Case 2:16-cv-00810-RGK-KS Document 1 Filed 02/04/16 Page 1 of 14 Page ID #:1

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MARTIN D. SINGER (BAR NO. 78166)

mdsinger@lavelysinger.com
LINDSAY D. MOLNAR (BAR NO. 275156)
lmolnar@lavelysinger.com
LAVELY & SINGER
PROFESSIONAL CORPORATION
2049 Century Park East, Suite 2400
Los Angeles, California 90067-2906
Telephone: (310) 556-3501
Facsimile: (310) 556-3615
Attorneys for Plaintiff
MARQUEE LAW GROUP, A.P.C.
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

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MARQUEE LAW GROUP, A.P.C., a )

California professional corporation, )
)
Plaintiff,
)
v.
)
)
MARQUEE LEGAL GROUP, INC., )
a California corporation, and JASON )
DUARTE, an individual, and DOES )
1 through 10, inclusive,
)
)
Defendants.
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)
)
)
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)
)
)
)

Case No.:
COMPLAINT FOR:
1. FEDERAL TRADEMARK
INFRINGEMENT (15 U.S.C.
1114);
2. FALSE DESIGNATION OF
ORIGIN (15 U.S.C. 1125(A));
3. UNFAIR COMPETITION (CAL.
BUS. & PRO. CODE 17200); AND
4. COMMON LAW TRADEMARK
INFRINGEMENT
DEMAND FOR JURY TRIAL

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COMPLAINT

Case 2:16-cv-00810-RGK-KS Document 1 Filed 02/04/16 Page 2 of 14 Page ID #:2

Plaintiff MARQUEE LAW GROUP, A.P.C. (Plaintiff), by and through its

undersigned counsel, for its complaint against Defendants MARQUEE LEGAL

GROUP, INC. and JASON DUARTE (collectively, Defendants), alleges as

follows:
NATURE OF THE ACTION

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1.

This is a classic and obvious case of blatant trademark infringement.

Indeed, on or around October of 2015, Plaintiff was shocked to have discovered that

it had been sued for, inter alia, fraud and breach of fiduciary duty by an entity that

it had never even heard of. Turns out, Plaintiff was accidently sued because of

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Defendants unlawful and unauthorized use of the mark MARQUEE LEGAL

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GROUP, which is strikingly (and confusingly) similar to Plaintiffs federally-

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registered trademark, MARQUEE LAW GROUP. Taking it one step further, and as

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if getting sued for fraud was not damaging enough to Plaintiff, Defendants own

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lawyer was confused by Defendants unauthorized use of the infringing mark and

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filed an answer and cross-complaint in the accidental lawsuit on behalf of Plaintiff,

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instead of his actual client, Defendant Marquee Legal Group. Indeed, this is only

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one of many instances of actual confusion.

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2.

As such, Plaintiff has filed this lawsuit for federal trademark

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infringement in violation of 15 U.S.C 1114(1)(a), false designation of origin under

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15 U.S.C. 1125(a), unfair competition in violation of California Business &

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Professions Code 17200 et seq., and common law trademark infringement to

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enjoin Defendants future infringement of its trademark and in an attempt to

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resurrect the good will and reputation it has worked so hard to establish in the legal

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community.
THE PARTIES

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3.

Plaintiff Marquee Law Group, A.P.C., is a professional law corporation,

organized and existing under the laws of the State of California, with its principal

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COMPLAINT

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place of business in the County of Los Angeles at 9100 Wilshire Boulevard, Suite

445, East Tower, Beverly Hills, California 90212.

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Plaintiff is informed and believes and based thereon alleges that

Defendant Marquee Legal Group, Inc. (MLG) is a California corporation

organized and existing under the laws of California, with its principal place of

business located at 501 W Broadway 8th Floor, San Diego, California 92109.

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Plaintiff is informed and believes and based thereon alleges that

Defendant Jason Duarte (Duarte) is an individual residing in Oceanside, California

and is the Chief Executive Officer of MLG.

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6.

Plaintiff is informed and believes, and on that basis alleges, that the true

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names and capacities, whether individual, corporate, partnership, associate, or

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otherwise of Defendants named herein as Does 1 through 10, inclusive, are not now

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known to Plaintiff, which therefore sues said Defendants, and each of them, by such

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fictitious names. Plaintiff is informed and believes, and on that basis alleges that

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each of the Defendants are in some manner legally responsible for the wrongful acts

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herein alleged. Plaintiff will amend this complaint to state the true names and

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capacities of those Defendants when the same have been ascertained.

