Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.1 Page 1 of 19 1 2 3 4 5 6 7 8 9 John M. Kim (Bar No. 188997) jkim@ipla.com Benjamin S. White (Bar No. 279796) bwhite@ipla.com Phillip L. Kim (Bar No. 315589) pkim@ipla.com IPLA, LLP 4445 Eastgate Mall, Suite 200 San Diego, CA 92121 Tel: 858-272-0220 Fax: 858-272-0221 Attorneys for Plaintiff BACKCOUNTRY.COM, LLC UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA 10 11 12 13 14 15 16 BACKCOUNTRY.COM, LLC, a Delaware Limited Liability Company, Plaintiff, CASE NO: '19CV1727 BEN JLB COMPLAINT FOR: (1) TRADEMARK INFRINGEMENT UNDER 15 U.S.C. § 1114(1); (2) FEDERAL UNFAIR COMPETITION UNDER 15 U.S.C. § 1125(a); (3) FEDERAL TRADEMARK DILUTION UNDER 15 U.S.C. § 1125(c); (4) VIOLATION OF CAL. BUS. & PROF. CODE § 17200; (5) STATE COMMON LAW TRADEMARK INFRINGEMENT; (6) COMMON LAW UNFAIR COMPETITION; AND (7) CANCELLATION OF TRADEMARK (U.S. REG. NO. 4303504) v. SNAPPERHEAD INVENTIONS, LLC, a Michigan Limited Liability Company, DAVID OLLILA, an Individual, Defendant. 17 18 19 20 21 22 23 24 25 DEMAND FOR JURY TRIAL 26 27 Plaintiff Backcountry.com, LLC (“Backcountry”) brings this Complaint 28 against Defendants Snapperhead Inventions, LLC (“Snapperhead”) and David Ollila -1Case No.: COMPLAINT Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.2 Page 2 of 19 1 (“Mr. Ollila”) for injunctive relief and damages under the laws of the United States 2 and the State of California. NATURE OF THE CASE 3 4 1. This is an action for violation of the Lanham Act, 15 U.S.C. §§ 1114(1), 5 1125(a), 1125(c), violation of the California statutory law of unfair competition, Cal. 6 Bus. & Prof. Code § 17200, and California common law trademark infringement, 7 passing off, and unfair competition. THE PARTIES 8 9 2. Backcountry is a Delaware limited liability company with its principal 10 place of business in Park City, Utah. 11 3. On information and belief, Defendant Snapperhead is a Michigan 12 limited liability company with a principal place of business in Marquette, Michigan. 13 4. On information and belief, Defendant Mr. Ollila is an individual 14 residing in Linden, Michigan. 15 5. Defendants Snapperhead and Mr. Ollila are hereinafter collectively 16 referred to as “Defendants”. 17 6. On information and belief, the actions alleged herein have been 18 undertaken by Defendants, were undertaken by each Defendant individually, were 19 actions that each Defendant caused to occur, authorized, controlled, directed, or had 20 the ability to authorize, control, or direct, and/or were actions in which each 21 Defendant assisted, participated, or otherwise encouraged, and are actions for which 22 each Defendant is liable. Each Defendant aided and abetted the actions of the 23 Defendants set forth below, in that each Defendant had knowledge of those actions, 24 provided assistance and benefitted from those actions, in whole or in part. Each of 25 the Defendants was the agent of each of the remaining Defendants, and in doing the 26 things hereinafter alleged, was acting within the course and scope of such agency and 27 with the permission and consent of each and every one of the other Defendants. 28 -2COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.3 Page 3 of 19 JURISDICTION AND VENUE 1 2 7. This action arises under the trademark laws of the United States, 15 3 U.S.C. § 1051, et seq., particularly under 15 U.S.C. §§ 1114 and 1125, as well as 4 state unfair competition law and the common law of trademark infringement, passing 5 off, and unfair competition. This Court has jurisdiction over the federal claims under 6 28 U.S.C. §§ 1331 and 1338, and 15 U.S.C. §§ 1116, 1121, and 1125. This Court 7 has supplemental jurisdiction over the state law claims under 28 U.S.C. §§ 1367(a) 8 and 1338(b), those claims being joined with a substantial and related claim under the 9 trademark laws of the United States and so related to the federal claims that they form 10 part of the same case or controversy and derive from a common nucleus of operative 11 fact. 12 8. This Court has personal jurisdiction over Defendants because 13 Defendants actively market and sell ski goods in the State of California and in this 14 judicial district that bear the infringing trademarks at issues in this case. Further, as 15 detailed below, Defendants actively market and/or sell their skis through their 16 websites www.marquette-backcountry.com and www.snapperhead-inventions.com 17 as well as their Facebook page. All the aforementioned websites are accessible from 18 this judicial district, and on information and belief, have been accessed by consumers 19 located in this judicial district. 20 9. Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b) 21 because a substantial part of the events and/or omissions giving rise to the claims 22 occurred in this judicial district and Defendants are otherwise subject to the Court’s 23 personal jurisdiction with respect to this action. 24 FACTUAL ALLEGATIONS 25 Backcountry’s Trademark Rights 26 10. Backcountry is a prominent and well-known retailer and manufacturer 27 of a wide variety of outdoor products, sporting goods, ski products, cycling gear, 28 apparel, and related goods. -3COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.4 Page 4 of 19 1 Backcountry has used its BACKCOUNTRY and BACKCOUNTRY- 11. 2 formative trademarks, or marks so similar that they have the same commercial 3 impression (collectively, the “Backcountry Marks”), in connection with the retail sale 4 of a wide variety of outdoor products, sporting goods, ski products, cycling gear, 5 apparel, and related goods since at least as early as 1996 (the “Backcountry 6 Services”). 7 12. Since at least as early as 2004, Backcountry has manufactured, 8 distributed, and sold outdoor products, sporting goods, apparel, and related goods 9 under the Backcountry Marks (the “Backcountry Goods”). Hereinafter, the 10 Backcountry Goods and Backcountry Services will be referred to collectively as the 11 “Backcountry Goods and Services.” 