Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA230706
`ESTTA Tracking number:
`08/15/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048898
`Defendant
`Children's Legal Services PLLC
`Brian D. Wassom
`Honigman Miller Schwartz & Cohn LLP
`38500 Woodward Avenue, Suite 100
`Bloomfield Hills, MI 78304-5048
`UNITED STATES
`bwassom@honigman.com
`Motion to Suspend for Civil Action
`Brian D. Wassom
`bdw@honigman.com,tmdocketing@honigman.com
`/Brian D. Wassom/
`08/15/2008
`2008-08-15 motion to suspend.pdf ( 31 pages )(241534 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SIMON KRESCH,
`
`Petitioner,
`
`Cancellation No.: 92048898
`
`V.
`
`Registration No. 2,472,064
`
`CHILDREN’S LEGAL SERVICES, PLLC,
`
`Mark: “l-877-CPNEEDS”
`
`Registrant.
`
`/
`
`Matthew H. Swyers
`The Swyers Law Firm, PLLC
`344 Maple Avenue West, Suite 389
`Vienna, VA 22180
`(866) 455-8800 X704
`
`mswyers@swyerslaw.com
`Attorneys for Petitioner
`
`Michael A. Lisi
`HONIGMAN MILLER SCHWARTZ AND CoHN
`LLP
`Attorneys for Registrant
`38500 Woodward Avenue, Suite 100
`
`Bloomfield Hills, MI 48304-5048
`(248) 566-8504
`n1lisi@honigman.com
`~and~
`
`Brian D. Wassom
`
`2290 First National Building
`660 Woodward Avenue
`
`Detroit, MI 48226-3506
`
`(313) 465-7594
`bwassom@honigman.com
`
`REGISTRANT’S MOTION TO SUSPEND FOR CIVIL ACTION
`
`Registrant Children’s Legal Services, PLLC (“CLS”), by its attorneys Honigman
`
`Miller Schwartz and Cohn LLP, hereby moves to suspend this Cancellation proceeding
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`on the ground that there is a pending civil lawsuit involving the same mark and subject
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`matter as this proceeding. In support, CLS says:
`
`1.
`
`Petitioner Simon Kresch (“Kresch”) brought this action to cancel CLS’s
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`Registration 2,472,064 in the mark “l-877-CPNEEDS,” on the grounds of alleged
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`abandonment and fraud.
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`

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`2.
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`CLS has answered the Petition, and defended the validity of
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`its
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`registration. Moreover, among other things, CLS has raised as an affirmative defense the
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`allegation that Kresch has acted in bad faith and with unclean hands to convert from CLS
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`ownership of the toll—free phone number that corresponds to l—877—CPNEEDS.
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`3.
`
`On August 15, 2008, CLS filed Civil Action No. 08-13532 in the U.S.
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`District Court for the Eastern District of Michigan against Kresch and others. The Civil
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`Action alleges that Kresch infringed upon the l—877—CPNEEDS mark, and converted the
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`corresponding phone number. A copy of the complaint is attached hereto.
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`4.
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`The subject matter of the Civil Action and this Cancellation are materially
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`identical. Kresch will be able to assert in the Civil Action every argument he alleges in
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`this Cancellation. CLS will be able to assert in the Civil Action every argument it could
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`make in the Cancellation, along with several that it cannot raise in the Cancellation,
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`including allegations of infringement, conversion, and requests for injunctive and
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`monetary relief.
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`5.
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`Judicial economy and the interests of justice therefore militate heavily in
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`favor of suspending this action.
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`6.
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`On August 15, 2008,
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`the undersigned spoke with Matthew Swyers,
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`counsel to Petitioner Kresch, to seek consent in this motion. Mr. Swyers did not consent.
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`Wherefore, CLS respectfully requests that the Board immediately suspend this
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`Cancellation proceeding.
`
`

`
`HONIGMAN MILLER SCHWARTZ AND
`
`COHN LLP
`
`Dated: August 15, 2008
`
`By:/s/ El/LZZI/L 1>. Wassom
`
`Michael A. Lisi (P39597)
`38500 Woodward Avenue, Suite 100
`
`Bloomfield Hills, MI 48304-5048
`
`(248) 566-8504
`
`mlisi@honigman.com
`~and~
`
`Brian D. Wassom (P6038l)
`2290 First National Building
`660 Woodward Avenue
`
`Detroit, MI 48226-3506
`
`(313) 465-7594
`bdw@honigman.com
`
`CERTIFICATE OF TRANSMITTAL
`
`I hereby certify that on August 15, 2008,
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`the foregoing document was
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`electronically transmitted in PDF format to the Trademark Trial and Appeal Board
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`through the Electronic System for Trademark Trials and Appeals (ESTTA).
`
`By: /Bram 1>. Wzzssom/
`Brian D. Wassom
`
`CERTIFICATE OF SERVICE
`
`I certify that on August 15, 2008, I caused a copy of the foregoing document to be
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`served via email to:
`
`Matthew H. Swyers
`mswyers @ swyerslaw.com
`
`DETROIT.3273438.1
`
`By: /Bram 1>. Wzzssom/
`Brian D. Wassom
`
`

