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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MICHIGAN
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`Civil Action No. ________
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`Demand for Jury Trial
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`HOVERFLY TECHNOLOGIES, INC.,
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`Plaintiff,
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`vs.
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`HOVERFLY INC.,
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`Defendant.
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`PLAINTIFF HOVERFLY TECHNOLOGIES, INC.’S COMPLAINT
`AGAINST DEFENDANT HOVERFLY, INC.
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`Plaintiff Hoverfly Technologies, Inc. (“Hoverfly”), for its complaint hereby
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`alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action for trademark infringement and unfair competition,
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`based on Defendant Hoverfly Inc.’s infringement of Plaintiff’s Hoverfly
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`trademark.
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`2.
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`Plaintiff is the owner, and senior user, of the Hoverfly trademark,
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`having used the mark in interstate commerce continuously since 2010.
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.2 Filed 11/09/20 Page 2 of 17
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`THE PARTIES
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`3.
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`Hoverfly Technologies, Inc. (“Hoverfly”) is a Delaware corporation,
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`with its principal place of business at 12151 Research Parkway, Suite 100,
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`Orlando, Florida 32826.
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`4.
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`Upon information and belief, Defendant Hoverfly Inc. (“Defendant”)
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`is a Michigan corporation, with its principal place of business at 46866
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`Sunnybrook Lane, Novi, Michigan, 48374.
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`JURISDICTION AND VENUE
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`5.
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`This Court has subject matter jurisdiction under the Lanham Act, 15
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`U.S.C. § 1121, and under 28 U.S.C. §§ 1331 (federal question) and 1338
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`(trademarks).
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`6.
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`Hoverfly’s federal claims arise under the laws of the United States,
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`specifically 15 U.S.C. §§ 1051 et seq., the Lanham Act.
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`7.
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`Subject matter jurisdiction over Hoverfly’s remaining claims is proper
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`pursuant to 28 U.S.C. §§ 1338 and 1367 because Hoverfly has asserted a
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`substantial and related trademark claim, and because the remaining claims are so
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`related to the Lanham Act claim that they form part of the same case or
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`controversy.
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`8.
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`The Court has jurisdiction over Defendant because, on information
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`and belief, Defendant: (a) is a Michigan corporation with a principal place of
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.3 Filed 11/09/20 Page 3 of 17
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`business in this judicial district; (b) has marketed, distributed, offered for sale,
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`and/or sold trademark infringing goods and/or services to persons within
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`Michigan; (c) regularly transacts and conducts business within Michigan; and/or
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`(d) has otherwise made or established contacts with Michigan sufficient to permit
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`the exercise of personal jurisdiction.
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`9.
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`Venue is proper for this action pursuant to 28 U.S.C. § 1391 because
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`Defendant resides in this judicial district, and a substantial part of the events or
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`omissions giving rise to Hoverfly’s claims occurred in this judicial district.
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`FACTS COMMON TO ALL CLAIMS FOR RELIEF
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`Hoverfly’s Business
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`10.
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`Hoverfly is a U.S. manufacturer of aerial drones designed for multiple
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`applications, including for security and public safety, and related accessories
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`11.
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`An exemplar Hoverfly drone is shown below:
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.4 Filed 11/09/20 Page 4 of 17
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`12.
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`Hoverfly manufactures drones for use by government, first
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`responders, and industry leaders in defense, security, automotive, heavy industry,
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`sports, and the media.
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`13.
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`Hoverfly’s drones can be tethered or untethered, carry payload,
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`capture video, conduct surveillance, and more.
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`14.
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`Hoverfly has been in operation since 2010 and is the de facto industry
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`leader.
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`Hoverfly’s Rights in the Hoverfly Trademark
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`15.
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`Hoverfly has continuously used the Hoverfly mark in interstate
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`commerce as a source indicator since 2010.
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`16.
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`As a result of its use of the Hoverfly mark, Hoverfly applied for, and
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`was granted a federal trademark registration for the Hoverfly mark.
