throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA720382
`ESTTA Tracking number:
`01/13/2016
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91224661
`Defendant
`Platinum Rapid Funding Group, Ltd.
`THOMAS A. TELESCA
`RUSKIN MOSCOU FALTISCHECK, P.C.
`1425 RXR PLAZA EAST TOWER, 15TH FLOOR
`UNIONDALE, NY 11556
`
`ttelesca@rmfpc.com
`Motion to Suspend for Civil Action
`Thomas A. Telesca
`ttelesca@rmfpc.com
`/Thomas A. Telesca/
`01/13/2016
`PLATINUM Motion_20160113210109.pdf(71982 bytes )
`PLATINUM Memo of Law_20160113210144.pdf(302055 bytes )
`PLATINUM Ex.1_20160113210030.pdf(421036 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
`
`In the matter of Trademark Application Serial No. 86496202
`For the mark Platinum Rapid Funding Group, Ltd.
`Published in the Official Gazette on October 20, 2015
`
`_________________________________________________________________________ __X
`
`RAPID FUNDING LLC,
`
`Opposer,
`
`Opposition No.: 91224661
`
`- against -
`
`PLATINUM RAPID FUNDING GROUP, LTD.,
`
`Applicant.
`_________________________________________________________________________ __x
`
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`APPLICANT’S MOTION TO SUSPEND OPPOSITION PROCEEDING
`
`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Applicant Platinum Rapid
`
`Funding Group, Ltd. respectfully requests that this Board suspend Opposition No. 91224661 (the
`
`“Opposition”) in light of a prior civil action pending before the U.S. District Court for the
`
`District of Colorado, Case No. 1:15-cv-01926-CBS, which will have a direct bearing in the
`
`Opposition. Filed herewith in support of this Motion is Applicant’s memorandum of law and
`
`

`
` Respectfully 5_
`
`
`
`
`om _
`
`elesc '
`
`Ruskin Moscou Faltischek, P.C.
`1425 RXR Plaza
`East Tower, 15”‘ F1.
`Uniondale, New York 11556
`
`(516) 663-6670
`Fax: (516) 663-6870
`E-mail: l1elesca@,1'111fpc.ct)in
`
`Attorney for Applicant,
`Platinum Rapid Funding Group, Ltd.
`
`other supporting documents.
`
`Dated: January 13, 2016
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned, an attorney, hereby certifies that he served a copy of the foregoing
`
`APPLICANT’S MOTION TO SUSPEND OPPOSITION PROCEEDING by first class mail
`
`on January 13, 2016, upon:
`
`Jill M. Jacobs
`
`Hatch Ray Olsen Sandberg LLC
`730 17th Street, Ste 200
`
`Denver, CO 80202
`
`-- Attorney for Applicant
`
`630685
`
`
`I
`
`
`
`
`' omas A.
`
`cle --
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 86496202
`For the mark Platinum Rapid Funding Group, Ltd.
`Published in the Official Gazette on October 20, 2015
`
`_________________________________________________________________________ __X
`
`RAPID FUNDING LLC,
`
`Opposer,
`
`Opposition No.: 91224661
`
`- against —
`
`PLATINUM RAPID FUNDING GROUP, LTD.,
`
`Applicant.
`_________________________________________________________________________ __X
`
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`APPLICANT’S MEMORANDUM OF LAW IN SUPPORT OF ITS
`
`MOTION TO SUSPEND OPPOSITION PROCEEDING
`
`I.
`
`INTRODUCTION
`
`Applicant Platinum Rapid Funding Group, Ltd. (“Platinum”) submits this Memoradum of
`
`Law in Support of its Motion to Suspend Opposition Proceeding No. 91224661 (the
`
`“Opposition”) brought by Rapid Funding LLC (“Opposer”), in light of a prior civil action
`
`pending before the U.S. District Court for the District of Colorado, Case No. 1:15-cv-01926-
`
`CBS. See Complaint, attached as Exhibit 1. As the outcome of that civil action will have a
`
`direct bearing in the Opposition, implicates the same trademark, and contains identical and
`
`similar issues regarding registration, Platinum respectfully requests that the Board suspend the
`
`

