Michael I. Santucci, P.A. v. Lifelock, Inc.

Filing 1

COMPLAINT for Damages and Injunctive Relief and Demand for Jury Trial against Lifelock, Inc.. Filing fee $ 350.00 receipt number 113C-4483752, filed by Michael I. Santucci, P.A.. (Attachments: # 1 Civil Cover Sheet, # 2 Summon(s), # 3 Exhibit "A", # 4 Exhibit "B", # 5 Exhibit "C", # 6 Exhibit "D", # 7 Exhibit "E", # 8 Exhibit "F", # 9 Exhibit "G", # 10 Exhibit "H", # 11 Exhibit "I", # 12 Exhibit "J")(Santucci, Michael)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
CASE NO.: ___________________
MICHAEL I. SANTUCCI, P.A.
d/b/a “LIFELONG Legal Center,”
a Florida professional association,
Plaintiff,
v.
LIFELOCK, INC.,
a Delaware corporation,
Defendant.
_____________________________/
COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
AND DEMAND FOR JURY TRIAL
Plaintiff, MICHAEL I. SANTUCCI, P.A. d/b/a LIFELONG Legal Center, a Florida
professional association (hereinafter referred to as “Plaintiff”), as for its complaint against
Defendant, LIFELOCK, INC., a Delaware corporation (hereinafter referred to as “Defendant”)
for damages and injunctive relief, alleges as follows:
1.

This is an action for infringement of Plaintiff’s valuable service mark, for false

designation of origin, and for unfair competition.
2.

These Lanham Act and Florida statutory claims involve the willful trademark

infringement by a competitor of Plaintiff using nearly identical trademarks on and in connection
with services offered through identical means and to identical consumers.

SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, FL 33301 • Tel: [phone] • Fax: [phone]

PARTIES
3.

Plaintiff is a Florida professional association with its principal place of business at

200 South Andrews Avenue, Suite 100, Fort Lauderdale, Florida 33301. Plaintiff provides credit
consultation, credit repair, credit protection, debt, identity theft counseling and legal services.
4.

Upon information and belief, Defendant is a Delaware corporation with its

principal place of business at 60 East Rio Salado Parkway, Suite 400, Tempe, Arizona 85281,
and is a company providing identity theft and credit monitoring services.
JURISDICTION AND VENUE
5.

This Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C.

§§ 1331, 1338(a), in that this action arises under the federal Lanham Act/Trademark Act, 15
U.S.C. §1051 et seq., federal common law, and other federal law.
6.

This Court also has jurisdiction over this matter under 28 U.S.C. § 1332 in that

Plaintiff and Defendant are located in different states, and in that this is an action for damages
which exceed $75,000 exclusive of interest, attorneys’ fees and costs.
7.

This Court has personal jurisdiction over Defendant because Defendant maintains

a website with an internet domain name of www.lifelock.com that is accessible in, and partly
targeted toward the State of Florida and this judicial district, which website uses the infringing
mark to promote its services. Furthermore, Defendant offers its services in this judicial district
and has engaged in many of the complained of acts in this judicial district.
8.

Supplemental jurisdiction is proper for the state law claims under 28 U.S.C. §

1367(a) as the claims are so related to the federal claims that they form part of the same general
nucleus of facts, case, or controversy under Article III of the United States Constitution.

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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

9.

Venue is proper in the Southern District of Florida pursuant to 28 U.S.C. §§

1391(b) and (c) and 1400(a) because the effects of Defendant's actions have caused and will
cause Plaintiff damage in this judicial district, and many of the complained of acts occurred in
this judicial district.
FACTS
10.

This case involves Defendant’s continued willful infringement of Plaintiff’s

incontestable LIFELONG service mark used in connection with credit consultation, credit repair,
credit protection, debt, identity theft counseling and legal services, and foreclosure defense, by
Defendant’s use of its LIFELOCK marks in interstate commerce in connection with nearly
identical services.
11.

Plaintiff has used in commerce the service mark LIFELONG since at least as

early as September 1, 2002, to identify credit repair, credit protection, credit debt, and identity
theft counseling and legal services.
12.

