Plaintiff alleges that:
1. This court has jurisdiction under 15 U.S.C.A. Section 1121 and 28 U.S.C.A. Section 1338(a) in that this case arises under the Trademark Laws of the United States, 15 U.S.C.A. Section 1051 et seq.
2. Plaintiff Small is a corporation incorporated under the laws of Washington, having its principal place of business at 1111 E. Jones Road, Suite 1, Seattle, Washington, and defendant is a corporation incorporated under the laws of New York, having their principal place of business at 1 Smith Street, New York, New York, and qualified to do business and doing business in Washington.
4. John Cpaatty adopted the mark TaxHQ and used it in interstate commerce for "tax and legal services in the nature of determining choice of entity questions, including tax document preparation and the formation of corporate entities". On September 9, 2004, John Cpaatty filed an application for registration of said mark in the United States Patent and Trademark office (USPTO). On October 7,2005, said mark was registered in the USPTO on the principal register under the act of 1946 covering the use of said mark with respect to "tax and legal services in the nature of determining choice of entity questions, including tax document preparation and the formation of corporate entities".
5. Said registration is now outstanding and valid.
6. Said registration was licensed to plaintiff, which is wholly owned by John Cpaatty, and said registration was validly assigned by John Cpaatty to plaintiff by means of a written assignment dated July 5, 2007, and plaintiff continues to be the owner thereof.
7. Continuously since on or about March 31, 2003, plaintiff (and assignor) have used the mark TaxHQ in advertising in newspapers and (later) in plaintiff's web site to identify its services and to distinguish them from those provided by others.
8. Defendants are the owners of two marks, TaxHQ and Big TaxHQ, both of which were filed with the USPTO subsequent to plaintiff's mark, and registered on the principal register subsequent to the registration date of plaintiff's mark. The first mark filed (TaxHQ) is for international class 016, for a "newsletter in the field of client notices of product and service updates, calendar of events, customer surveys, new services in the field of tax information services " and does not appear to be, on its face, in conflict with plaintiff's mark. The second mark filed (Big TaxHQ) is for international class 042, for "computer services, namely, providing on-line database in the fields of tax information, tax documents, and related information on filing tax documents and related legal forms" and appears to be much closer to plaintiff's mark, but presumably with sufficient differentiation to satisfy the USPTO examining attorney that Big TaxHQ is not in conflict with plaintiff's mark.
9. Defendant Big has infringed plaintiff's mark in interstate commerce by acts admitted to have occurred by its vice president and general counsel in a cease and desist letter received by registered mail on July 2, 2007 ("C&D letter"), and by advertising services under the name Big TaxHQ. Said use of said names and marks by defendant is without permission and authority of plaintiff and said use by defendant is likely to cause confusion, to cause mistake and to deceive.
10. Defendant Big is aware of the fact that plaintiff's mark is reqistered with the USPTO, and admits (C&D letter) awareness of the display of the plaintiff's mark on the plaintiff's web site where the plaintiff's mark is displayed with the letter R enclosed within a circle. A request that defendant cease and desist from its acts of trademark infringement would be futile in light of the C&D letter.
COUNT TWO (Declaratory Judgment)
11. Plaintiff realleges, as if fully set forth herein, the allegations of Count One.
12. The C&D letter makes it clear that there is an actual controversy between parties in that defendants have charged plaintiff with infringement and have threatened plaintiff with infringement litigation (see Exhibit A, attached hereto). Accordingly, a declaratory judgment with respect to the rights and legal relations of the parties is appropriate under 28 U.S.C.A. Section 2201 et seq. Such declaratory judgment should provide for the cancellation of the Big TaxHQ mark, a declaration confining the use of the TaxHQ mark to the goods and services set forth in the registration of that mark and a determination of non-infringement in favor of plaintiff.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays:
13. That this court, pursuant to the power granted it under 15 U.S.C.A. Section 1118, order that all labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession of the defendant Big bearing the mark Big TaxHQ and all plates, molds, rnatrices and other means of making the same shall be delivered up and destroyed.
14. That this court enter a declaratory judgment with respect to the rights and legal relations of the parties, including the cancellation of the Big TaxHQ mark, a declaration restricting the use of defendant's TaxHQ mark to the goods and services set forth in the TaxHQ registration, and a determination of non-infringement with respect to plaintiff's use of the mark TaxHQ.
15. The costs of this action be awarded plaintiff.
16. That this Court grant such other and further relief as it shall deem just.
Dated July 6, 2007.
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