Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`
`ESTTA756882
`
`07/07/2016
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91227903
`Plaintiff
`Platinum Rapid Funding Group, Ltd.
`THOMAS A TELESCA
`RUSKIN MOSCOU FALTISCHEK PC
`1425 RXR PLAZA, EAST TOWER 15TH FL
`UNIONDALE, NY 11556
`UNITED STATES
`ttelesca@rmfpc.com
`Motion to Suspend for Civil Action
`Thomas A. Telesca
`ttelesca@rmfpc.com
`/Thomas A. Telesca/
`07/07/2016
`PLATINUM Motion to Suspe_20160707130242.pdf(1987597 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA Tracking number:
`
`ESTTA756882
`
`07/07/2016
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91227903
`Plaintiff
`Platinum Rapid Funding Group, Ltd.
`THOMAS A TELESCA
`RUSKIN MOSCOU FALTISCHEK PC
`1425 RXR PLAZA, EAST TOWER 15TH FL
`UNIONDALE, NY 11556
`UNITED STATES
`ttelesca@rmfpc.com
`Motion to Suspend for Civil Action
`Thomas A. Telesca
`ttelesca@rmfpc.com
`/Thomas A. Telesca/
`07/07/2016
`PLATINUM Motion to Suspe_20160707130242.pdf(1987597 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE LINITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 86762993
`For the mark Rapid Funding
`Published in the Official Gazette on March 15,2016
`
`PLATINUM RAPID FUNDING GROUP, LTD.,
`
`- against -
`
`RAPID FUNDING LLC,
`
`Opposer,
`
`Applicant.
`
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1451
`Alexandria, Y A 2231 3- I 45 I
`
`X
`
`X
`
`Opposition No.: 91227 903
`
`OPPOSER'S MOTION TO SUSPEND OPPOSITION PROCEEDING
`
`Pursuant to 37 C.F.R. $ 2.117(a) and TBMP $ 510.02(a), Opposer Platinum Rapid
`
`Funding Group, Ltd. respectfully requests that this Board suspend Opposition No.91227903 (the
`
`"Opposition") in light of a prior civil action pending before the U.S. District Court for the
`
`District of Colorado, Case No. I : l5-cv-01926-CMA-CBS, which will have a direct bearing on
`
`the Opposition. Filed herewith in support of this Motion is Opposer's memorandum of law and
`
`
`
`other supporting documents.
`
`Dated: July 7,2016
`
`Respectfully submitted,
`
`lsl
`Thomas A. Telesca
`Ruskin Moscou Faltischek, P.C.
`1425 RXR Plaza
`East Tower, 15th Fl,
`Uniondale, New York 11556
`(st6) 663-6670
`Fax: (516) 663-6870
`E-mail : ttelesca@rm,fu c. com
`
`Attorney for Opposer,
`Platinum Rapid Funding Group, Ltd,
`
`
`
`CERTIF'ICATE OF SERVICE
`
`The undersigned, an attorney, hereby certifies that he served a copy of the foregoing
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`OPPOSER'S MOTION TO SUSPEND OPPOSITION PROCEEDING by first class mail on
`
`July 7, 2016, upon:
`
`Jill M. Jacobs
`Hatch Ray Olsen Sandberg LLC
`730 ITth Street, Ste 200
`Denver, CO 80202
`
`lsl
`Thomas A. Telesca
`Attorney for Opposer
`
`641360
`
`
`
`IN THE I.INITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 86762993
`For the mark Rapid Funding
`Published in the Official Gazette on March 15,2016
`
`Opposition No.: 91227 903
`
`PLATINUM RAPID FUNDING GROUP, LTD.,
`
`- against -
`
`RAPID FUNDING LLC,
`
`Opposer
`
`Applicant
`
`Trademark Trial and Appeal Board
`U,S. Patent and Trademark Offrce
`P.O. Box 1451
`Alexandria, V A 223 13 -1 451
`
`OPPOSER'S MEMORANDUM OF LA\ry IN SUPPORT OF ITS
`MOTION TO SUSPEND OPPOSITION PROCEEDING
`
`I.
