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thunderbirds phoenix open trademark

VIEWS: 804 PAGES: 12

									                                                                    Case 2:13-cv-02138-JAT Document 1 Filed 10/21/13 Page 1 of 12




                                                           1   Robert J. Itri (010938)
                                                               rji@gknet.com
                                                           2   Andrea L. Stone (026520)
                                                               andrea.stone@gknet.com
                                                           3   GALLAGHER & KENNEDY, P.A.
                                                               2575 East Camelback Road
                                                           4   Phoenix, Arizona 85016-9225
                                                               Telephone: (602) 530-8000
                                                           5   Facsimile: (602) 530-8500
                                                           6   Attorneys for The Thunderbirds
                                                           7
                                                                                         UNITED STATES DISTRICT COURT
                                                           8
                                                                                                 DISTRICT OF ARIZONA
                                                           9
                                                               The Thunderbirds, an Arizona non-profit          Case No.
                                                          10   corporation,
                                                          11                        Plaintiff,                  COMPLAINT
Gallagher & Kennedy, P.A.

                            Phoenix, Arizona 85016-9225




                                                          12
                             2575 East Camelback Road




                                                               v.
                                                          13
                                   (602) 530-8000




                                                               Physical Fitness, LLC, an Arizona limited
                                                               liability company,
                                                          14
                                                                                    Defendant.
                                                          15
                                                          16           Plaintiff, The Thunderbirds, alleges as follows:
                                                          17                                            PARTIES
                                                          18           1.    Plaintiff, The Thunderbirds, is an Arizona non-profit corporation (“The
                                                          19   Thunderbirds” or “Plaintiff”), having a principal place of business at 7226 North 16th
                                                          20   Street, Suite 100, Phoenix, Arizona, 85020.
                                                          21           2.    Upon information and belief, Defendant Physical Fitness, LLC
                                                          22   (“Defendant”), is an Arizona limited liability company with a principal place of business
                                                          23   at 43308 North Acadia Way, Anthem, Arizona 85086.
                                                          24           3.    Plaintiff alleges that Defendant is responsible for the acts described in this
                                                          25   Complaint and the damage resulting therefrom.
                                                          26                                JURISDICTION AND VENUE
                                                          27           4.    This Court has jurisdiction of the subject matter of this action pursuant to
                                                          28   15 U.S.C. §1121, 28 U.S.C. §1338, and 28 U.S.C. §1367.
       Case 2:13-cv-02138-JAT Document 1 Filed 10/21/13 Page 2 of 12




 1          5.     Venue is proper in this District, pursuant to 28 U.S.C. §1391.
 2                          BACKGROUND OF THE CONTROVERSY
 3                           The Thunderbirds and the Phoenix Open
 4          6.     The predecessor to The Thunderbirds was founded in 1937 when the
 5   Phoenix Chamber of Commerce expanded its role as a convention and tourism bureau.
 6   The Thunderbirds and its related entities take part in a variety of charitable endeavors.
 7   But The Thunderbirds is perhaps best known as the host of the Phoenix Open, the annual
 8   PGA Tour event that takes place in the Phoenix metropolitan area.
 9          7.     The Phoenix Open began in the 1930’s. The event has had a number of
10   sponsors over the course of its long and storied history. The event is currently sponsored
11   by Waste Management, Inc., and referred to as the Waste Management Phoenix Open.
12   Previous sponsors include Friedman, Billings, Ramsey Group, Inc. (“FBR”) and Xerox,
13   among others. For purposes of this Complaint, the tournament is referred to as the
14   “Phoenix Open.”
15          8.     Over the last eight decades, the Phoenix Open has gained significant
16   notoriety and grown substantially in popularity. Today, the Phoenix Open attracts the
17   largest galleries of any golf tournament in the world and holds the PGA Tour record for
18   highest single-day attendance.
19          9.     The Thunderbirds has expended many millions of dollars promoting the
20   event under the PHOENIX OPEN trademark, throughout Arizona, nationally, and
21   internationally. The Thunderbirds promotes the event through its website,
22   www.wmphoenixopen.com, and through various regional and national print, television,
23   and radio advertising channels. The event itself is broadcast on television both nationally
24   and internationally.
25          10.    Due to the high quality of the event, as well as the substantial sums
26   expended in the advertising and promotion of the event, The Thunderbirds has acquired
27   substantial goodwill throughout the United States in connection with its PHOENIX
28   OPEN trademark.

