Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA823799
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`Filing date:
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`05/30/2017
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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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`92065908
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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 e-mail
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`Signature
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`Date
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`Defendant
`The Leader's Institute, LLC
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`THE LEADERS INSTITUTE LLC
`6703 CORONATION CT
`ARLINGTON, TX 76017
`UNITED STATES
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`Motion to Suspend for Civil Action
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`Kristin Jordan Harkins
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`dallaslit@dfw.conleyrose.com
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`/kristinjordanharkins/
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`05/30/2017
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`Attachments
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`LEAD 4456-02100 - TTAB Motion to Suspend.pdf(830433 bytes )
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`

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`Attorney Docket Number 4456-02100
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of U.S. Trademark Reg. No. 4,542,884 (BUILD-A-BIKE)
`Registered: June 3, 2014
`U.S. Trademark Reg. No. 3,535,706 (BUILD-A-BIKE)
`Registered: November 18, 2008 (supplemental register)
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`
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`Cancellation No. 92065908
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`§
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`GOLDEN STATE FOODS FOUNDATION
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`Petitioner,
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`v.
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`THE LEADER’S INSTITUTE, LLC
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`Registrant.
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`REGISTRANT’S MOTION TO SUSPEND PROCEEDING
`PENDING OUTCOME OF CIVIL ACTION
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`Registrant (“Registrant” or “TLI”), by and through its undersigned counsel, hereby
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`
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`moves for suspension of this proceeding pursuant to 37 C.F.R. § 2.117 and T.B.M.P. 510.02(a),
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`pending the final determination of The Leader’s Institute, LLC v. Golden State Foods
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`Foundation., Civil Action 3:16-cv-03258-B, pending in the United States District Court for the
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`Northern District of Texas.
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`I.
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`INTRODUCTION
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`On November 21, 2016, TLI filed a complaint against Petitioner Golden State Foods
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`Foundation (“Petitioner” or “GSFF”) in the United States District Court for the Northern District
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`of Texas, styled The Leader’s Institute, LLC v. Golden State Foods Foundation., Civil Action
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`737945v1/4456-02100
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`

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`Attorney Docket Number 4456-02100
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`3:16-cv-03258-B, (the “Federal Action”).1 The complaint asserts various counts of federal and
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`state trademark infringement, unfair competition, trade dress infringement, and unjust
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`enrichment against GSFF. TLI filed an amended complaint on March 9, 20172, and GSFF moved
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`to dismiss the Amended Complaint on April 6, 2017.3
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`After moving to dismiss the Federal Action, GSFF filed this cancellation proceeding on
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`April 12, 2017. The allegations made by GSFF in its petition for cancellation are that no
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`likelihood of confusion exists because TLI’s mark is generic; and that GSFF will be damaged by
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`being unable to register its “GSP Foundation Build Your Bike & Design Mark.”(Petition at 4).
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`II.
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`ARGUMENT
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`TLI requests suspension of these cancellation proceedings because the currently pending
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`Federal Action will address and resolve all of the issues raised by GSFF in this cancellation
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`proceeding.
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`
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`The Trademark and Trial Appeal Board (TTAB) has directly addressed this scenario in
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`its rules and procedures. Trademark Rule 2.117(a), codified at 37 C.F.R. 2.117(a) provides that:
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`Whenever it shall come to the attention of the Trademark Trial and
`Appeal Board that a party or parties to a pending case are engaged
`in a civil action or another Board proceeding which may have a
`bearing on the case, proceedings before the Board may be
`suspended until termination of the civil action or other Board
`proceeding.
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`Further, the Trademark Trial and Appeal Board Manual of Procedure explains that “[u]nless
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`there are special circumstances, the Board will suspend proceedings in the case before it if the
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`1 A true and correct copy of TLI’s Complaint in the Federal Action is attached hereto as Exhibit
`A.
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` 2
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` A true and correct copy of TLI’s First Amended Complaint in the Federal Action is attached
`hereto as Exhibit B.
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` 3
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` A true and correct copy of GSFF’s Motion to Dismiss in the Federal Action is attached hereto
`as Exhibit C.
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`737945v1/4456-02100
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`

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`Attorney Docket Number 4456-02100
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`final determination of the other proceeding may have a bearing on the issues before the Board.”
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`See TBMP §510.02(a) (2015) (emphasis added).
