Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA869662
`01/08/2018
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91235411
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Plaintiff
`Facility Pro, Inc.
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`DAVID L SIGALOW
`ALLEN DYER DOPPELT & GILCHRIST PA
`255 S ORANGE AVENUE, SUITE 1401
`ORLANDO, FL 32801
`UNITED STATES
`Email: dsigalow@allendyer.com
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`Motion to Suspend for Civil Action
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`Ryan T. Santurri
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`rsanturri@allendyer.com, mleavy@allendyer.com
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`/Ryan T. Santurri/
`
`01/08/2018
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`Attachments
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`Motion to Suspend Proceedings.pdf(5108039 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Trademark Application Serial No. 87/240404
`Published in the Official Gazette on March 7, 2017
`For the mark FACILITIES PRO SWEEP
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`FACILITY PRO, INC.,
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`Opposer,
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`Opposition No. 91235411
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`
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`vs.
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`FACILITIES PRO-SWEEP, INC.
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`Applicant.
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`OPPOSER’S MOTION TO SUSPEND PROCEEDINGS PENDING THE OUTCOME OF
`FEDERAL COURT LITIGATION
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`Opposer, Facility Pro, Inc. (“FPI”), through the undersigned counsel, hereby moves the
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`Trademark Trial and Appeal Board (“Board”) to suspend this cancellation proceeding pending
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`the outcome of a civil action involving FPI and Petitioner, Facilities Pro-Sweep, Inc. pending in
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`the U.S. District Court, Southern District of Florida, Case No. 17-60675-CIV-DIMITROULEAS,
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`and states as follows:
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`Previously, Applicant moved to dismiss the notice of opposition, and after an Order on
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`the motion, Applicant filed an amended notice. Rather than continuing to expend resources in
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`this action when related litigation is ongoing, FPI files this motion to stay in an abundance of
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`caution. The civil action (a copy of the Complaint is attached as Exhibit A) was filed in the U.S.
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`District Court for the Southern District of Florida, and the claims bear on the issues presented to
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`the Board. Applicant, the Plaintiff in the civil action, alleges claims of infringement of its marks
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`by the use of the FPI marks in this cancellation action.
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`It is the policy of the Board to suspend cancellation proceedings when the parties are
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`involved in a civil action which may be dispositive of or have a bearing on the Board’s
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`proceedings. TBMP §510.02, citing 37 C.F.R. § 2.117(a); see also New Orleans Louisiana Saints
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`LLC and NFL Properties LLC v. Who Dat?, Inc., 99 USPQ2d 1550 (TTAB 2011) (civil action
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`need not be dispositive of Board proceeding, but only needs to have bearing on issues before the
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`Board); General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933 (TTAB 1992);
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`Toro Co. v. Hardigg Industries, Inc., 187 USPQ 689 (TTAB 1975); Tokaido v. Honda
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`Associates, Inc., 179 USPQ 861 (TTAB 1973). This policy makes perfect sense. When a civil
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`action in a federal district court involves issues in common with those in a proceeding before the
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`Board, the decision of the district court is often binding on the Board. See TBMP § 510.02(a);
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`Goya Foods Inc. v. Tropicana Products Inc., 846 F.2d 848 (2d Cir. 1988) (PTO registration
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`would not affect the legal standard applied in infringement claim or the scope of the required
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`fact-finding; the district court will still independently have to determine the validity of the mark).
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`While the Supreme Court recently found that TTAB decisions can be binding on a federal court
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`(B&B Hardware Inc. v. Hargis Industries, 135 S.Ct. 1293, 1310 (2015)), under no circumstances
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`could this Board’s decision resolve all issues in the pending federal litigation, which encompass
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`the parties’ claims in this proceeding. As such, there is no reason for the parties or the Board to
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`spend time and resources on this dispute when the resolution at the Board will not resolve the
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`federal litigation between the same parties.
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`Equitable considerations favor suspension of the proceeding because conducting two
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`trials involving the same parties and the same issues will undoubtedly result in duplication of
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`effort and expense. There is also the potential that simultaneous proceedings on these issues
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`2
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`

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`could result in inconsistent results. Accordingly, FPI respectfully requests that the Board suspend
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`these proceedings until final disposition of the civil action noted above.
