Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA659743
`ESTTA Tracking number:
`03/06/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91211624
`Defendant
`Miracle Babies
`JULIANNE A HENLEY
`PERKINS COIE LLP
`1201 THIRD AVENUE, SUITE 4900
`SEATTLE, WA 98101-3099
`UNITED STATES
`pctrademarks@perkinscoie.com, jschnurer@perkinscoie.com, jhen-
`ley@perkinscoie.com, bzhang@perkinscoie.com, miraclebabiesintern-
`al@perkinscoie.com
`Motion to Suspend for Civil Action
`Reagan T. Roth of Perkins Coie LLP
`pctrademarks@perkinscoie.com, jhenley@perkinscoie.com, miraclebabiesin-
`ternal@perkinscoie.com, rroth@perkinscoie.com
`/Reagan T. Roth/
`03/06/2015
`Motion to Suspend & Extend Discovery.pdf(13383 bytes )
`Exhibit A Children's Miracle Network v. Miracle Babies_Complaint.pdf(166689
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Children’s Miracle Network,
`
`Opposition No: 91211624
`
` Opposer,
`
`v.
`
`Miracle Babies,
`
`Applicant.
`
`
`
`
`Motion to Suspend Opposition Proceeding
`and for a Thirty Day Extension of Time for
`Close of Discovery, and All Subsequent
`Deadlines, Upon Resumption
`
`Miracle Babies (“Applicant”) hereby moves the Board to suspend Opposition No.
`
`91211624 (“Proceeding”) pending final disposition of federal district court case No. 15-CV-
`
`0499-AJB DHB, filed by Children’s Miracle Network (“Opposer”) on March 4, 2015, in the U.S.
`
`District Court for the Southern District of California (“District Court Litigation”) and for a thirty
`
`(30) day extension of the Close of Discovery, and all subsequent deadlines, upon resumption of
`
`the Proceeding. A copy of the complaint filed by Opposer to initiate the District Court Litigation
`
`( “Complaint”) is attached hereto as Exhibit A.
`
`REQUEST FOR SUSPENSION
`
`The Complaint seeks (a) a judgment that Applicant’s use of the MIRACLE BABIES
`
`trademark (and related MIRACLE marks) (collectively, “Applicant’s Mark”), in connection with
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`the services (“Services”) identified in Applicant’s United States Patent and Trademark Office
`
`Application Serial No. 85/590,696 (“Application), is confusingly similar to, and infringes, the
`
`MIRACLE marks and registrations claimed as assets by Opposer in the Proceeding, and (b)
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`requests an injunction enjoining Applicant from using Applicant’s Mark, among other remedies.
`
`LEGAL125255945.1
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`-1-
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`

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`Because Opposer is challenging Applicant’s Mark and Services in the Proceeding as well as in
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`the District Court Litigation, a final determination in the District Court Litigation will have
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`significant bearing on the Proceeding. Applicant requires additional time to investigate the
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`Complaint, and to determine Opposer’s intent concerning the District Court Litigation, as the
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`Complaint has been filed, but not formally served on Applicant.
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`Suspension of a Trademark Trial and Appeal Board (“Board”) proceeding while the
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`parties are engaged in a civil action is permissive and appropriate where the litigation will have a
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`bearing on the issues before the Board. See TBMP §510.02(a). Indeed, it is the Board’s policy
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`to suspend proceedings when the parties are involved in related federal district court litigation.
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`Id. See also General Motors Corp. v. Cadillac Club Fashions Inc., 22 U.S.P.Q.2d 1933, 1937
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`(TTAB 1992).
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`The next scheduled deadline in the Proceeding is the March 10, 2015 Close of Discovery,
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`and pre-trial disclosures pursuant to the current scheduling order are set to begin on April 24,
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`2015. In light of the newly filed District Court Litigation, Applicant respectfully requests that
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`the Proceeding be suspended until the District Court Litigation is resolved. In the alternative,
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`Applicant would be satisfied with a preliminary suspension of at least one hundred and twenty
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`(120) days in accordance with the time for service pursuant to Fed. R. Civ. P. 4(m).