`
`Exhibit
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`

`
`Case 2:638-cv-13532—N{3E-MJH
`
`Document’?
`
`Filed €38/“E5/2008
`
`Page 1 of 14
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`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF MICHIGAN
`
`CHILDREN'S LEGAL SERVICES PLLC,
`
`a Michigan Professional Limited Liability Company,
`
`Case No. 08-13532
`
`Plaintiff,
`
`Hon _
`
`VS.
`
`SIMON KRESCH, TTP LEGAL MARKETING, LLC,
`
`and SAIONTZ, KIRK, & MILES, P.A.,
`
`Defendants.
`
`HONIGMAN MILLER SCHWARTZ AND CoHN LLP
`
`Attorneys for Plaintiff
`By: Herschel P. Fink (Pl3427)
`Brian D. Wassom (P6038l)
`
`2290 First National Building
`660 Woodward Avenue
`
`Detroit, MI 48226-3506
`
`(313) 465-7594
`
`hpf@honigman.com
`bdw@honigman.com
`~and~
`
`Michael A. Lisi (P39597)
`38500 Woodward Avenue, Suite 100
`
`Bloomfield Hills, MI 48304-5048
`
`(248) 566-8504
`mlisi@honigman.com
`
`/
`
`COMPLAINT FOR SERVICE MARK INFRINGEMENT,
`UNFAIR COMPETITION, AND CONVERSION
`
`Plaintiff Children’s Legal Services, P.L.L.C. (“CLS”), by its attorneys Honigman Miller
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`Schwartz and Cohn LLP, for its Complaint against Defendants Simon Kresch (“Kresch”), TTP
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`Legal Marketing, LLC (“TTP”), and Saiontz, Kirk and Miles, P.A. (“SKM”), says:
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`

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`Case 2:C38-cv-13532—N{3E-MJH Document 1
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`Fiied €38/“E5/2008
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`Page 2 of 14
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`PARTIES
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`l.
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`CLS is a professional lirr1ited liability company based and operating within this
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`district. CLS is composed of CLS Holdings, PLLC. The principal of CLS is Kenneth Stern
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`(“Stern”), a Michigan resident and practicing attorney. CLS provides a variety of legal and
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`educational services to the families of children with cerebral palsy and similar disorders induced
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`by birth—related trauma. CLS advertises and provides these services in Michigan, Pennsylvania,
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`and other markets using, inter alia, the service mark l—877—CPNEEDS.
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`2.
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`Kresch is a resident of Michigan and this district and a licensed attorney. Kresch
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`advertises legal and educational services identical to those of CLS and solicits legal referrals in
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`CLS’s markets.
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`3.
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`TTP is, upon information and belief, a Michigan limited liability company. Upon
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`information and belief, Kresch owns and operates TTP, and carries out at least some of the
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`activities described herein through, or using the name of, TTP.
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`4.
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`SKM is a law firm operating in Maryland, Pennsylvania, the District of Columbia,
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`and various other areas in the United States. SKM advertises nationally and solicits legal clients
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`for birth injury claims, including through Kresch and/or TTP.
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`JURISDICTION AND VENUE
`
`5.
`
`6.
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`CLS incorporates herein by reference each of the preceding paragraphs.
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`This Court has jurisdiction over this matter under 15 U.S.C. § H21 and 28 U.S.C.
`
`§ 1338. Jurisdiction over the state law claims is appropriate under 15 U.S.C. § l367(a) and the
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`principles of pendent jurisdiction.
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`7.
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`This Court has personal jurisdiction over each Defendant. Kresch resides and
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`does business in this District. TTP has its principal place of business in this district. Upon
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`

