ESTTA Tracking number:
`
`ESTTA1346495
`
`Filing date:
`
`03/15/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ex Parte Appeal -
`Serial No.
`
`88201639
`
`Appellant
`
`Ignite International, Ltd.
`
`Applied for mark
`
`IGNITE
`
`Correspondence
`address
`
`Submission
`
`Attachments
`
`Filer's name
`
`Filer's email
`
`WILLIAM G GILTINAN
`CARLTON FIELDS PA
`PO BOX 3239
`IP DEPT
`TAMPA, FL 33601
`UNITED STATES
`Primary email: trademarks@carltonfields.com
`813-223-7000
`
`Copy of appeal to district court
`
`FFNotice of Filing.pdf(4717226 bytes )
`
`Gail Podolsky
`
`trademarks@carltonfields.com, gpodolsky@carltonfields.com, wgilt-
`inan@carltonfields.com
`
`Signature
`
`Date
`
`/Gail Podolsky/
`
`03/15/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`In re IGNITE INTERNATIONAL, LTD.
`
`
`
`
`
`
`Trademark:
`
`Filed: November 20, 2018
`Filing Basis: 1B
`Principal Register
`
`
`
`IGNITE INTERNATIONAL, LTD. Applicant
`
`
`
`
`
`
`
`
`Ex Parte Appeal No. 88201639
`
`
`
`
`
`
`
`
`
`NOTICE OF FILING A CIVIL ACTION
`
`
`On January 12, 2024, the Trademark Trial and Appeal Board affirmed the Examining
`
`Attorney’s refusal to register Ignite International, Ltd.’s (“Ignite”) Application Serial No.
`
`88201639 (Proceeding No. 88201639, TTABVUE 13). On March 13, 2024, Ignite filed a civil
`
`action with the United States District Court for the Eastern District of Virginia appealing the
`
`Board’s decision under 15 U.S.C. § 1071(b)(1) and 37 CFR § 2.145. The action was assigned the
`
`following case caption: Ignite International, Ltd. v. Vidal, et al., Civil Action No. 1:24-cv-00397
`
`(E.D. Va). A copy of Ignite’s Complaint is attached as Exhibit A.
`
`
`
`Ignite hereby gives notice, pursuant to 37 CFR § 2.145(c)(3) that it has commenced a civil
`
`action for review of the Board’s January 12, 2024 decision.
`
`
`
`
`
`

`

`
`
`
`
`
`
`
`Date: March 15, 2024
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Gail Podolsky/
`Gail Podolsky
`Georgia Bar No. 142021
`Carlton Fields, P.A.
`P.O. Box 3239
`Tampa, FL 33601-3239
`(813) 223-7000
`Attorney for Applicant
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 1 of 13 PageID# 1
`
`
`
`Daniel K. Felsen
`CARLTON FIELDS, P.A.
`Virginia Bar No. 32922
`1025 Thomas Jefferson Street, N.W.
`Suite 400 West
`Washington, DC 20007
`(202) 965-8100
`(202) 965-8104 (fax)
`Email: dfelsen@carltonfields.com
`Attorney for Plaintiff
`
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF VIRGINIA
`
`
`
`
`
`
`
`
`
`
`
`Case No. ___________
`
`COMPLAINT
`
`
`
`Plaintiff,
`
`IGNITE INTERNATIONAL, LTD.
`3308 Towerwood Drive
`Farmers Branch, Texas 75234,
`
`
`
`v.
`
`KATHI VIDAL, in her official capacity as Director of the
`United States Patent & Trademark Office; and
`
`THE UNITED STATES PATENT AND TRADEMARK
`OFFICE
`
`Serve:
`Office of the General Counsel
`United States Patent and Trademark Office
`Madison Bldg. East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22314
`
`Attorney General of the United States
`Main Justice Building
`950 Pennsylvania Avenue, NW
`Washington, DC 20530
`
`United States Attorney for the
`Eastern District of Virginia
`2100 Jamieson Avenue
`Alexandria, VA 22314,
`
`
`
`Defendants.