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       Case 2:13-cv-02138-JAT Document 1 Filed 10/21/13 Page 3 of 12




 1                   The Thunderbirds’ PHOENIX OPEN Trademark Rights
 2          11.   The PHOENIX OPEN trademark is distinctive: consumers and members of
 3   the public recognize that goods and services marketed under the PHOENIX OPEN
 4   trademark originate, are approved or endorsed by, or are affiliated with, The
 5   Thunderbirds.
 6          12.   As a result of its long term and widespread use and recognition, the
 7   PHOENIX OPEN trademark has become an asset of substantial value and goodwill as a
 8   distinguishing symbol of the event hosted by The Thunderbirds. Indeed, the PHOENIX
 9   OPEN mark has become famous for The Thunderbirds’ golf tournament and related
10   goods and services.
11          13.   In addition, The Thunderbirds owns a number of Arizona state trademark
12   and trade name registrations that include the PHOENIX OPEN mark.
13          14.   On July 6, 1978, The Thunderbirds registered the mark PHOENIX
14   OPEN—INDIAN STYLE THUNDERBIRD—UPPER HALF GOLF BALL (Design)
15   with the Arizona Secretary of State. A copy of this state trademark registration,
16   Registration No. 19339, is attached hereto as Exhibit 1.
17          15.   On April 5, 1985, The Thunderbirds registered the mark PHOENIX OPEN
18   GOLF TOURNAMENT with the Arizona Secretary of State. A copy of this state trade
19   name registration, Registration No. 4622, is attached hereto as Exhibit 2.
20          16.   On March 23, 1990, The Thunderbirds registered the mark PHOENIX
21   OPEN INVITATIONAL GOLF TOURNAMENT with the Arizona Secretary of State. A
22   copy of this state trade name registration, Registration No. 93887, is attached hereto as
23   Exhibit 3.
24                     Physical Fitness, LLC Threatens The Thunderbirds
25          17.   On September 26, 2013, Mr. Rob Myers, Director of Media Relations for
26   the Phoenix Open, received correspondence from Mr. Anthony Fioretto, on behalf of
27   Defendant, Physical Fitness, LLC. A copy of the letter is attached hereto as Exhibit 4.
28

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       Case 2:13-cv-02138-JAT Document 1 Filed 10/21/13 Page 4 of 12