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`Case 2:C38-cv-13532—N{3E-MJH Document 1
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`Filed €38/“E5/2008
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`Page 3 of 14
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`information and belief, SKM does business in this district—including the acts complained of
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`herein—with sufficient consistency and materiality such that it is subject to either general or
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`specific jurisdiction in this district for the purposes of this Complaint. Among other things,
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`SKM has purposely availed itself of the privilege of acting in this district by advertising their
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`legal services and soliciting legal clients for birth trauma cases via (1) national and local
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`television advertisements,
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`(2) use of the toll
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`free numbers
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`l—877—CPNEEDS and 1-800-
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`CPNEEDS which direct calls from this district to one or more Defendants, and/or (3) use of
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`highly interactive, commercial intemet websites, all of which are available to persons throughout
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`the country, including persons within this judicial district. Further, the brunt of the injury to CLS
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`has been felt in this district, where CLS, the owner of the l—877—CPNEEDS mark, is located.
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`Moreover, some or all of SKM’s activities complained of herein were coordinated and/or carried
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`out on SKM’s behalf by Kresch, within this district, among other places.
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`8.
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`Venue is proper in this Court pursuant to 28 U.S.C. § l39l(b) and (c). Kresch
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`and TTP are located in this district.
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`SKM is subject to personal jurisdiction here. Upon
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`information and belief, a substantial portion of the activity about which CLS complains has taken
`
`place in this district, and the damages suffered by CLS were suffered, at least in part, in this
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`district.
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`COMMON ALLEGATIONS
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`9.
`
`CLS incorporates herein by reference each of the preceding paragraphs.
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`Development of the 1-877-CPNEEDS Mark
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`10.
`
`CLS owns U.S. Registration No. 2,472,064 for the mark l—877—CPNEEDS in
`77
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`International Class 42, for use in connection with “legal services.
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`This registration is current,
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`valid and incontestable.
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`

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`Case 2:C38-cv-13532—N{3E-MJH Document 1
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`Fiied €38/“E5/2008
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`Page 4 of 14
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`11. With regard to ownership and priority of use of 1-877-CPNEEDS, CLS is the
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`successor in interest of the law firms “Stern and Associates” and “Korn and Stern, PC.” (the
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`“Previous Owners”). Both of the Previous Owners were located and operated in this district.
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`In
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`or about November and December 2004, CLS purchased certain assets, including all right, title,
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`and interest in the 1-877-CPNEEDS mark, from the Previous Owners’ combined bankruptcy
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`estate. Stern was a principal of both Previous Owners. The Previous Owners and CLS have
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`used the 1-877-CPNEEDS mark in a consistent and continuous manner.
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`12.
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`Stern, through the Previous Owners, began using the 1-877-CPNEEDS mark on
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`or before November 10, 1998. Specifically, Stern offered various educational and other legal
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`services and/or referrals to victims of birth injuries, alone and in association with other counsel
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`with whom his entities would affiliate.
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`13.
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`Stern advertised and provided these services using the 1-877-CPNEEDS mark,
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`including the nationally accessible phone number 1-877-CPNEEDS (1-877-276-3337) and the
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`internet domain name <www.l—877—CPNEEDS.com>. Stern and CLS owned (or subscribed to)
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`the number 1-877-276-3337 first through SBC, then AT&T. CLS continues to use the domain
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`name to this day.
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`Defendant Kresch’s History of Intentionally Infringing
`Marks Owned by CLS and Others
`
`14.
`
`Defendant Kresch’s primary occupation is advertising legal services in connection
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`with toll-free phone numbers. He has confessed to having a life-long fascination with toll-free
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`numbers, and to owning or subscribing to more than 100 toll-free numbers.
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`15.
`
`Kresch is a self-described “bottom feeder” who profits from the goodwill of
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`others. Many of his toll-free numbers correspond to alphabetical or alphanumeric mnemonics
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`

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`Case 2:638-cv-13532—NGE-MJH Document 1
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`Filed €38/“E5/2008
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`Page 5 of 14
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`that are identical or confusingly similar to the trademarks or service marks used by other
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`companies.
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`16.
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`One of Kresch’s primary business models is obtain phone numbers that are
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`confusingly similar to the marks of others, then either offer the number to the mark owner at an
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`exorbitant price, sell it to a competitor, or use the number to siphon away customers who intend
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`to contact the mark owner.
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`17.
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`For example, Kresch has admitted purchasing the phone number 1-800-LITTLE-
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`C, and offering to sell it to Little Caesar’s. See also Hansons’ Window & Siding, Inc. v. Kresch,
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`No. 04-70255 (ED Mich)
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`(alleging that Kresch threatened to direct persons calling 800-
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`HANSONS to a competitor unless Hansons paid Kresch’s extortionate demands); U-Haul Int’l,
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`Inc v. Kresch, 943 F. Supp. 802 (ED Mich 1996) (Kresch obtained 800—GOUHAUL to siphon
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`callers to 800—GOUHAUL); Guardian Alarm Co v. New Monics, No. 94-72615 (ED Mich)
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`(Kresch company obtained 800-STAY-0UT to siphon calls from Guardian Alarm’s 800-STAY-
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`OUT).
`
`18.
`
`Kresch has also demonstrated a particular desire to infringe marks owned by CLS.
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`As revealed in the lawsuit Children ’s Legal Services, P.L.L. C. v. Kresch, et al, No. 07-10255,
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`which is currently pending before the Hon. Avern Cohn of this bench, Kresch has been using
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`(since some point between 1998 and 2003) such marks as MYCHILD and 1-800-MYCHILD to
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`infringe CLS’s 1-800-4MYCHlLD and related marks. Both sets of marks are used, as is CLS’s
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`1-877-CPNEEDS mark,
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`to advertise legal services to families of children with birth trauma
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`injuries. On February 29, 2008, Judge Cohn entered summary judgment as to liability against
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`Kresch on all counts of CLS’s complaint,
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`including service mark infringement, unfair
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`competition, and cyberpiracy.
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`

