Free Answer to Complaint - District Court of California - California

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1 John E. Floyd (pro hac vice pending) Sarah M. Shalf (pro hac vice pending) 2 BONDURANT, MIXON & ELMORE, LLP 1201 West Peachtree Street, N.W. 3 Suite 3900 One Atlantic Center Atlanta, Georgia 30309-3417 4 Telephone: (404) 881-4100 Facsimile: (404) 881-4111 5 Mark T. Drooks - State Bar No. 123561 6 BIRD, MARELLA, BOXER, WOLPERT, NESSIM, DROOKS & LINCENBERG, P.C. 7 1875 Century Park East, 23rd Floor Los Angeles, California 90067-2561 8 Telephone: (310) 201-2100 Facsimile: (310) 201-2110 9 James P. Kelly (pro hac vice pending) 10 KELLY LAW FIRM, P.C. 200 Galleria Parkway, Suite 1510 11 Atlanta, Georgia 30339 Telephone: (770) 955-2770 12 Facsimile: (770) 859-0831 13 Attorneys for Defendant Professional Career Development Institute, LLC 14 15 UNITED STATES DISTRICT COURT 16 SOUTHERN DISTRICT OF CALIFORNIA 17 18 BRIDGEPOINT EDUCATION, INC., 19 Plaintiff, 20 vs. 21 PROFESSIONAL CAREER 22 DEVELOPMENT INSTITUTE, LLC, and DOES 1-10, inclusive, 23 Defendant. 24 25 26 27 28
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CASE NO. 07 CV 2222 IEG (BLM) ANSWER AND COUNTERCLAIM OF PROFESSIONAL CAREER DEVELOPMENT INSTITUTE, LLC

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1

Pursuant to Federal Rules of Civil Procedure 12(a) and 13, Defendant Professional

2 Career Development Institute, LLC ("PCDI") hereby answers Plaintiff Bridgepoint 3 Education Inc.'s ("Bridgepoint") Complaint for Damages and Injunctive Relief and asserts 4 the following affirmative defenses and counterclaim. 5 6 1. ANSWER Paragraph 1 lacks any allegations to which a response is required; to the

7 extent the paragraph is interpreted to be a substantive allegation, PCDI denies the same. 8 2. Paragraph 2 lacks any allegations to which a response is required; to the

9 extent the paragraph is interpreted to be a substantive allegation, PCDI denies the same. 10 3. As to the allegations in Paragraph 3, PCDI admits that the websites

11 www.ashworthuniversity.tv, www.ashworthuniversity.edu, www.ashworthuniversity.com, 12 www.ashworthuniversity.net, www.ashworthuniversity.us, www.ashworthuniversity.info, 13 and www.ashworthuniversity.biz are registered to PCDI. To the extent Paragraph 3 14 contains any other allegations of fact, PCDI denies them. 15 16 17 4. 5. 6. PCDI admits the allegations of Paragraph 4. PCDI admits the allegations of Paragraph 5. Paragraph 6 lacks any allegations to which a response is required; to the

18 extent the paragraph is interpreted to contain any allegations of fact, PCDI denies them. 19 7. PCDI admits that the Patent and Trademark Office records show trademark

20 Registration No. 3,220,625 was registered to Bridgepoint as of March 20, 2007. PCDI 21 denies any remaining allegations of Paragraph 7. 22 8. PCDI admits that Ashford University, L.L.C. is a limited liability company

23 duly organized under the laws of the State of Iowa. PCDI is without sufficient information 24 to admit or deny, and on that basis denies, any remaining allegations of Paragraph 8. 25 9. PCDI denies that Ashford University was founded in 1918. On information

26 and belief, Ashford University's predecessors include: Mount St. Clare College, which was 27 founded in 1918, reconstructed with the name The Franciscan University on or about 28 December 2002, and then purchased by Bridgepoint, which changed the name from The
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1 Franciscan University to Ashford University in 2005. PCDI admits on information and 2 belief that present-day Ashford University has a physical campus in Clinton, Iowa. PCDI 3 denies any remaining allegations of Paragraph 9. 4 10. PCDI does not have sufficient knowledge or information to admit or deny,