On or about December 31, 2002, Plaintiff applied for registration of the mark

LIFELONG with the United States Patent and Trademark Office ("USPTO") on the Principal
Register. On March 16, 2004, Registration Number 2,822,613 directed to the mark LIFELONG
for credit consultation and debt counseling services, in International Class 036, issued (“Reg. No.
2,822,613”). A true and correct copy of the Certificate of Registration is attached hereto as
Exhibit "A".
13.

On March 16, 2010, Plaintiff filed its Combined Declaration of Use and

Incontestability under Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058, 1065 directed to
Plaintiff’s Reg. No. 2,822,613, which was accepted and acknowledged by the USPTO on March
30, 2010. A true and correct copy of the Notice of Acceptance and Acknowledgement of §§ 8 &
3
SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

15 Declaration is attached hereto as Exhibit "B". The registration has thereby become
incontestable under 15 U.S.C. § 1065, and can only be challenged or cancelled based on
abandonment or fraud on the USPTO.
14.

Plaintiff also owns Florida Trademark Registration No. T11000000160 for the

mark LIFELONG for credit consultation, debt, and identity theft counseling and legal services,
which issued on February 16th, 2011. A true and correct copy of Plaintiff’s Certificate of
Registration from the Florida Department of State is attached hereto as Exhibit “C.”
15.

Plaintiff has acquired common law trademark rights in the mark LIFELONG

LEGAL CENTER used in Florida and interstate commerce in connection with identify credit
consultation, credit repair, credit protection, debt, identity theft counseling and legal services,
and foreclosure defense.
16.

Since at least as early as 2002, Plaintiff has used Plaintiff’s Marks, which it has

prominently displayed in advertising and marketing of its services, including use of the marks on
business cards, client forms, handbills, brochures, internet advertisements, on its website
(www.lifelonglegal.com). The designs and logos used by Plaintiff in collection with Plaintiff’s
Marks include, without limitation, the following:

-and-

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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

17.

The marks set forth in Paragraphs 11, 14, 15, and 16 above are hereinafter

referred to, collectively, as “Plaintiff’s Marks”.
18.

Plaintiff’s Marks are part of a family of LIFELONG marks owned by a group of

family-owned companies, which includes LIFELONG owned by related company Lifelong
Family Healthcare, Inc. A true and correct copy of the Certificate of Registration No. 2,822,748
for the mark LIFELONG issued by the USPTO on March 16, 2004 for use in connection with
medical services is attached hereto as Exhibit “D.”
19.

As a result of Plaintiff offering, advertising, and promoting its services under the

mark LIFELONG in commerce throughout the United States, Plaintiff’s Marks have become a
distinctive indication of the origin and high level of quality of Plaintiff's services. Plaintiff is a
professional association performing and licensing legal services, credit protection and repair and
other services. Plaintiff’s Marks act as an indication of the source of these services and assure
consumers a high level of quality, appeal, and satisfaction with which Plaintiff’s services have
become synonymous. Examples of Plaintiff's use of its marks are attached as Composite Exhibit
"E" hereto.
20.

By using Plaintiff’s Marks for over a decade in the credit protection and repair

industry and the legal field in interstate and Florida commerce, Plaintiff has developed
significant and valuable goodwill in its marks within the industry and with the public.
21.

Defendant offers its identity theft and credit protection services under the

LIFELOCK mark within Florida and interstate commerce.
22.

Defendant is familiar with the services Plaintiff offers under its mark LIFELONG

and was put on actual notice of Plaintiff’s Marks and claims at least as early as January of 2012.

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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

23.

Plaintiff and Defendant are competitors in the credit protection industry which

includes identity theft protection services.
24.

Defendant has adopted and is using the mark LIFELOCK and variations thereof

which are confusingly similar to Plaintiff’s Marks, in connection with marketing of its services,
which consist of credit protection and identity theft, without Plaintiff’s authorization. True and
correct copies showing Defendant’s uses of marks confusingly similar to Plaintiff’s Marks are
attached as Composite Exhibit “F” hereto and are shown below:
LIFELOCK
-and-

-and-

-and-

-and-

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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

25.

