Complaint Kathleen Hall v AOL-Huffington Post (with Exhibits)

7/31/2019 Complaint Kathleen Hall v AOL-Huffington Post (with Exhibits)

1/35

172274.1

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF GEORGIA

ATLANTA DIVISION

KATHLEEN HALL,

Plaintiff,

v.

AOL, INC. and

THEHUFFINGTONPOST.COM,

INC.

Defendants.

)

)

)

)

)

)

)

)

)

)

)

CIVIL ACTION NO.

______________________

VERIFIED COMPLAINT FOR PRELIMINARY INJUNCTION AND

OTHER RELIEF

Plaintiff Kathleen Hall (Hall or Plaintiff) respectfully files this Verified

Complaint for Preliminary Injunction and Other Relief against Defendants AOL,

Inc. (AOL) and TheHuffingtonPost.com, Inc. (Huffington) and alleges as

follows:

NATURE OF THE ACTION

1. This is an action for permanent injunctive relief and damages for

trademark infringement and false designation of origin, unfair competition, false

and misleading advertising, and deceptive trade practice.

Case 1:12-cv-02415-WSD Document 1 Filed 07/11/12 Page 1 of 14


2/35

2

2. Hall brings this action to prevent the continuing and irreparable harm

that she is suffering and will continue to suffer due to Defendants willful

infringement of Halls rights in the MINDFUL LIVING and MINDFUL

TRAVEL trademarks/service marks (the Marks).

THE PARTIES

3. Plaintiff Kathleen Hall is a resident of Clarkesville, Georgia who

owns the rights to the federally registered trademarks MINDFUL LIVING and

MINDFUL TRAVEL.

4. Defendant AOL is a corporation organized and existing under the

laws of the State of Delaware. AOL is registered to do business in the State of

Georgia and can be served with process by serving its registered agent,

Corporation Service Company, at 40 Technology Parkway South, Suite 300,

Norcross, Georgia 30092.

5. Upon information and belief, Defendant Huffington is a Delaware

corporation and is a wholly owned subsidiary of AOL. Huffington can be served

with process by serving its registered agent, Corporation Service Company, at

2711 Centerville Road, Suite 400, Wilmington, DE, 19808.



3/35

3

JURISDICTION AND VENUE

6. Jurisdiction for this action arises under the trademark laws of the

United States, also known as the Lanham Act, 15 U.S.C. 1051 et seq. Further,

this Court has supplemental jurisdiction over any Georgia law claims under 28

U.S.C. 1367.

7. Defendants are subject to the jurisdiction of this Court because they

regularly transact business in this state and they purposefully directed their

activities toward Georgia such that they should have reasonably expected to be

haled into court here.

8. Venue is proper in this district under 28 U.S.C. 1391(b) because a

substantial part of the events or omissions giving rise to the claims asserted here

occurred in this judicial district.

BACKGROUND AND FACTS

9. Hall filed for federal trademark registration of the MINDFUL

LIVING mark on April 1, 2008. It was successfully registered on August 8,

2009. See Exhibit A.

10. Hall filed for federal trademark registration of the MINDFUL

TRAVEL mark on May 5, 2010. It was successfully registered on August 16,

2011. See Exhibit B.



4/35

4

11. Hall maintains a trademark portfolio containing fifty-six (56) marks

before the United States Patent and Trademark Office that contain the word

MINDFUL, twenty-one (21) of which contain the words MINDFUL LIVING.

12. Hall has consistently used some of her MINDFUL marks since as

early as 2007.

13. Hall uses her MINDFUL LIVING and MINDFUL TRAVEL

trademarks, as well as her other numerous MINDFUL trademarks, in association

with various goods and services in the fields of spiritual growth, dating and

relationships, healing and wellness, and identifying, overcoming and avoiding

stress and destructive behavior. Many of these goods and services are offered over

the internet.

14. The Huffington Postis an American news website, content aggregator,

and blog. It has a worldwide reach and has been ranked the most powerful blog in

the world by The Observer, a London based publication. The Huffington Post

website is the result of a joint venture that is operated and controlled by Defendant

AOL and its subsidiary, Defendant Huffington. Alternatively, theHuffington Post

is operated by Huffington as agent on behalf of its principal, AOL.

15. Upon information and belief, at least as early as April, 2012,

Defendants launched a website using MINDFUL LIVING and infringing on Halls



5/35

5

exclusive rights of use and ownership in that mark. The site is accessible at

http://www.huffingtonpost.com/news/mindfulness/ and deal with healthy living

issues.