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`REQUEST FOR A THIRTY DAY EXTENSION OF TIME FOR CLOSE OF DISCOVERY, AND
`SUBSEQUENT DEADLINES, UPON RESUMPTION OF THE PROCEEDING
`
`
`
`In the event the suspension requested herein is ultimately lifted, Applicant also
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`respectfully moves the Board to extend the time for Close of Discovery by thirty (30) days, and
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`all subsequent deadlines as set forth on the August 11, 2014 scheduling order, upon resumption
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`of the Proceeding. This extension is necessary to allow the parties to complete discovery as to
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`LEGAL125255945.1
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`-2-
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`

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`any additional issues which arise out of the District Court Litigation and/or during the suspension
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`period for the Proceeding.
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`This motion is made in good faith to facilitate the orderly prosecution and completion of
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`the Proceeding, and not for purposes of delay or other improper purpose.
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`DATED: March 6, 2015
`
`
`
`
`
`CERTIFICATE OF MAILING
`
`PERKINS COIE LLP
`
`By: /Julianne A. Henley/
`Julianne A. Henley
`
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`Telephone: 206.359.8000
`Facsimile: 206.359.9000
`
`
`Attorney for Applicant
`
`
`
` I
`
` hereby certify that on the date below, I served the foregoing
`Motion to Suspend Opposition Proceeding and for a Thirty
`Day Extension of Time for Close of Discovery, and All
`Subsequent Deadlines, Upon Resumption on Opposer's
`Counsel by depositing a true and correct copy of the same
`with the United States Postal Service, as first class mail,
`postage prepaid, in an envelope addressed to:
`
`J. Andrew Sjoblom
`Holland & Hart LLP
`222 South Main Street, Suite 2200
`Salt Lake City, Utah 84101
`
`Signature: /Megan Babcock/
`Printed Name: Megan Babcock
`
`Date: March 6, 2015
`
`
`
`LEGAL125255945.1
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`-3-
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`

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`Exhibit A
`Exhibit A
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`

`
`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 1 of 16
`
`
`
`J. Andrew Sjoblom (199369)
`jasjoblom@hollandhart.com
`HOLLAND & HART LLP
`222 South Main Street, Suite 2200
`Salt Lake City, UT 84101
`Telephone: (801) 799-5800
`Facsimile: (877) 665-1699
`
`
`
`Attorneys for Plaintiff
`CHILDREN’S MIRACLE NETWORK
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`
`)
`CHILDREN’S MIRACLE
`)
`NETWORK, a Utah non-profit
`) CASE NO.
`corporation
`
`______________________________ )
`
`
`)
`
`
`)
`
`Plaintiff,
`)
`vs.
`
`)
`
`
`)
`) (Demand for Jury Trial)
`
`
`MIRACLE BABIES, a California
`)
`)
`non-profit corporation,
`
`
`)
`
`Defendants.
`)
`_____________________________
`)
`
`'15CV0499
`
`AJB
`
`DHB
`
` COMPLAINT
`
`
`
`Plaintiff Children’s Miracle Network (“CMN” or “Plaintiff”) hereby claims
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`against defendant Miracle Babies as follows:
`NATURE OF THE ACTION
`
`1.
`
`This is an action for trademark infringement, false designation of
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`origin, unfair competition and related claims against Miracle Babies based on its
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`infringement of Plaintiff’s “Miracle”-based trademarks that CMN uses in
`
`
`
`1
`COMPLAINT
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 2 of 16
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`
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`connection with raising money for children’s hospitals throughout the United
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`States and Canada.
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`THE PARTIES
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`2.
`
`CMN is a Utah non-profit corporation with its principal place of
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`business in Salt Lake City, Utah. CMN is a charitable organization that raises
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`money for children’s hospitals throughout the United States and Canada. CMN
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`also creates awareness and educates the public about children’s health care issues,
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`the shortage of available resources, and good health care practices to prevent
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`accidents and disease, and the hospitals, institutions and people who provide
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`children’s health care.
`3.
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`Upon information and belief, Miracle Babies is a California non-profit
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`corporation with its principal place of business in San Diego, California. Miracle
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`Babies raises money to support the families of infants requiring health care.
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`Miracle Babies also operates the “Miracle Babies Family Network” to provide
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`support to the families of ill newborns, and “Raising Miracles” to provide support
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`to families once they leave the hospital.
`JURISDICTION AND VENUE
`
`4.
`
`This is an action for trademark infringement and unfair competition
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`under the Lanham Act (15 U.S.C. §§ 1051-1127), common law trademark
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`infringement and related state law claims.
