Time's Up v. ActNow Complaint

Case 2:09-cv-00131-HDM-LRL Document 1 Filed 01/20/2009 Page 1 of 7
1 Mark G. Tratos (Bar No. 1086)

F. Christopher Austin (Bar No. 6559)
2 GREENBERG TRAURIG, LLP
3773 Howard Hughes Parkway
3 Suite 500 North
Las Vegas, Nevada 89169
4 Telephone: (702) 792-3773
Facsimile: (702) 792-9002
5
Counsel for Plaintiff
6
7 UNITED STATES DISTRICT COURT

8 DISTRICT OF NEVADA
9 Time’s Up, Inc., a Nevada corporation,
Case No.
10 Plaintiff,
COMPLAINT FOR DAMAGES AND
11 v. INJUNCTIVE RELIEF
3773 Howard Hughes Parkway, Suite 400 North
12 (1) Trademark Infringement under

15 U.S.C. § 1115(c)
GREENBERG TRAURIG, LLP
13 ActNow Media, Inc.

(2) Unfair Competition under

(702) 792-9002 (fax)
(702) 792-3773
Defendant. 15 U.S.C. § 1125(a)

14
(3) Common Law Trademark
15 Infringement
(4) Deceptive Trade Practices under
16 N.R.S. 598.0903, et seq.
17
18 For its complaint against Defendant, Plaintiff Time’s Up, Inc. (“Time’s Up”) complains
19 and alleges as follows:
20 NATURE OF ACTION
21 This is an action for trademark infringement and unfair competition under federal
22 statutes, with pendent claims for common law trademark infringement, state deceptive
23 trade practices, and intentional interference with prospective economic advantage. Plaintiff
24 seeks damages, attorneys’ fees, costs, and preliminary and permanent injunctive relief.
25 JURISDICTION
26 1. This Court has subject matter jurisdiction over this case pursuant to 28 U.S.C.
27 §§1331 and 1338(a). This Court has supplemental jurisdiction over Plaintiff’s state law
28 claims pursuant to 28 U.S.C. § 1367(a).
1
LV 418,740,443v1 1-20-09
1 2. This Court has personal jurisdiction over Defendant based upon the following:
2 (a) Defendant regularly conducts business in Las Vegas, Nevada; (b) Defendant operates a
3 web site on the Internet that is accessible to residents of the State of Nevada; and (c)
4 Defendant committed tortious acts that it knew or should have known would cause injury to
5 Plaintiff in the State of Nevada.
6 3. Venue is proper in the United States District Court for the District of Nevada
7 under 28 U.S.C. § 1391(b) and (c). Venue lies in the unofficial Southern Division of this
8 Court.
9 PARTIES
10 4. Plaintiff Time’s Up is a Nevada corporation with its principal place of business
11 in Las Vegas, Nevada. Time’s Up manufactures mouse pads and related computer
12 accessories under its well-known DIGISPEC brand.

13 5. Upon information and belief, Defendant ActNow Media, Inc. (“ActNow”) is a

(702) 792-9002 (fax)

(702) 792-3773
14 Georgia corporation with its principal place of business in Alpharetta, Georgia. Defendant
15 regularly conducts business in the State of Nevada via a web site on the World Wide Web,
16 which is accessible to Nevada residents.
17 ALLEGATIONS COMMON TO ALL COUNTS

18 6. Plaintiff Time’s Up manufactures and sells mouse pad and related computer
19 accessories under the marks WHEN YOU THINK OF MOUSE PADS…THINK OF
20 DIGISPEC; WHEN YOU THINK OF MOUSE PADS… DIGISPEC; and WHEN YOU THINK
21 OF MOUSE PADS… (collectively, the “WHEN YOU THINK OF MOUSE PADS Marks” or
22 the “Marks”).
23 7. Plaintiff Time’s Up owns the Marks and owns pending trademark applications
24 before the United States Patent and Trademark Office for the marks WHEN YOU THINK
25 OF MOUSE PADS…THINK OF DIGISPEC; and WHEN YOU THINK OF MOUSE PADS…
26 DIGISPEC in connection with the custom manufacturing of mouse pads, counter mats,
27 coasters, notepads, calendars, cups and containers, and for online retail sales, catalog
28 sales and wholesale distribution of mouse pads, counter mats, coasters, notepads,
2
LV 418,740,443v1 1-20-09
1 calendars, cups and containers. A copy of Plaintiff’s federal trademark applications are
2 attached hereto as Exhibit A.