12 13. In addition to its common law rights in the Backcountry Marks, 13 Backcountry owns valid and subsisting trademark applications and registrations for 14 the Backcountry Marks in the United States and worldwide. In particular, 15 Backcountry owns the following relevant US trademark registrations (the 16 “Backcountry Registrations”): 17 MARK 18 19 20 21 22 23 24 25 26 27 28 US Reg. No.: 3219427 REG. DATE GOODS/SERVICES Mar 20, 2007 Class 35: [ Retail store services, mail order services, and ] computerized online retail store services featuring men's and women's clothing, headwear, footwear, outerwear, eyewear, heart rate monitors, altimeters and accessories, namely, watches and compasses, tote bags, ski equipment, namely, skis, ski boots, ski helmets, ski goggles, ski poles, snowboard equipment, namely, snowboards, snowboard bindings, snowboard boots, snowboard helmets, snowboard gloves, snowshoes, avalanche safety equipment, namely, avalanche probes, avalanche beacons, and avalanche shovels, other winter accessories, namely, tents, sleeping bags, and sleeping pads, kayaks, canoes, paddles, and related accessories, namely, spray skirts for kayaks, life jackets, dry bags, wall racks for hanging canoes and -4COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.5 Page 5 of 19 1 2 3 4 5 6 7 8 9 10 11 12 13 US Reg. No.: 3243545 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BACKCOUNTRY US Reg. No.: 4788204 kayaks, and back rests, camping, hiking, and mountain climbing equipment, namely, climbing harnesses, climbing helmets, bags for storing and hauling climbing ropes, belay and rappel devices, rock-climbing shoes, climbing ropes, carabiners, and chalk and chalk bags for rock-climbing, food and accessories, namely, water purifiers, coolers and bags for food storage, pots, pans, bowls, and eating utensils, luggage and equipment car racks and related accessories, namely, adaptors and attachments for mounting the racks; the dissemination of advertising for others via an on-line electronic communication network; and promoting the goods and services of others by preparing and placing advertisements on a web site access through a global computer network May 22, 2007 Class 35: Retail store services, mail order services, and computerized on-line retail store services featuring men's and women's clothing, headwear, footwear, outerwear, eyewear, heart rate monitors, altimeters and accessories, tote bags, ski and snowboard equipment, snowshoes, avalanche safety, and other winter accessories, kayaks, canoes, paddles and related accessories, camping, hiking and mountain climbing equipment, food and hiking accessories, luggage, luggage and equipment car racks and related accessories; dissemination of advertising for others via an on-line electronic communication network; and promoting the goods and services of others by preparing and placing advertisements on a web site access through a global computer network Aug 11, 2015 Class 35: Retail store services, mail order services, and computerized on-line retail store services featuring men's and women's clothing, headwear, footwear, outerwear, eyewear, heart rate monitors, altimeters and accessories, tote bags, ski and snowboard equipment, snowshoes, avalanche safety, and other winter accessories, kayaks, canoes, paddles and related accessories, camping, hiking and mountain climbing equipment, food and hiking accessories, luggage, luggage and equipment car racks and related -5COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.6 Page 6 of 19 accessories; dissemination of advertising for others via an on-line electronic communication network; and promoting the goods and services of others by preparing and placing advertisements on a web site access through a global computer network. 1 2 3 4 5 6 14. True and correct copies of the registrations for the above-listed marks are 7 attached hereto and incorporated herein as Exhibit A. 8 15. As a result of the Backcountry Registrations and continuous use of the 9 Backcountry Marks in connection with the Backcountry Goods and Services, 10 Backcountry owns valid and subsisting federal and common law rights in the 11 Backcountry Marks. 12 16. Backcountry has invested substantial time, money, and resources in 13 marketing, advertising, and promoting the Backcountry Goods and Services under 14 the Backcountry Marks, and as thereby developed extensive recognition and valuable 15 goodwill in its Backcountry Marks. 16 17. As a result of widespread use and promotion, the BACKCOUNTRY 17 mark is famous among the general consuming public. Defendants’ Business & Infringement 18 19 18. Defendant Snapperhead manufactures and sells skis. 20 19. On information and belief, Defendant Mr. Ollila is the sole Member of 21 Snapperhead and is solely responsible for its operation. 22 20. Defendants 23 backcountry.com and own and operate the websites www.snapperhead-inventions.com www.marquette- (the “Snapperhead 24 Websites”), which are used to market and sell skis as well as related goods and 25 services (collectively, the Snapperhead Goods and Services”). Attached hereto as 26 Exhibit B are true and correct copies of screenshots of the Snapperhead Websites. 27 28 -6COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.7 Page 7 of 19 1 21. On information and belief, Mr. Ollila individually owns and/or operates 2 the Facebook page that markets and promotes Snapperhead and the Snapperhead 3 Goods and Services. 4 22. Defendants are using the 5 BACKCOUNTRY, trademarks MARQUETTE (MARQUETTE BACKCOUNTRY & 6 Design), and/or marks so similar that they have the same commercial impression (the 7 “Infringing Marks”), in connection with the advertising, promotion, and sale of the 8 Snapperhead Goods and Services in the United States and within this judicial district. 9 23. Defendants registered/purchased the www.marquette-backcountry.com 10 and www.snapperhead-inventions.com domains on March 25, 2010 and December 11 18, 2009, respectively. 12 24. Snapperhead was incorporated in Michigan on January 8, 2010. 