black market v recon.pdf by martyschwimmer

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									          Case 2:14-cv-00340-EJF Document 2 Filed 05/05/14 Page 1 of 11




CHAD E. NYDEGGER, (BAR #9964); Email: cnydegger@wnlaw.com
WORKMAN│NYDEGGER A PROFESSIONAL CORPORATION
60 East South Temple, Suite 1000
Salt Lake City, UT 84111
Telephone: (801) 533-9800
Facsimile: (801) 328-1707

Attorney for Plaintiff Black Market, LLC.

                        IN THE UNITED STATES DISTRICT COURT
                         DISTRICT OF UTAH, CENTRAL DIVISION


BLACK MARKET, LLC, a Utah limited                    Civil Action No. 2:14-cv-00340-EJF
liability company,

                      Plaintiff,
                                                                COMPLAINT
               v.

RECON NUTRITION LLC, a California                      Magistrate Judge Evelyn J. Furse
limited liability company,
                                                           Demand for Jury Trial
                      Defendant.



                                        BACKGROUND

       Black Market, LLC (“Black Market”) is a Utah start-up company that markets and sells

the dietary supplements, specifically so-called workout supplements. Over the past several

years, Black Market has built a reputation for providing quality workout supplements to its

customers. Black Market takes great care to assure that the products it markets and sells are

high-quality, thereby enhancing its reputation to the exercise market segment. Black Market has

also spent considerable time and resources building and protecting a portfolio of intellectual

property to protect its reputation and goodwill in the marketplace. In connection with these
            Case 2:14-cv-00340-EJF Document 2 Filed 05/05/14 Page 2 of 11




efforts, Black Market has registered the trademark GUERRILLA® with the U.S. Patent and

Trademark Office (“USPTO”) for use in connection with “dietary supplements.”

       Seeing the success of Black Market with its dietary supplements, Recon Nutrition LLC

(“Recon Nutrition”) recently began selling a competing workout dietary supplement under the

trademark “GUERRILLA WARFARE.” Prior to launching its GUERRILLA WARE dietary

supplement, persons at Recon Nutrition were aware of Black Market and its dietary supplements

marketed under the GUERRILLA® mark. Indeed, Recon Nutrition communicated directly with

Black Market concerning Black Market’s products and experience as a startup dietary

supplement company. Thus, Recon Nutrition’s unauthorized use of the GUERRILLA

WARFARE mark is a willful infringement Black Market’s GUERRILLA® trademark and seeks

to unlawfully obtain the benefits and goodwill that Black Market has built in its GUERRILLA®

trademark.

       Plaintiff Black Market, LLC (“Black Market”) alleges claims against Defendant Recon

Nutrition LLC (“Recon Nutrition” or “Defendant”), as follows:

                                        THE PARTIES

       1.      Black Market is a Utah limited liability company engaged in marketing and

selling dietary supplements, with its principle place of business at 3683 West 2270 South, Suite

C, West Valley City, Utah 84120.

       2.      Recon Nutrition markets and sells dietary supplements and, on information and

belief, has a principle place of business at 3380 La Sierra Avenue, Suite 104-193, Riverside,

California 92503, and can be served through its registered agent Armando Lopez, located at

12348 Sandy Creek Drive, Riverside, California 92503.



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                                 NATURE OF THE ACTION

       3.      This is an action for trademark infringement and unfair competition under the

Lanham Act, 15 U.S.C. §§ 1114 and 1125.

       4.      This is also an action for related trademark infringement and unfair competition

under Utah common law.

                                JURISDICTION AND VENUE

       5.      This Court has original jurisdiction over the federal trademark infringement unfair

competition claims based upon 28 U.S.C. §1338(b). This Court has diversity jurisdiction over all

claims asserted in this action pursuant to 28 U.S.C. §1332, because Black Market is a Utah

limited liability company with its principle place of business in Utah, and on information and

belief, Recon Nutrition is a California limited liability company with its principle place of

business in California, and the amount in controversy exceeds the jurisdictional amount of

$75,000, excluding interest and costs. This Court has supplemental jurisdiction over the state

common law trademark infringement and unfair competition claims pursuant to 28 U.S.C.