3 8. Plaintiff Time’s Up has invested significant time and money in developing the
4 WHEN YOU THINK OF MOUSE PADS Marks and substantially more resources in
5 promoting its products and services in the United States and throughout the world, for more
6 than 11 years. The result of these efforts has been the establishment of a name and
7 trademark that represents a business known as a provider of high quality goods and
8 exceptional customer service.
9 9. Time’s Up began using the WHEN YOU THINK OF MOUSE PADS Marks in
10 connection with its mouse pad and related computer accessories in 1998 and since that
11 time has continuously used the Marks in connection with the advertising and promotion of
12 its products and services in the United States and around the world.
13 10. Based on its extensive use, Time’s Up owns the exclusive right to use the
(702) 792-9002 (fax)

(702) 792-3773
14 WHEN YOU THINK OF MOUSE PADS Marks in connection with mouse pads and related
15 computer accessories.
16 11. On or about January 6, 2009, Defendant began using a confusingly similar
17 variation of Plaintiff’s WHEN YOU THINK OF MOUSE PADS Marks to advertise its line of
18 mouse pads and computer accessories. Specifically, Defendants commenced sending out
19 widely distributed flyers via email to advertise their competing products. See Defendant
20 Flyer, attached hereto as Exhibit B.

21 12. The title of the flyer reads in large bold type: “When You Think of
22 Mouse Pads and Counter Mats”, exactly copying Plaintiff’s Marks. (See
23 Exhibit B). Directly beneath this title, Defendant has placed its own MOUSE MESSAGES,
24 and MAT MESSAGES name together with a collage of images showing Defendants’
25 products.
26 13. The title of the flyer is confusingly similar if not identical to Plaintiff’s WHEN
27 YOU THINK OF MOUSE PADS Marks.
28
3
LV 418,740,443v1 1-20-09
1 14. By using a title on this flyer that is confusingly similar to Plaintiff’s Marks,
2 Defendant is attempting to intentionally trade on Plaintiffs trade identity and goodwill to
3 confuse consumers, to use Plaintiff’s goodwill to cause potential consumers to examine
4 Defendant’s flyer and products and/or to cause consumers to wrongfully believe that
5 Defendant or its products are somehow affiliated with Plaintiff when such is not the case, or
6 at the very least, to cause initial interest confusion in order to entice the consumer to read
7 Defendants advertisement, by making the consumer “initially” believe the advertisement is
8 associated with Plaintiff.
9 15. Plaintiff’s Marks were distinctive at the time Defendant began its use of a
10 confusingly similar mark.
11 16. Upon information and belief, Defendant did not believe or have reasonable
12 grounds to believe that the use of a confusingly similar variation of Plaintiff’s protected
13 Marks was a fair use or otherwise lawful.

(702) 792-9002 (fax)

(702) 792-3773
14 17. Defendant is not entitled use Plaintiff’s WHEN YOU THINK OF MOUSE
15 PADS Marks to compare Defendant’s products to Plaintiff. Plaintiff’s WHEN YOU THINK
16 OF MOUSE PADS Marks are unnecessary to identify Plaintiff or its products, and Plaintiff’s
17 products can be readily identified without using Plaintiff’s WHEN YOU THINK OF MOUSE
18 PADS Marks.
19 18. Further, Defendants use of large, bolded text to set off its infringing use of
20 Plaintiff’s Marks from the rest of the flyer, and Defendants prominent, indeed primary,
21 placement of Plaintiff’s WHEN YOU THINK OF MOUSE PADS Marks as the fist line and
22 title of the flyer, together with the bold and large text of Plaintiff’s DIGISPEC mark
23 wrongfully suggest Plaintiff’s sponsorship or endorsement of Defendant or the Defendant’s
24 products.
25 FIRST CLAIM FOR RELIEF