On April 21, 2006, Defendant filed a service mark application with the USPTO

for the mark LIFELOCK TAKE CONTROL, claiming date of first use in commerce of May 1,
2005, which resulted in U.S. Reg. No. 3,232,956 for consultation in the field of data theft and
identity theft, in International Class 045. True and correct copies of Defendant’s Certificates of
Registration are attached hereto as Composite Exhibit "G".
26.

On November 10, 2006, Defendant filed a service mark application with the

USPTO for the mark LIFELOCK, claiming date of first use in commerce of May 1, 2005, which
resulted in U.S. Reg. No. 3,346,847 for providing consultation to third parties in the field of
prevention of data theft and identity theft, and prevention of unsolicited commercial electronic
mail, namely, removal from junk mail lists and offers for pre-approved credit, in International
Class 045. See Composite Exhibit “G.”
27.

On July 28, 2009, Defendant filed a service mark application with the USPTO for

the mark LIFELOCK IDENTITY ALERTS, claiming date of first use in commerce of
September 9, 2009, which resulted in U.S. Reg. No. 3,740,480 for fraud detection and prevention
services in the nature of arranging secure authentication of personal data in requests to open
banking, credit, credit card, insurance, loan, and other financial accounts; consultation in the
field of data theft and identity theft, in International Class 045. See Composite Exhibit “G.”

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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

28.

On June 10, 2008, Defendant filed a service mark application with the USPTO for

the mark MYLIFELOCK, claiming a date of first use in commerce of May 6, 2008, which
resulted in U.S. Reg. No. 3,646,012 for providing a website at which customers can manage
account information related to telecommunications services, in International Class 035. See
Composite Exhibit “G.”
29.

Defendant filed the following service mark applications with the USPTO based

on a declaration of bona fide intention to use the following marks in Interstate Commerce
(Printouts of USPTO’s TESS records of Defendant’s applications are attached hereto as
Composite Exhibit "H"):
a. LIFELOCK CREDIT SCORE MANAGER for use in connection with credit
score monitoring services (International
Class 035) and credit score tracking and
reporting services (International Class 036).
Serial No. 85/151,036 filed October 12,
2010;
b.

The following description of services
applies to marks (b)-(e) and mark in
Paragraph 29 below:

for use in connection with providing credit
reporting data maintained by others; credit
risk management and consultation services,
namely, assistance with restoring and
Serial No. 85/214,289
analyzing credit damaged by identity theft;
filed on Jan. 10, 2011
Tracking and reporting regarding consumer
credit reports and changes thereto, providing
c.
advice and consultation in the field of credit
reports and credit scores; fraud resolution
assistance, namely, assistance with restoring
credit damaged by identity theft; and
providing reimbursement of costs associated
with identity theft (International Class 036);
and fraud detection and prevention services
Serial No. 85/214,292
in the nature of arranging secure
filed on Jan. 10, 2011
authentication of personal data in requests to
open banking, credit, credit card, insurance,
8 loan, and other financial accounts; Fraud
and identity theft protection services;
monitoring the Internet, public records,
SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]
credit reports, private and public electronic
databases, and unregulated global computer
networks to facilitate the detection and

d.

open banking, credit, credit card, insurance,
loan, and other financial accounts; Fraud
and identity theft protection services;
monitoring the Internet, public records,
credit reports, private and public electronic
databases, and unregulated global computer
networks to facilitate the detection and
prevention of identity theft and fraud;
Serial No. 85/214,294
providing a secure interactive website
filed on Jan. 10, 2011
concerning notifications of potential fraud
and potential identity theft; resolution
e. POWERED BY LIFELOCK assistance, namely, providing advice and
Serial No. 85/259,629
consultation in the field of data theft and
filed on March 7, 2011
identity theft; consultation in the field of
data theft and identity theft (International
Class 045).
30.

Upon information and belief, Defendant has not begun to use such marks in

commerce, but have nonetheless declared, under penalty of perjury, that it has a bona fide
intention to use such marks in Interstate Commerce.
31.

