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
`P.O. Box 1451
`Alexandria, VA 22313 -1451
`
`TTAB
`
`Opposition No. 88/006185
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`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 reconsider its order granting a 90-day extension of time to oppose
`
`the above-referenced application for the mark STOCKDALE. As grounds for this request
`
`for reconsideration, it is alleged that:
`
`1.
`
`Applicant is the owner of common law rights in and to the mark
`
`STOCKDALE used in interstate commerce on or in connection with real estate services,
`
`1111111111111111111111111111111111111111111111111111 11111111
`
`05-24-201 9
`
`U.S. Patent & TMOfc/ TM Mail ~ c pt Ot it22
`
`

`

`namely, acquisition and management of commercial real estate; real estate brokerage
`
`services; real estate leasing services; real estate investment asset and property
`
`management services in Class 036, and real estate development services in the
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`commercial real estate field in Class 037, since as early as 1989, and related pending
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`Application.
`
`2.
`
`On or about August 24, 2018, Applicant filed a 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
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`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.
`
`dlb/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: J 8-cv-02949) (the "Texas Lawsuit").
`
`Proper notice of the Texas Lawsuit and the Application was provided to the Director of
`
`the U.S . Patent and Trademark Office in a Report Of The Filing Or Determination Of An
`
`Action Regarding A Patent Or Trademark issued by the Clerk of the Court on or about
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`August 27, 2018, a copy of which is attached as Exhibit A.
`
`3.
`
`This case is currently in the stage of discovery and depositions. While
`
`Applicant and Opposer attempted to set up settlement discussions related to the mark
`
`STOCKDALE in the Texas Lawsuit, their settlement discussions were limited to a brief
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`telephone conference on or about April 8, 2019, and were concluded without mutual
`
`agreement or other resolution.
`
`4.
`
`The Application published for opposition on or about April 16, 2019.
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`Opposer Stockdale Capital waited to file its first 90-Day request for extension of time to
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`oppose for good cause the Application until May 6, 2019 (the "First Extension Request").
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`Opposer Stockdale Capital explicitly stated that "good cause is established for this
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`request by: The potential opposer is engaged in settlement discussions with applicant" in
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`the First Extension Request. The Board issued an order granting a 90-day extension to
`
`2
`
`

`

`Opposer based upon this statement of good cause on or about May 7, 2019 (the
`
`"Extension Order") and Applicant received notice of the Extension Order by email.
`
`5.
`
`According to TBMP Sections 207.01 and 207.02, good cause or consent is
`
`required to obtain the first 90-day extension of time to oppose. Circumstances that may
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`support a finding of good cause include the potential opposer' s need to investigate the
`
`claim or the potential opposer' s need to confer with or obtain counsel. TMBP Section
`
`207. 02 This ground for good cause does not apply since Opposer Stockdale Capital
`
`retained trademark counsel in the Texas Action in 2018 and it is well aware of
`
`Applicant's claim of priority and likelihood of confusion made in the Texas Action.
`
`Other circumstances for good cause include an applicant's consent to the extension.
`
`However, no consent was sought from Applicant prior to Opposer Stockdale Capital's
`
`filing of the First Extension Request. TMBP Section 20 7. 02 Circumstances for good
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`cause further include settlement negotiations between the parties, which is the exact basis
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`cited by Opposer Stockdale Capital in its First Extension Request.
`
`6.
`
`However, contrary to Opposer Stockdale Capital's representations to the
`
`Board, as of the date of the filing of the First Extension Request, Opposer Stockdale
`
`Capital was not engaged in settlement discussions with Applicant.
`
`In fact, Opposer
`
`Stockdale Capital had prior actual knowledge of the cessation of any such settlement
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`discussions, and misrepresented the status of those discussions toBoard in order to obtain
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`a longer extension of time from 30-days to 90-days, which will cause unnecessary delay
`
`and cost to Applicant. Accordingly, the First Extension Request for 90-days should never
`
`have been accepted and the Board should reconsider its Extension Order.
`
`7.
`
`Opposer Stockdale Capital is well-aware of its misleading statements
`
`made in the First Extension Request. In an attempt to cover itself, its trial counsel
`
`reintroduced an offer of settlement 9 days after filing the First Extension Request and the
`
`Board's issuance of its order granting the First Extension Request. As of the date of this
`
`Request, that offer has been rejected by Applicant, and no further settlement discussions
`
`are planned or anticipated. This post-filing action cannot establish "good cause" for false
`
`statements made to the Board to obtain a longer extension of time.
`
`8.
`
`According to 3 7 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
`
`3
`
`

