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					             Case3:09-cv-05085-CRB Document43                  Filed05/03/10 Page1 of 24



   IAN K. BOYD (SBN 191434)
 1 iboyd@harveysiskind.com

 2 MATTHEW A. STRATTON (SBN 254080)
   mstratton@harveysiskind.com
 3 HARVEY SISKIND LLP
   Four Embarcadero Center, 39th Floor
 4 San Francisco, CA 94111
   Telephone:    (415) 354-0100
 5 Facsimile:    (415) 391-7124
 6

 7 Attorneys for Plaintiff
   INTEL CORPORATION
 8

 9                              IN THE UNITED STATES DISTRICT COURT
10                         FOR THE NORTHERN DISTRICT OF CALIFORNIA
11 INTEL CORPORATION, a Delaware                               Case No. CV 09-05085 CRB
   corporation,
12
                                                               AMENDED COMPLAINT FOR DAMAGES
13                 Plaintiff,                                  AND INJUNCTIVE RELIEF
14          vs.                                                DEMAND FOR JURY TRIAL
15 AMERICAS NEWS INTEL PUBLISHING,
   LLC, a Florida limited liability company,
16

17                 Defendant.

18

19
            Plaintiff Intel Corporation (“Intel”) alleges as follows:
20
            1.     Plaintiff’s INTEL mark is among the most famous and distinctive in the world. While
21
     Intel originally gained prominence as a semiconductor chip manufacturer, its fame now extends to
22
     goods and services far beyond microprocessors. Among its myriad products and services, Intel offers
23
     newsletters and information services under its INTEL mark covering diverse subjects including, but
24
     not limited to, business forecasting, consumer trends, and business analysis. Intel and Defendant each
25
     prominently utilize INTEL-formative marks to offer their respective newsletters featuring similar
26
     subject matter to many of the same customers.
27

28
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 1          2.      Defendant concedes the strength and fame of the INTEL mark, yet nonetheless

 2 contends that its trademark use of INTEL is overwhelmingly understood by the relevant public to

 3 denote “intelligence.” Not so. Intel’s fame is such that a recent consumer survey found that over 86%

 4 of respondents who associate the term “intel” with any word, definition, or mark associate the term

 5 with Intel Corporation.

 6          3.      This action arises from unauthorized use of the trade name AMERICAS NEWS INTEL

 7 PUBLISHING and the marks LATIN INTEL and LATIN INTEL TRADE CENTER by defendant

 8 Americas News Intel Publishing, LLC (“Defendant”).

 9          4.      By using a trade name and trademarks that wholly incorporate and emphasize the world

10 famous INTEL® trademark, Defendant has caused and is likely to continue to cause confusion that

11 Intel is the source or sponsor of Defendant’s services, or that there is an association between Intel and

12 Defendant. In addition, Defendant’s acts are causing, and/or are likely to cause, dilution of the

13 INTEL® trademark, especially given the overwhelming and distinctive association that the public

14 makes between the term “intel” and Intel Corporation. Consequently, Intel seeks injunctive relief and

15 damages under the federal Lanham Act (15 U.S.C. §§ 1051, et seq.), the California Business and

16 Professions Code, and the common law doctrines of passing off and unfair competition.

17 I.       JURISDICTION

18          5.      This Court has personal jurisdiction over Defendant because, on information and belief,

19 it conducts or has conducted business, as well as advertised and promoted its goods and services, in the

20 State of California and within this judicial district, and the effects of those acts have been felt in this

21 district.

22          6.      This Court has jurisdiction over this matter pursuant to 15 U.S.C. § 1121 and 28 U.S.C.

23 §§ 1331, 1332, 1338 and 1367. Intel’s claims are, in part, based on violations of the Lanham Act, as

24 amended, 15 U.S.C. §§ 1051, et seq. The Court has jurisdiction over the state law claims pursuant to

25 28 U.S.C. §§ 1332, 1338(b), and 1367.

26 II.      INTRADISTRICT ASSIGNMENT

27          7.      This is an intellectual property action and therefore was assigned on a district-wide

28 basis per Civil L.R. 3-2(c).
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 1 III.     THE PARTIES

 2          8.     Plaintiff Intel is a Delaware corporation having its principal place of business at 2200

 3 Mission College Boulevard, Santa Clara, California. Intel offers a wide variety of goods and services

 4 under its INTEL family of marks, which are sold throughout the United States, including in the

 5 Northern District of California, and worldwide.

 6          9.     Upon information and belief, Defendant is a Florida limited liability company with its

 7 principal place of business at 4055 Eagle Street, Suite 302, San Diego, California. Defendant offers

 8 consulting services and newsletter subscriptions to customers in the U.S. on business, economics,

 9 travel and politics in Mexico under the trade name AMERICAS NEWS INTEL PUBLISHING and the

10 trademarks LATIN INTEL and LATIN INTEL TRADE CENTER. Defendant promotes its services

11 through its website located at latinintel.com and latinintel-tc.com.

12          10.    Upon information and belief, Defendant targets customers nationwide over its website,

13 including customers in California, and has customers in this state. Furthermore, Defendant’s website

14 states in connection with its newsletter subscription service that “executives from more than half of the

15 Fortune 500 are among our readers.” Intel similarly provides its goods and services to the vast

16 majority of Fortune 500 companies, among its many other customers.

17 IV.      INTEL’S BUSINESS AND MARKS

18          11.    Intel is a world-famous company that develops, manufactures and sells a wide variety of

19 computer, communications and technology-related products and services. Intel’s customers include

20 individual consumers, businesses, schools, and governments.

21          12.    For 40 years, Intel has used its INTEL family of marks (including INTEL and other

22 INTEL-formative marks) as a trade name, trademark and service mark to identify virtually its entire

23 line of products and services. INTEL is one of the most valuable, respected and famous names and

24 trademarks in the world. In 2009, Interbrand’s Best Global Brands survey ranked the INTEL brand

25 ninth in the world, with an estimated value of $30.6 billion. The INTEL brand is ubiquitous, as over

26 eighty-six percent (86%) of the general public who associate the term “intel” with any word,

27 definition, or mark, associate the term with Intel Corporation.