16. By correspondence dated April 25, 2012, attorneys for Hall informed

Defendants AOL and Huffington that their conduct infringed upon Halls rights to

exclusive use of the MINDFUL LIVING mark and requested that Defendants

remove that mark and all references to that mark from the Huffington Post website

and content. A true and correct copy of this correspondence is attached hereto as

Exhibit C.

17. On May 4, 2012 attorneys for Defendants acknowledged receipt of the

April 25, 2012 letter and stated that the Huffington Post was in the process of

rebranding and that the MINDFUL LIVING mark would be removed from the

website. A true and correct copy of this correspondence is attached hereto as

Exhibit D. In spite of these promises, theHuffington Postcontinues to utilize the

MINDFUL LIVING mark on its website. See Exhibit E (Huffington Post website

printout).

18. On June 19, 2012, Hall discovered that Defendants were also utilizing

Halls registered trademark MINDFUL TRAVEL on the Huffington Post



6/35

6

website, thereby further infringing upon Halls exclusive trademark rights. See

Exhibit F (Huffington Post website printout).COUNTS

Count I: Federal Trademark Infringement and False Designation of Origin

(15 U.S.C. 1125 and 1114)

19. Hall re-alleges and reincorporates each and every allegation made in

the paragraphs above as though fully set forth herein.

20. Hall has continuously owned the rights to the federally registered

MINDFUL LIVING trademark (Reg. No. 3674696) since 2009 and has

exclusively reserved the use of that mark for herself.

21. Hall has continuously owned the rights to the federally registered

MINDFUL TRAVEL trademark (Reg. No. 4013416) since 2011 and has

exclusively reserved the use of that mark for herself.

22. Hall has never granted Defendants the right to use either the

MINDFUL LIVING or the MINDFUL TRAVEL mark in any capacity.

23. Notwithstanding Halls rights to the Marks, Defendants began using

and has continued using the Marks in violation 15 U.S.C. 1125(a) and 1114

since at least as early as April 2012.



7/35

7

24. This continued use by Defendants is likely to cause confusion as to

source and affiliation among consumers with regard to Halls lawful use of the

Marks.

25. Unless enjoined, Defendants will continue their unlawful actions,

resulting in confusion and deception in trade and irreparable injury to Hall, for

which Hall has no adequate remedy at law.

WHEREFORE, Hall is entitled to preliminary and permanent injunctive

relief preventing the ongoing infringement of the Marks. In addition, Hall has

suffered damages in an amount the exact calculation of which requires discovery

from Defendants and perhaps third parties.

Count II: Common Law Trademark Infringement


the paragraphs above as if fully set forth herein.

27. Defendants conduct constitutes common law trademark infringement,

as their continued use is likely to cause confusion as to source and affiliation

among consumers with regard to Halls lawful use of the Marks.

28. Defendants conduct is willful, intentional, and indicates a complete

disregard for Halls rights without legal justification.



8/35

8

29. Hall informed Defendants of their unlawful use of the MINDFUL

LIVING mark in April 2012. Defendants have not ceased this unlawful use of

that mark, however.

30. Unless enjoined, Defendants will continue their unlawful actions

resulting in confusion and deception in trade and irreparable injury to Hall for

which she has no adequate remedy at law.


relief preventing the on-going infringement of the Marks. In addition, Hall has



Count III: Unfair Competition



32. Halls activities have built up goodwill symbolized by the Marks and

have created property of inestimable value to Hall.

33. Defendants, with the intent to profit at no expense to themselves, have

taken for their own benefit and misappropriated to their own use Halls Marks.

34. The foregoing conduct of Defendants constitutes unfair competition

under O.C.G.A. 23-2-55.



9/35

9

35. Unless enjoined, Defendants will continue their acts of unfair

competition, resulting in confusion and deception in trade and irreparable injury to

Hall, for which Hall has no adequate remedy at law.


relief preventing the unfair competition. In addition, Hall has suffered damages in

an amount the exact calculation of which requires discovery from Defendants and

perhaps third parties.

Count IV: False and Misleading Advertising



35. Section 43(a)(1)(B) of the Lanham Act, prohibits the use in commerce

of any word, term, name, symbol, or device, or any combination thereof, or any

false designation of origin, false or misleading description of fact, or false or

misleading representation of fact, which ... misrepresents the nature,

characteristics, qualities, or geographic origin of his or her or another persons

goods, services, or commercial activities .... 15 U.S.C. 1125(a)(1)(B).

36. Section 43(a) of the Lanham Act provides that any such person who

uses false or misleading advertising shall be liable in a civil action by any person



10/35

10

who believes that he or she is or is likely to be damaged by such act. 15 U.S.C.

1125(a).