5 and on that basis denies, the allegations of Paragraph 10. 6 11. PCDI does not have sufficient information to admit or deny, on that basis

7 denies, the allegations in Paragraph 11. 8 9 12. 13. PCDI admits the allegations of Paragraph 12. PCDI admits that it offers distance learning programs in interstate

10 commerce, including through its websites www.ashworthuniversity.tv, 11 www.ashworthuniversity.edu, www.ashworthuniversity.com, 12 www.ashworthuniversity.net, www.ashworthuniversity.us, www.ashworthuniversity.info, 13 and www.ashworthuniversity.biz. PCDI admits that it has a federally registered trademark 14 or service mark for "ASHWORTH COLLEGE." PCDI notes that Plaintiff disclaimed, and 15 was not granted by the United States Patent and Trademark Office ("USPTO"), any 16 trademark right in "University" as used in connection with "ASHFORD." Similarly, PCDI 17 disclaimed, and was not granted by the USPTO, any trademark right in "College" as used 18 in connection with PCDI's mark "ASHWORTH." PCDI denies any remaining allegations 19 of Paragraph 13. 20 14. PCDI denies that its use of the Ashworth University name and domain names

21 (and of PCDI's previously registered trademark "ASHWORTH") constitutes infringement 22 of Plaintiff's registered trademark ASHFORD UNIVERSITY. PCDI denies that the name 23 Ashworth University and domain names constitute direct infringement of Plaintiff's 24 trademark. PCDI is without information sufficient to admit or deny that PCDI's use in 25 commerce of the Ashworth University name and domain names has caused actual 26 confusion, deception and/or mistake, or is likely to continue to cause confusion, deception 27 and/or mistake with Plaintiff's mark ASHFORD UNIVERSITY. PCDI admits that 28 "[s]ubstantial similarity exists in sight and sound between Defendant's disputed name and
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1 domain names and Plaintiff's registered mark," that "[i]ndeed, each begins with "Ash," 2 contains "or" in text, and utilizes the second word "University"", and that "[t]he small 3 differences between the letters in Plaintiff's mark and those in Defendant's disputed name 4 and domain names do not significantly change the sound of the university names when 5 pronounced." PCDI denies all remaining allegations in Paragraph 14. 6 15. PCDI admits that "Plaintiff's and Defendant's names are being used to brand

7 and market goods and services in the exact area in which Plaintiff's ASHFORD 8 UNIVERSITY trademark is registered: `educational services, namely, providing distance 9 learning instruction, curriculum and courses at the college and graduate levels.'" PCDI is 10 without information sufficient to admit or deny that confusion is enhanced, and on that 11 basis denies that confusion is enhanced. PCDI denies all remaining allegations in 12 paragraph 15. 13 16. PCDI admits that its goods and services are offered throughout the United

14 States, and that it uses the internet and various other similar media channels to market and 15 promote goods and services. PCDI is without sufficient information to admit or deny, and 16 on that basis denies, the remaining allegations of Paragraph 16. 17 17. PCDI admits it has engaged in a national advertising campaign. PCDI

18 denies any remaining allegations of Paragraph 17. 19 18. PCDI is without sufficient information to admit or deny whether "[p]otential

20 students have indeed actually confused Defendant's distance learning goods and services 21 with Plaintiff, and on that basis denies the allegation. PCDI denies the remaining 22 allegations of Paragraph 18. 23 19. PCDI admits the allegations of Paragraph 19, and notes that, similarly,

24 Plaintiff had notice of PCDI's trademark by virtue of its registration on the Supplemental 25 Register of the USPTO. 26 27 20. 21. PCDI denies the allegations of Paragraph 20. PCDI incorporates herein its responses to Paragraphs 1 through 20 as if fully

28 set forth herein.
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1 2

22. 23.