`
`INTRODUCTION
`
`Opposer Platinum Rapid Funding Group, Ltd. ("Platinum") submits this Memorandum of
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`Law in Support of its Motion to Suspend Opposition Proceeding No. 91227903 (the
`
`"Opposition") brought by it against Rapid Funding LLC ("Applicant"), in light of a prior civil
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`action pending before the U.S. District Court for the District of Colorado, Case No. 1 :15-cv-
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`01926-CMA-CBS. See Complaint, attached as Exhibit 1, and Answer with Counterclaims,
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`attached as Exhibit 2. As the outcome of that civil action will have a direct bearing on the
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`Opposition, implicates the same trademark, and contains identical and similar issues regarding
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`registration, Platinum respectfully requests that the Board suspend the Opposition in order to
`
`I
`
`
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`avoid duplicative proceedings that will waste resources of the Board, the parties, and the District
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`Court, as well as to avoid the possibility of inconsistent results.
`II.
`
`STATEMENT OF FACTS
`
`The facts of this motion involve Platinum's trademark application, which is currently
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`suspended as a result of a prior decision by the Board, Applicant's existing trademark
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`registration for its design mark, and the subject application for Applicant's word mark.
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`On January 6,2015, Platinum filed a use-based trademark application for the
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`PLATINUM RAPID FUNDING GROUP, LTD design mark ("Platinum's Mark") set forth
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`below in International Class 36 in connection with the following services: "Cash advance
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`services for businesses and merchants; Providing working capital; Providing working capital
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`financing to small businesses and small business owners."
`
`lJTTT
`Rag1lt Fundfrlg Ercup, Ld
`
`On April 20,2015, the United States Patent and Trademark Offrce ("USPTO") issued an
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`Office Action in connection with the application for Platinum's Mark. The USPTO stated,
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`"[a]pplicant must disclaim the wording 'RAPID FLINDING GROUP, LTD' because it merely
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`describes an ingredient, quality, characteristic, function, feature, pu{pose, or use of applicant's
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`goods andlor services, and thus is an unregistrable component of the mark." The USPTO further
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`stated, "[a]n applicant may not claim exclusive rights to terms that others may need to use to
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`describe their goods and/or services in the marketplace." In response to the April 2015 Office
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`Action, Platinum disclaimed the exclusive right to use "RAPID FIINDING" as well as
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`..GROUP, LTD."
`
`2
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`
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`Indeed, the term "rapid" is regularly disclaimed by trademark applicants. The word
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`"rapid" was disclaimed in connection with RAPID CHARGE, RAPID RODENT REMOVAL,
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`ECKERD RAPID SAFETY FEEDBACK, B.R.A.T. BRUSH RAPID ATTACK TRUCK,
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`RAPID-C YCLE DES IGN, RAPID-C YCLE DIAGNO STIC, EMERGENCY RAPID
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`EVAPORATIVE COOLING SYSTEM, RAPID RESPONSE TEAM ROOFING, and RAPID
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`ALERT NETWORK, to name a few.
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`Applicant currently offers certain financial services under the following RAPID
`
`FLINDING design mark:
`
`@
`
`Ra pid Fu nd ing
`
`On July 7,2015, the Trademark Office issued U.S. Registration No. 4,767}52 for that
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`mark to Applicant for use in connection with its "financial services, namely, money lending, loan
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`financing, real estate lending, financial consulting, investment of funds for others, factoring
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`agencies, commercial lending services" in International Class 36 ("Applicant's Design Mark").
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`For its registration, Applicant was only required to disclaim the exclusive right to use the word
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`"funding."
