Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA881260
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`Filing date:
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`03/05/2018
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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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`91238757
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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
`ICON Health & Fitness, Inc.
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`GREGORY M HESS
`PARR BROWN GEE & LOVELESS PC
`101 S 200 E, SUITE 700
`SALT LAKE CITY, UT 84111
`UNITED STATES
`Email: ghess@parrbrown.com, lshaw@parrbrown.com, calen-
`dar@parrbrown.com
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`Reply in Support of Motion
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`Gregory M. Hess
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`ghess@parrbrown.com, calendar@parrbrown.com
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`/Gregory M. Hess/
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`03/05/2018
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`Attachments
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`Reply in Support of Motion for Suspension.pdf(627972 bytes )
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`

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`ICON HEALTH & FITNESS, INC.,
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`RICHARD KELLEY,
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`v.
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`Opposer,
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`Applicant.
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`Opposition No. 91238757
`Application No. 87303294
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`
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`REPLY IN SUPPORT OF OPPOSER’S MOTION FOR SUSPENSION
`PENDING OUTCOME OF UNITED STATES DISTRICT COURT ACTION
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`In its Response, Applicant admits that the parties to this Opposition are parties to a related
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`action in U.S. District Court (the “District Court”) that involves the same marks, i.e., the mark that
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`is the subject of Application No. 87303294 and the marks of Opposer pleaded in opposition to the
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`Application (the “District Court Action”). [See Response, p. 1.] Applicant also admits that the
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`District Court Action “may contain some elements that could potentially be duplicative of issues
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`before the TTAB in the present Opposition.” Id. Applicant nevertheless argues that the Board
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`should not suspend this Opposition because (1) the District Court purportedly lacks jurisdiction to
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`determine “the question of the registrability” of Applicant’s mark; (2) the District Court Action will
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`purportedly prejudice Applicant “by requiring Applicant to overcome important procedural
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`burdens and presumptions to which the Opposer may not be entitled as a matter of fact and law;”
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`and (3) the U.S. Patent and Trademark Office (“PTO”) and the Board have duty to prevent generic
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`marks from being given exclusive rights and should be “the primary arbiters of fundamental
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`questions of trademark validity . . . .” Id. at 1-2. These arguments lack merit.
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`

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`1. The District Court has original jurisdiction and will decide the exact
`same legal and factual issues presented in this Opposition.
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`
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`First, the District Court has original jurisdiction to address and decide the exact same legal
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`and factual issues that this Opposition presents, namely: (1) whether Opposer’s registered marks
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`have priority over Applicant’s purported mark at issue in the Application and this Opposition,
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`under Sections 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), as informed by Section 7(b), 7(c),
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`and 33 of the Trademark Act, id. §§ 1057(c), 1057(d), and 1115; and (2) whether there is a
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`likelihood of confusion between Applicant’s purported mark that is the subject of this Opposition
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`and Opposer’s registered marks that are pleaded in opposition to the Application. See 28 U.S.C.
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`§1338(a); and Trademark Act, Sections 32 and 34, 15 U.S.C. 1114 and 1116. (See Complaint and
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`Jury Demand, attached hereto as Exhibit 1.) Moreover, the District Court has original jurisdiction
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`to determine the validity of Opposer’s registered marks that are pleaded in opposition to the
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`Application in this Opposition, as challenged by Applicant in counterclaims filed in the District
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`Court Action. 15 U.S.C. § 1064; 28 U.S.C. §1338(a). (See Defendant’s Original Asnwer,
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`Affirmative Defenses, and Counterclaims, attached hereto as Exhibit 2.) Thus, regardless of the
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`answer to the esoteric question of whether the District Court has jurisdiction “to determine the
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`registrability” of the mark listed in Application, it is clear that the exact same legal and factual
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`issues underlying that determination are already properly before the District Court, the District
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`Court has already begun its substantive examination of those issues (see Exhibit B to Opposer’s
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`Motion for Suspension), and having two proceedings on the same issues would be duplicative and
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`extremely wasteful of the District Court’s and the Board’s resources, to say nothing of the parties.
