Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA994737
`08/13/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicants
`
`Application Serial Number
`
`Application Filing Date
`
`Mark
`
`Date of Publication
`
`Extension Granted to
`
`Extension Granted Until
`
`Attachments
`
`Applicant's
`Correspondence Information
`
`Stockdale Investment Group, Inc.
`
`88006185
`
`06/19/2018
`
`STOCKDALE
`
`04/16/2019
`
`Stockdale Capital Partners, LLC
`
`08/14/2019
`
`FILED_Supplemental_Request_for_Reconsiderati
`on_STOCKDALE.pdf(187245 bytes )
`EXHIB-
`IT_A__-_Applicant_s_First_Amended_Complaint
`_and_Application_for_TRO_and_Preliminary_and
`_Per.pdf(5018931 bytes )
`EXHIBIT B - Opposer Answer.pdf(142389 bytes )
`EXHIBIT C - Opposer Brief.pdf(4055769 bytes )
`EXHIBIT D - Expert Report.pdf(1610954 bytes )
`
`CATHRYN A. BERRYMAN
`WINSTEAD, P.C.
`2728 N. HARWOOD STREET, SUITE 500
`DALLAS, TX 75201
`UNITED STATES
`tmdocket@winstead.com, cberry-
`man@winstead.com, jmuennink@winstead.com
`214-745-5172
`
`Objection to the Grant of
`
`Further Extensions of Time to Oppose
`
`Applicant, Stockdale Investment Group, Inc., objects to the further grant of extensions of time to oppose to
`Stockdale Capital Partners, LLC. The reasons for Applicant's objection are fully set out in the attached state-
`ment of objections.
`The undersigned represents that this submission is being made by Applicant or someone authorized to rep-
`resent Applicant before the United States Patent and Trademark Office, and with Applicant's consent to sub-
`mit this filing.
`Respectfully submitted,
`/Cathryn A. Berryman/
`CATHRYN A. BERRYMAN, attorney of record, Texas Bar Member
`cberryman@winstead.com, tvanarsdel@winstead.com, ngraham@winstead.com, tmdocket@winstead.com
`08/13/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Serial No. 88/006185
`Mark: STOCKDALE
`
`Application Filing Date: 06/19/2018
`
`Stockdale Capital Partners, LLC
`
`Opposer,
`
`v.
`
`Stockdale Investment Group, Inc.
`
`Applicant
`
`Box TTAB
`
`Commission for Trademarks
`PO. Box 145 1
`
`Alexandria, VA 22313-1451
`
`Opposition No. 88/006185
`
`00000><03000C03000OO¢<0360G
`
`SUPPLEMENTAL REQUEST FOR RECONSIDERATION
`
`Applicant, Stockdale Investment Group, Inc., a Texas corporation, having an
`
`address of 2100 McKinney Avenue, Suite 1550, Dallas, Texas 75201, is the applicant for
`
`the above-referenced application Serial No. 88/006185 for the mark STOCKDALE (the
`
`“Application”). Applicant is dissatisfied with the Board’s granting of a 90-day extension
`
`of time to oppose the Application for good cause to Opposer, Stockdale Capital Partners,
`
`LLC, a Delaware corporation having an address of 10850 Wilshire Blvd., Suite 1050, Los
`
`Angeles, California 90024 (“Stockdale Capital”).
`
`Pursuant to TBMP Section 211.01 and TMEP Section 210, Applicant hereby
`
`petitions the Board to deny any further request for extensions of time to oppose the
`
`above-referenced application for the mark STOCKDALE. As grounds for this request for
`
`reconsideration, it is alleged that:
`
`1.
`
`Opposer has already been granted a 90-day extension of time to oppose
`
`based on good cause. Opposer may request an addition 60 day extension of time but the
`
`