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`Respectfully submitted January 8, 2018.
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`/s/Ryan T. Santurri
`Ryan T. Santurri, Florida Bar No. 015698
`rsanturri@allendyer.com
`Allen, Dyer, Doppelt & Gilchrist P.A.
`255 South Orange Avenue, Suite 1401
`Orlando, FL 32801
`Telephone: (407) 841-2330
`Facsimile: (407) 841-2343
`Attorneys for Registrant, Facility Pro, Inc.
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`3
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that a true and complete copy of the foregoing has been served by
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`email on January 8, 2018 to:
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`John F. Bradley, Esq.
`jb@bradlegal.com
`Bradley Legal Group, P.A.
`15 Northeast 13th Avenue
`Ft. Lauderdale, FL 33301
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`/s/ Ryan T. Santurri
`Ryan T. Santurri
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`4
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`EXHIBIT A
`EXHIBIT A
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`

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`Case 0:17-cv-60675-WPD Document 1 Entered on FLSD Docket 04/06/2017 Page 1 of 17
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`
`FACILITIES PRO-SWEEP, INC.,
`a Florida corporation,
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`CASE NO._________________________
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`Plaintiff,
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`v.
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`FACILITY PRO, INC., a Florida corporation,
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`Defendant.
`_____________________________________/
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`VERIFIED COMPLAINT
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`Plaintiff, FACILITIES PRO-SWEEP, INC. (“Plaintiff”), sues Defendant, FACILITY
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`PRO, INC. (“Defendant”), and alleges:
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`INTRODUCTION
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`1.
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`This is an action for infringement of Plaintiff’s valuable service marks, for false
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`designation of origin, and for unfair competition under federal and Florida statutory and common
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`law, involving Defendant’s willful acts by virtue of Defendant’s use of its service marks,
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`including
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`FACILITY PRO and
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`FACILITY PRO THE MAINTENANCE
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`PROFESSIONALS (and design) (“Defendant’s Marks”), which are nearly identical, highly
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`similar, and/or confusingly similar to Plaintiff’s service marks, including FACILITIES,
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`FACILITIES PRO-SWEEP, and FACILITIES PRO-SWEEP (and design) (“Plaintiff’s
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`Marks”).
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`2.
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`Plaintiff is in the business of property maintenance, including, without limitation,
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`cleaning, upkeep, and maintenance of commercial and industrial facilities and their surroundings
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`and parking lots, as well as roads, streets, sidewalks, curbs, dumpsters, etc. (“Plaintiff’s
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`Services”).
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`1
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`

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`Case 0:17-cv-60675-WPD Document 1 Entered on FLSD Docket 04/06/2017 Page 2 of 17
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`3.
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`4.
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`Defendant is in an identical business (“Defendant’s Services”).
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`Defendant conducts and/or solicits business in Florida, and set up its principal
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`place of business only approximately four (4) miles away from Plaintiff’s principal place of
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`business.
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`5.
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`Defendant responded to Plaintiff’s demand to cease and desist by denying its
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`infringement and refusing to comply with Plaintiff’s demand.
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`6.
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`Therefore, Defendant’s willful infringement was intentional.
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`JURISDICTION AND VENUE
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`7.
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`This Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C.
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`§§ 1331 and 1338(a)-(b), in that this action arises under the federal Lanham Act/Trademark Act,
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`15 U.S.C. §1051 et seq., federal common law, and other federal law.
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`8.
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`This Court has personal jurisdiction over Defendant, and venue is proper in the
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`Southern District of Florida (“District”) pursuant to 28 U.S.C. §§ 1391 (b) and (c) because
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`Defendant resides and/or maintains its principal place of business in the District, Defendant is
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`doing business in the District, and a substantial part of the events or omissions giving rise to the
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`claims occurred in the District.
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`9.
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`Supplemental jurisdiction is proper for the state law claims under 28 U.S.C. §
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`1367(a) as the claims are so related to the federal claims that they form part of the same general
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`nucleus of facts, case, or controversy under Article III of the United States Constitution.
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`PARTIES
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`10.
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`Plaintiff is a corporation duly organized and existing under the laws of the State
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`of Florida, with a principal place of business at 1471 SW 30th Avenue, Suite 12, Deerfield Beach,
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`FL 33442.
