Case 1:14-cv-00335-RPM-KMT Document 26 Filed 02/09/15 USDC Colorado Page 1 of 9

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO
1.

HOLY G WEAR, LLC,

a Colorado Limited Liability ,
Corporation

Plaintiffs
Case No. 1:14-cv-00335-RPM-KMT
V.

2.

HOLY-G, INC.,
a California Corporation doing
business as Holy G,
Defendant

AMENDED COMPLAINT
Holy G Wear, LLC, ("Plaintiff') brings this Complaint for trademark
infringement and breach of contract against Holy-G, Inc., ("Defendant") and, in support
thereof, alleges as follows:
JURISDICTION
1.

This is an action for infringement of trademark and breach of contract.

This action arises and is brought under the Lanham Act of 1946, 15U.S.C. 1114, et
seq. and the laws of the State of Colorado. Jurisdiction of this Court is conferred by 15
U.S.C. 1116, 1121 and 1125(a) and 28 U.S.C. 1331, 1338 and 1367(a).
VENUE
2.

Plaintiff Holy G Wear, LLC (hereinafter 11-IGW") is, and at all times

relevant, a limited liability company organized under the laws of the State of
Colorado. HGW has an established place of business at 6528 South Everett Way
Littleton, Colorado 80123.

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3.

Defendant Holy-G, Inc. (hereinafter "HG1') is, and at all times relevant,

a corporation organized under the laws of the State of California with an address of
3600 Wilshire Boulevard, Suite 726, Los Angeles, California 90010. It sells products
online through its website www.holyginc.com. Upon information and belief, HGI is
currently doing business in Colorado, through among other things, its distribution and
sale of women's clothing and related products to customers in Colorado.
4.

Venue in this judicial district is proper pursuant to 28 U.S.C. 1391(a)(2)

due to the fact that the essential facts giving rise to the claim occurred in this judicial
district.
FACTS COMMON TO ALL CAUSES OF ACTION
5.

Michael Schuessler is the owner of Plaintiff HGW and the author of the

top selling book, "The Holy G-rail".

He is a sexuality life coach and has been

interviewed nationally on his belief that all women are The Holy Grail. The Holy G-rail
shows the dualities between the fabled "HOLY GRAIL" and the beautiful women that
are within our presence daily. This attitude is embodied in Mr. Schuessler's line of
women's apparel.
6.

HGW does business in Colorado and throughout the United States under

the marks Holy G and Holy G Wear by selling women's clothing through its website at
its above place of business and online through its website at www.holygwear.com.
7.

In late 2009, Mr. Schuessler visited a trademark attorney in Denver,

Colorado and filed applications to register his marks Holy G and Holy G Wear. Copies
of the applications are attached as Exhibit 1. Mr. Schuessler also formed his limited
liability company, i.e., plaintiff Holy G. Wear, LLC ("HGW").

Case 1:14-cv-00335-RPM-KMT Document 26 Filed 02/09/15 USDC Colorado Page 3 of 9

8.

In November, 2009, HGW sent out cease and desist notices to companies

selling women's clothing through websites using the Holy G mark. During the process of
sending out the notices, Defendant HGI's business and website were discovered. HGI's
website and address were identical to HGW except for the word "wear" which was
replaced with the word "Inc".
9.

In November 2009, after discovering the HGI website, HGW sent out a

cease and desist letter, Exhibit 2. HGW requested HGI's response by November 25,
2009. No response was received. HGW filed an instant suit.
10.

HGI did not respond to the November 25, 2009 suit. On February 9, 2010

HGW filed an Amended Complaint and Demand for Jury Trial, Exhibit 3.
11.

HGI did not respond to the February 9, 2010 complaint but the parties

agreed to settlement of the issues of the matters before service of an answer by HGI. On
April 12, 2010 the parties signed a Settlement Agreement and Mutual Release, Exhibit 4,
regarding the use of the various goods, services, marks, trade, domain and company
names
12.

The agreement is governed and interpreted under the laws of State of

Colorado. (Section 17)

13.

The Agreement required HGI file within six (6) months of the execution

of the Settlement Agreement with the California Secretary of State a notice or name
change sufficient to withdraw or terminate any and all prior registrations of any trade
name, trademark, or business name incorporating the designation "Holy-G Inc. or HolyG". (Section 1)

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14.