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`In fact, since Opposer filed its Motion for Suspension in this Opposition, Opposer has filed
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`a motion in the District Court Action under Federal Rule of Civil Procedure 12(b)(6) to dismiss
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`Applicant’s same counterclaims for cancellation of Opposer’s pleaded registrations. (See Exhibit
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`2
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`3 attached hereto.) Thus, the duplication effort and waste of the Board’s resources would be even
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`more pronounced now than when Opposer originally filed its Motion for Suspension. There is
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`simply no need for the Board to duplicate the District Court’s efforts in that or any other respect.
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`2. The parties have the exact same presumptions and burdens in this
`Opposition as in the District Court Action.
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`Next, Applicant’s arguments about presumptions and burdens are without merit. Regardless
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`of whether it is in this Opposition or in the District Court Action, Opposer has the ultimate burden
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`of proof and persuasion that (1) Opposer’s marks and pleaded registrations have priority over
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`Applicant’s purported mark and Application and (2) there is a likelihood of confusion between
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`Opposer’s pleaded marks and Applicant’s purported mark. By the same token, Opposer is entitled
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`to the same prima facie presumptions of validity and priority of its registered marks under Sections
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`7(b) and 7(c) of the Trademark Act, and Applicant has the same burden of overcoming those
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`presumptions, whether it is in this Opposition or the District Court Action. See 15 U.S.C. §§
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`1057(b), 1057(c) (validity of registered mark and registration, owner’s ownership of mark, owner’s
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`exclusive right to use mark in commerce, and nationwide priority over junior users/applicants).
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`Thus, the presumptions and burdens are the same regardless of the proceeding.
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`3. The District Court has the same jurisdiction and obligation as the Board to decide
`trademark validity and protect against extending exclusive rights to generic terms.
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`Finally, without citing any authority, Applicant argues that it is the PTO’s and the Board’s
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`primary duty to determine trademark validity and to protect against generic marks maintaining
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`registered status and, impliedly, that the District Court’s functions in that regard are somehow
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`secondary. That assertion is without merit, because the District Court has the same responsibilities
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`as the PTO and the Board in that respect. See 28 U.S.C. §1338(a); see also 15 U.S.C. §§ 1057(c),
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`1057(d), 1064, 1115; TBMP § 510.02(a). Thus, “[u]less there are unusual circumstances,” which
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`are not present in this Opposition, “the Board will suspend proceedings in the case before it if the
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`3
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`

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`final determination of the other proceeding may have a bearing on the issues before the Board.”
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`TBMP § 510.02(a). In this instance, because the exact same legal and factual issues are before the
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`District Court and the Board (see Exhibits 1 and 2), the final determination of the District Court in
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`the District Court Action not only “may have” but undoubtedly will have “a bearing on the issues
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`before the Board.” Id. In light of that fact, Opposer respectfully requests that this proceeding be
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`suspended pending the outcome of the District Court Action.
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`Dated: March 5, 2018
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`Respectfully submitted,
`PARR BROWN GEE & LOVELESS
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`
` /Gregory M. Hess/
`Gregory M. Hess
`LaShel Shaw
`PARR BROWN GEE & LOVELESS, P.C.
`101 South 200 East, Suite 700
`Salt Lake City, Utah 84111
`801-532-7840
`ghess@parrbrown.com
`lshaw@parrbrown.com
`Attorneys for ICON Health and Fitness, Inc.
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`4
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`EXHIBIT 1
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`EXHIBIT 1
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`

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`Case 1:17-cv-00356 Document 1 Filed 04/18/17 Page 1 of 28
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`Moulton S. Dowler, Jr. (# 06083200)
`LANGLEY & BANACK, INC.
`745 East Mulberry Avenue, Suite 900
`San Antonio, TX 78212
`Phone: 201-736-6600
`Fax: 210-735-6889
`mdowler@langleybanack.com
`
`Gregory M. Hess (pro hac pending)
`LaShel Shaw (pro hac pending)
`PARR BROWN GEE & LOVELESS, P.C.