28
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 1          13.    Intel’s offerings are also ubiquitous. Intel’s performance is frequently cited as a

 2 bellwether of the business economy both domestically and abroad. Intel creates products and

 3 technologies that have become essential parts of governments, businesses, schools, and homes

 4 everywhere. Intel uses INTEL as its “house mark” on or in connection with virtually every product

 5 and service it sells. In 2009 alone, Intel sold over $35 billion of INTEL-branded products and services.

 6          14.    Intel offers newsletters focusing on technology and business forecasting under its

 7 INTEL family of trademarks. These newsletters and circulars provide analysis regarding how

 8 businesses may optimize business processes and reduce costs. Recent newsletters and other

 9 information services offered under the INTEL mark explore how technology can improve the

10 forecasting of markets and consumer demand, implement more efficient and convenient healthcare,

11 and secure business information. The intended audience for such publications includes individuals in

12 the U.S. who are interested in technological business developments, trends and forecasts, both

13 domestic and abroad.

14          15.    Intel’s operations in Latin America are a prominent part of its business. For example,

15 Intel maintains testing, assembly, and service facilities in Costa Rica that employ more than 2,300

16 people. Outputs from these facilities represent approximately 20% of Costa Rica’s total exports.

17 Other significant facilities include Intel’s Latin American headquarters in Sao Paulo, Brazil, a design

18 center in Guadalajara, Mexico, and a software development center in Cordoba, Argentina. Intel

19 maintains Latin American field offices in Mexico City, Mexico, Buenos Aires, Argentina, Bogota,

20 Colombia, and Santiago Chile, and Latin American sales offices in Monterrey, Mexico, Cordoba,

21 Argentina, Quito, Ecuador, Lima, Peru, and Caracas, Venezuela.

22          16.    Intel has made and continues to make substantial business investments in Mexico and

23 other Latin American nations. For example, Intel just announced on April 26, 2010 that it will invest

24 2.3 billion pesos (US$177 million) over three years in Guadalajara, Mexico. The expansion will

25 increase the number of engineers at the facility to 550 and include the constructions of new

26 laboratories and office space, helping spur economic and job growth in the region. These actions are

27 precisely some of the newsworthy economic developments that Defendant is likely to cover with its

28 newsletter.
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 1          17.     Consistent with its significant presence in Latin America, Intel owns approximately 880

 2 active or pending trademark registrations for INTEL-formative trademarks throughout Latin America

 3 and the Caribbean. Among these, Intel owns numerous active or pending trademark registrations for

 4 its standalone INTEL trademark in International Class 16 (i.e., printed materials, such as newsletters),

 5 including: Mexico (Reg. Nos. 642424, 616969, 703003), Anguilla (Reg. No. 3024), Argentina (Reg.

 6 Nos. 1717986, 1800617), Aruba (Reg. No. 19455), Bahamas (Reg. No. 20720), Barbados (Reg. No.

 7 81/13309), Belize (Reg. No. 122/TM/2001), Bermuda (Reg. No. 29812), Bolivia (Reg. No. 76960-C),

 8 Brazil (Reg. Nos. 820341576, 820827843, 820345024, 820345032), British Virgin Islands (Reg. No.

 9 3304), Cayman Islands (Reg. No. 2108574, KY), Chile (Reg. Nos. 639.042, 635411), Colombia (App.

10 Serial Nos. 02103928, 10008278), Costa Rica (Reg. Nos. 103562, 108793), Cuba (Reg. No. 128885),

11 Dominica (Reg. No. 156A/1998), Dominican Republic (Reg. Nos. 100485, 100623, 100631, 100640),

12 Ecuador (Reg. No. 9843-01), El Salvador (Reg. No. 45BOOK111), Grenada (Reg. No. 155 of 2001),

13 Guatemala (Reg. No. 95910), Guyana (Reg. No. 16,755A), Haiti (Reg. No. 389/113), Honduras (Reg.

14 No. 77135), Jamaica (Reg. No. 33,207), Montserrat (Reg. No. 3086), Nicaragua (Reg. No. 40657CC),

15 Panama (Reg. No. 95725), Paraguay (App. Serial No. 9801476), Peru (Reg. No. 45550), St. Kitts &

16 Nevis (Reg. No. 4839), St. Lucia (Reg. No. 157/98), St. Vincent (Reg. No. 72/2001), Suriname (Reg.

17 No. 16001), Trinidad (Reg. No. 28425), Turks & Caicos (Reg. No. 11736), Uruguay (Reg. No.

18 301247), and Venezuela (Reg. No. P219427). Additionally, Intel owns approximately another 44

19 active or pending registrations in Latin American countries for INTEL-formative trademarks for

20 products in Class 16.

21          18.     Intel further owns and uses numerous INTEL-formative, country code top-level

22 domains to promote Intel in Latin America. These include: intel.mx and intel.com.mx (Mexico),

23 intel.com.ar (Argentina), intel.bo and intel.com.bo (Bolivia), intel.com.br (Brazil), intel.cl (Chile),

24 intel.cr and intel.co.cr (Costa Rica), intel.ec and intel.com.ec (Ecuador), intel.com.sv (El Salvador),

25 intel.com.gt (Guatemala), intel.hn and intel.com.hn (Honduras), intel.com.pa (Panama), intel.com.py

26 (Paraguay), intel.pe and intel.com.pe (Peru), intel.com.uy (Uruguay), and intel.co.ve and intel.com.ve

27 (Venezuela).

28
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 1          19.     Intel is also the owner of numerous U.S. trademark registrations for the mark INTEL,

 2 including the following:

 3                  a. Intel is the owner of U.S. Trademark Registration Nos. 914,978 and 938,772 issued

 4 on June 15, 1971 and July 25, 1972, respectively, for the mark INTEL for use in connection with

 5 integrated circuits, registers and semiconductor memories and equipment for the testing and

 6 programming thereof. These registrations, duly and legally issued by the United States Patent and

 7 Trademark Office, are valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065. Intel uses the

 8 notice of registration, “®,” with its INTEL mark pursuant to 15 U.S.C. § 1111. Copies of these

 9 registrations are attached hereto as Exhibits A and B.

10                  b. Intel is the owner of U.S. Trademark Registration No. 939,641 issued on August 1,

11 1972 for the mark INTEL for use in connection with integrated circuits, registers, and semiconductor

12 memories. This registration, duly and legally issued by the United States Patent and Trademark

13 Office, is valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065. Intel uses the notice of

14 registration, “®,” with its INTEL mark pursuant to 15 U.S.C. § 1111. A copy of this registration is

15 attached hereto as Exhibit C.