`
`Applicant, like Platinum, should have also been required to disclaim "rapid." According
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`to its website, Applicant offers: "Fast, Flexible Funding." Under the "About Us" link on the
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`website it states, "Rapid Funding LLC is a direct source of capital that provides quick and
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`meaningful solutions for a vast array of circumstances." The "About Our Loans" link further
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`states, "Our fast, flexible, and creative hnancing solutions target borrowers looking for
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`immediate approval on a secured or asset-based loan." In short, Applicant offers rapid funding
`
`J
`
`
`
`under its RAPID FUNDING design mark, as was confirmed by discovery in a pending
`
`trademark action in the District of Colorado. Thus, the words or phrase "rapid funding" are
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`generic or merely descriptive of Applicant's seryices and are not entitled to trademark protection
`
`under Section 2(e)(1) of the Lanham Act, 15 U.S.C. $ 1052(eX1).
`
`On September 4,2015, Applicant flrled a federal civil complaint in the District of
`
`Colorado against Platinum. See Exhibit 1, In its Complaint, Applicant alleges causes of action
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`for trademark infringement and unjust enrichment, seeking injunctive and monetary relief.
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`On September 21,2015, Applicant filed the subject application, Serial No. 86762993,for
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`the standard character mark RAPID FLINDING ("Applicant's Vy'ord Mark").
`
`On November 2,2075, Applicant hled an Opposition No.91224661 against the
`
`registration of Platinum's Mark ("Applicant's Opposition") based on the same allegations in the
`
`federal litigation of likelihood of confusion between Applicant's Design Mark and Platinum's
`
`Mark.
`
`On December 29,2016, Platinum answered the Complaint in the District Court denying
`
`the material allegations against it and counterclaimed to cancel Applicant's Design Mark
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`registration or, alternatively, to amend that registration to disclaim the exclusive right to use the
`
`word "rapid" in addition to the word "funding," See Exhibit 2,
`
`On January 13,2016, Platinum moved to suspend Applicant's Opposition Q'[o.
`
`9122466I) on the grounds that the District Court proceeding will necessarily resolve all issues
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`raised in that opposition proceeding. On February 29, the Board agreed and suspended
`
`Applicant's Opposition (No. 91224661).
`
`On March 15,2016, Applicant's Word Mark was published for opposition.
`
`4
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`
`
`On May 16,2016, in order to be consistent with its position in the pending federal
`
`litigation that Applicant's RAPID FUNDING marks are generic, or merely descriptive, and not
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`entitled to trademark protection under the Lanham Act, Platinum hled the subject Opposition
`
`No.91221903.
`
`On May 3I,2016, the parties completed fact discovery in the federal litigation in the
`
`District of Colorado, Expert discovery will be completed this summer, and Platinum intends to
`
`move for summary judgment on or before September 7,2016.
`
`On June 24,2016, Applicant's submitted an answer in the subject Opposition No.
`
`91227903.
`
`On June 27,2016, in light of the Board's decision to suspend Applicant's Opposition
`
`Q.{o. 91224661) in connection with Platinum's Mark, Platinum sought Applicant's consent to
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`suspen{ the subject Opposition No.91227903, Applicant declined, prompting the within Motion
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`to Suspend.
`
`The prior opposition proceeding involving Platinum's Mark, the subject opposition
`
`proceeding involving Applicant's Word Mark, and the District Court litigation are all redundant
`
`and overlapping. Thus, this later-filed Opposition proceeding should be suspended.
`III. ARGUMENT
`
`The argument in favor of suspending the within Opposition No. 91227 903 is the same as
`
`the one accepted by the Board when it suspended Applicant's Opposition (Ì.tro. 91224661) to the
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`registration of Platinum's Mark.
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`It is within the Board's broad discretion to suspend opposition proceedings when the final
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`resolution of a civil action "may have a bearing on" issues presented in the opposition
`
`proceeding, 37 C.F,R. $ 2. I 17(a); see also TBMP $ 510.02(a) ("Whenever it comes to the
`
`5
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`
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`attention of the Board that aparty or parties to a case pending before it are involved in a civil
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`action which may have a bearing on the Board case, proceedings before the Board may be
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`suspended until final determination of the civil action.").