`101 South 200 East, Suite 700
`Salt Lake City, UT 84111
`Phone: 801-532-7840
`Fax: 801-532-7750
`ghess@parrbrown.com
`lshaw@parrbrown.com
`
`Attorneys for Plaintiff
`ICON Health & Fitness, Inc.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`
`
`
`Case No. 1:17-cv-356
`
`
`COMPLAINT AND JURY DEMAND
`
`Plaintiff,
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`vs.
`
`ICON HEALTH & FITNESS, INC.,
`
`
`
`
`
`RICHARD KELLEY,
`
`
`
`
`
`
`
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`Defendant.
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`
`
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`Plaintiff ICON Health & Fitness, Inc. (“ICON”) brings this action against Defendant
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`Richard Kelley (“Kelley”) for injunctive relief and damages under the trademark laws of the
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`United States and for injunctive relief and damages under state and common law as follows:
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`
`
`

`

`Case 1:17-cv-00356 Document 1 Filed 04/18/17 Page 2 of 28
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`JURISDICTION AND VENUE
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`1.
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`This is an action under the Anticybersquatting Consumer Protection Act, 15
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`U.S.C. Section 1125(d), in connection with ICON’s famous federally-registered IFIT
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`trademarks, arising from Kelley’s unauthorized registration, trafficking in, and/or use of the
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`domain names iFitCoach.com, iFitnessCoach.com, and iFitCoachPlus.com, for infringement of
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`ICON’s famous, federally-registered IFIT Marks under Section 32(1) of the Lanham Act, 15
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`U.S.C. Section 1114(1), for unfair competition and false designation of origin under Section
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`43(a) of the Lanham Act, 15 U.S.C. Section 1125(a), for dilution under Section 43(c) of the
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`Lanham Act, 15 U.S.C. Section 1125(c), and for related claims under the statutory and common
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`laws of the State of Texas, all arising from Kelley’s unauthorized use of the mark IFIT in
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`connection with the marketing, advertising, promotion, offering for sale, and sale of Kelley’s
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`fitness-related products.
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`2.
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`This court has jurisdiction over this action pursuant to 15 U.S.C. Section 1121, 28
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`U.S.C. Sections 1331 and 1338(a) and (b), and pursuant to the principles of supplemental
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`jurisdiction set forth in 28 U.S.C. Section 1367.
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`3.
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`This court also has jurisdiction over this action pursuant to 28 U.S.C. Section
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`1332(a), in that this action is between citizens of different states, and the amount in controversy
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`exceeds $75,000, exclusive of interest and costs
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`4.
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`Venue is proper under 28 U.S.C. Section 1391(b) in that Defendant resides in this
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`district or has his regular and established place of business in this district, and/or a substantial
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`part of the events or omissions giving rise to ICON’s claims occurred in this district.
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`
`
`-2-
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`

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`Case 1:17-cv-00356 Document 1 Filed 04/18/17 Page 3 of 28
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`5.
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`The Court has personal jurisdiction over Defendant Kelley, who on information
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`and belief resides in the State of Texas and has solicited and conducted business in the State of
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`Texas thereby purposefully availing himself of the privilege of acting in the State of Texas.
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`PARTIES
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`6.
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`ICON is, and at all relevant times was, a profit corporation duly organized and
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`existing under the laws of the Delaware. ICON maintains its principal place of business at 1500
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`South 1000 West, Logan, Utah 84321.
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`7.
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`On information and belief, Kelley is an individual who resides in the State of
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`Texas, with a business address at 2416-B South Lamar Blvd., Austin Texas 78704.
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`ICON’S IFIT® MARKS AND PRODUCTS
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`8.
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`ICON is one of the world’s largest manufacturers of exercise and fitness
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`equipment and sells exercise and fitness products and services throughout Asia, Europe, and
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`North and South America, including throughout the United States.