`5.
`
`This Court has subject matter jurisdiction over this action under 28
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`U.S.C. § 1331 (federal question), 28 U.S.C. § 1338(a) (trademarks), and 15 U.S.C.
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`§ 1121 (trademarks). This Court has supplemental jurisdiction over CMN’s state
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`law claims under 28 U.S.C. § 1367(a) because those claims arise from a common
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`nucleus of operative facts alleged in CMN’s federal claims.
`
`
`
`2
`COMPLAINT
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 3 of 16
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`6.
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`This Court has personal jurisdiction over Miracle Babies because it is
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`a California non-profit corporation with its principal place of business in San
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`Diego, California.
`7.
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`Venue is also proper in this District pursuant to 28 U.S.C. §
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`1391(b)(1) because Miracle Babies resides in this District.
`
`GENERAL ALLEGATIONS
`CMN is a charitable organization that raises money for children’s
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`8.
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`hospitals throughout the United States and Canada. CMN also creates awareness
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`and educates the public about children’s health care issues, the shortage of
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`available resources, and good health care practices to prevent accidents and
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`disease, and the hospitals, institutions and people who provide children’s health
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`care.
`
`9.
`Over 170 hospitals and related institutions are members of CMN.
`10. CMN has relationships with about 200 television stations, 250 radio
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`stations, 100 corporate sponsors, and a number of celebrities and sports figures.
`11. CMN engages in a wide range of year-round activities to raise funds
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`and promote the awareness and educational mission of CMN.
`12. CMN has engaged in fundraising and promotion of its awareness and
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`education mission for more than 30 years through, among other things, fundraising
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`campaigns with the customers and employees of major companies, including
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`Walmart, Marriott, Delta Airlines, Costco, Dairy Queen, RE/MAX, Ace Hardware,
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`Food Lion, Coca-Cola, and Microsoft, awareness and education programs
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`broadcast as part of the regular news programming on Fox television stations, a
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`televised annual telethon, multi-day radiothon programs across the country,
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`celebrity appearances promoting CMN and its mission on major national television
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`news and talk shows, fundraising through a national network of credit unions,
`
`
`
`3
`COMPLAINT
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 4 of 16
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`cause marketing campaigns for consumer products of major companies,
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`advertising and recognition in national media and publications, and student-
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`organized dance marathon campaigns conducted at universities across the country.
`13. CMN also operates a website furthering its charitable mission,
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`including awareness and education, located at
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`www.childrensmiraclenetworkhospitals.org.
`14. CMN is the owner of numerous U.S. Trademark Registrations
`
`involving the word “MIRACLE” that are used in connection with charitable
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`fundraising and related advertising. Specifically, CMN is the owner of the
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`following U.S. Trademark Registrations that cover the mark “MIRACLE”:
`a.
`
`United States Trademark Registration No. 1,553,246 for
`
`CHILDREN’S MIRACLE NETWORK for charitable fundraising services;
`b.
`
`United States Trademark Registration No. 2,264,436 for
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`CHILDREN’S MIRACLE NETWORK for radio and television programming and
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`production of radio and television programs in the field of children and children’s
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`issues;
`
`c.
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`United States Trademark Registration No. 1,916,839 for
`
`CHILDREN’S MIRACLE NETWORK for radio and television broadcasting in the
`
`field of children and children’s issues;
`d.
`
`United States Trademark Registration No. 2,209,255 for
`
`CHILDREN’S MIRACLE NETWORK for providing health care information;
`e.
`
`United States Trademark Registration No. 1,356,563 for
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`MIRACLES for a newsletter pertaining to charitable services;
`f.
`
`United States Trademark Registration No. 1,343,289 for
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`CHILDREN’S MIRACLE NETWORK TELETHON for charitable fundraising
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`services;
`
`
`
`4
`COMPLAINT
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 5 of 16
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`g.
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`United States Trademark Registration No. 1,698,499 for
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`BOWLING FOR MIRACLES for charitable fundraising services;
`h.
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`United States Trademark Registration No. 2,954,518 for
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`CHILDREN’S MIRACLE NETWORK and design for charitable fundraising and
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`eleemosynary services in the field of monetary donations;
`i.
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`United States Trademark Registration No. 2,954,517 for
`
`CHILDREN’S MIRACLE NETWORK and design for radio and television
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`broadcasting in the field of children and children’s issues;
`j.