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7.

Plaintiff is informed and believes and based thereon alleges that at all

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material times Defendants, and each of them, were the agents, employees, partners,

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joint venturers, co-conspirators, owners, principals, and employers of the remaining

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Defendants, and each of them, and are, and at all times herein mentioned were,

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acting within the course and scope of that agency, employment, partnership,

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conspiracy, ownership or joint venture. Plaintiff is informed and believes and based

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thereon alleges that each of the Defendants, including Duarte, authorized, directed

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and/or ratified the wrongful acts of the other Defendants and, consequently, all of

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said Defendants are jointly and severally liable to Plaintiff.

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8.

Plaintiff alleges on the basis of information and belief that Duarte and

MLG and Does 1 through 10 intermingled their assets and identities to such an
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COMPLAINT

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extent that they are alter egos of one another and/or that MLG is a mere shell by

which Duarte conducts business, and that MLG and Duarte are therefore one in the

same. Plaintiff further alleges on the basis of information and belief that each of the

Defendants failed to maintain identities separate and distinct from one another such

that the adherence to the function of the separate existence of each of those

Defendants would promote injustice and sanction fraud upon Plaintiff. Plaintiff is

further informed and believes and based thereon alleges that MLG was and is

completely owned, controlled, dominated, used, managed and operated by and on

behalf of one or more of the other Defendants and/or Does 1 through 10.
JURISDICTION

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9.

Jurisdiction over the parties and subject matter of this action is

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proper in this Court pursuant to 15 U.S.C. 1121 (actions arising under the Lanham

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Act), 28 U.S.C. 1331 (actions arising under the laws of the United States), and

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1338(a) (actions arising under an Act of Congress relating to trademarks).

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This Court has personal jurisdiction over Defendants because

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Defendants have conducted and, upon information and belief, continue to conduct,

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business in California and in this judicial district. Upon information and belief,

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Defendants have transacted and continue to transact business in the United States

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and in this judicial district by using or causing to be used, offering to sell or causing

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to be offered for sale and/or selling or causing to be sold directly, services in the

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legal field under a trademark that infringes Plaintiffs trademark with advertising

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and sales to customers in this judicial district, and Defendants will continue to do so

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unless enjoined by this Court.

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11.

This Court has supplemental jurisdiction over Plaintiffs claims arising

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under the laws of California pursuant to 28 U.S.C. 1367(a) because these claims

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are so related to Plaintiffs claims under federal law that they form part of the same

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case or controversy and derive from a common nucleus of operative fact.

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COMPLAINT

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VENUE

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Venue is proper in this Court pursuant to 28 U.S.C. 1391(b)(2)

because a substantial part of the events giving rise to Plaintiffs claims occurred

herein.
FACTS COMMON TO ALL CLAIMS

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A.

Plaintiff and Its Valuable Trademarked Brand for Legal Services.

13.

Plaintiff is a boutique law firm with an established reputation that does

business throughout the State of California, including, but not limited to, Los

Angeles County, as well as in numerous jurisdictions throughout the United States.

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On September 27, 2013, Plaintiff filed an application with the United

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States Patent & Trademark Office to register the trademark MARQUEE LAW

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GROUP in Class 045 for legal services. The mark was registered on May 27,

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2014 as Reg. No. 3,870,714 (referred to herein, and along with common law

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trademark rights, as the Marquee Mark). Attached hereto as Exhibit A is a true

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and correct copy of the U.S. Trademark registration for the Marquee Mark.
15.

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Plaintiff has continuously used the Marquee Mark in commerce to

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describe and advertise its legal services since at least as early as February of 2013,

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when it first coined the mark and incorporated it into its website, letterhead, business

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cards and other promotional materials. Since then, Plaintiff has used the Marquee

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Mark in connection with rendering its legal services, including on Plaintiff's website,

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www.marqueelaw.com.
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Prior to the events giving rise to this Complaint, and continuing to the

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present, Plaintiff has spent a great amount of time, money and effort in the extensive

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promotion and advertisement of the Marquee Mark.

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Through substantial financial investment and effort, the Marquee Mark

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has developed considerable good will and brand recognition.

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COMPLAINT

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B.

Defendants Blatant Infringement of the Marquee Mark.