16                  c. Intel is the owner of U.S. Trademark Registration No. 1,022,563, issued on October

17 14, 1975, for the mark INTEL for use in connection with microcomputers, microcontrollers, and

18 microprocessors. This registration, duly and legally issued by the United States Patent and Trademark

19 Office, is valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065. Intel uses the notice of

20 registration, “®,” with its INTEL mark pursuant to 15 U.S.C. § 1111. A copy of this registration is

21 attached hereto as Exhibit D.

22                  d. Intel is the owner of U.S. Trademark Registration No. 1,573,324, issued on

23 December 26, 1989, for the mark INTEL for use in connection with printed material, namely, technical

24 manuals, pamphlets, user and product manuals, all of which relate to the field of information and data

25 technology and semiconductor devices. This registration, duly and legally issued by the United States

26 Patent and Trademark Office, is valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065.

27 Intel uses the notice of registration, “®,” with its INTEL mark pursuant to 15 U.S.C. § 1111. A copy

28 of this registration is attached hereto as Exhibit E.
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 1                 e. Intel is the owner of U.S. Trademark Registration No. 1,723,243, issued on

 2 October 13, 1992, for the mark INTEL for use in connection with metal key rings, watches, note paper,

 3 note cards, posters, microprocessor chip die plot prints as art prints, pencils, ball point pens, ink pens

 4 and stationery folders; plastic key chain tags; mugs and water bottles sold empty, jigsaw puzzles, golf

 5 balls, golf tees and golf ball markers. This registration, duly and legally issued by the United States

 6 Patent and Trademark Office, is valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065.

 7 Intel uses the notice of registration, “®,” with its INTEL mark pursuant to 15 U.S.C. § 1111. A copy

 8 of this registration is attached hereto as Exhibit F.

 9                 f. Intel is the owner of U.S. Trademark Registration No. 1,725,692, issued on

10 October 20, 1992, for the mark INTEL for use in connection with, among other things, sports bags,

11 gym bags and carry-on bags; towels, and clothing. This registration, duly and legally issued by the

12 United States Patent and Trademark Office, is valid, subsisting, and incontestable pursuant to 15

13 U.S.C. § 1065. Intel uses the notice of registration, “®,” with its INTEL mark pursuant to 15 U.S.C. §

14 1111. A copy of this registration is attached hereto as Exhibit G.

15                 g. Intel is the owner of U.S. Trademark Registration No. 2,171,778, issued on July 7,

16 1998, for the mark INTEL for use in connection with, among other things, computer operating system

17 software, computer hardware, integrated circuits, integrated circuit chips, microprocessors, printed

18 circuit boards, video circuit boards, audio-video circuit boards, video graphic accelerators, multimedia

19 accelerators, video processors, computer hardware and software for the development, maintenance, and

20 use of interactive audio-video computer conference systems, and computer hardware and software for

21 the receipt, display and use of broadcast video, audio and data signals. This registration, duly and

22 legally issued by the United States Patent and Trademark Office, is valid, subsisting, and incontestable

23 pursuant to 15 U.S.C. § 1065. Intel uses the notice of registration, “®,” with its INTEL mark pursuant

24 to 15 U.S.C. § 1111. A copy of this registration is attached hereto as Exhibit H.

25                 h. Intel is the owner of U.S. Trademark Registration No. 2,194,121 issued on

26 October 6, 1998, for the mark INTEL for use in connection with, among other things, printed

27 materials, namely, books, magazines, newsletters, journals, operating manuals, users guides,

28 pamphlets, and brochures about, for use with and directed to users of, computer operating system
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 1 software; computer operating programs; computer system tools; computer application software;

 2 computer hardware; computer components; integrated circuits; microprocessors; computer memory

 3 devices; video graphic accelerators; multimedia accelerators; video processors; and fax/modems. This

 4 registration, duly and legally issued by the United States Patent and Trademark Office, is valid,

 5 subsisting, and incontestable pursuant to 15 U.S.C. § 1065. Intel uses the notice of registration, “®,”

 6 with its INTEL mark pursuant to 15 U.S.C. § 1111. A copy of this registration is attached hereto as

 7 Exhibit I.

 8                 i. Intel is the owner of U.S. Trademark Registration No. 2,251,962 issued on June 8,

 9 1999, for the mark INTEL for use in connection with clocks, jewelry, cuff links, key chains, necklaces,

10 necktie fasteners, lapel pins, pendants, piggy banks, trophies and watches. This registration, duly and

11 legally issued by the United States Patent and Trademark Office, is valid, subsisting, and incontestable

12 pursuant to 15 U.S.C. § 1065. Intel uses the notice of registration, “®,” with its INTEL mark pursuant

13 to 15 U.S.C. § 1111. A copy of this registration is attached hereto as Exhibit J.

14                 j. Intel is the owner of U.S. Trademark Registration No. 2,251,961 issued on June 8,

15 1999, for the mark INTEL for use in connection with binders, bookends, boxes for pens, calendars,

16 tablets, note cards, self-adhesive pads, desk pads, and calendar pads, pens, pencils, folders,

17 paperweights, pen and pencil holders, photograph stands, erasers, markers, desk sets, and desk

18 organizers. This registration, duly and legally issued by the United States Patent and Trademark

19 Office, is valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065. Intel uses the notice of

20 registration, “®,” with its INTEL mark pursuant to 15 U.S.C. § 1111. A copy of this registration is

21 attached hereto as Exhibit K.

22                 k. Intel is the owner of U.S. Trademark Registration No. 2,250,491 issued on June 1,

23 1999, for the mark INTEL for use in connection with travel bags, luggage, school bags, back packs,

24 beach bags, duffel bags, fanny packs, and umbrellas. This registration, duly and legally issued by the

25 United States Patent and Trademark Office, is valid, subsisting, and incontestable pursuant to 15

26 U.S.C. § 1065. Intel uses the notice of registration, “®,” with its INTEL mark pursuant to 15 U.S.C. §

27 1111. A copy of this registration is attached hereto as Exhibit L.