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`2
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`

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`Case 0:17-cv-60675-WPD Document 1 Entered on FLSD Docket 04/06/2017 Page 3 of 17
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`11.
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`Defendant is a Florida corporation with a principal place of business at 1300 East
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`Hillsboro Beach Blvd., Suite 200, Deerfield Beach, FL 33441.
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`FACTS COMMON TO ALL CLAIMS FOR RELIEF
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`a. Plaintiff’s Marks
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`12.
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`Plaintiff’s Services consist of power sweeping, maintenance, cleaning, and
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`upkeep of commercial and industrial facilities such as parking lots and garages, retail centers,
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`offices and industrial lots, construction sites, as well as home owner associations, apartment
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`building, and condos. See a printout of Plaintiff’s website, attached as Exhibit “A” hereto.
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`13.
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`Plaintiff has been continuously using the mark FACILITIES PRO-SWEEP
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`since as early as February 15, 2002, within the State of Florida and in U.S. Commerce since as
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`early as June 1, 2002, in connection with Plaintiff’s Services.
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`14.
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`On November 17, 2016, Plaintiff applied for a federal registration of the mark
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`FACILITIES PRO-SWEEP with the United States Patent and Trademark Office ("USPTO")
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`in connection with the following services:
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`Building maintenance and repair; Cleaning of commercial premises; Cleaning of
`industrial premises; Cleaning of roads, streets, parking lots, garages, sidewalks,
`curbs, hedges, dumpster areas, vacant suites, spills, buildings, premises,
`surrounding grounds outside buildings; Handyman service, namely, building
`repair and maintenance; Maintenance of roads, streets, parking lots, garages,
`sidewalks, curbs, hedges, dumpster areas, vacant suites, spills, buildings, premises,
`surrounding grounds outside buildings; Trash clean-up; Repair, maintenance and
`modification of roads, streets, parking lots, garages, sidewalks, curbs, hedges,
`dumpster areas, vacant suites, spills, buildings, premises, surrounding grounds
`outside buildings; Street cleaning; Street sweeping services
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`in International Class 37. See USPTO’s TESS printout of Plaintiff’s U.S. Service Mark
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`Application Serial No. 87/240,404 (“App. No. ‘404”) attached as Exhibit “B” hereto.
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`15.
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`On March 7, 2017, Plaintiff’s App. No. ‘404 was published for opposition on the
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`Principal Register without a disclaimer and reflecting and evidencing the distinctiveness of
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`3
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`

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`Case 0:17-cv-60675-WPD Document 1 Entered on FLSD Docket 04/06/2017 Page 4 of 17
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`Plaintiff’s FACILITIES PRO-SWEEP service mark in connection with the services listed in App.
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`No. ‘404.
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`16.
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`Although Defendant has no meritorious basis for opposing Plaintiff’s App. No.
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`‘404, on March 31, 2017, Defendant requested with the USPTO’s Trademark Trial and Appeal
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`Board (“TTAB”), and was granted, a ninety-day extension of time to oppose same, through and
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`including July 5, 2017, purposely and wrongfully delaying and attempting to prevent registration
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`of App. No. ‘404. See Exhibit “C” hereto.
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`17.
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`Though Defendant has currently filed its extension against App. No. ‘404, despite
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`not having any superior rights for challenging registration of the App. No. ‘404, once registered
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`in due course, Plaintiff’s App. No. ‘404 will confer prima facie evidence of Plaintiff’s
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`nationwide right of exclusive use of FACILITIES PRO-SWEEP and any mark likely to cause
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`confusion with this mark in connection with the services specified in the resulting registration,
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`pursuant to 15 U.S.C. § 1057(b).
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`18.
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`On November 14, 2002, Plaintiff applied for a federal registration of the mark
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`FACILITIES PRO-SWEEP (and design) with the USPTO in connection with parking lot
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`power sweeping and maintenance in International Class 37. The mark appears as follows:
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`19.
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`Said application matured into U.S. Registration No. 3,037,482 for the mark
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`FACILITIES PRO-SWEEP (and design) (“Reg. No. ‘482”) issued on January 3, 2006. See
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`Exhibit “D” hereto.
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`20.
