Papillon v. Shymatta

Filing 1

COMPLAINT. Filing fee received: $350.00, receipt number PHX 0970-5232013, filed by Michael Papillon (submitted by John Titus). (Attachments: # 1 Exhibit, # 2 Civil Cover Sheet)(REK) (Entered: 04/27/2011)

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John D. Titus (#012912)
HARTMAN TITUS PLC
7114 E. Stetson Drive, Suite 205
Scottsdale, AZ 85251-3250
Phone: [phone]
Fax: [phone]
Email: [e-mail]

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Attorneys for Plaintiff

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IN THE UNITED STATES DISTRICT COURT

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FOR THE DISTRICT OF ARIZONA

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MICHAEL PAPILLON d/b/a THE
CELL PHONE JUNKIE,

No.

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Plaintiff,

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COMPLAINT FOR
DECLARATORY JUDGMENT

vs.
DAVID SHYMATTA, d/b/a CELL
JUNKIE

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Defendant.

(NON INFRINGEMENT OF
TRADEMARK, NON-DILUTION OF
TRADEMARK AND TRADEMARK
ABANDONMENT)

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For his Complaint against Defendant David Shymatta, Plaintiff Michael Papillon

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avers as follows:

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PARTIES AND JURISDICTION
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Plaintiff Michael Papillon (Plaintiff) is a citizen of the State of Arizona residing in

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Maricopa County at 4216 E. Desert Marigold Drive, Cave Creek, Arizona 85331.

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On information and belief, Defendant David Shymatta (Defendant) is a citizen of the

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State of Idaho, having an address at 210 Hwy 30, E Box 38, Inkom (Bannock County) Idaho

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83245.

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28 U.S.C. §§ 1331 and 1338(a). This complaint requests a declaratory judgment of non-

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This Court has subject matter jurisdiction in this case under 15 U.S.C. § 1121 and

infringement under the Lanham Federal Trademark Act, 15 U.S.C. §§ 1051 et seq., and the

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Federal Trademark Dilution Act, 15 U.S.C. § 1125(c). Jurisdiction for declaratory judgment

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is conferred pursuant to 28 U.S.C. § 2201(a).

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This court has in personam jurisdiction over the parties. Plaintiff is a citizen of

Arizona. On information and belief, Defendant owns and operates a retail store under the

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trade name CELL JUNKIE, which, according to Defendant, has sold tens of thousands of

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products in the United States and abroad, some of which, on information and belief were

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sold into Arizona.

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<www.celljunkie.com>, which is hosted by GoDaddy.com in Phoenix, Arizona and, on

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Defendant owns and operates a fully interactive web site

information and belief, sells products into Arizona. Defendant also has purposefully availed

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himself of the laws of the State of Arizona by sending a demand letter to Plaintiff in

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Arizona, by filing a lawsuit in the State of Idaho and effecting personal service on Plaintiff

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by hand delivery in Maricopa County, Arizona.

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GENERAL ALLEGATIONS

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Plaintiff Papillon publishes a blog titled THE CELL PHONE JUNKIE, which

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operates from a website having the URL <www.cellphonejunkie.com>. Plaintiff’s blog is a

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free service that provides reviews of cell phones, cell phone accessories, and provides

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podcasts regarding cell phones. Plaintiff’s website offers a “premium” podcast for direct

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download to electronic devices, such as a personal computer or iPod, for a small fee, the

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proceeds of which are dedicated entirely to website maintenance.

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On information and belief, Defendant Shymatta sells cell phone products and

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accessories under the trade name “Cell Junkie.” Defendant currently maintains a website

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having the URL <www.celljunkie.com>. For at least some period of time, Symatta also sold

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through the online retailer eBay.com. Defendant is the owner of a federal registration for the

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mark CELL JUNKIE, registration number 3,351,212, registered on December 11, 2007 for

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“retail store services featuring cell phone accessories.” (The ‘212 Registration).

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that Plaintiff cease and desist using the name THE CELL PHONE JUNKIE in connection

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On or about February 25, 2010, Defendant sent a demand letter to Plaintiff demanding

with his blog. Defendant further demanded an accounting of Plaintiff’s sales and profits. A

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true and correct copy of the demand letter is attached hereto as Exhibit A.