28
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 1                 l. Intel is the owner of U.S. Trademark Registration No. 2,254,525 issued on June 15,

 2 1999, for the mark INTEL for use in connection with T-shirts, shirts, jackets, headwear, hats, polo

 3 shirts, and infant rompers. This registration, duly and legally issued by the United States Patent and

 4 Trademark Office, is valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065. Intel uses the

 5 notice of registration, “®,” with its INTEL mark pursuant to 15 U.S.C. § 1111. A copy of this

 6 registration is attached hereto as Exhibit M.

 7                 m.      Intel is the owner of U.S. Trademark Registration No. 2,261,531 issued on

 8 July 13, 1999, for the mark INTEL for use in connection with toys, dolls, bean bags, and Christmas

 9 tree ornaments. This registration, duly and legally issued by the United States Patent and Trademark

10 Office, is valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065. Intel uses the notice of

11 registration, “®,” with its INTEL mark pursuant to 15 U.S.C. § 1111. A copy of this registration is

12 attached hereto as Exhibit N.

13                 n. Intel is the owner of U.S. Trademark Registration No. 2,276,580 issued on

14 September 7, 1999 for the mark INTEL for use in connection with mugs and sports bottles. This

15 registration, duly and legally issued by the United States Patent and Trademark Office, is valid,

16 subsisting, and incontestable pursuant to 15 U.S.C. § 1065. Intel uses the notice of registration, “®,”

17 with its INTEL mark pursuant to 15 U.S.C. § 1111. A copy of this registration is attached hereto as

18 Exhibit O.

19                 o. Intel is the owner of U.S. Trademark Registration No. 2,446,693, issued on

20 April 24, 2001, for the mark INTEL for use in connection with, among other things, computers,

21 computer hardware, software for use in operating and maintaining computer systems, microprocessors,

22 integrated circuits, computer chipsets, computer motherboards, computer graphics boards, and

23 computer networking hardware. This registration, duly and legally issued by the United States Patent

24 and Trademark Office, is valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065. Intel uses

25 the notice of registration, “®,” with its INTEL mark pursuant to 15 U.S.C. § 1111. A copy of this

26 registration is attached hereto as Exhibit P.

27                 p. Intel is the owner of U.S. Trademark Registration No. 2,462,327, issued on June 19,

28 2001, for the mark INTEL for use in connection with, among other things, computer hardware and
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 1 software for use in imaging and photographic applications. This registration, duly and legally issued

 2 by the United States Patent and Trademark Office, is valid, subsisting, and incontestable pursuant to 15

 3 U.S.C. § 1065. Intel uses the notice of registration, “®,” with its INTEL mark pursuant to 15 U.S.C.

 4 § 1111. A copy of this registration is attached hereto as Exhibit Q.

 5                 q. Intel is the owner of U.S. Trademark Registration No. 2,585,551, issued on June 25,

 6 2002, for the mark INTEL for use in connection with, among other things, computer hardware

 7 installation and repair services; arranging and conducting educational conferences and seminars in the

 8 fields of computers, telecommunications, and computer networking, and distributing course materials

 9 in connection therewith; development, publishing and dissemination of educational materials in the

10 fields of computers, telecommunications and computer networking for others; interactive and non-

11 interactive computer education training services; providing information via global computer network

12 in the fields of education and entertainment; provision of interactive and non-interactive electronic

13 information services on a wide variety of topics; development of local and wide area computer

14 networks for others; computer web site design services; computer software design for others;

15 development of interactive and non-interactive web pages for the global computer network for others;

16 providing on-line newspapers, magazines, instructional manuals in the fields of technology,

17 entertainment, education and business; and development, maintenance, and provision of interactive and

18 non-interactive electronic bulletin boards services in the fields of entertainment and education. This

19 registration, duly and legally issued by the United States Patent and Trademark Office, is valid and

20 subsisting. Intel uses the notice of registration, “®,” with its INTEL mark pursuant to 15 U.S.C.

21 § 1111. A copy of this registration is attached hereto as Exhibit R.

22                 r. Intel is the owner of U.S. Trademark Registration No. 2,742,174, issued on July 29,

23 2003, for the mark INTEL for use in connection with, among other things, installation, repair,

24 maintenance, support and consulting services for computer-related and communications-related goods;

25 providing on-line publications, namely, books, brochures, white papers, catalogs and pamphlets in the

26 fields of computer and information technology; and designing and developing standards for others in

27 the design and implementation of computer software, computer hardware and telecommunications

28 equipment. This registration, duly and legally issued by the United States Patent and Trademark
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 1 Office, is valid and subsisting. Intel uses the notice of registration, “®,” with its INTEL mark pursuant

 2 to 15 U.S.C. § 1111. A copy of this registration is attached hereto as Exhibit S.

 3                 s. Intel is the owner of U.S. Trademark Registration No. 3,029,954, issued on

 4 December 13, 2005, for the mark INTEL for use in connection with, among other things,

 5 semiconductor and microprocessor cartridges; internet and web servers; internet and web caching

 6 servers; wireless and remote computer peripherals; computer hardware and software for enabling web

 7 portals; computer hardware and software for digital encryption, identification and certification;

 8 computer hardware and software to enable remote encrypted networking; computer hardware and

 9 software to enable secure data transmission via networks, the internet and world wide web; and

10 computer consultation services, namely, web design and development services. This registration, duly

11 and legally issued by the United States Patent and Trademark Office, is valid and subsisting. Intel uses

12 the notice of registration, “®,” with its INTEL mark pursuant to 15 U.S.C. § 1111. A copy of this

13 registration is attached hereto as Exhibit T.

14                 t. Intel is the owner of U.S. Trademark Registration No. 3,136,102, issued on August

15 29, 2006, for the mark INTEL for use in connection with telecommunication services, namely,

16 electronic and digital transmission of data, documents, audio and video via computer terminals. This

17 registration, duly and legally issued by the United States Patent and Trademark Office, is valid and

18 subsisting. Intel uses the notice of registration, “®,” with its INTEL mark pursuant to 15 U.S.C.

19 § 1111. A copy of this registration is attached hereto as Exhibit U.