PCDI denies the allegations of Paragraph 22. PCDI lacks sufficient information to admit or deny, and on that basis denies,

3 the allegations of Paragraph 23. 4 5 6 7 24. 25. 26. 27. PCDI denies the allegations of Paragraph 24. PCDI denies the allegations of Paragraph 25. PCDI denies the allegations of Paragraph 26. PCDI incorporates herein its responses to Paragraphs 1 through 26 as if fully

8 set forth herein. 9 10 11 28. 29. 30. PCDI denies the allegations of Paragraph 28. PCDI denies the allegations of Paragraph 29. PCDI lacks sufficient information to admit or deny, and on that basis denies,

12 the allegations of Paragraph 30. 13 14 15 16 17 31. 32. 33. 34. 35. PCDI denies the allegations of Paragraph 31. PCDI denies the allegations of Paragraph 32. PCDI denies the allegations of Paragraph 33. PCDI denies the allegations of Paragraph 34. PCDI incorporates herein its responses to Paragraphs 1 through 34 as if fully

18 set forth herein. 19 20 21 22 23 24 36. 37. 38. 39. 40. 41. PCDI denies the allegations of Paragraph 36. PCDI denies the allegations of Paragraph 37. PCDI denies the allegations of Paragraph 38. PCDI denies the allegations of Paragraph 39. PCDI denies the allegations of Paragraph 40. The paragraph entitled "PRAYER FOR RELIEF" lacks any allegations to

25 which a response is required; to the extent the paragraph is interpreted to include 26 allegations of fact, PCDI denies them. 27 28
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42.

PCDI denies every other allegation not expressly admitted herein.

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1 2 3 4 5 6 7

AFFIRMATIVE DEFENSES FIRST AFFIRMATIVE DEFENSE Plaintiff's Complaint fails to state a claim upon which relief may be granted. SECOND AFFIRMATIVE DEFENSE The Court lacks personal jurisdiction over PCDI. THIRD AFFIRMATIVE DEFENSE Plaintiff's registration of its mark is invalid because Defendant was using

8 Defendant's mark in commerce prior to the date of Plaintiff's use of Plaintiff's mark and 9 Plaintiff's application for registration of Plaintiff's mark with the USPTO. 10 11 FOURTH AFFIRMATIVE DEFENSE Defendant registered its mark "Ashworth" with the USPTO prior to Plaintiff's

12 registration of Plaintiff's mark (see Exhibit "A" attached hereto). 13 14 FIFTH AFFIRMATIVE DEFENSE Defendant was unaware of the Plaintiff's use of the mark, and has been using mark

15 continuously in commerce since before Plaintiff used its mark in commerce. 16 17 18 19 SIXTH AFFIRMATIVE DEFENSE Plaintiff has acquiesced in Defendant's use of the mark. SEVENTH AFFIRMATIVE DEFENSE Plaintiff is estopped from enjoining Defendant's use of the mark. If Plaintiff had

20 conducted a proper cursory search of the records of the USPTO, Plaintiff would have seen 21 Defendant's prior registration of the mark "Ashworth." 22 23 24 25 EIGHTH AFFIRMATIVE DEFENSE The doctrine of laches bars Plaintiff from maintaining this action. NINTH AFFIRMATIVE DEFENSE Plaintiff's punitive damages claims against Defendant violate the Fourth, Fifth,

26 Sixth, Eighth and Fourteenth Amendments to the United States Constitution. 27 28
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1 2 3 4 1.