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`A. Because the District Court Has the Power To Cancel or Amend
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`"In any action involving a registered mark the court may . . . order the cancellation of
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`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, [nc.,2007
`
`WL 1346578 (D. Colo., }r'4ay7,2007). Thus, federal courts have concurrent jurisdictionwiththe
`
`Board over issues relating to the registration and cancellation of trademarks.
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`In the federal litigation, Platinum has sought to cancel or amend Applicant's Design
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`Mark registration because that mark is generic or, at best, merely descriptive. Platinum's
`
`Answer with Counterclaims states:
`
`1. Platinum's First and Second Counterclaims seek cancellation of
`Counterclaim Defendant's registration of the RAPID FLJNDING
`design mark or, in the alternative, an amendment of Counterclaim
`Defendant's registration of the RAPID FUNDING design mark
`requiring Counterclaim Defendant to disclaim the term "rapid" in
`addition to "funding."
`
`rk*rk
`
`FIRST COUNTERCLAIM
`(Cancellation of RAPID FUNDING Mark)
`
`rl. ,F rt
`
`27. The phrase "rapid funding," and more particularly, the term
`"rapid" in the RAPID FI-INDING design mark are generic. Those
`words are commonly used descriptors by similar service providers,
`including Rapid Funding NYC, Merchant Rapid Funding, Rapid
`Capital Funding, and Rapid Advance.
`
`6
`
`
`
`28. Alternatively, the phrase "rapid funding" is, at best, merely
`descriptive of the quality, characteristic, function, feature, pu{pose,
`or use of the financial service offered by Counterclaim Defendant,
`to wit, "fastr" "quickr" or "immediate" funding
`
`29. Thus, Counterclaim Defendant's alleged trademark RAPID
`FUNDING with design is not entitled to registration because it is
`generic or, at best, merely descriptive under Section 2(e)(1) of the
`Lanham Act, 15 U.S.C. $ 1052(eXl)
`
`¡|r {. ¡fi
`
`SECOND COUNTERCLAIM
`(Amendment of Trademark registrationl
`
`rft * ¡1.
`
`33. Because the term "rapid" is generic, and the phrase "rapid
`funding" is, at best, merely descriptive of the quality,
`characteristic, function, feature, pu{pose, or use of the financial
`services offered by Counterclaim Defendant, the Court should
`direct the USPTO to amend the Principal Registration issued under
`U.S. Trademark Registration No. 4,767,352 for RAPID FUNDING
`with design to disclaim exclusive right to use the word "rapid" in
`addition to the word "funding," thereby marking Counterclaim
`Defendant's current registration consistent with its original, 2002
`registration, Sterling National Bank's 2008 application, and
`Platinum's pending trademark application
`
`Likewise, Platinum opposes Applicant's Word Mark registration on the grounds that "the words
`
`or phrase 'rapid funding' are generic or merely descriptive of Applicant's services and are not
`
`entitled to trademark protection under Section 2(eXl) of the Lanham Act, l5 U,S.C. $
`
`1052(e)(1)."
`
`If the District Court in Colorado cancels or amends Applicant's Design Mark registration
`
`because the word portion of Applicant's Design Mark i.e., RAPID FUNDING is generic or
`
`merely descriptive, this Opposition becomes moot. The District Court's decision would equally
`
`apply to Applicant's Word Mark application and that application will be subject to, and bound
`
`by, any such decision by the District Court.
`
`7
`
`
`
`B. Suspension of the Board Proceeding
`Will Avoid Duplicative Proceedinss
`
`V/hile the Board may hear Applicant's claim regarding the validity of its trademark
`
`application in this Opposition proceeding, the Board's jurisdiction is limited to that claim. The
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`District Court, on the other hand, has jurisdiction to hear all of the applicable issues. The
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`effrcient resolution of all disputes in a single forum is particularly valuable where, as here, the
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`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
`
`(2dCir.1988); and TBMP $ 510.02(a).
`
`Furthermore, the parties have completed fact discovery in the Colorado District Court
`
`litigation. Expert discovery is ongoing, and Platinum intends to move for summary judgment by
`
`September 1,2016, In this Opposition, Applicant answered less than two weeks ago and there
`
`has been no discovery.
