Time’s Up is the owner of the registered trademark DIGISPEC for “Computer accessories, namely, mouse pads and wrist rests” and sells its promotional mouse pad products through its website www.digispec.com.
Of course, despite eleven years of use, Time’s Up did not bother to seek federal registration of such marks until January 9, 2009, when Time’s Up filed four trademark registration applications with the U.S. Patent and Trademark Office for each of the two WYTOMP Marks for two classes of services (“online retail sales, catalog sales and wholesale distribution of mouse pads, counter mats, coasters, notepads, calendars, cups and containers” and “custom manufacturing of mouse pads, counter mats, coasters, notepads, calendars, cups and containers”) claiming first use as early as January 1998 (WHEN YOU THINK OF MOUSE PADS… DIGISPEC (class 35 and class 40) and WHEN YOU THINK OF MOUSE PADS... THINK OF DIGISPEC (class 35 and class 40)).
According to the complaint, around January 6, 2009, ActNow distributed a flyer via e-mail which advertised its own line of mouse pads and computer accessories (a copy of the flyer is attached to the complaint). Across the top of the e-flyer in large bold type is the heading “When You Think of Mouse Pads and Counter Mats.” The rest of the flyer shows a collage of the products sold by ActNow, including ActNow's own MOUSE MESSAGES mouse pads and MAT MESSAGES Counter Mats but also apparently Time’s Up's own DIGISPEC mouse pads.
Time’s Up maintains that ActNow’s title in its flyer is confusingly similar to its WYTOMP Marks, that ActNow is attempting to cause consumer confusion and to trade on the goodwill built up by Time’s Up in the WYTOMP Marks, and that ActNow’s use of this title is likely to cause consumers to wrongfully believe that ActNow is affiliated with Time’s Up or to cause “initial interest confusion” in order to entice consumers to read the advertisements by making consumers “initially” believe the advertisement is associated with Time’s Up
Time’s Up causes of action causes of action are for federal trademark infringement under 15 U.S.C. §1125(a) [mistakenly labeled 1125(c) in the complaint], federal unfair competition under 15 U.S.C. §1125(a), common law trademark infringement, and deceptive trade practices (passing off and false representation as to source) under Nevada law (N.R.S. § 598.0915). Time’s Up seeks injunctive relief as well as the usual claims for damages, costs, and attorney’s fees.