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discovered that: (1) the only specimen Defendant had submitted in support of his federal

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Shortly after receiving the demand letter, Plaintiff conducted an on-line search and

trademark registration was an eBay store page; (2) the eBay store page was no longer valid;

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(3) the address listed for the federal registration was no longer valid; and (4) there were no

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business listings for CELL JUNKIE in the Inkom Idaho area (the purported location of

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Defendant’s business). A copy of the eBay page indicating the CELL JUNKIE store did not

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exist is attached hereto as Exhibit B.

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petition with the United States Trademark Office to cancel Defendant’s registration for

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In view of the foregoing information, on or about March 11, 2010, Plaintiff filed a

CELL JUNKIE. The grounds alleged in the petition were that Defendant had apparently

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abandoned the trademark altogether, or at least in Interstate Commerce.

The Petition for

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Cancellation was accepted by the United States Trademark Office Trademark Trial and

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Appeal Board (TTAB) and was designated Cancellation Proceeding No. 92052188. A true

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and correct copy of the Petition for Cancellation is attached hereto as Exhibit C.

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Defendant answered the petition for Cancellation denying abandonment and

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submitting evidence of use, all of which is dated after April of 2010, which is after the

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Petition for Cancellation was instituted. A true and correct copy of the Answer to the

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Petition for Cancellation is attached hereto as Exhibit D.

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On information and belief, as of May 27, 2010 the web site <www.celljunkie.com>

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had been “parked” by GoDaddy since March 6, 2007 until at least November 28, 2009 (the

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closest date archived by the internet archives “wayback machine.” (A screen shot of the

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information obtained from the internet archives “wayback machine” is attached hereto as

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Exhibit E)

On information and belief, Defendant only began to use the website after he

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became aware of the Cancellation action.

Such use is not sufficient to overcome a

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presumption of abandonment.

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his mark THE CELL PHONE JUNKIE for the services consisting of “Entertainment

On or about February 27, 2010, Plaintiff also filed an application for registration of

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services, namely, providing a radio program in the field of Comment and criticism on

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cellular equipment, cellular providers, and cellular accessories via a global computer

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network; Entertainment services, namely, providing an on-going radio program in the field

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of Comment and criticism on cellular equipment, cellular providers, and cellular accessories;

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On-line journals, namely, blogs featuring Comment and criticism on cellular equipment,

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cellular providers, and cellular accessories.”

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Plaintiff’s application was designated

Application No. 77946630 (the ‘630 Application).

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The ‘630 Application was duly examined, approved, and was published by the United

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States Trademark Office on July 27, 2010 despite Defendant’s prior registration. On this

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basis Plaintiff concludes that the United States Trademark Office does not believe there is a

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likelihood of confusion between the ‘630 Application and the ‘212 Registration. A true and

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correct copy of the Trademark Application and Registration Retrieval (TARR) data for the

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‘630 Application is attached hereto as Exhibit F.

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differences with Defendant by means of a “walk away” agreement in which Plaintiff would

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On or about June 1, 2010, through his attorney, Plaintiff offered to resolve his

dismiss the Cancellation proceeding and Defendant would agree not to oppose Plaintiff’s

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Application. Defendant admits that his own attorney recommended this course of action to

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him. (See Exhibit G)

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Notice of Opposition pro se against the ‘630 Application on the grounds of likelihood of

On or about November 11, 2010 after discharging his attorney, Defendant filed a

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confusion and dilution. The Notice of Opposition was designated Opposition Proceeding

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No. 91197681. A true and correct copy of the Notice of Opposition is attached hereto as

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Exhibit G.

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On or about November 15, Defendant also filed a complaint pro se in the District of

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Idaho (Case No. 4:10-CV-00565-BLW) alleging causes of action against Plaintiff for (1)

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federal trademark infringement under the Lanham Act, 15 U.S.C. § 1114; (2) false

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advertising, unfair competition, infringement, false designation of origin, and passing off; (3)

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direct and contributory common law trademark infringement; (4) direct and contributory

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common law unfair competition. A true and correct copy of the Complaint (less exhibits) is

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attached hereto as Exhibit H.

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On April 21, 2011 the Idaho district court dismissed Defendant’s complaint for lack

on in personam jurisdiction over Plaintiff. A true and correct copy of the memorandum and

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order dismissing Case No. 4:10-CV-00565-BLW is attached hereto as Exhibit I.