`
`135354841.1
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 2 of 13 PageID# 2
`
`
`
`Plaintiff Ignite International, Ltd. (“Plaintiff”) alleges as follows, upon actual knowledge
`
`with respect to itself and its own acts and upon information and belief as to all other matters:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an appeal from a decision of the Trademark Trial and Appeal Board
`
`(“TTAB”) of the United States Patent and Trademark Office (“USPTO”) under 15 U.S.C.
`
`§ 1071(b)(1) and 37 CFR § 2.145. Plaintiff seeks reversal of the TTAB decision In re Ignite
`
`International, Ltd., Proceeding No. 88201639 (TTAB, Jan. 12, 2024), affirming the Examining
`
`Attorney’s refusal to register Plaintiff’s IGNITE design mark for purported likelihood of confusion
`
`with a prior registration for IGNITE THE NITE.
`
`2.
`
`The TTAB decision incorrectly dissected the marks at issue and, in doing so, failed
`
`to properly consider the overall commercial impressions of the marks, which differ meaningfully
`
`in appearance, sound when spoken, and meaning, and when they are considered as a whole. The
`
`result was an erroneous treatment of the marks as nearly identical when, in fact, they convey very
`
`different impressions to consumers. Moreover, the TTAB decision incorrectly assumes that the
`
`cited mark (IGNITE THE NITE) is inherently distinctive, when, in fact, it is a descriptive tagline
`
`and, therefore, comparatively weak and narrow. The TTAB decision ignored the Examining
`
`Attorney’s failure to cite convincing evidence that the goods are so related that consumers are
`
`likely to believe that Plaintiff’s vodka and blue agave liquor and prior registrant’s whiskey-based
`
`liqueurs emanate from the same source merely because the prior registrant’s unitary slogan has a
`
`first word in common with Plaintiff’s logo. The TTAB decision also failed to sufficiently weigh
`
`Plaintiff’s evidence that belies this likelihood-of-confusion argument, namely, the numerous
`
`coexisting registrations in Class 33. As detailed below, the TTAB decision is also contrary to the
`
`135354841.1
`
`2
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 3 of 13 PageID# 3
`
`
`
`decisions of several countries that allowed Plaintiff’s mark to register despite objection from the
`
`owner of the cited mark.
`
`3.
`
`The Court should reverse the TTAB decision, and Plaintiff’s application should be
`
`approved for publication.
`
`PARTIES, JURISDICTION, AND VENUE
`
`4.
`
`Plaintiff is a corporation with offices located at 3308 Towerwood Drive, Farmers
`
`Branch, Texas 75234.
`
`5.
`
`Defendant Kathi Vidal is the Director of the United States Patent and
`
`Trademark Office with an address at 600 Dulany Street, Alexandria, Virginia 22314.
`
`6.
`
`The USPTO is a federal agency within the United States Department of
`
`Commerce. The agency is located at 600 Dulany Street, Alexandria, Virginia 22314.
`
`7.
`
`This Court has jurisdiction over the subject matter of this action pursuant to
`
`Section 21(b) of the U.S. Trademark Act of 1946 (the “Lanham Act”), as amended, 15 U.S.C.
`
`§ 1071(b), which provides that a party dissatisfied with a final decision of the TTAB may
`
`institute a new civil action in a Federal District Court challenging such decision. This Court
`
`also has subject-matter jurisdiction pursuant to 28 U.S.C. § 1331.
`
`8.
`
`Venue is proper in this district pursuant to 28 U.S.C. § 1391(e)(l)(A).
`
`FACTUAL BACKGROUND
`
`9.
`
`On November 20, 2018, Plaintiff, pursuant to 15 U.S.C. § 105l(b) of the
`
`Lanham Act, filed an intent-to-use federal trademark application for the following design
`
`mark (hereinafter, the “Mark”) on the Principal Register seeking registration for goods in
`
`Classes 1, 3, 5, 25, 29, 30, 31, 32, 33 and 34:1
`
`
`1 Only Class 33 is at issue in this action.
`
`135354841.1
`
`3
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 4 of 13 PageID# 4
`
`
`
`
`
`
`
`
`
`Nov. 20 2018, TEAS RF New Application, TSDR. The application was assigned Serial
`
`No. 88201639 (the “Application”). Id.