`
`Opposition in order to avoid duplicative proceedings that will waste resources of the Board, the
`
`parties, and the District Court, as well as to avoid the possibility of inconsistent results.
`
`II.
`
`STATEMENT OF FACTS
`
`On January 6, 2015, Platinum filed a use-based trademark application for the
`
`PLATINUM RAPID FUNDING GROUP, LTD design mark set forth below in International
`
`Class 36 in connection with the following services: “Cash advance services for businesses and
`
`merchants; Providing working capital; Providing working capital financing to small businesses
`
`and small business owners.”
`
`
`" f
`if Platinum
`
`Rapid Funding Group, Ltd
`
`On April 20, 2015, the United States Patent and Trademark Office (“USPTO”) issued an
`
`Office Action in connection with Platinum’s aforesaid design mark application. The USPTO
`
`stated, “[a]pplicant must disclaim the wording ‘RAPID FUNDING GROUP, LTD’ because it
`
`merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of
`
`applicant’s goods and/or services, and thus is an unregistrable component of the mark.” The
`
`USPTO further stated, “[a]n applicant may not claim exclusive rights to terms that others may
`
`need to use to describe their goods and/or services in the marketplace.” In response to the April
`
`2015 Office Action, Platinum disclaimed the exclusive right to use “RAPID FUNDING” as well
`
`as “GROUP, LTD.”
`
`Indeed, the term “rapid” is regularly disclaimed by trademark applicants. The word
`
`“rapid” was disclaimed in connection with RAPID CHARGE, RAPID RODENT REMOVAL,
`
`ECKERD RAPID SAFETY FEEDBACK, B.R.A.T. BRUSH RAPID ATTACK TRUCK,
`
`RAPID-CYCLE DESIGN, RAPID-CYCLE DIAGNOSTIC, EMERGENCY RAPID
`
`

`
`EVAPORATIVE COOLING SYSTEM, RAPID RESPONSE TEAM ROOFING, and RAPID
`
`ALERT NETWORK, to name a few.
`
`Opposer offers certain financial services under the following RAPID FUNDING design
`
`mark:
`
`(E13)
`
`Rapid Funding
`
`On July 7, 2015, the Trademark Office issued U.S. Registration No. 4,767,352 for that
`
`mark to Opposer for use in connection with its “financial services, namely, money lending, loan
`
`financing, real estate lending, financial consulting, investment of funds for others, factoring
`
`agencies, commercial lending services” in International Class 36. For its registration, Opposer
`
`was only required to disclaim the exclusive right to use the word “funding.”
`
`Opposer, like Platinum, should have also been required to disclaim “rapid.” According to
`
`its website, Opposer offers: “Fast, Flexible Funding.” Under the “About Us” link on the website
`
`it states, “Rapid Funding LLC is a direct source of capital that provides quick and meaningful
`
`solutions for a vast array of circumstances.” The “About Our Loans” link further states, “Our
`
`fast, flexible, and creative financing solutions target borrowers looking for immediate approval
`
`on a secured or asset-based loan.” In short, Opposer offers rapid funding under its RAPID
`
`FUNDING design mark. Thus, the words or phrase “rapid funding” are generic or merely
`
`descriptive of Opposer’s services and are not entitled to trademark protection under Section
`
`2(e)(l) ofthe Lanham Act, 15 U.S.C. § l052(e)(l).
`
`

`
`On September 4, 2015, Opposer filed a federal civil complaint in the District of Colorado
`
`against Platinum. See Exhibit 1. In its Complaint, Opposer alleges causes of action for
`
`trademark infringement and unjust enrichment, seeking injunctive and monetary relief.
`
`On November 2, 2015, this Opposition was filed based on the same allegations of
`
`likelihood of confusion between Opposer’s mark and Platinum’s mark.
`
`On December 29, 2016, Platinum answered the Complaint in the District Court denying
`
`the material allegations against it and the counterclaimed to cancel Opposer’s registration or,
`
`alternatively, to amend that registration to disclaim exclusive right to use the word “rapid” in
`
`addition to the word “funding.”
`
`The two proceedings are redundant and overlapping, requiring the later-filed Opposition
`
`proceeding to be suspended.
`
`III.
`
`ARGUMENT
`
`It is within the Board’s broad discretion to suspend opposition proceedings when the final
`
`resolution of a civil action “may have a bearing on” issues presented in the opposition
`
`proceeding. 37 C.F.R. § 2.117(a); see also TBMP § 5l0.02(a) (“Whenever it comes to the
`
`attention of the Board that a party or parties to a case pending before it are involved in a civil
`
`action which may have a bearing on the Board case, proceedings before the Board may be
`
`suspended until final determination of the civil action”).
`
`A.
`
`The Issue of Likelihood of Confusion
`
`Exists Before the District Court and the Board
`
`The alleged likelihood of confusion between Opposer’s mark and Platinum’s mark are at
`
`issue in this Opposition Proceeding and in the federal litigation pending in the District of
`
`Colorado. In paragraph 22 of its Complaint, Opposer states:
`
`