`
`In instances such as this, the Board's policy favoring efficient adjudication of all issues in
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`a single forum, rather than duplicative proceedings in various forums, supports suspension of the
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`present Opposition proceeding . See Black Box Corp, of Penn. v. Better Box Comms. Ltd.,2002
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`TTAB LEXIS 253, at *4 (T.T.4.8.2003) (udicial 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 the claims in the
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`current Opposition proceeding will be adjudicated in the pending litigation before the District
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`Court. Thus, the current Opposition should be suspended in accordance with 37 C.F.R. $
`
`2.117(a) and TBMP $ s10.02(a).
`
`8
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`
`
`IV. CONCLUSION
`
`For the reasons set forth aþove, Platinum respectfully requests that the Board suspend
`
`Opposition No.91227903 pending the resolution of the federal civil action before the United
`
`States District Court for the District of Colorado, Case No. l:15-cv-01926-CMA-CBS.
`
`Dated: July7,2016
`
`Respectfully submitted,
`
`lsl
`Thomas A. Telesca
`Ruskin Moscou Faltischek, P.C
`1425 RXR Plaza
`East Tower, 15th Fl.
`Uniondale, New York 11556
`(sr6) 663-6670
`Fax: (516) 663-6870
`E-mail : ttelesca@rmfpc, com
`
`Attorney for Opposer,
`Platinum Rapid Funding Group, Ltd
`
`641359
`
`9
`
`
`
`EXHIBIT 1
`
`EXHIBIT 1
`
`
`
`Case 1:15-cv-01926-CBS Document L Filed QglO lLS USDC Colorado Page L of L1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF ÇOLORADO
`
`Civil Action No.
`
`RAPID FUNDING LLC, a Colorado limited liability company,
`
`Plaintiff;
`
`PLATINUM RAPID FUNDING GROUP, LTD, a New York corporation,
`
`Defendant.
`
`COMPLAINT
`
`Plaintiff, Rapid Funding LLC, aColorado limited liability company ("Plaintiff '), through its
`
`undersigned counsel, Hatch Ray Olsen Sandberg LLC, hereby submits the following Complaint
`
`against Platinum Rapid Funding Group, Ltd, aNew York corporation ("Defendant").
`L
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`This is an action for trademark infringement, false designation of origin, unfair
`
`competition, and related claims against Defendant based on Defendant's unauthoizedandunlawful
`
`infringement, of Plaintiff's RAPID FUNDING trademark. Plaintiff brings this action under the
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`Federal Lanham Act and common law to recover damages and enjoin Defendant's unlawful conduct
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`and for other relief as set forth in this Complaint.
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`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
`
`I
`
`
`
`Case 1-:15-cv-01926-CBS Document 1- Filed 091041L5 USDC Colorado Page 2 of tL
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`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
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`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.
`
`6.
`
`Venue is proper in this District pursuant to 28 U,S,C. $ 1391,
`
`THE PARTIES
`
`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
`
`Plaintiff owns valuable rights in its RAPID FUNDING trademark.
`
`Plaintiff's trademark rights derive from long standing and widespread use of the
`
`8 9
`
`2
`
`
`
`Case L:15-cv-01926-CBS Document 1- Filed Ogl04lI5 USDC Colorado Page 3 of 11
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`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. No. No. 4,767,352, a copy of which is attached hereto as Exhibit 1.
`11. 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 verybroadly 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
`
`J
`
`
`
`Case 1:15-cv-01-926-CBS Document 1- Filed OglO4ltS USDC Colorado Page 4 of LL
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`quality services,
`I 8 . 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 MIS CONDUCT
`
`2L 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 Plaintifl 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
`
`4
`
`
`
`Case 1:15-cv-01926-CBS Document L Filed OglO lLS USDC Colorado Page 5 of l-1-
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`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 ofconfusion,
`
`cause mistake, or deceive as to the affiliation, connection, or association of Defendant with Plaintifl
`
`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, ineparable 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
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`cause, and are likely to continue to cause, damage to Plaintiff by tarnishing the valuable reputation
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`and image associated with Plaintiff and its services. On information and belief, Defendant has
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`further passed off its services in interstate commerce, as those of Plaintiff by Defendant's activities
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`and many continuing misrepresentations to the consuming public, members of which are likely to,
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`and do, believe that Defendant's activities and related services emanate from or are associated with
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`Plaintiff,
`30. Defendant's infringing activities result in irreparable harm and injury to Plaintiff.