COUNTERCLAIM

INTRODUCTION PCDI has continuously used its federally registered mark "ASHWORTH

5 COLLEGE" since October 2000. PCDI registered this mark on the Supplemental Register 6 of the USPTO on July 30, 2002. 7 2. According to Plaintiff's service mark registration, Plaintiff first used its mark

8 "ASHFORD COLLEGE" in March 2005. Plaintiff's mark was not registered on the 9 USPTO Principal Register until March 20, 2007. In its service mark registration, Plaintiff 10 made no claim to the exclusive right to use "University" apart from "ASHFORD." 11 Similarly, PCDI in its service mark registration made no claim to the exclusive right to use 12 "College" apart from "ASHWORTH." Therefore, the fact that PCDI has also used 13 "University" together with ASHWORTH is not an infringement of the service mark right, 14 if any, of Plaintiff. 15 3. If, as Plaintiff alleges, "ASHWORTH" and "ASHFORD" are confusingly

16 similar, then, because PCDI holds superior rights to use the mark ASHWORTH in 17 interstate commerce, it would actually be Plaintiff who is violating PCDI's rights in 18 substantially the same way that Plaintiff alleges PCDI violated Plaintiff's rights. 19 20 4. GENERAL COUNTERCLAIM ALLEGATIONS Defendant is the owner of the federally registered trademark, "ASHWORTH

21 COLLEGE," having federal trademark Registration No. 2,603,090, registered July 30, 22 2002. A true and correct copy of said registration is attached as Exhibit "A" and 23 incorporated by reference. 24 5. Defendant has been and is now extensively engaged in the business of

25 marketing in interstate commerce and providing a wide variety of distance and 26 correspondence education services, and since 2000 has marketed some of its educational 27 services under the service mark ASHWORTH COLLEGE. In the past year, Defendant 28 began using the mark ASHWORTH UNIVERSITY in marketing its educational services.
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1

6.

Defendant, which was founded in 1987, offers distance learning programs at

2 the secondary, post-secondary, college and master's degree levels. The courses include, 3 but are not limited to, high school diploma subjects (not G.E.D.), paralegal, gunsmithing, 4 medical transcription, business administration (associate degree), criminal justice and 5 master's in accounting and in many of the same subject matters as Plaintiff offers through 6 Ashford University, L.L.C. 7 7. Defendant has spent significant time and effort and substantial sums of

8 money widely advertising and extensively offering educational and distance learning 9 programs under its registered ASHWORTH COLLEGE (also Ashworth University) mark 10 to potential distance and online learners throughout the United States (including the 11 Southern District of California) and abroad, and the marks ASHWORTH COLLEGE and 12 ASHWORTH UNIVERSITY have become, through widespread and favorable public 13 acceptance and recognition, assets of substantial value as a symbol of Defendant, its 14 quality goods and services and its good will. Defendant's extensive marketing plans 15 include widely offering its distance learning goods and services in connection with its 16 mark online (e.g., through its website located at www.ashworthuniversity.edu) and through 17 various other media. 18 8. Defendant offers distance learning programs under the name and mark

19 ASHWORTH UNIVERSITY, both by correspondence and online for students to receive 20 certificates and diplomas for providing secondary, post-secondary, college associate's, 21 master's degree programs and high school diploma programs to distance and online 22 learners in the United States and more than 100 countries worldwide. 23 9. On information and belief, Plaintiff offers its distance learning-related goods

24 and services in interstate commerce, including within and without California and including 25 this judicial district, through websites, and other means of advertising, including those with 26 domain names that are confusingly similar to Plaintiffs ASHWORTH UNIVERSITY 27 service marks. 28
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10.

Plaintiff's use in commerce of the Ashford University name, domain names

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1 and service mark and trademark constitute infringement of Defendant's registered 2 trademark, ASHWORTH COLLEGE, and, according to Plaintiff's allegations, has caused 3 actual confusion, deception and/or mistake, and is likely to continue to cause confusion, 4 deception, and/or mistake. Defendant's use of the mark ASHFORD UNIVERSITY and 5 name Ashford University is immediately reminiscent of and strikingly similar to 6 Defendant's registered trademark ASHWORTH UNIVERSITY. Substantial similarity 7 exists in sight and sound between Plaintiff's disputed name and domain names and 8 Defendant's registered mark. Indeed, each begins with "Ash," and contains "or" in text and 9 sound. The small differences between the letters in Defendant's mark and those in 10 Plaintiff's mark, name and domain names do not significantly change the sound of the 11 marks when pronounced. Plaintiff's mark, name and domain names are thus confusingly 12 similar to Defendant's earlier used and registered mark and constitute direct infringement. 13 11. The confusion is enhanced by the fact that, not only is Plaintiff's mark