`

`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.
`
`9.
`
`There is support for the denial of a deadline extension under these
`
`circumstances. In NFL v. DNH Mgmt., LLC, the Trademark Trial and Appellate Board
`
`examined an opposer's Motion to Extend the Discovery Period that, like a request to
`
`extend time to file an opposition, requires a showing of good cause. 2008 TTAB LEXIS
`
`3, *4-7, 85 U.S.P.Q.2D (BNA) 1852, 1854-1855 (Trademark Trial & App. Bd. January
`
`29, 2008). The Board ultimately denied the opposer's Motion for Extension as the
`
`purported reason for requesting the extension, settlement negotiations, was insufficient
`
`where no actual negotiations were occurring. Id. The Board found that "in light of their
`
`numerous unsuccessful attempts
`
`to
`
`reach applicant
`
`through various
`
`forms of
`
`communication as well as applicant's lack of interest in discussing resolution, opposers
`
`knew or should have known that settlement or even legitimate talk of settlement was
`
`highly unlikely. Id, at *7. The Board also noted that extensions are not granted where
`
`the moving party has been guilty of bad faith or negligence. Id.
`
`10.
`
`The First Extension Request for the longer 90-day period was filed by
`
`Opposer Stockdale Capital without good cause in an attempt to harass and cause
`
`unnecessary delay or needless increase in the cost of the Application. Applicant is likely
`
`to be damaged by the longer 90-day of the extension of time to oppose the Application at
`
`issue, and Applicant's legal rights to obtain and use trademark registration for the mark
`
`STOCKDALE are highly likely to be impaired or delayed unnecessarily and additional
`
`costs incurred by both parties (including litigating two different actions over the same
`
`mark STOCKDALE in two different judicial forums).
`
`4
`
`

`

`Applicant prays that the First Extension Order be reconsidered and the 90-day
`
`extension of time be cancelled in light of Opposer Stockdale Capital's false statements,
`
`and that no future extensions of time be granted to Opposer Stockdale Capital.
`
`Dated on May 21 , 2019.
`
`Respectfully submitted,
`
`Stockdale Investment Group, Inc.
`
`~ Cathryn A. Berryman
`
`Tom Van Arsdel
`Attorneys for Applicant
`
`WINSTEAD PC
`2728 N. Harwood Street, Suite 500
`Dallas, Texas 75201
`cberryman@winstead.com
`tvanarsdel@wi nstead. com
`(214) 745-5172
`
`5
`
`

`

`MAIL FILING CERTIFICATE
`
`I hereby certify that this paper is being submitted to the USPTO TT AB by First Class
`Mail on May 21 , 2019.
`
`Date: May 21, 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 May 21, 2019, at the following address:
`
`Collin A. Rose
`Chamberlain, Hrdlicka, White, Williams & Aughtry, P.C.
`1200 Smith St., 14th Floor
`Houston, TX 77002
`
`6
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`7
`
`

`

`Case 4:18-cv-02949 Document 2 Filed in TXSD on 08/27/18 Page 1of1
`
`Ao 120
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P .O . Box 1450
`Alexandria, VA 22313- 1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT
`OR TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court for the Southern District of Texas on the following Trademarks or Patents.
`
`Docket No.
`4:18- cv- 02949
`
`Date Filed:
`8/24/2018
`
`U.S District Court
`SOUTHERN DISTRICT OF TEXAS
`
`I Defendant( s)
`
`Plaintiff(s)
`Stockdale Investment Grouo, Inc. d/b/a Stockdale
`DATE OF PATENT
`PATENT OR
`TRADEMARK NO.
`OR TRADEMARK
`A conv of the complaint is beinl? mailed with this form.
`
`Stockdale Caoital Partners Re Fund I GP, LLC. et al.
`HOLDER OF PATENT OR TRADEMARK
`
`1.
`2.
`3.
`4.
`5.
`
`In the above- entitled case, the following oatent(s)/trademark(s) have been included:
`
`INCLUDED BY Amendment Answer Cross Bill Other Pleadin!l
`HOLDER OF PATENT OR TRADEMARK
`DATE OF PATENT
`OR TRADEMARK
`
`DATE INCLUDED
`PATENTOR
`TRADEMARK NO.
`1.
`2.
`3.
`4.
`5.
`
`In the above- entitled case, the following decision has been rendered or judgment issued:
`DECISION/JUDGMENT
`
`Clerk:
`David J. Bradley, Clerk
`
`I By Deputy Clerk:
`
`CKrus
`
`I Date:
`
`8/27/2018
`
`