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`9.
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`ICON brands, markets, and promotes its extensive array of exercise and fitness
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`products under strong, well-known marks such as NordicTrack®, FreeMotion®, and Pro-Form®.
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`10.
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`ICON first conceived of its IFIT® and IFIT.com® marks in late 1996 or early 1997
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`as a means of developing, branding, and promoting additional goods and services that would
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`complement its exercise and fitness products and provide users with additional, innovative
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`resources to help them meet their personal exercise and fitness goals.
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`11.
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`In early 1999, ICON launched its revolutionary line of IFIT® and IFIT.com® fitness
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`products. ICON created an online service at www.ifit.com (the “IFIT® Website”) that provided
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`users with personalized video and audio workouts led by certified personal trainers and the ability
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`
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`-3-
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`

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`Case 1:17-cv-00356 Document 1 Filed 04/18/17 Page 4 of 28
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`to schedule one-on one videoconference sessions with personal trainers. The IFIT.com® workouts
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`could be downloaded from, and later streamed on, the IFIT® Website.
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`12.
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`In addition, ICON developed and marketed a line of IFIT® and IFIT.com® branded
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`exercise and fitness equipment, starting first with treadmills and then later adding exercise bikes
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`and elliptical cross-trainers. These products allowed users to complete individualized IFIT.com®
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`audio and video workouts using the equipment. The IFIT® and IFIT.com® marks complemented
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`ICON’s NordicTrack®, FreeMotion®, and Pro-Form® brands. ICON also sold IFIT® and IFIT.com®
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`workout CDs and videotapes that could be used with IFIT® capable exercise and fitness
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`equipment.
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`13.
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`Since launching its IFIT® and IFIT.com® product line in early 1999, ICON has
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`consistently marketed, promoted, and built up the brand recognition and goodwill in its IFIT® and
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`IFIT.com® marks through the continued development and provision of innovative services and
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`technologies provided on the IFIT® Website and though ICON’s continued development,
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`improvement, and nationwide marketing, promotion, and sales of IFIT® and IFIT.com® branded,
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`IFIT® capable, and IFIT® enabled products. These include IFIT® workout cards, additional IFIT®
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`capable and enabled equipment, and additional features on the IFIT® Website, such as an IFIT®
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`blog, an IFIT® forum, and a feature allowing IFIT® users to connect with friends.
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`14.
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`In June of 2010, ICON expanded its IFIT® product line to include interactive
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`IFIT® mobile apps, which allow users to collect and store performance data from various fitness
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`activities, display nutritional information and fitness and athletic programs and workouts, and
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`plan, track, and monitor their fitness activities on their mobile devices. ICON’s IFIT® mobile apps
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`have greatly expanded the ability of users of the IFIT® Website and IFIT® and IFIT.com®
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`-4-
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`

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`Case 1:17-cv-00356 Document 1 Filed 04/18/17 Page 5 of 28
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`branded equipment to access and use IFIT® services and technologies. ICON also continued to
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`update and improve the IFIT® Website, including the ability to track nutrition and weight loss.
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`15.
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`ICON subsequently launched its IFIT® line of fitness bands and clips, which
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`enable users to record and track their daily physical activity and other data relating to their health
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`and fitness, such as steps taken, distance traveled, calories burned, workout time, sleep patterns,
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`and sleep time, and integrate that information with other IFIT® technologies and products to
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`provide users with the ability to track, manage, monitor, analyze, and improve their overall health,
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`fitness, and nutrition. Later, ICON introduced its revolutionary Altra IQ powered by iFit® running
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`shoe, which uses a razor thin set of sensors integrated with IFIT® technology to provide wearers
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`personalized analysis and real-time coaching to help optimize their walking and running form.