14 strikingly similar in an aesthetic sense to Defendant's registered service mark, but both 15 Plaintiff's and Defendant's names are being used to brand and market goods and services 16 in the exact USPTO service mark classes 100, 101 and 107 in which Defendant's 17 ASHWORTH COLLEGE service mark is registered, namely "educational services." 18 12. Plaintiffs and Defendant's goods and services are offered throughout the

19 United States. Both Plaintiff and Defendant use the internet and various other similar 20 media channels to market and promote their goods and services to the same potential 21 customers. 22 13. By infringing Defendant's registered service mark, Plaintiff creates an

23 unfairly competitive association with Defendant and trades upon Defendant's business 24 goodwill in order to sell Plaintiff's own goods and services by falsely designating their 25 origin. 26 14. Plaintiff has legal notice of Defendant's service mark by virtue of its

27 publication and registration on the Supplemental Registry and Defendant's service mark 28 marking pursuant to 35 U.S.C. §1111.
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1

15.

On information and belief, Plaintiff has earned and continues to earn

2 substantial revenues and profits from the distance learning services using the infringing 3 mark, name and domain names that are confusingly similar to Defendant's federally4 registered service mark. Defendant has been damaged by the conduct of Plaintiff in an 5 amount not yet known, and is entitled to restitution in the form of all revenues and profits 6 generated by Plaintiff's sales of distance learning goods and services using a confusingly 7 similar mark, name and domain names. Defendant will continue to be damaged until 8 Plaintiff's use of its infringing name and domain names is enjoined. 9 10 11 FIRST CLAIM FOR RELIEF (Federal Trademark Infringement Against Plaintiff (15 U.S.C. § 1114 et seq.)) 16. Defendant realleges and incorporates herein by reference the allegations

12 contained in Paragraphs 1 through 15 of this Counterclaim, as set forth above. 13 17. Plaintiff's conduct constitutes trademark infringement under 15 U.S.C. §

14 1114 et seq. Plaintiff's use of its confusingly similar mark, name and domain names in 15 interstate commerce constitutes trademark infringement, and engenders a mistaken belief 16 by the consuming public that Plaintiff's goods and services are offered, 17 sponsored, authorized, licensed by, or otherwise connected with Defendant or come 18 from the same source as Defendant's goods and services, or are of the same quality as that 19 assured by Defendant's service mark. 20 18. Plaintiff's commercial activities using its confusingly similar mark, name and

21 domain names in connection with the advertising and sale of its distance learning-related 22 goods and services through the internet and other media similar to Defendant have, on 23 information and belief, based on Plaintiff's allegations, caused actual confusion and are 24 likely to continue causing confusion, mistake, and/or deception, and are likely to cause the 25 public to believe that Defendant has produced, sponsored, authorized, licensed, or is 26 otherwise connected or affiliated with Plaintiff's commercial and business activities, all to 27 the detriment and damage of Defendant. 28
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19.

On information and belief, Plaintiff has derived substantial financial benefit

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1 from its unlawful and infringing conduct with respect to Defendant's registered service 2 mark. As a direct and proximate result of Plaintiff's unlawful acts as set forth above, 3 including the unauthorized use of a mark, name and domain names confusingly similar to 4 Defendant's ASHWORTH COLLEGE service mark, Defendant has suffered and will 5 continue to suffer injury to its business, goodwill, and property. Defendant is entitled to 6 recover from Plaintiff the damages it has sustained and will sustain as a result of Plaintiff's 7 wrongful conduct as alleged herein. Defendant is further entitled to recover from Plaintiff 8 the gains, profits and advantages obtained as a result of the wrongful conduct alleged 9 herein. Defendant at present is unable to ascertain the full extent of its damages, or the 10 gains, profits, and advantages that Plaintiff has obtained by reason of the wrongful conduct 11 described herein. 12 20. Defendant has no adequate remedy at law to compel Plaintiff to cease its