13 25. On or around March 9, 2011, Snapperhead filed a federal trademark 14 application for with the United States Patent and Trademark 15 Office (“USPTO”) for Class 28 “Sporting goods for outdoor activities; namely, 16 Backcountry Travel and Expedition Equipment, Skis, Watercraft, Watersport Paddle 17 Boards, and Accessories for Recreational Use, Locomotion, Transportation, Outdoor 18 Survival, and Adventure Travel.” 19 26. On or around March 19, 2013, Snapperhead’s application finally 20 registered (US. Reg. No. 4303504) after being required to disclaim the terms 21 “MARQUETTE” and “BACKCOUNTRY,” and amend its description of goods to 22 Class 28 “Sporting Goods For Outdoor Activities, Namely, Skis, Ski Poles, And 23 Nordic Walking Poles” (the “Snapperhead Registration”). 24 27. On or around October 15, 2018, Backcountry filed a Petition for 25 Cancellation against the Snapperhead Registration (TTAB Cancellation No. 26 92069773). This matter is still pending. 27 28 -7COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.8 Page 8 of 19 1 28. Defendants adopted and began using the Infringing Marks with 2 knowledge of Backcountry’s business, the Backcountry Marks, the Backcountry 3 Registrations, and the Backcountry Goods and Services. 4 29. On information and belief, Defendants’ earliest use of the Infringing 5 Marks was after Backcountry had established its trademark rights in the Backcountry 6 Marks in connection with the Backcountry Goods and Services. 7 30. Defendant Ollila has purchased goods from Backcountry at least as early 8 as September 2002, and as recently as February 2010. 9 31. Backcountry’s trademark rights by virtue of the use of its Backcountry 10 Marks since at least as early as 1996 are senior to any rights that the Defendants may 11 allege to have in the Infringing Marks. 12 32. Backcountry has not authorized any of the Defendants to use the 13 Infringing Marks or any similar variations. 14 33. Despite Backcountry’s demands, Defendants have continued to use the 15 Infringing Marks. 16 FIRST CAUSE OF ACTION 17 (Federal Trademark Infringement – 15 U.S.C. § 1114(1)) 18 34. Backcountry repeats, realleges, and incorporates by reference 19 Paragraphs 1 through 33 as though fully set forth herein 20 35. Backcountry’s trademark rights are senior to any rights that the 21 Defendants may allege to have in the Infringing Marks because the Defendants did 22 not use the Infringing Marks in commerce prior to the filing dates and first dates of 23 use of the Backcountry Registrations and Backcountry Marks. 24 36. Defendants’ unauthorized use of the Infringing Marks in interstate 25 commerce in connection with the Snapperhead Goods and Services constitutes 26 trademark infringement in violation of Section 32(1) of the Lanham Act, 15 U.S.C. 27 § 1114(1). 28 -8COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.9 Page 9 of 19 1 37. Defendants’ Infringing Marks are nearly identical to the Backcountry 2 Marks since they share the dominant word “BACKCOUNTRY,” and the term 3 “MARQUETTE” is primarily geographically descriptive of the origin of the 4 Snapperhead Goods and Services. 5 38. Furthermore, the Snapperhead Goods and Services are identical or 6 highly related to the Backcountry Goods and Services protected under the 7 Backcountry Registrations. 8 39. Defendants’ use of the Infringing Marks in interstate commerce is likely 9 to cause confusion, or to cause mistake, or to deceive consumers of the Snapperhead 10 Goods and Services and the Backcountry Goods and Services, who are likely to 11 believe erroneously that the Snapperhead Goods and Services originate from the 12 same source as the Backcountry Goods and Services, or are otherwise affiliated, 13 connected, or associated with Backcountry, or sponsored or approved by 14 Backcountry. 15 40. Defendants have knowingly and willfully infringed Backcountry’s 16 trademark rights with the express intent to trade on the substantial goodwill in the 17 Backcountry Marks. 18 41. Mr. Ollila is personally liable for these violations of the Lanham Act 19 since he has directed, controlled, ratified, participated in, and is the moving force 20 behind the improper activity alleged under the First Cause of Action, and on 21 information and belief, is the sole owner and employee of Snapperhead and has 22 commingled Snapperhead and personal funds and assets. 23 42. Backcountry has no adequate remedy at law. Defendants’ conduct as 24 alleged herein has caused and, if not enjoined, will continue to cause irreparable harm 25 to Backcountry’s rights in the Backcountry Marks and Backcountry Registrations 26 and to its business reputation and goodwill, as well as damages in an amount that 27 cannot be accurately computed at this time, but will be proven at trial. 28 -9COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.10 Page 10 of 19 1 43. By reason of the foregoing, Backcountry asserts a claim against 2 Defendants for injunctive and monetary relief pursuant to Sections 32, 34, and 35 of 3 the Lanham Act, 15 U.S.C. §§ 1114, 1116, and 1117. 4 SECOND CAUSE OF ACTION 5 (Federal Unfair Competition - 15 U.S.C. § 1125(a)) 6 44. Backcountry repeats, realleges, and incorporates by reference 7 Paragraphs 1 through 43 as though fully set forth herein. 8 45. Backcountry’s trademark rights are senior to any rights that the 9 Defendants may allege to have in the Infringing Marks because Backcountry owns 10 common law trademark rights in the Backcountry Marks in connection with goods 11 and services that are highly similar to the Snapperhead Goods and Services, that 12 predate the Defendants’ first use date of, and any other rights they have in, the 13 Infringing Marks. 14 46. Defendants’ use of the Infringing Marks in interstate commerce, in 15 connection with the Snapperhead Goods and Services, constitutes trademark 16 infringement and unfair competition against Backcountry’s rights in the Backcountry 17 Marks pursuant to 15 U.S.C. § 1125(a)(1)(A). 18 47. Defendants’ Infringing Marks are nearly identical to the Backcountry 19 Marks since they share the dominant word “BACKCOUNTRY,” and the term 20 “MARQUETTE” is primarily geographically descriptive of the origin of the 21 Snapperhead Goods and Services. 