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`16. With all of these developments and innovations, the functionality of the IFIT®
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`Website and IFIT® mobile apps has continued to grow and has been refined over the years to
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`provide integrated IFIT® and iFit.com® services and technologies that allow users of IFIT®
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`fitness bands and watches, IFIT® enabled shoes, and IFIT® capable and IFIT® enabled exercise
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`and fitness equipment to create interactive and custom exercise routines and workouts (including
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`workouts that are integrated with Google maps technology that enables users to experience
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`simulated fitness and exercise workouts in locations all over the world), track and analyze their
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`workouts, select training programs, receive personal training, track their nutrition and weight
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`loss, set personal health, fitness, and nutrition goals, and otherwise manage their activities and
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`lifestyles.
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`17.
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`ICON has extensively marketed, promoted, and built up the brand recognition and
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`goodwill in its IFIT® and IFIT.com® marks in many ways, including television commercials,
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`
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`-5-
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`

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`Case 1:17-cv-00356 Document 1 Filed 04/18/17 Page 6 of 28
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`Internet marketing, email marketing, social media initiatives, and co-op programs, which provide
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`funds and discounts to retailers to do their own individualized advertising.
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`18.
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`For example, ICON has blanketed the homes of millions upon millions of people
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`across the United States with television commercials for IFIT® branded products, including
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`commercials running on every major television network (ABC, CBS, and NBC) and on numerous
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`popular satellite and cable TV channels, including the following:
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`A&E
`ABC Daytime
`ABC News
`ABC Sports
`Animal Planet
`BET
`Bravo
`Boomerang
`CBS Daytime
`CBS Sports
`Centric
`Chiller
`Cloo
`CNBC
`CNN
`Cooking Channel
`Cozi TV
`the Crime & Investigation Network
`Discovery Channel
`Discovery Family Channel
`Discovery Science Channel
`DIY Network
`E!
`El Rey Network
`Escape
`ESPN
`ESPN2
`ESPN News
`Esquire
`FETV
`Food Network
`Fox Business
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`-6-
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`Case 1:17-cv-00356 Document 1 Filed 04/18/17 Page 7 of 28
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`Fox News
`Freeform (formerly ABC Family Network)
`FYI Network
`FX
`FXX
`Golf Channel
`Hallmark Channel
`Hallmark Movies & Mysteries
`HGTV (Home & Garden Television)
`History Channel
`HLN Channel (formerly Headline News)
`Investigation Discovery Channel
`Independent Film Channel
`Inside Edition
`Justice Network
`Lifetime
`Lifetime Movie Network
`Lifetime Real Women
`Logo TV
`MAVTV
`MeTV
`Movies!
`MSNBC
`MTV Classic
`MTV Hits
`MTV Live
`NBA TV
`NBC
`NBC Sports
`NBC News
`NFL Network
`Nickelodeon
`OWN
`Oxygen
`POP
`SEC Network
`Smithsonian Channel
`Sundance Channel
`SyFy
`TBS
`Tennis Channel
`The Band - News
`The Band – Women
`This TV
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`-7-
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`Case 1:17-cv-00356 Document 1 Filed 04/18/17 Page 8 of 28
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`TLC
`TNT
`Travel Channel
`Tru TV
`TV Land
`Universal Sports
`USA
`VH1
`Velocity
`Viceland
`WGN America
`Z Living.
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`Television commercials have also run on various stations during popular programs
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`19.
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`such as Dr. Phil, Mike & Molly, Rachael Ray, Seinfeld, The Closer, The Mentalist, Anger
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`Management, and Access Hollywood. ICON’s advertising has also included packages of television
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`commercials on demographically-focused programming (adults, females, males, lifestyle, and
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`sports) on Direct TV. In fact, ICON has targeted every, or nearly every, major demographic group in
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`the United States with numerous television commercials for IFIT® branded products. Also, IFIT®
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`branded products have been advertised in newspapers in major metropolitan areas.
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`20.
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`In addition, IFIT® branded products have been made widely available for purchase
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`across the United States. For example, retailers such as Walmart, Sears, Academy Sports, Sports
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`Authority, Kmart, and Dick’s Sporting Goods have advertised and sold IFIT® branded products.