`

`Board will grant this request only upon written consent or stipulation signed by the
`
`applicant or its authorized representative, or a written request by the potential opposer or
`
`its authorized representative stating that the applicant or its authorized representative has
`
`consented to the request, or a showing of extraordinary circumstances. See TBMP
`
`Section 207 and 37 CFR Section 2.102(0).
`
`2.
`
`Applicant has not consented (nor will it consent) to the granting of an
`
`additional 60-days extension of time to oppose. Any statement to the contrary made by
`Opposer is without merit.
`
`3.
`
`A showing of extraordinary circumstances requires some act of God, war
`
`or natural disaster beyond the control of Opposer that prevents Opposer from filing an
`
`opposition. TBMP Section 207.03 clearly states that extraordinary circumstances are
`
`those which are beyond what is usual or ordinary, for example fire, extreme weather, or
`
`death, and settlement negotiations or civil
`
`litigation between the parties does not
`
`constitute extraordinary circumstances. To Applicant’s knowledge, no extraordinary
`
`circumstances are present.
`
`4.
`
`Based on the foregoing, Applicant respectfully requests that any further
`
`requests for extensions of time by Opposer be denied.
`
`5.
`
`Applicant further believes that Stockdale Capital does not have standing to
`
`file an opposition and thus, any further extension or opposition is merely a ruse to delay
`
`the prosecution of this application and is made without merit.
`
`6.
`
`As previously stated, on or about August 24, 2018, Applicant filed a
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`trademark infringement lawsuit in the United States District Court for the Southern
`
`District of Texas (Houston Division) against Opposer Stockdale Capital and its affiliates,
`
`claiming priority and likelihood of confusion arising from its unauthorized use of the
`
`mark STOCKDALE in connection with its own real estate investment asset and property
`
`management services and real estate development services. This case is titled Stockdale
`
`Investment Group, Inc. d/b/a Stockdale vs. Stockdale Capital Partners, LLC; Stockdale
`
`Capital Partners RE Fund I GP, LLC,‘ Stockdale Capital Partners Real Estate Fund, LP:
`
`Stockdale Capital RE Investments, LLC; Stockdale Capital RE, LLC; and Stockdale
`
`Capital RE, LLC; and Stockdale Capital Services, LLC (Case No. 4:]8—cv-02949) (the
`
`“Texas Lawsuit”). Copies of Applicant’s First Amended Complaint and Application for
`
`

`

`Temporary Restraining Order and Preliminary and Permanent Injunctive Relief filed
`
`December 14, 2018 (“Complaint”), and Opposer’s Answer filed December 28, 2018
`
`(“Answer”), Brief in Opposition to Applicant’s Application For Preliminary Injunctive
`
`Relief filed January 4, 2019 (“Brief”) and Expert Report of Nevium Intellectual Property
`
`Consultants dated July 25, 2019 (“Expert Report”), are attached hereto as Exhibits A B
`
`Qand2, respectively.
`
`7.
`
`Applicant claims a likelihood of confiision between Opposer’s use of the
`
`mark STOCKDALE in connection with real estate investment and property management
`
`services based on priority of use under Applicant’s common law trademark rights, and
`
`damages resulting therefrom. See Complaint Paragraphs 36, 39, 51, 60, and 63.
`
`However, Opposer denies any likelihood of confusion or damages. See Answer 36, 39,
`
`51, 60 and 63. Opposer further states in its Brief that “based on the nature of
`
`[Applicant’s] business, the sophistication of the parties involved, and the value of the real
`
`estate projects at issue, it is virtually impossible for any alleged confusion to every result
`
`in harm to [Opposer] or [Applicant].” (emphasis added)
`
`8.
`
`In order to have standing to oppose a Federal
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`trademark application,
`
`Opposer must have a reasonable basis for its belief that it will suffer damage if the mark
`
`is registered and a real interest (or direct and personal stake) in the outcome of the
`
`proceeding. TMEP Section 309.03(a) and (c) and 1503.01. A “real interest” can be
`
`proven by a claim of a likelihood of confusion that is not wholly without merit, including
`
`claims of prior use of a confusingly similar mark. Standing also can be pled if Opposer
`
`has asserted a likelihood of confusion in another proceeding involving the same marks.
`
`TMEP Section 309.03(c). Lastly, standing also can based upon a Section 2(f) refusal of a
`
`pending application filed by Opposer citing Applicant’s mark (TMEP Section 309.03(c)),
`
`but, to Applicant’s knowledge, there is no such Section 2(f) refusal because there is no
`
`pending application for a mark containing STOCKDALE filed in the name of Opposer
`before the USPTO.
`
`9.
`
`Discovery has now been concluded in the Texas Lawsuit. To Applicant’s
`
`knowledge, after extensive discovery and expert reports over the last 8 months, Opposer
`
`has not changed its resolute position esponsed in its Answer and Brief that there is no
`
`likelihood of confiJsion and there is no harm from Opposer’s use of the mark
`
`