On January 11, 2012, Defendant filed a service mark application with the USPTO

for the mark LIFELOCK ULTIMATE (Serial No. 85/514,352) for the services listed in
Paragraph 28(b)-(e) above. See Composite Exhibit “H.”
32.

The marks set forth in Paragraphs 23-29 above are hereinafter referred to,

collectively, as “Defendant’s Marks”.
33.

On January 4, 2012, Plaintiff sent Defendant a letter notifying Defendant of

Plaintiff’s rights in Plaintiff’s Marks and demanded that Defendant cease all use of the mark
LIFELOCK, or any variation thereof which is confusingly similar to Plaintiff’s Marks, in
connection with its services. A true and correct copy of the letter dated January 4, 2012, is
attached hereto as Exhibit "I".

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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

34.

Notwithstanding Plaintiff’s express refusal to consent to Defendant’s use of the

LIFELOCK marks, upon information and belief, Plaintiff continued use of marks confusingly
similar to Plaintiff’s Marks. Subsequently, Defendant filed the intent-to-use application for the
mark LIFELOCK ULTIMATE. See ¶ 31, above.
35.

By virtue of its use, registration and application, Plaintiff has the exclusive right

to use the LIFELONG mark in commerce in connection with credit consultation, credit repair,
credit protection, debt, identity theft counseling and legal services and entitles Plaintiff a
reasonable zone of expansion into the sale and licensing of related goods and services.
36.

Defendant adopted and commenced use of Defendant’s Marks long after Plaintiff

first used Plaintiff’s Marks mark in commerce, and after Plaintiff obtained a federal service mark
registration of its LIFELONG mark.
37.

Defendant had constructive knowledge of Plaintiff’s Marks based on the

LIFELONG registration as of the date of filing of Serial No. 76/489,705 on December 31, 2002.
38.

Plaintiff’s Marks are arbitrary when used in connection with credit consultation,

credit repair, credit protection, debt, identity theft counseling and legal services, and foreclosure
defense, and is therefore inherently distinctive and strong. Plaintiff’s marks are neither
suggestive nor descriptive of credit consultation, credit repair, credit protection, debt, identity
theft counseling or legal services.
39.

Plaintiff’s Marks are also a strong identification of source by virtue of their long

use and long-standing registrations.
40.

The marks LIFELONG and LIFELOCK are highly similar, both visually and

phonetically. The marks differ in writing only by the last two letters.

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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

41.

Plaintiff’s services and Defendant’s services are offered and provided to the same

consumers – customers in need of credit consultation, protection, repair and other services
related to identity theft protection and repair services.
42.

Upon information and belief, Defendant’s acts were done with the willful intent to

imitate the Plaintiff, misappropriate, misuse and palm off of the good will, distinctiveness,
reputation, and recognition Plaintiff enjoys in the industry by associating its LIFELOCK marks
with Plaintiff’s LIFELONG marks, to create confusion in the marketplace, and/or to dilute the
distinctive quality of Plaintiff’s Marks.
43.

On January 11, 2012, with actual knowledge of Plaintiff’s Marks and claims,

Defendant knowingly signed and submitted false declaration before the USPTO for service mark
application for the mark LIFELOCK ULTIMATE (Serial No. 85/514,352), stating that to the
best of its “knowledge and belief no other person, firm, corporation, or association has the right
to use the mark in commerce, either in the identical form thereof or in such near resemblance
thereto as to be likely ... to cause confusion, or to cause mistake, or to deceive . . . .” True and
correct copy of Defendant’s service mark application for LIFELOCK ULTIMATE (Serial No.
85/514,352) is attached hereto as Exhibit “J.”
44.

Because of the similarity between the marks used by Plaintiff and Defendant,

namely, LIFELONG and LIFELOCK, Defendant’s use of its LIFELOCK marks is likely to
confuse consumers into believing Defendant’s services originate from Plaintiff or into assuming
that Defendant is affiliated with or endorsed by Plaintiff.
45.

As a direct and proximate result of the Defendant’s prior acts complained of

herein, the Plaintiff has suffered great and irreparable harm and damage which continues each
day the Defendant’s acts complained of herein are permitted to continue.
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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

46.

