medium, used in connection with Defendant’s services or goods relating
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`to company goal tracking and communication software;
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`d. Performing any actions, or using any words, names, styles, titles, logos, or
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`marks, which are likely to cause confusion, or mistake, or to deceive, or to
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`otherwise mislead the trade or the public into believing that Defendant and
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`Plaintiff are in some way connected, affiliated, or associated with one another;
`
`that Plaintiff sponsors, supervises, or controls Defendant; or that Defendant’s
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`services originate with Plaintiff, or are offered with the approval, consent,
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`authorization or under the supervision of Plaintiff; and
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`e. Otherwise competing unfairly with Plaintiff in any manner;
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`5.
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`A Judgment ordering Defendant to pay for and pay over to Plaintiff, any and all
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`gains, profits, and advantages derived by Defendant’s use of the ALIGN mark.
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`6.
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`A Judgment awarding Plaintiff all compensatory damages for injuries sustained in
`
`consequence of the acts complained of herein, and that such damages be trebled, under 15 U.S.C.
`
`§ 1117(a)(3), as a result of the willful acts described herein.
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`
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`Page 11 of 12
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`Case 2:20-cv-02686-NJB-MBN Document 1 Filed 10/01/20 Page 12 of 12
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`7.
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`A Judgment declaring this case an “exceptional case” under 15 U.S.C. § 1117(a)(3),
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`and awarding Plaintiff all of Plaintiff’s litigations expenses, including reasonable attorneys’ fees
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`and the costs of this action;
`
`8.
`
`A Judgment ordering Defendant to deliver up for destruction all signage, goods,
`
`packaging, containers, stationary, advertisements, brochures, promotional materials, and all other
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`materials of any kind bearing the ALIGN mark, or any other name, mark, or design, confusingly
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`similar to the ALIGN mark, together with all plates, molds, matrices and materials used for making
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`or reproducing same; and,
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`9.
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`All other and further relief as the Court deems just and equitable.
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`DEMAND FOR JURY TRIAL
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`Pursuant. Fed. R. Civ. P. 38, Plaintiff demands a trial by jury of all issues triable of right
`
`
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`to a jury and raised in the pleadings in this action.
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`Dated: October 1, 2020
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`Respectfully submitted,
`
`
`
`
`/s/ Stephen Kepper
`Stephen M. Kepper, LA Bar No. 34618
`Gregory D. Latham, LA Bar No. 25955
`INTELLECTUAL PROPERTY CONSULTING, LLC
`334 Carondelet Street, Suite B
`New Orleans, LA 70130
`Telephone: (504) 322-7166
`Facsimile: (504) 322-7184
`skepper@iplawconsulting.com
`glatham@iplawconsulting.com
`
`Attorneys for Align Technologies, Inc.
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`
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`Page 12 of 12
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