13 wrongful acts. Unless Plaintiff is permanently enjoined from committing these unlawful 14 acts as set forth above, including the unauthorized use of a mark, name and domain names 15 in commerce that are confusingly similar to Defendant's ASHWORTH COLLEGE service 16 mark, Defendant will continue to suffer irreparable harm. Defendant is entitled, pursuant 17 to 15 U.S.C. § 1116, to an injunction restraining Plaintiff and Ashford University, L.L.C., 18 its officers, agents and employees, and all persons acting in concert with Plaintiff and 19 Ashford University, L.L.C., from engaging in any further such acts of infringement in 20 violation of the Lanham Act. 21 22 23 SECOND CLAIM FOR RELIEF (Unfair Competition and False Designation of Origin (15 U.S.C. § 1125)) 21. Defendant realleges and incorporates herein by reference the allegations

24 contained in Paragraphs 1 through 16 of this Counterclaim, as set forth above. 25 22. Plaintiff's conduct constitutes federal unfair competition and false

26 designation of origin under 15 U.S.C. § 1125. 27 23. Plaintiff's unauthorized marketing and distribution of distance learning goods

28 and services under the mark ASHFORD UNIVERSITY, the name Ashford University and
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1 in connection with Plaintiff's domain names, which use the words ashforduniversity, 2 which infringe and/or are confusingly similar to Defendant's ASHWORTH COLLEGE 3 service mark has and/or is likely to cause confusion, mistake, and/or deception as to an 4 affiliation; connection, or association of Plaintiff's goods and services with Defendant's 5 and Defendant's associated goodwill or as to the origin, sponsorship, or approval of 6 Plaintiff's goods, services, or commercial activities by Defendant in violation of 15 U.S.C. 7 § 1125. 8 24. Plaintiff's use of its infringing mark, name and domain names creates a false

9 and confusing connection between its distance learning-related goods, services and websites 10 to the distance learning-related goods, services and websites provided by Defendant under 11 its registered service mark. Such confusion as to the origin of goods and services is likely 12 to continue unless enjoined and, on information and belief, has caused actual confusion 13 among consumers as to the source of Plaintiff's goods and services. 14 25. As a direct and proximate result of Plaintiff's unlawful acts as set forth above,

15 including the unauthorized reproduction, distribution and use in commerce of a name and 16 domain names that are confusingly similar to the ASHWORTH COLLEGE service mark, 17 Defendant has suffered and will continue to suffer injury to their business, goodwill, and 18 property in an amount not presently known. 19 26. Defendant has no adequate remedy at law. Unless Plaintiff is permanently

20 enjoined from committing these unlawful acts as set forth above, including the 21 unauthorized use of the ASHWORTH service mark in commerce, and the unauthorized 22 reproduction and/or distribution of the ASHWORTH service mark, Defendant will 23 continue to suffer irreparable harm. 24 27. Defendant is entitled, pursuant to 35 U.S.C. § 1116, to an injunction

25 restraining Plaintiff, their officers, agents and employees, and all persons acting in concert 26 with Plaintiff, from engaging in any further such acts of unfair competition and false 27 designation of origin in violation of 35 U.S.C. § 1125. 28
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1 2 3 4 28.

THIRD CLAIM FOR RELIEF (Unfair Competition and False Designation of Origin (California Business & Professions Code §§ 17200 and 17500)) Defendant realleges and incorporates herein by reference the allegations

5 contained in Paragraphs 1 through 27 of this Counterclaim, as set forth above. 6 29. Defendant is informed and believes, and on that basis alleges, that Plaintiff's

7 unlawful acts as set forth above, including the infringement of Defendant's ASHWORTH 8 COLLEGE service mark, have a substantial effect on commerce, and constitute unlawful, 9 unfair, and fraudulent business practices and unfair, deceptive, untrue, and misleading 10 advertising in violation of Sections 17200 and 17500, et seq., of the California Business 11 and Professions Code. 12 30. As a direct and proximate result of Plaintiff's unlawful acts as set forth