The Agreement required HGI within six (6) months of the execution of the

'Settlement Agreement to notify all of its' customer by certified return receipt mail, i.e.,
customers who purchased products and or services form HGI, that neither HGI nor HGI' s
Holy G product line is affiliated, associated or in any way connected with HGW. (Section
2)
15.

The Agreement required HGI, and any entity or individual over which it

has control, to stop using designations "Holy G", "Holy G Wear", "Holy-G", or "Holy-G
Inc.," in connection with any business name, trade name, trademark or any confusingly
similar designation within six (6) months. (Section 3)
16.

The Agreement required HGI within thirty (30) days of the execution of

the Settlement Agreement to refrain from using any confusingly similar marks in
connection with any domain name, web address, or in any way in connection with
websites owned. (Section 4)
17.

The Agreement required immediately upon HGI's execution of the

Settlement Agreement, HGI wire or overnight to HGW counsel funds or a certified check
in the amount of Seven Thousand and Five Hundred Dollars ($7,500.00) in U.S. Dollars.
18.

On April 14, 2012 Plaintiff HGW voluntarily dismissed the action against

Defendant HUT without prejudice under Rule 41(a)(1)(i) Fed. R. Civ. P., Exhibit 5.
COUNT I
BREACH OF CONTRACT
19.

HGW re-alleges and incorporates by reference the allegations set forth in

Paragraphs Nos. 1- 18.

20.

This agreement is governed by Colorado Law. Under Colorado law, "[t]o

prove a breach of contract claim, a plaintiff must prove: (1) the existence of a contract;

Case 1:14-cv-00335-RPM-KMT Document 26 Filed 02/09/15 USDC Colorado Page 5 of 9

(2) performance by the plaintiff or some justification for nonperformance; (3) failure to
perform the contract by the defendant; and (4) resulting damages to the plaintiff."
Marquardt v. Perry, 200 P.3d 1126, 1129 (Colo. App. 2008).
21.

The Settlement Agreement sets forth specific obligations which HGI is

required to meet under the terms of the Agreement regarding their continued use of "Holy
G", "Holy G Wear", "Holy-G", or "Holy-G Inc.," or confusingly similar marks, in return
for Plaintiff HGW voluntarily dismissing the action against Defendant HGI without
prejudice, Exhibit 4
22.

On April 14, 2012, Plaintiff HGW did in fact voluntarily dismiss the

action against Defendant HGI without prejudice under Rule 41(a)(1)(i) Fed. R. Civ. P.,
Exhibit 5.
23.

In the intervening three years since the execution of the Settlement

Agreement, HGI has breached its obligations repeatedly and substantially, and these
breaches continue to the present day.
24.

These breaches include, but are not limited to, HGI's failure to change,

withdraw or terminate any and all prior registrations of any trade name, trademark, or
business name incorporating the designation "Holy-G Inc." or Holy-G" with the
California Secretary of State. Exhibit 6, California Sec. of State database record.
25.

HGI has breached its obligations by failing to refrain from using any

confusingly similar marks in connection with any goods, services, domain, trade or
company name, Exhibit 7.
26.

As a direct and proximate result of HGI' s breaches of its obligations under

the agreement, the HGW is entitled to monetary damages.

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27.

HGW has been damaged in an amount to be proven at trial as a result of

HGI's breaches of its obligations under the Agreement.

COUNT II
TRADEMARK INFRINGEMENT UNDER THE LANHAM ACT AND COMMON
LAW AND UNFAIR COMPETITION
28.

HGW re-alleges and incorporates by reference the allegations set forth in

Paragraphs Nos. 1- 27.

29.

"[T]rademark infringement and unfair competition claims "have virtually

identical elements". Both require a plaintiff to prove that [1] the plaintiff possesses a
protectable trademark, [2] the defendant used a mark in commerce in conjunction with
goods or services, and [3] a showing that the defendant's use of the mark "is likely to
cause confusion ... as to the origin, sponsorship, or approval of [such] goods." Utah
Lighthouse Ministry v. Foundation for Apologetic Information and Research, 527 F.3d
1045, 1050 (10th Cir.2008).
30.