`

`STOCKDALE. Significantly, Opposer’s own expert witness opined that “the term
`
`“STOCKDALE” does not provide a benefit or contribution to [Opposer’s] business or
`
`operations”. See Expert Report at p. 5.
`
`10.
`
`According to 37 CFR Section 11.18, the party presenting any filing to the
`
`Board is certifying that the statements made in such filing are believed to be true, and
`
`such party shall be subject to the penalties of perjury for knowingly and willfully making
`
`false, fictitious or fraudulent statements or representations, and violations of this section
`
`may “jeopardize the probative value of the paper.” Such filing party also is certifying that
`
`to the best of his/her knowledge, information and belief, the paper is not being presented
`
`for an improper purpose, including harassment or unnecessary delay.
`
`11.
`
`Opposer’s pleadings under oath in the Texas Lawsuit unequivocally
`
`contradict any reasonable basis for any belief that it will suffer damages and that there is
`
`a likelihood of confusion arising from Opposer’s use of the mark STOCKDALE. These
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`pleadings were known to, and made under oath, by Opposer prior to its filing of the first
`
`extension of time citing good cause, and its response to Applicant’s request for
`
`reconsideration, and any petition for opposition that may be filed with these bases for
`
`standing.
`
`12.
`
`Applicant therefore believes that Opposer’s filings for extensions of time
`
`can only have been knowingly and willfully made in a direct effort
`
`to delay the
`
`prosecution of the application at
`
`issue without standing. As such, all such filings
`
`(including any requests for future extensions or any petitions to oppose) should be found
`
`to lack probative value, and be denied by the Board.
`
`

`

`Applicant prays that no future extensions of time or petition for opposition be
`
`granted to Opposer Stockdale Capital.
`
`Dated on August 13, 2019.
`
`Respectfillly submitted,
`
`Stockda/lalnvestment Group, Inc.
`
`A
`l
`’1
`
`/Z/
`1
`Cathryn A. Berryman
`Tom Van Arsdel
`
`Attorneys for Applicant
`
`WINSTEAD PC
`
`2728 N. Harwood Street, Suite 500
`Dallas, Texas 75201
`cberryman@winstead.com
`tvanarsdel@winstead.com
`(214) 745-5172
`
`

`

`MAIL FILING CERTIFICATE
`
`I hereby certify that this paper is being submitted to the USPTO TTAB by electronic
`filing in ESTTA on August 13, 2019.
`7
`l‘
`
`517%,i. 07%me
`
`
`Signed:
`
`Date: August 13, 2019
`
`CERTIFICATE OF SERVICE
`
`I certify that a true copy of this paper was served by First Class Mail to Opposer’s
`attorney ofrecord on August 13, 2019, at the following address:
`
`Collin A. Rose
`
`Chamberlain, Hrdlicka, White, Williams & Aughtry, PC
`1200 Smith St, 14th Floor
`Houston, TX 77002
`
`6’éW’L/Q/fiwgflo
`
`
`
`