Plaintiff has no adequate remedy at law relative to the continued and future harm

expected to be suffered for Defendant’s continued conduct.
47.

An order or judgment enjoining Defendant’s use of its marks which are

confusingly similar to Plaintiff’s Marks will serve the public good.
48.

The balance of the equities warrant an order or judgment Defendant’s use of its

marks which are confusingly similar to Plaintiff’s Marks.
49.

All prerequisites to filing suit have been satisfied, have occurred or have been

waived.
50.

As a direct and proximate result of the Defendant acts complained of herein,

Plaintiff has been forced to retain the undersigned firm, and has agreed to pay it a reasonable fee
for its services.
COUNT I
FEDERAL TRADEMARK INFRINGEMENT UNDER 15 U.S.C. § 1114
51.

Plaintiff adopts and incorporates Paragraphs 1-50 as if fully alleged herein.

52.

Plaintiff is the owner of the incontestable U.S. Trademark Registration No.

2,822,613 for the mark LIFELONG.
53.

Defendant is not authorized to use Plaintiff’s LIFELONG mark or any mark

confusingly similar or that in any way represents or implies that Defendant’s services are in any
way associated with Plaintiff.
54.

Defendant’s contemporaneous use of Defendant’s Marks for its services is likely

to confuse consumers into believing that the services offered by Defendant originate from, are
authorized by, or are somehow affiliated with Plaintiff.
55.

Defendant intentionally and knowingly infringes Plaintiff’s trademark rights.
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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

56.

Defendant’s infringing activities are likely to cause Plaintiff to lose control of its

hard-earned reputation, to damage Plaintiff’s reputation and goodwill among consumers, and to
divert profits and opportunities away from Plaintiff and to Defendant.
57.

Defendant is therefore infringing Plaintiff’s rights in violation of Section 32 of the

Lanham Act of 1946, 15 U.S.C. § 1114 and has caused damage to Plaintiff in an amount to be
determined at trial. Plaintiff is being irreparably harmed by the infringement and has no adequate
remedy at law.
COUNT II
FEDERAL UNFAIR COMPETITION UNDER 15 U.S.C. § 1125(a)
58.
59.

Plaintiff adopts and incorporates Paragraphs 1-50 as if fully alleged herein.
Plaintiff has been using Plaintiff’s Marks in conjunction with its services in

interstate commerce since at least as early as September 1, 2002 and has developed substantial
goodwill in these marks in Plaintiff’s common law territory, the entire United States, prior to
Defendant’s adoption and use of Defendant’s Marks in commerce.
60.

Defendant’s use of Defendant’s Marks in interstate commerce in competition with

Plaintiff is likely to cause mistake, and/or to deceive consumers as to an affiliation, connection,
or association of Defendant with Plaintiff, and/or as to the origin, sponsorship, and/or approval
of Defendant’s services or commercial activities by Plaintiff.
61.

Defendant is therefore engaged in unfair competition and false designation of

origin in violation of 15 U.S.C. § 1125(a) and has caused damage to Plaintiff in an amount to be
determined at trial. Plaintiff is being irreparably harmed by the infringement and has no adequate
remedy at law.

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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

COUNT III
FLORIDA STATE TRADEMARK INFRINGEMENT UNDER FLA. STAT. § 495.131
62.

Plaintiff adopts and incorporates Paragraphs 1-50 as if fully alleged herein.

63.

Defendant’s use of its marks described herein in the State of Florida infringe upon

Plaintiff’s mark which is the subject of Plaintiff’s Florida State Trademark Registration (Florida
Reg. No. T11000000160 [LIFELOCK]) in violation of Fla. Stat. § 495.131 et seq.
COUNT IV
FLORIDA COMMON LAW TRADEMARK INFRINGEMENT
64.

Plaintiff adopts and incorporates Paragraphs 1-50 as if fully alleged herein.

65.

Defendant's use of marks confusing similar to Plaintiff’s Mark in the State of

Florida in connection with Defendant’s services likely to cause confusion with Plaintiff’s Mark
in the State of Florida.
66.