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.5 Filed 11/09/20 Page 5 of 17
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`17.
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`On March 20, 2012, the United States Patent & Trademark Office
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`(“USPTO”) issued Hoverfly a registration certificate, Registration No. 4114672,
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`for the Hoverfly mark.
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`18.
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`In this Complaint, Hoverfly’s trademark will be referred to as the
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`“HOVERFLY Trademark.”
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`19.
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`The HOVERFLY Trademark was first used in commerce on or about
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`September 1, 2010.
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`20.
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`In 2018, Hoverfly inadvertently did not file a “Section 8” declaration
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`of continued use with the USPTO.
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`21.
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`Nevertheless, Hoverfly continued, and continues, to use the
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`HOVERFLY Trademark in commerce.
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`22.
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`Since 2010, Hoverfly has continuously sold goods and/or services
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`throughout the United States.
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`23.
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`Since its 2010 inception, Hoverfly has made a significant investment
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`of time, money, and effort in advertising and promoting the HOVERFLY
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`Trademark.
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`24.
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`Hoverfly has maintained the website Hoverflytech.com since 2010
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`which has continually displayed the HOVERFLY Trademark.
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`25.
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`Hoverfly is the national senior user of the HOVERFLY Trademark.
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.6 Filed 11/09/20 Page 6 of 17
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`26.
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`By virtue of its longstanding, continuous use of the HOVERFLY
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`Trademark in interstate commerce, Hoverfly possesses protectible common law
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`trademark rights in the HOVERFLY Trademark.
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`27.
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`As a consequence of Hoverfly’s use of the HOVERFLY Trademark
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`throughout the United States, and due to the significant investment of time, money,
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`and effort, widespread sales, and the high quality of Hoverfly’s goods and services,
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`the HOVERFLY Trademark is strong, has acquired value, and is well-known to
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`the consuming public and trade as identifying and distinguishing the source of
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`Hoverfly’s goods and services.
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`Defendant’s Willful Trademark Infringement
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`28.
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`Upon information and belief, in early 2017, Defendant recognized that
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`Hoverfly’s federal registration for the HOVERFLY Trademark had or may lapse
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`despite Hoverfly’s continued use of the HOVERFLY Trademark.
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`29.
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`Upon information and belief, Defendant, with full knowledge of
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`Hoverfly’s HOVERFLY Trademark, filed on April 10, 2017 trademark application
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`with the USPTO for the same (word) mark – Hoverfly – as Hoverfly’s
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`HOVERFLY Trademark.
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`30.
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`Defendant’s Hoverfly trademark is identical or confusingly similar to
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`Hoverfly’s HOVERFLY Trademark in appearance, pronunciation, connotation and
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`overall commercial impression.
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.7 Filed 11/09/20 Page 7 of 17
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`31.
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`Upon information and belief, Defendant is in the business of drone
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`photography and video servicing for business, including for real estate, aerial
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`inspections, and construction. Defendant also hires drone pilots to deliver its
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`services.
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`32.
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`Like Hoverfly, Defendant markets its services in the same or similar
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`marketing channels, including the Internet.
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`33.
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`Defendant’s website is www.hoverflyinc.com; Plaintiff Hoverfly’s
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`website is hoverflytech.com.
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`34.
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`Defendant uses the HOVERFLY Trademark to identify and deliver its
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`services, including on its website, hoverflyinc.com, as shown below:
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`35.
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`Upon information and belief, Defendant also uses the HOVERFLY
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`Trademark on its social media accounts, including Instagram, where it uses the
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`hashtag, #hoverfly:
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.8 Filed 11/09/20 Page 8 of 17
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`36.
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`Defendant is not authorized by Hoverfly to advertise, distribute, sell,
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`offer to sell, or facilitate the sale of any goods or services bearing the HOVERFLY
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`Trademark.
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`37.
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`Despite Defendant’s federal trademark registration, Hoverfly is the
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`senior user of the HOVERFLY Trademark.
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`38.