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`The TTAB has applied this rule liberally and suspended proceedings until related district
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`court actions are concluded. See, e.g., Whopper-Burger, Inc. v. Burger King Corp., 171 U.S.P.Q.
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`805, 807 (T.T.A.B. 1971) (suspending cancellation proceeding in light of pending federal
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`litigation because “the outcome of the civil action will have a direct bearing on the question of
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`the rights of the parties herein and may in fact completely resolve all the issues.”); General
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`Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933, 1992 WL 141992, at *3-4
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`(T.T.A.B. 1992) (same). To the extent that a civil action in a Federal district court involves
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`issues in common with the issues in a TTAB proceeding, the district court’s findings are binding
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`on the TTAB. See TBMP §510.02(a) (2015).
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`
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`Here, TLI requests suspension of the cancellation proceeding because the Federal Action
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`involves the same parties, the same trademarks, the same request for cancellation of TLI’s
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`marks, and the same alleged grounds for cancellation. GSFF has claimed no likelihood of
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`confusion and sought cancellation of Townsquare’s marks on the basis of genericness. Findings
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`by the district court on these issues will be binding on the TTAB, therefore the Federal Action
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`has a bearing on this cancellation proceeding. See General Motors, 1992 WL 141992 at *3-4. In
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`addition, TLI has asserted allegations of infringement against GSFF of its trademarks. In order to
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`prevail on this claim, Townsquare has to establish its rights in these trademarks, and if the
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`district court determines such rights exist, such determination should have a bearing on GSFF’s
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`allegations of genericness in the cancellation proceeding.
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`737945v1/4456-02100
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`

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`Attorney Docket Number 4456-02100
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`
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`TLI therefore respectfully requests that, in the interests of judicial economy and to avoid
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`inconsistent results, this cancellation proceeding be suspended pending a final determination in
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`the Federal Action.
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`DATE: May 30, 2017
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`Respectfully Submitted,
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`/s/ Kristin Jordan Harkins
`Darlene F. Ghavimi
`TX Bar No. 24072114
`dghavimi@conleyrose.com
`CONLEY ROSE, P.C.
`13413 Galleria Circle, Suite 100
`Austin, TX 78738
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`Kristin Jordan Harkins
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`TX Bar No. 00787795
`kharkins@dfw.conleyrose.com
`CONLEY ROSE, P.C.
`5601 Granite Parkway, Suite 500
`Plano, TX 75024
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`Attorneys For Registrant
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`737945v1/4456-02100
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`

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`Attorney Docket Number 4456-02100
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Registrant’s Motion to
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`Suspend Proceedings Pending Outcome of Civil Action has been served on counsel of record for
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`Golden State Foods Foundation by e-mail and first class mail, Certified Return Receipt
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`Requested, on May 30, 2017.
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`Nancy Rubner Frandsen
`Phong Nguyen
`Charlie Lyu
`BAKER & HOSTETLER, LLP
`Circa Centre, 12th Floor
`2929 Arch St.
`Philadelphia, PA 19104
`Phone: 215-564-1223
`Fax: 215-568-3439
`Email: BHIPDocket@bakerlaw.com
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`/s/ Darlene Ghavimi
`Darlene Ghavimi
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`737945v1/4456-02100
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`

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`EXHIBIT A  
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`EXHIBIT A
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`             
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`

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` Case 3:16-cv-03258-B Document 1 Filed 11/21/16 Page 1 of 14 PageID 1
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`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`Dallas Division
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`THE LEADER’S INSTITUTE, LLC,
`a Texas Limited Liability Company
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`Plaintiff,
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`v.
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`GSF FOUNDATION,
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`a California Corporation
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`Defendant.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
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`§
`§
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`CIVIL ACTION NO. 3:16-cv-3258
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`PLAINTIFF’S ORIGINAL COMPLAINT
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`COMES NOW The Leader’s Institute, LLC, (“Plaintiff”)by and through the undersigned
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`counsel, and files this Complaint against Golden State Foods Foundation (“Defendant”) and
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`alleges the following:
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`NATURE OF THE ACTION
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`1.
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`This is an action for trademark infringement and unfair competition under the
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`United States Trademark (Lanham) Act 15 U.S.C. §§ 1051, et seq., and unfair competition,
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`unjust enrichment, and trademark infringement under the common law and the laws of this State.
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`2.
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`Plaintiff, The Leader’s Institute, LLC, is a highly successful, independent, and
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`privately held company offering training to organizations and individuals in leadership and
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`management skills development, public speaking skills, and team-building.