`
`10.
`
`The Mark was approved for registration in Classes 1, 3, 5, 25, 29, 30, 31, 32,
`
`and 34.
`
`11. On January 10, 2019, the USPTO issued a non-final action (the “First Action”),
`
`which asserted multiple refusals. Jan. 10, 2019 Office Action, TSDR. The only refusal relevant to
`
`this proceeding from the First Action was the refusal under Section 2(d) for Class 33 based on U.S.
`
`Trademark No. 4353807 (the “'807 Registration”), id., the only reference cited against registration
`
`in Class 33. Id.
`
`12.
`
`Plaintiff responded to the First Action with amendments and argument. Jun. 21,
`
`2019 Response to Office Action, TSDR. Plaintiff amended the Class 33 description to read
`
`“Alcoholic beverages, except beer and wine.” Id. The USPTO then suspended the Application.
`
`Jul. 15, 2019 Suspension Notice, TSDR p. 1. The Suspension Notice maintained and continued
`
`the Section 2(d) refusal in Class 33 based on the same, now abandoned, reference cited in the First
`
`Action. Id.
`
`13.
`
`The USPTO then issued a Non-final Office Action noting that the Application had
`
`been removed from suspension (the “Second Action”). May 11, 2021 Office Action, TSDR.
`
`14.
`
`The Second Action summary makes no mention of Class 33 but noted that the
`
`'807 Registration was cancelled after the issuance of the Suspension Notice. Id. at p. 1.
`
`135354841.1
`
`4
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 5 of 13 PageID# 5
`
`
`
`15.
`
`The Examining Attorney noted, however, that a letter of protest was received
`
`during the time the application was suspended (the “Protest Letter”). See id. at p. 1 and Oct. 15,
`
`2019 Administrative Response, TSDR.
`
`16.
`
`The Protest Letter asserted a “possible” likelihood of confusion based on U.S.
`
`Registration No. 3888144 (the “'144 Registration” or the “Cited Mark”). Id.
`
`17.
`
`The '144 Registration is for the standard character mark IGNITE THE NITE for
`
`“whiskey-based liqueurs” in Class 33 and is owned by Sazerac Brands, LLC (“Sazerac”).
`
`18.
`
`The Cited Mark is used as a tagline and not as a product name.
`
`19. Notably, though the Examining Attorney, before the First Action, necessarily found
`
`the '144 Registration in the initial search, the '144 Registration was not cited against the filing at
`
`that time. See Dec. 20, 2018 XSearch Search Summary, TSDR (searching for *ign{"iy"}t*[bi,ti]
`
`and live[ld], which search returns the '144 Registration in Class 33).
`
`20. Upon information and belief, during the initial examination of the Application, the
`
`Examining Attorney did not find Plaintiff’s Mark likely to cause confusion with the
`
`'144 Registration.
`
`21. Despite the '144 Registration previously having been considered by the Examining
`
`Attorney and not having been cited against the present Application, the Second Action stated that
`
`“the applied-for mark is refused because of a likelihood of confusion with the mark in U.S.
`
`Registration Nos. … 3888144.” Second Action at p. 3.
`
`22.
`
`Plaintiff responded to the Second Action with further amendments and arguments.
`
`Nov. 11, 2021 Response to Office Action, TSDR.2
`
`
`2 An earlier Preliminary Amendment was filed, but that amendment did not address Class 33.
`Oct. 21, 2021 Preliminary Amendment, TSDR.
`
`135354841.1
`
`5
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 6 of 13 PageID# 6
`
`
`
`23.
`
`In response to the Second Action, Plaintiff amended the description for Class 33 to
`
`read “[a]lcoholic beverages, namely vodka and distilled blue agave liquor.”3 Id.
`
`24.
`
`Plaintiff then included arguments in its response based on the narrowed description
`
`of goods and the fact that they were different from the liqueurs cited in the '144 Registration. Id.
`
`25.
`
`The USPTO then issued a Final Office Action (the “Final Refusal”). Apr. 21, 2022
`
`Office Action, TSDR.
`
`26.