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`Case 2:638-cv-13532—NGE-MJH Document 1
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`Filed €38/“E5/2008
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`Page 6 of 14
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`19.
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`A Previous Owner of CLS’s marks had brought a similar lawsuit against Kresch
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`in 2003 for advertising the same MYCHILD marks in Michigan.
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`That case—Stern &
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`Associates, P.C. v. Simon Kresch, No. 03—7l06l—was also assigned to Judge Cohn. The Prior
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`Owners dismissed the suit after Kresch promised to stop using his MYCHILD marks in
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`Michigan. But, unbeknownst to CLS at the time, Kresch continued to use his infringing marks in
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`Michigan and throughout the country.
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`20.
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`On November 30, 2005, Kresch filed in the Trademark Trial and Appeal Board
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`(“TTAB”) an Opposition to CLS’s application to register the mark MYCHILD, claiming
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`superior rights to the mark. Kresch failed entirely to submit any supporting evidence to the
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`TTAB. Consequently, on February 16, 2007, the TTAB entered judgment in favor of CLS, and
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`allowed CLS to register the mark MYCHILD.
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`2l.
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`CLS’s pending lawsuit names both Kresch and SKM as defendants.
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`In the course
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`of discovery in that
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`litigation, SKM has admitted to funding, since 2003,
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`the nationwide
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`advertisement of Kresch’s MYCHILD marks, phone numbers, and related legal services to the
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`families of children with birth trauma injuries. SKM further admits to having knowledge of the
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`advertisements’ contents; to paying for the advertisements only when satisfied with the resulting
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`response (thus influencing when and where the advertisements were run); and to handling the
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`phone calls that resulted from the advertisements, including by screening the callers, referring
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`them out to local practitioners, and remaining in an active co—counsel role in any resulting
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`litigation. SKM continued in this role long after receiving notice of CLS’s claims.
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`In short,
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`SKM is a direct, active, and knowing participant in the infringing MYCHILD scheme, and is
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`likely to be held at least as liable for it as Kresch already has been.
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`(Indeed, SKM has even
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`

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`Case 2:08-(iv-13532-NGE-MJH
`
`Docisment 1
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`Filed 08i'”E5/2008
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`Page 7' of 14
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`admitted to purchasing materially identical intemet advertisements, which will likely result in
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`infringement liability above and beyond Kresch’ s.)
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`22.
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`Upon information and belief, at some point after the commencement of the
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`currently pending lawsuit over the MYCHILD marks, SKM and Kresch redirected the focus of
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`their advertising efforts
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`from l-800-MYCHILD to
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`l—877—CPNEEDS—rebranding their
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`advertising scheme and effectively moving from infringing one CLS mark to another.
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`23.
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`Kresch has also been accused of surreptitiously wresting control of toll—free
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`numbers from the companies who use them—an act known as “slamming” the number. For
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`example, in the course of the pending litigation, Mr. Charles Brofman gave sworn testimony by
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`affidavit accusing Kresch of “slamming” the toll—free number l—888—2MYCHlLD in order to
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`take it away from Brofman, then offering the number back to Brofman at an extortionate price.
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`Defendants’ Infringement of the 1-877 -CPNEEDS Mark
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`24.
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`Kresch knew that CLS owned the mark 1-877-CPNEEDS at least as long ago as
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`November 2, 2007. On that day, CLS delivered to Kresch’s counsel a proposed settlement term
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`sheet that identified 1-877-CPNEEDS as one of CLS’s marks, and demanded to know whether
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`and to what extent Kresch was infringing this mark in addition to the 4MYCHILD marks.
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`25.
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`On February 14, 2008, Kresch filed a petition before the Trademark Trial and
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`Appeal Board (“TTAB”) seeking to cancel CLS’s registration for the 1-877-CPNEEDS mark
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`(Cancellation Action No. 92048898). Kresch’s principal argument in support of this relief was
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`that CLS had abandoned the phone number associated with the mark (l-877-276-3337).
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`Specifically, Kresch alleged that:
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`For a period in excess of two years immediately preceding July 24, 2007, the
`telephone number 1-877-276-3337 had been owned and used—and continues to
`be owned and used—by a party unrelated either to the Registrant or Petitioner
`herein for purposes unrelated to the provision of legal services.
`
`