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`3.
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`Plaintiff has invested significantly in its business as well as its branding, including
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`use of the mark BUILD-A-BIKE®.
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`413749-v1/4456-02100
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`Page 1
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`

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` Case 3:16-cv-03258-B Document 1 Filed 11/21/16 Page 2 of 14 PageID 2
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`4.
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`As a result of its extensive advertising, provision of services, sound business
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`practices, and operations, Plaintiff has established strong relationships with consumers who have
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`come to recognize and respect the services provided by Plaintiff and identified using the
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`Plaintiff’s BUILD-A-BIKE® mark.
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`5.
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`Plaintiff’s BUILD-A-BIKE® trademark is distinctive and well known as used in
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`connection with the services offered by Plaintiff, resulting in recognition that the services offered
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`under the mark emanate from a single source – namely Plaintiff. Thus, there is a likelihood that
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`the Plaintiff’s existing and potential customers will be confused unless Defendant is enjoined.
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`6.
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`The goodwill embodied in the mark of Plaintiff, and consequently Plaintiff’s
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`valuable reputation and credibility in the industry, depends on the integrity of the mark as being
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`identified exclusively with Plaintiff, and not any other source.
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`7.
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`This lawsuit is brought to stop Defendant’s infringement of valuable intellectual
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`property rights, including the federally registered BUILD-A-BIKE® mark relating to Plaintiff’s
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`business, from passing off Defendant’s operations as those of Plaintiff, including engaging in
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`activities likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
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`connection, or association of such person with another person, or as to the origin, sponsorship, or
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`approval of his or her goods, services, or commercial activities by another person.
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`8.
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`Defendant’s use of Plaintiff’s BUILD-A-BIKE® mark in connection with its
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`business constitutes an apparent intentional effort to imitate and/or cause confusion with respect
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`to the successful business and trademark of Plaintiff.
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`9.
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`Defendant’s infringement of Plaintiff’s intellectual property rights harms Plaintiff,
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`as well as Plaintiff’s customers who may be confused and deceived by Defendant’s unauthorized
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`413749-v1/4456-02100
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`Page 2
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`

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` Case 3:16-cv-03258-B Document 1 Filed 11/21/16 Page 3 of 14 PageID 3
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`reproduction and/or imitation of Plaintiff’s trademark, both federally registered and at common
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`law.
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`10.
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`Plaintiff respectfully seeks intervention of this Court to stop Defendant from
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`continuing its present activities and for monetary damages.
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`THE PARTIES
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`11.
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`Plaintiff re-alleges and incorporates by reference the foregoing allegations as
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`though fully set forth herein.
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`12.
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`The Leader’s Institute, LLC (“TLI”), is a limited liability company duly
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`organized and existing under the laws of the state of Texas with its principal place of business at
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`6703 Coronation Court, Arlington, Texas, 76017. TLI is engaged in the business of education
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`and training for organizations and individuals in leadership and management skills development,
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`public speaking skills and team-building.
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`13.
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`Defendant, Golden State Foods Foundation (“GSF Foundation”), is a California
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`501(c)3 non-profit corporation whose principal place of business is at 18301 Von Karman
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`Avenue, #1100, Irvine, California 92612. On information and belief, Defendant may be served
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`with process by serving its registered agent, Corporation Service Company, at 2710 Gateway
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`Oaks Drive, Suite 150N, Sacramento, California 95833.
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`JURISDICTION AND VENUE
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`14.
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`Plaintiff re-alleges and incorporates by reference the foregoing allegations as
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`though fully set forth herein.
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`15.
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`The Court has subject matter jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C.
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`§§ 1331 and 1338, and has supplemental jurisdiction over the state law claims under 28 U.S.C.
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`§1367(a).
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`413749-v1/4456-02100
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`Page 3
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` Case 3:16-cv-03258-B Document 1 Filed 11/21/16 Page 4 of 14 PageID 4
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`16.
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`On information and belief, this Court has personal jurisdiction over Defendant
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`under the Texas long arm statute because Defendant has established minimum contacts with
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`Texas such that the exercise of personal jurisdiction over Defendant is proper under the due
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`process clause of the United States Constitution. Defendant advertises its business and services
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`over the internet at www.gsffoundation.org which reaches residents in Texas.
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`17.