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`United States Trademark Registration No. 2,954,516 for
`
`CHILDREN’S MIRACLE NETWORK and design for radio and television
`
`programming and production of radio and television programs in the field of
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`children and children’s issues;
`k.
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`United States Trademark Registration No. 2,951,236 for
`
`CHILDREN’S MIRACLE NETWORK and design providing health care
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`information;
`l.
`
`United States Trademark Registration No. 3,917,739 for
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`CHILDREN’S MIRACLE NETWORK HOSPITALS for charitable fundraising
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`services;
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`m. United States Trademark Registration No. 1,851,682 for
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`MIRACLE HOME for real estate brokerage services;
`n.
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`United States Trademark Registration No. 3,209,006 for KIDS
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`ALL-STAR MIRACLE HOME for charitable fundraising and eleemosynary
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`services in the field of monetary donations;
`o.
`
`United States Trademark Registration No. 3,209,007 for KIDS
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`ALL-STAR MIRACLE HOME and design for charitable fundraising and
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`eleemosynary services in the field of monetary donations;
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`
`
`5
`COMPLAINT
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 6 of 16
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`p.
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`United States Trademark Registration No. 3,209,009 for
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`HOME OF MIRACLES and design for charitable fundraising and eleemosynary
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`services in the field of monetary donations; and
`q.
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`United States Trademark Registration No. 3,387,880 for
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`MIRACLE SOUP for providing an interactive website for enabling
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`communications and collaboration among a charitable foundation and its
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`associates, sponsors and member hospitals in the field of charitable fundraising and
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`eleemosynary services.
`15. The foregoing registrations are valid and subsisting and constitute
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`prima facie evidence of the validity of the foregoing marks and registrations, and
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`of CMN’s ownership of and exclusive right to use these marks in connection with
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`the services set forth in the registrations. Moreover, most of the above
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`registrations are incontestable and therefore constitute conclusive evidence of the
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`validity of the marks and the registrations and of CMN’s ownership of and
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`exclusive right to use the marks in connection with the services set forth in the
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`registrations. The registrations also provide constructive notice of CMN’s
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`ownership of the marks.
`16.
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`In addition to CMN’s registered marks identified above, CMN has
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`used and is currently using numerous other marks, both registered and
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`unregistered, containing the word “Miracle” in connection with the above
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`described services.
`17. CMN has expended considerable expense and resources in advertising
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`and promoting its goods and services under its registered and non-registered marks
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`and as a result, CMN has acquired substantial good will and consumer recognition.
`18. Defendant Miracle Babies promotes services similar to CMN’s
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`services, including raising funds for and providing financial assistance to the
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`families of critically-ill newborns and providing other support to families of
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`
`
`6
`COMPLAINT
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 7 of 16
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`
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`critically-ill newborns using the names Miracle Babies, Miracle Babies Family
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`Network and Raising Miracles.
`19. Miracle Babies operates a website furthering its charitable mission,
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`including awareness and education, located at www.miraclebabies.org.
`20. Defendant’s Miracle Babies, Miracle Babies Family Network and
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`Raising Miracles marks (the “Infringing Marks”) are confusingly similar to CMN’s
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`various “Miracle”-based marks. In particular, the name “Miracle Babies” uses a
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`word that is identical to a word used in CMN’s marks – “Miracle” – coupled with a
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`synonym (“Babies”) of another word in CMN’s marks – “children.”
`21. The Miracle Babies Family Network uses “Miracle,” “Network” and a
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`synonym for “children.”
`22. Defendant’s use of the Infringing Marks is likely to cause consumer
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`confusion and a false association between CMN’s services and the services offered
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`by Defendant, falsely leading consumers to believe that the services emanate from
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`the same source or that CMN and Miracle Babies are affiliated.
`23. Upon information and belief, this likelihood of confusion has resulted
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`in and will continue to result in substantial and irreparable harm to CMN and to
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`consumers.
`24. Defendant’s use of the Infringing Marks has been and is without
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`permission or authority of Plaintiff and without any legitimate license to use
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`CMN’s marks.
`25. Miracle Babies’ acts have caused damage to CMN in an amount to be
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`determined at trial. These acts will result in further damage and irreparable injury
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`if Miracle Babies is not restrained by this Court from further violation of CMN’s
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`rights in its “Miracle”-based marks.