13 above, including the infringing reproduction, distribution and use of the mark, name and 14 domain name ASHFORD UNIVERSITY in commerce, Defendant has suffered and will 15 continue to suffer injury its business, goodwill, and property in an amount not presently 16 known. 17 31. Defendant has no adequate remedy at law. Unless Plaintiff is preliminarily

18 and permanently enjoined from committing these unlawful acts as set forth above, 19 Defendant will continue to suffer irreparable harm. 20 32. Defendant is entitled, pursuant to California Business and Professions Code

21 §§ 17203 and 17535, to an injunction restraining Plaintiff and Ashford University, L.L.C., 22 its officers, agents and employees, and all persons acting in concert with Plaintiff and 23 Ashford University, L.L.C., from engaging in any further such acts of unfair competition 24 and false designation of origin in violation of the California Business and Professions 25 Code. 26 27 28
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1 2 3 4 33.

FOURTH CLAIM FOR RELIEF (Cancellation of Service Mark Registration No. 3,220,625 (15 U.S.C. § 1119))

Defendant realleges and incorporates herein by reference the allegations

5 contained in Paragraphs 1 through 32 of this Counterclaim, as set forth above. 6 34. Section 37 of the Lanham Act, 15 U.S.C. § 1119, provides that "[i]n any

7 action involving a registered mark the court may determine the right to registration, order 8 the cancellation of registrations, in whole or in part, restore canceled registrations, and 9 otherwise rectify the register with respect to the registrations of any party to the action ." 10 35. As set forth above, Defendant is the owner of Service Mark Registration No.

11 2,603,090 for ASHWORTH COLLEGE and has continuously used the mark in interstate 12 commerce since at least October, 2000 in connection with, inter alia, educational services, 13 namely, providing college courses of instruction at the undergraduate level and providing 14 college courses through correspondence. 15 36. The Plaintiff's mark sought to be cancelled is Registration No. 3,220,625 for

16 ASHFORD UNIVERSITY which, on information and belief, has been in use only since 17 March, 2005 in connection with the same or similar services. As a result, Defendant has 18 superior rights in its ASHWORTH COLLEGE mark over Plaintiff's ASHFORD 19 UNIVERSITY mark. 20 37. Plaintiff's mark so resembles Defendant's mark as to be likely, when used on

21 or in connection with the services of Plaintiff, to cause confusion, to cause mistake, or to 22 deceive. 23 38. Therefore, Plaintiff's Registration No. 3,220,625 is subject to cancellation

24 under 15 U.S.C. § 1119. 25 26 WHEREFORE, Defendant PCDI prays for judgment against Plaintiff as follows: (1) That Plaintiff's complaint be dismissed and that plaintiff take nothing by its

27 complaint; 28
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(2)

That Plaintiff and Ashford University, L.L.C. be held liable for infringement

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1 of Defendant's registered trademark as set forth herein in violation of the federal Lanham 2 Act, 15 U.S.C. § 1125 et seq., as alleged herein; 3 (3) That Plaintiff and Ashford University, L.L.C. be held liable for trademark

4 infringement, false designation of origin, and unfair and unlawful competition and 5 business practices in violation of the federal Lanham Act, 15 U.S.C. § 1125 et seq., as 6 alleged here; 7 (4) That Plaintiff and Ashford University, L.L.C. be held liable for trademark

8 infringement, false designation of origin, and unfair and unlawful competition and 9 business practices in violation of the California Business and Professions Code, as alleged 10 herein; 11 (5) That Plaintiff's and Ashford University, L.L.C.'s unlawful conduct as

12 alleged herein be deemed a willful violation of Defendant's intellectual property rights; 13 (6) That a permanent injunction issue preventing Plaintiff and Ashford