`
`Defendant’s use of Defendant’s Tradename is likely to cause
`consumer confusion and a false association between Plaintiffs
`
`services and the services offered by Defendant, falsely leading
`consumers to believe that the services emanate form the source or
`
`that Plaintiff and Defendant are affiliated.
`
`Then, in paragraph 10 of the Notice of Opposition, Opposer states,
`
`In view of the fact that the Applicant’s services and the mark
`applied for are related to and specifically target the precise market
`occupied by Opposer’s Mark, Applicant’s use of the mark for
`which registration is sought is likely to cause confusion, or to
`cause mistake, or to deceive customers in that they are likely to
`believe that App1icant’s services are Rapid Funding’s services, or
`are in some way legitimately connected with, sponsored, or
`approved by Rapid Funding.
`
`Thus, the District Court’s finding regarding the likelihood of confusion will necessarily have a
`
`bearing on the Opposition.
`
`Moreover, the Board cannot grant relief for an infringement action, either by way of an
`
`injunction or damages; its jurisdiction is limited to issues of trademark registration. See PHC,
`
`Inc. v. Pioneer Healthcare, Inc., 75 F.3d 75, 80 (1st Cir. 1996). Because Opposer has made such
`
`an infringement claim, the Board proceeding should be suspended, allowing the District Court to
`
`determine all issues between the parties.
`
`B. The District Court Has the Power To Cancel or Amend
`
`0 oscr’s Re istration Makin this 0 msition Proccedin Moot
`
`
`
`
`
`“In any action involving a registered mark the court may .
`
`.
`
`. order the cancellation of
`
`registrations, .
`
`.
`
`. and otherwise rectify the register with respect to registrations of any party to
`
`the action.” 15 U.S.C. § 1119. See also Prince Lionhart, Inc. v. Halo Innovations, Inc., 2007
`
`WL 1346578 (D. Co1o., May 7, 2007). Thus, federal courts have concurrent jurisdiction with the
`
`Board over issues relating to the registration and cancellation of trademarks.
`
`

`
`In the federal litigation, Platinum has sought to cancel or amend Opposer’s registration
`
`because Opposer’s mark is generic or, at best, merely descriptive. If Opposer’s registration is
`
`cancelled or amended to disclaim exclusive right to use the word “rapid” in addition to the word
`
`“funding,” this Opposition becomes moot because Opposer’s likelihood of confusion claims will
`
`be extinguished.
`
`C. Suspension of the Board Proceeding
`Will Avoid Duglicative Proceedings
`
`While the Board may hear Opposer’s claim regarding the validity of Platinum’s
`
`trademark application in the Opposition proceeding, the Board’s jurisdiction is limited to that
`
`claim. The District Court, on the other hand, has jurisdiction to hear all of the applicable issues.
`
`The efficient resolution of all disputes in a single forum is particularly valuable where, as here,
`
`the District Court has jurisdiction over all issues between the parties and where, as here, “the
`
`decision of the Federal district court is often binding on the Board, while the decision of the
`
`Board is not binding on the court.” See, e.g., Goya Foods, Inc. v. Tropicana, Inc., 846 F.2d 848
`
`(2d Cir. 1988); and TBMP § 510.02(a).
`
`Furthermore, Platinum has already answered and counterclaimed in the District Court
`
`action. The parties have initiated the discovery process and a Scheduling Conference before the
`
`District Court is set for January 28, 2016. In the Opposition, Platinum has not answered yet and
`
`there has been no discovery.
`
`In instances such as this, the Board’s policy favoring efficient adjudication of all issues in
`
`a single forum, rather than duplicative proceedings in various forums, supports suspension of the
`
`present Opposition proceeding. See Black Box Corp. ofPenn. v. Better Box Comms. Ltd, 2002
`
`TTAB LEXIS 253, at *4 (T.T.A.B. 2003) (judicial economy favors suspension of Board
`
`proceedings). Such a ruling by the Board will further the economical disposition of all issues
`
`