`26. Miracle Babies’ unlawful activity results in irreparable harm and
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`injury to CMN. Among other harms, it:
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`
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`7
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 8 of 16
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`a.
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`deprives CMN of its absolute right to determine the manner in
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`which its goods and services are presented to the general public;
`b.
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`deceives the public as to the origin and sponsorship of such
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`goods and services; and
`c.
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`wrongfully trades upon and cashes in on CMN’s reputation,
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`goodwill, and exclusive rights in its “Miracle”-based marks.
`27. CMN is entitled to an injunction restraining Miracle Babies, its
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`officers, agents, servants, employees, attorneys, and all persons acting in concert
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`with them, from engaging in any further acts in violation of CMN’s rights.
`28. CMN is further entitled to recover damages, including treble damages,
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`interest, and attorneys’ fees and costs CMN has sustained and will sustain as a
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`result of Miracle Babies’ acts as alleged herein. At present, the amount of such
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`damages cannot be fully ascertained by CMN.
`CAUSES OF ACTION
`COUNT I
`(TRADEMARK INFRINGEMENT UNDER SECTION 43(a)(1)(A)
`OF THE LANHAM ACT)
`29. CMN realleges and incorporates by reference all of the foregoing
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`paragraphs.
`30. Miracle Babies’ use of the Infringing Marks in interstate commerce
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`without CMN’s consent constitutes a false designation of origin, false or
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`misleading description of fact, or false or misleading representation of fact, which
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`is likely to cause confusion, or to cause mistake, or to deceive or mislead as to the
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`affiliation, connection, or association of Miracle Babies with CMN, or as to the
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`origin, sponsorship, or approval of Miracle Babies’ goods and activities in
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`violation of 15 U.S.C. § 1125(a).
`
`
`
`8
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 9 of 16
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`31. By so acting, Miracle Babies has violated § 43(a) of the Lanham Act
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`(15 U.S.C. § 1125(a)).
`32. CMN is informed and believes and thereon alleges that Miracle
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`Babies has derived and received, and will continue to derive and receive, gains,
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`profits, and advantages from Miracle Babies’ false designation of origin, false or
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`misleading statements, descriptions of fact, or false or misleading representations
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`of fact in an amount that is not presently known to CMN. By reason of Miracle
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`Babies’ actions, constituting false designation of origin, false or misleading
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`statements, false or misleading descriptions of fact, or false or misleading
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`representations of fact, CMN has been damaged and is entitled to monetary relief
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`in an amount to be determined at trial.
`33.
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`In addition, Miracle Babies’ unlawful actions have caused and
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`continue to cause irreparable injury to the value and goodwill of CMN’s
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`“Miracle”-based marks, as well as irreparable injury to CMN’s goodwill and
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`reputation. CMN has no adequate remedy at law because damages are continuing
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`and difficult to ascertain.
`34. Upon information and belief, Miracle Babies’ actions were
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`undertaken willfully with full knowledge of the falsity of such designation of
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`origin and false descriptions or representations.
`35. Because Miracle Babies, actions, on information and belief, were
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`intentional willful and/or deliberate, CMN is entitled to an award of treble damages
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`under § 35(a) of the Lanham Act (15 U.S.C. § 1117(a)).
`36. On information and belief, this is an exceptional case, and thus CMN
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`is entitled to an award of attorneys’ fees under § 35(a) of the Lanham Act (15
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`U.S.C. § 1117(a)).
`37. By reason of the foregoing, CMN is entitled to injunctive relief and
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`monetary damages against Miracle Babies.
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`
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`9
`COMPLAINT
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 10 of 16
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`COUNT II
`(TRADEMARK INFRINGEMENT UNDER § 32 OF THE LANHAM ACT)
`38. CMN realleges and incorporates by reference all of the foregoing
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`paragraphs.
`39. CMN owns and possesses valid registrations issued by the USPTO for
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`the “Miracle”-based marks.
`40. Miracle Babies’ actions as described herein, including Miracle
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`Babies’ use of the Infringing Marks in interstate commerce to promote its services,
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`are likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
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`connection or association of Miracle Babies with CMN, or as to the origin,
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`sponsorship or approval of Miracle Babies’ services and products by CMN.