`

`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 1 of 29
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`EXHIBIT A
`
`§
`STOCKDALE INVESTMENT
`§
`GROUP, INC. D/B/A
`§
`STOCKDALE
`§
`Plaintiff,
`§
`
`
`
`§
`
`
`v.
`§
`
`
`
`STOCKDALE CAPITAL PARTNERS, §
`LLC; STOCKDALE CAPITAL
`§
`PARTNERS RE FUND I GP, LLC;
`§
`STOCKDALE CAPITAL PARTNERS §
`REAL ESTATE FUND, LP;
`§
`STOCKDALE CAPITAL RE
`§
`INVESTMENTS, LLC; STOCKDALE §
`CAPITAL RE, LLC; and STOCKDALE §
`CAPITAL SERVICES, LLC
`§
`Defendants.
`§
`
`
`
`
`
`
`
`
`
`
`CIVIL ACTION NO. 4:18-cv-02949
`
`
`
`
`
`PLAINTIFF’S FIRST AMENDED COMPLAINT AND APPLICATION FOR
`TEMPORARY RESTRAINING ORDER AND PRELIMINARY AND
`PERMANENT INJUNCTIVE RELIEF
`
`Plaintiff Stockdale Investment Group, Inc. d/b/a Stockdale (“Stockdale”) files this
`
`First Amended Complaint and Application for Temporary Restraining Order and
`
`Preliminary and Permanent Injunctive Relief against Defendants Stockdale Capital
`
`Partners, LLC; Stockdale Capital Partners RE Fund I GP, LLC; Stockdale Capital
`
`Partners Real Estate Fund, LP; Stockdale Capital Partners RE Investments, LLC;
`
`Stockdale Capital RE, LLC; Stockdale Capital Services, LLC; Stockdale Management,
`
`LLC; Stockdale/SG, LLC and Stockdale Acquisitions, LLC (collectively, “Stockdale
`
`Capital”). In support of the foregoing, Plaintiff respectfully shows the Court as follows:
`
`1
`
`

`

`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 2 of 29
`
`I.
`
`PARTIES AND PROCESS
`
`1.
`
`Plaintiff Stockdale Investment Group, Inc. d/b/a Stockdale is a corporation
`
`organized under the laws of the State of Texas, with its corporate office located in Dallas,
`
`Texas.
`
`2.
`
`Defendant Stockdale Capital Partners, LLC is a limited liability company
`
`organized under the laws of the State of Delaware, with its principal office and place of
`
`business located in Los Angeles, California. Stockdale Capital Partners, LLC has been
`
`served and answered in this matter and may be served through its attorney of record.
`
`3.
`
`Defendant Stockdale Capital Partners RE Fund I GP, LLC is a limited
`
`liability company organized under the laws of the State of Delaware, with its principal
`
`office and place of business, upon information and belief, located in Los Angeles,
`
`California. Stockdale Capital Partners RE Fund I GP, LLC has been served and
`
`answered in this matter and may be served through its attorney of record.
`
`4.
`
`Defendant Stockdale Capital Partners Real Estate Fund, LP is a limited
`
`partnership organized under the laws of the State of Delaware, with its principal office
`
`and place of business, upon information and belief, located in Los Angeles, California.
`
`Stockdale Capital Partners Real Estate Fund, LP has been served and answered in this
`
`matter and may be served through its attorney of record.
`
`5.
`
`Defendant Stockdale Capital Services, LLC is a limited liability company
`
`organized under the laws of the State of Delaware, with its principal office and place of
`
`business, upon information and belief, located in Los Angeles, California. Stockdale
`
`2
`
`

`

`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 3 of 29
`
`Capital Services, LLC has been served and answered in this matter and may be served
`
`through its attorney of record.
`
`6.
`
`Defendant Stockdale Capital RE Investments, LLC is a limited liability
`
`company organized under the laws of the State of Delaware, with its principal office and
`
`place of business, upon information and belief, located in Los Angeles, California.
`
`Stockdale Capital RE Investments, LLC has been served and answered in this matter and
`
`may be served through its attorney of record.
`
`7.
`
`Defendant Stockdale Capital Partners RE, LLC is a limited liability
`
`company organized under the laws of the State of Delaware, with its principal office and
`
`place of business, upon information and belief, located in Los Angeles, California.
`
`Stockdale Capital Partners RE, LLC has been served and answered in this matter and
`
`may be served through its attorney of record.
`
`8.
`
`Defendant Stockdale Management, LLC is a limited liability company
`
`organized under the laws of the State of Arizona, with its principal office and place of
`
`business located in Scottsdale, Arizona. Pursuant to Rule 4(h) of the Federal Rules of
`
`Civil Procedure, Stockdale Management, LLC may be served with citation through its
`
`registered agent, CT Services, 1021 Main Street Suite 1150 Houston, Texas 77002;
`
`through the Texas Secretary of State pursuant to § 5.251(2)(B) of the Texas Business
`
`Organizations Code; or wherever else it may be found.
`
`9.
`
`Defendant Stockdale/SG, LLC is a limited liability company organized
`
`under the laws of the State of Delaware, with its principal office and place of business,
`
`upon information and belief, located in Los Angeles, California. Pursuant to Rule 4(h) of
`
`3
`
`