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`Defendant has established minimum contacts with Texas such that the exercise of
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`personal jurisdiction over Defendant is proper under the due process clause of the United States
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`Constitution because Defendant advertises on its website that it has an established location in the
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`state of Texas, which serves residents of Texas,
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`located at Schertz, Texas. See
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`http://www.gsffoundation.org/about-us/gsf-locations/. Defendant provides a link on its website
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`for individuals to donate to this location in Schertz, Texas, thereby further serving the residents
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`of Texas. See http://www.gsffoundation.org/donate/?donateloc=39.
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`18.
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`Defendant has further established minimum contacts with Texas such that the
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`exercise of personal jurisdiction over Defendant is proper under the due process clause of the
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`United States Constitution because Defendants states that it “proudly supports hundreds of
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`children’s charities and schools throughout the United States” which includes Bellaire
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`Elementary, Carroll Bell Elementary, Kingsborough Middle, Vestal Elementary, Southside
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`Heritage Elementary, and Serna Elementary in San Antonio, Texas, Goodwin Frazier Elementary
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`and Memorial Elementary in New Braunfels, Texas, Marion Project Care in Marion, Texas, and
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`Robb Elementary in Uvalde, Texas. Accordingly, Defendant serves residents of the state of
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`Texas.
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`19.
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`Exercise of personal jurisdiction over Defendant is also proper under the due
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`process clause of the United States Constitution because Defendant is committing the tort of
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`413749-v1/4456-02100
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`Page 4
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` Case 3:16-cv-03258-B Document 1 Filed 11/21/16 Page 5 of 14 PageID 5
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`trademark infringement in Texas by providing services that infringe Plaintiff’s trademark in
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`Texas and by advertising that is intentionally directed at Texas and its residents with the purpose
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`and effect of injuring TLI at its principal place of business in Texas.
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`20.
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`On information and belief, Defendant has willfully and voluntarily committed the
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`acts complained of herein in at least this State.
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`21.
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`On information and belief, venue is proper under 28 U.S.C. § 1391.
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`
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`FACTUAL ALLEGATIONS
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`A. PLAINTIFF’S BUILD-A-BIKE® TRADEMARK
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`22.
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`Plaintiff re-alleges and incorporates by reference the foregoing allegations as
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`though fully set forth herein.
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`23.
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`Since at least as early as December 2001, Plaintiff has been engaged in the
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`business of conducting corporate leadership, team-building and public speaking seminars.
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`24.
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`Plaintiff provides training to organizations and individuals in leadership and
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`management skills development, public speaking skills, and team-building training. Plaintiff
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`also organizes and puts on corporate charity events which allow for both the development of
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`team building skills and charitable giving by its organizational clients.
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`25.
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`Plaintiff, by and through itself, and by and through its chief executive officer, is
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`the owner of several service marks registered with the United States Patent and Trademark
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`Office (“USPTO”), including without limitation, the following registrations:
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`U.S. Trademark Registration No. 4,542,884 for the standard character word mark
`BUILD-A-BIKE® for use in connection with “educational services, namely, conducting
`classes, seminars, workshops, lectures, and self-paced training programs in the field of
`personal and professional development, leadership, communication, and team building
`and distribution of educational materials in connection therewith; personal coaching
`services in the field of personal and professional development for individuals and
`groups,” in International Class 41; and
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`413749-v1/4456-02100
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`Page 5
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` Case 3:16-cv-03258-B Document 1 Filed 11/21/16 Page 6 of 14 PageID 6
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`U.S. Supplemental Trademark Registration No. 3,535,706 for the standard character
`word mark BUILD-A-BIKE® for use in connection with “education services, namely,
`providing classes, seminars, and workshops in the field of team building and leadership,”
`in International Class 41.
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`26.
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`The foregoing trademark registrations are currently valid, subsisting and in full
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`force and effect. True and correct copies of the registration certificates are attached hereto as
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`Exhibits A and B. The federal registration and common law rights of Plaintiff in the mark
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`BUILD-A-BIKE® are collectively referred to hereafter as the “BUILD-A-BIKE® Mark.”
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`27.
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`Plaintiff has extensively advertised and promoted its services and has developed
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`substantial recognition in the marketplace for its services bearing the BUILD-A-BIKE® Mark.
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`Plaintiff’s advertising has included brochures, mailings and other letters, training and course
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`materials, the Internet, and in other manners customary to the trade. Plaintiff also regularly
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`interacts and conducts business with its clients via the telephone, facsimile, mail and/or email
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`using the BUILD-A-BIKE® Mark.