37. The advertising associated with Defendants use and portrayal in

commerce of Halls federally registered Marks constitutes a misleading

representation of fact in that it is likely to lead consumers to believe the origin of

Huffingtons services is related or affiliated with Hall.

38. As a result of this false, deceptive and misleading advertising,

Defendants have interfered with the relationship and reputation Hall has worked to

create, and will continue to do so, thus causing Hall to suffer irreparable damages

to good will, business relationships, and revenue. Furthermore, Hall will continue

to suffer such irreparable damage in the future, unless Huffington is enjoined from

capitalizing upon this unlawful behavior.


relief preventing this false and misleading advertising. In addition, Hall has



Count V: Violation of Deceptive Trade Practices Act





11/35

11

40. Halls activities have built up goodwill symbolized by the Marks and

have created property of inestimable value to Hall.

41. Hall informed Defendants of their unlawful use of the MINDFUL

LIVING mark in April 2012. Defendants have not ceased this unlawful use of

that mark.

42. Defendants, with the intent to profit at no expense to themselves, have

taken for their own benefit and misappropriated to their own use Halls Marks.

43. The foregoing conduct of Defendants constitutes deceptive trade

practice under O.C.G.A. 10-1-372.

44. Unless enjoined, Defendants will continue its acts of unfair

competition, resulting in confusion and deception in trade and irreparable injury to

Hall, for which Hall has no adequate remedy at law.


relief preventing the unfair competition. In addition, Hall has suffered damages in

an amount the exact calculation of which requires discovery from Defendants and

perhaps third parties.

Count VI: Attorneys Fees





12/35

12

46. By engaging in the conduct set forth herein, Defendants have acted in

bad faith, they have been stubbornly litigious, and they have caused Hall undue

trouble and expense.

47. Accordingly, Hall is entitled to recover her expenses of litigation,

including attorneys fees, pursuant to O.C.G.A. 13-60-11.

PRAYER FOR RELIEF

WHEREFORE, Hall respectfully requests:

(a) That this Complaint be duly filed with the Court and served according

to law;

(b) An entry of judgment in her favor against Defendants on all Counts of

this Complaint;

(c) A preliminary and permanent injunction restraining Defendants, their

officers, agents and employees, and all persons acting in concert with

them, from further acts of trademark infringement associated with

Halls trademarks, from unfair competition with Hall, from engaging

in deceptive trade practices or false or misleading advertising, and

from further injuring Halls business reputation;

(d) A preliminary and permanent injunction restraining Defendants, their

officers, agents and employees, and all persons acting in concert with



13/35

13

them, from using the marks MINDFUL LIVING, MINDFUL

TRAVEL, or any other confusingly similar variant or trademark

owned by Hall;

(e) An accounting to Hall of Defendants profits from improper use of

Halls trademarks;

(f) That the Court order Defendants to pay Halls general, special, actual,

and statutory damages in accordance with the Lanham Act, the

Uniform Deceptive Trade Practices act, and other applicable law;

(g) Interest, costs and attorneys fees;

(h) Punitive damages to be determined by the Court;

(i) Termination of the website

http://www.huffingtonpost.com/news/mindfulness/ and any and all

other infringing uses of Halls trademarks; and

(j) Such other relief as the Court deems just and proper.

PLAINTIFF REQUESTS TRIAL BY JURY



14/35

14

Respectfully submitted this 11th day of July, 2012.

s/ Matthew B. Ames

Matthew B. Ames

Georgia Bar No. 015898

BALCH & BINGHAM LLP

30 Ivan Allen Jr. Blvd. N.W., Suite 700

Atlanta, GA 30308

Telephone: (404) 261-6020

Facsimile: (404) 261-3656

David R. Burkholder

Alabama Bar No. ASB-9419-D25B

Joseph D. Leavens

Alabama Bar No. ASB-3319-J66L

BALCH & BINGHAM LLP

Post Office Box 306

Birmingham, AL 35201-0306

Telephone: (205) 251-8100Facsimile: (205) 226-8799

ATTORNEYS FOR PLAINTIFF



15/35

Case 1:12-cv-02415-WSD Document 1-1 Filed 07/11/12 Page 1 of 21


16/35

Generated on 2012-07-06T14:59:08.377-04:00

Generated on: This page was generated by TSDR on 2012-07-06 14:59:08 EST

Mark: MINDFUL LIVING

US Serial

Number:77436573

Application

Filing Date:Apr. 01, 2008

US Registration

Number:3674696

Registration

Date:Aug. 25, 2009

Register: Supplemental

Mark Type: Service Mark

Date Amendedto Current

Register:

Jun. 24, 2009

Status:Registered. The registration date is used to determine when post-registration

maintenance documents are due.