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`Miracle Babies’ conduct constitutes trademark infringement in violation of § 32 of
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`the Lanham Act (15 U.S.C. § 1114).
`41. Miracle Babies’ trademark infringement has caused and continues to
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`cause damage and irreparable injury to the value and goodwill of CMN’s
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`“Miracle”-based marks, as well as damages and irreparable injury to CMN’s
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`business, goodwill, and reputation. CMN has no adequate remedy at law because
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`damages are continuing and difficult to ascertain. On information and belief,
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`Miracle Babies’ continued use of the Infringing Marks is deliberate, willful,
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`fraudulent, and constitutes a knowing infringement of CMN’s “Miracle”-based
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`marks, and makes this case exceptional.
`42. By virtue of the foregoing, CMN is entitled to an award of attorneys’
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`fees under § 35(a) of the Lanham Act (15 U.S.C. § 1117(a)).
`43. By virtue of the foregoing, CMN is entitled to injunctive relief and
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`monetary damages against Miracle Babies.
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 11 of 16
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`COUNT III
`(COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR
`COMPETITION)
`44. CMN realleges and incorporates by reference all of the foregoing
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`paragraphs.
`45. As alleged above, CMN has a protectable interest in its “Miracle”-
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`based marks.
`46. Miracle Babies’ use of the Infringing Marks is likely to cause
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`consumer confusion and therefore infringes CMN’s common law trademark rights
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`under federal common law, California common law, and constitutes unfair
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`competition.
`47. CMN is informed and believes, and thereon alleges, that Miracle
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`Babies’ acts complained of herein are willful and deliberate and committed with
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`knowledge that Miracle Babies’ unauthorized use of the CMN Marks and CMN’s
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`common law trademarks causes a likelihood of confusion.
`48. CMN is informed and believes, and thereon alleges, that Miracle
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`Babies has derived and received and will continue to derive and receive, gains,
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`profits and advantages from Miracle Babies’ trademark infringement in an amount
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`that is not presently known to CMN. By reason of Miracle Babies’ wrongful acts
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`as alleged in this Complaint, CMN has been damaged and is entitled to monetary
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`relief in an amount to be determined at trial.
`49. Due to Miracle Babies’ trademark infringement, CMN has suffered
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`and continues to suffer great and irreparable injury for which CMN has no
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`adequate remedy at law.
`50. Miracle Babies’ willful acts of trademark infringement under Federal
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`and California common law constitute fraud, oppression, and malice. Accordingly,
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`CMN is entitled to exemplary and/or punitive damages.
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`11
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 12 of 16
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`COUNT IV
`(UNFAIR COMPETITION UNDER CAL. BUS. & PROF. CODE § 17200)
`51. CMN realleges and incorporates by reference all of the foregoing
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`paragraphs.
`52. As alleged above, CMN has a protectable interest in its “Miracle”-
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`based marks.
`53. Miracle Babies’ use of the Infringing Marks is likely to cause
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`consumer confusion and therefore infringes CMN’s common law trademark rights
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`under federal common law, California common law, and constitutes unfair
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`competition.
`54. Miracle Babies’ activities are likely to confuse, deceive, or mislead
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`the public as to the origin or sponsorship of Miracle Babies’ goods, services, and
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`activities.
`55. Miracle Babies’ acts complained of herein constitute unfair
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`competition against CMN as defined in Section 17200 of the California Business
`
`and Professions Code.
`56. Upon information and belief, Miracle Babies’ wrongful and infringing
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`activities have caused, and unless enjoined by this Court will continue to cause,
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`irreparable injury and other damages to CMN’s business, reputation, and good will
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`in its marks. CMN has no adequate remedy at law.
`COUNT V
`(CYBERSQUATTING UNDER § 43(d) OF THE LANHAM ACT)
`57. CMN realleges and incorporates by reference all of the foregoing
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`paragraphs.
`58. The “Miracle”-based marks used by CMN designate CMN as the
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`exclusive source of its services, and distinguishes CMN in the marketplace.
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`
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 13 of 16
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`59. CMN has not authorized Miracle Babies to use a “Miracle”-based
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`mark, or any mark that is confusingly similar, within any domain name, or as a
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`portion of any internet domain name.
`60. On information and belief, Miracle Babies registered and operates the
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`www.miraclebabies.org domain name (“the infringing domain”).