20                 u. Intel is the owner of U.S. Trademark Registration No. 3,173,391, issued on

21 November 21, 2006, for the mark INTEL for use in connection with telecommunications consulting

22 services. This registration, duly and legally issued by the United States Patent and Trademark Office,

23 is valid and subsisting. Intel uses the notice of registration, “®,” with its INTEL mark pursuant to 15

24 U.S.C. § 1111. A copy of this registration is attached hereto as Exhibit V.

25          20.    In addition to using INTEL as a trade name, a trademark, and a service mark, Intel also

26 owns a large family of marks that incorporate INTEL as a prominent component of the mark. For

27 example, in 1991, Intel developed and launched a cooperative advertising and licensing program

28 referred to as the “Intel Inside® Program.” As part of this program, Intel licensed the INTEL mark to
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 1 PC manufacturers to communicate to the end customer that the manufacturers’ products, such as

 2 personal desktop computers, laptop computers and workstations, were designed with genuine Intel

 3 microprocessors. Among Intel’s many thousands of OEM (“Original Equipment Manufacturers”)

 4 licensees worldwide are technology giants such as Dell, Gateway, Hewlett-Packard, IBM, and Sony.

 5 Intel’s OEM licensees have sold many billions of dollars worth of products bearing the INTEL marks.

 6 The combined advertising expenditure by Intel and Intel’s licensees under the INTEL mark has

 7 averaged over one billion dollars for each of the last few years. Through extensive advertising and

 8 promotion by Intel and its licensees, advertisements reflecting the INTEL mark have most likely

 9 created billions of impressions.

10          21.    Intel is the owner of numerous U.S. trademark registrations for the INTEL INSIDE

11 mark, including Reg. No. 1,705,796 and Reg. No. 2,179,209. Copies of these registrations are attached

12 hereto as Exhibits W and X.

13          22.    Intel owns many other U.S. trademark registrations for its family of INTEL formative

14 marks. These include: INTEL SPEEDSTEP, INTEL XSCALE, INTEL NETMERGE, INTEL

15 NETBURST, INTEL NETSTRUCTURE, INTEL CORE and INTEL VPRO. Copies of these

16 registrations are attached hereto as Exhibits Y through GG.

17          23.    Intel is also the owner of several California trademark registrations for the mark INTEL

18 (CA Reg. No. 63565; CA Reg. No. 94220; CA Reg. No. 94221). Copies of these registrations are

19 attached hereto as Exhibits HH through JJ

20          24.    Through its extensive use, Intel also owns common law trademark rights in INTEL and

21 its family of INTEL formative marks, for all of the goods and services and activities identified herein.

22          25.    Intel maintains a website located at intel.com. Intel has used its trade name and

23 trademark as a domain name in order to make it easy for customers to locate Intel’s website, and to

24 identify that it is owned by Intel. Intel’s web site features the INTEL marks and many other INTEL

25 composite marks.

26          26.    As a consequence of the extensive sales, advertising, promotion, and use of the INTEL

27 and INTEL formative trademarks, Intel has developed enormous recognition for its products and

28 services under the INTEL mark and has acquired and enjoys a valuable reputation and tremendous
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 1 goodwill under the mark. The INTEL mark is world renowned, and is a “famous” mark for purposes

 2 of 15 U.S.C. § 1125(c)(1).

 3 V.      AMERICAS NEWS INTEL’S BUSINESS

 4         27.     Intel is informed and believes that Defendant offers for sale newsletters and information

 5 services to its U.S. customers that track and forecast business, economics and politics, with an

 6 emphasis on the business environment in Mexico. Intel is further informed and believes that

 7 Defendant’s newsletters include coverage and analysis of trends in technology industries in Mexico,

 8 including that industry’s relationship with U.S.-based technology firms. Intel is informed and believes

 9 that Defendant, along with Intel, offers such newsletters through websites and by e-mail subscription

10 and that Defendant offers and provides such services in the State of California.

11         28.     Defendant targets many of the same customers as Intel and Defendant’s actual

12 customers substantially overlap with Intel’s actual customers. According to Defendant’s website,

13 Defendant offers such services to the majority of Fortune 500 companies. Defendant further

14 acknowledges that it targets its services to multinational business executives and other business

15 professionals, among others, with an interest in North American business trends affecting Mexico.

16         29.     The AMERICAS NEWS INTEL PUBLISHING trade name and the LATIN INTEL and

17 LATIN INTEL TRADE CENTER trademarks wholly incorporate and emphasize the INTEL

18 trademark, adding only generic and non-distinctive terms that describe the services offered by

19 Defendant. Specifically, the terms “AMERICAS”, “NEWS”, “PUBLISHING”, “LATIN”, and

20 “TRADE CENTER” all describe how Defendant is, in part, publishing news and analysis concerning

21 Latin American business issues to American customers. “INTEL” is the only distinctive element in

22 Defendant’s name and marks, and identical in sight and sound to the world famous INTEL trademark.

23 Defendant holds itself and its services out to the public as LATIN INTEL and AMERICAS NEWS

24 INTEL, using these marks to identify the source of its services and distinguish itself from competitors.

25 This is the very definition of trademark use – not “generic” use, as Defendant asserts.

26         30.     Defendant’s website, http://latinintel-tc.com, prominently used Intel’s trademarks

27 without authorization to promote Intel’s goods and services—further increasing the risk of consumer

28 confusion. A true and correct copy of such use on Defendant’s website is attached hereto as Exhibit
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 1 KK. Defendant either willfully placed Intel’s products on its website or, alternatively, its domain name

 2 registrar determined that the best way to monetize a website featuring an INTEL-formative domain

 3 name was to use it to advertise Intel’s products. Either scenario confirms the substantial overlap

 4 between the parties’ customers and the likelihood of confusion.

 5          31.    Defendant’s unauthorized use of INTEL-formative marks deprives Intel of the ability to

 6 control and maintain the high quality of goods and services marketed under the INTEL mark. Because

 7 Defendant provides its newsletters and information services to many of the same customers as Intel,

 8 there is a risk that those customers will attribute the quality and content of Defendant’s offerings to

 9 Intel. Such confusion risks damaging Intel’s relationship with its current and prospective customers,

10 and places Intel’s valuable reputation in the hands of an unaffiliated third party.