Plaintiff HGW owns a valid trademark for the mark "Holy G" that is

registered with the United States Patent and Trademark Office. Registration No.
3,806,345, Exhibit 1.
31.

The aforementioned mark was first used in commerce on December 31,

2006 with Plaintiff HGW having common law trademark rights dating back to that date.
32.

HGI continues to commit one or more acts of trademark infringement of

HGW mark by reproducing, printing, distributing, and/or selling using the Holy-G mark
and/or derivations thereof, without permission from HGW. Such conduct, is a violation
of HGW mark under the Lanham Act of 1946, 15U.S.C. 1114, et seq.

Case 1:14-cv-00335-RPM-KMT Document 26 Filed 02/09/15 USDC Colorado Page 7 of 9

33.

It is believed, and on that basis alleged, that HGI willfully committed one

or more acts of trademark infringement of HGW mark.

34.

It is believed, and on that basis alleged, that unless enjoined by this Court,

HGI intends to continue its course of conduct by wrongfully reproducing and/or

distributing and/or creating copies and/or derivative works of the HGW mark or
continuing selling product using the HGW mark.
35.

As a direct and proximate result of the acts of the HGI alleged above,

HGW has already suffered irreparable damage. HGW has no adequate remedy at law to
redress all of the injuries caused by the conduct of HOT and will continue to suffer
irreparable damage until this Court enjoins HGI from continuing the acts alleged above.
36.

HGW is entitled to, seeks, and requests a temporary and permanent

injunction restraining HOT, as well as officers, agents, employees, and all other persons in
active concert with HGI, from engaging in any further acts in violation of the trademark
laws.
37.

HGW is further entitled to recover and seeks the damages it has sustained

and will sustain, and any gains, profits, and advantages obtained by HGI as a result of its
acts of infringement alleged herein and such additional relief as may be deemed
appropriate and awarded by the Court.
38.

HGW has been damaged in an amount to be proven at trial as a result of

HGI' s infringement upon HGW's mark.

39.

HGW is entitled to an order compelling the impounding of all infringing

material being used, offered, marketed, or distributed by HGI, and to trebled damages

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because HGI's use consists of the use of counterfeit trademarks pursuant to 15 U.S.C.
1116(d).
40.

HGW is entitled to recover its attorneys' fees and costs of suit pursuant to

15 U.S.C. 1117.
COUNT III
MONETARY DAMAGES RELATED TO HGI'S BREACH OF CONTRACT
AND TRADEMARK INFRINGEMENT
41.

HGW re-alleges and incorporates by reference the allegations set forth in

Paragraphs Nos. 1- 37.

42.

HGI has breached its obligations under the Agreement as set forth herein.

43.

HGI has continued to infringe of HGW's registered mark.

44.

HGI has engaged in unfair competition.

45.

HGW has sustained injury, damage, and loss based on Defendant's

actions.
46.

WHEREFORE, the Plaintiff, HOLY G WEAR, LLC, moves this Court to

enter judgment in its favor against HGI, to enjoin HGI from further use of the trademark;
order impounding all infringing merchandise; disgorgement of HGI's profits; order
requiring HGI to provide complete accounting; and award of Defendant's profits;
compensatory damages trebled based on willful infringement pursuant to 15 U.S.C.
1117(a) & (b), and/or statutory damages; including attorneys' fees and costs pursuant to
15 U.S.C. 1117(a) & (b), and such other and further relief as the Court deems just and
proper.
47.

WHEREFORE, the Plaintiff requests a hearing to determine the monetary

damages including fees, costs, and treble damages.

Case 1:14-cv-00335-RPM-KMT Document 26 Filed 02/09/15 USDC Colorado Page 9 of 9

DATED this 5th day of February, 2015.

Respectfully submitted,

Is/ JIMMY GARG

Jimmy Garg, #41558
RIGGS, ABNEY, NEAL, TURPEN
ORBISON & LEWIS
7979 E. Tufts Avenue Parkway, Suite 1300
Denver, CO 80237
Tel.: (303) 298-7392
Fax: (303) 298-7398

ATTORNEYS FOR PLAINTIFFS