By reason of the foregoing activities, Defendant has violated and infringed

Plaintiff’s rights in Plaintiff’s Mark and has otherwise competed unfairly with Plaintiff, in
violation of the common law of the State of Florida.
COUNT V
FLORIDA COMMON LAW UNFAIR COMPETITION
67.

Plaintiff adopts and incorporates Paragraphs 1-50 as if fully alleged herein.

68.

Defendant’s activities constitute unfair competition with Plaintiff by creating a

likelihood of confusion in the trade as to the source or sponsorship of the services or is likely to
lead the public to believe Plaintiff is in some way connected to Defendant and is likely to
mislead persons in the ordinary course of purchasing the services of Defendant and induce them
to believe they are purchasing genuine services of Plaintiff, thereby injuring that reputation and
goodwill and unjustly diverting from Plaintiff to Defendant the benefits arising therefrom.
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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

69.

Defendant’s unlawful activities constitute unfair competition and passing off as

proscribed by the common law and have caused Plaintiff to sustain monetary damage, loss and
injury in an amount to be determined at the time of trial.
70.

Plaintiff reserves the right to amend Count VI of its Complaint to seek punitive

damages from Defendant as permitted and authorized by Fla. Stat. § 768.72 after further
discovery.
71.

Defendant’s acts of unfair competition and misappropriation, unless enjoined by

this Court, will continue to cause Plaintiff to sustain irreparable damages, loss and injury, for
which Plaintiff has no adequate remedy at law.
COUNT VI
CANCELLATION OF U.S. TRADEMARK REGISTRATIONS AND
DISALLOWANCE OF PENDING APPLICATIONS FOR REGISTRATION
72.

Plaintiff adopts and incorporates Paragraphs 1-50 as if fully alleged herein.

73.

In light of the above described infringements and unfair competition, this Court

should exercise its authority to order the USPTO to cancel Defendant’s U.S. Trademark
Registration Nos. 3,232,956, 3,346,847, 3,780,480 and 3,646,012 in light of Plaintiff’s
incontestable, prior issued Registration No. 2,822,613, the mark for which Plaintiff is the senior
user.
74.

In light of the above described infringements and unfair competition, this Court

should exercise its authority to order the USPTO to disallow and issue final refusals of
Defendant’s applications for U.S. Trademark Registration, Application Serial Nos. 85/151,036,
85/214,289, 85/214,292, 85/214,294, 85/259,629, 85/514,352 in light of Plaintiff’s incontestable,
prior issued Registration No. 2,822,613 for which Plaintiff is the senior user.

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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

PRAYER FOR RELIEF
Plaintiff demands judgment against the Defendant, and any co-defendants subsequently
joined in this action, jointly and severally, as follows:
A.

A preliminary injunction effective during the pendency of this action, and an

order and judgment of this Court, effective permanently thereafter, restraining and enjoining
Defendant and its officers, agents, employees, licensees, affiliated and related business entities,
all others acting in concert with any of them from:
(i)

Using in any manner Plaintiff’s Marks or any variation thereof which is confusing
similar to Plaintiff’s Marks, including, without limitation, LIFELONG and
LIFELOCK, in the advertising, marketing, selling or providing of credit or identity
theft protection and repair, credit counseling, legal services or services which are
related to any of the above;

(ii)

Using in any manner any trademark, service mark, words, abbreviations, designs,
arrangements, or other combinations thereof that would imitate, resemble, or suggest
Plaintiff’s Marks;

(iii)

Otherwise infringing Plaintiff’s Marks;

(iv)

Unfairly competing with Plaintiff by copying or imitating Plaintiff’s Marks;

(v)

Implying, directly stating, or creating the impression that Defendant or its services
are affiliated, sponsored by or associated with Plaintiff or its services; and

(vi)

Assisting, inducing, contributing to, licensing or enabling any third party from
engaging in any of the above described conduct.

B.

An order requiring Defendant to publish for a period of not less than twelve

months corrective advertising in all media in which the confusingly similar marks have been
16
SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

published in the past five (5) years, stating to customers that Defendant and its LIFELOCK
Marks are not, and have never been affiliated with or endorsed by Michael I. Santucci, P.A.,
LIFELONG or LIFELONG Legal Center;
C.