11          32.    Initial interest confusion is among the many actionable ways in which Defendant risks

12 deceiving consumers. Specifically, because Defendant uses INTEL-formative marks to identify itself,

13 its website, and its products, potential customers may mistake Defendant for Intel and be erroneously

14 drawn to it. That Defendant’s website featured advertisements for Intel’s products makes such

15 confusion inevitable. Such confusion unjustly benefits Defendant, by causing customers’ initial

16 interest in Defendant’s offerings at the expense of Intel. The harm to Intel is real, regardless of

17 whether customers ultimately come to understand that Defendant and Intel are unaffiliated.

18          33.    Intel made numerous attempts to resolve the dispute amicably, including its offer to fly

19 and meet with Defendant’s counsel in person to try to resolve the dispute, which Defendant rejected.

20 Defendant’s infringing use of the AMERICAS NEWS INTEL PUBLISHING trade name and LATIN

21 INTEL and LATIN INTEL TRADE CENTER trademarks persists, leaving Intel no choice but to

22 pursue its claims.

23                                      FIRST CAUSE OF ACTION
                                      TRADEMARK INFRINGEMENT
24
                                            (15 U.S.C. § 1114)
25

26          34.    Intel realleges and incorporates herein by reference the matters alleged in Paragraphs
27 1 through 33 of this Complaint.

28
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 1          35.      The relevant factors in the likelihood of confusion analysis all favor Intel or are neutral,

 2 while none favor Defendant. These include the:

 3                a. Strength of the INTEL mark, which is undisputed here;
 4
                  b. Similarity of the marks, which is undeniable, given that Defendant wholly incorporates
 5
                     the standalone INTEL mark in its trade name and other trademarks; and
 6
                  c. Proximity of the goods and services, which is significant, given that both parties offer
 7
                     business and technology-oriented newsletters and analysis to many of the same
 8
                     customers, and it is undisputed that Defendant’s website advertised Intel products.
 9

10 Ultimately, given Defendant’s unauthorized use of INTEL—one of the strongest marks in the world—

11 in connection with newsletters which are marketed to an overlapping customer base, customer

12 confusion is inevitable.

13          36.      Upon information and belief, Defendant was aware of Intel’s business and its INTEL

14 mark prior to the adoption and use of the AMERICAS NEWS INTEL PUBLISHING trade name, and

15 LATIN INTEL and LATIN INTEL TRADE CENTER trademarks.

16          37.      Defendant either had actual notice and knowledge, or had constructive notice, of Intel’s

17 ownership and registrations of the INTEL mark pursuant to 15 U.S.C. § 1072 prior to Defendant’s

18 adoption and use of the AMERICAS NEWS INTEL PUBLISHING trade name, and LATIN INTEL

19 and LATIN INTEL TRADE CENTER trademarks.

20          38.      Defendant is using the AMERICAS NEWS INTEL PUBLISHING trade name, and

21 LATIN INTEL and LATIN INTEL TRADE CENTER trademarks, in connection with the sale of its

22 online newsletters, information services, and consulting services without Intel’s consent, and with

23 knowledge of Intel’s rights.

24          39.      Defendant’s unauthorized use of the AMERICAS NEWS INTEL PUBLISHING trade

25 name, and LATIN INTEL and LATIN INTEL TRADE CENTER trademarks falsely indicates to

26 consumers that Defendant’s products and services are in some manner connected with, sponsored by,

27 affiliated with, or related to Intel, Intel’s licensees, or the goods and services of Intel and Intel’s

28 licensees.
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 1          40.     Defendant’s unauthorized use of the AMERICAS NEWS INTEL PUBLISHING trade

 2 name, and LATIN INTEL and LATIN INTEL TRADE CENTER trademarks, is also likely to cause

 3 consumers to be confused as to the source, nature and quality of the products and services Defendant is

 4 promoting or selling. Namely, although direct competition is not required to establish trademark

 5 infringement, many of the same customers that receive Defendant’s newsletters offered under such

 6 INTEL-formative marks are likely to mistakenly believe that such newsletters are associated or

 7 affiliated with, or approved by, Intel, given both the aforementioned goods and services offered by

 8 Intel, the customer overlap between the parties, and the overwhelming public association between the

 9 use of the term “intel” and Intel Corporation.

10          41.    Defendant’s unauthorized use of the AMERICAS NEWS INTEL PUBLISHING trade

11 name, and LATIN INTEL and LATIN INTEL TRADE CENTER trademarks in connection with the

12 sale of its products and services focusing on business trends and information and consulting services

13 allows, and will continue to allow, Defendant to receive the benefit of the goodwill established at great

14 labor and expense by Intel and to gain acceptance of Defendant’s goods and services, not based on the

15 merits of those goods or services, but on Intel’s reputation and goodwill.

16          42.    Defendant’s unauthorized use of such marks as LATIN INTEL in connection with the

17 sale of its goods and services to many Intel’s customers deprives Intel of the ability to control the

18 consumer perception of the quality of the goods and services marketed under the INTEL mark, and

19 places Intel’s valuable reputation and goodwill in the hands of Defendant, over which Intel has no

20 control.

21          43.    Defendant has caused confusion and is likely to cause further confusion, or to cause

22 mistake, or to deceive consumers or potential consumers in violation of 15 U.S.C. § 1114.

23          44.    Intel has been, is now, and will be irreparably injured and damaged by Defendant’s

24 trademark infringement and, unless enjoined by the Court, Intel will suffer further harm to its name,

25 reputation and goodwill. This harm constitutes an injury for which Intel has no adequate remedy at

26 law.