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`21. Moreover, IFIT® branded products are advertised and available for purchase from
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`the nation’s top two online retailers – Amazon.com and Walmart.com, as well as six of the other
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`top 25 online retail stores in the United States – The Home Depo, QVC, Costco Wholesale,
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`Sears, HSN, Groupon, and Overstock.com.
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`22.
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`ICON is the owner of five relevant valid and subsisting U.S. Trademark
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`Registrations on the Principal Register in the U.S. Patent and Trademark Office (“PTO”):
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`-8-
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`

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`Case 1:17-cv-00356 Document 1 Filed 04/18/17 Page 9 of 28
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`Date Issued
`No.
`Mark
`IFIT.COM 2,466,474 4/03/2001
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`IFIT
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`2,618,509 9/10/2002
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`IFIT
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`4,450,213 12/17/2013
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`IFIT
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`4,500,591 3/25/2014
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`IFIT
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`4,604,633 9/16/2014
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`Goods & Services
`Providing information and consultation services in
`the field of exercise equipment and personal health,
`fitness and nutrition by means of a global computer
`network
`Educational services, namely, conducting personal
`training in the field of health and fitness; Fitness and
`exercise machines
`Personal fitness training services and consultancy;
`Physical fitness instruction; Physical fitness training
`services; Providing an on-line computer database
`featuring information regarding exercise and fitness;
`Providing information in the field of exercise training
`An application service provider (ASP) featuring
`software for use with mobile devices, tablet, and
`computers for tracking, storing, and displaying
`personal performance data for various fitness
`activities; ASP featuring application programming
`interface (API) software for connecting and
`interacting with software applications on mobile
`devices, tablets, and computers to track, store, and
`display personal performance data for various fitness
`activities
`Web-based, downloadable software for the
`collection, storage and display of personal
`performance data from various fitness activities,
`display of nutritional information and fitness and
`athletic programs and workouts, software for
`tracking, monitoring and planning fitness training
`activities
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`Collectively these five marks shall be referred to herein as the “IFIT Marks.”
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`23.
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`ICON has used the mark protected by U.S. Trademark Registration No. 2,466,474
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`(the “‘474 IFIT Registration”) in interstate commerce in the United States continuously since at
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`least February 1999 in connection with the provision, sale, marketing, advertising, and promotion of
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`information and consultation services in the field of exercise equipment and personal health, fitness
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`and nutrition by means of a global computer network. Attached as Exhibit A is a true and correct
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`
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`-9-
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`

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`Case 1:17-cv-00356 Document 1 Filed 04/18/17 Page 10 of 28
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`printout of the PTO’s information about U.S. Trademark Registration No. 2,466,474, which was
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`issued by the PTO on July 3, 2001.
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`24.
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`ICON has used the mark protected by U.S. Trademark Registration No. 2,618,509
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`(the “‘509 IFIT Registration”) in interstate commerce in the United States continuously since at
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`least February 1999 in connection with the provision, sale, marketing, advertising, and promotion
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`of educational services, namely, conducting personal training in the field of health and fitness
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`and in connection with the manufacture, distribution, provision, offering for sale, sale, marketing,
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`advertising, and promotion of fitness and exercise machines. Attached as Exhibit B is a true and
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`correct printout of the PTO’s information about U.S. Trademark Registration No. 2,466,474,
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`which was issued by the PTO on September 10, 2002.
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`25.
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`ICON has used the mark protected by U.S. Trademark Registration No. 4,450,213
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`in interstate commerce in the United States continuously since at least October 1, 2010 in
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`connection with the manufacture, distribution, provision, offering for sale, sale, marketing,
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`advertising, and promotion of personal fitness training services and consultancy, physical fitness
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`instruction, physical fitness training services, an on-line computer database featuring information
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`regarding exercise and fitness, and information in the field of exercise training. Attached as
`
`Exhibit C is a true and correct printout of the PTO’s information about U.S. Trademark
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`Registration No. 4,450,213, which was issued by the PTO on December 17, 2013.
