highbrow exhibit 5

8/18/2019 Highbrow Exhibit 5

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EXHI IT

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ttorneys at Law

Erik M

Pelton•

John

C.

Heinbockel ' '

Benjamin D. Pelton** '

of

counsel

March 16, 2016

111 Park Place

Falls Church VA 22046

T: 703 525 8009

F: 703 525 8089

SENT VIA FEDEX

Monika Blunder

c/o Wall Group/LA

518 North La Cienega Blvd.

Los Angeles, CA 90048

AND VIA CERTIFIED MAIL TO

cc: Monika Blunder

16868 Adlon Rd.

Encino, CA 91436

cc: Zoe Brenneke

9601 Charleville Blvd., Apt. 4

Beverly Hills, CA 90212

cc Zoe Brenneke

11710 SW Summerville Ave.

Portland, OR 97219

*NJ DC Bar

**NY Bar

VA DC NY Bar

erikpelton.com

cc: Whois Privacy Protection Service, Inc.

PO

Box6 9

Kirkland, WA 98083

cc: Name.com Inc. Hosting

414 14th Street; 200

Denver, Colorado 80202

AND VIA EMAIL TO

[email protected]

[email protected]

[email protected]

[email protected]

FOR SETTLEMENT PURPOSES ONLY - F.R.E. 408

Erik M Pelton

Associates PLLC

RE: Unauthorized use o

HIGHBROW

trademark and highbrow.com domain name

Dear Monika Blunder and Zoe Brenneke:

Experience

is

our trademark

Trademark is our experience ®

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This law firm has been retained by Tara Taghizadeh, fowiding editor and publisher of Highbrow

Magazine®, in regard to the Highbrow trademark infringement matter. Ms. Taghizadeh's prior

attorney sent you two letters, but no response was received. We write to make a final effort to

notify you regarding the seriousness of this matter before both parties incur the costs

of

litigation.

Under the Lanham Act, federal law grants the owner

of

a trademark the exclusive right to use

that mark and to prevent use by others of trademarks that are likely to cause consumer confusion

with their trademark. Ownership

of

a federal trademark registration, such as that owned by Ms.

Taghizadeh, provides additional benefits, including conferring nationwide rights of priority on its

owners and providing constructive notice to all about the rights in the mark and its ownership.

The Lanham Act also gives the owner

of

a registered tr dem rk the right to sue, to seek an

injunction, to collect attorney fees,

nd

to collect treble damages

or

statutory damages

of

up to $150,000.

In the Fourth Circuit, the test for trademark infringement is whether there is a 'likelihood of

confusion' based on a number of factors:

1

the strength or distinctiveness of the plaintiff's mark

as actually used in the marketplace; (2) the similarity of the two marks to consumers; (3) the

similarity of the goods or services that the marks identify; (4) the similarity of the facilities used

by the markholders; (5) the similarity of advertising used by the markholders; 6) the defendant's ·

intent; (7) actual confusion; (8) the quality of the defendant's product; and (9) the sophistication

of

the consuming public.

George

Co.,

LLC

v.

Imagination Entm t Ltd.

575 F.3d 383, 393 (4th

Cir. 2009). The factors in other circuits are similar across the United States as well.

As described in the prior letters, Highbrow Magazine® is a general-interest online magazine

covering news, politics, media, arts artd entertainment, food, and travel. Highbrow Magazine®

was founded in 2011 by Tara Taghizadeh, a veteran reporter and writer, with the goal of

featuring thought-provoking, intelligent writing with an edge. Ms. Taghizadeh's investments in

the Highbrow Magazine® brand have included obtaining Trademark Registration No. 4,050,814

from the U.S. Patent and Trademark Office for HIGHBROW MAGAZINE® for use in

connection with Providing on-line magazines in the field of general interest, namely, arts,

entertainment, news and politics. See attached registration certificate. For more infom1ation

about Highbrow Magazine®, see http://www.highbrowmagazine.com. As a result of these

investments in the Highbrow Magazine® brand name, Ms. Taghizadeh must protect her mark

and prevent consumer confusion.