27

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                                        SECOND CAUSE OF ACTION
 1                                    FALSE DESIGNATION OF ORIGIN
 2                                          (15 U.S.C. § 1125(A))

 3
            45.      Intel realleges and incorporates herein by reference the matters alleged in Paragraphs
 4
     1 through 44 of this Complaint.
 5
            46.      Defendant’s unauthorized use of the AMERICAS NEWS INTEL PUBLISHING trade
 6
     name, and LATIN INTEL and LATIN INTEL TRADE CENTER trademarks, falsely suggests that its
 7
     products and services are connected with, sponsored by, affiliated with, or related to Intel, and
 8
     constitutes a false designation of origin in violation of 15 U.S.C. § 1125(a) regarding both Intel’s
 9
     registered and common law trademark rights.
10
            47.      Intel has been, is now, and will be irreparably injured and damaged by Defendant’s
11
     aforementioned acts and, unless enjoined by the Court, Intel will suffer further harm to its name,
12
     reputation and goodwill. This harm constitutes an injury for which Intel has no adequate remedy at
13
     law.
14
                                        THIRD CAUSE OF ACTION
15
                                     FEDERAL TRADEMARK DILUTION
16                                         (15 U.S.C. § 1125(C))

17
            48.      Intel realleges and incorporates herein by reference the matters alleged in paragraphs
18
     1 through 47 of this Complaint.
19
            49.      Intel readily meets its burden to establish a likelihood of dilution. The relevant factors
20
     favor a finding that Defendant’s conduct likely dilutes Intel’s trademarks:
21
            a. The INTEL mark is famous and distinctive, which Defendant appropriately concedes;
22
            b. Defendant uses the mark in commerce, which Defendant concedes;
23
            c. Defendant’s use of INTEL began after the mark became famous, which Defendant
24
                  concedes; and
25
            d. Defendant’s use of INTEL is likely to cause dilution, as the public decreasingly associates
26
                  the use of INTEL as a trademark with Intel alone.
27

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 1 The INTEL mark is among the most famous in the world and was so long before Defendant starting

 2 using it throughout the U.S. to identify its newsletters and information services. Defendant is likely to

 3 dilute the value and distinctive quality of the INTEL mark. Moreover, while the parties target many of

 4 the same customers, the degree of competition is irrelevant to determining if dilution exists.

 5          50.     The INTEL mark is world-renowned. It is a famous mark that is widely recognized by

 6 consumers, businesses and industry, and that identifies the products and services of Intel in the minds

 7 of consumers. The general public associates the term “intel” with Intel Corporation far over and above

 8 any other term, definition, or trademark.

 9          51.     Defendant’s unauthorized use of the AMERICAS NEWS INTEL PUBLISHING trade

10 name, and LATIN INTEL and LATIN INTEL TRADE CENTER trademarks, began after Intel’s mark

11 had become famous.

12          52.     Americas News Intel’s unauthorized use of the AMERICAS NEWS INTEL

13 PUBLISHING trade name, and LATIN INTEL and LATIN INTEL TRADE CENTER trademarks has,

14 and will continue to have, an adverse effect upon the value and distinctive quality of the INTEL mark.

15 Americas News Intel’s acts are likely to blur and whittle away at the distinctiveness and identity-

16 evoking quality of the INTEL mark, which Intel will establish through the submission of survey

17 evidence. Currently over 86% of the general public who associate the term “intel” with any word,

18 definition, or trademark associate it with Intel Corporation, but such association is likely to be

19 diminished through Defendant’s unauthorized conduct. Americas News Intel’s acts are likely to dilute

20 the famous INTEL mark in violation of 15 U.S.C. § 1125(c).

21          53.     Intel has been, is now, and will be irreparably injured and damaged by Americas News

22 Intel’s aforementioned acts and, unless enjoined by the Court, Intel will suffer further harm to its

23 name, reputation and goodwill. This harm constitutes an injury for which Intel has no adequate

24 remedy at law.

25

26

27

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                                       FOURTH CAUSE OF ACTION
 1                               INJURY TO BUSINESS REPUTATION AND
 2                                 DILUTION UNDER CALIFORNIA LAW
                                     (CAL. BUS. & PROF. CODE §14247)
 3

 4          54.      Intel realleges and incorporates herein by reference the matters alleged in paragraphs

 5 1 through 53 of this Complaint.

 6          55.      Defendant’s unauthorized use of the AMERICAS NEWS INTEL PUBLISHING trade

 7 name, and LATIN INTEL and LATIN INTEL TRADE CENTER trademarks, is likely to injure Intel’s

 8 business reputation, and has diluted, and/or is likely to dilute, the distinctive quality of the INTEL

 9 mark and trade name in violation of the California Business and Professions Code §14247.

10          56.      Defendant willfully intended to trade on Intel’s image and reputation and to dilute the

11 INTEL trademark, acted with reason to know, or was willfully blind as to the consequences of its

12 actions.

13          57.      Defendant’s wrongful acts have caused and will continue to cause Intel irreparable

14 harm. Intel has no adequate remedy at law for Defendant’s dilution.

15          58.      Intel is therefore entitled to a judgment enjoining and restraining Defendant from

16 engaging in further acts of dilution pursuant to California Business and Professions Code § 14247.

17
                                      FIFTH CAUSE OF ACTION
18                             INFRINGEMENT UNDER CALIFORNIA LAW
                                   (CAL. BUS. & PROF. CODE § 14245)
19

20          59.      Intel realleges and incorporates herein by reference the matters alleged in Paragraphs

21 1 through 58 of this Complaint.

22          60.      Defendant’s unauthorized use of the AMERICAS NEWS INTEL PUBLISHING trade

23 name, and LATIN INTEL and LATIN INTEL TRADE CENTER trademarks, in connection with the

24 sale, offering for sale, distribution or advertising of its products and services is likely to cause

25 confusion or mistake or to deceive as to the source or origin of its goods and/or services in violation of

26 California Business and Professions Code § 14245.

27          61.      Upon information and belief, Defendant’s infringement has been with knowledge of

28 Intel’s rights.
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 1         62.     Intel has been, is now, and will be irreparably injured and damaged by Defendant’s

 2 aforementioned acts and, unless enjoined by the Court, Intel will suffer further harm to its name,

 3 reputation and goodwill. This harm constitutes an injury for which Intel has no adequate remedy at

 4 law.
                                       SIXTH CAUSE OF ACTION
 5                                    COMMON LAW PASSING OFF
 6                                    AND UNFAIR COMPETITION

 7         63.     Intel realleges and incorporates herein by reference the matters alleged in paragraphs

 8 1 through 62 of this Complaint.

 9         64.     Defendant’s unauthorized use of the AMERICAS NEWS INTEL PUBLISHING trade

10 name, and LATIN INTEL and LATIN INTEL TRADE CENTER trademarks, constitutes passing off

11 and unfair competition of the INTEL mark in violation of the common law of California.

12         65.     Defendant’s wrongful acts have caused and will continue to cause Intel irreparable

13 harm. Intel has no adequate remedy at law.

14         66.     Intel is entitled to a judgment enjoining and restraining Defendant from engaging in

15 further acts of infringement and unfair competition.