§ 1338(b) because they arise out of the same acts that give rise to the trademark infringement and

unfair competition claims brought under the Lanham Act.

       6.      On information and belief, Recon Nutrition owns and operates the website

reconnutrition.com through which it markets and sells its dietary supplements under the

GUERRILLA WARFARE mark over the Internet. Recon Nutrition’s website

reconnutrition.com includes a “shipping calculator” with a dropdown menu that lists “Utah” as a

state to which Recon Nutrition ships its products. Further, on the checkout page of

reconnutrition.com, Recon Nutrition includes another dropdown menu that lists “Utah” as a state



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that can be selected for billing and shipping purposes. Accordingly, Recon Nutrition targets its

advertising to Utah consumers, otherwise conducts business in Utah, and is subject to personal

jurisdiction in this Court.

        7.      Venue is proper in this Court under 28 U.S.C. §1391(b)(2) because Defendant has

committed acts of trademark infringement and unfair competition and has otherwise conducted

or conducts business within Utah by advertising and shipping products to Utah consumers.

                                  GENERAL ALLEGATIONS

        8.       Black Market is a Utah start-up company that markets and sells the dietary

supplements, specifically workout supplements. Black Market specifically markets and sells its

workout dietary supplements for use pre-workout and post-workout to aid its consumers to better

train, build, and sculpt their bodies through exercise and diet. Over the past several years, Black

Market has built a reputation for providing quality workout supplements to its customers. Black

Market takes great care to assure that the products it markets and sells are high-quality, thereby

enhancing its reputation to the exercise market segment.

        9.      Black Market has also spent considerable time and resources building and

protecting a portfolio of intellectual property to protect its reputation and goodwill in the

marketplace. In connection with these efforts, Black Market owns trademark U.S. Registration

Number 4403352 (the “’352 Registration”) for the trademark GUERRILLA® for use in

connection with “dietary supplements” in International Class 005. A copy of the ’352

Registration is attached hereto as Exhibit A.




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        10.     Black Market also has common law trademark rights in the GUERRILLA® mark.

Black Market, including its predecessors, has continuously used the GUERRILLA® mark in

commerce to sell its dietary supplements since at least 2009.

        11.     Seeing the success of Black Market with its dietary supplements, Recon Nutrition

began selling a competing workout dietary supplement under the trademark “GUERRILLA

WARFARE” in 2013. Prior to launching its GUERRILLA WARE dietary supplement, persons

at Recon Nutrition were aware of Black Market and its dietary supplements marketed under the

GUERRILLA® mark. Indeed, Recon Nutrition communicated directly with Black Market

concerning Black Market’s products and experience as a startup dietary supplement company.

        12.     On April 23, 2014, counsel for Black Market sent a letter to Recon Nutrition

informing it of its infringement of the GUERRILLA® mark, and demanding that it cease and

desist its infringing activities.

        13.     On April 24, 2014, Armando Lopez, Recon Nutrition’s CEO, responded that

Recon Nutrition would not cease using the infringing GUERRILLA WARFARE mark.

                                        CLAIM ONE
                        (Trademark Infringement under 15 U.S.C. § 1114)

        14.     Black Market hereby incorporates the allegations of the preceding paragraphs of

this Complaint as though fully set forth in this Claim.

        15.     Recon Nutrition’s continued use of the mark GUERRILLA WARFARE is likely

to cause confusion, mistake or deception as to the source, origin, affiliation, connection, or

association of its dietary supplements with those of Black Market, or as to the approval of Recon

Nutrition’s goods and services by Black Market, and thus constitutes infringement of Black

Market’352 Registration in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114.


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       16.     Recon Nutrition’s infringement of the GUERRILLA® mark negatively affects

Black Market’s business in the United States.

       17.     Upon information and belief, Recon Nutrition knew of Black Market’s rights in

the GUERRILLA mark, and Recon Nutrition’s trademark infringement is knowing, willful and

deliberate, making this an exceptional case within the meaning of 15 U.S.C. § 1117.

       18.     Recon Nutrition’s violation of 15 U.S.C. § 1114 has caused Black Market to

suffer damages and irreparable harm.