 1          18.    In his letter, Mr. Fioretto implies that Defendant owns rights in the
 2   PHOENIX OPEN trademark and suggests that Waste Management, Inc. and The
 3   Thunderbirds must cease use of the PHOENIX OPEN trademark. Id.
 4          19.    Arizona Secretary of State records demonstrate that on May 14, 2010,
 5   Defendant filed an application to register the trade name PHOENIX OPEN for use in
 6   connection with “physical fitness/sports activity” (hereinafter “Infringing Mark”). See
 7   Application No. 489924 (hereinafter “Infringing Application”), attached hereto as Exhibit
 8   5, and Arizona Trade Name Registration No. 489924 (hereinafter “Infringing
 9   Registration”), attached hereto as Exhibit 6.
10          20.    Upon information and belief, the Infringing Registration is invalid for, at
11   least, failure to comply with A.R.S. §§ 44-1443(A)(4); 44-1460.01. But even a valid
12   state trade name registration is insufficient to overcome existing common law trademark
13   rights. A.R.S. § 44-1460.05.
14          21.    Plaintiff, The Thunderbirds, has been and continues to be damaged by
15   Defendant’s attempt to enforce invalid trademark rights against The Thunderbirds.
16          22.    Upon information and belief, Mr. Fioretto (acting on behalf of Defendant)
17   has also contacted other Phoenix-based organizations regarding use of the PHOENIX
18   OPEN trademark. Specifically, on or before September 26, 2013, Mr. Fioretto contacted
19   one or more individuals associated with the Health & Wellness Raffle, benefitting
20   Barrow Neurological Center and St. Joseph’s Hospital and Medical Center (hereinafter
21   “the Raffle”), by telephone, to complain about the Raffle’s use of the mark PHOENIX
22   OPEN to describe a prize package that included tickets to the Phoenix Open.
23          23.    Plaintiff, The Thunderbirds, has been and continues to be damaged by
24   Defendant’s attempt to enforce invalid trademark rights against third parties.
25                      Trademark Infringement by Physical Fitness, LLC
26          24.    The Infringing Application states that Defendant first used the PHOENIX
27   OPEN trademark in commerce, in connection with “physical fitness/sports activity,” on
28   May 5, 2010. See Exhibit 5.

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       Case 2:13-cv-02138-JAT Document 1 Filed 10/21/13 Page 5 of 12




 1          25.      Upon information and belief, prior to marketing its services under the
 2   Infringing Mark, Defendant knew of the Phoenix Open golf tournament and Plaintiff’s
 3   use of the PHOENIX OPEN trademark to promote a variety of goods and services related
 4   to the event.
 5          26.      Upon information and belief, despite Defendant’s knowledge of Plaintiff’s
 6   prior use of the PHOENIX OPEN trademark, Defendant willfully adopted the Infringing
 7   Mark for use in connection with directly competing or highly related goods and services.
 8          27.      Defendant’s use of the Infringing Mark in connection with “physical
 9   fitness/sports activity” is likely to cause confusion among consumers.
10          28.      Given (i) the identical nature of The Thunderbirds’ PHOENIX OPEN
11   trademark and the Infringing Mark used by Defendant, and (ii) the virtually identical
12   services offered in connection with those marks (i.e., a golf tournament and related goods
13   and services compared to “physical fitness/sports activity”), Defendant’s use of the
14   Infringing Mark constitutes and comprises matter which may falsely suggest a connection
15   between Defendant’s goods and services and that of Plaintiff.
16          29.      At a minimum, the public is likely to believe that goods and services
17   marketed and offered for sale by Defendant under the Infringing Mark are connected
18   with, produced by, or sponsored by The Thunderbirds.
19          30.      Defendant’s continued use of the Infringing Mark constitutes
20   misrepresentation of the source of the goods and services offered in connection therewith
21   and falsely suggests an association between the goods and services of Defendant and
22   Plaintiff, which false designation, upon information and belief, was known to and
23   intentionally fostered by Defendant for its commercial benefit.
24          31.      Notwithstanding The Thunderbirds’ well-known and prior common law
25   rights in the PHOENIX OPEN trademark, Defendant adopted and used the Infringing
26   Mark for directly competing “physical fitness/sports activity” services.
27          32.      Further, after receiving actual notice of The Thunderbirds’ rights in the
28   PHOENIX OPEN trademark, by letter dated October 7, 2013, attached hereto as Exhibit

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       Case 2:13-cv-02138-JAT Document 1 Filed 10/21/13 Page 6 of 12