`

`Case 4:18-cv-02949 Document 1 Filed in TXSD on 08/24/18 Page 1 of 27
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`CIVIL ACTION NO. ___ _
`
`v.
`
`STOCKDALE INVESTMENT
`GROUP, INC. D/B/A
`STOCKDALE
`Plaintiff,
`
`§
`§
`§
`§
`§
`§
`§
`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
`§
`Def endants.
`§
`
`PLAINTIFF'S ORIGINAL 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
`
`Original 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 (collectively, "Stockdale Capital"). In support of the
`
`foregoing, Plaintiff respectfully shows the Court as follows:
`
`1
`
`

`

`Case 4:18-cv-02949 Document 1 Filed in TXSD on 08/24/18 Page 2 of 27
`
`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. Pursuant to Rule 4(h) of the Federal Rules of
`
`Civil Procedure, Stockdale Capital may be served with citation through its registered
`
`agent, The Corporation Trust Company, Corporation Trust Center, 1209 Orange Street,
`
`Wilmington, Delaware, 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.
`
`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. Pursuant to Rule 4(h) of the Federal Rules of Civil Procedure, Stockdale
`
`Capital may be served with citation through its registered agent, The Corporation Trust
`
`Company, Corporation Trust Center, 1209 Orange Street, Wilmington, Delaware, 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.
`
`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.
`
`2
`
`

`

`Case 4:18-cv-02949 Document 1 Filed in TXSD on 08/24/18 Page 3 of 27
`
`Pursuant to Rule 4(h) of the Federal Rules of Civil Procedure, Stockdale Capital may be
`
`served with citation through its registered agent, The Corporation Trust Company,
`
`Corporation Trust Center, 1209 Orange Street, Wilmington, Delaware, 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.
`
`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. Pursuant to
`
`Rule 4(h) of the Federal Rules of Civil Procedure, Stockdale Capital may be served with
`
`citation through its registered agent, The Corporation Trust Company, Corporation Trust
`
`Center, 1209 Orange Street, Wilmington, Delaware, 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.
`
`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.
`
`Pursuant to Rule 4(h) of the Federal Rules of Civil Procedure, Stockdale Capital may be
`
`served with citation through its registered agent, The Corporation Trust Company,
`
`Corporation Trust Center, 1209 Orange Street, Wilmington, Delaware, 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.
`
`3
`
`

`

`Case 4:18-cv-02949 Document 1 Filed in TXSD on 08/24/18 Page 4 of 27
`
`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.
`
`Pursuant to Rule 4(h) of the Federal Rules of Civil Procedure, Stockdale Capital may be
`
`served with citation through its registered agent, The Corporation Trust Company,
`
`Corporation Trust Center, 1209 Orange Street, Wilmington, Delaware, 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.
`
`II.
`
`JURISDICTION AND VENUE
`
`8.
`
`This Court has original jurisdiction over this matter pursuant to 15 U.S.C. §
`
`1121and28 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.
`
`9.
`
`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
`
`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.
`
`4
`
`

`

`Case 4:18-cv-02949 Document 1 Filed in TXSD on 08/24/18 Page 5 of 27
`
`10.
`
`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.
`
`11. 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).
`
`ill.
`
`FACTUAL BACKGROUND
`
`A.
`
`STOCKDALE'S BUSINESS
`
`12.
`
`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
`
`~ STOCKDALE I
`
`13.
`
`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
`
`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 1 Filed in TXSD on 08/24/18 Page 6 of 27
`
`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.
`
`14. 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.
`
`15.
`
`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
`
`2
`
`A true and correct copy ofStockdale' 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 1 Filed in TXSD on 08/24/18 Page 7 of 27
`
`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.
`
`16. 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
`
`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
`
`17.
`
`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
`
`7
`
`

