Court filing
Exhibit O- May 26, 2021 Cease & Desist Letter — Blueacorn Beringer (Dkt. 1.16)
No. 5:21-cv-00251-BO · Doc. 1-16 · Docket on CourtListener
Summary
Exhibit O, Doc. 1-16 in No. 5:21-cv-00251-BO, filed June 10, 2021: a cease-and-desist letter dated May 26, 2021 from the Forrest Firm, counsel for iCiDigital, LLC, a licensee of Beringer Commerce Inc., to Blue Acorn PPP, LLC and Fin Cap, LLC. The letter states that the Blue Acorn name and acorn logo have been used in commerce as early as 2007, that an April 8, 2021 letter went unanswered, and that Blue Acorn iCi keeps receiving calls, emails and complaints intended for the recipients' PPP businesses. It asserts trademark infringement and unfair competition under 15 U.S.C. §§ 1114(a) and 1125(a), cybersquatting under 15 U.S.C. § 1125(d) and copyright infringement. It demands that the recipients stop using the name, post a disclaimer and confirm in writing by June 1, 2021. The 12-page exhibit includes FedEx shipment receipts and certified mail return receipts.
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EXHIBIT O Case 5:21-cv-00251-BO Document1-16 Filed 06/10/21 Page 1 of 12 FORRESTFIRM wT ATTORNEY 105 Grace Street, Ste 101, Wilmington, NC 28401 + beth.stanfield@forrestfirm.com «+ (910) 777-5751 [p+f] May 26, 2021 VIA EMAIL AND FEDEX blueacorn.co Blue Acorn PPP, LLC Fin Cap, LLC Attn: Michael Cota, Jimmy Flores, Stephanie Hockridge Reis, and Nathan Reis, Co-Founders 7014 E. Camelback Rd. Suite 1452 Scottsdale, AZ 85251 1525 Kierland Blvd. Suite 200 Scottsdale, Arizona 85254 5830 East 2nd Street Suite 7000 #2435 Casper, Wyoming 82609 Re: Cease & Desist Use and Publication of Infringing “Blue Acorn” Name, Logo, and Images Dear Messrs. Cota, Flores, and Reis and Ms. Reis: This Firm represents iCiDigital, LLC, which is a licensee of Beringer Commerce Inc., the sole and rightful owner of the “Blue Acorn” and “Blue Acorn iCi” trademarks, as well as the “Acorn” logo trademark and copyright, as depicted in the examples shown below (collectively, the “Blue Acorn IP”). InfoSys Limited is the parent company of iCiDigital, LLC, as well as Blue Acorn, LLC and Beringer Commerce Inc., each of which has granted the right of initial enforcement of the Blue Acorn IP to iCiDigital, LLC in the present case (each of these entities collectively referred to herein as “Blue Acorn iCi”). The Blue Acorn IP is used in connection with Blue Acorn iCi’s business of building digital consumer experiences for its clients. @ blueacorn Asheville Charlotte Durham Greensboro Greenville Raleigh Wilmington Winston-Salem Case 5:21-cv-00251-BO Document1-16 Filed 06/10/21 Page 2 of 12 www.forrestfirm.com @ blue acorniCi The Blue Acorn IP has been used in commerce as early as 2007, and in that time, Blue Acorn iCi has expended significant time, money, and energy toward developing the Blue Acorn IP. Blue Acorn iCi has established a valuable reputation and substantial goodwill in the Blue Acorn IP and associated services as a result of its longstanding use and promotion of the Blue Acorn IP. As you know via certified correspondence, dated April 8, 2021, we advised you of your infringing use and publication of certain Blue Acorn IP in violation of Blue Acorn iCi’s superior rights to and in the Blue Acorn IP. We also advised you of the significant, ongoing consumer confusion due to your infringing use and publication of the Blue Acorn IP in connection with your business, purporting to assist small businesses and individuals with the Paycheck Protection Program (“PPP”) application process. Unfortunately, we have not received any response to our April 8, 2021 Cease & Desist letter. Since that time, Blue Acorn iCi has continued to receive a significant volume of calls, emails, complaints, and other communications intended for your PPP businesses. These communications are unabated and have only increased in number and severity since April 2021. Blue Acorn iCi has also received a number of consumer complaints posted on various social media platforms and other websites that misidentify Blue Acorn iCi as a provider of services related to PPP loans. Of particular concern, Blue Acorn iCi has recently been confused with your company by the Division of Consumer Affairs of the State of Tennessee regarding a formal consumer complaint and investigation. Responding to these messages and complaints, even if only to redirect the consumers to their