`
`The Final Refusal withdrew refusals of other classes but maintained the
`
`Section 2(d) rejection in Class 33 based on the newly cited '144 Registration.4 Id. Classes 32 and
`
`33 then stood as the only rejected classes in the Application.
`
`27.
`
`Plaintiff then entered a request to divide all classes other than 32 and 33 so that the
`
`other classes could continue forward independently. Aug. 15, 2022 Request to Divide, TSDR.
`
`28.
`
`The USPTO processed
`
`the request, dividing
`
`the allowed classes
`
`into
`
`U.S. Application Serial No. 88984631. Sep. 14, 2022 Office Action Outgoing, TSDR.
`
`29.
`
`30.
`
`Plaintiff then filed its Notice of Appeal to the TTAB on Oct. 6, 2022. 1 TTABVUE.
`
`The appeal was then suspended and later found moot with respect to Class 32, but
`
`maintained with respect to Class 33. 6 TTABVUE.
`
`31. On January 12, 2024, the TTAB affirmed the refusal to register the Mark under
`
`Class 33 (the “TTAB Decision”). 13 TTABVUE.
`
`32.
`
`The TTAB erred by, inter alia, (i) failing to properly take into account the weak
`
`and descriptive nature of the Cited Mark, (ii) basing the comparison of the marks on a dissection
`
`into component pieces as opposed to comparing the overall commercial impression of the marks
`
`
`3 Blue agave liquor is more commonly known as tequila.
`4 The Final Refusal also maintained the now-moot rejection in Class 32. Apr. 21, 2022 Office
`Action, TSDR.
`
`135354841.1
`
`6
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 7 of 13 PageID# 7
`
`
`
`as a whole, and (iii) failing to adequately weigh the differences in the recited goods and evidence
`
`that, in light of those differences, relevant consumers of applicable goods in this class are unlikely
`
`to conclude that different goods come from the same source based on only one word being in
`
`common between the marks.
`
`33.
`
`For ease of reference, Plaintiff’s Mark and the Cited Mark and goods are shown
`
`below:
`
`U.S. Application No. 88201639
`(Application)
`
`
`
`
`U.S. Registration No. 3288144
`(Cited Mark)
`
`IGNITE THE NITE
`
`
`
`
`
`Class 33: Whiskey-based liqueurs
`
`
`
`
`Class 33: Alcoholic beverages, namely vodka
`and distilled blue agave liquor
`
`
`34.
`
`The marks at issue differ in appearance, sound when spoken, and meaning. These
`
`differences create substantially different overall commercial impressions.
`
`35. When comparing the marks as wholes and based on their overall commercial
`
`impressions, there is no likelihood of confusion.
`
`36.
`
`The Cited Mark is a unitary and alliterative tagline that relies on misspelling,
`
`rhyming, and a descriptive message to create an impression in the mind of a consumer. In contrast,
`
`Plaintiff’s Mark is a combination of a highly distinctive graphical element with a superimposed
`
`word that has no descriptive meaning as used.
`
`37.
`
`Plaintiff’s Mark is used on different goods than those listed in the Cited Mark,
`
`further diminishing the potential for consumer confusion.
`
`38. Vodka is a very different product than whiskey-based liqueurs.
`
`135354841.1
`
`7
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 8 of 13 PageID# 8
`
`
`
`39.
`
`Tequila is a very different product than whiskey-based liqueurs.
`
`40. Consumers and retailers see (1) liquors, which would include Plaintiff’s vodka and
`
`tequila, and (2) cordials, which would include Sazerac’s whiskey-based liqueurs, as different
`
`product categories and used for different purposes.
`
`41.
`
`Plaintiff is not aware of any instances of actual consumer confusion between its
`
`Mark and the Cited Mark.
`
`42. A side-by-side comparison of how the products appear in the marketplace further
`
`demonstrates that there is no likelihood of confusion.
`
`U.S. Application No. 88201639
`(Application)
`
`
`U.S. Registration No. 3288144
`(Cited Mark)
`
`
`
`
`
`
`
`
`
`
`
`43.