`
`between the parties and will not result in prejudice to any party, since all of Opposer’s claims in
`
`the current Opposition proceeding will be adjudicated in the pending litigation before the District
`
`Court. Thus, the current Opposition should be suspended in accordance with 37 C.F.R. §
`
`2.117(a) and TBMP § 510.02(a).
`
`IV.
`
`CONCLUSION
`
`For the reasons set forth above, Platinum respectfully requests that the Board suspend
`
`Opposition No. 91224661 pending the resolution of the federal civil action before the United
`
`States District Court for the District of Colorado, Case No. 1:15-cv-01926-CBS.
`
`Dated: January 13, 2016
`
`
`
`’ 1425 RXR Plaza
`East Tower, 15”‘ F1.
`Uniondale, New York 11556
`
`(516) 663-6670
`Fax: (516) 663-6870
`E-mail: 1leIesca§£B,:'111l'pc.c0m
`
`Attorney for Applicant,
`Platinum Rapid Funding Group, Ltd
`
`630709
`
`

`
`
`
`EXHIBIT 1EXHIBIT 1
`
`

`
`Case l:15—cv—O1926-CBS Document 1 Filed 09/O4/15 USDC Colorado Page 1 of 11
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF COLORADO
`
`Civil Action N0.
`
`RAPID FUNDING LLC, a Colorado limited liability company,
`
`Plaintiff;
`
`v.
`
`PLATINUM RAPID FUNDING GROUP, LTD, a New York corporation,
`
`Defendant.
`
`
`COMPLAINT
`
`
`Plaintiff, Rapid Funding LLC, a Colorado limited liability company (“Plaintiff”), through its
`
`undersigned counsel, Hatch Ray Olsen Sandberg LLC, hereby submits the following Complaint
`
`against Platinum Rapid Funding Group, Ltd, a New York corporation (“Defendant”).
`
`1.
`
`This is an action for trademark infringement, false designation of origin, unfair
`
`competition, and related claims against Defendant based on Defendant’ s unauthorized and unlawful
`
`infringement. of Plaintiff’s RAPID FUNDING trademark. Plaintiff brings this action under the
`
`Federal Lanham Act and common law to recover damages and enjoin Defendant’s unlawful conduct
`
`and for other relief as set forth in this Complaint.
`
`JURISDICTION AND VENUE
`
`2.
`
`This is an action for trademark infringement and unfair competition under the
`
`Lanham Act (a.k.a Trademark Act of 1946, 15 U.S.C. § 1051-1127, as amended), common law
`
`

`
`Case 1:15—cv—O1926—CBS Document 1 Filed 09/04/15 USDC Colorado Page 2 of 11
`
`trademark infringement, and related state law claims.
`
`3.
`
`This Court has subject matter jurisdiction over this action under 28 U.S.C. § 1331
`
`(federal question), 28 U.S.C. § 1338(a) (trademarks), and 15 U.S.C. § 1121 (trademarks). This
`
`Court has supplemental jurisdiction over Plaintiff’s state law claims under 28 U.S.C. § 1367(a)
`
`because those claims arise from a common nucleus of operative facts alleged in Plaintiff’s
`
`federal claims.
`
`4.
`
`This Court has personal jurisdiction over Defendant because it has transacted
`
`business in this District, the actions giving rise to this lawsuit have occurred in this District, and
`
`Defendant has caused damages to Plaintiff in this District.
`
`5.
`
`Venue is proper in this District pursuant to 28 U.S.C. § 1391.
`
`THE PARTIES
`
`6.
`
`Plaintiff is a Colorado limited liability company with its principal place of business in
`
`Denver, Colorado. Among other things, it has been engaged in the business of providing financial
`
`services, namely commercial money lending, throughout the United States.
`
`7.
`
`Upon information and belief, Defendant is a New York corporation, with its principal
`
`place of business in Uniondale, New York. Defendant provides commercial money lending services
`
`under the name PLATINUM RAPID FUNDING GROUP, LTD. throughout the United States.
`
`GENERAL ALLEGATIONS
`
`8.
`
`9.
`
`Plaintiff owns valuable rights in its RAPID FUNDING trademark.
`
`Plaintiff’s trademark rights derive from long standing and widespread use of the
`
`