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`Plaintiff’s Reg. No. ‘482 is valid, subsisting, and in full force and effect, and
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`therefore confers prima facie evidence of a nationwide right of exclusive use of FACILITIES
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`4
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`Case 0:17-cv-60675-WPD Document 1 Entered on FLSD Docket 04/06/2017 Page 5 of 17
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`PRO-SWEEP (and design) and any mark likely to cause confusion with this mark in
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`connection with the services specified in the registration, pursuant to 15 U.S.C. § 1057(b).
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`21.
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`Plaintiff’s Reg. No. ‘482 is incontestable, and constitutes conclusive evidence of
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`the validity and registration of the mark, Plaintiff’s ownership, and Plaintiff’s exclusive right to
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`use the mark in commerce. 15 U.S.C. 1115(b). See Exhibit “E” hereto.
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`22.
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`Although initially Reg. No. ‘482 dated January 3, 2006, claimed no exclusive
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`right to use “FACILITIES PRO-SWEEP” apart from the mark as shown, the disclaimed matter
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`has become distinctive of the Plaintiff’s services in accordance with 15 U.S.C. § 1056(b)1, and
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`has not prejudiced or affected Plaintiff’s rights then existing or thereafter arising in the
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`disclaimed matter. Hence, Plaintiff’s App. No. ‘404 was published for opposition on the
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`Principal Register without a disclaimer, reflecting and evidencing the distinctiveness of
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`Plaintiff’s FACILITIES PRO-SWEEP service mark in connection with Plaintiff’s Services.
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`23.
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`Plaintiff also owns Florida Service Mark Registration Document No.
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`T17000000315 for the mark FACILITIES for building/premises repair/maintenance; parking lot,
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`garage, street power sweeping; repair/maintenance of parking lots & surrounding grounds
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`outside buildings, which issued on or about March 22, 2017. A true and correct copy of the
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`Florida Department of State (“FDS”)’s record of Plaintiff’s Registration No. T17000000315 is
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`attached as Exhibit “F” hereto.
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`24.
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`Plaintiff also owns Florida Service Mark Registration Document No.
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`T17000000017
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`for
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`the mark FACILITIES PRO-SWEEP for
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`building/premises
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`repair/maintenance; parking lot, garage, street power sweeping; repair/maintenance of parking
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`(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)(cid:1)
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`1 "No disclaimer. . . shall prejudice or affect the applicant’s or registrant’s rights then existing or
`thereafter arising in the disclaimed matter, or his right of registration on another application if the
`disclaimed matter be or shall have become distinctive of his goods or services." 15 U.S.C. §
`1056(b).
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`5
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`

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`Case 0:17-cv-60675-WPD Document 1 Entered on FLSD Docket 04/06/2017 Page 6 of 17
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`lots & surrounding grounds outside buildings, which issued on or about January 3, 2017. A true
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`and correct copy of Plaintiff’s Certificate of Registration No. T17000000017 from the FDS is
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`attached as Exhibit “G” hereto.
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`25.
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`Plaintiff also owns Florida Service Mark Registration No. T16000000383 for the
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`mark FACILITIES PRO-SWEEP & DESIGN OF WORD "FACILITIES" RED, WORD
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`"PRO-SWEEP" AND TRUCK ARE BLUE, RED HORIZONTAL LINES PRECEDE
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`"PRO-SWEEP" for building/premises repair/maintenance, parking lot power sweeping,
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`repair/maintenance of parking lots & surrounding grounds outside buildings, which issued on
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`April 18, 2016. The word FACILITIES is not disclaimed in the ‘383 Registration. A true and
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`correct copy of Plaintiff’s Certificate of Registration No. T16000000383 from the FDS is
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`attached as Exhibit “H” hereto.
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`26.
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`Plaintiff also owns Florida Service Mark Registration Document No.
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`T17000000048 for
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`the mark FACILITIES PRO-SWEEP & DESIGN OF WORD
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`“FACILITIES” FOLLOWED BY A TRUCK ABOVE HORIZONAL LINES
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`PRECEDING “PRO-SWEEP” for building/premises repair/maintenance; parking lot, garage,
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`street power sweeping; repair/maintenance of parking lots & surrounding grounds outside
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`buildings, which issued on or about January 9, 2017. The wording FACILITIES PRO-SWEEP is
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`not disclaimed in the ‘048 Registration. A true and correct copy of Plaintiff’s Certificate of
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`Registration No. T17000000048 from the FDS is attached as Exhibit “I” hereto.