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`26.
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`ICON has used the mark protected by U.S. Trademark Registration No. 4,500,591
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`in interstate commerce in the United States continuously since at least June 4, 2012 in connection
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`with the manufacture, distribution, provision, offering for sale, sale, marketing, advertising, and
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`promotion of an application service provider (ASP) featuring software for use with mobile devices,
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`Case 1:17-cv-00356 Document 1 Filed 04/18/17 Page 11 of 28
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`tablet, and computers for tracking, storing, and displaying personal performance data for various
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`fitness activities and ASP featuring application programming interface (API) software for
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`connecting and interacting with software applications on mobile devices, tablets, and computers to
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`track, store, and display personal performance data for various fitness activities. Attached as
`
`Exhibit D is a true and correct printout of the PTO’s information about U.S. Trademark
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`Registration No. 4,500,591, which was issued by the PTO on March 25, 2014.
`
`27.
`
`ICON has used the mark protected by U.S. Trademark Registration No. 4,604,633
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`in interstate commerce in the United States continuously since at least June 6, 2010 in connection
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`with the manufacture, distribution, provision, offering for sale, sale, marketing, advertising, and
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`promotion of web-based, downloadable software for the collection, storage and display of
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`personal performance data from various fitness activities, display of nutritional information and
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`fitness and athletic programs and workouts, software for tracking, monitoring and planning
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`fitness training activities. Attached as Exhibit E is a true and correct printout of the PTO’s
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`information about U.S. Trademark Registration No. 4,604,633, which was issued by the PTO on
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`September 16, 2014.
`
`28.
`
`As a result of its widespread and continuous use of the IFIT Marks to identify its
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`goods and services with ICON as their source, ICON owns valid and subsisting federal statutory
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`and common law rights to the IFIT Marks.
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`29.
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`The IFIT Marks are distinctive to both the consuming public and within the
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`exercise and fitness industry, both throughout the United States and in Texas.
`
`30.
`
`ICON has expended substantial time, money, and resources in marketing,
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`advertising, and promoting the goods and services offered under the IFIT Marks, including,
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`among other things, television, radio, newspaper, magazine, internet, social media, and other
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`media.
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`31.
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`ICON’s promotional efforts have led to ICON’s patrons, potential patrons, and the
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`general public coming to know and recognize the IFIT Marks and associate them with ICON and
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`its goods and services. ICON has therefore built up extensive, valuable goodwill in the IFIT
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`Marks.
`
`32.
`
`As a result of their distinctiveness and widespread use and promotion throughout
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`the United States, the IFIT Marks are famous trademarks within the meaning of Section 43(c) of
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`the Lanham Act, 15 U.S.C. 1125(c) and the Texas Business & Commercial Code Section 13.103.
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`33.
`
`ICON operates various websites, including the website at ifit.com, to advertise its
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`goods and services and to provide information about the products associated with the IFIT
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`Marks.
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`
`
`DEFENDANT’S WRONGFUL CONDUCT
`
`34.
`
`On information and belief, Kelley originally registered the domain name
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`iFitCoach.com on September 11, 2005. Attached as Exhibit F is a true and correct copy of the
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`GoDaddy.com WHOIS record for the domain name iFitCoach.com.
`
`35.
`
`On information and belief, Kelley also originally registered the domain name
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`iFitnessCoach.com on September 11, 2005. Attached as Exhibit G is a true and correct copy of
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`the GoDaddy.com WHOIS record for the domain name iFitnessCoach.com.
`
`36.
`
`ICON did not authorize Kelley to register or use the domain name iFitCoach.com
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`iFitnessCoach.com, or iFitCoachPlus.com, and he has no affiliation with ICON.
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`37.
`
`The website located at the internet address www.iFitCoach.com (the “iFitCoach
`
`Website”) uses the mark iFitCoach.com and contains various ads through which Kelley promotes
`
`the sale of books he has written on the topics of fitness, exercise, and nutrition.
`
`38.