26 (Trademark Infringement under the Lanham Act, 15 U.S.C. § 1125(c))
27 19. Plaintiff incorporates the allegations in the preceding paragraphs as if fully set
28 forth herein.
4
LV 418,740,443v1 1-20-09
1 20. Defendant’s use in commerce of a mark identical and/or confusingly similar to
2 Plaintiff’s Marks in connection with Defendant’s web site, mouse pads and computer-
3 related goods and services, constitutes a reproduction, copying, counterfeiting, and
4 colorable imitation of Plaintiff’s name in a manner that is likely to cause confusion or
5 mistake or is likely to deceive consumers.
6 21. Defendant’s use of Plaintiff’s Marks has created a likelihood of confusion
7 among consumers who may falsely believe that Defendant’s business and/or goods and
8 services are associated with Plaintiff’s or that Plaintiff sponsors or approves of Defendant’s
9 products or commercial activities.
10 22. As a direct and proximate result of Defendant’s infringement, Plaintiff has
11 suffered, and will continue to suffer, monetary loss and irreparable injury to its business,
12 reputation, and goodwill.

13 SECOND CLAIM FOR RELIEF

(702) 792-9002 (fax)

(702) 792-3773
14 (Unfair Competition under Lanham Act § 1125(a))
16 forth herein.
17 24. Defendant’s use in commerce of a mark identical and/or confusingly similar to
18 Plaintiff’s Marks in connection with Defendant’s goods and services constitutes a false
19 designation of origin and/or a false or misleading description or representation of fact,
20 which is likely to cause confusion, cause mistake, or deceive as to affiliation, connection, or
21 association with Plaintiff, or as to the origin, sponsorship, or approval of Defendant’s
22 products or commercial activities by Plaintiff.
23 25. By using Plaintiff’s Marks with the knowledge that Plaintiff owns and has
24 used, and continues to use, its Marks in Las Vegas, across the United States, and around
25 the world, Defendant has intended to cause confusion, cause mistake, or deceive
26 consumers.
27 26. As a direct and proximate result of such unfair competition, Plaintiff has
28 suffered, and will continue to suffer, monetary loss and irreparable injury to its business,
5
LV 418,740,443v1 1-20-09
2 THIRD CLAIM FOR RELIEF

3 (Common Law Trademark Infringement)
5 forth herein.
6 28. By virtue of having used and continuing to use its Marks, Plaintiff has
7 acquired common law rights in that mark.
8 29. Defendant’s use of a mark identical and/or confusingly similar to Plaintiff’s
9 Marks infringes Plaintiff’s common law rights in its trademark, and this use is likely to cause
10 confusion, mistake, or deception among consumers, who will believe that Defendant’s
11 mouse pads and/or computer accessories originate from, or are affiliated with, or endorsed
12 by Plaintiff when, in fact, they are not.

13 30. As a direct and proximate result of Defendant’s infringement of Plaintiff’s

(702) 792-9002 (fax)

(702) 792-3773
14 common law trademark rights under Nevada and other common law, Plaintiff has suffered,
15 and will continue to suffer, monetary damages and irreparable injury to its business,
17 FOURTH CLAIM FOR RELIEF

18 (Deceptive Trade Practices
19 under N.R.S. § 598.0915)
21 forth herein.
22 32. Upon information and belief, in the course of operating its business,
23 Defendant knowingly made false representations as to affiliation, connection and/or
24 association with Plaintiff by using a mark confusingly similar to Plaintiff’s Marks and
25 otherwise engaged in deceptive trade practices.
26 33. As the direct and proximate result of Defendant’s conduct, Plaintiff has
27 suffered, and will continue to suffer, monetary damages and irreparable injury to its
28 business, reputation, and goodwill.
6
LV 418,740,443v1 1-20-09
1 PRAYER FOR RELIEF

2 WHEREFORE, Plaintiff respectfully prays that the Court grant the following relief:
3 A. A preliminary and permanent injunction prohibiting Defendant, its respective
4 officers, agents, servants, employees and/or all persons acting in concert or participation
5 with them, or any of them, from using Plaintiff’s Marks or confusingly similar variations
6 thereof, alone or in combination with any other letters, words, letter strings, phrases or
7 designs, in commerce or in connection with any business or for any other purpose
8 (including, but not limited to, on email flyers, web sites and in domain names);
9 B. An award of compensatory, consequential, statutory, and punitive damages to
10 Plaintiff in an amount to be determined at trial;
11 D. An award of interest, costs and attorneys’ fees incurred by Plaintiff in

12 prosecuting this action; and

13 E. All other relief to which Plaintiff is entitled.

(702) 792-9002 (fax)