intended recipient, is very costly to Blue Acorn iCi. Not only are company resources being used to clear up what apparently is significant consumer confusion; misdirected consumer complaints are damaging the goodwill that Blue Acorn iCi has worked hard to build in its brand. Further, though Blue Acorn iCi has attempted to contact your company through email, phone, online contact forms and certified mail, there has been no return communication from your end to resolve this matter. As a result of your ongoing and unabated infringing use of the Blue Acorn IP, Blue Acorn iCi has incurred significant monetary damages and losses, including substantial business interruption and damage to its intellectual property. To be clear, your company’s unauthorized use of the Blue Acorn IP (including in the domain name “blueacorn.co” and other associated domains) is a blatant infringement of Blue Case 5:21-cv-00251-BO Document1-16 Filed 06/10/21 Page 3of12 Acorn iCi’s intellectual property rights and constitutes trademark infringement and unfair competition under 15 U.S.C. §§ 1114(a) and 1125(a), cybersquatting under 15 U.S.C. § 1125(d), copyright infringement under 17 U.S.C. § 101, et. seq., and unfair and deceptive trade practices under state law. As the owner of a brand of considerable value, Blue Acorn iCi will take appropriate legal action against infringing uses. Accordingly, we ask that you immediately take the following steps, which we believe will help alleviate the actual consumer confusion that is occurring in the marketplace and allow all parties to focus their resources on assisting their respective customers in a timely and efficient manner: 1. Cease, desist, and permanently refrain from all use of “blue acorn” or “blueacorn,” or any confusingly similar name or mark, including but not limited to deactivating the “blueacorn.co” website and any other website associated with your business in which any form of the name “blue acorn” is used; change your company name(s) with the Wyoming and Arizona Secretaries of State; and inform your customers of the new name; 2. Destroy all promotional materials bearing the infringing “blue acorn” name, logo, images, acorn image, and trademarks; 3. Place a prominent disclaimer on the blueacorn.co website, and any other website associated with your business, explaining that the website is not affiliated with, sponsored by, or otherwise connected to Blue Acorn iCi; 4. If you have not already done so, set up a monitored email address and/or dedicated customer service line for customer inquiries; 5. Remove any acorn images from your marketing materials, including but not limited to the acorn drawing that appears in the tab for blueacorn.co when the site is accessed through Google Chrome. Please provide written confirmation that you have completed these items (1 through 5) on or before June 1, 2021. If we do not hear from you by that date, Blue Acorn iCi and Infosys Ltd. will assume that you prefer to litigate this matter and will proceed accordingly. In that case, please be advised that we intend to prove facts that will establish willful infringement and will therefore be requesting enhanced damages, including disgorgement of your company’s profits, treble damages, costs, and attorneys’ fees. We look forward to receiving your written assurances by the date specified above. Given the urgency of this matter, we invite you or your counsel to telephone the undersigned to expedite resolution. Case 5:21-cv-00251-BO Document1-16 Filed 06/10/21 Page 4of12 This letter is without prejudice to any of our clients’ rights, and we reserve the right to any and all remedies that our clients have under the law. Thank you for your prompt attention to this matter. I look forward to hearing from you shortly. Sincerely, Beth A. Stanfield [oy support(@blueacorn.co Lyle Gravatt, Esq. David Morris, Esq. Case 5:21-cv-00251-BO Document1-16 Filed 06/10/21 Page 5 of 12 FedEx. Shipment Receipt Address Information Ship to: Ship from: Blue Acorn PPP, LLC Beth Stanfield blueacorn.co Forrest Firm PC 7014 E. Camelback Rd 3700 Glenwood Avenue Suite 1452 Suite 240 SCOTTSDALE, AZ RALEIGH, NC 85251 27612 US US 9198250931 9198250931 Shipment Information: Tracking no.: 773823388460 Ship date: 05/25/2021 Estimated shipping charges: 42.94 USD Package Information Pricing option: FedEx Standard Rate Service type: FedEx 2Day Package type: FedEx Envelope Number of packages: 