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lawsuits by Defendant in Idaho or other jurisdictions that may have the requisite minimum

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Plaintiff has a real and immediate apprehension that he will be subject to further

contacts necessary to hale him to such other jurisdiction.

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This is a case of actual controversy because Plaintiff must now choose between

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abandoning his legitimate use of THE CELL PHONE JUNKIE (and the goodwill the name

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has engendered over the years) or face the prospect of yet another lawsuit by Defendant in

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another jurisdiction, with the possibility of damages accumulating in the interim.

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Opposition proceedings now pending before the TTAB (an administrative court) are stayed

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This is also a case of actual controversy because the pending Cancellation and

pending resolution of the infringement and abandonment allegations by an Article III Court.

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A judgment from this court declaring Plaintiff’s rights in the mark THE CELL

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PHONE JUNKIE will serve a useful purpose in (a) clarifying and settling the legal rights of

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Plaintiff and Defendant vis-à-vis their respective marks and (2) terminating and affording

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relief from the uncertainty, insecurity, and controversy giving rise to this proceeding.

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COUNT ONE
Non-Infringement of Federal Trademark - 15 U.S.C. §1114

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Plaintiff incorporates herein the preceding averments.

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There is no likelihood of confusion between Plaintiff’s mark THE CELL PHONE

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JUNKIE used in connection with Plaintiff’s blog and other services on the one hand and

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Defendants mark CELL JUNKIE used for retail store services on the other hand as alleged

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by Defendant in (Case No. 4:10-CV-00565-BLW).

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Additionally, because Plaintiff’s blog THE CELL PHONE JUNKIE is in the nature of

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a literary work, the title of which consumers expect to be descriptive of the content, Plaintiff

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has a Constitutional right under the First Amendment to use the title THE CELL PHONE

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JUNKIE irrespective of any trademark rights Defendant may have in the mark CELL

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JUNKIE.

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PHONE JUNKIE and his demands for treble damages and other relief have caused and are

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Defendant’s demand that Plaintiff cease and desist using the mark THE CELL

likely to cause injury to Plaintiff unless there is a determination regarding the rights and legal

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restrictions concerning Plaintiff’s use of the mark THE CELL PHONE JUNKIE.

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likely to interfere with Plaintiff’s use of the mark THE CELL PHONE JUNKIE unless there

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Defendant has damaged or is likely to damage Plaintiff’s business reputation and/or is

is a determination regarding the rights and legal restrictions concerning Plaintiff’s use of the

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mark THE CELL PHONE JUNKIE.

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By reason of the foregoing, a declaration of the rights and legal restrictions

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concerning Plaintiff’s use of the mark THE CELL PHONE JUNKIE, is both necessary and

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proper.

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COUNT TWO
Non-Dilution of Trademark - 15 U.S.C. §1125(c)

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Plaintiff incorporates herein the preceding averments.

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Defendant’s Mark is not widely recognized by the general consuming public of the

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United States as a designating Defendant as the source of the “Cell Junkie” retail store

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services.

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geographic reach necessary to render the mark “famous” within the meaning of § 43(c).

Defendant’s Mark has not been advertized with the necessary duration, extent and

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PHONE JUNKIE and his demands for treble damages and other relief have caused and are

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Defendant’s demand that Plaintiff cease and desist using the mark THE CELL

likely to cause injury to Plaintiff unless there is a determination regarding the rights and legal

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restrictions concerning Plaintiff’s use of the mark THE CELL PHONE JUNKIE.

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By reason of the foregoing, a declaration regarding the fame, or lack thereof, of

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Defendants mark CELL JUNKIE is both necessary and proper.

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COUNT THREE
Non-Violation of Lanham Act §43(a) – 15 U.S.C. § 1125(a)

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Plaintiff incorporates herein the preceding averments.

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Use by Plaintiff of the mark THE CELL PHONE JUNKIE for his blog and other

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services does not constitute False Advertising, Unfair Competition, Infringement, False

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Designation of Origin or Passing off as alleged by Defendant in (Case No. 4:10-CV-00565-

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BLW)

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Defendant’s demand that Plaintiff cease and desist using the mark THE CELL

PHONE JUNKIE and his demands for treble damages and other relief have caused and are

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likely to cause injury to Plaintiff unless there is a determination regarding the rights and legal
restrictions concerning Plaintiff’s use of the mark THE CELL PHONE JUNKIE.