`
`The TTAB erred when it found, without evidence, that “[s]ome consumers also may
`
`assume that Applicant’s mark is a shortened version of Registrant’s mark, and others searching for
`
`135354841.1
`
`8
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 9 of 13 PageID# 9
`
`
`
`or recommending Registrant’s alcoholic product may just call it ‘IGNITE,’ increasing the
`
`likelihood of confusion.” TTAB Decision at p. 24. Those unsupported conclusions demonstrate
`
`that the TTAB provided no weight to the alliterative nature of the Cited Mark or the fact that the
`
`Cited Mark is a tagline and not a product name. By way of example, arguing that a consumer would
`
`abbreviate the tagline IGNITE THE NITE to only IGNITE is equivalent to arguing that a consumer
`
`would abbreviate JUST DO IT to only JUST. Where the commercial impression of the Cited Mark
`
`is as a descriptive tagline, and not a product name, it is error to conclude that consumers would
`
`shorten the cited tagline to a single word when speaking or identifying it.
`
`44.
`
`The TTAB erred when it failed to consider highly relevant evidence submitted
`
`during the Appeal, namely, the specimen of use submitted with the '144 Registration, showing that
`
`the Cited Mark does not function as a source indicator but is merely a marketing slogan.
`
`45.
`
`The TTAB Decision deviates from several countries’ trademark offices’ decisions
`
`regarding the registrability of Plaintiff’s Mark.
`
`46.
`
`The Intellectual Property Office in the United Kingdom rejected Sazerac’s
`
`opposition to the registration of Plaintiff’s Mark5 and allowed Plaintiff’s Mark to proceed to
`
`registration over Sazerac’s objection. A copy of that decision is attached as Exhibit A. In reaching
`
`this decision, the Intellectual Property Office in the United Kingdom said as follows:
`
`In the present case, the mark is applied to the back of the bottles of whisky. I do not
`consider this placement of the words to draw the consumer’s attention in a way
`which would indicate the origin of the goods. In my view, it is likely to go unnoticed
`by the average consumer as I am not persuaded that they will be paying a minute
`attention to the details on the reverse of the bottles when they are choosing or
`consuming the product. Further, IGNITE THE NITE is not the mark by which
`consumers refer to the goods, would select them from the shelves of physical stores
`or order them from a bar or other establishment….IGNITE THE NITE is not the
`company name of the undertaking marketing FIREBALL whisky. To my mind, the
`evidence indicates that IGNITE THE NITE is a promotional message or marketing
`
`5 Plaintiff’s trademark application in the United Kingdom included the following relevant goods:
`“Vodka, tequila and seltzers only.” Order at p. 2.
`
`135354841.1
`
`9
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 10 of 13 PageID# 10
`
`
`
`slogan. Aside from its use on the back of the whisky bottles, IGNITE THE NITE
`is used on social media predominantly as a hashtag and usually amongst other
`hashtags. This points to an advertising method rather than an attempt to guarantee
`to the consumer the identity of the origin of the goods. I do not consider the use of
`IGNITE THE NITE to be consistent with the essential function of a trade mark….
`
`IGNITE THE NITE has not been shown to distinguish the opponent’s goods from
`other undertakings and so it cannot satisfy the same criterion under the law of
`passing off.
`
`
`Id. at p. 19, 21 (emphasis added). A copy of Plaintiff’s Registration Certificate for its Mark as
`
`registered in the United Kingdom is attached as Exhibit B.
`
`47.
`
`The Intellectual Property Office of the Philippines rejected Sazerac’s opposition to
`
`the registration of Plaintiff’s Mark and found that there was no likelihood of confusion. A copy of
`
`that decision is attached as Exhibit C. When comparing Plaintiff’s Mark6 and the Cited Mark, the
`
`Intellectual Property Office of the Philippines said as follows:
`
`The Bureau does not agree with [Sazerac’s] argument that “IGNITE” is the
`dominant feature of its trademark because there is nothing in the mark that provides
`emphasis in the word “IGNITE.” Moreover, [Sazerac’s] mark appears to be a
`slogan that conveys a message which only support the treatment of the whole
`phrase as the dominant feature and not to single out a particular word. Considering
`the above differences and the distinguishable elements in the contending
`trademarks, it would be highly unlikely that the consumers would be confused
`between the products of the parties or associate the source of one with the other….