`
`The website
`
`located at
`
`the
`
`internet address www.iFitnessCoach.com (the
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`“iFitnessCoach Website”) uses the mark iFitnessCoach.com and also contains various ads through
`
`which Kelley promotes the sale of books he has written on the topics of exercise, fitness, and
`
`nutrition.
`
`39.
`
`On or about October 4, 2016, ICON contacted Kelley by email and inquired about
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`ICON’s possible purchase of the iFitCoach.com domain name.
`
`40.
`
`On October 4, 2016, Kelley responded, in pertinent part “iFitCoach.com has not
`
`been considered for sale, though I do receive regular inquiries regarding it. I’m a physician/fitness
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`author and entrepreneur, so this domain has been used to promote my fitness endeavors. At this
`
`moment, it is no live on the web, as I’m revamping websites and working towards a mobile app. I
`
`have considered the possibility of a licensing arrangement with the right company, as the future
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`strength/ possibilities of this particular domain in the rights, is undeniable. Though again, I have
`
`not entertained the idea of an outright sale. Regardless, I’m open to hearing your thoughts.”
`
`41.
`
`On or about October 6, 2016, ICON emailed Kelley again and informed him that
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`ICON “is the fitness leader in exercise equipment,” that it owns the iFit brand, and that ICON was
`
`interested in using the iFitCoach.com domain for ICON’s iFit brand. ICON offered to purchase the
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`iFitCoach.com domain name from Kelley for $1,000.
`
`42.
`
`On October 6, 2016, Kelley responded to ICON as follows: “I appreciate your
`
`companies’ offer, but unfortunately, it doesn't realistically approach the value this particular
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`Case 1:17-cv-00356 Document 1 Filed 04/18/17 Page 14 of 28
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`domain holds for me. As trademarks for my personal business over the past decade, both iFitCoach
`
`and iFitnessCoach have been instrumental in promoting both my writing and work in the field of
`
`health and fitness. As such, I can't at this time justify the loss. Also, I'm sure you're aware that
`
`Apple periodically purchases desirable 'i-Domains' depending on trends in their business.
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`Consequently, I would lean towards a licensing arrangement, were I to stop using the domains for
`
`my own business. I will certainly keep your contact information for future reference and I wish
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`your company continued success for the future.”
`
`43.
`
`On information and belief, on January 8, 2017, Kelley registered the domain
`
`name iFitCoachPlus.com. Attached as Exhibit H is a true and correct copy of the GoDaddy.com
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`WHOIS record for the domain name iFitCoach.com.
`
`44.
`
`On information and belief, on January 16, 2017, Kelley filed an application in the
`
`United States Patent and Trademark Office to register the mark “iFitCoach” for “Educational
`
`services, namely, providing online instruction in the field of fitness and nutrition via an online
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`website; Providing a website featuring information on exercise and fitness; Providing a website
`
`featuring non-downloadable publications in the nature of books, e-books, DVDs, audio-books,
`
`and internet-based coaching in the field of fitness and nutrition; Providing an interactive website
`
`featuring information and links relating to fitness.” A true and correct copy of the application,
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`Serial No. 87303294, is attached hereto as Exhibit I (the “iFitCoach Application”).
`
`45.
`
`Since being informed in October of 2016 of ICON’s ownership of the iFit brand for
`
`fitness-related goods, Kelley has continued to use the iFitCoach.com and iFitnessCoach.com
`
`domain names and marks to promote his fitness, nutrition, and exercise-related products.
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`46.
`
`On March 29, 2017, Mr. Sanjeev Kumar (“Kumar”), an attorney, sent an email to
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`Tracy Cox (“Cox”), the I.T. Ecommerce Manager of ICON, on the subject “ifitcoach.com.” In
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`that email, Kumar stated that he was representing Kelley, “who was approached by you a few
`
`months back with an offer to purchase a domain name he owns. Please see the attachment and
`
`get back to me with [sic] at your earliest convenience.” A true and correct copy of the March 29,