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`27.
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`Plaintiff has also acquired strong common law service mark rights in Plaintiff’s
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`Marks used in Florida and interstate commerce in connection with Plaintiff’s Services. Plaintiff’s
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`enforceable common law service mark rights were established and vested long before
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`Defendant’s began using its infringing FACILITY PRO mark in May 2014.
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`6
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`Case 0:17-cv-60675-WPD Document 1 Entered on FLSD Docket 04/06/2017 Page 7 of 17
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`28.
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`Plaintiff’s Marks have been continuously used in Florida and interstate commerce
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`to identify and distinguish Plaintiff’s high quality services for an extended period of time, are a
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`symbol of enormous quality, reputation, and goodwill, and have never been abandoned.
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`29.
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`As a result of Plaintiff’s marketing, advertising, and promoting Plaintiff’s
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`Services in commerce throughout Florida and the United States, Plaintiff’s Marks have achieved
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`favorable third party publicity and recognition. The significant provision of Plaintiff’s Services
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`in connection with Plaintiff’s Marks in Florida and the United States have been combined with
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`individual consumer and industry recognition of Plaintiff’s Marks.
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`30.
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`Plaintiff’s Marks are inherently distinctive, but have also become a distinctive
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`indication of the origin and high level of quality of Plaintiff's Services as a result of Plaintiff’s
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`extensive use, marketing, and advertising. Plaintiff’s Marks therefore act as an indication of the
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`source of these services and assures consumers of a high level of quality, appeal, and satisfaction
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`with which Plaintiff’s Services have become synonymous.
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`31.
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`Based on Plaintiff’s long, significant and continuous use of its marks, Plaintiff’s
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`FACILITIES and FACILITIES PRO-SWEEP marks have also become distinctive and
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`enforceable in connection with Plaintiff’s services long before Defendant began using its
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`infringing FACILITY PRO mark in May 2014.
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`32.
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`By continuously using Plaintiff’s Marks for approximately fifteen (15) years in
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`the industry in Florida and interstate commerce, Plaintiff has developed significant and valuable
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`goodwill in Plaintiff’s Marks within the industry and the public, and Plaintiff’s Marks serve as a
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`source identifier for Plaintiff’s high quality services.
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`//
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`//
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`7
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`Case 0:17-cv-60675-WPD Document 1 Entered on FLSD Docket 04/06/2017 Page 8 of 17
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`b. Defendant’s Marks
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`33.
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`Defendant is and has been familiar with Plaintiff’s Services offered under
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`Plaintiff’s Marks.
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`34.
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`Defendant has been in direct competition with Plaintiff within their industry.
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`35.
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`Defendant originally formed its corporation under the name Sweepmasters
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`Sweeping Service, Inc. on approximately April 30, 1999. A true and correct copy of the initial
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`filing with the FDS for the Defendant entity Doc. No. P99000039313 is attached as Exhibit “J”
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`hereto.
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`36.
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`After operating as Sweepmasters Sweeping Service, Inc. for 15 years, on May 9,
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`2014, Defendant amended its name with the FDS to Facility Pro, Inc. A true and correct copy of
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`the amendment filed with the FDS for the Defendant entity Doc. No. P99000039313 is attached
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`as Exhibit “K” hereto.
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`37.
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`The amendment of Defendant’s corporate name was preceded eight days earlier,
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`on May 1, 2014, by the filing of an amended annual report adding new officers. A true and
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`correct copy of the amended annual report filed with the FDS for the Defendant entity Doc. No.
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`P99000039313 is attached as Exhibit “L” hereto.
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`38. Without Plaintiff’s authorization, Defendant has adopted and is using Defendant’s
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`Marks, which are and/or appear nearly identical, highly similar, and/or confusingly similar to
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`Plaintiff’s Marks when seen by consumers, and are offered and provided in connection with
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`identical services through identical trade channels and to identical purchasers.
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`39.