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Notwithstanding the above, on information and belief, Defendants have

set upon a course of conduct to misappropriate Plaintiffs rights in the Marquee

Mark. Specifically, and without any authorization from Plaintiff, Defendants have

unilaterally adopted, used and continue to use the trademark MARQUEE LEGAL

GROUP (the Infringing Mark) in commerce to describe and advertise their

services in the legal field to clients and prospective clients locally and nationally,

including on Defendants website, www.marqueelegalgroup.com, which, upon

information and belief, was first registered by Defendants in August of 2015 (long

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after Plaintiff first adopted and registered the Marquee Mark). A true and correct

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copy of Defendants home page of their website using the Infringing Mark is

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attached hereto as Exhibit B.

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Defendants website states that MLG partners with lawyers and law

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firms nationwide and generates leads for mass tort litigation.

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offered and rendered by Defendants obviously relate with the legal services offered

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by Plaintiff, a law firm, and should Defendants continue to use the Infringing Mark,

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such concurrent use will cause confusion.

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These services

Plaintiff is informed and believes, and thereon alleges, that Defendants

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have deliberately and intentionally used and promoted the Infringing Mark for the

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purposes of taking advantage of Plaintiffs good name and reputation, as well as

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deceiving and confusing potential and existing clients of Plaintiff.

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Defendants use of the Infringing Mark in connection with services in

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the legal field is likely to cause confusion, or to cause mistake, or to deceive clients

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and prospective clients about the affiliation, connection, association, origin,

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sponsorship, or approval of Defendants services with those of Plaintiff.

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Indeed, Defendants unauthorized use of the Infringing Mark has already

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caused actual confusion and damages, including time, money and resources

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expended by Plaintiff to respond to a mistakenly filed lawsuit against it and Jason

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COMPLAINT

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Duarte instead of Marquee Legal Group and Duarte. Adding insult to injury,

Defendants own lawyer in that case failed to notice the mistake and filed an answer

to the complaint and a cross-complaint on behalf of Plaintiff (Marquee Law

Group), and not his actual client, Defendant Marquee Legal Group, Inc.

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On October 15, 2015, Plaintiff sent a cease and desist letter to

Defendants demanding that they cease and desist from promotion, advertising, offer

for sale and sale of services in the legal field under the Infringing Mark.

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Defendants did not respond to Plaintiffs cease and desist letter.

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Upon information and belief, Defendants continue to promote,

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advertise, offer for sale and sell legal services under the Infringing Mark.
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Defendants have acted with willful and intentional disregard of

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Plaintiffs trademark and Plaintiff has sustained substantial damages as a result

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thereof.

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FIRST CLAIM FOR RELIEF

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(Federal Trademark Infringement, 15 U.S.C. 1114)

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27.

Plaintiff incorporates by reference each and every allegation contained

in Paragraphs 1 through 26, inclusive, of this Complaint as if fully set forth herein.
28.

Plaintiffs Marquee Mark is distinctive, has been used throughout

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California and the United States, and is well known to the trade and members of the

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purchasing public. The public generally associates and identifies the Marquee Mark

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with Plaintiff.

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29.

Defendants have used and continue to use in commerce the Infringing

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Mark in connection with the promotion, advertisement, offer for sale and sale of

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services in the legal field which such use is likely to cause confusion, or to cause

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mistake, or to deceive.

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30.

The aforesaid conduct of Defendants is without the consent or

permission of Plaintiff.

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COMPLAINT

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31.

As a result of Defendants acts, Plaintiff has suffered and continues to

suffer monetary damages in an amount which cannot be accurately computed at this

time but will be proven at trial.

32.

Plaintiff is entitled to injunctive relief because the conduct of

Defendants has caused and will continue to cause Plaintiff irreparable harm for

which there is no adequate remedy at law.

33.

This case qualifies as an exceptional case within the meaning of 15

U.S.C. 1117(a) in that Defendants acts were malicious, fraudulent, deliberate,

willful, and taken in bad faith with full knowledge and in conscious disregard of

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Plaintiffs rights.

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34.

Plaintiff is entitled to recover treble damages under the Lanham Act.

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35.

Plaintiff is entitled to the disgorgement of Defendants profits under the

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Lanham Act.
36.

Plaintiff is entitled to recover its attorneys fees pursuant to 15 U.S.C.

1117(a).

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SECOND CLAIM FOR RELIEF

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(False Designation of Origin and False Advertising Under Section 43(a) of the

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Lanham Act, 15 U.S.C. 1125(a))

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37.

Plaintiff incorporates by reference each and every allegation contained

in Paragraphs 1 through 26, inclusive, of this Complaint as if fully set forth herein.
38.