`

`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 4 of 29
`
`the Federal Rules of Civil Procedure, Stockdale/SG, LLC may be served with citation
`
`through its registered agent, The Corporation Trust Company, Corporation Trust Center
`
`1209 Orange St. Wilmington, DE 19801; through the Texas Secretary of State pursuant
`
`to § 5.251(2)(B) of the Texas Business Organizations Code; or wherever else it may be
`
`found.
`
`10.
`
`Defendant Stockdale Acquisitions, LLC is a limited liability company
`
`organized under the laws of the State of California, with its principal office and place of
`
`business located in Los Angeles, California. Pursuant to Rule 4(h) of the Federal Rules of
`
`Civil Procedure, Stockdale Acquisitions, LLC may be served with citation through its
`
`registered agent, CT Corporation System, 10850 Wilshire Blvd., Ste 1050, Los Angeles,
`
`CA 90024; through the Texas Secretary of State pursuant to § 5.251(2)(B) of the Texas
`
`Business Organizations Code; or wherever else it may be found.
`
`II.
`
`JURISDICTION AND VENUE
`
`11.
`
`This Court has original jurisdiction over this matter pursuant to 15 U.S.C. §
`
`1121 and 28 U.S.C. §§ 1331, 1332 and 1338 because this action arises under the Lanham
`
`Act, 15 U.S.C. § 1051 et seq.; there is diversity of citizenship among the parties (Plaintiff
`
`being a Texas corporation and the Stockdale Capital entities being organized pursuant to
`
`the laws of Delaware), with more than $75,000 in controversy; and under principles of
`
`pendent and ancillary jurisdiction.
`
`12.
`
`This Court has personal jurisdiction over Stockdale Capital because
`
`Stockdale’s claims arise in whole or in part out of Stockdale Capital’s contacts with
`
`Texas, and Stockdale Capital regularly transacts business in the State of Texas at its
`
`4
`
`

`

`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 5 of 29
`
`office located at 13131 Dairy Ashford, Suite #390, Sugar Land, Texas, 77478 such that
`
`Stockdale Capital has purposefully availed itself of the benefits of the laws of the state of
`
`Texas.
`
`13.
`
`This Court has authority to issue injunctive relief under Rule 65 of the
`
`Federal Rules of Civil Procedure, 15 U.S.C. §§ 1114, 1116, and 1125, and its inherent
`
`equitable powers.
`
`14.
`
`Venue is proper in this district because a substantial part of the events or
`
`omissions giving rise to the claims occurred within this district or arise out of the same
`
`transactions or occurrences or series of transactions or occurrences forming all or part of
`
`causes of action arising out of Sugar Land, Texas. 28 U.S.C. § 1391(b)(2).
`
`III.
`
`FACTUAL BACKGROUND
`
`A.
`
`STOCKDALE’S BUSINESS
`
`15.
`
`Stockdale is a real estate services company operating in Texas, California,
`
`and North Carolina in the real estate design, construction, and property management
`
`space. Starting as a small, family business in 1989, Stockdale began its operations in
`
`Stockdale, California, expanded to Texas in 2007, and later began operating in North
`
`Carolina in 2010. Stockdale has operated continuously under the Stockdale name since
`
`the company’s inception in 1989.1
`
`1
`A true and correct copy of Stockdale’s website (http://stockdale.com/) is attached hereto as
`Exhibit 1.
`
`5
`
`