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`Case 2:C38-cv-13532—N{3E-MJH Document 1
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`Fiied €38/“E5/2008
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`Page 8 of 14
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`Petition to Cancel ‘J1 16.
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`26.
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`Around the same time that Kresch filed this Petition, CLS became aware that it
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`was no longer receiving calls placed to the phone number l—877—CPNEEDS, even though CLS
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`had never abandoned its ownership of the number or requested that the number be transferred to
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`anyone else.
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`27.
`
`In a subsequent email exchange with an AT&T representative (Exhibit A), Stern
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`learned that, contrary to Kresch’s allegations in the TTAB, CLS had owned the phone number
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`consistently until March 2008, at which time the number was transferred to Qwest for an
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`unknown reason. The representative confirmed that CLS had not requested the transfer. Based
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`on these facts, the AT&T representative opined that the number had been “slammed.” Id.
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`28.
`
`In a separate email exchange with Stern, a Qwest representative confirmed that
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`the 877—CPNEEDS phone number had been transferred from AT&T to Qwest as a “live”
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`account, rather than as one that had been disconnected—which further supports the conclusion
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`that the number was “slammed.” Exhibit B.
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`29.
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`An investigator retained by CLS learned that the phone number is now owned by
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`Kresch. CLS made Kresch’s counsel in the TTAB action aware of this fact, and asserted it as a
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`basis for the affirmative defense of unclean hands, among other things.
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`30.
`
`In a July 18, 2008 motion in the TTAB action, Kresch repeated his above—quoted
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`allegation that the phone number l—877—CPNEEDS was being used by a third party unrelated to
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`Kresch or CLS for purposes other than legal services.
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`31.
`
`In a July 26, 2008 supplemental filing, however, Kresch admitted that
`
`this
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`statement was inaccurate. In its place, he substituted the following:
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`

`
`Case 2:638-cv-13532—NGE-MJH Document 1
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`Filed €38/“E5/2008
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`Page 9 of 14
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`For a period in excess of two years immediately preceding July 24, 2007, the
`telephone number 1-877-276-3337 was owned and used by a party unrelated
`either to the Registrant or Petitioner herein for purposes unrelated to the provision
`of legal services. On March 21, 2008 Petitioner noticed that the number 1-
`877-276-3337 was available and therefore reserved the same. From March
`
`21, 2008 to date Petitioner has maintained and continues to maintain control
`of the number.
`
`Exhibit C (emphasis added). This is a direct admission that Kresch is using the phone number
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`associated with CLS’s 1-877-CPNEEDS mark, with full knowledge of CLS’s service mark
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`registration. Given the foregoing, it seems highly likely that Kresch either directly or through an
`
`associate “slammed” the toll-free number 1-877-276-3337 in order to take it away from CLS and
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`then put it to use in Defendants’ infringing scheme to use 1-877-CPNEEDS in lieu of the
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`infringing use of 1-800-MYCHILD that was otherwise enjoined by Judge Cohn in the pending
`
`litigation.
`
`32.
`
`Upon information and belief, Kresch now advertises the number and mark 1-877-
`
`CPNEEDS in various markets, in connection with the offering of legal and educational services
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`to parents of children with birth trauma injuries. Upon information and belief, SKM is actively
`
`involved in this campaign, including by funding Kresch’s advertisements and handling resulting
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`phone calls.
`
`33.
`
`Defendants also advertise legal services using the mark 1-800-CPNEEDS (and the
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`corresponding toll-free phone number 1-800-276-3337) and such internet domain names as <1-
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`80{3~cp~needs.com>, <1-8{}0—cpneeds.com>, and <1§%0€)cpr1eeds,c-;‘:n3>. This mark is confusingly
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`similar to CLS’s 1-877-CPNEEDS mark.
`
`34.
`
`In sum, Kresch, TTP, Saiontz, and perhaps others have collaborated to
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`systematically infringe on CLS’s superior rights to the 1-877-CPNEEDS mark in various regions
`
`across the country. Defendants have used confusingly similar marks to trade upon and profit
`
`