Plaintiffs Marquee Mark is distinctive, has been used throughout

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California and the United States, and is well known to the trade and members of the

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purchasing public. The public generally associates and identifies the Marquee Mark

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with Plaintiff.

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Without Plaintiffs authorization, Defendants have used the Infringing

Mark to advertise and sell services in the legal field.

40.

Defendants advertisement, promotion, sale, offer for sale, and sale of

services in the legal field under the Infringing Mark constitutes false designation of
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COMPLAINT

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origin or sponsorship of said services and tends falsely to represent that said services

originate from Plaintiff or have been sponsored, approved, or licensed by Plaintiff or

is in some way affiliated or connected with Plaintiff. Such conduct of Defendants is

likely to confuse, mislead, and deceive Defendants customers, clients, and members

of the public as to the origin of said Infringing Mark or cause said persons to believe

that the Infringing Mark and/or Defendants have been sponsored, approved,

authorized, or licensed by Plaintiff or are in some way affiliated or connected with

Plaintiff, all in violation of 15 U.S.C. 1125(a).

41.

Defendants actions were done willfully with full knowledge of the

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falsity of such designations of origin and false descriptions or representations, and

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with the express intent to cause confusion, and to mislead and deceive the

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purchasing public.

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42.

Plaintiff has no adequate remedy at law.

Plaintiff is entitled to

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injunctive relief because the conduct of Defendants described above, has caused and,

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if not enjoined, will continue to cause irreparable damage to the rights of Plaintiff in

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its trademarks, and to the business, reputation, and goodwill of Plaintiff.

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43.

Plaintiff has been damaged by, and Defendants have profited from,

Defendants wrongful conduct in an amount to be proven at trial.

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44.

Plaintiff is entitled to recover treble damages under the Lanham Act.

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45.

Plaintiff is entitled to the disgorgement of Defendants profits under the

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Lanham Act.
46.

Plaintiff is entitled to recover its attorneys fees pursuant to 15 U.S.C.

1117(a).

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THIRD CLAIM FOR RELIEF

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(Unfair Competition, Cal. Bus. & Prof. Code 17200 et seq.)

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47.

Plaintiff incorporates by reference each and every allegation contained

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in Paragraphs 1 through 46, and 53 through 55, inclusive, of this Complaint as if

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fully set forth herein.

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COMPLAINT

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48.

Defendants have committed acts of unfair competition, proscribed by

Business and Professions Code 17200 et seq., including, but not limited to,

engaging in business practices that include, but are not limited to, misleading and

false advertising and infringement of the Marquee Mark, which is unlawful

pursuant to the Lanham Act. These actions constitute unlawful, unfair, or fraudulent

business acts or practices, and/or unfair, deceptive, untrue or misleading business

practices.
49.

Plaintiff states, upon information and belief and thereupon alleges, that

Defendants have intentionally appropriated the Marquee Mark with the intent of

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causing confusion, mistake, and deception as to the source of its services with the

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intent to palm off its services as those of Plaintiff and to place others in the position

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to palm off its services as those of Plaintiff, and as such, Defendants have

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committed unfair competition under the common law and unfair competition

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pursuant to California Business and Professions Code 17200 et seq.

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50.

As a result of Defendants actions, Plaintiff has been, and continues to

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be, damaged.

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51.

Plaintiff has no adequate remedy at law. The conduct of Defendants has

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caused and, if not enjoined, will continue to cause, Plaintiff irreparable harm and

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damage in its business, reputation, and good will.

52.

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By reason of such wrongful acts, Plaintiff is and was, and will be in the

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future, deprived of, among others, the profits and benefits of business relationships,

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agreements, and transactions with various existing clients and prospective and

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clients. Defendants have wrongfully obtained said profits and benefits. Plaintiff is

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entitled to remedies pursuant to Bus. & Prof. Code 17206, injunctive relief, and

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restitutionary damages in an amount to be proven at trial.

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COMPLAINT

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FOURTH CLAIM FOR RELIEF

(Common Law Trademark Infringement)

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53.

Plaintiff incorporates by reference each and every allegation contained

in Paragraphs 1 through 36, inclusive, of this Complaint as if fully set forth herein.
54.

As a direct and proximate result of Defendants unauthorized and

infringing use of the Infringing Mark, Defendants are likely to cause and have

caused confusion, mistake or deception as to the source of their legal services.

Plaintiff has been irreparably harmed and damaged in an amount to be ascertained.