22 48. Furthermore, the Snapperhead Goods and Services are identical or 23 highly related to the Backcountry Goods and Services protected under the 24 Backcountry Registrations. 25 49. Defendants’ use of the Infringing Marks in interstate commerce is likely 26 to cause confusion, or to cause mistake, or to deceive consumers of the Snapperhead 27 Goods and Services and the Backcountry Goods and Services, who are likely to 28 believe erroneously that the Snapperhead Goods and Services originate from the -10Case No.: COMPLAINT Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.11 Page 11 of 19 1 same source as the Backcountry Goods and Services, or are otherwise affiliated, 2 connected, or associated with Backcountry, or sponsored or approved by 3 Backcountry. 4 50. Defendants have knowingly and willfully infringed Backcountry’s 5 trademark rights with the express intent to trade on the substantial goodwill in the 6 Backcountry Marks. 7 51. Mr. Ollila is personally liable for these violations of the Lanham Act 8 since he has directed, controlled, ratified, participated in, and is the moving force 9 behind the improper activity alleged under the Second Cause of Action, and on 10 information and belief, is the sole owner and employee of Snapperhead and has 11 commingled Snapperhead and personal funds and assets. 12 52. Backcountry has no adequate remedy at law. Defendants’ conduct as 13 alleged herein has caused and, if not enjoined, will continue to cause irreparable harm 14 to Backcountry’s rights in the Backcountry Marks and to its business reputation and 15 goodwill, as well as damages in an amount that cannot be accurately computed at this 16 time, but will be proven at trial. 17 53. By reason of the foregoing, Backcountry is entitled to damages and 18 injunctive relief against the Defendants. 19 THIRD CAUSE OF ACTION 20 (Federal Trademark Dilution in Violation of 15 U.S.C. §1125(c)) 21 54. Backcountry repeats, realleges, and incorporates by reference 22 Paragraphs 1 through 53 as though fully set forth herein. 23 55. The Backcountry Goods and Services offered under the Backcountry 24 Marks have been used and/or consumed by millions of people and have been the 25 subject of significant third-party media coverage, extensive sales, advertising, and 26 promotion. Specifically, Backcountry’s BACKCOUNTRY mark is famous among 27 the general consuming public and became famous before Defendants’ first use of the 28 Infringing Marks. As a result, Defendants’ use of the Infringing Marks causes, or will -11Case No.: COMPLAINT Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.12 Page 12 of 19 1 likely cause, dilution of the distinctive quality of the BACKCOUNTRY mark with 2 consequent damage to Backcountry and the public. 3 56. Defendants’ conduct alleged herein has been undertaken willfully and 4 maliciously, and with full knowledge and intent to trade on the goodwill in the 5 BACKCOUNTRY mark. 6 57. Mr. Ollila is personally liable for these violations of the Lanham Act 7 since he has directed, controlled, ratified, participated in, and is the moving force 8 behind the improper activity alleged under the Third Cause of Action, and on 9 information and belief, is the sole owner and employee of Snapperhead and has 10 commingled Snapperhead and personal funds and assets. 11 58. By reason of the foregoing, Backcountry is entitled to damages and 12 injunctive relief against Defendants. 13 FOURTH CAUSE OF ACTION 14 (California Statutory Unfair Competition – 15 Cal. Bus. & Prof. Code § 17200, et seq.) 16 59. Backcountry realleges and incorporates by reference Paragraphs 1 17 through 58 as though fully set forth herein. 18 60. Defendants are making unauthorized commercial uses of Defendants’ 19 Infringing Marks, and each of them, in a deliberate, willful, intentional, and wrongful 20 attempt to trade on Backcountry’s goodwill, reputation, and financial investments in 21 the Backcountry Marks. 22 61. By reason of Defendants’ conduct as alleged herein, Defendants have 23 engaged in unlawful, unfair, and/or fraudulent ongoing business practices in violation 24 of Cal. Bus. & Prof. Code § 17200, et seq. 25 62. As a direct result of Defendants’ unfair competition with regard to 26 Defendants’ Infringing Marks, and each of them, Defendants have unlawfully 27 acquired, and continue to acquire on an ongoing basis, an unfair competitive 28 -12COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.13 Page 13 of 19 1 advantage and have engaged in, and continue to engage in, wrongful business 2 conduct to Defendants’ monetary advantage and to the detriment of Backcountry. 3 63. Defendants’ conduct as alleged herein has been undertaken willfully and 4 maliciously, and with full knowledge and in conscious disregard of Backcountry’s 5 rights in the Backcountry Marks and Backcountry Registrations. 6 64. Mr. Ollila is personally liable for these violations of the Lanham Act 7 since he has directed, controlled, ratified, participated in, and is the moving force 8 behind the improper activity alleged under the Fourth Cause of Action, and on 9 information and belief, is the sole owner and employee of Snapperhead and has 10 commingled Snapperhead and personal funds and assets. 11 65. Defendants’ illegal and unfair business practices are continuing, and 12 injunctive relief pursuant to Cal. Bus. & Prof. Code § 17203 is necessary to prevent 13 and restrain further violations by Defendants. 14 66. This Court has jurisdiction over the subject matter of this claim pursuant 15 to the provisions of 28 U.S.C. § 1338(b), this being a claim of unfair competition 16 joined with a substantial and related claim under the trademark laws of the United 17 States, and under 28 U.S.C. § 1367. 18 FIFTH CAUSE OF ACTION 19 (Common Law Trademark Infringement) 20 67. Backcountry realleges and incorporates by reference Paragraphs 1 21 through 66 as though fully set forth herein. 22 68. Defendants’ unauthorized use of Defendants’ Infringing Marks, and 23 each of them, constitutes trademark infringement and is likely to cause confusion, 24 deception, and mistake among the consuming public as to the source of, and 25 authorization for, Defendants’ Goods and Services sold and/or advertised by 26 Defendants in violation of the common law of the State of California. 