 1   7, Defendant continues to use the Infringing Mark in connection with directly competing
 2   services. Defendant has declined to voluntarily withdraw its trade name registration,
 3   Registration No. 489924, further demonstrating its intention not to comply with federal
 4   and state trademark law.
 5          33.    Defendant’s use of the Infringing Mark constitutes trademark infringement
 6   and causes a likelihood of confusion, deception and mistake.
 7          34.    Further, upon information and belief, Defendant’s use of the Infringing
 8   Mark has diminished, or will diminish, the ability of The Thunderbirds’ PHOENIX
 9   OPEN trademark to identify and distinguish the goods and services provided by The
10   Thunderbirds. Thus, Defendant has diluted, or will dilute, the distinctive quality of the
11   PHOENIX OPEN mark.
12                                           COUNT I
13                       FEDERAL TRADEMARK INFRINGEMENT
14          35.    Plaintiff incorporates the above allegations by reference.
15          36.    Defendant’s use of the Infringing Mark constitutes infringement of the
16   PHOENIX OPEN trademark in violation of the Lanham Act, 15 U.S.C. § 1114(1).
17          37.    Plaintiff owns valid common law rights in its PHOENIX OPEN trademark
18   by virtue of its continuous use and advertising of the mark in connection with a well-
19   known golf tournament and related goods and services.
20          38.    The Infringing Mark is identical to Plaintiff’s PHOENIX OPEN trademark,
21   and therefore, likely to cause consumer confusion, deception, or mistake.
22          39.    Upon information and belief, Defendant’s adoption and use of the
23   Infringing Mark is the result of willful copying by the Defendant of the Plaintiff’s
24   PHOENIX OPEN trademark.
25          40.    At a minimum, Defendant’s use of the Infringing Mark after receiving
26   actual notice of The Thunderbirds’ trademark rights on October 7, 2013, amounts to
27   willful infringement of Plaintiff’s PHOENIX OPEN trademark.
28

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       Case 2:13-cv-02138-JAT Document 1 Filed 10/21/13 Page 7 of 12




 1            41.   Plaintiff has been and will be damaged by Defendant’s infringement of the
 2   PHOENIX OPEN trademark and is entitled to remedies provided for in 15 U.S.C. § 1116
 3   et seq., including, but not limited to, compensatory damages, treble damages, attorneys’
 4   fees, and injunctive relief.
 5            42.   Unless restrained, Defendant will continue to violate Plaintiff’s trademark
 6   rights and cause Plaintiff irreparable harm, for which Plaintiff has no adequate remedy at
 7   law to fully compensate it for the damage Defendant’s actions have caused and will
 8   cause.
 9                                            COUNT II
10   FEDERAL UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN
11            43.   Plaintiff incorporates the above allegations by reference.
12            44.   By engaging in the activities described above, Defendant has made and is
13   making false, deceptive, and misleading statements constituting false representations and
14   false advertising in connection with services distributed in interstate commerce in
15   violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Also, by such conduct,
16   Defendant has unfairly and unlawfully competed with Plaintiff in violation of § 43(a) of
17   the Lanham Act, 15 U.S.C. §1125(a).
18            45.   Upon information and belief, Plaintiff has been damaged by Defendant’s
19   false advertising, false designation of origin, and unfair competition, entitling Plaintiff to
20   the remedies provided in 15 U.S.C. § 1116 et seq., including, but not limited to,
21   compensatory damages, treble damages, attorneys’ fees, and injunctive relief.
22            46.   Upon information and belief, Defendant’s acts described above have caused
23   irreparable injury to Plaintiff’s goodwill and reputation, and, unless enjoined, Defendant
24   will cause further irreparable injury to Plaintiff, for which Plaintiff has no adequate
25   remedy at law to fully compensate it for the damages Defendant’s actions have caused
26   and will cause.
27
28

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       Case 2:13-cv-02138-JAT Document 1 Filed 10/21/13 Page 8 of 12