`

`Case 4:18-cv-02949 Document 1 Filed in TXSD on 08/24/18 Page 8 of 27
`
`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 have registered
`
`with the Texas Secretary of State to do business in Texas.
`
`18.
`
`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.
`
`19.
`
`In an effort to take unfair advantage of Stockdale' s trade goodwill in the
`
`real services space, Stockdale operates under the following mark:
`
`~ I
`~ ~ ~ STOCKDALE
`I§
`~ CAPITAL PARTNERS
`
`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
`
`website contains substantially similar information in a substantially similar format as the
`
`format of the real Stockdale website:
`
`True and correct copies of the filin gs of all Stockdale Capital entities with the Delaware Secretary
`of State are attached as Exhibits 4A -4F.
`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 1 Filed in TXSD on 08/24/18 Page 9 of 27
`
`About Services Properties Our Team News Contact
`
`Pay Online I
`
`I ~ • I STOCKDALE
`
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`
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`
`I
`
`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 1 Filed in TXSD on 08/24/18 Page 10 of 27
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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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`20.
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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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`10
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`Case 4:18-cv-02949 Document 1 Filed in TXSD on 08/24/18 Page 11of27
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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.
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`21. 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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`22.
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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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`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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`6
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`Attached as Exhibit 6 is true and correct copies of this incorrect report.
`11
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`Case 4:18-cv-02949 Document 1 Filed in TXSD on 08/24/18 Page 12 of 27
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`SAN DU;Go (KGTV) - The Horton Pl~a mall, a downtQWn San Diego Icon since 19as that has fallen Int<;> hard times, appears to be
`close to being sold.
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`Multiple sources confirmed to 10News that Stockdale Capital Partners is now in escrow to buy the mall.
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`(Correction - ,An earlier version of this story incorrectly referred to he company buying Horton Plaza as Stockdale Investment
`Group. However, Stockdale Capital Partner$ i$ in escrow to bey the property)
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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
`
`from: M ichael Townsend <michael@townsendassociat es .com>
`Sent; frirJgy, June .ZZ, ZOlS 2;S9 PM
`To: Joe Pastora <jpastora@stockdale .com>
`Subject: Fwd: New owner to convert iconic Horton Plaza to m ixed-use I ICSC: Internationa l Council of Shopping Centers
`
`Is this you guys?!
`
`May have fun anchor for you is so ... .
`
`Michael Townsend
`Townsend & Associates, Inc.
`te l: (310) 286-9945
`ww w.townsendassociates.com
`www.summerhillatl.com
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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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`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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`A true and correct copy of this correspondence is attached as Exhibit 7.
`12
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`Case 4:18-cv-02949 Document 1 Filed in TXSD on 08/24/18 Page 13 of 27
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`Stockdale Puts Parking Garage in San Francisco Under Contract for ...
`https:// news.theregistrysf.com ' Commercial ..
`Aug 17, 2017 · Stockdale Capital Partners, 350 Beach Street, San Francisco, Grosvenor Group. Ace
`Parking, San Francisco, Newmark Grub' Knight Frank. ...
`
`I
`
`CoStar N~ws · Stockd at~ Quietly Shops Repurposing of San Diego ·(cid:173)
`product.costar.com/hotne1news/sh<re<111 n n o •
`Jun 29. 201 B · Stoci<dale C pltal Partn1rs of Los Arw.;eles h•s shown local busiress and civ1cleade:s its
`plans to ron""1 downtowl San Diego's WeSlfield ...
`
`Stockdale Targets Parking Structures with New JV I GlobeSt
`https://www.globest.com/sites/ .. ./09/ .. ./stockdale-targets-parking·structures-with-new·j ... •
`Sep 9, 2016 - LOS ANGELES-Stockdale Capital Partners forms a joint venture with Grosvenor Group
`and Ace Parking Management to acquire ...
`
`Quilvest, Stockdale establish US medical office JV, buy frrst asset in ...
`https:// real assets. ipe.com/news/ markets-and ... stockdale ... us ... /100177 57 .article ..
`Feb 28, 2017 - Quilvest, through its private equity arm. has created a joint venture with Stockdale Capital
`Partners to buy medical office buildings in the west ...
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`23. 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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`24. 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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`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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`13
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`Case 4:18-cv-02949 Document 1 Filed in TXSD on 08/24/18 Page 14 of 27
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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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`25. 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