`
`Case 1:15-cv—01926—CBS Document 1 Filed 09/04/15 USDC Colorado Page 3 of 11
`
`RAPID FUNDING mark dating back to at least December 15 , 2000.
`
`10.
`
`Plaintiff owns a U.S. trademark registration for the RAPID FUNDING mark. See
`
`U.S. Trademark Reg. N0. No. 4,767,352, a copy of which is attached hereto as Exhibit I.
`
`1 1.
`
`Plaintiff also enjoys broad common law trademark rights in the RAPID FUNDING
`
`mark. Plaintiff’s registered and common law trademark rights in the RAPID FUNDING mark are
`
`referred to herein as the “RAPID FUNDING Mark” or “Plaintiff’s Mark.”
`
`12.
`
`Plaintiff has used the RAPID FUNDING Mark very broadly in interstate commerce in
`
`connection with its commercial money lending services.
`
`13.
`
`Plaintiff has extensively advertised using the RAPID FUNDING Mark throughout the
`
`United States.
`
`14.
`
`As a result of Plaintiff’s long and extensive uses, the RAPID FUNDING Mark has
`
`become well known and highly respected in the commercial lending industry as a distinctive symbol
`
`of the highest quality services.
`
`15.
`
`Plaintiff’s services have been widely advertised and extensively promoted under
`
`Plaintiff’s Mark, and Plaintiff’s Mark has become, through widespread and favorable public
`
`acceptance and recognition, an asset of substantial value as a symbol of Plaintiff, its exceedingly
`
`high quality services, and its goodwill.
`
`16.
`
`Plaintiff enjoys remarkable success and an enviable reputation in its field in large part
`
`due to its use of, and rights in, Plaintiff’s Mark.
`
`17.
`
`As a result of Plaintiff’s favorable reputation and considerable investment in and
`
`promotion of its goodwill, Plaintiff’s Mark has become synonymous with Plaintiff and its high
`
`

`
`Case 1:15—cv—01926—CBS Document 1 Filed O9/04/15 USDC Colorado Page 4 of 11
`
`quality services.
`
`18.
`
`Plaintiff enforces its rights herein under Plaintiff’ s Mark in order to ensure Plaintiff’s
`
`continued success and excellent reputation.
`
`19.
`
`Plaintiff’ s Mark has been extensively and continuously advertised and promoted to
`
`the public by Plaintiff through various means and modes, including, but not limited to, over the
`
`internet. By reason of such advertising and promotion, Plaintiff has provided quality services to
`
`many customers.
`
`20.
`
`By reason of Plaintiff’ s advertising and promotion under Plaintiff’ s Mark, the public
`
`has come to recognize Plaintiff’s services as solely emanating from Plaintiff.
`
`DEFENDANT’S MISCONDUCT
`
`21.
`
`Defendant is using the name “Platinum Rapid Funding Group Ltd” (“Defendant’s
`
`Tradename”) in connection with commercial lending services.
`
`22.
`
`Defendant’s use of Defendant’s Tradename is confusingly similar to Plaintiff’s Mark.
`
`23.
`
`Defendant’s use of Defendant’s Tradename is likely to cause consumer confusion and
`
`a false association between Plaintiff’s services and the services offered by Defendant, falsely leading
`
`consumers to believe that the services emanate from the source or that Plaintiff and Defendant are
`
`affiliated.
`
`24.
`
`On information and belief, Defendant’s use of Defendant’ s Tradename has resulted
`
`in, and will continue to result in substantial and irreparable harm to Plaintiff, to consumers, and to
`
`others in this District. Such use could tarnish the goodwill associated with Plaintiff’s Mark.
`
`25.
`
`This offering to the public of information, services and/or activities by Defendant
`
`