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`Defendant’s use of the HOVERFLY Trademark in connection with
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`the advertising, marketing, offering for sale, sale, and distribution of its goods and
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`services has caused, and in the future is likely to cause, confusion among potential
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`customers between Hoverfly and Defendant, thus harming the consuming public
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`and irreparably harming Hoverfly’s valuable reputation and goodwill.
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`39.
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`Hoverfly is aware of instances of actual consumer confusion. For
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`example, Hoverfly receives misdirected calls to its main office number. Further,
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`prospective customers have demonstrated actual confusion as well.
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`40.
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`In clear disregard of Plaintiff’s trademark rights, Defendant has
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`knowingly continued to use the HOVERFLY Trademark.
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.9 Filed 11/09/20 Page 9 of 17
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`FIRST CLAIM FOR RELIEF – LANHAM ACT
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`41.
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`Hoverfly adopts and incorporates by reference the allegations
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`contained in Paragraphs 1 through 40.
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`42.
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`As the senior and continuous user, Hoverfly owns the HOVERFLY
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`Trademark.
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`43.
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`Defendant’s use of the HOVERFLY Trademark in commerce, in
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`connection with its goods and services, has caused and is likely to continue to
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`cause confusion, or to cause mistake, or to deceive as to the affiliation, connection,
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`or association of Defendant with Hoverfly, or as to the origin, sponsorship, or
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`approval of Defendant’s goods, services, or commercial activities by Hoverfly.
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`44.
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`Defendant’s use of HOVERFLY Trademark constitutes false or
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`misleading representations of fact, false or misleading descriptions of fact, and
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`false designations of origin of its goods and services.
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`45.
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`Defendant’s actions have caused and, unless enjoined by this Court,
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`will continue to cause irreparable harm to Hoverfly, a likelihood of confusion and
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`deception of members of the trade and general public, and injury to Hoverfly’s
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`goodwill and reputation, for which it has no adequate remedy at law.
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`46.
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`Upon information and belief, Defendant’s use of the Hoverfly
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`Trademark constitutes willful infringement because Defendant was aware of both
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`Hoverfly’s prior federal registration of the HOVERFLY Trademark, and
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.10 Filed 11/09/20 Page 10 of 17
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`Hoverfly’s continuing use of the HOVERFLY Trademark when Defendant filed its
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`registration application for the identical mark with the USPTO.
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`47.
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`Hoverfly is entitled to injunctive relief and to recover Defendant’s
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`profits, actual damages, enhanced profits and damages, costs, injunctive relief, and
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`reasonable attorneys’ fees pursuant to Lanham Act, including 15 U.S.C. §§
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`1125(a), 1116, and 1117.
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`SECOND CLAIM FOR RELIEF
`COMMON LAW TRADEMARK INFRINGEMENT
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`Hoverfly adopts and incorporates by reference the allegations
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`48.
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`contained in Paragraphs 1 through 47.
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`49.
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`By the actions described above, Defendant has engaged in trademark
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`infringement in violation of the common law of Michigan because Defendant’s use
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`of the HOVERFLY Trademark in connection with its goods and services has
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`caused and is likely to continue to cause consumer confusion.
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`50.
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`Defendant’s actions have irreparably harmed Hoverfly, its goodwill
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`and reputation, and will continue to irreparably harm Hoverfly unless enjoined by
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`this Court.
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`51.
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`52.
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`Hoverfly is without an adequate remedy at law.
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`Defendant’s actions have damaged and continue to damage Hoverfly
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`in an amount to be determined at trial.
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.11 Filed 11/09/20 Page 11 of 17
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`THIRD CLAIM FOR RELIEF –
`COMMON LAW UNFAIR COMPETITION
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`53.
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`Hoverfly adopts and incorporates by reference the allegations
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`contained in Paragraphs 1 through 52.
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`54.
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`By the actions described above, Defendant has engaged in unfair
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`competition in violation of the common law of Michigan because Defendant’s use
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`of the HOVERFLY Trademark in connection with its goods and services is likely
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`to cause consumer confusion.