       19.     By reason of the foregoing, Black Market is entitled to monetary and injunctive

relief pursuant to 15 U.S.C. §§ 1116–1118, as more fully set forth hereinbelow.

                                       CLAIM TWO
                        (Unfair Competition under 15 U.S.C. § 1125(a))

       20.     Black Market hereby incorporates the allegations of the preceding paragraphs of

this Complaint as though fully set forth in this Claim.

       21.     Recon Nutrition’s use of the GUERRILLA WARFARE mark is likely to cause

confusion, mistake or deception as to the source, origin, affiliation, connection, or association of

its goods and services with those of Black Market, or as to the approval of Recon Nutrition’s

goods and services by Black Market, and thus constitutes trademark infringement, false

designation of origin, and unfair competition with respect to the GUERRILLA® mark in

violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

       22.     Recon Nutrition’s unlawful actions have taken place with full knowledge of the

GUERRILLA® mark and therefore have been intentional, deliberate and willful.

       23.     Recon Nutrition’s violation of 15 U.S.C. § 1125(a) has caused Black Market to

suffer damages and irreparable harm.


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        24.    By reason of the foregoing, Black Market is entitled to monetary and injunctive

relief pursuant to 15 U.S.C. §§ 1116–1118, as more fully set forth hereinbelow.

                                    CLAIM THREE
                  (State Trademark Infringement and Unfair Competition)

        25.    Black Market hereby incorporates the allegations of the preceding paragraphs of

this Complaint as though fully set forth in this Claim.

        26.    Recon Nutrition, by its actions set forth hereinabove, has engaged in intentional

business acts or practices that are unlawful, unfair, and/or fraudulent, including the infringement

of Black Market’s GUERRILLA® mark, and caused a material diminution in the value of the

trademark, trade names, and other intellectual property held by Black Market, in violation of,

inter alia, Utah Code Ann. § 13-5a-101 et seq.

        27.    By reason of the foregoing, Black Market has suffered damages and irreparable

harm.

        28.    By reason of the foregoing, Black Market is entitled to actual and punitive

damages from Recon Nutrition, along with its attorneys’ fees and costs pursuant to at least Utah

Code Ann. § 13-5a-103(1)(b) as more fully set forth herein.

                                        CLAIM FOUR
                             (State Law Deceptive Trade Practices)

        29.    Black Market hereby incorporates the allegations of the preceding paragraphs of

this Complaint as though fully set forth in this Claim.

        30.    Recon Nutrition, by its actions as set forth hereinabove, has caused, is causing,

and will continue to cause a likelihood of confusion or of misunderstanding as to the source,

sponsorship, approval, or certification of its goods by Black Market due to Recon Nutrition’s



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dietary supplements marketed using the GUERRILLA WARFARE mark; has caused, is causing,

and will continue to cause a likelihood of confusion or of misunderstanding that its dietary

supplements marketed under the GUERRILLA WARFARE mark have affiliation, connection,

association with, or certification by Black Market when they do not; and represented, represents,

and will continue to represent that its dietary supplements marketed under the GUERRILLA

WARFARE mark have a sponsorship, approval, status, affiliation, or connection with Black

Market that they do not have; and has thereby engaged in deceptive trade practices, pursuant to,

inter alia, Utah Code Ann. §§ 13-11a-3(1)(b), (c), and (e).

       31.     Recon Nutrition’s conduct as set forth hereinabove give rise to a cause of action

for deceptive trade practices and related wrongs under the statutory and common law of the State

of Utah and other states, including without limitation Utah Code Ann. § 13-11a-1, et seq.

       32.     By reason of the foregoing, Black Market is entitled to actual and punitive

damages from Recon Nutrition, along with its attorneys’ fees and costs pursuant to at least Utah

Code Ann. § 13-5a-103(1)(b) as more fully set forth herein.

       33.     On information and belief, Recon Nutrition has engaged in these deceptive trade

practices against Black Market in willful and deliberate disregard of Black Market’s rights and

the consuming public.

       34.     By reason of Recon Nutrition’s deceptive trade practices, Black Market has

suffered damages and irreparable harm.