`61. CMN is informed and believes, and thereupon alleges, that Miracle
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`Babies’ use of marks and terms which are confusingly similar to CMN’s
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`“Miracle”-based marks, of which Miracle Babies was well aware before creating
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`its website, in its domain names, was and continues to be a deliberate, willful and
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`bad faith intent to profit from CMN’s goodwill, divert the public for Miracle
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`Babies’ own gain, and cause confusion as to the association, sponsorship,
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`endorsement or origin of Miracle Babies in violation of 15 U.S.C. § 1125(d).
`62. By reason of the above actions, CMN has suffered and will continue
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`to suffer irreparable injury to its rights and substantial loss of goodwill and
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`reputation unless and until Miracle Babies is restrained from continuing its
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`wrongful acts and required to transfer ownership of the offending domain name to
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`CMN.
`63. By reason of the above actions, CMN’s remedy at law is not adequate
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`to compensate it for the injuries inflicted by Miracle Babies’ conduct.
`64. Accordingly, CMN is entitled to preliminary and permanent
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`injunctive relief pursuant to 15 U.S.C. § 1116.
`65. CMN is entitled to an order requiring Miracle Babies to transfer the
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`infringing domain to CMN.
`66. By reason of Miracle Babies’ acts as alleged herein, CMN is entitled
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`to recover monies Miracle Babies’ derived through the infringing domain, any
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`damages sustained by CMN, and costs of this action under 15 U.S.C. § 1117.
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`13
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`67. By reason of Miracle Babies’ acts as alleged herein, CMN is entitled
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`to recover, at its election, instead of monies to Miracle Babies or damages
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`sustained by CMN, statutory damages in an amount of $100,000 per domain name
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`under 15 U.S.C. § 1117(d).
`68. This is an exceptional case making CMN eligible for an award of
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`attorneys’ fees under 15 U.S.C. § 1117.
`COUNT VI
`(UNJUST ENRICHMENT)
`69. CMN realleges and incorporates by reference all of the foregoing
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`paragraphs.
`70.
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`In committing the acts alleged herein, Miracle Babies has willfully
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`and knowingly copied and infringed upon CMN’s “Miracle”-based marks for its
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`own illegal and unlawful purposes and as a direct and proximate result of Miracle
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`Babies’ unlawful and improper acts, Miracle Babies has been unjustly enriched.
`71. Moreover, CMN has suffered, and will continue to suffer, loss of
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`revenues by virtue of Miracle Babies’ conduct and its unlawful and illegal acts
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`have caused and are continuing to cause irreparable injury to CMN. Unless
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`Miracle Babies is restrained, it will continue to infringe upon CMN’s marks to the
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`continued detriment of CMN.
`72. Equity and good conscience dictate that Miracle Babies be required to
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`account for and turn over to CMN an amount equal to the value of any benefits
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`conferred upon Miracle Babies.
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`14
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 15 of 16
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`PRAYER FOR RELIEF
`WHEREFORE, Plaintiff demands judgment against Defendant as follows:
`A.
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`Preliminarily and permanently enjoining Miracle Babies, and all other
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`persons participating or acting in concert with it, from infringing any of CMN’s
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`rights in the “Miracle”-based marks;
`B.
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`Preliminarily and permanently enjoining Miracle Babies, and all other
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`persons participating or acting in concert with it, from using the Infringing Marks
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`or any other marks confusingly similar to CMN’s “Miracle”-based marks;
`C.
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`Preliminarily and permanently enjoining Miracle Babies, and all other
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`persons participating or acting in concert with it, from engaging in unfair
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`competition;
`D.
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`Preliminarily and permanently enjoining Miracle Babies, and all other
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`persons participating or acting in concert with it, from making a false
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`representation as to affiliation, connection, association with, or certification by
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`another, by its use of the Infringing Marks;
`E. An order of the Court directing Miracle Babies to deliver up to CMN
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`all literature, advertisements, business forms, signs, and any other representations,
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`regardless of form, which are in, or come to be in, Miracle Babies’ possession,
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`custody, or control and which bear the Infringing Marks or any other confusingly
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`similar variant to CMN’s “Miracle”-based marks, and an order from the Court
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`compelling Miracle Babies to notify their direct customers, agents, and
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`representatives that its misuse of the Infringing Marks or any confusingly similar
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`variant is not connected with CMN;
`F.
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`An order of the Court directi