`
`[Sazerac’s] mark appears to be a secondary mark[] placed at the back portion of its
`FIREBALL cinnamon whisky. In this respect, there is merit to the contention…that
`the “IGNITE THE NITE” mark is not use[d] as a source identifier of Opposer’s
`products but a mere advertising tag line….
`
`Opposer was not able to prove that its “IGNITE THE NITE” mark is well-known
`internationally and in the Philippines.
`
`
`Id. at p. 10-12 (emphasis added).
`
`
`6 Plaintiff’s trademark application in the Philippines included the following relevant goods:
`“Alcoholic beverages, except beer.” Notice of Decision at p. 2.
`
`135354841.1
`
`10
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 11 of 13 PageID# 11
`
`
`
`48.
`
`The Instituto Mexicano de la Propiedad Industrial in Mexico also rejected Sazerac’s
`
`opposition to the registration of Plaintiff’s Mark. A copy of that decision is attached as Exhibit D.
`
`A copy of Plaintiff’s Registration Certificate for its Mark as registered in Mexico is attached as
`
`Exhibit E.
`
`49.
`
`In Israel, while Sazerac initially opposed Plaintiff’s Mark, Sazerac later withdrew
`
`its objection and Plaintiff’s Mark proceeded to registration. A copy of Plaintiff’s Registration
`
`Certificate for its Mark as registered in Israel is attached as Exhibit F.
`
`50.
`
`In New Zealand, Sazerac opposed Ignite’s trademark application for Plaintiff’s
`
`Mark in Class 33 for “Alcoholic beverages, except beer” based on its claim that Plaintiff’s Mark
`
`is likely to deceive or confuse consumers with respect to its IGNITE THE NITE mark. The
`
`Intellectual Property Office of New Zealand rejected Sazerac’s opposition and is allowing
`
`Plaintiff’s Mark to proceed. A copy of that decision is attached as Exhibit G. In reaching this
`
`decision, the Intellectual Property Office of New Zealand found that, although the threshold for
`
`establishing awareness of a mark is relatively low, Sazerac failed to demonstrate the requisite level
`
`of consumer awareness of its IGNITE THE NITE mark. Id. at p. 7.
`
`CAUSE OF ACTION
`
`Request for Judicial Review and Reversal of the TTAB Decision Under
`Section 21 of the Lanham Act, 15 U.S.C. § 1071(b)(1)
`
`51.
`
`Plaintiff incorporates by reference the preceding paragraphs as if fully set forth
`
`herein.
`
`52.
`
`Plaintiff requests that the Court hold as a matter of law that the TTAB erred in
`
`refusing registration of Plaintiff’s Mark.
`
`135354841.1
`
`11
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 12 of 13 PageID# 12
`
`
`
`53.
`
`Plaintiff requests that the Court hold as a matter of law that the TTAB erred in
`
`refusing registration of Plaintiff’s Mark on the basis that there is allegedly a likelihood of confusion
`
`with the Cited Registration.
`
`54.
`
`Plaintiff requests that the Court find as a matter of law that the Application is
`
`available for registration.
`
`55.
`
`The Court should direct the Director to pass the Application to publication without
`
`requiring any amendment to the Application.
`
`PRAYER OF RELIEF
`
`WHEREFORE, Plaintiff requests this Court enter judgment
`
`(a)
`
`(b)
`
`(c)
`
`reversing the TTAB Decision, dated January 12, 2024,
`
`ordering Plaintiff’s Application to proceed to publication without any amendment,
`
`declaring that Plaintiff’s Mark does not lead to the likelihood of confusion with the
`
`Cited Mark IGNITE THE NITE,
`
`(d)
`
`requiring the United States Patent and Trademark Office to approve the Application
`
`for publication and subsequent registration upon Plaintiff’s establishment of a valid
`
`base for registration under Lanham Act Section 1(a), and
`
`(e)
`
`awarding Plaintiff such other relief as this Court may deem proper.
`
`
`
`
`
`
`135354841.1
`
`12
`
`

`

`Case 1:24-cv-00397 Document 1 Filed 03/13/24 Page 13 of 13 PageID# 13
`
`Respectfully submitted this 13th day of March 2024.