An order directing the USPTO to cancel Defendant’s U.S. Registration No.

3,232,956;
D.

An order directing the USPTO to cancel Defendant’s U.S. Registration No.

3,346,847;
E.

An order directing the USPTO to cancel Defendant’s U.S. Registration No.

3,780,480;
F.

An order directing the USPTO to cancel Defendant’s U.S. Registration No.

3,646,012;
G.

An order directing the USPTO to disallow Defendant’s registration of the mark

which is the subject of U.S. Application Serial No. 85/151,036;
H.

An order directing the USPTO to disallow Defendant’s registration of the mark

which is the subject of U.S. Application Serial No. 85/214,289;
I.

An order directing the USPTO to disallow Defendant’s registration of the mark

which is the subject of U.S. Application Serial No. 85/214,292;
J.

An order directing the USPTO to disallow Defendant’s registration of the mark

which is the subject of U.S. Application Serial No. Serial No. 85/214,294;
K.

An order directing the USPTO to disallow Defendant’s registration of the mark

which is the subject of U.S. Application Serial No. Serial No. 85/259,629;
L.

An order directing the USPTO to disallow Defendant’s registration of the mark

which is the subject of U.S. Application Serial No. Serial No. 85/514,352;
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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

M.

An accounting by Defendant of its profits attributable to Defendant's wrongful

conduct, and a judgment against Defendant, in such amount, together with interest thereon as
provided by law;
N.

An enhancement of any award under Paragraphs B or C of this Prayer;

O.

An enhancement of any award under Paragraphs B or C of this Prayer, under

495.141(1), Fla. Stat., equal to three (3) times any award for damages and/or profits;
P.

Any and all damages suffered by Plaintiff resulting from Defendant’s wrongful

conduct, including, without limitation, compensatory, incidental, and consequential damages;
Q.

Any and all relief to which Plaintiff may be entitled pursuant to the Lanham Act,

15 U.S.C. §§ 1051 et seq., including treble damages and Plaintiff’s attorneys’ fees;
R.

An award of Plaintiff’s reasonable attorneys' fees as the prevailing party under §§

501.2105(1), 495.141(1), Fla. Stat., the Lanham Act and other applicable law;
S.

An award of full costs incurred by the Plaintiff herein;

T.

Such additional relief as the Court deems fair and just.
DEMAND FOR TRIAL BY JURY

Plaintiff demands trial by jury on all issues so triable as a matter of right.
DATED this 21st day of February, 2012.
Respectfully submitted,
SANTUCCI PRIORE, P.L.
Attorneys for the Plaintiff
200 South Andrews Avenue, Suite 100
Fort Lauderdale, Florida 33301
Tel: [phone]/Fax: [phone]
By: s/Michael I. Santucci/
Michael I. Santucci, Esq.
Florida Bar No. 0105260
[e-mail]
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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]

Exhibits:
Exhibit "A"

Plaintiff’s Certificate of Registration

Exhibit “B”

Notice of Acceptance and Acknowledgement of §§ 8 & 15
Declaration

Exhibit “C”

Plaintiff’s Florida Certificate of Registration

Exhibit “D”

Plaintiff’s related company’s Certificate of Registration No.
2,822,748 issued by the USPTO

Composite Exhibit "E"

Examples of Plaintiff's use of its marks

Composite Exhibit “F”

Examples of Defendant’s uses of marks confusingly similar to
Plaintiff’s Marks

Composite Exhibit “G”

Defendant’s Certificates of Registration

Composite Exhibit “H”

Printouts of USPTO’s TESS records of Defendant’s applications

Exhibit "I"

Plaintiff’s cease and desist letter to Defendant dated January 4, 2012

Exhibit "J"

Defendant’s service mark application for LIFELOCK ULTIMATE
(Serial No. 85/514,352)

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SANTUCCI PRIORE, P.L. • 200 S. Andrews Avenue, Suite 100 • Fort Lauderdale, Florida 33301 • Tel: [phone] • Fax: [phone]