1 Total weight: 0.50 LBS Declared Value: 0.00 USD Special Services: Adult signature required Pickup/Drop-off: Drop off package at FedEx location Billing Information: Bill transportation to: MyAccount-809 Your reference: Blue Acorn iCi P.O. no.: Invoice no.: Department no.: ' Thank you for shipping online with FedEx ShipManager at fedex.com. Please Note FedEx will not be responsible for any claim in excess of $100 per package, whether the result of loss, d: ge, delay, delivery, misdelivery, or misinformation, unless you declare a higher value, Pay an additional charge, document your actual loss and file a timely claim. Limitations found in the current FedEx Service Guide apply. Your right to recover from FedEx for any loss, including intrinsic value of the package, loss of sales, income interest, profit, attomey’s fees, costs, and other forms of damage whether direct, incidental, consequential, or special is limited to the greater of $100 or the authorized declared value. R y cannot d actual di ted loss, Maximum for items of extraordinary value is $1000, e.g., jewelry, precious metals, negotiable instruments and other Items listed In our Service Guide. Written claims must be filed within strict time limits; Consult the applicable FedEx Service Guide for cetalls, The estimated shipping charge may be different than the actual charges for your shipment. Differences may occur based on actual weight, dimensions, and other factors. Consult the applicable or the FedEx Rate Sheets for details on how shipping charges are calculated, Case 5:21-cv-00251-BO Document1-16 Filed 06/10/21 Page6of12 Fedex , Shipment Receipt Address Information Ship to: Ship from: Blue Acorn PPP, LLC Beth Stanfield blueacorn.co Forrest Firm PC 1525 Kierland Blvd 3700 Glenwood Avenue Suite 200 Suite 240 SCOTTSDALE, AZ RALEIGH, NC 85254 27612 US US 9198250931 9198250931 Shipment Information: Tracking no.: 773823446169 Ship date: 05/25/2021 Estimated shipping charges: 42.94 USD Package Information Pricing option: FedEx Standard Rate Service type: FedEx 2Day Package type: FedEx Envelope Number of packages: 1 Total weight: 0.50 LBS Declared Value: 0.00 USD Special Services: Adult signature required Pickup/Drop-off: Drop off package at FedEx location Billing Information: Bill transportation to: MyAccount-809 Your reference: blue acorn iCi P.O. no.: Invoice no.: Department no.: | Thank you for shipping online with FedEx ShipManager at fedex.com. Please Note 7 OO —_ FedEx will not be responsible for any claim In excess of $100 per package, whether the result of loss, d: ge, delay, delivery, misdelivery, or misinformation, unless you declare a higher value, Pay an additional charge, document your actua! loss and file a timely claim. Limitations found in the current FedEx Service Guide apply. Your right to recover from FedEx for any loss, including intrinsic vatue of the package, loss of sales, income interest, profit, attomey's fees, costs, and other forms of damage whether direct, incidental, consequential, or special is limited to the greater of $100 or the authorized deciared value, Ri y d actual di d loss. Maximum for items of extraordinary vatue is $1000, ¢.g., jewelry, precious metals, negotiable instruments and other items listed in our Service Guide. Written claims must be filed within strict time limits; Consult the applicable FedEx Servica Gulde for details. The estimated shipping charge may be different than the actual charges for your ship Diffe: may occur based on actual weight, dimensions, and other factors. Consult the applicable FedEx Service Guide or the FedEx Rate Sheets for details on how shipping charges are calculated. Case 5:21-cv-00251-BO Document1-16 Filed 06/10/21 Page 7 of 12 Fedex. Shipment Receipt Address Information Ship to: Ship from: Blue Acorn PPP, LLC Beth Stanfield blueacorn.co Forrest Firm PC 5830 East 2nd St 3700 Glenwood Avenue Suite 7000, # 2435 Suite 240 CASPER, WY RALEIGH, NC 82609 27612 US US 9198250931 9198250931 Shipment Information: Tracking no.: 773823515493 Ship date: 05/25/2021 Estimated shipping charges: 42.22 USD Package Information Pricing option: FedEx Standard Rate Service type: FedEx 2Day Package type: FedEx Envelope Number of packages: 1 Total weight: 0.50 LBS Declared Value: 0.00 USD Special Services: Adult signature required Pickup/Drop-off: Drop off package at FedEx location Billing Information: Bill transportation to: MyAccount-809 