27 69. Defendants’ conduct as alleged herein has been undertaken willfully and 28 maliciously, and with full knowledge of Backcountry’s rights. -13Case No.: COMPLAINT Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.14 Page 14 of 19 1 70. Mr. Ollila is personally liable for these violations of the Lanham Act 2 since he has directed, controlled, ratified, participated in, and is the moving force 3 behind the improper activity alleged under the Fifth Cause of Action, and on 4 information and belief, is the sole owner and employee of Snapperhead and has 5 commingled Snapperhead and personal funds and assets. 6 71. As well as harming the public, Defendants’ conduct as alleged herein 7 has caused and will continue to cause Backcountry irreparable harm for which there 8 is no adequate remedy at law, and is also causing damage to Backcountry in an 9 amount which cannot be accurately computed at this time but will be proven at trial. 10 72. This Court has jurisdiction over the subject matter of this claim pursuant 11 to the provisions of 28 U.S.C. § 1338(b), this being a claim of infringement joined 12 with a substantial and related claim under the Trademark Laws of the United States, 13 and under 28 U.S.C. § 1367. 14 SIXTH CAUSE OF ACTION 15 (California Common Law Passing Off and Unfair Competition) 16 73. Backcountry realleges and incorporates by reference Paragraphs 1 17 through 72 as though fully set forth herein. 18 74. By virtue of their conduct as alleged herein, Defendants have engaged 19 and are engaging in passing off and unfair competition under the common law of the 20 State of California. 21 75. Mr. Ollila is personally liable for these violations of the Lanham Act 22 since he has directed, controlled, ratified, participated in, and is the moving force 23 behind the improper activity alleged under the Sixth Cause of Action, and on 24 information and belief, is the sole owner and employee of Snapperhead and has 25 commingled Snapperhead and personal funds and assets. 26 76. As well as harming the public, Defendants’ conduct as alleged herein 27 has caused and will continue to cause Backcountry irreparable harm for which there 28 is no adequate remedy at law, and is also causing damage to Backcountry in an -14Case No.: COMPLAINT Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.15 Page 15 of 19 1 amount which cannot be accurately computed at this time but will be proven at trial. 2 77. Defendants’ actions were undertaken intentionally to obtain an unfair 3 advantage over Backcountry and in conscious disregard of Backcountry’s rights, and 4 were malicious, oppressive, and/or fraudulent. 5 78. Backcountry requests punitive or exemplary damages pursuant to 6 California Civil Code § 3294(a) in an amount sufficient to punish and deter 7 Defendants and to make an example of them. 8 79. This Court has jurisdiction over the subject matter of this claim pursuant 9 to the provisions of 28 U.S.C. § 1338(b), this being a claim of passing off and unfair 10 competition joined with a substantial and related claim under the Trademark Laws of 11 the United States, and under 28 U.S.C. § 1367. 12 SEVENTH CAUSE OF ACTION 13 (Cancellation of Registration) 14 80. Backcountry realleges and incorporates by reference Paragraphs 1 15 through 79 as though fully set forth herein. 16 81. Snapperhead is the owner of record for the Snapperhead Registration 17 (U.S. Reg. No. 4303504) on the Principal Register in connection with “Sporting 18 Goods For Outdoor Activities, Namely, Skis, Ski Poles, And Nordic Walking 19 Poles” in International Class 28. 20 82. On information and belief, Snapperhead has been offering the 21 Snapperhead Goods and Services since as early as November 16, 2010. 22 83. On March 9, 2011, Mr. Jeffrey P. Thennisch (“Mr. Thennisch”), 23 Attorney of Record for the Snapperhead Registration, signed the following 24 declaration on behalf of Snapperhead: 25 26 27 28 The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, -15COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.16 Page 16 of 19 1 2 3 4 5 if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true. 6 7 84. On or before March 9, 2011, Snapperhead knew that Backcountry was 8 using and had used its Backcountry Marks in connection with goods that were 9 identical or highly related to the Snapperhead Goods and Services. 10 85. Mr. Ollila, the sole owner and employee of Snapperhead, purchased 11 goods related to the Snapperhead Goods and Services from Backcountry that featured 12 the Backcountry Marks at least as early as September 2002, and as recently as 13 February 2010, which is approximately nine months prior to the alleged first use date 14 indicated in the Snapperhead Registration. 15 86. When Mr. Thennisch executed the declaration filed on March 9, 2011 16 on behalf of Snapperhead, he was an authorized representative of Snapperhead and 17 shared in the duty to ensure the accuracy of the application and the truth of its 18 statements. 19 87. Since Mr. Ollila, and by extension Snapperhead, knew that Backcountry 20 was using the Backcountry Marks in connection with goods that were identical or 21 highly related to the Snapperhead Goods and Services, Snapperhead knew that 22 another person or firm had the right to use the Infringing Marks, or marks with such 23 resemblance thereto, as to be likely to cause confusion. 24 88. By declaring to the contrary in the declaration in support of the 25 Snapperhead Registration, Snapperhead made a knowing and intentionally false 26 statement. 27 89. Snapperhead made this false statement with the intent to deceive the 28 USPTO in order to procure its Snapperhead Registration. -16COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.17 Page 17 of 19 1 90. The continued registration of the Snapperhead Registration creates a 2 legal presumption that Snapperhead has valid and exclusive rights in the Infringing 3 Marks for the goods claimed in the Snapperhead Registration. 