`

`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 6 of 29
`
`16.
`
`Shortly after Stockdale relocated its headquarters to Texas, in early 2012,
`
`Stockdale filed a certificate of merger with the Texas Secretary of State to merge
`
`Stockdale with “Stockdale Investment Group, Inc.” which had been previously registered
`
`and operating in California.2 At that time, Stockdale registered the combined entity to do
`
`business in Texas.3 In an effort to further protect its brand, in early 2014, Stockdale also
`
`registered the name “Stockdale, LLC”, and in early 2017, Stockdale then registered the
`
`name “Stockdale Capital” with the Texas Secretary of State.
`
`17.
`
`By operating for almost 30 years under its name in real estate development
`
`and management in California, North Carolina, and Texas, Stockdale has established
`
`coast-to-coast, common-law trademark rights in the Stockdale name as associated with
`
`real estate design, construction, and property management. Since 1989, Stockdale has
`
`devoted substantial time, effort, and expense in the development of goodwill under its
`
`name. Specifically, Stockdale has spent years and hundreds of thousands of dollars in
`
`marketing, advertising, and providing products and services as “Stockdale.” As a result of
`
`its substantial, continuous marketing efforts, Stockdale has come to be recognized as a
`
`premier provider of real estate development and property management services in
`
`California, Texas, and North Carolina.
`
`2
`3
`
`A true and correct copy of Stockdale’s Certificate of Merger is attached as Exhibit 2.
`A true and correct copy of Stockdale’s Certificate of Formation is attached as Exhibit 3.
`
`6
`
`

`

`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 7 of 29
`
`18.
`
`The Stockdale mark enjoys a high level of protection as an arbitrary mark.
`
`Although Stockdale was originally named for its initial base of operations in Stockdale,
`
`California (for no other reason than that is where the family business was started),
`
`Stockdale began moving its base of operations to Texas in 2011 and formally merged its
`
`California company with the Texas “Stockdale” in early 2012. Aside from the meaning
`
`Stockdale has developed for the name and mark of “Stockdale” over the years, neither the
`
`“Stockdale” name nor the “Stockdale” mark bears any relationship to the real estate
`
`services offered by Stockdale. Further, “Stockdale” does not indicate the specific location
`
`of Stockdale’s operations or business reach, and the public does not associate the
`
`original, largely unknown locale with Stockdale’s brand or services.
`
`19. Moreover, over the last 29 years, “Stockdale” has acquired a secondary
`
`meaning through Stockdale’s use of its mark. Over the years, Stockdale has spent
`
`thousands of dollars on advertising its services using the Stockdale mark, and the
`
`Stockdale mark has remained the same or substantially similar throughout the time
`
`Stockdale has been in business. In addition to the Stockdale mark regularly appearing in
`
`Stockdale’s promotional materials and being ever-present on Stockdale’s website for over
`
`a decade, the Stockdale mark is regularly used to identify Stockdale’s services in
`
`newspapers and real estate magazines—sometimes unsolicited. The Stockdale mark is
`
`further used to identify Stockdale’s services in industry groups such as Urban Land
`
`Institute and the International Council of Shopping Centers. Stockdale’s customers and
`
`partners have come to associate the Stockdale mark with Stockdale’s services, and over
`
`7
`
`

`

`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 8 of 29
`
`the last 5 years alone, Stockdale has marketed in excess of $125,000,000.00 in real estate
`
`using the Stockdale mark.
`
`B.
`
`STOCKDALE CAPITAL’S BUSINESS
`
`20.
`
`Stockdale Capital is a series of companies operating as one collective unit
`
`that also holds itself out as a real estate services group. While two of the Stockdale
`
`Capital entities were formed in 2013 operating in California, the balance of the Stockdale
`
`Capital entities were formed in 2015 and 2016.4 And while Stockdale Capital is operating
`
`is the State of Texas, none of the entities composing Stockdale Capital other than
`
`Stockdale Management, LLC have registered with the Texas Secretary of State to do
`
`business in Texas.
`
`21.
`
`Per Stockdale Capital’s website, Stockdale Capital is associated with
`
`properties in California, Arizona, and more recently, Texas. Specifically as to Stockdale
`
`Capital’s Texas operations, Stockdale Capital purports to manage a property in El Paso,
`
`Texas (a property called “9009 Railroad”), to manage two office buildings in Sugar Land,
`
`Texas (called “Sugar Creek I & II”),5 and has an operations office in Sugar Land, Texas.
`
`22.
`
`In an effort to take unfair advantage of Stockdale’s trade goodwill in the
`
`real services space, Stockdale operates under the following mark:
`
`4
`True and correct copies of the filings of all Stockdale Capital entities with the Delaware Secretary
`of State, Texas Secretary of State and the California Secretary of State are attached as Exhibits 4A –4I.
`5
`A true and correct copy of pages from Stockdale Capital’s website (https://stockdalecapital.com/)
`is attached hereto as Exhibit 5.
`
`8
`
`