Your reference: blue acorn iCi P.O. no.: Invoice no.: Department no.: ; Thank you for shipping online with FedEx ShipManager at fedex.com. Please Note FedEx will not be responsibie for any claim in excess of $100 per package, whether the result of loss, damage, delay, non-delivery, misdelivery, or misinformation, unless you declare a higher value, pay an additional charge, document your actual loss and file a timely claim. Limitations found in the current FedEx Service Guide apply. Your right to recover from FedEx for any loss, intrinsic value of the package, loss of sales, income interest, profit, attomey’s fees, costs, and other forms of damage whether direct, incidental, consequential, or special is limited to the greater of $100 or the authorized declared value. Ri y d actual d: ted loss. Maximum for items of extraordinary vatue is $1000, e.g., jewelry, precious metals, negotiable instruments and other items tisted In our Service Guide. Written claims must be filed within strict time Iimits; Consult the applicable FedEx Service Guide for details. The estimated shipping charge may be different than the actual charges for your shipment. Differences may occur based on actual weight, dimensions, and other factors. Consult the applicable FedEx Service Guide or the FedEx Rate Sheets for details on how shipping charges are calculated. Case 5:21-cv-00251-BO Document1-16 Filed 06/10/21 Page 8of12 OIMPLETE THIS SECTION COMPLETE THIS SECTION ON DELIVERY m Complete items 1, 2, and 3. mPrint your name and address on the reverse [) Agent eso that we can return the card to you. \ El Addressee m Attach this card to the back of the mailpiece, ; 9 Rate af Pelivery ror on the front if space permits. vat D. Is delivery address different from item 1? fi Yes lf YES, enter delivery address below: [-] No 1. Article Addressed to: 5 Radix Law, PLC 15205 N Kierland Blvd. Suite 200 septtsdale, / AZ 85254 So. ~ . g 3. Service Type O Priority Mall Express® fe) 0 Adult Signature C1 Registered Mail™ Nte,.Certified Mail® Delivery [Y Certified Mail Restricted Delivery Bhfroturn Receipt for 0 Collect on Delivery erchandise 9590 9402 6103 0209 8128 20 C Collect on Delivery Restricted Delivery ©! Signature Confirmation™ 2. fArticle Number (Transfer from service label) Oy insured Mail CI Signature Confirmation ~ROeO 3 ib0 O00 oo b Le 7 ) Lit by eB Insured Mail Restricted D Delivery —-—_—~Restricted Delivery PS Form 381 1, July 2015 PSN 7530-02-000-9053 Domestic Return Receipt _ abed -TGZO0-A9-TZ:g aseDd First-Class Mai _ Postage & Fees Paid USPS Permit No. G-10 USPS TRACKING # : | | 9590 940¢e 6103 0204 41c4 co United States ® Sender: Please print your name, address, and ZIP+4° in this box® =Postal Service FORRESTEIR™ 3700 Glenwoad Avenue, Suite 240 Raleigh, NC 27612 ZT JO OT 86ed TZ/OT/90 PalI4 9T-Tjua PabePPEPPERpPesfpHbey py ip babe phy ghbpo]ybypledplfyyygidecg|fegfy ie oN ear . Dae ', fee te 1354 i, COMPLETE THIS SECTION ON DELIVERY SENDER: COMPLETE THIS SECTION m <Complete items 4; 2fand 3, _ Print your namesand addréss on the reverse 0 that we can return the.card to you. @ ‘Attach this card to the back of the mailpiece, gor on the front if space permits, 1. Article Addressed to: D. Is delivery address different from item 1? [CI Ye if YES, enter delivery address below: CJ No Fin Cap 5830 East 2nd Street Suite 7000 #2435 £asper, Wyoming 82609 3. Service Type O Priority Mail Express® C1 Adult Signature 1 Registered Mail™ O Adult Signature Restricted Delivery CZ Registered Mall Restricted gap Certified Mail® Delivery 0 Certified Mail Restricted Delivery 0 Signature Confirmation™ O Collect on Delivery 1 Signature Confirmation 1 Collect on Delivery Restricted Delivery Restricted Delivery TC/OT —| WEE [Siei5 corral ——4 sero: eel aaa FERS BRITE ropes | | 9590 9402 6329 0296 3925 84 rticle Number (Transfer from service label) Cat. ee 5 7020 3Lb0 OOOO bLZ4 BLES itreuedMatresvicedpeney PS Form 3811, July 2020 PSN 7530-02-000-9053 Domestic Return Receipt Ze cL QT abed First-Class Mail Postage & Fees Paid USPS Permit No. G-10 RAD A NE OS) RE TA SE SRD RE ee UL USPS TRACKING | | | | 9590 W40e 6329 Oedb 34925 64 United States ® Sender: Please print your name, address, and ZIP+4® in this box® = Postal Service a-TS200-A9-T2-G 9SeD FORRESTE/RI 3700 Glenwood Avenue, Suite 240 Raleigh, NC 27612 Co 2TjJo7zT abed T2/OT/90 Palla = 9T-T Ua = ma
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