`
`
`
`
`
`
`
`
`
`
`
`CARLTON FIELDS, P.A.
`
`
`By: /s/ Daniel K. Felsen
`Daniel K. Felsen
`Virginia Bar No. 32922
`1025 Thomas Jefferson Street, N.W.
`Suite 400 West
`Washington, DC 20007
`(202) 965-8100
`(202) 965-8104 (fax)
`Email: dfelsen@carltonfields.com
`
`Gail Podolsky
`(to be admitted pro hac vice)
`1201 West Peachtree Street, Suite 3000
`Atlanta, Georgia 30309
`404-815-3400
`404-815-3415 (fax)
`Email: gpodolsky@carltonfields.com
`
`Attorneys for Plaintiff
`
`135354841.1
`
`13
`
`

`

`JS 44 (Rev. 04/21)
`
`(b) County of Residence of First Listed Plaintiff
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`Dallas County, Texas
`
`Case 1:24-cv-00397 Document 1-1 Filed 03/13/24 Page 1 of 2 PageID# 14
`CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`Kathi Vidal, in her capacity as Director
`I. (a) PLAINTIFFS
`DEFENDANTS
`of the United States Patent & Trademark Office; and
`Ignite International, Ltd.
`The United States Patent & Trademark Office;
`Alexandria
`County of Residence of First Listed Defendant
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`Daniel K. Felsen
`Carlton Fields, P.A.
`1025 Thomas Jefferson Street, N.W., Suite 400 West
`Washington, D.C. 20007 (202) 965-8100
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`1 U.S. Government
`Plaintiff
`
`✖
`
`3 Federal Question
`(U.S. Government Not a Party)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`and One Box for Defendant)
`(For Diversity Cases Only)
`PTF
`PTF
`1
`
`DEF
`1
`
`Incorporated or Principal Place
`of Business In This State
`
`DEF
`4
`
`4
`
`Citizen of This State
`
`NOTE:
`
`Attorneys (If Known)
`
`2 U.S. Government
`Defendant
`
`4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
`CONTRACT
`TORTS
`
`110 Insurance
`120 Marine
`130 Miller Act
`140 Negotiable Instrument
`150 Recovery of Overpayment
`& Enforcement of Judgment
`151 Medicare Act
`152 Recovery of Defaulted
`Student Loans
`(Excludes Veterans)
`153 Recovery of Overpayment
`of Veteran’s Benefits
`160 Stockholders’ Suits
`190 Other Contract
`195 Contract Product Liability
`196 Franchise
`
`REAL PROPERTY
`210 Land Condemnation
`220 Foreclosure
`230 Rent Lease & Ejectment
`240 Torts to Land
`245 Tort Product Liability
`290 All Other Real Property
`
`PERSONAL INJURY
`310 Airplane
`315 Airplane Product
`Liability
`320 Assault, Libel &
`Slander
`330 Federal Employers’
`Liability
`340 Marine
`345 Marine Product
`Liability
`350 Motor Vehicle
`355 Motor Vehicle
`Product Liability
`360 Other Personal
`Injury
`362 Personal Injury -
`Medical Malpractice
`CIVIL RIGHTS
`440 Other Civil Rights
`441 Voting
`442 Employment
`443 Housing/
`Accommodations
`445 Amer. w/Disabilities -
`Employment
`446 Amer. w/Disabilities -
`Other
`448 Education
`
`PERSONAL INJURY
`365 Personal Injury -
`Product Liability
`367 Health Care/
`Pharmaceutical
`Personal Injury
`Product Liability
`368 Asbestos Personal
`Injury Product
`Liability
`PERSONAL PROPERTY
`370 Other Fraud
`371 Truth in Lending
`380 Other Personal
`Property Damage
`385 Property Damage
`Product Liability
`
`PRISONER PETITIONS
`Habeas Corpus:
`463 Alien Detainee
`510 Motions to Vacate
`Sentence
`530 General
`535 Death Penalty
`Other:
`540 Mandamus & Other
`550 Civil Rights
`555 Prison Condition
`560 Civil Detainee -
`Conditions of
`Confinement
`
`Citizen or Subject of a
`Foreign Country
`
`FORFEITURE/PENALTY
`
`625 Drug Related Seizure
`of Property 21 USC 881
`690 Other
`
`LABOR
`710 Fair Labor Standards
`Act
`720 Labor/Management
`Relations
`740 Railway Labor Act
`751 Family and Medical
`Leave Act
`790 Other Labor Litigation
`791 Employee Retirement
`Income Security Act
`
`IMMIGRATION
`462 Naturalization Application
`465 Other Immigration
`Actions
`
`2
`
`3
`
`2
`
`Incorporated and Principal Place
`of Business In Another State
`
`3
`
`Foreign Nation
`
`5
`
`6
`
`5
`
`6
`
`Click here for: Nature of Suit Code Descriptions.