16                                     SEVENTH CAUSE OF ACTION
                                         UNFAIR COMPETITION
17
                                     (CAL. BUS & PROF. CODE § 17200)
18

19         67.     Intel realleges and incorporates herein by reference the matters alleged in Paragraphs 1
20 through 66 of this Complaint.

21         68.     Defendant’s acts described above constitute unfair competition in violation of
22 California Business and Professional Code § 17200 et seq., as they are likely to deceive the public.

23         69.     Defendant’s acts of unfair competition have caused and will continue to cause Intel
24 irreparable harm. Intel has no adequate remedy at law for Defendant’s unfair competition.

25         70.     Intel is entitled to a judgment enjoining and restraining Defendant from engaging in
26 further unfair competition.

27

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                                      EIGHTH CAUSE OF ACTION
 1                                   FEDERAL CYBERSQUATTING
 2                                        (15 U.S.C. § 1125(D))

 3          71.    Intel realleges and incorporates herein by reference the matters alleged in paragraphs 1
 4 through 70 of this Complaint.

 5          72.    Defendant registered the latinintel.com and latinintel-tc.com domain names.
 6          73.    Defendant registered and used the latinintel.com and latinintel-tc.com domain names
 7 with the bad-faith intent to profit from Intel’s INTEL trademark. Evidence of such intent includes the

 8 fact that Defendant’s website has prominently featured unauthorized uses of Intel’s trademarks and

 9 products, in an effort to capitalize on, and profit in bad faith from, consumer confusion arising from

10 Defendant’s use of the INTEL trademark.

11          74.    The LATIN INTEL trademark, utilized at the latinintel.com and latinintel-tc.com
12 domain names, is confusingly similar to Intel’s INTEL trademark, and/or dilutive of Intel’s INTEL

13 trademark. Intel’s INTEL trademark is both distinctive and famous, which Defendant appropriately

14 concedes.

15          75.    Intel’s INTEL trademark was both distinctive and famous at the time of Defendant’s
16 registration of the latinintel.com and latinintel-tc.com domain names.

17          76.    Defendant’s registration and/or use of the latinintel.com and latinintel-tc.com domain
18 names constitutes cyberpiracy in violation of the 15 U.S.C. § 1125(d).

19

20

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 1                                           PRAYER FOR RELIEF

 2          WHEREFORE, Intel prays for relief as follows:

 3          1.      Entry of an order and judgment requiring that Defendant and its agents, servants,

 4 employees, owners and representatives, and all other persons, firms or corporations in active concert or

 5 participation with it, be enjoined and restrained from (a) using in any manner the INTEL mark, or any

 6 name, mark or domain name that wholly incorporates the INTEL mark or is confusingly similar to or a

 7 colorable imitation of this mark; (b) doing any act or thing calculated or likely to cause confusion or

 8 mistake in the minds of members of the public, or prospective customers of Intel’s products or

 9 services, as to the source of the products or services offered for sale, distributed, or sold, or likely to

10 deceive members of the public, or prospective customers, into believing that there is some connection

11 between Defendant and Intel; and (c) committing any acts which will tarnish, blur, or dilute, or are

12 likely to tarnish, blur, or dilute the distinctive quality of the famous INTEL mark;

13          2.      A judgment ordering Defendant, pursuant to 15 U.S.C. § 1116(a), to file with this Court

14 and serve upon Intel within thirty (30) days after entry of the injunction, a report in writing under oath

15 setting forth in detail the manner and form in which Defendant has complied with the injunction, and

16 ceased all sales of goods and services under the AMERICAS NEWS INTEL PUBLISHING trade

17 name, and LATIN INTEL and LATIN INTEL TRADE CENTER trademarks, as set forth above;

18          3.      A judgment ordering Defendant, pursuant to 15 U.S.C. § 1118, to deliver up for

19 destruction, or to show proof of said destruction or sufficient modification to eliminate the infringing

20 matter, all articles, packages, wrappers, products, displays, labels, signs, vehicle displays or signs,

21 circulars, kits, packaging, letterhead, business cards, promotional items, clothing, literature, sales aids,

22 receptacles or other matter in the possession, custody, or under the control of Defendant or its agents

23 bearing the trademark INTEL in any manner, or any mark that is confusingly similar to or a colorable

24 imitation of this mark, including without limitation the AMERICAS NEWS INTEL PUBLISHING

25 trade name, and LATIN INTEL and LATIN INTEL TRADE CENTER trademarks, both alone and in

26 combination with other words or terms;

27          4.      A judgment ordering Defendant to take all steps necessary to cancel any trademark

28 application or registration it may have in the U.S., if any;
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 1           5.    A judgment ordering Defendant to take all steps necessary to cancel or transfer to

 2 Intel, in Intel’s sole discretion, the latinintel.com and latinintel-tc.com domain names, and any other

 3 domain name including the word INTEL in Defendant’s possession or control, and to remove all

 4 references to INTEL from all of its other websites, if any;

 5           6.    A judgment in the amount of Intel’s actual damages, Defendant’s profits, Intel’s

 6 reasonable attorneys’ fees and costs of suit, and pre-judgment interest pursuant to 15 U.S.C. §1117;

 7           7.    A judgment for enhanced damages under 15 U.S.C. §1117 and punitive damages under

 8 state law as appropriate; and

 9           8.    A judgment granting Intel such other and further relief as the Court deems just and

10 proper.

11 Dated: May 3, 2010                                Respectfully submitted,
12
                                                     HARVEY SISKIND LLP
13                                                   IAN K. BOYD
                                                     MATTHEW A. STRATTON
14

15
                                                     By: /s/ Ian K. Boyd
16                                                               Ian K. Boyd
17                                                           Attorneys for Plaintiff
18                                                           INTEL CORPORATION

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                                        DEMAND FOR JURY TRIAL
 1

 2         Intel hereby demands trial by jury of all issues so triable.

 3
     Dated: May 3, 2010                               Respectfully submitted,
 4
                                                      HARVEY SISKIND LLP
 5                                                    IAN K. BOYD
 6                                                    MATTHEW A. STRATTON

 7

 8                                                    By: /s/ Ian K. Boyd
                                                                  Ian K. Boyd
 9
                                                               Attorneys for Plaintiff
10                                                             INTEL CORPORATION
11

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