`
`Case 2:G8—€:\I—’l3532~NGE—F\:’lJH
`
`Document ‘E
`
`Fiied 08:’15i'2{3Q8
`
`Page “E0 of ‘E4
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`from the goodwill inherent in CLS’s l—877—CPNEEDS mark, dilute the effectiveness of the
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`mark, and siphon off business that would otherwise have gone to CLS. Upon information and
`
`belief, Defendants have richly profited from this scheme and stand to profit richly in the future as
`
`well.
`
`COUNT I — SERVICE MARK INFRINGEMENT
`
`35.
`
`CLS incorporates herein by reference each of the preceding paragraphs.
`
`36.
`
`CLS is the lawful owner of the l—877—CPNEEDS mark, and the registration is
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`current, valid and incontestable.
`
`37.
`
`Defendants’ actions described above are likely to cause confusion, mistake, or
`
`deception as to the origin, sponsorship, or approval of Defendants’ services and commercial
`
`activities, and thus constitute service mark infringement of CLS’s l—877—CPNEEDS mark in
`
`violation of Section 32 of the Lanham Act, 15 U.S.C. § lll4.
`
`38.
`
`Defendants’ actions, conduct, and practices in this regard have at all material
`
`times been willful, knowing, and/or in bad faith.
`
`39.
`
`As a direct and proximate cause of the actions, conduct, and practices of
`
`Defendants alleged above, CLS has been damaged and will continue to be damaged.
`
`COUNT II — VIOLATION OF LANHAM ACT § 4313!
`
`40.
`
`CLS incorporates herein by reference each of the preceding paragraphs.
`
`41.
`
`Defendants’ actions described above are likely to cause confusion, mistake, or
`
`deception as to the origin, sponsorship, or approval of Defendants’ services and commercial
`
`activities, and thus constitute service mark infringement, false designation of origin, passing off,
`
`and unfair competition with respect to CLS’s l—877—CPNEEDS mark, in violation of Section
`
`43(a) of the Lanham Act, 15 U.S.C. § ll25(a)(l).
`
`l0
`
`

`
`Case 2:G8—ev—’i3532~NGE—FviJH
`
`Document 1
`
`Fiied O8;’15/20638
`
`Page ‘H of 14
`
`42.
`
`Defendants’ actions, conduct, and practices in this regard have at all material
`
`times been willful, knowing, and/or in bad faith.
`
`43.
`
`As a direct and proximate cause of the actions, conduct, and practices of
`
`Defendants alleged above, CLS has been damaged and will continue to be damaged.
`
`COUNT III — UNFAIR COMPETITION UNDER STATE LAW
`
`44.
`
`CLS incorporates herein by reference each of the preceding paragraphs.
`
`45.
`
`Defendants’ actions described above are likely to cause confusion, mistake, or
`
`deception as to the origin, sponsorship, or approval of Defendants’ services and commercial
`
`activities, and thus constitute unfair competition with respect to CLS’s l—877—CPNEEDS mark,
`
`in violation of the laws of the states of Michigan, Pennsylvania, and any other state whose law
`
`may be found to apply.
`
`46.
`
`Defendants’ actions, conduct, and practices in this regard have at all material
`
`times been willful, knowing, and/or in bad faith.
`
`47.
`
`As a direct and proximate cause of the actions, conduct, and practices of
`
`Defendants alleged above, CLS has been damaged and will continue to be damaged.
`
`COUNT IV — CONVERSION
`
`48.
`
`CLS incorporates herein by reference each of the preceding paragraphs.
`
`49.
`
`CLS’s ownership of/subscription to the toll—free phone number l—877—CPNEEDS
`
`(l—877—276—3337) through AT&T was valuable personal property belonging to CLS.
`
`50.
`
`Kresch wrongfully exercised dominion over this personal property, depriving
`
`CLS of the benefits of its ownership interest. CLS has been damaged as a result.
`
`51.
`
`Kresch’s actions were wrongful and unlawful, and done without CLS’s consent or
`
`knowledge.
`
`ll
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`