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`On or about February 27, 2015, Defendant applied for a federal registration of the
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`mark FACILITY PRO with the USPTO in connection with “cleaning, upkeep and maintenance
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`of commercial and industrial facilities, namely, providing janitorial, street sweeping, pressure
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`8
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`Case 0:17-cv-60675-WPD Document 1 Entered on FLSD Docket 04/06/2017 Page 9 of 17
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`washing, snow removal, parking lot repair, concrete polishing and striping and waxing of floors”
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`in International Class 37, which was registered on the Supplemental Register on February 16,
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`2016 as U.S. Reg. No. 4,903,047 (“Reg. ‘047”). See Exhibit “M” hereto.
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`40.
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`On or about February 27, 2015, Defendant applied for a federal registration of the
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`mark FACILITY PRO THE MAINTENANCE PROFESSIONALS (and design) with the
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`USPTO in connection with “cleaning, upkeep and maintenance of commercial and industrial
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`facilities, namely, providing janitorial, street sweeping, pressure washing, snow removal, parking
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`lot repair, concrete polishing and striping and waxing of floors” in International Class 37, which
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`was registered on the Principal Register on May 3, 2016 as U.S. Reg. No. 4,949,195 (“Reg.
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`‘195”). See Exhibit “N” hereto. Reg. ‘195 includes a disclaimer of “FACILITY PRO” and ‘THE
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`MAINTENANCE PROFESSIONALS,” and appears as follows:
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`41.
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`Defendant
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`is promoting, advertising, offering, and providing Defendant’s
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`Services under Defendant’s Marks.
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`42.
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`Pursuant to Reg. ‘047 and Reg. ‘195, Defendant began the use of Defendant’s
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`Marks no earlier than May 2014.
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`43.
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`As referenced above, on or about May 8, 2014, Defendant, a Florida corporation
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`formed in 1999, changed its name from “Sweepmasters Sweeping Service, Inc.” to “Facility Pro,
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`Inc.”
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`44.
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`Defendant adopted and commenced its use of Defendant’s Marks long after
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`Plaintiff first used Plaintiff’s Marks in commerce, and after Plaintiff obtained Reg. No. ‘482.
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`9
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`Case 0:17-cv-60675-WPD Document 1 Entered on FLSD Docket 04/06/2017 Page 10 of 17
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`45.
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`By virtue of Plaintiff’s Reg. No. ‘482 and its application therefor dated November
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`14, 2002, and commercial availability of Plaintiff’s services, Defendant had actual knowledge of
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`Plaintiff’s Marks since long before it commenced its use of Defendant’s Marks.
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`46.
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`On or about July 10, 2015, Plaintiff sent Defendant a demand to cease and desist,
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`notifying Defendant of Plaintiff’s rights in Plaintiff’s Marks, and demanding that Defendant
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`cease all use of marks confusingly similar to Plaintiff’s Marks. See Exhibit “O” hereto.
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`47.
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`Defendant failed to comply with the demand, continuing its use of Defendant’s
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`Marks, and, instead, denying its infringement, and refusing compliance. See Exhibit “P” hereto.
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`48.
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`On or about May 12, 2016, Plaintiff sent Defendant an additional demand to cease
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`and desist. See Exhibit “Q” hereto.
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`49.
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`Defendant failed to comply with the demand, continued its use of Defendant’s
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`Marks, and, instead, denied its infringement, and refused compliance.
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`50.
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`Defendant’s acts are willful, done with actual notice of Plaintiff’s exclusive rights
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`to Plaintiff’s Mark, with the willful intent to imitate Plaintiff, to misappropriate, misuse, and
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`palm off of the goodwill, distinctiveness, reputation, and recognition Plaintiff enjoys in the
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`industry by associating Defendant’s Marks with Plaintiff’s Marks, and/or to dilute the distinctive
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`quality of Plaintiff’s Marks.
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`51.
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`Actual confusion as to the source of Defendant’s Services has already occurred
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`and/or is likely to occur in the near future.
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`52.
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`Because of the similarity between the marks used by Plaintiff and Defendant,
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`Defendant’s use of Defendant’s Marks is likely to confuse consumers into believing Defendant’s
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`Services originate from Plaintiff, and/or into assuming that Defendant’s Services are affiliated
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`with, endorsed, or sponsored by Plaintiff.
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`53.