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`55.
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`Defendant’s actions have irreparably harmed Hoverfly, its goodwill
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`and reputation, and will continue to irreparably harm Hoverfly unless enjoined by
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`this Court.
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`56.
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`57.
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`Hoverfly is without an adequate remedy at law.
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`Defendant’s actions were undertaken in willful disregard of
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`Hoverfly’s rights.
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`58.
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`Defendant’s actions were undertaken for the purpose of deceiving the
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`public.
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`59.
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`Defendant’s actions have damaged and continue to damage Hoverfly
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`in an amount to be determined at trial.
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.12 Filed 11/09/20 Page 12 of 17
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`FOURTH CLAIM FOR RELIEF –
`CANCELLATION OF DEFENDANT’S REGISTRATION
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`Hoverfly adopts and incorporates by reference the allegations
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`60.
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`contained in Paragraphs 1 through 59.
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`61.
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`Defendant is the owner of U.S. Trademark Registration No. 5460451
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`for the designation HOVERFLY for the following goods: the provision of aerial
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`photography services through the use of drone technology.
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`62.
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`63.
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`64.
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`The ‘451 Registration issued on May 1, 2018.
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`Defendant claimed a first use in commerce of June 1, 2017.
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`Plaintiff is the senior user of HOVERFLY and has priority of use for
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`the HOVERFLY mark in conjunction with various products and services,
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`including the manufacture and sale of aerial drones and accessories designed for
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`multiple applications, including for security and public safety.
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`65.
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`Upon information and belief, Defendant began using the HOVERFLY
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`designation with knowledge of Plaintiff’s use of the HOVERFLY trademark in
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`order to target and confuse the public and potential consumers.
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`66.
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`Defendant’s use of HOVERFLY in connection with drone related
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`services has caused and is likely to cause confusion or mistake among consumers
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`as to the source or origin of goods and services offered under these marks.
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`67.
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`Defendant’s HOVERFLY designation so resembles Plaintiff’s mark
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`that continued registration and use of HOVERFLY will cause or is likely to cause
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.13 Filed 11/09/20 Page 13 of 17
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`consumer confusion and mislead consumers as to the source of Plaintiff’s goods
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`and services.
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`68.
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`Such confusion will cause damage and injury to Plaintiff and its
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`goodwill in the HOVERFLY trademark and thereby lessening the value of
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`HOVERFLY as a unique identifier of Plaintiff’s products and services.
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`69.
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`Plaintiff has been damaged as a direct and proximate result of
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`Defendant’s use of HOVERFLY mark in commerce.
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`70.
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`Defendant’s actions have irreparably harmed Hoverfly, its goodwill
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`and reputation, and will continue to irreparably harm Hoverfly unless enjoined by
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`this Court.
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`71.
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`For at least these reasons, Hoverfly is without an adequate remedy at
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`law.
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`72.
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`Defendant’s actions were undertaken in willful disregard of
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`Hoverfly’s rights.
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`73.
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`For at least these reasons, the ‘451 registration must be cancelled
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`pursuant to 15 U.S.C. § 1064.
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`PRAYER FOR RELIEF
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`WHEREFORE, Hoverfly prays as follows:
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`A. For judgment that Defendant:
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`a. Has violated the Lanham Act, including 15 U.S.C. § 1125;
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.14 Filed 11/09/20 Page 14 of 17
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`b. Has engaged in trademark infringement under the common law of
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`Michigan; and,
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`c. Has engaged in unfair competition in violation of the common law
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`of Michigan.