       35.     By reason of the foregoing, Black Market is entitled to injunctive and monetary

relief against Recon Nutrition, along with its attorney fees and costs, pursuant to at least Utah

Code Ann. §§ 13-11a-4(2)(a), (b), and (c), as more fully set forth hereinbelow.



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                                   PRAYER FOR RELIEF

       WHEREFORE, Black Market prays for entry of a final order and judgment against

Recon Nutrition that:

       1.      Recon Nutrition is liable for its trademark infringement and unfair competition

       under the Lanham Act, 15 U.S.C. § 1125 and common law;

       2.      Enjoins Recon Nutrition, its respective agents and servants, and any and all

       persons and entities acting in concert with any of them, from directly or indirectly

       infringing in any manner Black Market’s ’352 Registration in connection with dietary

       supplements or otherwise, pursuant to at least Section 34(a) of the Lanham Act, 15

       U.S.C. § 1116(a);

       3.      Enjoins Recon Nutrition, its respective agents and servants, and any and all

       persons and entities acting in concert with any of them, from engaging in deceptive trade

       practices and unfair competition, pursuant to at least Section 34(a) of the Lanham Act, 15

       U.S.C. § 1116(a), and Utah Code Ann. § 13-11a-4(2)(a);

       4.      Enjoins Recon Nutrition, its respective agents and servants, and any and all

       persons and entities acting in concert with any of them, from marketing, advertising,

       promoting, offering for sale, selling, or distributing goods and services, including the

       Recon Nutrition’s dietary supplements marketed in connection with the GUERRILLA

       WARFARE mark, pursuant to at least Section 34(a) of the Lanham Act, 15 U.S.C.

       § 1116(a) and Utah Code Ann. § 13-11a-4(2)(a);




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5.     Recon Nutrition destroy its entire stock of all labels, signs, prints, packages,

wrappers, receptacles, and advertisements for GUERRILLA WARFARE dietary

supplements, pursuant to Lanham Act § 1118;

6.     Recon Nutrition pay to Black Market damages and a disgorgement of Recon

Nutrition’s profits in an amount to be proven at trial pursuant to applicable state statutory

and common law, including at least the greater of Black Market’s actual damages and

$2,000, pursuant to Utah Code Ann. § 13-11a-4(2)(b);

7.     Recon Nutrition pay to Black Market punitive damages, pursuant to all applicable

state statutory and common law, including at least Utah Code Ann. § 13-5a-103(b);

8.     Recon Nutrition pay to Black Market its costs in bringing this action, pursuant to

all applicable state statutory and common law, including at least Section 35(a) of the

Lanham Act, 15 U.S.C. § 1117(a), and Utah Code Ann. §§ 13-5a-103(1)(b)(ii) and 13-

11a-4(2)(c);

9.     Recon Nutrition pay to Black Market its attorney fees pursuant to all applicable

state statutory and common law, including Sections 35(a) and (b) of the Lanham Act, 15

U.S.C. § 1117(a), and Utah Code Ann. §§ 13-5a-103(1)(b)(ii) and 13-11a-4(2)(c);

10.    An imposition of constructive trust on Recon Nutrition’s proceeds from the sale

of dietary supplements under the GUERRILLA WARFARE mark, and an order requiring

a full accounting of sales/commissions made by Recon Nutrition as a result of its

wrongful or infringing acts alleged herein;

11.    Recon Nutrition pay to Black Market prejudgment interest, pursuant to at least

Section 35(b) of the Lanham Act, 15 U.S.C. § 1117(b);



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12.    Recon Nutrition pay to Black Market post-judgment interest, pursuant to at least

28 U.S.C. § 1961(a); and

13.    Black Market be granted such other and further relief as the Court may deem just

and proper under the circumstances.

                       DEMAND FOR JURY TRIAL

Black Market demands that all issues of fact in the Complaint be tried by jury.



DATED this 5th day of May, 2014.
                                      WORKMAN NYDEGGER


                                      By /s/Chad E. Nydegger
                                            CHAD E. NYDEGGER

                                      Attorney for Plaintiff Black Market, LLC.




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