`
`Case 2:G8—ev—’i3532~NGE—FviJH
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`Document 1
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`Fiied O8;’15/20638
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`Page ‘E2 of 14
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`52.
`
`SKM aided and abetted Kresch’s actions. Moreover, SKM received benefit from
`
`the conversion, and subsequently approved and adopted it.
`
`53.
`
`Defendants are liable to CLS for conversion under the law of the State of
`
`Michigan, and/or any other State whose law is found to apply.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, CLS respectfully requests that this Court grant it the following relief:
`
`A.
`
`An injunction permanently enjoining Defendants and their employees, agents,
`
`partners, officers, directors, shareholders, related companies, affiliates, distributors, dealers, and
`
`all persons in active concert or participation with any of them:
`
`1.
`
`From using the l—877—CPNEEDS mark, any variation of the mark,
`
`including, without
`
`limitation,
`
`l—800—CPNEEDS, and any other marks or names that are
`
`confusingly similar to or that dilute the distinctiveness of or blur or tarnish those marks,
`
`including but not limited to use as (or as part of) domain names, URLs, trademarks, service
`
`marks, business names, metatags, toll—free telephone numbers or other identifiers;
`
`2.
`
`From representing by any means whatsoever, directly or indirectly, that
`
`Defendants, any products or services offered by Defendants, or any activities undertaken by
`
`Defendants, are associated or connected in any way with CLS, including but not limited to
`
`creating or posting, or having others creating or posting websites purporting to be CLS or
`
`somehow affiliated with CLS;
`
`B.
`
`An Order:
`
`1.
`
`Immediately transferring the subscription for
`
`the toll
`
`free telephone
`
`number l—877—CPNEEDS to CLS;
`
`l2
`
`

`
`Case 2:G8—€:\I—’l3532~NGE—E‘\:’lJH
`
`Document ‘E
`
`Fiied 08:’15i'2{3Q8
`
`Page “E3 of ‘E4
`
`2.
`
`Immediately transferring any internet domain names that incorporate the
`
`l—877—CPNEEDS mark, or any mark confusingly similar thereto, to CLS;
`
`3.
`
`Directing Defendants to file with this Court and serve on CLS’s attorneys,
`
`thirty (30) days after the date of entry of any injunction, a report in writing and under oath setting
`
`forth in detail the manner and form in which they have complied with the injunction;
`
`4.
`
`Requiring Defendants to account for any and all profits arising from the
`
`foregoing
`
`acts
`
`of dilution,
`
`infringement,
`
`false
`
`designation
`
`of origin,
`
`passing
`
`off,
`
`misrepresentation, unfair competition, and misappropriation, and trebling such profits for
`
`payment to CLS in accordance with 15 U.S.C. § lll7 and other applicable laws;
`
`5.
`
`Requiring Defendants to pay CLS compensatory damages in an amount as
`
`yet undetermined caused by the foregoing acts of dilution, infringement, false designation of
`
`origin, passing off, misrepresentation, unfair competition, and misappropriation, and trebling
`
`such profits for payment to CLS in accordance with 15 U.S.C. § lll7 and other applicable laws;
`
`6.
`
`Requiring Defendants to pay CLS punitive damages in an amount as yet
`
`undetermined caused by the foregoing acts of Defendants;
`
`7.
`
`Requiring Defendants to pay CLS’s costs and attorneys fees in this action
`
`pursuant to 15 U.S.C. § lll7; and
`
`C.
`
`Any further relief the Court deems just and warranted.
`
`l3
`
`

`
`Case 2:08—ev—’i3532-NGE—FviJH
`
`Document 1
`
`Fiied OSH5/2008
`
`Page ‘E4 of 14
`
`Respectfully submitted,
`
`HONIGMAN MILLER SCHWARTZ AND COHN LLP
`
`By: /s/ Bram 1>. Wassom
`
`Herschel P. Fink (Pl3427)
`
`Brian D. Wassom (P60381)
`
`2290 First National Building
`660 Woodward Avenue
`
`Detroit, MI 48226-3506
`
`(313) 465-7594
`
`hpf@honigman.com
`bdW@honigman.com
`
`~and~
`
`Michael A. Lisi (P39597)
`38500 Woodward Avenue, Suite 100
`
`Bloomfield Hills, MI 48304-5048
`
`(248) 566-8504
`mlisi@honigman.com
`
`Dated: August 15, 2008
`DETROIT.3267862.1
`
`l4
`
`

`
`Index of Exhibits
`
`A
`
`B
`
`C
`
`Emails between Stern and AT&T
`
`Emails between Stern and Qwest
`
`Notice filed by Kresch
`
`