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`5
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`Case 1:15-cv-01926-CBS Document L Filed Ogl04lI5 USDC Colorado Page 6 of 1L
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`Among other harms, the activities:
`A.
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`Deprive Plaintiff of its absolute right to determine the manner in which its
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`services are presented to the general public;
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`B.
`C.
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`Deceive the public as to the origin and sponsorship of such services;
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`V/rongfully trade upon Plaintiff's reputation and exclusive rights in its
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`trademark; and
`D.
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`To the extent Defendant's services may be of inferior quality or unauthorized
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`under law, irreparably harm and injure Plaintiff's reputation.
`31. Plaintiff is entitled to an injunction restraining Defendant, its officer officers, agents,
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`servants, employees, and attorneys, and all persons acting in concert with them, from engaging in any
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`further acts in violation of Plaintiff's rights.
`32. Plaintiff is further entitled to recover from Defendant the damages, including treble
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`damages, interest, and attorneys' fees and costs it has sustained and will sustain and any gains,
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`profits, and advantages obtained by Defendant as a result of Defendant's acts. At present, the
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`amount of such damages, gains, profits, and advantages cannot be fully ascertained by Plaintiff.
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`CAUSES OF ACTION
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`COUNT I
`(TRADEMARK INFRINGEMENT UNDER $ 32 OF THE LANHAM ACT)
`33. Plaintiffrealleges and incorporates by reference all ofthe foregoing paragraphs.
`34. Plaintiff possesses a valid trademark registration issued by the U,S. Patent and
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`Trademark Office for the RAPID FUNDING Mark.
`35. Defendant's actions as described above, including Defendant's use of Defendant's
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`6
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`Case l-:15-cv-01-926-CBS Document 1- Filed OglO4lLS USDC Colorado Page 7 ot IL
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`Tradename to promote its business interests, is likely to cause confusion, or to cause mistake, or to
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`deceive as to the affiliation, connection or association of Defendant with Plaintiff, or as to the origin,
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`sponsorship or approval of Defendant's services by Plaintiff. Defendant's conduct constitutes
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`trademark infringement in violation of $32 of the Lanham Act (15 U,S.C. $ 1114).
`36. Defendant's trademark infringement has caused and continues to cause damage and
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`irreparable injury to the value and goodwill of Plaintiff's registered mark, as well as damages and
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`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,
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`Defendant's continued use of Defendant's Tradename is deliberate, willful, fraudulent, and
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`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
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`$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
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`$35(a) of the Lanham Act (15 U.S.C. $ 1117(a)).
`39. By virtue of the foregoing, Plaintiff is entitled to injunctive relief and monetary
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`damages against Defendant,
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`COUNT II
`(TRADEMARK INFRINGEMENT UNDER $A3(AX1XA) OF THE LANHAM ACT)
`40. Plaintiffrealleges and incorporates by reference all ofthe foregoing paragraphs.
`41. Defendant has used in commerce words, terms, and names that are likely to cause
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`confusion, or to cause mistake or to deceive, as to whether Defendant is affiliated, connected, or
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`associated with Plaintiff and/or as to whether Plaintiff originated, sponsored or approved of
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`7
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`Case 1:l-5-cv-01-926-CBS Document 1 Filed Ogl04lI5 USDC Colorado Page I of 1L
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`Defendant' s activities.