This harm includes, without limitation, injury to Plaintiff's goodwill, reputation, and

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the strength, integrity, and value of its own mark.

55.

Plaintiff is informed and believes and on that basis alleges that the harm

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to Plaintiff resulting from the uses and activities of Defendants is irreparable,

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continuing, not fully compensable by monetary damages and, on information and

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belief, will continue unless Defendants are enjoined by the Court from continuing

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these activities.
PRAYER FOR RELIEF

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WHEREFORE, Plaintiff demands judgment against the Defendants, and each

of them, as follows:
1.

For preliminary and permanent injunctions restraining and enjoining

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Defendants, and each of them, their agents, servants, employees, successors,

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licensees, subsidiaries, transferees, representatives and assignees, and any persons in

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active concern or participation with any of them, from using or displaying the

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Marquee Mark or any confusingly similar marks, either alone or in combination with

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other words, phrases, or symbols, in any manner whatsoever. This includes, but is

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not limited to, immediately ceasing from any and all further use of the Infringing

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Mark in connection with Defendants services, Internet web sites, domain name,

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promotional materials and advertisements, corporate name and logos and ensuring

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that any and all of Defendants employees or representatives that are using this
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COMPLAINT

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designation on behalf of Defendants, with Defendants consent, express or implied,

or under some agreement with Defendants, cease such use;

2.

For preliminary and permanent injunctions restraining and enjoining

Defendants, and each of them, their agents, servants, employees, successors,

licensees, subsidiaries, transferees, representatives and assignees, and any persons in

active concern or participation with any of them, from doing or allowing any act or

thing calculated or likely to cause confusion or mistake in the minds of members of

the public or the trade, or prospective purchasers of Plaintiff's services, or likely to

deceive members of the public or the trade, or prospective purchasers, into believing

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that there is some association between Plaintiff's services and the services or

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Defendants;

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3.

That Defendants, their agents, servants, employees, representatives,

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successors, and assigns, and all persons, firms, or corporations in active concert or

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participation with said Defendants, be immediately and permanently enjoined from

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otherwise competing unfairly with Plaintiff in any manner;

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4.

That this Court adjudge that Defendants, by their unauthorized use of

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the Marquee Mark in connection with Defendants offer and provision of services

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in the legal field, including the promotion, marketing and sale of such services and

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other acts as it may have undertaken relating to said mark, has violated Plaintiff's

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rights under 15 U.S.C. 1125(a), under California state law, and under common

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law, and that Defendants have done so willfully and for the purpose of infringing

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and violating Plaintiff's rights;

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5.

For actual damages and trebling of those damages under 15 U.S.C.

1117;
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That Defendants account for and pay over to Plaintiff all damages

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sustained by Plaintiff and profits realized by Defendants by reason of Defendants

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unlawful acts herein alleged and that those profits be increased as provided by law;

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COMPLAINT

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7.

That this is an exceptional case pursuant to 15 U.S.C. 1117, because

of the willful and deliberate nature of Defendants acts of trademark infringement,

false designation of origin, and unfair competition;

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8.

That Plaintiff recover reasonable attorneys fees and costs in

accordance with 15 U.S.C. 1117;

9.

That Defendants, within thirty days after the service of the judgment

herein, be required to file with this Court and serve upon Plaintiffs attorneys, a

written report under oath setting forth in detail the manner in which they have

complied with the judgment;

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10.

Prejudgment and post-judgment interest; and

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That the Court grant Plaintiff such other and further relief as it deems

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just and equitable to make Plaintiff whole for the damage caused by Defendants.
Dated: February 4, 2016

LAVELY & SINGER

PROFESSIONAL CORPORATION
MARTIN D. SINGER
LINDSAY D. MOLNAR

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By: /s/ Lindsay D. Molnar______

LINDSAY D. MOLNAR
Attorneys for Plaintiff MARQUEE LAW
GROUP A.P.C.

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COMPLAINT

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JURY DEMAND

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Plaintiff Marquee Legal Group, A.P.C., respectfully requests a jury trial on all
issues triable set forth in this Complaint.
Dated: February 4, 2016

LAVELY & SINGER

PROFESSIONAL CORPORATION
MARTIN D. SINGER
LINDSAY D. MOLNAR

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By: /s/ Lindsay D. Molnar_____________

LINDSAY D. MOLNAR

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Attorneys for Plaintiff MARQUEE

LEGAL GROUP, A.P.C.

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COMPLAINT