`

`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 9 of 29
`
`The marks are strikingly similar. Like the real Stockdale’s mark, the Stockdale Capital
`
`mark is in all-caps, block lettering, of the same color scheme as Stockdale’s, and also
`
`bears an abstract emblem on the left side of the mark. Moreover, Stockdale Capital’s
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`website contains substantially similar information in a substantially similar format as the
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`format of the real Stockdale website:
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`And in fact, Stockdale Capital’s website (stockdalecapital.com) largely has the same
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`design, color palette, and feel as that of the real Stockdale’s (stockdale.com):
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`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 10 of 29
`Case 4:18—cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 10 of 29
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`10
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`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 11 of 29
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`Accordingly, in using its website to conduct business in the real estate development and
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`property management spaces in the same regions as Stockdale, Stockdale Capital is
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`unfairly and illegally taking advantage of the Stockdale name, the Stockdale mark, and
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`Stockdale’s goodwill that Stockdale has developed over the last 29 years.
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`C.
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`CONFUSION AS TO SOURCE, AFFILIATION, AND SPONSORSHIP
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`23.
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`Stockdale Capital’s unfair use of the Stockdale name has resulted in
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`significant market confusion as to the source, affiliation, and sponsorship of Stockdale
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`Capital and its services. As an initial matter, Stockdale Capital’s improper parroting of
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`Stockdale is especially egregious in the real estate services industry. In the real estate
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`services industry, it is not unusual for operators and owners of real estate to form several,
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`similarly named entities to hold each asset owned and/or managed by the company
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`(known in the industry as “single-purpose entities”). This wide-spread, industry practice
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`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 12 of 29
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`makes Stockdale Capital’s scheme all the more effective at confusing the public. While it
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`is typical for real estate developers and managers to operate their businesses through a
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`family of similarly named entities while advertising their services under the trade name
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`common to the family of entities, the similarly named entities typically have common
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`ownership stemming from the same business source. As between Stockdale and
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`Stockdale Capital, this is not the case. Indeed, in Texas, Stockdale Capital has
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`abandoned the term “Capital” altogether and has only registered the entity Stockdale
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`Management, LLC with the Texas Secretary of State.
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`24.
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`Here, Stockdale Capital’s continued use of Stockdale’s name and mark has
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`confused clients and potential clients of Stockdale’s and caused the would-be Stockdale
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`clients and business affiliates to mistakenly believe that they are dealing with the real
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`Stockdale when they are dealing with Stockdale Capital. By way of example, Lincoln
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`Property Company, CBRE Group, Inc., Holliday Fenoglio Fowler, L.P., and Arch Capital
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`have all reported instances of confusion between the two companies. These entities are
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`major, sophisticated players in the United States real estate market. The fact that they
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`each have confused Stockdale and Stockdale Capital is telling and highly problematic for
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`the maintenance of the legacy, Stockdale brand.
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`25.
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`By way of further example, news media outlets confuse the two companies.
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`Recently, Stockdale Capital has become involved with the redevelopment of a shopping
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`mall in downtown San Diego called the Horton Plaza Mall. Since early June of this year,
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`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 13 of 29
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`several news media outlets including 10 News, an ABC affiliate, incorrectly associated
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`the real Stockdale with the project:6
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`And outside the media, the real Stockdale began receiving communications such as these
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`commenting on Stockdale’s involvement in the Horton Plaza Mall project:7
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`Since Stockdale Capital started operating under the “Stockdale” name, the confusion
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`between the real Stockdale and Stockdale Capital has been pervasive. In fact, a simple
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`Google search of “Stockdale” and “real estate” also illustrates the problem. While the
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`6
`Attached as Exhibit 6 is true and correct copies of this incorrect report.
`7 A true and correct copy of this correspondence is attached as Exhibit 7.
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`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 14 of 29