`42. By so acting, Defendant has violated $ a3(a) of the Lanham Act (15 U.S.C, $ 1125(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,
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`and/or deliberate, Plaintiff is entitled to an award of treble damages under $35(a) of the Lanham Act
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`(1s U.S.C. $1117(a)),
`45. On information and belief, this is an exceptional case, and thus Plaintiff is entitled to
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`an award of attorneys' fees under $35(a) of the Lanham Act (15 U.S.C. $ I I 17(a)).
`46. By reason of the foregoing, Plaintiff is entitled to injunctive relief and monetary
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`damages against Defendant.
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`COUNT III
`(COMMON LAW TRADEMARK INFRINGEMENT)
`47, Plaintiffrealleges and incorporates by reference all ofthe 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
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`rights under federal common law, Colorado's common law, and constitute acts of unfair competition.
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`50. By reason of the foregoing, Plaintiff is entitled to injunctive relief and monetary
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`damages against Defendant.
`51. The infringing activities of Defendant, on information and belief, are willful and
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`intentional, thereby justifying an award of exemplary and/or punitive damages.
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`8
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`Case 1:15-cv-01926-CBS Document l- Filed Ogl) lLS USDC Colorado Page 9 of L1-
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`COUNT IV
`(UNJUST ENRICHMENT)
`52. Plaintiffrealleges and incorporates by reference all ofthe foregoing paragraphs.
`53 . Defendant has benefited from the improper, unfair, and unauthorized use of Plaintiff's
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`Mark and goodwill attendant thereto, as alleged above.
`54. Defendant has knowledge and fully appreciates the benefits it has received from
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`Plaintiff as a result of such actions.
`55. Defendant would be unjustly enriched if it was permitted to retain the proceeds
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`obtained from such actions.
`56. Equity and good conscience dictate that Defendant be required to account for and turn
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`over to Plaintiff an amount equal to the reasonable value of the benefits conferred upon it.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays for the following judgment against Defendant as follows:
`A, Preliminarily and permanently enjoining Defendant, and all other persons
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`participating or acting in concert with it, from infringing any of Plaintiff s rights in Plaintiff s
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`Mark,
`B. Preliminarily and permanently enjoining Defendant, and all other persons
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`participating or acting in concert with it, from using any marks similar to Plaintiff's Mark
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`that are likely to cause confusion or mistake as to whether Defendant is authorized by or
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`affiliated with Plaintiff as to whether Defendant's services have been authorized or
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`sponsored by Plaintiff,
`C, Preliminarily and permanently enjoining Defendant, and all other persons
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`9
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`Case L:15-cv-01-926-CBS Document 1- Filed O9lO4lL5 USDC Colorado Page L0 of Ll-
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`participating or acting in concert with it, from engaging in unfair competition;
`D. Preliminarily and permanently enjoining Defendant, and all other persons
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`participating or acting in concert with it, from making a false representation as to the source,
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`sponsorship, approval, or certification of services by its use of Plaintiff's Mark.
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`E. Preliminarily and permanently enjoining Defendant, and all other persons
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`participating or acting in concert with it, from making a false representation as to affiliation,
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`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,
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`advertisements, business forms, signs, website domains, and any other representations,
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`regardless of form, which are in, or come to be in, Defendant's possession, custody, or
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`control and which bear Plaintiff's Mark or any other confusingly similar variant to Plaintiff's
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`Mark, and an order from the Court compelling Defendant to notify its direct customers,
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`agents and representatives that Defendant's misuse of Plaintiff's Mark or any confusingly
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`similar variant is not connected with Plaintiff.
`G. An order of the Court directing Defendant to provide an accounting of all revenues
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`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
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`that the Court deems just and equitable under the circumstances of this case.
`L
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`Awarding Plaintiff treble damages in accordance with $35(a) of the Lanham Act (15
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`U.S.C, $ I 1 17) on the claim asserted under $43(a) of the Lanham Act (15 U.S,C. $ 1 125(a)).
`J.
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`Establishment of a constructive trust consisting of profits from or obtained by
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`l0
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`Case l-:1-5-cv-01926-CBS Document L Filed OglO4lIS USDC Color
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