4 91. For the reasons set forth above, Snapperhead is not entitled to the 5 Snapperhead Registration or the legal presumptions that the Snapperhead 6 Registration creates, and therefore, Backcountry hereby requests that the Court enter 7 an order cancelling the Snapperhead Registration (U.S. Reg. No. 4303504) pursuant 8 to Lanham Act Section 38, 15 U.S.C. §1120, and 15 U.S.C. §1064. PRAYER FOR RELIEF 9 10 WHEREFORE, Backcountry demands judgment against Defendants, as follows: 11 A. That the Court enter a finding that Defendants’ use of the Infringing 12 Marks infringes on Backcountry’s rights in the Backcountry Marks and Backcountry 13 Registrations; 14 B. That the Court enter a preliminary injunction and a permanent injunction 15 prohibiting Defendants, as well as their officers, directors, predecessors, successors, 16 agents, employees, representatives, and all persons, corporations, or other entities 17 acting in concert or participation with Defendants from: 18 i. Using Defendants’ Infringing Marks in connection with any of the 19 Snapperhead Goods and Services and Backcountry Goods and Services 20 in California and throughout the United States; 21 ii. Backcountry Marks and Backcountry Registrations; 22 23 Infringing any of Backcountry’s intellectual property rights in the iii. Engaging in any conduct that tends falsely to represent that, or is likely 24 to confuse, mislead, or deceive members of the public to believe that the 25 actions of Defendants or any of their officers, directors, predecessors, 26 successors, agents, employees, representatives, and all persons, 27 corporations, or other entities acting in concert or participation with 28 -17COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.18 Page 18 of 19 1 Defendants are sponsored, approved, or licensed by Backcountry, or are 2 in any way connected or affiliated with Backcountry; 3 iv. Affixing, applying, annexing, or using in connection with 4 the manufacture, distribution, advertising, sale, and/or offering for sale 5 or other use of any goods or services, a false description or 6 representation, including words or other symbols, tending to falsely 7 describe or represent such goods or services as being those 8 of Backcountry, including without limitation the Backcountry Marks; 9 v. Otherwise competing unfairly with Backcountry in any matter; and 10 vi. Effecting assignments or transfers, forming new entities or associations, 11 or utilizing any other device for the purpose of circumventing or 12 otherwise avoiding the prohibitions set forth in subparagraphs (i)-(v) 13 above. 14 C. That the Court cancel Snapperhead’s United States Registration No. 15 4303504 for (MARQUETTE BACKCOUNTRY & 16 Design), on the Principal Register; 17 D. That the Court enter a finding that Defendants’ actions were willful, 18 deliberate, and malicious; 19 E. That the Court award Backcountry damages in accordance with 20 applicable law, including without limitation three times the amount of any and all 21 profits realized by Defendants from the use of the Infringing Marks in accordance 22 with 15 U.S.C. § 1117(a); 23 F. That the Court award Backcountry punitive damages in an amount 24 sufficient to punish and deter Defendants; 25 G. That the Court find that this is an exceptional case and 26 award Backcountry its reasonable attorneys’ fees and costs of suit pursuant to 15 27 U.S.C. § 1117(a) and/or California law; 28 -18COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1 Filed 09/10/19 PageID.19 Page 19 of 19 1 H. That the Court retain jurisdiction of this action for the purpose of 2 enabling Backcountry to apply to the Court at any time for such further orders and 3 interpretation or execution of any order entered in this action, for the modification of 4 any such order, for the enforcement or compliance therewith, and for the punishment 5 of any violations thereof; and 6 I. For such other and further relief as the Court may deem just and 7 equitable. 8 9 JURY DEMAND Pursuant to Fed. R. Civ. P. 38, Backcountry hereby demands a trial 10 by jury. Dated: September 10, 2019 11 Respectfully submitted, 12 s/ John M. Kim________________________ Attorney for Plaintiff Backcountry.com, LLC E-mail: jkim@ipla.com 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -19COMPLAINT Case No.: Case 3:19-cv-01727-AJB-AHG Document 1-1 Filed 09/10/19 PageID.20 Page 1 of 2 CIVIL COVER SHEET JS 44 (Rev. 06/17) The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.) '19CV1727 BEN JLB I. (a) PLAINTIFFS DEFENDANTS Backcountry.com, LLC, a Delaware Limited Liability Company (b) County of Residence of First Listed Plaintiff Snapperhead Inventions, LLC, a Michigan Limited Liability Company, David Ollila, an Individual. Summit County, UT County of Residence of First Listed Defendant (EXCEPT IN U.S. PLAINTIFF CASES) NOTE: (c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known) John M. Kim, Benjamin S. White, Phillip L. Kim IPLA LLP, 4445 Eastgate Mall, Suite 200, San Diego, CA 92121 (858) 272-0220 II. BASIS OF JURISDICTION (Place an “X” in One Box Only) ’ 1 U.S. Government Plaintiff ’ 3 Federal Question (U.S. Government Not a Party) ’ 2 U.S. Government Defendant ’ 4 Diversity (Indicate Citizenship of Parties in Item III) Jeffrey Thennisch LKGLOBAL, 1050 Wilshire Drive, Suite 230, Troy, MI 48084 (480) 361-0473 III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff (For Diversity Cases Only) PTF Citizen of This State ’ 1 ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ REAL PROPERTY 210 Land Condemnation 220 Foreclosure 230 Rent Lease & Ejectment 240 Torts to Land 245 Tort Product Liability 290 All Other Real Property ’ ’ ’ ’ ’ ’ ’ PERSONAL INJURY 310 Airplane 315 Airplane Product Liability 320 Assault, Libel & Slander 330 Federal Employers’ Liability 340 Marine 345 Marine Product Liability 350 Motor Vehicle 355 Motor Vehicle Product Liability 360 Other Personal Injury 362 Personal Injury Medical Malpractice CIVIL RIGHTS 440 Other Civil Rights 441 Voting 442 Employment 443 Housing/ Accommodations 445 Amer. w/Disabilities Employment 446 Amer. w/Disabilities Other 448 Education and One Box for Defendant) PTF