 1          47.    Upon information and belief, Defendant’s use of the Infringing Mark is and
 2   has been willful and with the malicious intent of misappropriating and trading upon
 3   Plaintiff’s goodwill and reputation.
 4                                           COUNT III
 5                           FEDERAL TRADEMARK DILUTION
 6          48.    Plaintiff incorporates the above allegations by reference.
 7          49.    Defendant’s use of the Infringing Mark, which is identical to the famous
 8   and distinctive PHOENIX OPEN trademark, violates Section 43(c) of the Lanham Act,
 9   15 U.S.C. §1125(c), because it constitutes willful and deliberate use in commerce of a
10   mark that causes dilution of the distinctive quality of The Thunderbirds’ famous and
11   distinctive PHOENIX OPEN mark.
12          50.    Defendant’s use of the Infringing Mark began well after the PHOENIX
13   OPEN mark became famous.
14          51.    Upon information and belief, Defendant willfully and deliberately intended
15   either to trade on the reputation and goodwill associated with the PHOENIX OPEN
16   trademark, or to cause dilution of the PHOENIX OPEN mark.
17          52.    Plaintiff has been, and continues to be, irreparably damaged by Defendant’s
18   violation of this statute, and Plaintiff has no adequate remedy at law. Unless this Court
19   enters an order requiring Defendant to cease and desist from its unlawful use of the
20   PHOENIX OPEN mark, Defendant’s violation will continue to cause injury to Plaintiff
21   and the public.
22                                           COUNT IV
23           TRADEMARK INFRINGEMENT UNDER A.R.S. § 44-1441, et seq.
24          53.    Plaintiff incorporates the above allegations by reference.
25          54.    Defendant’s use of the Infringing Mark in interstate commerce in
26   connection with “physical fitness/sports activity,” without the consent of Plaintiff, is
27   likely to cause mistake and deception in the minds of the public in violation of A.R.S. §
28   44-1451(A), et seq.

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       Case 2:13-cv-02138-JAT Document 1 Filed 10/21/13 Page 9 of 12




 1          55.    Defendant’s actions constitute state trademark infringement entitling
 2   Plaintiff to damages pursuant to A.R.S. § 44-1451(B), et seq.
 3          56.    Upon information and belief, Defendant’s use of the Infringing Mark is
 4   willful and with the malicious intent of misappropriating and trading upon Plaintiff’s
 5   goodwill and reputation. Plaintiff is entitled to punitive damages. Id.
 6          57.    Upon information and belief, Defendant’s acts described above have caused
 7   irreparable injury to Plaintiff’s goodwill and reputation, and, unless enjoined, Defendant
 8   will cause further irreparable injury to Plaintiff, for which Plaintiff has no adequate
 9   remedy at law to fully compensate it for the damage Defendant’s actions have caused and
10   will cause. Id.
11                                            COUNT V
12                  TRADEMARK DILUTION UNDER A.R.S. § 44-1448.01
13          58.    Plaintiff incorporates the above allegations by reference.
14          59.    The PHOENIX OPEN trademark is well-known, distinctive and famous in
15   Arizona and throughout the United States.
16          60.    Upon information and belief, Defendant has used and continues to use the
17   Infringing Mark in commerce. Defendant’s use of the Infringing Mark began long after
18   the PHOENIX OPEN trademark became famous.
19          61.    Defendant’s use of the Infringing Mark dilutes the distinctive quality of the
20   PHOENIX OPEN trademark.
21          62.    Upon information and belief, Defendant willfully intended to trade on the
22   reputation and goodwill associated with the PHOENIX OPEN trademark.
23          63.    Plaintiff has been, and continues to be, irreparably damaged and harmed by
24   Defendant’s violation of this statute. Unless this Court enters an order requiring
25   Defendant to cease and desist its unlawful use of the PHOENIX OPEN trademark,
26   Defendant’s violation will continue to cause injury to Plaintiff and the public.
27
28

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      Case 2:13-cv-02138-JAT Document 1 Filed 10/21/13 Page 10 of 12