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`As a direct and proximate result of the Defendant’s prior acts complained of
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`herein, Plaintiff has suffered great and irreparable harm and damage which escalates each day
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`Defendant’s acts are permitted to continue.
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`54.
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`Plaintiff has no adequate remedy at law relative to the continued and future harm
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`expected to be suffered for Defendant’s continued conduct.
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`55.
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`All prerequisites to filing suit have been satisfied, have occurred or have been
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`waived.
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`56.
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`As a direct and proximate result of Defendant’s acts complained of herein,
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`Plaintiff has been forced to retain the undersigned firm, and has agreed to pay it a reasonable fee
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`for its services.
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`COUNT I
`FEDERAL UNFAIR COMPETITION/FALSE DESIGNATION OF ORIGIN
`UNDER 15 U.S.C. § 1125(a)
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`57.
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`Plaintiff adopts and incorporates Paragraphs 1-56 as if fully alleged herein.
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`58.
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`Plaintiff has been using Plaintiff’s Marks in conjunction with Plaintiff’s Services
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`in Interstate Commerce long before Defendant commenced its use of Defendant’s Marks, and
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`has developed substantial goodwill therein prior to Defendant’s adoption and use of Defendant’s
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`Marks in commerce.
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`59.
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`Plaintiff’s Marks are distinctive in connection with Plaintiff’s Services and were
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`distinctive long before Defendant began using its infringing Defendant’s Marks.
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`60.
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`Upon information and belief, Defendant’s Services, offered and provided using
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`Defendant’s Marks, have been widely advertised, offered for sale, and distributed throughout
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`Florida and the United States.
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`61.
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`Defendant’s use of the infringing Defendant’s Marks in interstate commerce in
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`competition with Plaintiff is likely to cause, and/or has already caused, mistake, and/or to
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`deceive consumers as to an affiliation, connection, or association of Defendant with Plaintiff,
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`and/or as to the origin, sponsorship, and/or approval of Defendant’s Services or commercial
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`activities by Plaintiff.
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`62.
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`Defendant is therefore engaged in unfair competition and false designation of
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`origin in violation of 15 U.S.C. § 1125(a), and have caused damage to Plaintiff in an amount to
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`be determined at trial. Plaintiff is being irreparably harmed by the infringement and has no
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`adequate remedy at law.
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`63.
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`Absent an entry of an injunction by this Court, Plaintiff will continue to suffer
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`irreparable injury to its goodwill and business reputation, as well as monetary damages.
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`COUNT II
`FLORIDA STATE SERVICE MARK INFRINGMENT UNDER FLA. STAT. § 495.131
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`64.
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`Plaintiff adopts and incorporates Paragraphs 1-56 as if fully alleged herein.
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`65.
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`This is an action for service mark infringement under Fla. Stat. § 495.131 et seq.
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`66.
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`Defendant has intentionally, and without Plaintiff’s consent, used, copied, or
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`imitated Plaintiff’s Marks in connection with the advertising of Defendant’s Services or in
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`connection with such use that is likely to cause confusion, to cause mistake, or to deceive.
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`67.
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`The activities of Defendant described herein infringe upon Plaintiff’s Marks
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`which are the subject of Florida State Service Mark Registrations:
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`a. Florida Reg. Doc. No. T17000000315 for FACILITIES;
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`b. Florida Reg. Doc. No. T17000000017 for FACILITIES PRO-SWEEP;
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`Case 0:17-cv-60675-WPD Document 1 Entered on FLSD Docket 04/06/2017 Page 13 of 17
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`c. Florida Reg. Doc. No. T17000000048 for FACILITIES PRO-SWEEP &
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`DESIGN OF WORD “FACILITIES” FOLLOWED BY A TRUCK
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`ABOVE HORIZONAL LINES PRECEDING “PRO-SWEEP”; and/or
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`d. Florida Reg. Doc. No. T16000000383 for FACILITIES PRO-SWEEP &
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`DESIGN OF WORD "FACILITIES" RED, WORD "PRO-SWEEP"
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`AND TRUCK ARE BLUE, RED HORIZONTAL LINES PRECEDE
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`"PRO-SWEEP");
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`in violation of Fla. Stat. § 495.131 et seq.
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`68.
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`Defendant’s acts have been committed with knowledge that Defendant’s Marks
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`are intended to be used to cause confusion or mistake or to deceive.