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concerning Plaintiff’s use of the mark THE CELL PHONE JUNKIE, is both necessary and

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By reason of the foregoing, a declaration of the rights and legal restrictions

proper.

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COUNT FOUR
Non-Infringement of Common Law Trademark

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Plaintiff incorporates herein the preceding averments.

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Use by Plaintiff of the mark THE CELL PHONE JUNKIE for his blog and other

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services does not constitute direct or contributory common law trademark infringement as

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alleged by Defendant in (Case No. 4:10-CV-00565-BLW).

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Defendant’s demand that Plaintiff cease and desist using the mark THE CELL

PHONE JUNKIE and his demands for treble damages and other relief have caused and are

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likely to cause injury to Plaintiff unless there is a determination regarding the rights and legal

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restrictions concerning Plaintiff’s use of the mark THE CELL PHONE JUNKIE.

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By reason of the foregoing, a declaration of the rights and legal restrictions

concerning Plaintiff’s use of the mark THE CELL PHONE JUNKIE, is both necessary and

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proper.
COUNT FIVE
No Direct or Contributory Unfair Competition

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Plaintiff incorporates herein the preceding averments.

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services does not constitute direct or contributory common law unfair competition as alleged

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Use by Plaintiff of the mark THE CELL PHONE JUNKIE for his blog and other

by Defendant in (Case No. 4:10-CV-00565-BLW).

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Defendant’s demand that Plaintiff cease and desist using the mark THE CELL

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PHONE JUNKIE and his demands for treble damages and other relief have caused and are

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likely to cause injury to Plaintiff unless there is a determination regarding the rights and legal

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restrictions concerning Plaintiff’s use of the mark THE CELL PHONE JUNKIE.

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Defendant has damaged or is likely to damage Plaintiff’s business reputation and/or is

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likely to interfere with Plaintiff’s use of the mark THE CELL PHONE JUNKIE unless there

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is a determination regarding the rights and legal restrictions concerning Plaintiff’s use of the

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mark THE CELL PHONE JUNKIE.

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By reason of the foregoing, a declaration of the rights and legal restrictions

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concerning Plaintiff’s use of the mark THE CELL PHONE JUNKIE, is both necessary and
proper.

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COUNT SIX
Abandonment of Federal Trademark

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Plaintiff incorporates herein the preceding averments.

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Plaintiff abandoned his trademark CELL JUNKIE inter alia by abandoning his eBay

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store and failing to operate a retail store from the web site <www.celljunkie.com>.

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cancellation petition did Defendant “scramble” to begin using his website to sell products.

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On information and belief, only after receiving notice that Plaintiff had filed a

Use of a mark ‘solely to preserve’ trademark rights constitutes sham use, which

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cannot be used to rebut a presumption of abandonment.

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legally abandoned as of the filing date of the petition for Cancellation is both necessary and

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By reason of the foregoing, a declaration that Defendant’s mark CELL JUNKIE was

proper.

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WHEREFORE Plaintiff requests that judgment be entered in his favor and against Defendant

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as follows:

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A.

Declaring that there is no likelihood of confusion between the mark THE CELL

PHONE JUNKIE and CELL JUNKIE for their respective services and that use by Plaintiff of

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the mark THE CELL PHONE JUNKIE does not violate any law against trademark

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infringement, unfair competition, false advertising, false designation of origin, dilution or other

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legal right of Defendant;

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B.

Declaring that CELL JUNKIE is not a famous mark under the Federal

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Trademark Dilution Act;
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Directing the United States Patent and Trademark Office to enter judgment in

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favor of Plaintiff in Opposition 91197681 directing the Office forthwith to register the ‘630

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Application on the Principal Register;

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D.

Directing the United States Patent and Trademark Office to enter judgment in

favor of Plaintiff in Cancellation 92052188, directing the Office forthwith to cancel the ‘212
Registration;

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E.

Awarding Plaintiff his costs and reasonable attorneys’ fees incurred in connection

with this action; and
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Awarding Plaintiff such other and further relief as this Court deems just and

proper.

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DATED this 27th day of April, 2011.
HARTMAN TITUS PLC

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By:

s/john d. titus
John D. Titus
7114 E. Stetson Drive, Suite 205
Scottsdale, Arizona 85251-3250
Attorneys for Plaintiff

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