(702) 792-3773
14 DATED: January 20, 2009.
15 GREENBERG TRAURIG, LLP
16
/s/ F. Christopher Austin
17 Mark G. Tratos (Bar No. 1086)
F. Christopher Austin (Bar No. 6559)
18 3773 Howard Hughes Parkway, Suite 400 N
19 Counsel for Plaintiff
20
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25
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LV 418,740,443v1 1-20-09
Case 2:09-cv-00131-HDM-LRL Document 1-3 Filed 01/20/2009 Page 1 of 4

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Case 2:09-cv-00131-HDM-LRL Document 1 Filed 01/20/2009 Page 1 of 7

1 Mark G. Tratos (Bar No. 1086)

7 UNITED STATES DISTRICT COURT

12 (1) Trademark Infringement under

13 ActNow Media, Inc.

(2) Unfair Competition under

Defendant. 15 U.S.C. § 1125(a)

5 Plaintiff in the State of Nevada.

12 accessories under its well-known DIGISPEC brand.

13 5. Upon information and belief, Defendant ActNow Media, Inc. (“ActNow”) is a

(702) 792-9002 (fax)

16 which is accessible to Nevada residents.

17 ALLEGATIONS COMMON TO ALL COUNTS

19 accessories under the marks WHEN YOU THINK OF MOUSE PADS…THINK OF

25 OF MOUSE PADS…THINK OF DIGISPEC; and WHEN YOU THINK OF MOUSE PADS…

2 attached hereto as Exhibit A.

8 exceptional customer service.

(702) 792-9002 (fax)

16 11. On or about January 6, 2009, Defendant began using a confusingly similar

20 Flyer, attached hereto as Exhibit B.

27 YOU THINK OF MOUSE PADS Marks.

2 Defendant is attempting to intentionally trade on Plaintiffs trade identity and goodwill to

3 confuse consumers, to use Plaintiff’s goodwill to cause potential consumers to examine

7 Defendants advertisement, by making the consumer “initially” believe the advertisement is

8 associated with Plaintiff.

10 confusingly similar mark.

13 Marks was a fair use or otherwise lawful.

(702) 792-9002 (fax)

23 wrongfully suggest Plaintiff’s sponsorship or endorsement of Defendant or the Defendant’s

25 FIRST CLAIM FOR RELIEF

1 20. Defendant’s use in commerce of a mark identical and/or confusingly similar to

3 related goods and services, constitutes a reproduction, copying, counterfeiting, and

4 colorable imitation of Plaintiff’s name in a manner that is likely to cause confusion or

5 mistake or is likely to deceive consumers.

6 21. Defendant’s use of Plaintiff’s Marks has created a likelihood of confusion

9 products or commercial activities.

10 22. As a direct and proximate result of Defendant’s infringement, Plaintiff has

12 reputation, and goodwill.

13 SECOND CLAIM FOR RELIEF

(702) 792-9002 (fax)

14 (Unfair Competition under Lanham Act § 1125(a))

17 24. Defendant’s use in commerce of a mark identical and/or confusingly similar to

19 designation of origin and/or a false or misleading description or representation of fact,

20 which is likely to cause confusion, cause mistake, or deceive as to affiliation, connection, or

21 association with Plaintiff, or as to the origin, sponsorship, or approval of Defendant’s

22 products or commercial activities by Plaintiff.

1 reputation, and goodwill.

2 THIRD CLAIM FOR RELIEF

7 acquired common law rights in that mark.

8 29. Defendant’s use of a mark identical and/or confusingly similar to Plaintiff’s

12 by Plaintiff when, in fact, they are not.

13 30. As a direct and proximate result of Defendant’s infringement of Plaintiff’s

(702) 792-9002 (fax)

16 reputation, and goodwill.

17 FOURTH CLAIM FOR RELIEF

19 under N.R.S. § 598.0915)

23 Defendant knowingly made false representations as to affiliation, connection and/or

25 otherwise engaged in deceptive trade practices.

28 business, reputation, and goodwill.

1 PRAYER FOR RELIEF

3 A. A preliminary and permanent injunction prohibiting Defendant, its respective

9 B. An award of compensatory, consequential, statutory, and punitive damages to

10 Plaintiff in an amount to be determined at trial;

11 D. An award of interest, costs and attorneys’ fees incurred by Plaintiff in

Time's Up v. ActNow Complaint

Time's Up v. ActNow Complaint