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`28.
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`As a result of Plaintiff’s long use and promotion of the BUILD-A-BIKE® Mark,
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`the mark has become widely and favorably known as identifying Plaintiff and its leadership and
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`team building workshops and related goods and services from those of others, and to distinguish
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`the source or origin of Plaintiff’s leadership and team building workshops and related goods and
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`services.
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`29.
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`As a result of Plaintiff’s long use and promotion of the BUILD-A-BIKE® Mark
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`in the United States, Plaintiff has acquired valuable common law rights in the Mark.
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`30.
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`Plaintiff has continuously used the BUILD-A-BIKE® Mark in interstate
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`commerce since at least as early as October 15, 2005 in connection with leadership and team
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`building workshops and related goods and services, and has followed the USPTO marking
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`413749-v1/4456-02100
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`Page 6
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` Case 3:16-cv-03258-B Document 1 Filed 11/21/16 Page 7 of 14 PageID 7
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`guidelines by properly using the ® and/or TM designations, as appropriate, in connection with
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`the BUILD-A-BIKE® Mark.
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`31.
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`Through Plaintiff’s
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`trademark registrations and Plaintiff’s consistent and
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`continuous use, advertising, and third-party media attention, Plaintiff has developed enforceable
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`statutory and common law rights in the BUILD-A-BIKE® Mark. Plaintiff has established
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`substantial goodwill with its customers via the mark and has developed an excellent reputation
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`throughout the United States. In addition, Plaintiff has invested significantly in advertising the
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`registered BUILD-A-BIKE® Mark in association with its business.
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`B. DEFENDANT’S INFRINGING ACTIVITIES
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`32.
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`33.
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`On information and belief, Defendant GSF is a California corporation.
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`Defendant’s business is a non-profit charity organization that provides financial
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`and volunteer assistance to other charity and non-profit organizations. Defendant’s website is
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`located at www.gsffoundation.org.
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`34.
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`35.
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`On information and belief, Defendant GSF offers services in interstate commerce.
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`On information and belief, Defendant has been using Plaintiff’s BUILD-A-
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`BIKE® mark and confusingly similar marks on their website and elsewhere in advertising and
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`promoting their goods and services since at least as early as August 16, 2012, including but not
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`limited to the following:
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`a. Use of Plaintiff’s identical mark in the URL associated with Plaintiff’s main page
`for its “Charity Bike Build” event which is virtually identical to a bike building
`event offered by Plaintiff:
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`http://www.gsffoundation.org/event/gsf-foundations-national-build-a-
`bike-event/
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`http://www.gsffoundation.org/gsf-foundation-completes-third-annual-
`build-ur-bike-event/
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`Page 7
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` Case 3:16-cv-03258-B Document 1 Filed 11/21/16 Page 8 of 14 PageID 8
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`http://www.gsffoundation.org/cim-hosts-a-build-a-bike-event/
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`http://www.gsffoundation.org/wp-content/uploads/2012/12/Build-A-Bike-
`Logo-2016.png
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`(see Exhibit C);
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`b. Use of Plaintiff’s mark on various pages of Defendant’s website:
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`http://www.gsffoundation.org/core-programs/build-your-bike/
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`http://www.gsffoundation.org/about-us
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`http://www.gsffoundation.org/gsf-foundation-holds-its-first-national-build-
`ur-bike-day
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`http://www.gsffoundation.org/build-ur-bike-takes-a-trip-to-cabo/
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`http://www.gsffoundation.org/second-annual-national-build-ur-bike-event-
`exceeds-goals-and-expectations/
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`http://www.gsffoundation.org/qcd-spokane-build-ur-bike/
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`http://www.gsffoundation.org/wp-content/uploads/2013/02/build-a-bike-
`starbucks-sign1.jpg
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`http://www.gsffoundation.org/category/current-news/
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`http://www.gsffoundation.org/news/
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`See Exhibit D.
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`36.
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`Plaintiff has not licensed or authorized Defendant to undertake any of the above-
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`described activities.
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`37.
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`On May 26, 2016, Plaintiff gave written notice of the infringing activities related
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`to BUILD-A-BIKE® Mark prior to the commencement of this action, again demanding a halt to
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`specific acts by Defendant.
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`38.