DEF Incorporated or Principal Place ’ 4 ’ 4 of Business In This State ’ 2 ’ 2 Incorporated and Principal Place of Business In Another State ’ 5 ’ 5 Citizen or Subject of a Foreign Country ’ 3 ’ 3 Foreign Nation ’ 6 ’ 6 Click here for: Nature of Suit Code Descriptions. TORTS 110 Insurance 120 Marine 130 Miller Act 140 Negotiable Instrument 150 Recovery of Overpayment & Enforcement of Judgment 151 Medicare Act 152 Recovery of Defaulted Student Loans (Excludes Veterans) 153 Recovery of Overpayment of Veteran’s Benefits 160 Stockholders’ Suits 190 Other Contract 195 Contract Product Liability 196 Franchise DEF ’ 1 Citizen of Another State IV. NATURE OF SUIT (Place an “X” in One Box Only) CONTRACT Marquette County, MI (IN U.S. PLAINTIFF CASES ONLY) IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF LAND INVOLVED. FORFEITURE/PENALTY PERSONAL INJURY ’ 365 Personal Injury Product Liability ’ 367 Health Care/ Pharmaceutical Personal Injury Product Liability ’ 368 Asbestos Personal Injury Product Liability PERSONAL PROPERTY ’ 370 Other Fraud ’ 371 Truth in Lending ’ 380 Other Personal Property Damage ’ 385 Property Damage Product Liability PRISONER PETITIONS Habeas Corpus: ’ 463 Alien Detainee ’ 510 Motions to Vacate Sentence ’ 530 General ’ 535 Death Penalty Other: ’ 540 Mandamus & Other ’ 550 Civil Rights ’ 555 Prison Condition ’ 560 Civil Detainee Conditions of Confinement ’ 625 Drug Related Seizure of Property 21 USC 881 ’ 690 Other LABOR ’ 710 Fair Labor Standards Act ’ 720 Labor/Management Relations ’ 740 Railway Labor Act ’ 751 Family and Medical Leave Act ’ 790 Other Labor Litigation ’ 791 Employee Retirement Income Security Act BANKRUPTCY ’ 422 Appeal 28 USC 158 ’ 423 Withdrawal 28 USC 157 PROPERTY RIGHTS ’ 820 Copyrights ’ 830 Patent ’ 835 Patent - Abbreviated New Drug Application ’ 840 Trademark SOCIAL SECURITY ’ 861 HIA (1395ff) ’ 862 Black Lung (923) ’ 863 DIWC/DIWW (405(g)) ’ 864 SSID Title XVI ’ 865 RSI (405(g)) FEDERAL TAX SUITS ’ 870 Taxes (U.S. Plaintiff or Defendant) ’ 871 IRS—Third Party 26 USC 7609 IMMIGRATION ’ 462 Naturalization Application ’ 465 Other Immigration Actions OTHER STATUTES ’ 375 False Claims Act ’ 376 Qui Tam (31 USC 3729(a)) ’ 400 State Reapportionment ’ 410 Antitrust ’ 430 Banks and Banking ’ 450 Commerce ’ 460 Deportation ’ 470 Racketeer Influenced and Corrupt Organizations ’ 480 Consumer Credit ’ 490 Cable/Sat TV ’ 850 Securities/Commodities/ Exchange ’ 890 Other Statutory Actions ’ 891 Agricultural Acts ’ 893 Environmental Matters ’ 895 Freedom of Information Act ’ 896 Arbitration ’ 899 Administrative Procedure Act/Review or Appeal of Agency Decision ’ 950 Constitutionality of State Statutes V. ORIGIN (Place an “X” in One Box Only) ’ 1 Original Proceeding ’ 2 Removed from State Court ’ 3 ’ 6 Multidistrict Litigation Transfer (specify) Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity): Remanded from Appellate Court ’ 4 Reinstated or Reopened ’ 5 Transferred from Another District ’ 8 Multidistrict Litigation Direct File 15 U.S.C. § 1114(1); 15 U.S.C. § 1125(a); 15 U.S.C. § 1125(c) VI. CAUSE OF ACTION Brief description of cause: Trademark Infringement, Trademark Dilution; Unfair Competition ’ CHECK IF THIS IS A CLASS ACTION VII. REQUESTED IN UNDER RULE 23, F.R.Cv.P. COMPLAINT: VIII. RELATED CASE(S) (See instructions): IF ANY JUDGE DATE CHECK YES only if demanded in complaint: ’ Yes ’ No JURY DEMAND: DEMAND $ DOCKET NUMBER SIGNATURE OF ATTORNEY OF RECORD /John M. Kim/ 09/10/2019 FOR OFFICE USE ONLY RECEIPT # AMOUNT Print APPLYING IFP Save As... JUDGE MAG. JUDGE Reset Case 3:19-cv-01727-AJB-AHG Document 1-1 Filed 09/10/19 PageID.21 Page 2 of 2 JS 44 Reverse (Rev. 06/17) INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44 Authority For Civil Cover Sheet The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of Court for each civil complaint filed. The attorney filing a case should complete the form as follows: I.(a) (b) (c) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and then the official, giving both name and title. County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting in this section "(see attachment)". II. Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X" in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below. United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here. United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box. Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes precedence, and box 1 or 2 should be marked. Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity cases.) III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this section for each principal party. IV. Nature of Suit. Place an "X" in the appropriate box. If there are multiple nature of suit codes associated with the case, pick the nature of suit code that is most applicable. Click here for: Nature of Suit Code Descriptions. V. Origin. Place an "X" in one of the seven boxes. Original Proceedings. (1) Cases which originate in the United States district courts. Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441. When the petition for removal is granted, check this box. Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing date. Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date. Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or multidistrict litigation transfers. Multidistrict Litigation – Transfer. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 1407. Multidistrict Litigation – Direct File. (8) Check this box when a multidistrict case is filed in the same district as the Master MDL docket. PLEASE NOTE THAT THERE IS NOT AN ORIGIN CODE 7. Origin Code 7 was used for historical records and is no longer relevant due to changes in statue. VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P. Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction. Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded. VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket numbers and the corresponding judge names for such cases. Date and Attorney Signature. Date and sign the civil cover sheet. Case Document 1-2 Filed 09/10/19 PageID.22 Pagelof 11 Exhibit A Int. Cl.: 35 Prior U.S. Cls.: 100, 101 and 102 United States Patent and Trademark Office Case Document 1-2 Filed 09/10/19 PageID.23 Page20f11 Reg. No. 3,219,427 Registered Mar. 20, 2007 SERVICE MARK PRINCIPAL REGISTER (UTAH CORPORATION) SUITE 210 1678 WEST REDSTONE CENTER DRIVE PARK CITY, UT 84098 FOR: RETAIL STORE SERVICES, MAIL ORDER SERVICES, AND COMPUTERIZED ON-LINE RE- TAIL STORE SERVICES FEATURING AND CLOTHING, HEADWEAR, FOOTWEAR, OUTERWEAR, EYEWEAR, HEART RATE MONI- TORS, ALTIMETERS AND ACCESSORIES, NAME- LY, WATCHES AND COMPASSES, TOTE BAGS, SKI EQUIPMENT, NAMELY, SKIS, SKI BOOTS, SKI HELMETS, SKI GOGGLES, SKI POLES, SNOW- BOARD EQUIPMENT, NAMELY, SNOWBOARDS, SNOWBOARD BINDINGS, SNOWBOARD BOOTS, SNOWBOARD HELMETS, SNOWBOARD GLOVES, SNOWSHOES, AVALANCHE SAFETY EQUIPMENT, NAMELY, AVALANCHE PROBES, AVALANCHE BEACONS, AND AVALANCHE SHOVELS, OTHER WINTER ACCESSORIES, NAMELY, TENTS, SLEEP- ING BAGS, AND SLEEPING PADS, KAYAKS, CA- NOES, PADDLES, AND RELATED ACCESSORIES, NAMELY, SPRAY SKIRTS FOR KAYAKS, LIFE JACKETS, DRY BAGS, WALL RACKS FOR HANG- ING CANOES AND KAYAKS, AND BACK RESTS, CAMPING, HIKING, AND MOUNTAIN CLIMBING EQUIPMENT, NAMELY, CLIMBING HARNESSES, CLIMBING HELMETS, BAGS FOR STORING AND HAULING CLIMBING ROPES, BELAY AND RAP- Q. LE PEL DEVICES, ROCK-CLIMBING SHOES, CLIMB- ING ROPES, CARABINERS, AND CHALK AND CHALK BAGS FOR ROCK-CLIMBING, FOOD AND ACCESSORIES, NAMELY, WATER PURIFI- ERS, COOLERS AND BAGS FOR FOOD STORAGE, POTS, PANS, BOWLS, AND EATING UTENSILS, LUGGAGE AND EQUIPMENT CAR RACKS AND RELATED ACCESSORIES, NAMELY, ADAPTORS AND ATTACHMENTS FOR MOUNTING THE THE DISSEMINATION OF ADVERTISING FOR OTHERS VIA AN ON-LINE ELECTRONIC COMMUNICATION AND PROMOT- ING THE GOODS AND SERVICES OF OTHERS BY PREPARING AND PLACING ADVERTISEMENTS ON A WEB SITE ACCESS THROUGH A GLOBAL COMPUTER NETWORK, IN CLASS 35 (US. CLS. 100, 101 AND 102). FIRST USE 2-1-2005; IN COMMERCE 2-1-2005. OWNER OF US REG. NOS. 2,380,773 AND 2,895,548. NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE APART FROM THE MARK AS SHOWN. SER. NO. 78-587,938, FILED 3-15-2005. JULIE GUTTADAURO, EXAMINING ATTORNEY Int. Cl.: 35 Prior U.S. Cls.: 100, 101 and 102 United States Patent and Trademark Office Case Document 1-2 Filed 09/10/19 PageID.24 Page30f11 Reg. No. 3,243,545 Registered May 22, 2007 SERVICE MARK PRINCIPAL REGISTER BACKCOUNTRY.COM (UTAH CORPORATION) 1678 WEST REDSTONE CENTER DRIVE SUITE 210 PARK CITY, UT 84098 FOR: RETAIL STORE SERVICES, MAIL ORDER SERVICES, AND COMPUTERIZED ON-LINE RE- TAIL STORE SERVICES FEATURING AND CLOTHING, HEADWEAR, FOOTWEAR, OUTERWEAR, EYEWEAR, HEART RATE MONI- TORS, ALTIMETERS AND ACCESSORIES, TOTE BAGS, SKI AND SNOWBOARD EQUIPMENT, SNOWSHOES, AVALANCHE SAFETY, AND OTHER WINTER ACCESSORIES, KAYAKS, CANOES, PAD- DLES AND RELATED ACCESSORIES, CAMPING, HIKING AND MOUNTAIN CLIMBING EQUIP- MENT, FOOD AND HIKING ACCESSORIES, LUG- GAGE, LUGGAGE AND EQUIPMENT CAR RACKS AND RELATED DISSEMINATION OF ADVERTISING FOR OTHERS VIA AN ON-LINE f; bmkmumrymom ELECTRONIC COMMUNICATION AND PROMOTING THE GOODS AND SERVICES OF OTHERS BY PREPARING AND PLACING AD- VERTISEMENTS ON A WEB SITE ACCESS THROUGH A GLOBAL COMPUTER NETWORK, IN CLASS 35 (US. CLS. 100, 101 AND 102). FIRST USE 6-0-2004; IN COMMERCE 6-0-2004. OWNER OF US REG. NOS. 2,380,773 AND 2,895,548. THE MARK CONSISTS OF THE IMAGE OF A GOAT TO THE LEFT OF THE WORD SER. NO. 78-490,064, FILED 9-27-2004. VERNA BETH RIRIE, EXAMINING ATTORNEY Case Document 1-2 Filed 09/10/19 PageID.25 Page4of11 BAC Reg. No, 4,7 88 9204 INC. (UTAH CORPORATION) . 1678 WEST REDSTONE CENTER DRIVE Reglstered Aug. 1 1, 2015 PARK CITY, UT 84098 Int. CL: 35 FOR: RETAIL STORE SERVICES, MAIL ORDER SERVICES, AND COMPUTERIZED ON- LINE RETAIL STORE SERVICES FEATURING AND CLOTHING, HEADWEAR, FOOTWEAR, OUTERWEAR, EYEWEAR, HEART RATE MONITORS, ALTI- SERVICE MARK METERS AND ACCESSORIES, TOTE BAGS, SKI AND SNOWBOARD EQUIPMENT, SNOWSHOES, AVALANCHE SAFETY, AND OTHER WINTER ACCESSORIES, KAYAKS, PRINCIPAL REGISTER CANOES, PADDLES AND RELATED ACCES SORIES, CAMPING, HIKING AND MOUNTAIN CLIMBING EQUIPMENT, FOOD AND HIKING ACCESSORIES, LUGGAGE, LUGGAGE AND EQUIPMENT CAR RACKS AND RELATED DISSEMINATION OF ADVERTISING FOR OTHERS VIA AN ELECTRONIC COMMUNICATION NET- AND PROMOTING THE GOODS AND SERVICES OF OTHERS BY PREPARING AND PLACING ADVERTISEMENTS ON A WEB SITE ACCESS THROUGH A GLOBAL COMPUTER NETWORK, IN CLASS 35 (US. CLS. 100, 101 AND 102). FIRST USE 6-0?2004; IN COMMERCE 6-0?2004. THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR- TICULAR FONT, STYLE, SIZE, OR COLOR. OWNER OF US. REG. NOS. 3,219,427 AND 3,243,545. SER. NO. 86-138,617, FILED 12-9-2013. MICHAEL KEATING, EXAMINING ATTORNEY W?mk 1?4 Director of the United States Patent and Trademark Of?ce Case Document 1-2 Filed 09/10/19 PageID.26 Page50f11 Exhibit 9/6/2019 nimbus app print Case 3:19-cv-01727-AJB-AHG Document 1-2screenshot Filed 09/10/19 PageID.27 Page 6 of 11 screenshot-www.marquette-backcountry.com-2019.09.06-15_15_23 https://www.marquette-backcountry.com/ 06.09.2019 chrome-extension://bpconcjcammlapcogcnnelfmaeghhagj/edit.html? 1/3 9/6/2019 nimbus app print Case 3:19-cv-01727-AJB-AHG Document 1-2screenshot Filed 09/10/19 PageID.28 Page 7 of 11 chrome-extension://bpconcjcammlapcogcnnelfmaeghhagj/edit.html? 2/3 9/6/2019 nimbus app print Case 3:19-cv-01727-AJB-AHG Document 1-2screenshot Filed 09/10/19 PageID.29 Page 8 of 11 chrome-extension://bpconcjcammlapcogcnnelfmaeghhagj/edit.html? 3/3 9/6/2019 nimbus app print Case 3:19-cv-01727-AJB-AHG Document 1-2screenshot Filed 09/10/19 PageID.30 Page 9 of 11 screenshot-www.snapperhead-inventions.com-2019.09.06-15_18_03 https://www.snapperhead-inventions.com/ 06.09.2019 chrome-extension://bpconcjcammlapcogcnnelfmaeghhagj/edit.html? 1/3 9/6/2019 app print Case 3:19-cv-01727-AJB-AHG Documentnimbus 1-2 screenshot Filed 09/10/19 PageID.31 Page 10 of 11 chrome-extension://bpconcjcammlapcogcnnelfmaeghhagj/edit.html? 2/3 9/6/2019 app print Case 3:19-cv-01727-AJB-AHG Documentnimbus 1-2 screenshot Filed 09/10/19 PageID.32 Page 11 of 11 chrome-extension://bpconcjcammlapcogcnnelfmaeghhagj/edit.html? 3/3