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`69.
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`Plaintiff’s Marks are distinctive in connection with Plaintiff’s Services and were
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`distinctive long before Defendant began using its infringing Defendant’s Marks.
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`70.
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`Plaintiff has no adequate remedy at law and is suffering damages and irreparable
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`injury as a result of Defendant’s actions.
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`COUNT III
`FLORIDA COMMON LAW SERVICE MARK INFRINGEMENT
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`71.
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`Plaintiff adopts and incorporates Paragraphs 1-56 as if fully alleged herein.
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`72.
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`This is an action for common law service mark infringement against Defendant
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`based on its promotion, advertisement, offering, and providing of Defendant’s Services bearing
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`Defendant’s Marks, which are nearly identical, highly similar, and/or confusingly similar to
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`Plaintiff’s Marks.
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`73.
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`Plaintiff is the owner of all common law rights in and to Plaintiff’s Mark.
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`74.
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`Plaintiff’s Marks are distinctive in connection with Plaintiff’s Services and were
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`distinctive long before Defendant began using its infringing Defendant’s Marks.
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`75.
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`Specifically, Defendant, upon information and belief, is promoting and otherwise
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`advertising, distributing, offering, and providing Defendant’s Services under Defendant’s Marks.
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`76.
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`Defendant’s infringing activities are likely to cause and/or actually are causing
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`confusion, mistake, and deception among members of the trade and the general consuming
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`public as to the origin and quality of Defendant’s Services, including affiliation with and/or
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`sponsorship by Plaintiff.
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`77.
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`Plaintiff has no adequate remedy at law and is suffering damages and irreparable
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`injury as a result of Defendant’s actions.
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`COUNT IV
`FLORIDA COMMON LAW UNFAIR COMPETITION
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`78.
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`Plaintiff adopts and incorporates Paragraphs 1-56 as if fully alleged herein.
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`79.
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`Defendant’s activities constitute unfair competition with Plaintiff by creating a
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`likelihood of confusion in the trade as to the source or sponsorship of the services or is likely to
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`lead the public to believe Plaintiff is in some way connected to Defendant and is likely to
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`mislead persons in the ordinary course of purchasing the services of Defendant and induce them
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`to believe they are purchasing genuine services of Plaintiff, thereby injuring that reputation and
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`goodwill and unjustly diverting from Plaintiff to Defendant the benefits arising therefrom.
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`80.
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`Defendant’s unlawful activities constitute unfair competition and passing off
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`as proscribed by the common law and have caused Plaintiff to sustain monetary damage, loss,
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`and injury in an amount to be determined at the time of trial.
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`81.
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`Plaintiff reserves the right to amend Count IV of its Complaint to seek punitive
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`damages from Defendant as permitted and authorized by Fla. Stat. § 768.72 after
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`further discovery.
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`82.
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`Defendant’s acts of unfair competition and misappropriation, unless enjoined by
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`this Court, will continue to cause Plaintiff to sustain irreparable damages, loss and injury,
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`for which Plaintiff has no adequate remedy at law.
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`PRAYER FOR RELIEF
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`Plaintiff demands judgment in its favor for:
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`A. A preliminary injunction effective during the pendency of this action, and an order and
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`judgment of this Court, effective permanently thereafter, restraining and enjoining
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`Defendant and its officers, directors, managers, agents, employees, all others acting in
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`concert with them and anyone on notice of this Court’s order, from:
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`a. Using in any manner one or more of Plaintiff’s Marks or any variation thereof
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`confusing similar to Plaintiff’s Marks, including, without limitation, Defendant’s
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`Marks;
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`b. Using in any manner any service mark, words, abbreviations, text, or other
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`combinations thereof that would imitate, resemble, or suggest one or more of
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`Plaintiff’s Marks;
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`c. Otherwise infringing one or more of Plaintiff’s Marks;
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`d. Unfairly competing with Plaintiff by copying or imitating one or more of
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`Plaintiff’s Marks; and
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`e.
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`Implying, directly stating, or creating the impression that Defendant or its services
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`are affiliated, sponsored by, or associated with Plaintiff or its services.
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`B. An order that the Defendant publish for a period of not less than twelve months,
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`corrective advertising in all media in whi