Highbrow.corn's use

of

the Highbrow name is nearly identical to Ms. Taghizadeh's

HIGHBROW MAGAZINE® trademark for overlapping and related services. The term

HIGHBROW is the dominant element

of

the HIGHBROW MAGAZINE® trademark, and the

presence of generic information such as a top-level domain (.corn) or the word Magazine do

not distinguish the brands. Ms. Taghizadeh has used the HIGHBROW MAGAZINE® trademark

since 2011, while Highbrow.corn appears to have only been launched in November 2015. Ms.

Taghizadeh and Highbrow Magazine® have clear priority of use of the Highbrow name. Given

that Ms. Taghizadeh' s services and your services arc both on-line publishing, there can be little

doubt that a likelihood of confusion exists under the law.

Letter to Highbrow.com Monika Blunder nd Zoe Brenneke

2

erikpelton corn

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Highbrow.corn s continued use o the Highbrow name for on-line publications is very likely to

cause conswner confusion and could damage Mr. Taghizadeh and Highbrow Magazine s

reputation and goodwill. Moreover, Highbrow.corn s use o the Highbrow name could weaken

the trademark rights o

Ms. Taghizadeh and Highbrow Magazine® and violates the Lanham Act

protections against trademark infringement and unfair competition. n addition, your registration

and use o the highbrow.com domain name may also constitute violation o the Anti-

Cybersquatting Act (ACPA), which provides for statutory damages o

up to $100,000

per

domain name separate from the damages available for trademark infringement.

As a result

of

the foregoing, we therefore insist that Highbrow com immediately cease using

the Highbrow name and remove all references to Highbrow from your on-line

publications.

In particular, Ms. Taghizadeh demands that, no later than

April 15, 2016,

Highbrow.com:

• cease all current and future use o the Highbrow name;

• transfer to Ms. Taghizadeh ovmership o all domain names and social media accounts

related to the Highbrow name;

• destroy any printed materials or other references to Highbrow.corn s Highbrow name;

and

• confirm n writing your agreement to these terms.

Trademark infringement is a serious matter. Continued failure to respond to Ms. Taghizadeh s

inquiries may reflect on your intent and the strength o your defenses should this matter go to

court.

Ms Taghizadeh has instructed us to file the attached lawsuit for trademark

infringement in Federal court in the event that

w

do not receive a favorable response from

you in the next two weeks.

f

you respond promptly to confirm your intent to comply with these demands and undertake

reasonable precautions to avoid confusion, Ms. Taghizadeh and Highbrow Magazine® will be

willing to cooperate with you to ease the transition.

f

not, Ms. Taghizadeh will consider taking

any necessary legal steps to protect her consumers from confusion and protect the goodwill and

reputation o Highbrow Magazine®. Note that Ms Taghizadeh does not wish to prevent you from

continuing your venture to Explore the lives o ntriguing influencers through the lens

o

beauty but merely to end the trademark infringement and confasion resulting from your use

o

the Highbrow name.

Note that we have also sent this letter to your domain registrar and Web hosting company, which

means that they may be liable for contributory infringement for any continuing trademark

infringement subsequent to receipt o this notice.

f you wish to discuss this letter or any alternative proposals, please contact me directly or

through your attorney. I can be reached by email at [email protected] or

by

phone at (703)

525-8009.

Nothing contained in or omitted from this Jetter shall be used to prejudice the rights and remedies

o Highbrow Magazine® or Tara Taghizadeh, all such rights hereby expressly reserved.

Letter to Highbrow.com Monika Blunder and Zoe Brenneke

3

enkpelton om

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Erik

M

Pelton

Attorney

at

Law

ERIK

M

PELTON ASSOCIATES PLLC®

cc: Tara Taghizadeh

Enclosures

USPTO Trademark Reg. No. 4 050 814

Complaint

Letter

to

Highbrow

com

-

Monika

lunder and

Zoe Brenneke

enkpelt n com

4

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HIGH ROW MAGAZINE

Reg. No. 4,050,814

Registered

Nov.

1, 2011

Int. Cl.: 41

SERVICE MARK

PRl:'


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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

ALEXANDRIA DIVISION

TARA TAGHIZADEH

Plaintiff

v

MONIKA BLUNDER

AND

ZOE BRENNEKE

d/b/a/ HIGHBROW

Defendants.