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`B. Preliminarily and permanently enjoin Defendant, each of its officers,
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`agents, servants, employees, and attorneys, and all those in active concert
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`or participation with it from:
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`a. using any Hoverfly trademarks, including, but not limited to the
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`HOVERFLY Trademark, or any simulation, reproduction, copy,
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`colorable imitation, or confusingly similar variation thereof in
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`connection with any goods or services or in connection with the
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`promotion, advertisement, sale, offering for sale, manufacture,
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`production, dissemination, or distribution of its goods and services;
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`b. using any false designation of origin or false description
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`(including, without limitation, any letters or symbols), or
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`performing any act which can, or is likely to, lead members of the
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`consuming public or trade to believe that Defendant is associated
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`with Hoverfly or that any product imported, manufactured,
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`distributed, or sold by Defendant and/or any services provided by
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`Defendant is, in any manner associated or connected with
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.15 Filed 11/09/20 Page 15 of 17
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`Hoverfly, or is authorized, licensed, sponsored, or otherwise
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`approved by Hoverfly;
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`c. making any statements or representations, or using any false
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`designation of origin or false description, or performing any act,
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`which can or is likely to lead the trade or public, or individual
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`members thereof, to believe that any products manufactured,
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`distributed, or sold by Defendant, or any services provided by
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`Defendant, are in any manner associated with or connected with
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`Hoverfly, or are sold, manufactured, licensed, sponsored,
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`approved, or authorized by Hoverfly;
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`d. Destroying, altering, removing or otherwise dealing with the
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`unauthorized goods, or any books or records which contain any
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`information relating to the manufacture, production, distribution,
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`circulation, sale, marketing, offering for sale, advertising,
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`promotion, rental or display of all unauthorized goods and/or the
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`services which infringe the HOVERFLY Trademark;
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`e. Effecting any assignment or transfers, forming new entities or
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`associations, or utilizing any other device for the purpose of
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`circumventing or otherwise avoiding the prohibitions identified in
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`subparagraphs (a) though (d) above; and,
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.16 Filed 11/09/20 Page 16 of 17
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`f. Assisting, aiding, or abetting any person or business entity in
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`engaging in or performing any of the activities, or taking any
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`action that contributes to, any of the activities referred to in
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`subparagraphs (a) through (e) above.
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`C. Award Hoverfly damages resulting from Defendant’s infringement of
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`Hoverfly’s protectable trademark rights;
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`D. Order Defendant to deliver up for destruction all goods, advertising,
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`literature and other forms of promotional material bearing or showing the
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`HOVERFLY Trademark, any other Hoverfly trademark, or a confusingly
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`similar mark pursuant to 15 U.S.C. §1118;
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`E. Find the case to be exceptional and award appropriate relief thereunder;
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`F. Award Hoverfly its reasonable attorneys’ fees;
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`G. Award Hoverfly interest and costs;
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`H. Order an accounting for all gains, profits, and advantages derived from
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`Defendant’ acts of infringement of Hoverfly’s trademarks, including the
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`HOVERFLY Trademark, pursuant to 15 U.S.C. § 1117;
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`I. Require Defendant to report to this Court of its compliance with the
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`foregoing within thirty (30) days of judgment; and
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`J. Entry of judgment that Trademark Registration No. 5460451 infringes
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`Plaintiffs mark and is therefore cancelled.
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`Case 3:20-cv-13007-RHC-RSW ECF No. 1, PageID.17 Filed 11/09/20 Page 17 of 17
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`K. For such other and just relief as the Court sees fit under the
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`circumstances.
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`Date: November 9, 2020
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`Respectfully submitted,
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`BEWERSDORF PLC
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`/s/ Ryan Bewersdorf
`Ryan Bewersdorf (P66411)
`390 Park Street, Suite 222
`Birmingham, MI 48009
`(248) 633-2882
`ryan@bewersdorfplc.om
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`Of Counsel:
`THOMPSON COBURN LLP
`(admission forthcoming)
`
`David B. Jinkins
`Matthew A. Braunel
`Robyn Ast-Gmoser
`One US Bank Plaza
`St. Louis, MO 63101
`(314) 552-6000
`(314) 552-7000 (fax)
`djinkins@thompsoncoburn.com
`mbraunel@thompsoncoburn.com
`rastgmoser@thompsoncoburn.com
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`Attorneys for Plaintiff Hoverfly
`Technologies, Inc.
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