`
`Case 1:15-cv—O1926—CBS Document 1 Filed O9/O4/15 USDC Colorado Page 5 of 11
`
`under Defendant’s Tradename has been and is, without permission or authority of Plaintiff and
`
`without any legitimate license to the Plaintiff’s Mark.
`
`26.
`
`By using Defendant’s Tradename and offering services thereunder, Defendant has
`
`misrepresented and falsely described to the general public the origin and source of Defendant’s
`
`activities and/or services so as to deceive the public and deliberately create a likelihood of confusion,
`
`cause mistake, or deceive as to the affiliation, connection, or association of Defendant with Plaintiff,
`
`or as to the origin, sponsorship, or approval of Defendant’s services, or commercial activities by the
`
`ultimate purchaser as to both the source and sponsorship of Defendant’s services.
`
`27.
`
`Defendant’s infringing activities are causing, or are likely to cause, irreparable injury
`
`to Plaintiff, including injury to its business reputation.
`
`28.
`
`Defendant’s infringing activities have, do and are likely to permit Defendant to pass
`
`off its services as those of Plaintiff, all to the detriment of Plaintiff, and to the unjust enrichment of
`
`Defendant.
`
`29.
`
`On information and belief, Defendant’s infringing activities have caused, currently
`
`cause, and are likely to continue to cause, damage to Plaintiff by tarnishing the valuable reputation
`
`and image associated with Plaintiff and its services. On information and belief, Defendant has
`
`further passed off its services in interstate commerce, as those of Plaintiff by Defendant’s activities
`
`and many continuing misrepresentations to the consuming public, members of which are likely to,
`
`and do, believe that Defendant’s activities and related services emanate from or are associated with
`
`Plaintiff.
`
`30.
`
`Defendant’s infringing activities result in irreparable harm and injury to Plaintiff.
`
`

`
`Case 1:l5—cv—01926-CBS Document 1 Filed O9/O4/15 USDC Colorado Page 6 of 11
`
`Among other harms, the activities:
`
`A.
`
`Deprive Plaintiff of its absolute right to determine the manner in which its
`
`services are presented to the general public;
`
`B.
`
`C.
`
`Deceive the public as to the origin and sponsorship of such services;
`
`Wrongfully trade upon Plaintiff’s reputation and exclusive rights in its
`
`trademark; and
`
`D.
`
`To the extent Defendant’ s services may be of inferior quality or unauthorized
`
`under law, irreparably harm and injure Plaintiff’s reputation.
`
`31.
`
`Plaintiff is entitled to an injunction restraining Defendant, its officer officers, agents,
`
`servants, employees, and attorneys, and all persons acting in concert with them, from engaging in any
`
`further acts in violation of Plaintiff’s rights.
`
`32.
`
`Plaintiff is further entitled to recover from Defendant the damages, including treble
`
`damages, interest, and attorneys’ fees and costs it has sustained and will sustain and any gains,
`
`profits, and advantages obtained by Defendant as a result of Defendant’s acts. At present, the
`
`amount of such damages, gains, profits, and advantages cannot be fully ascertained by Plaintiff.
`
`CAUSES OF ACTION
`
`COUNT I
`
`(TRADEMARK INFRINGEMENT UNDER § 32 OF THE LANHAM ACT)
`
`33.
`
`Plaintiff realleges and incorporates by reference all of the foregoing paragraphs.
`
`34.
`
`Plaintiff possesses a valid trademark registration issued by the U.S. Patent and
`
`Trademark Office for the RAPID FUNDING Mark.
`
`35.
`
`Defendant’s actions as described above, including Defendant’s use of Defendant’s
`
`