Status Date: Aug. 25, 2009

Mark Information

Mark LiteralElements:

MINDFUL LIVING

Standard

Character Claim:

Yes. The mark consists of standard characters without claim to any particular

font style, size, or color.

Mark Drawing

Type:4 - STANDARD CHARACTER MARK

Related Properties Information

Claimed Ownershipof US Registrations:

3440450,3444965,3444966,and others

Goods and Services

Note:The following symbols indicate that the registrant/owner has amended the goods/services:

Brackets [..] indicate deleted goods/services;Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit ofincontestabilit ; and



17/35

Asterisks *..* identify additional (new) wording in the goods/services.

For:

Streaming audio and video over the Internet in the field of personal spiritual

growth, healing and wellness and identifying, overcoming and avoiding stress

and destructive behavior

International

Class:038 - Primary Class U.S Class: 100, 101, 104

Class Status: ACTIVE

Basis: 1(a)

First Use: Nov. 30, 2007 Use in Commerce: Nov. 30, 2007

For:

educational services and training, namely, conducting seminars, web seminars,

workshops and conferences featuring personal spiritual growth, healing and

wellness, and identifying, overcoming and avoiding stress and destructive

behavior; entertainment services, namely, ongoing programs broadcast over

television, cable, satellite and radio, all in the field of personal spiritual growth,

healing and wellness and identifying, overcoming and avoiding stress and

destructive behavior

International

Class:041 - Primary Class U.S Class: 100, 101, 107


Basis: 1(a)

First Use: Nov. 30, 2007 Use in Commerce: Nov. 30, 2007

Basis Information (Case Level)

Filed Use: No Currently Use: Yes Amended Use: No

Filed ITU: Yes Currently ITU: No Amended ITU: No

Filed 44D: No Currently 44D: No Amended 44D: No

Filed 44E: No Currently 44E: No Amended 44E: No

Filed 66A:No

Currently 66A:No

Filed No Basis: NoCurrently No

Basis:No

Current Owner(s) Information

Owner Name: Hall, Kathleen A.

495 Owls Nest Lane



18/35

Owner Address: Clarkesville, GEORGIA 30523

UNITED STATES

Legal Entity

Type:INDIVIDUAL Citizenship: UNITED STATES

Attorney/Correspondence Information

Attorney of Record

Attorney Name: Pamela Payne Smith

Correspondent

Correspondent

Name/Address:

PAMELA PAYNE SMITH

BALCH & BINGHAM LLP

1901 SIXTH AVENUE NORTH

BIRMINGHAM, AL 35203

UNITED STATES

Phone 205-226-3404 Fax 205-488-5891

Domestic Representative - Not Found

Prosecution History

Date DescriptionProceeding

Number

Aug. 25, 2009 REGISTERED-SUPPLEMENTAL REGISTER

Jul. 23, 2009 LAW OFFICE PUBLICATION REVIEW COMPLETED 76539

Jul. 23, 2009 ASSIGNED TO LIE 76539

Jul. 15, 2009APPROVED FOR REGISTRATION SUPPLEMENTAL

REGISTER

Jul. 15, 2009 USE AMENDMENT ACCEPTED 82417

Jun. 24, 2009 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Jun. 24, 2009 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Jun. 24, 2009 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Jun. 24, 2009 AMENDMENT TO USE PROCESSING COMPLETE 88889

Jun. 24, 2009 USE AMENDMENT FILED 88889

Jun. 23, 2009 TEAS AMENDMENT OF USE RECEIVED

Jan. 08, 2009 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Jan. 08, 2009 NON-FINAL ACTION E-MAILED 6325



19/35

Jan. 08, 2009 NON-FINAL ACTION WRITTEN 82417

Nov. 13, 2008 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Nov. 12, 2008 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Nov. 12, 2008 TEAS RESPONSE TO OFFICE ACTION RECEIVED

May 21, 2008 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

May 21, 2008 NON-FINAL ACTION E-MAILED 6325

May 21, 2008 NON-FINAL ACTION WRITTEN 82417

May 09, 2008 ASSIGNED TO EXAMINER 82417

Apr. 04, 2008 NEW APPLICATION ENTERED IN TRAM

TM Staff and Location Information

Current Location:PUBLICATION AND ISSUE

SECTIONDate in Location: Aug. 25, 2009



20/35



21/35

Generated on 2012-07-06T15:03:04.196-04:00

Generated on: This page was generated by TSDR on 2012-07-06 15:03:04 EST

Mark: MINDFUL TRAVEL

US Serial

Number:85030482

Application

Filing Date:May 05, 2010

US Registration

Number:4013416

Registration

Date:Aug. 16, 2011

Register: Principal

Mark Type: Service Mark

Status: Registered. The registration date is used to determine when post-registrationmaintenance documents are due.