COMPLAINT

Civil Action

No:

Plaintiff Tara

Taghizadeh (hereinafter, Plaintiff ),

by

and

through

its undersigned counsel,

for

its

Complaint

against Defendants Monika

Blunder

and

Zoe

Brenneke, d/b/a Highbrow.com

(hereinafter,

Defendants )

alleges

the

following.

NATURE OF THE ACTION

1 This is an action for federal trademark infringement under

15

U.S.C. § 1114(1);

trademark

infringement,

unfair

competition, and false designation

of

origin

under 15

U.S.C.

§

l 125(a); trademark infringement under Va. Code Ann. § 59.1-92.12; common law trademark

infringement

and

unfair competition; and violation of

the

Anticybersquatting

Consumer

Protection

Act under

15

U.S.C.

§

l 125(d).

THE PARTIES

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2

Plaintiff is an individual with an office and principal place of business at 9430

Lakeside Drive, Vienna, Virginia, United States 22182. Plaint iff is the sole owner

of

Highbrow

Magazine, an online publication.

3 Upon information and belief, Defendant Blunder is an individual with a principal

place

of

business c/o Wall Group/LA, 518 North

La

Cienega Blvd., Los Angeles,

CA

90048.

4 Upon information and belief, Defendant Brenneke is an individual doing business

with Defendant Blunder.

5

Upon information and belief, Defendant Brenneke's principal place

of

business is

9601 Charleville Blvd., Beverly Hills,

CA 90212.

6 Upon information and belief, Defendants are general partners in

HIGHBROW.com, an online publication.

JURISDICTION ND VENUE

7 This action arises under the trademark laws

of the

United States,

15

U.S.C. § 1051

et seq. and involves federal trademark rights and federal Lanham Act violations. Federal

question jurisdiction

is

conferred pursuant to

15

U. S.C. § 1121 (actions arising under the Federal

Trademark Act) and 28 U.S.C. §§ 1331, 1332, and 1338 (acts

of

Congress relating to trademarks

and unfair competition). The amount in question herein exceeds 75,000. Venue is proper in this

District pursuant

to

28 U.S.C. §§ 139l b) and (c).

8

Supplemental jurisdiction of the claims involving the Defendants' trademark

infringement under Va. Code Ann. § 59.1 et seq., common law trademark infringement and

unfair competition is conferred pursuant to 28 U.S.C. § 1367(a) because Plaintiff's state law and

common law claims are so related

to

federal claims within the Court's original jurisdiction that

they form part

of

the same case

or

controversy under Article III

of

the Constitution

of

the United

States.

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9 This Court has personal jurisdiction over the Defendants because the Defendants

transact business in Virginia supply services within Virginia engage in a persistent course of

conduct in Virginia and expect or should reasonably expect their acts to have legal

consequences in Virginia

10. Venue

is

proper

in

the United States District Court for the Eastern District of

Virginia pursuant to 28 U.S.C. § 1391 in that a substantial part of he events giving rise to the

claims occurred in this District a substantial part of he property that is the subject of this action

is situated in this district and the Defendants expect or reasonably should expect their acts to

have legal consequences in this district.

PLAINTIFF S

VALUABLE

RIGHTS

11. Plaintiffhas been in the business of conducting an online magazine publication

and website

in

the fields ofgeneral interest namely arts entertainment news and politics since

2011. Plaintiff has been using the marl< HIGHBROW MAGAZINE in connection with its online

magazine services since 2011. Plaintiff has been using the logo below in connection with

Plaintiffs

online magazine services since 2011.

12. Plaintiffs online magazine features articles bylines and contributions from

numerous authors.

13

Plaintiffs

online magazine features online advertisements.

14. Since 2011 Plaintiff has expended substantial amounts of ime effort and money

in developing advertising and promoting its services under its HIGHBROW MAGAZINE®

name and logo.

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15.

Plaintiff is the owner of U.S. Trademark Registration No. 4,050,814, registered in

the United States Patent and Trademark Office ( US PTO ) for the mark

HIGHBROW

MAGAZINE®

for use in connection with Providing on-line magazines in the field

of

general

interest, namely, arts, entertainment, news and politics . The federal

USPTO

registration is valid

and subsisting. (Ex. A.)

16.

Beginning at least as early

as

August of 2011, Plaintiff created and began to use a

website located at


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letter, Defendants did not respond to Plaintiff and continued to use the infringing Mark in direct

competition with Plaintiff.

