Tech Guru, LLC (Tech Guru) of Minneapolis which operates under the domain name TechGuruit.com, filed a federal lawsuit against Tech Guru Consultants, Inc. of New York (TGC) and its principal, Alexander Litz, which owns and operates under the domain name TechGuru.com for trademark infringement.
Here are the highlights:
“Plaintiff Tech Guru, LLC is a Minneapolis-based provider of information technology services. Since the company’s founding in early 2004, Tech Guru has used the trademark TECH GURU, and the company now offers its TECH GURU services to clients located in more than 8 states located primarily in the Midwest and western U.S.
In 2009, the U.S. Patent and Trademark Office (“PTO”) issued Tech Guru, LLC a registration on the Principal Register of Trademarks for the mark TECH GURU for use in connection with computer installation and repair services.
In early 2013, Tech Guru, LLC filed a second trademark application at the PTO to register the mark TECH GURU in connection with an expanded set of technology-related services, which application remains pending.
Defendants are New York City-based providers of information technology services who have adopted and are using the trademark TECHGURU in connection with the provision of services that overlap substantially with those of Tech Guru.
The Defendants’ activities appear to be provided primarily in the northeastern United States, and Defendants claim to have been using the TECHGURU trademark in connection with such services since about two years prior to the date on which Tech Guru began its use of the TECH GURU trademark.
In early 2014, Defendant Litz filed his own application at the PTO to register the trademark TECHGURU for use in connection with services essentially identical to those of Tech Guru, and days later, Litz instituted two proceedings at the PTO’s Trademark Trial and Appeal Board (“TTAB”): a proceeding to cancel Tech Guru’s 2009 registration for the mark TECH GURU, and a separate proceeding to oppose registration of Tech Guru’s 2013 application.
Litz’s opposition and cancellation proceedings allege that Tech Guru’s continued registration and use of the TECH GURU trademark are likely to cause confusion amongst consumers and to cause injury to him; those proceedings have been consolidated into a single proceeding, which remains pending and currently is in the discovery period.
Litz’s own trademark application to register the mark TECHGURU has been refused registration by the PTO on the basis that TECHGURU is confusingly similar to Tech Guru’s earlier-registered TECH GURU mark; that application remains pending, however, pending resolution of the instant dispute.
Meanwhile, Litz’s corporate entity, Defendant TGC, has attempted to enforce Litz’s alleged trademark rights in the mark TECHGURU by sending at least one cease-and-desist letter
to a third party making use of the trademark TECH GURU in connection with services similar to those being offered by Plaintiff Tech Guru. Litz also claims to be receiving “almost daily emails from [Plaintiff Tech Guru’s] clients,” in support of his allegations that Tech Guru’s supposedly wrongful registration and use of its TECH GURU trademark is causing consumer confusion.
Plaintiff Tech Guru thus brings this action for trademark infringement to enjoin Defendants’ continued use of the trademark TECHGURU or, in the alternative, to obtain a declaratory judgment so as to establish Plaintiff’s own continued right to use its registered trademark TECH GURU throughout the United States in connection with providing information- technology services.
By virtue of its 2009 federal trademark registration, Plaintiff enjoys a presumption that its TECH GURU trademark is valid and that Tech Guru is the owner of that trademark, and the federal registration itself constitutes prima facie evidence that Tech Guru possesses the exclusive right to use that trademark in the U.S. in connection with the services for which the mark was registered.
The Plaintiff is asking the that the Court enter an order:
A. Preliminarily and permanently enjoining and restraining the Defendants and Defendants’ directors, officers, agents, servants, employees, subsidiaries, affiliates, and all persons in active concert or participation with, through, or under Defendants:
From using in any way the trademarks TECHGURU or TECH GURU, or any other marks, words or names confusingly similar to Plaintiff’s mark, as the name or mark for any of Defendants’ services;
From committing any acts of unfair competition and from creating a false designation of origin or a false description or representation with respect to Plaintiff’s TECH GURU trademark;
From committing any acts of unfair competition by passing off or inducing or enabling others to sell or pass off services which are not Plaintiff’s services as being those of Plaintiff;
From using in any manner any Web pages or Web site, labels, signs, literature, advertising or other promotional materials, or any other items related to the Defendants’ goods or services that bear the words TECHGURU or TECH GURU in the mark or name, or any other mark, word, or name confusingly similar to Plaintiff’s trademark;
From making any statements on promotional materials or advertising for the Defendants’ goods or services that are false or misleading as to their source or origin; and;
From committing any acts of deceptive or unlawful trade practices calculated to cause members of the trade or purchasing public to believe that Defendants’ goods or services are the services of Plaintiff or sponsored by or associated with, or related to, or connected with, or in some way endorsed or promoted by Plaintiff under the supervision or control of Plaintiff.
Requiring that the Defendants change their corporate name and any DBAs or fictitious names and registrations for the same so that they do not contain the marks TECHGURU, TECH GURU, or any of Plaintiff’s other marks.
Requiring Defendants to account and pay over to Plaintiff all damages sustained by Plaintiff, Defendants’ profits, statutory damages, attorneys’ fees, and costs, and ordering that the amount of damages awarded Plaintiff be increased three times the amount thereof.
OR, in the alternative, Plaintiff requests that this Court issue an order:
Declaring that Plaintiff adopted, registered and is using the trademark TECH GURU in good faith;
Declaring that Plaintiff’s registration and use of the trademark TECH GURU does not infringe any trademark rights Defendants may possess in the trademark TECHGURU and that Plaintiff is free to use its trademark TECH GURU (and any mark substantially similar thereto) without restriction by said Defendants;
Declaring that Plaintiff’s registration and use of the trademark TECH GURU does not amount to unfair competition and that Plaintiff is free to use its trademark TECH GURU (and any mark substantially similar thereto) without restriction by said Defendants;
Awarding attorneys’ fees and costs incurred in this suit to be paid to Plaintiff by Defendants.
The lawsuit filed in the United States District Court of Minnesota on Friday and is case number 0:15-cv-01198-MJD-JJK