`
`Case 1:15—cv—01926—CBS Document 1 Filed O9/O4/15 USDC Colorado Page 7 of 11
`
`Tradename to promote its business interests, is likely to cause confusion, or to cause mistake, or to
`
`deceive as to the affiliation, connection or association of Defendant with Plaintiff, or as to the origin,
`
`sponsorship or approval of Defendant’s services by Plaintiff. Defendant’s conduct constitutes
`
`trademark infringement in violation of §32 of the Lanham Act (15 U.S.C. §l114).
`
`36.
`
`Defendant’s trademark infringement has caused and continues to cause damage and
`
`irreparable injury to the value and goodwill of Plaintiff’s registered mark, as well as damages and
`
`irreparable injury to Plaintiff’ s business, goodwill, and reputation. Plaintiff has no adequate remedy
`
`at law because damages are continuing and difficult to ascertain. On information and belief,
`
`Defendant’s continued use of Defendant’s Tradename is deliberate, willful, fraudulent, and
`
`constitutes a knowing infringement of Plaintiff’s Mark, and makes this case exceptional.
`
`37.
`
`By virtue of the foregoing, Plaintiff is entitled to an award of treble damages under
`
`§35(a) of the Lanham Act (15 U.S.C. § 1117(a)).
`
`38.
`
`By virtue of the foregoing, Plaintiff is entitled to an award of attorneys’ fees under
`
`§35(a) of the Lanham Act (15 U.S.C. § 1l17(a)).
`
`39.
`
`By virtue of the foregoing, Plaintiff is entitled to injunctive relief and monetary
`
`damages against Defendant.
`
`(TRADEMARK INFRINGEMENT UNDER §43(a)(1)(A) OF THE LANHAM ACT)
`
`COUNT II
`
`40.
`
`Plaintiff realleges and incorporates by reference all of the foregoing paragraphs.
`
`41.
`
`Defendant has used in commerce words, terms, and names that are likely to cause
`
`confusion, or to cause mistake or to deceive, as to whether Defendant is affiliated, connected, or
`
`associated with Plaintiff and/or as to whether Plaintiff originated, sponsored or approved of
`
`

`
`Case 1:15—cv—01926—CBS Document 1 Filed 09/04/15 USDC Colorado Page 8 of 11
`
`Defendant’s activities.
`
`42.
`
`By so acting, Defendant has violated § 43(a) of the Lanham Act (15 U.S.C. §1l25(a)).
`
`43.
`
`Plaintiff has been and will continue to be damaged by such wrongful actions.
`
`44.
`
`Because Defendant’s actions, on information and belief, were intentional, willful,
`
`and/or deliberate, Plaintiff is entitled to an award of treble damages under §35(a) of the Lanham Act
`
`(15 U.S.C.§ll17(a)).
`
`45.
`
`On information and belief, this is an exceptional case, and thus Plaintiff is entitled to
`
`an award of attorneys’ fees under §35(a) of the Lanham Act (15 U.S.C. §ll17(a)).
`
`46.
`
`By reason of the foregoing, Plaintiff is entitled to injunctive relief and monetary
`
`damages against Defendant.
`
`(COMMON LAW TRADEMARK INFRINGEMENT)
`
`COUNT III
`
`47.
`
`Plaintiff realleges and incorporates by reference all of the foregoing paragraphs.
`
`48.
`
`Plaintiff’s Mark is distinctive and has acquired secondary meaning.
`
`49.
`
`Defendant’s actions, as alleged above, infringe Plaintiff’s common law trademark
`
`rights under federal common law, Colorado’s common law, and constitute acts of unfair competition.
`
`50.
`
`By reason of the foregoing, Plaintiff is entitled to injunctive relief and monetary
`
`damages against Defendant.
`
`51.
`
`The infringing activities of Defendant, on information and belief, are willful and
`
`intentional, thereby justifying an award of exemplary and/or punitive damages.
`
`