22.

y

a letter dated December 30, 2015, sent via certified mail, Plaintiff again

provided written notice of Plaintiff's rights to the HIGHBROW MAGAZINE® mark and

demanded that Defendants immediately cease and desist from any use of the Infringing Mark, as

well as Internet domains and social media associated with the Infringing Mark. (Ex. F. .

Defendants once again did not respond to Plaintiff and continued to use the infringing Mark in

direct competition with Plaintiff.

COUNT ONE:

INFRINGEMENT OF FEDERAL TRADEMARK REGISTRATION NO. 4 050 814

23. Plaintiff hereby realleges and incorporates by reference the allegations of

paragraphs 1 through 22 of this Complaint as if fully set forth herein.

24. This cause of action arises under the trademark laws of the United States, 15

U.S.C. § 1114.

25. Notwithstanding Plaintiff's well-established prior federal and common law rights

in the HIGHBROWN MAGAZINE® mark, Defendants have infringed Plaintiff's mark in

interstate commerce in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114 by various

acts, including but not limited to, the publication, promotion, and sale of advertising of an online

publication under the name HIGHBROW of a type virtually identical to the type of online

publication offered

by

Plaintiff, and the registration and use of the domain name


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27. Defendants use

of

the Infringing ark in connection with online publications has

been made notwithstanding Plaintiff s prior established rights in the trademark HIGHBROW

MAGAZINE® and with both actual and constructive notice of Plaintiff s federal registration

rights under 5 U.S.C. § 1072.

28. Defendants adoption and use

of

the Infringing Mark has caused documented

instances

of

confusion, mistake, or deception as to source, association, affiliation or sponsorship

of

its goods and services.

29. Defendants continued use of the Infringing ark is likely to cause further

confusion, mistake or deception as to source, association, affiliation or sponsorship

of

its goods

and services. Specifically, customers in the United States who encounter Defendants goods and

services are likely to mistakenly believe that such goods and services emanate from, are related

to or are otherwise authorized, sponsored or endorsed by Plaintiff.

30. Upon information and belief, Defendant s infringing activities have caused and,

unless enjoined by this Court, will continue to cause, irreparable injury and other damage to

Plaintiff s business, reputation, and goodwill in its federally registered HIGHBROW

MAGAZINE® trademark, for which Plaintiff has no adequate remedy at law.

COUNT TWO:

FALSE DESIGNATION OF ORIGIN ND UNFAIR COMPETITION

UNDER 15 U.S.C. § 1125 A)

31. Plaintiff realleges and incorporates by reference

the

allegations of Paragraphs 1

through 30

of

this Complaint as

if

fully set forth herein.


U.S.C. § 1125(a).

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33. Defendants have adopted and are now using in interstate commerce colorable

imitations of Plaintiff s HIGHBROW MAGAZINE® mark for services that are substantially

similar,

if

not identical, to those offered

y

Plaintiff.

34. Defendants use of colorable imitations of Plaintiff s mark in connection with

directly competing services has caused and will cause consumers and potential customers to be

confused or deceived as to the affiliation, connection, or association of Defendants with Plaintiff.


directly competing services has caused and will cause consumers and potential customers to

mistakenly attribute Plaintiff s reputation and the properties and reputation of Plaintiff s services

with those of the Defendants.



confused or deceived as to the origin, sponsorship, or approval of Defendants service and

commercial activities y

Plaintiff.

37. Defendants use of the Infringing Mark in connection with its services constitutes

false designation of origin and unfair competition, in violation of Section 43(

a

of the Lanham

Act, 15 U.S.C. § 1125(a).

38. Upon information and belief, Defendants wrongful activities have caused, and

unless enjoined y this Court will continue to cause, irreparable injury and other damage to

Plaintiff s business, reputation, and goodwill in its HIGHBROW MAGAZINE® mark, for which

it has no adequate remedy at law.

COUNT THREE

VIOLATION OF THE ANTICYBERSQUATING CONSUMER PROTECTION ACT

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39. Plaintiff realleges and incorporates

by

reference the allegations

of

paragraphs 1

through 38

of

this Complaint as if fully set forth herein.


U.S.C. § l 125(d).