`
`From: RUKAT, DEBORAH A (A'|'|'AIS) [mai|to:dr2618@att.com]
`Sent: Thursday, July 31, 2008 4:37 PM
`To: Kenneth Stern
`
`Subject: RE: children's legal services, pllc; requested assistance
`
`Yes i wouici say that is a true statement.
`
`From: Kenneth Stern [mai|to:ken@4mychi|d.com]
`Sent: Thursday, July 31, 2008 4:27 PM
`To: RUKAT, DEBORAH A (AT|'AIS)
`Subject: RE: children's legal services, pllc; requested assistance
`
`Debbie,
`
`Wcuid i be correct then in stating that the number was ours and part of our account with AT&T untii
`March, 2008?
`
`Thanks, again...
`
`Ken
`
`
`
`Children's Legai Services, PLLC
`Kenneth A. Stern, PLLC
`
`Kenneth A. Stern, Esq.
`Chief Executive Officer
`
`39555 Orchard Hili Piece, Suite 365
`Nevi, Mi 48375
`Direct: 248-347-7315
`
`Office: 248-347-7300, Ext. 315
`Toii-Free: 800-4lviY-CHELD (800-469-2445)
`it/iobiie: 248-982-4788
`Fax: 248-305-3250
`
`emaii: Kengw;4mychiid.c0m
`web: www.4rnychiicl.cem
`
`

`
`Confidential: This electronic message and all contents contain information from Children's
`Legal Services, PLLC and/"or Kenneth A. Stem, PLLC which may be privileged, confidential
`or otherwise protected from disclosure. The information is intended to be for the addressee
`only. if you are not the addressee, any disclosure, copy, distribution or use of the contents of
`this message is prohibited. if you have received this electronic message in error, please
`notify us immediately at 248-347-7300 and destroy the original message and all copies.
`Neither this information block, the typed name of the sender, nor anything else in this
`message is intended to constitute an electronic signature unless a specific statement to the
`contrary is included in this message.
`
`From: RUKAT, DEBORAH A (A'|'|'AIS) [mai|to:dr2618@att.com]
`Sent: Thursday, July 31, 2008 4:27 PM
`To: Kenneth Stern
`
`Subject: RE: children's legal services, pllc; requested assistance
`
`Ken,
`lm thinking it was
`You are welcome. Both sides agree the number moved sometime in lvlarchm 2008.
`slammed as you are correct there was no formal request to change carriers at least in our records.
`i am
`curious to see what Qwest tells you, if you get more specific information then they were willing to share
`with me. You may also engage our LE3 group with Qwest if you think it would be helpful
`
`
`
`From: Kenneth Stern [maI|to:ken@4mychI|d.com]
`Sent: Thursday, July 31, 2008 4:10 PM
`To: RUKAT, DEBORAH A (ATFAIS)
`Subject: RE: children's legal services, pllc; requested assistance
`
`Debbie,
`
`Thank you very much for the helpful information. i will Contact Quest per your suggestion.
`
`in addition, can you determine when the number was removed from our account with AT&TlSBC. and
`when/whether we were made aware of that‘?
`
`lf there was no formal request to change carriers, can we determine how the number was removed from
`our account?
`
`Thanks, again...
`
`Ken
`
`
`
`:'
`t‘
`.-
`\~.\ <.
`,.\< m‘_.
`.\
`5:. ~\
`.~}t§S:\} <§.¢‘??t.$ ,«“‘s‘\\.§,‘\?§§ 3&3 Rxs‘
`
`

`
`Children's Legal Services, PLLC
`Kenneth A. Stern, PLLC
`
`Kenneth A. Stern, Esq.
`Chief Executive Officer
`
`39555 Orchard Hill Place, Suite 385
`Novl, Ml 48375
`Direct: 248-347-7315
`
`Office: 248-347-7300, Ext. 315
`Toll-Free: 800-4l\/iY-Cl-lii..D (800-489-2445)
`Mobile: 248-982-4788
`Fax: 248-305-3250
`
`email: l<en§d>4mychild.com
`web: www,4mychild,com
`
`Confidential: This electronic message and all contents contain information from Children's
`Legal Services, PLLC and/or Kenneth A. Stern, PLLC which may be privileged, confidential
`or otherwise protected from disclosure. The information is intended to be for the addressee
`only. if you are not the addressee, any disclosure, copy, distribution or use of the contents of
`this message is prohibited. lf you have received this electronic message in error, please
`notify us immediately at 248-347-7300 and destroy the original message and all copies.
`Neither this information block, the typed name of the sender, nor anything else in this
`message is intended to constitute an electronic signature unless a specific statement to the
`contrary is included in this message.
`
`From: RUKAT, DEBORAH A (A'|'|'AIS) [mai|to:dr2618@att.com]
`Sent: Thursday, July 31, 2008 4:06 PM
`To: Kenneth Stern
`
`Subject: RE: children's legal services, pllc; requested assistance
`
`Ken,
`i had this checked out and here are the details i received. 877-276-3337 is an active number with a
`
`customer through Qwest LE) since March 2008. Please contact Qwest directly to inquire how they
`obtained this number and who authorized the switch to Qwest. Also, that you would like the number back
`and to start the process of moving it back to AT&T. The number