`BANKRUPTCY
`OTHER STATUTES
`
`✖
`
`422 Appeal 28 USC 158
`423 Withdrawal
`28 USC 157
`
`INTELLECTUAL
`PROPERTY RIGHTS
`
`820 Copyrights
`830 Patent
`835 Patent - Abbreviated
`New Drug Application
`840 Trademark
`880 Defend Trade Secrets
`Act of 2016
`
`SOCIAL SECURITY
`861 HIA (1395ff)
`862 Black Lung (923)
`863 DIWC/DIWW (405(g))
`864 SSID Title XVI
`865 RSI (405(g))
`
`FEDERAL TAX SUITS
`870 Taxes (U.S. Plaintiff
`or Defendant)
`871 IRS—Third Party
`26 USC 7609
`
`375 False Claims Act
`376 Qui Tam (31 USC
`3729(a))
`400 State Reapportionment
`410 Antitrust
`430 Banks and Banking
`450 Commerce
`460 Deportation
`470 Racketeer Influenced and
`Corrupt Organizations
`480 Consumer Credit
`(15 USC 1681 or 1692)
`485 Telephone Consumer
`Protection Act
`490 Cable/Sat TV
`850 Securities/Commodities/
`Exchange
`890 Other Statutory Actions
`891 Agricultural Acts
`893 Environmental Matters
`895 Freedom of Information
`Act
`896 Arbitration
`899 Administrative Procedure
`Act/Review or Appeal of
`Agency Decision
`950 Constitutionality of
`State Statutes
`
`V. ORIGIN (Place an “X” in One Box Only)
`1 Original
`2 Removed from
`Proceeding
`State Court
`
`✖
`
`3 Remanded from
`Appellate Court
`
`4 Reinstated or
`Reopened
`
`5 Transferred from
`Another District
`(specify)
`
`6 Multidistrict
`Litigation -
`Transfer
`
`8 Multidistrict
`Litigation -
`Direct File
`
`VI. CAUSE OF ACTION
`
`VII. REQUESTED IN
`COMPLAINT:
`
`VIII. RELATED CASE(S)
`IF ANY
`
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`15 U.S.C. § 1071(b)(1) and 37 CFR § 2.145
`Brief description of cause:
`Appeal from a decision of the Trademark Trial and Appeal Board of the USPTO
`
`CHECK IF THIS IS A CLASS ACTION
`UNDER RULE 23, F.R.Cv.P.
`
`DEMAND $
`
`CHECK YES only if demanded in complaint:
`
`JURY DEMAND:
`
`Yes
`
`✖
`
`No
`
`(See instructions):
`
`JUDGE
`
`DOCKET NUMBER
`
`DATE
`
`SIGNATURE OF ATTORNEY OF RECORD
`
`FOR OFFICE USE ONLY
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`

`

`Case 1:24-cv-00397 Document 1-1 Filed 03/13/24 Page 2 of 2 PageID# 15
`JS 44 Reverse (Rev. 04/21)
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`
`Authority For Civil Cover Sheet
`
`The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
`required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
`required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
`Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
`
`I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
`only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and then
`the official, giving both name and title.
` (b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
`time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
`condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)
` (c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
`in this section "(see attachment)".
`
`II.
`
`Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
`in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
`United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
`United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
`Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment
`to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes
`precedence, and box 1 or 2 should be marked.
`Diversity of citizenship.