 1                                           COUNT VI
 2                    COMMON LAW TRADEMARK INFRINGEMENT
 3          64.    Plaintiff incorporates the above allegations by reference.
 4          65.    Defendant’s use of the Infringing Mark in interstate commerce in
 5   connection with “physical fitness/sports activity,” without the consent of Plaintiff, is
 6   likely to cause mistake and deception in the minds of the public in violation of Arizona
 7   common law.
 8          66.    Defendant’s actions constitute common law trademark infringement
 9   entitling Plaintiff to damages in an amount to be proven at trial.
10          67.    Upon information and belief, Defendant’s use of the Infringing Mark is
11   willful and with the malicious intent of misappropriating and trading upon Plaintiff’s
12   goodwill and reputation. Plaintiff is entitled to punitive damages.
13          68.    Upon information and belief, Defendant’s acts described above have caused
14   irreparable injury to Plaintiff’s goodwill and reputation, and, unless enjoined, Defendant
15   will cause further irreparable injury to Plaintiff, for which Plaintiff has no adequate
16   remedy at law to fully compensate it for the damage Defendant’s actions have caused and
17   will cause.
18                                           COUNT VII
19                        COMMON LAW UNFAIR COMPETITION
20          69.    Plaintiff incorporates the above allegations by reference.
21          70.    By engaging in the conduct alleged above, Defendant has unlawfully and
22   unfairly competed with Plaintiff as a matter of common law.
23          71.    Plaintiff has sustained damages in an amount to be proven at trial.
24          72.    Upon information and belief, Defendant’s use of the Infringing Mark is
25   willful and with the malicious intent of misappropriating and trading upon Plaintiff’s
26   goodwill and reputation. Plaintiff is entitled to punitive damages.
27          73.    Upon information and belief, Defendant’s acts described above have caused
28   irreparable injury to Plaintiff’s goodwill and reputation, and, unless enjoined, Defendant

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      Case 2:13-cv-02138-JAT Document 1 Filed 10/21/13 Page 11 of 12




 1   will cause further irreparable injury to Plaintiff for which Plaintiff has no adequate
 2   remedy at law to fully compensate it for the damage Defendant’s actions have caused and
 3   will cause.
 4                                         JURY DEMAND
 5          74.    Plaintiff hereby demands a trial by jury on all issues so triable.
 6                                    PRAYER FOR RELIEF
 7          WHEREFORE, Plaintiff, prays for judgment as follows:
 8          1.     That Defendant and its affiliates, employees, and all those acting in concert
 9   with it, be preliminarily and permanently enjoined from using the Infringing Mark, and
10   any phonetic equivalent or abbreviation of the Infringing Mark, in connection with any
11   physical fitness, physical therapy, or sport-related event, activity, good, or service;
12          2.     Cancellation of Defendant’s Arizona trade name registration for the
13   Infringing Mark, Registration No. 489924, pursuant to A.R.S. § 44-1448 and § 44-
14   1460.07;
15          3.     That Plaintiff be awarded its damages, as well as treble damages, as a
16   consequence of Defendant’s willful acts of trademark infringement, unfair competition,
17   and state statutory trademark and trade name infringement;
18          4.     That Plaintiff be awarded its reasonable costs and attorneys’ fees in
19   connection with this action as a consequence of Defendant’s willful federal trademark
20   infringement, federal unfair competition, and false designation of origin, federal trade
21   name infringement, state statutory trademark, and trade name infringement, common law
22   trademark infringement, and common law unfair competition;
23          5.     That Plaintiff be awarded all available and applicable interest; and
24          6.     That Plaintiff be awarded other relief as the Court shall deem just and
25   proper.
26
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     Case 2:13-cv-02138-JAT Document 1 Filed 10/21/13 Page 12 of 12




 1
 2       RESPECTFULLY SUBMITTED this 21st day of October, 2013.
 3                                       GALLAGHER & KENNEDY, P.A.
 4
 5                                       By /s/ Robert. J. Itri
                                            Robert J. Itri
 6                                          Andrea L. Stone
                                            2575 East Camelback Road
 7                                          Phoenix, Arizona 85016-9225
                                            Attorneys for Plaintiff
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