41. Defendants'


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47. Upon information and belief, Defendants have used and are using the


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55 Defendants use of colorable imitations of Plaintiff s mark in connection with


confused or deceived as to the affiliation, connection, or association of Defendants with Plaintiff.

56 Defendants use of colorable imitations of Plaintiff s mark in connection with

directly competing services has caused and will cause consumers and potential customers to

mistakenly attribute Plaintiff s reputation and the properties and reputation of Plaintiff s services

with those of the Defendants.

57

Defendants use of colorable imitations

of

Plaintiff s mark in connection with


confused or deceived as to the origin, sponsorship, or approval of Defendants service and

commercial activities

by

Plaintiff.

58 Defendants use of the Infringing Mark in connection with its services constitutes

false designation of origin and unfair competition, in violation of the laws of the Commonwealth

of

Virginia,

Va

Code Ann § 59.1-92.12.

59

Upon information and belief, Defendants wrongful activities have caused, and

unless enjoined

by

the this Court will continue to cause, irreparable injury and other damage to

Plaintiff s business, reputation, and goodwill in its HIGHBROW MAGAZINE® mark, for which

it has no adequate remedy at law.

COUNT FIVE

UNFAIR COMPETITION

60. Plaintiff realleges and incorporates

by

reference the allegations

of

paragraphs 1

through 59 of this Complaint as if fully set forth herein.

61. This cause of action arises under common law.

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62. Defendants aforementioned conduct constitutes unfair competition under the

laws of the Commonwealth of Virginia.

63. Defendants acts are likely to cause and/or have caused confusion, mistake, and/or

deception among consumers, potential consumers, the trade, and the public.

64. Upon information and belief, Defendants wrongful and deceptive activities have

caused, and unless enjoined by this Court will continue to cause, irreparable injury and other

damage to Plaintiff s business, reputation, and goodwill in its HIGHBROW MAGAZINE®

trademark for which Plaintiff has no adequate remedy at law.

PR YER FOR RELIEF

65. WHEREFORE, Plaintiff requests relief from the Court as follows:

a) enter judgment in favor

of

Plaintiff and against the Defendants.

b) that each Defendant and its agents, officers, sales representatives, servants,

employees, associates, attorneys, successors and assigns, and any and all persons or

entities acting by, through, under or in active concert or in participation with any or all

of

them, be enjoined preliminarily and permanently by Order of this Court from doing,

abiding, causing or abetting any

of

the following:

1. directly or indirectly infringing Plaintiff s HIGHBROW

MAGAZINE® mark;

11

from passing off, inducing or enabling others to sell or pass off,

any of Defendants goods or services as originating from Plaintiff, or sponsored,

approved, or authorized by Plaintiff;

111 using the infringing domain name,


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1v directly or indirectly engaging in any acts or activities calculated to

trade upon Plaintiff s HIGHBROW MAGAZINE® mark, and/or the reputation or

good will

o

Plaintiff, or in any manner to complete with Plaintiff unfairly;

v using the HIGHBROW name or the HIGHBROW MAGAZINE®

mark in the sale, offer for sale, promotion, advertising, marketing and/or

distribution o Defendants services, or any mark which is a variant of, simulates,

or is a colorable imitation of, or imitates Plaintiff s HIGHBROW MAGAZINE®

mark, in a manner that is likely to deceive, falsely describe or misrepresent the

source o Defendants goods or services and thereby create confusion among the

purchasing public or trade;

v1

further violating Plaintiff s property rights and goodwill; and,

vu. from otherwise competing unfairly with Plaintiff in any manner

whatsoever.

c) that Defendants be required to modify their promotional materials,

website, advertisements, social media and other communications to the public in the

possession or under their control bearing thereon any material or representations to

remove the infringing HIGHBROW mark;

d) that Defendants take all necessary and appropriate steps to recall for

destruction all advertising and other materials and advertisements bearing Defendants

infringing HIGHBROW mark or any colorable imitation o Plaintiff s HIGHBROW

MAGAZINE® trademark, and that Defendants be required to remove such infringing

marks from their website, promotional materials, social media, advertisements, and other

writings;

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e) that Defendants be required to transfer immediately to Plaintiff the

infringing domain name,


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Dated: 2016 Respectfully Submitted

ERIK M PELTON ASSOCIATES PLLC

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highbrow exhibit 5

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