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`On September 12, 2016, a second notice was delivered to Defendant demanding it
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`cease the continued use and voluntary infringement of Plaintiff’s mark.
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`39.
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`On September 29, 2016, a third notice was delivered to Defendant’s counsel,
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`demanding again that Defendant cease use and infringement of Plaintiff’s mark.
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`413749-v1/4456-02100
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`Page 8
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` Case 3:16-cv-03258-B Document 1 Filed 11/21/16 Page 9 of 14 PageID 9
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`40.
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`At some point after September 29, 2016, Defendant changed several webpages
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`from “Build-A-Bike” to “Build-Your-Bike.” The revised mark is confusingly similar to
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`Plaintiff’s mark and infringes Plaintiff’s mark.
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`41.
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`On information and belief, and notwithstanding the foregoing, Defendant
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`continues to use Plaintiff’s BUILD-A-BIKE® Mark on its website and elsewhere. On
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`information and belief, and notwithstanding the foregoing, Defendant also continues to use
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`confusingly similar marks such as “Build-Your-Bike.” Such use directly infringes Plaintiff’s
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`intellectual property and uses Plaintiff’s intellectual property to compete with Plaintiff.
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`42.
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`On information and belief, Defendant is willfully continuing to use Plaintiff’s
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`BUILD-A-BIKE® Mark and engage in the acts complained of herein.
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`C. EFFECT OF DEFENDANT’S ACTIVITIES
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`43.
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`Defendant’s activities falsely represent to the relevant public that there is an
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`association with Plaintiff.
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`44.
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`Defendant’s unauthorized use of the BUILD-A-BIKE® Mark and use of
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`confusingly similar marks is likely to cause confusion, to cause mistake, and/or to deceive
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`customers and potential customers of the parties, at least as to some affiliation, connection, or
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`association of Defendant with Plaintiff, or as to the origin, sponsorship, or approval of
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`Defendant’s business by Plaintiff.
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`45.
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`Defendant’s unauthorized use of the BUILD-A-BIKE® Mark and use of
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`confusingly similar marks falsely designates the origin of their business, and falsely and
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`misleadingly describes and represents facts with respect to Defendant’s business.
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`46.
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`Defendant’s unauthorized use of the BUILD-A-BIKE® Mark and use of
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`confusingly similar marks enables Defendant to trade on and receive the benefit of goodwill built
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`up at great labor and expense by Plaintiff over many years, and to gain acceptance for its
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`business not solely on its own merits, but on the reputation and goodwill of Plaintiff, its
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`registered BUILD-A-BIKE® Mark, and its services.
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`47.
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`Defendant’s unauthorized use of the BUILD-A-BIKE® Mark and use of
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`confusingly similar marks unjustly enriches Defendant at Plaintiff’s expense. Defendant has
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`been and continues to be unjustly enriched, obtaining a benefit from Plaintiff by taking undue
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`advantage of Plaintiff and its vast goodwill. Specifically, Defendant has taken unfair advantage
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`of Plaintiff by trading on and profiting from the goodwill in the BUILD-A-BIKE® Mark
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`developed and owned by Plaintiff, resulting in Defendant wrongfully obtaining a monetary and
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`reputational benefit for its own business and products.
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`48.
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`Defendant’s unauthorized use of the BUILD-A-BIKE® Mark and use of
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`confusingly similar marks removes from Plaintiff the ability to control the nature and quality of
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`products provided under the BUILD-A-BIKE® Mark, and places the valuable reputation and
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`goodwill of Plaintiff in the hands of Defendant, over whom Plaintiff has no control.
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`49.
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`Unless these acts of Defendant are restrained by this Court, they will continue,
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`and it will continue to cause irreparable injury to Plaintiff and to the public for which there is no
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`adequate remedy at law.
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`COUNT I: FEDERAL TRADEMARK INFRINGEMENT
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`50.
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`Plaintiff re-alleges and incorporates by reference the foregoing allegations as
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`though fully set forth herein.
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`51.
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`The acts of Defendant complained of herein constitute infringement of Plaintiff’s
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`federally registered BUILD-A-BIKE® Mark in violation of 15 U.S.C. § 1114(1).
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`52.
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`Defendant’s acts complained of herein have been deliberate, willful, intentional,
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`or in bad faith, with full knowledge and conscious disregard of Plaintiff’s rights in the BUILD-
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`A-BIKE® Mark, and with intent to cause confusion and to trade on Plaintiff’s vast goodwill in
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`the BUILD-A-BIKE® Mark. In view of the egregious nature of Defendant’s infringement, this
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`is an exceptional case within the meaning of 15 U.S.C. § 1117(a).