14 University, L.L.C. from: (a) operating its websites located at www.ashford.edu and 15 www.ashforduniversity.com or any colorable imitations thereof, or any other confusingly 16 similar domain name; (b) using Defendant's federally-registered trademark as set forth 17 herein or any other confusingly similar marks in connection with the advertising and sale 18 of distance learning-related goods or any other goods and/or services in commerce; 19 (c) participating in, facilitating, materially contributing to, and/or encouraging the 20 unauthorized use of Defendant's federally-registered trademark or any other confusingly 21 similar marks in connection with the advertising and sale of distance learning-related 22 goods or any other goods and/or services in commerce; (d) continuing to violate any rights 23 of Defendant in its registered trademark in any form and/or manner; and (e) engaging in 24 any further unfair, fraudulent, or unlawful act or practice relating to or affecting Defendant 25 or its customers or prospective customers; 26 (7) That Plaintiff and Ashford University, L.L.C., pursuant to 15 U.S.C.

27 § 1116(a), be ordered to file with the Court and to serve upon Defendant, within thirty (30) 28 days after service of any injunction order, a report in writing under oath setting forth in
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1 detail the manner and form in which Plaintiff has complied with the Court's order; 2 (8) That the Court order an accounting of all gains, profits, and advantages

3 realized by Plaintiff and Ashford University, L.L.C., or others acting in concert or 4 participation with it, from its unlawful conduct, and that all such gains, profits, and 5 advantages be deemed to be in constructive trust for the benefit of Defendant, at the sole 6 cost and expense of Plaintiff and Ashford University, L.L.C., by means of an independent 7 accountant; 8 (9) For compensatory damages sustained by Defendant as a result of Plaintiff's

9 and Ashford University, L.L.C.'s wrongful acts, and such other compensatory damages, 10 including up to three times the amount of actual damages and an adequate recover based 11 on Plaintiff's and Ashford University, L.L.C.'s profits, as the Court determines to be just 12 pursuant to 15 U.S.C. § 1117; 13 14 (10) (11) That the Court declare this an exceptional case under the Lanham Act; For an award of punitive damages for the sake of example and by way of

15 punishing Plaintiff and Ashford University, L.L.C. pursuant to California Civil Code 16 § 3294; 17 (12) Alternatively, for a declaratory judgment finding that the Defendant's

18 trademark does not infringe any trademark of the Plaintiff; 19 (13) Alternatively, for a declaratory judgment finding that the Plaintiff's

20 registration of its trademark invalid in whole or in part on the grounds that Defendant had 21 been using the name in interstate commerce prior to the Plaintiff's use and/or application 22 date and that Defendant has prior superseding rights pursuant to Defendant's registration 23 of the mark "ASHWORTH" on the Supplemental Register of the USPTO; 24 (14) For an order to the U.S. Patent and Trademark Office pursuant to 15 U.S.C.

25 § 1119 canceling Service Mark Registration No. 3,222,625; 26 (15) For an award of Defendant's attorneys' fees and costs associates with this

27 litigation, including expert witness costs; and 28 / / /
243681.2

07 CV 2222 IEG (BLM) 16 ANSWER AND COUNTERCLAIM OF PROFESSIONAL CAREER DEVELOPMENT INSTITUTE, LLC

Case 3:07-cv-02222-IEG-BLM

Document 8

Filed 01/10/2008

Page 17 of 17

1 2

(16)

For such other and further relief as this Court deems just and proper.

3 DATED: January 10, 2008 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
243681.2

John E. Floyd (pro hac vice pending) Sarah M. Shalf (pro hac vice pending) BONDURANT, MIXON & ELMORE, LLP Mark T. Drooks BIRD, MARELLA, BOXER, WOLPERT, NESSIM, DROOKS & LINCENBERG, P.C. James P. Kelly (pro hac vice pending) KELLY LAW FIRM, P.C.

By:

s/Mark Drooks Mark T. Drooks Attorneys for Defendant Professional Career Development Institute, LLC

07 CV 2222 IEG (BLM) 17 ANSWER AND COUNTERCLAIM OF PROFESSIONAL CAREER DEVELOPMENT INSTITUTE, LLC