Status Date: Aug. 16, 2011

Publication

Date:Oct. 26, 2010

Mark Information

Mark Literal

Elements:MINDFUL TRAVEL

Standard

Character Claim:

Yes. The mark consists of standard characters without claim to any particular

font style, size, or color.

Mark Drawing

Type:4 - STANDARD CHARACTER MARK

Disclaimer: "TRAVEL"

Goods and Services

Note:The following symbols indicate that the registrant/owner has amended the goods/services:

Brackets [..] indicate deleted goods/services;Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit ofincontestability; andAsterisks *..* identify additional (new) wording in the goods/services.

Educational services and training, namely, conducting seminars, web seminars,

retreats, workshops and conferences in the fields of dating and relationships,

healing and wellness, and identifying, overcoming and avoiding stress and



22/35

For:

destructive behavior; and, entertainment services, namely, ongoing programs

broadcast over television, cable, satellite and radio and audio and video

streaming over a global computer network and being transmitted, broadcast, or

streamed to media devices, all in the field of personal spiritual growth, dating

and relationships, healing and wellness and identifying, overcoming and

avoiding stress and destructive behavior

International

Class: 041 - Primary Class U.S Class: 100, 101, 107


Basis: 1(a)

First Use: Oct. 06, 2010 Use in Commerce: Oct. 06, 2010

Basis Information (Case Level)

Filed Use: No Currently Use: Yes Amended Use: No

Filed ITU: Yes Currently ITU: No Amended ITU: No

Filed 44D: No Currently 44D: No Amended 44D: No

Filed 44E: No Currently 44E: No Amended 44E: No

Filed 66A: No Currently 66A: No

Filed No Basis: NoCurrently No

Basis:No

Current Owner(s) Information

Owner Name: Hall, Kathleen A.

Owner Address:

495 Owls Nest Lane

Clarkesville, GEORGIA 30523

UNITED STATES

Legal Entity

Type:INDIVIDUAL Citizenship: UNITED STATES

Attorney/Correspondence Information

Attorney of Record

Attorney Name: Pamela Payne Smith

Correspondent

PAMELA PAYNE SMITH

BALCH & BINGHAM LLP



23/35

Correspondent

Name/Address:1901 6TH AVE N STE 1500

BIRMINGHAM, AL 35203-4642

UNITED STATES

Phone 205-226-3404 Fax 205-488-5891

Domestic Representative - Not Found

Prosecution History

Date DescriptionProceeding

Number

Aug. 16, 2011 REGISTERED-PRINCIPAL REGISTER

Jul. 12, 2011NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-

MAILED

Jul. 11, 2011 LAW OFFICE REGISTRATION REVIEW COMPLETED 77976

Jul. 01, 2011 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED

Jun. 27, 2011 STATEMENT OF USE PROCESSING COMPLETE 76873

Jun. 21, 2011 USE AMENDMENT FILED 76873

Jun. 27, 2011 CASE ASSIGNED TO INTENT TO USE PARALEGAL 76873

Jun. 21, 2011 TEAS STATEMENT OF USE RECEIVED

Dec. 21, 2010 NOA E-MAILED - SOU REQUIRED FROM APPLICANT

Oct. 26, 2010 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

Oct. 26, 2010 PUBLISHED FOR OPPOSITION

Sep. 20, 2010 LAW OFFICE PUBLICATION REVIEW COMPLETED 77976

Sep. 20, 2010 APPROVED FOR PUB - PRINCIPAL REGISTER

Sep. 20, 2010 EXAMINER'S AMENDMENT ENTERED 88888

Sep. 20, 2010NOTIFICATION OF EXAMINERS AMENDMENT E-

MAILED6328

Sep. 20, 2010 EXAMINERS AMENDMENT E-MAILED 6328

Sep. 20, 2010 EXAMINERS AMENDMENT -WRITTEN 76081

Aug. 14, 2010COMBINED EXAMINER'S AMENDMENT/PRIORITY

ACTION ENTERED77976

Aug. 13, 2010 ASSIGNED TO LIE 77976

Aug. 13, 2010NOTIFICATION OF EXAMINER'S

6326



24/35


25/35



26/35



27/35



28/35



29/35



30/35



31/35



32/35



33/35



34/35



35/35


Documents

Complaint Kathleen Hall v AOL-Huffington Post (with Exhibits)