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`subject line of these sample articles suggests news will be reported about the real
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`Stockdale, these article are, in fact, reporting Stockdale Capital’s alleged activities:
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`26.
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`Upon information and belief, the confusion between Stockdale and
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`Stockdale Capital has led to projects that were intended for the real Stockdale to be
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`marketed to Stockdale Capital, and upon further information and belief, Stockdale
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`Capital’s infringement of the Stockdale name and mark has caused Stockdale Capital to
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`earn illicit profits at the expense of the real Stockdale.
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`27.
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`Aside from the fact that Stockdale Capital is confusing Stockdale’s
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`customers and the media, Stockdale Capital has also created significant confusion
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`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 15 of 29
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`between the two companies as to prospective talent in employee recruiting. While the real
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`Stockdale was voted a “Best Places to Work” by the Dallas Business Journal last year,
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`Stockdale Capital routinely receives negative reviews from former employees further
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`besmirching the Stockdale brand.
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`28.
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`Accordingly, by letter dated June 26, 2018, Stockdale’s counsel demanded
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`that Stockdale Capital cease and desist the use of the Stockdale capital name and
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`trademark.8 In this correspondence, Stockdale further advised Stockdale Capital that
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`Stockdale had filed a federal service mark application (bearing Serial No. 88/006185).
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`Even so, Stockdale Capital persists in parading as Stockdale. Even now, upon
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`information and belief, Stockdale Capital is using the Stockdale name in a capital raise
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`improperly recruiting investors to participate in Stockdale Capital’s business model based
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`on infringing upon the Stockdale trade name.
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`29.
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`Stockdale Capital’s use of the Stockdale name and trademark infringes on
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`Stockdale’s trademark rights.
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`IV. CONDITIONS PRECEDENT
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`30.
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`All conditions precedent to Stockdale’s recovery on the claims made the
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`subject of this suit have been performed, have occurred, or have been waived or excused.
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`V.
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`CAUSES OF ACTION
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`31.
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`The acts or omissions of Stockdale Capital, as set forth herein, give rise to
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`the following claims and causes of action:
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`8
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`A true and correct copy of the June 26, 2018 demand letter is attached as Exhibit 8.
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`Case 4:18-cv-02949 Document 17 Filed in TXSD on 12/14/18 Page 16 of 29
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`A.
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`COUNT I – TRADEMARK INFRINGEMENT (15 U.S.C. § 1125(a))
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`32.
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`All preceding paragraphs are hereby incorporated by reference as if fully
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`set forth herein.
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`33.
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`Stockdale owns a legally protectable mark. The “Stockdale” mark is an
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`arbitrary mark and/or is otherwise inherently distinctive. In the alternative, the
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`“Stockdale” mark is protectable as it has developed a secondary meaning over its years of
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`use by Stockdale.
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`34.
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`Stockdale Capital’s false representations, false descriptions, and false
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`designations of origin of its goods violate Section 43(a) of the Lanham Act, 15 U.S.C. §
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`1125(a). Stockdale Capital’s unauthorized use of the Stockdale mark constitutes
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`infringement of an unregistered trademark, and is, therefore, actionable under Section
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`43(a) of the Lanham Act.
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`35.
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`Stockdale Capital has infringed on the unregistered Stockdale trademark.
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`Each of these infringements stands on its own and is a distinctive violation of the Lanham
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`Act.
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`36.
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`Stockdale Capital’s actions have caused confusion, deception, and mistake
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`and unless enjoined by this Court, will continue to cause of a likelihood of confusion,
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`deception, and mistake by creating the false and misleading impression that Stockdale
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`Capital’s goods and services are affiliated, connected, or associated with Stockdale, or
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`have the sponsorship, endorsement, or approval of Stockdale.
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`37.
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`Stoc