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`COUNT II: FEDERAL UNFAIR COMPETITION
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`53.
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`Plaintiff re-alleges and incorporates by reference the foregoing allegations as
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`though fully set forth herein.
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`54.
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`The acts of Defendant complained of herein constitute unfair competition in
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`violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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`55.
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`Defendant’s use of the BUILD-A-BIKE® Mark without Plaintiff’s consent is
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`likely to cause confusion or mistake, or to deceive as to the affiliation, connection, or association
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`of Defendant with Plaintiff, in violation of 15 U.S.C. § 1125(a) and constitutes unfair
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`competition with Plaintiff.
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`56.
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`Plaintiff believes, and thereon alleges that Defendant’s actions have been
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`undertaken willfully with full knowledge of the likely confusion or mistake with respect to the
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`source of the services.
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`57.
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`Plaintiff believes, and thereon alleges, that Defendant has derived and received,
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`and will continue to derive and receive, gains, profits, and advantages from Defendant’s unfair
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`competition in an amount not presently known to Plaintiff. By reason of Defendant’s actions,
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`constituting unfair competition, Plaintiff has been damaged and is entitled to monetary relief in
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`an amount to be determined at trial.
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`COUNT III: COMMON LAW TRADEMARK INFRINGEMENT
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`58.
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`Plaintiff re-alleges and incorporates by reference the foregoing allegations as
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`though fully set forth herein.
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`59.
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`The acts of Defendant complained of herein constitute trademark infringement in
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`violation of the common law of the State of Texas.
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`COUNT IV: COMMON LAW UNFAIR COMPETITION
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`60.
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`Plaintiff re-alleges and incorporates by reference the foregoing allegations as
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`though fully set forth herein.
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`61.
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`The acts of Defendant complained of herein constitute unfair competition in
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`violation of the common law of the State of Texas.
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`COUNT V: UNJUST ENRICHMENT
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`62.
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`Plaintiff re-alleges and incorporates by reference the foregoing allegations as
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`though fully set forth herein.
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`63.
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`The acts of Defendant complained of herein constitute unjust enrichment of
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`Defendant at the expense of Plaintiff.
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`DEMAND FOR A JURY TRIAL
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`64.
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`Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff
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`respectfully requests a trial by jury of all issues properly triable by jury.
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`PRAYER FOR RELIEF
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`65. WHEREFORE, Plaintiff requests entry of judgment in its favor and against
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`Defendant including the following:
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`a. A judgment declaring that Defendant has infringed Plaintiff’s BUILD-A-BIKE®
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`Mark under state and federal law;
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`b. A judgment awarding Plaintiff damages as a result of Defendant’s infringement of
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`the trademarks with interest and costs;
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`c. A judgment declaring that Defendant’s infringement of Plaintiff’s trademarks has
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`been willful and deliberate;
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`d. A judgment for Plaintiff on all other counts asserted herein;
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`e. A judgment declaring that Defendant’s business, and the present use of Plaintiff’s
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`BUILD-A-BIKE® Mark, in competition with Plaintiff, constitutes trademark
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`infringement under 15 U.S.C. § 1114 and unfair competition under 15 U.S.C. §
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`1125, and also that Defendant’s acts constitute willful infringement under 15
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`U.S.C. § 1117;
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`f. A judgment ordering that Defendant be ordered to pay any and all damages
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`available under 15 U.S.C. § 1117, including court costs, expenses, enhanced
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`damages, statutory damages to the extent permissible, and attorney’s fees;
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`g. A judgment holding Defendant jointly and severally liable.
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`h. A grant of permanent injunction enjoining the Defendant from further acts of
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`trademark infringement and unfair competition;
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`i. Any other accounting for damages;
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`j. Any other appropriate interest and costs; and
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`k. For such other and further relief as the Court deems just and proper.
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`
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`DATED this 21st day of November, 2016.
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`Respectfully submitted,
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`/s/ Kristin Jordan Harkins
`Kristin Jordan Harkins
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`TX Bar No. 00787795
`kharkins@dfw.conleyrose.com
`CONLEY ROSE, P.C.
`5601 Granite Parkway, Suite 500
`Plano, TX 75024
`(972) 731-2288
`(972) 731-2