`
`Case 1:15-cv—01926-CBS Document 1 Filed 09/04/15 USDC Colorado Page 9 of 11
`
`COUNT IV
`
`(UNJUST ENRICHMENT)
`
`52.
`
`Plaintiff realleges and incorporates by reference all of the foregoing paragraphs.
`
`53.
`
`Defendant has benefited from the improper, unfair, and unauthorized use of Plaintiff’ s
`
`Mark and goodwill attendant thereto, as alleged above.
`
`54.
`
`Defendant has knowledge and fully appreciates the benefits it has received from
`
`Plaintiff as a result of such actions.
`
`55.
`
`Defendant would be unjustly enriched if it was permitted to retain the proceeds
`
`obtained from such actions.
`
`5 6.
`
`Equity and good conscience dictate that Defendant be required to account for and turn
`
`over to Plaintiff an amount equal to the reasonable value of the benefits conferred upon it.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff prays for the following judgment against Defendant as follows:
`
`A.
`
`Preliminarily and permanently enjoining Defendant, and all other persons
`
`participating or acting in concert with it, from infringing any of Plaintiff’ s rights in Plaintiffs
`
`Mark.
`
`B.
`
`Preliminarily and permanently enjoining Defendant, and all other persons
`
`participating or acting in concert with it, from using any marks similar to Plaintiff’s Mark
`
`that are likely to cause confusion or mistake as to whether Defendant is authorized by or
`
`affiliated with Plaintiff as to whether Defendant’s services have been authorized or
`
`sponsored by Plaintiff.
`
`C.
`
`Preliminarily and permanently enjoining Defendant, and all other persons
`
`

`
`Case 1:15-cv-01926-CBS Document 1 Filed 09/04/15 USDC Colorado Page 10 of 11
`
`participating or acting in concert with it, from engaging in unfair competition;
`
`D.
`
`Preliminarily and permanently enjoining Defendant, and all other persons
`
`participating or acting in concert with it, from making a false representation as to the source,
`
`sponsorship, approval, or certification of services by its use of Plaintiff’s Mark.
`
`E.
`
`Preliminarily and permanently enjoining Defendant, and all other persons
`
`participating or acting in concert with it, from making a false representation as to affiliation,
`
`connection, association with, or certification by another, by its use of Plaintiff’s Mark.
`
`F.
`
`An order of the Court directing Defendant to deliver up to Plaintiff all literature,
`
`advertisements, business forms, signs, website domains, and any other representations,
`
`regardless of form, which are in, or come to be in, Defendant’s possession, custody, or
`
`control and which bear Plaintiff’ s Mark or any other confusingly similar variant to Plaintiff’s
`
`Mark, and an order from the Court compelling Defendant to notify its direct customers,
`
`agents and representatives that Defendant’s misuse of Plaintiff’s Mark or any confusingly
`
`similar variant is not connected with Plaintiff.
`
`G.
`
`An order of the Court directing Defendant to provide an accounting of all revenues
`
`and profits gained by Defendant while engaging in the acts complained of in this Complaint.
`
`H.
`
`Awarding Plaintiff its actual damages, and awarding Plaintiff any additional damages
`
`that the Court deems just and equitable under the circumstances of this case.
`
`I.
`
`Awarding Plaintiff treble damages in accordance with §35(a) of the Lanham Act (15
`
`U.S.C. §ll17) on the claim asserted under §43(a) of the Lanham Act (15 U.S.C. §1125(a)).
`
`J.
`
`Establishment of a constructive trust consisting of profits from or obtained by
`
`10
`
`

`
`Case 1:15—cv—O1926—CBS Document 1 Filed O9/O4/15 USDC Colorado Page 11 of 11
`
`Defendant’s wrongful acts to be held for the benefit of Plaintiff.
`
`K.
`
`Awarding Plaintiff damages to which it is entitled based upon Defendant’s unjust
`
`enrichment.
`
`L.
`
`Awarding Plaintiff prejudgment interest at the rate established under 26 U.S.C. §
`
`6621(a)(2) from the date of service of the Complaint through the date of judgment;
`
`M.
`
`Awarding Plaintiff its allowable costs and attorneys’ fees; and
`
`N.
`
`Awarding Plaintiff such other and further relief as is just and equitable.
`
`Dated this 4”‘ day of September, 2015.
`
`By:;’.s'/ Jill Jacobs
`Robert W. Hatch, II
`Jill M. Jacobs
`
`Hatch Ray Olsen Sandberg LLC
`730 Seventeenth Street, Suite 200
`
`Denver, Colorado 80202
`
`(303) 298-1800
`
`Attorneys for Plaintzfi’
`
`Plaintiff’s Address:
`
`4100 E. Mississippi Ave. #700
`Denver, CO 80246
`
`11

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket