Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA34230
`
`Filing date3
`
`05/27/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`91 120519
`Plaintiff
`EXXON MOBIL CORPORATION
`
`1 Z
`
`Proceeding
`
`Party
`
`7 S
`
`TEPHEN P. MELEEN & LOUIS T. PIRKEY
`Correspondence FULBRIGHT & JAWORSKI L.L.P.
`Address
`3 600 CONGRESS AVENUE, SUITE 2400
`AUSTIN, TX 78701
`
`Submission
`
`Filer's Name
`Filer's e—mail
`Signature
`Date
`
`Attachments
`
`OppOser's Reply Brief in Support of Its Motion to Suspend
`§ Proceeding Pending Civil Action
`
`Stephen P. Meleen
`sn1e1een@fi.11bright.eOn1, aOtraden1ark@fi.11bright.eOn1
`/spml
`05/27/2005
`
`DEXXON rep1y.pdf ( 3 pages )
`Exhibit A.pdf ( 25 pages )
`Exhibit B.pdf ( 2 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EXXON MOBIL CORPORATION,
`
`Opposer,
`
`V.
`
`DATAWORX, R.V.
`
`Applicant.
`
`CA036O'3C4O'30O'>0O0003003UO'J60>
`
`Opposition No. 91120519
`
`OPPOSER’S REPLY BRIEF IN SUPPORT OF ITS
`
`MOTION TO SUSPEND PROCEEDING PENDING CIVIL ACTION
`
`In accordance with TBMP § 502.02(b), Opposer submits this reply brief to respond to the
`
`issues raised in Applicant’s Motion in Response to Opposer’s Motion to Suspend Proceeding
`
`Pending Civil Action (“Applicant’s Response”). Applicant’s Response does not argue that this
`
`proceeding should continue despite the pending civil action. Rather, Applicant’s Response
`
`merely questions whether a civil action is actually pending, based on the fact that the copy of the
`
`Complaint attached to Opposer’s motion did not bear a “Filed” stamp from the court.
`
`Opposer hereby confirms that a civil action is pending. The Complaint attached to
`
`Opposer’s motion was filed on May 5, 2005 in the United States District Court for the Northern
`
`District of Texas, Dallas Division, and assigned Civil Action No. 3~O5CV—O9l8M. A “Filed”
`
`stamped copy of the Complaint, with the Civil Action Number, is attached hereto as Exhibit A.
`
`Opposer’s motion to suspend was filed that same day, and Opposer’s undersigned counsel had
`
`not yet received the “Filed” stamped copy back from the court.
`
`Opposer notes that the Complaint has been served on Applicant’s co—defendant in the
`
`case, Dexxon Digital Storage, Inc., which is located in the United States. A copy of the executed
`
`255396301
`
`

`
`Summons showing such service is attached hereto as Exhibit B. Opposer is still in the process of
`
`effecting service on Applicant, who is located in the Netherlands.
`
`Because there can be no serious dispute that the civil action is indeed pending, and
`
`because Applicant has not disputed that final disposition of the Civil Action “may have a bearing
`
`on this case,” this Opposition should be suspended pending final determination of the Civil
`
`Action. 37 C.F.R. § 2.117(a), TBMP 510.02(a).
`
`Accordingly, Opposer respectfully requests that all further proceedings in Opposition No.
`
`91120519 be suspended by the Board pending the outcome of Civil Action No. 3-05CV-0918M
`
`in the United States District Court for the Northern District of Texas, Dallas Division. Opposer
`
`reiterates its request that if and when this Opposition is removed from suspended status, or if this
`
`Request for Suspension is denied, that the Board reset all trial dates.
`
`This motion is being filed electronically, and no fee is believed to be due in connection
`
`with the filing of this document. However, should any fee under 37 C.F.R. § 2.6 be deemed
`
`necessary for any reason relating to this document, the Commissioner for Trademarks is hereby
`
`authorized to deduct said fee from Fulbright & Jaworski Account No.: 50-1212/EXCO:078/SPM.
`
`Respectfully submitted,
`
`57.5 2/Z/L
`
`5"/27/pg’
`
`Louis T. Pirkey
`William G. Barber
`
`Stephen P. Meleen
`FULBRIGHT & JAWORSKI
`
`600 Congress AVe., Suite 2400
`Austin, Texas 78701
`
`Tel: (512) 474-5201
`Fax: (512) 536-4598
`
`ATTORNEYS FOR OPPOSER
`
`255396301
`
`

`
`CERTIFICATE OF SERVICE
`
`I certify that on May 27, 2005, I caused to be served the foregoing MOTION TO
`
`SUSPEND PROCEEDING PENDING CIVIL ACTION by first class mail, postage pre-paid, to
`
`the following attorney for Applicant:
`
`Jess M. Collen
`
`COLLEN IP Intellectual Property Law, P.C.
`80 South Highland Avenue
`Ossining, New York 10562
`
`Emma,
`
`25539630.1
`
`

`
`
`
`I
`
`U.S. EISTRICT COURT
`IVORTHERN DISTRICT OF TEXAS
`FILED
`
`
`
`__
`
`IN THE UNITED STATES DISTRICT OURT
`FOR THE NORTHERN DISTRICT o1= TEXAS
`DALLAS DIVISION
`
`MAY
`
`5 2005
`
`CLERK, U.S. DISTRICT COURT .
`
`By
`3'
`Deputy
`
`EXXON MOBIL CORPORATION,
`
`Plaintiff,
`
`V.
`
`§
`§
`§
`
`
`
`.
`
`p
`
`,
`
`§ 3"05CV 0918M
`§
`CIVIL ACTION NO.
`
`IURY TRIAL DEMANDED
`
`§
`
`§
`
`§ §
`
`§
`
`DEXXON DIGITAL STORAGE, INC. and
`
`DATAWORX, R.V.
`
`Defendants.
`
`EXXONMOBIL’S COMPLAINT
`
`FOR TRADEMARK INFRINGEMENT, DILUTION,
`UNFAIR COMPETITION AND REFUSAL OF REGISTRATION
`
`For its complaint, Exxon Mobil Corporation, appearing through the undersigned counsel,
`
`alleges as follows based on present knowledge, information and belief:
`
`PARTIES
`
`1.
`
`Exxon Mobil Corporation (“ExxonMobil”) is a New Jersey corporation having its
`
`principal place of business at 5959 Las Colinas Boulevard, Irving, Texas 75039.
`
`2.
`
`Defendant Dexxon Digital Storage, Inc. is a Delaware corporation with a business
`
`address of 7611 Green Meadows Drive, Lewis Center, Ohio 43035.
`
`3.
`
`Defendant Dataworx R.V. is a Netherlands corporation with a business address of
`
`Broekveldselaan 7a, 2411 NL Bodegraven, Netherlands.
`
`4.
`
`On information and belief, Defendants Dexxon Digital Storage, Inc. and Dataworx
`
`R.V. share the Sa1ne ownership and control, and operate in cooperation with each other. Except
`
`2553l708J
`
`

`
`where identified individually, defendants are hereinafter collectively referred to as the “Dexxon
`
`Defendants.”
`
`NATURE OF ACTION AND JURISDICTION
`
`5.
`
`This is an action for trademark infiingement, dilution, and unfair competition
`
`under the Trademark Act of 1946, as amended, 15 U.S.C. § 1051 et seq. (“Lar1ham Act”), and the
`
`laws of the State of Texas and other states.
`
`6.
`
`This Court has jurisdiction over this action under Section 39 of the Lanham Act,
`
`15 U.S.C. § 1121, and Title 28 of the United States Code, §§ 1331 and 1338, and supplemental
`
`jurisdiction over ExxonMobil’s state law claims under 28 U.S.C. § l367(a). The matter in
`
`controversy in this action exceeds the sum or value of $75,000, exclusive of interest and costs,
`
`and is between citizens of different states and a foreign state, so this Court also has subject matter
`
`jurisdiction pursuant to 28 U.S.C. § 1332.
`
`A.
`
`ExxonMobil and Its EXXON Marks
`
`7.
`
`Since at
`
`least as early as 1967, ExxonMobil has continuously used the mark
`
`EXXON in commerce in connection with a wide variety of products and services, including the
`
`sale and promotion of gasoline, motor oil, and other petroleum products, chemical products, and
`
`various other products and services.
`
`8.
`
`EXXON stations are among the most widespread and recognizable gasoline
`
`stations in the United States. There are thousands of EXXON branded retail gasoline stations in
`
`the United States with billions of dollars in annual sales. Over the years, ExxonMobil has
`
`invested great effort and resources promoting its EXXON stations and spent many millions of
`
`dollars advertising them.
`
`25531708.1
`
`2
`
`

`
`9.
`
`Since at least 1971, ExxonMobil has presented its mark EXXON in a stylized
`
`format that includes a distinctive Interlocking X Device (“IXD”), such as in the famous EXXON
`
`Emblem shown immediately below.
`
`
`
`10.
`
`ExxonMobil has also for many years used the IXD as mark standing alone, as
`
`shown below, to promote its sale of motor fuels and other products and services.
`
`11.
`
`In 1999 Exxon Corporation, in connection with its acquisition of Mobil Corporation
`
`and its subsidiaries, adopted the corporate and trade name Exxon Mobil Corporation and the mark
`
`EXXONMOBIL, both of which incorporate the mark EXXON. ExxonMobil has come to sell a
`
`number of its products, including its various chemical products, in commerce under the mark
`
`EXXONMOBIL, and uses that mark in both plain text and in a stylized fonnat that incorporates the
`
`IXD, as shown immediately below.
`
` E);(onMobil_
`
`l2.
`
`ExxonMobil’s marks EXXON, EXXONMOBIL, and the IXD (hereinafter
`
`collectively identified as the “EXXON Marks”) constitute a family of marks, and relevant
`
`consumers recognize and rely upon ExxonMobi1’s family of EXXON Marks as an indicator of
`
`origin.
`
`25531708.]
`
`3
`
`

`
`13.
`
`In addition to its extensive common—law rights, ExxonMobil owns numerous federal
`
`trademark registrations for its EXXON Marks, including U.S. Reg. No. 902,044 for the mark
`
`EXXON, U.S. Reg. No. 968,512 for the mark EXXON
`
`Design (the EXXON Emblem), U.S.
`
`Reg. No. No. 2,305,494 for its mark IXD, U.S. Reg. No. 2,791,743 for the mark EXXONMOBIL
`
`(Stylized), and U.S. Reg. No. 1,970,069 for the mark EXXON CHEMICAL & Design. Each of
`
`these registrations is valid and subsisting, and some are now incontestable. Copies of pages from
`
`the U.S. Patent & Trademark Office’s Trademark Electronic Service System (TESS) for these
`
`registrations are attached hereto as Exhibit A.
`
`14.
`
`ExxonMobil’s EXXON Marks are inherently distinctive, serving to identify and
`
`indicate the source of ExxonMobil’s products and services to the consuming public, and to
`
`distinguish ExxonMobil’s products and services from those of others.
`
`15.
`
`Additionally, as a result of ExxonMobil’s extensive use and promotion of its
`
`. EXXON Marks, they have become distinctive to designate ExxonMobil, and are well-known and
`
`widely recognized by consumers in Texas and throughout the United States. ExxonMobil has
`
`invested millions of dollars in advertising and promoting its EXXON Marks and the goods and
`
`services sold under those marks, and has developed great and valuable goodwill in its EXXON
`
`Marks.
`
`16.
`
`The EXXON Marks are famous and consumers have come to associate those
`
`marks uniquely with ExxonMobil and its goods and services.
`
`17.
`
`ExxonMobil has developed and now owns strong common-law rights in its
`
`EXXON Marks in Texas and throughout the United States.
`
`2553 1708.1
`
`4
`
`

`
`B.
`
`Defendants’ Activities
`
`18.
`
`Dataworx R.V. filed Application Serial No. 75/511,805 in the United States Patent
`
`and Trademark Office to register the mark DEXXON for the following goods in International Class
`9: “computers and computer peripherals; optical appliances and instruments, namely, optical disk
`
`readers; computer storage devices and media, namely, blank optical disks; blank audio disks; blank
`
`audio cassette tapes; blank re-writeable CD—ROM disks; head cleaning cartridges for computer
`
`storage devices and data storage equipment; blank computer hard disks; removable disks and tape
`
`backup drives for computers; blank digital linear tape cartridges; blank 4 mm and 8 mm computer
`storage tapes; blank removable three and half inch and five and quarter inch floppy disks.” In
`
`doing so, Dataworx R.V. declared under oath its intent to use the mark DEXXON in connection
`
`with such goods in United States commerce.
`
`19.
`
`In a transaction that was subject to the jurisdiction of the Bankruptcy Court for the
`
`Northern District of Texas and was approved by that court, Defendant Dexxon Digital Storage, Inc.
`
`acquired substantially all of the assets of Digital Storage, Inc.
`
`20.
`
`Since the acquisition of assets via the bankruptcy court in this district, the Dexxon
`
`Defendants have used the mark DEXXON in United States commerce. Specifically, the Dexxon
`
`Defendants have sold and are selling products and services under the mark DEXXON in commerce
`
`in this district and throughout the United States.
`
`21.
`
`The Dexxon Defendants operate Internet websites at www.dexxon.com and
`
`www.dititalstorage.com. The Dexxon Defendants use the mark DEXXON on both of these
`
`websites.
`
`25531 708.1
`
`5
`
`

`
`22.
`
`The Dexxon Defendants use the mark DEXXON in a design format in which the
`
`“XX” portion of the mark is presented in an interlocking manner similar to ExxonMobil’s famous
`
`mark IXD, as shown immediately below:
`
`
`
`23.
`
`The Dexxon Defendants also use a standalone interlocking X design mark in
`
`connection with thesale of their goods and services.
`
`24.
`
`ExxonMobil has priority based on its use and registration of its EXXON Marks in
`
`the United States for many years prior to the Dexxon Defendants’ use or application to register the
`
`mark DEXXON.
`
`25.
`
`The Dexxon Defendants’ use of the mark DEXXON began after ExxonMobil’s
`
`EXXON Marks became famous.
`
`C.
`
`Effect of Defendants’ Activities on ExxonMobil and the Consuming Public
`
`26.
`
`The Dexxon Defendants’ mark DEDOCON is confusingly similar to ExxonMobi1’s
`
`EXXON Marks.
`
`The mark DEXXON is virtually identical
`
`to and incorporates entirely
`
`ExxonMobil’s mark EXXON.
`
`27.
`
`ExxonMobil’s EXXON Marks are of sufficient
`
`fame and reputation among
`
`consumers such that when the mark DEXXON is used for the Dexxon Defendants’ products and
`
`services, consumers would presume a connection with ExxonMobil.
`
`25531708.1
`
`5
`
`

`
`28.
`
`The Dexxon Defendants’ unauthorized use of the mark DEXXON is likely to
`
`cause confusion, to cause mistake, and to deceive customers and potential customers of the
`
`parties as to some affiliation, connection or associationnof the Dexxon Defendantsland their
`
`products or services with ExxonMobil, or as to the origin, sponsorship, or approval of the
`
`Dexxon Defendants’ products or services by ExxonMobil.
`
`29.
`
`The Dexxon Defendants’ unauthorized use of the mark DEXXON falsely
`
`indicates to the purchasing public that the Dexxon Defendants, their business, and their products
`
`or services originate with ExxonMobil, or are affiliated, connected, or associated with
`
`ExxonMobil, or are sponsored, endorsed, or approved by ExxonMobil, or are in some manner
`
`related to ExxonMobil or its goods or services.
`
`30.
`
`The Dexxon Defendants’ mark DEXXON, when used in connection with the
`
`Dexxon Defendants’ products and services, causes and is likely to cause dilution of EXxonMobil’s
`
`famous and distinctive EXXON Marks, individually and collectively.
`
`31.
`
`The Dexxon Defendants’ unauthorized use of the confusingly similar mark
`
`DEXXON places the valuable reputation and goodwill of ExxonMobi1 in the hands of the
`
`Dexxon Defendants, over whom ExxonMobil has no control.
`
`32.
`
`As a result of the Dexxon Defendants’ unauthorized use of the mark DEXXON,
`
`the Dexxon Defendants are being unjustly enriched at ExxonMobil’s expense.
`
`33.
`
`ExxonMobil has informed the Dexxon Defendants of its objections to the Dexxon
`
`Defendants’ use and attempted registration of the mark DEXXON, and timely filed an opposition
`
`(Opposition No. 91-120,519) in the U. S. Patent & Trademark Office against Dataworx R.V.’s
`
`Application Serial No. 75/51 1,805.
`
`25531708.]
`
`7
`
`

`
`34.
`
`The Dexxon Defendants’ use of the mark DEXXON is without the permission or
`
`authority of ExxonMobil.
`
`35.
`
`Unless these infringing and diluting acts by the Dexxon Defendants are restrained
`
`by this Court, they will cause irreparable injury to ExxonMobil and to the public, for which there
`
`is no adequate remedy at law.
`
`D.
`
`Willful Nature of Defendants’ Infringemeng Dilution, and Unfair Competition
`
`36.
`
`The Dexxon Defendants’ acts of infringement, dilution, and unfair competition
`
`complained of herein have been malicious, fraudulent, deliberate, willful, intentional, and in bad
`faith, with full knowledge and conscious disregard of ExxonMobil’s rights.
`In View of the
`
`egregious nature of the Dexxon Defendants’ actions, this is an exceptional case within the
`
`meaning of Section 35(a) of the Lanham Act, 15 U.S.C. § 11l7(a).
`
`COUNT 1: DILUTION UNDER TEXAS LAW
`
`37.
`
`ExxonMobil repeats the above allegations as if fully set forth herein.
`
`38.
`
`The acts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxonMobil’s EXXON Marks in violation of the Texas anti-dilution statute, Tex. Bus. & Com.
`
`Code § 16.29.
`
`COUNT 2: TRADEMARK INFRINGEMENT
`
`UNDER THE COMMON LAW OF TEXAS
`
`39.
`
`ExxonMobil repeats the above allegations as if fully set forth herein.
`
`40.
`
`The acts of the Dexxon Defendants complained of herein constitute trademark
`
`infringement in violation of the common law of Texas
`
`25531708.1
`
`3
`
`

`
`COUNT 3: UNFAIR COMPETITION UNDER THE
`COMMON LAW OF TEXAS
`
`41.
`
`ExxonMobi1 repeats the above allegations as if fully set forth herein.
`
`42.
`
`The acts of the Dexxon Defendants complained of herein constitute unfair
`
`competition in violation of the common law of Texas.
`
`COUNT 4: FEDERAL TRADEMARK INFRINGEMENT
`
`43.
`
`ExxonMobil repeats the above allegations as if fully set forth herein.
`
`44.
`
`The acts of the Dexxon Defendants complained of herein constitute infringement
`
`of ExxonMobil’s registered marks in violation of Section 32 of the Lanham Act, 15 U.S.C. §
`
`lll4.
`
`COUNT 5: FEDERAL UNFAIR COMPETITION
`
`45.
`
`ExxonMobil repeats the above allegations as if fully set forth herein.
`
`46.
`
`The acts of the Dexxon Defendants complained of herein constitute trademark
`
`infringement and unfair competition in violation of Section 43 (a) of the Lanham Act, 15 U.S.C. §
`
`1 l25(a).
`
`COUNT 6: FEDERAL DILUTION
`
`47.
`
`ExxonMobil repeats the above allegations as if fully set forth herein.
`
`48.
`
`The acts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxonMobil’s famous marks in violation of Section 43(0) of the Lanham Act, 15 U.S.C. §
`
`1 125(0).
`
`25531708.}
`
`9
`
`

`
`49.
`
`The Dexxon Defendants willfully intended to trade on ExxonMobil’s reputation
`
`and to cause such dilution.
`
`COUNT 7: DILUTION UNDER THE LAWS OF OTHER STATES
`
`50.
`
`ExxonMobi1 repeats the above allegations as if fully set forth herein.
`
`51.
`
`The acts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxonMobil’s EXXON Marks in violation of the Alabama anti-dilution statute, Ala. Code § 8-
`
`12-18.
`
`52.
`
`Theiacts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxonMobil’s EXXON Marks in Violation of the California anti—dilution statute, Cal. Bus. &
`
`Prof. Code § 14330.
`
`53.
`
`The acts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxonMobil’s EXXON Marks in Violation of the Delaware anti—dilution statute, Del. Code A11n.
`
`tit. 6, § 3313.
`
`54.
`
`The acts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxonMobil’s EXXON Marks in Violation of the Florida anti-dilution statute, Fla. Stat. §
`
`495.151.
`
`55.
`
`The acts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxonMobil’s EXXON Marks in violation of the Georgia anti—dilution statute, O.C.G.A. § 10-1-
`
`451(b).
`
`56.
`
`The acts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxonMobil’s EXXON Marks in Violation of the Louisiana anti—dilution statute, La. Rev. Stat.
`
`Ann. 5l:223.l.
`
`2553 1 708.1
`
`10
`
`

`
`57.
`
`The acts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxonMobil’s EXXON Marks in violation of the Maine anti-dilution statute, 10 M.R.S.A. §
`
`1530.
`
`58.
`
`The acts of the Dexxon Defendants complained Of herein constitute dilution of
`
`ExxOnMObil’s EXXON Marks in Violation of the Massachusetts anti-dilution statute, MA ST
`
`110B, § 12.
`
`59.
`
`The acts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxOnMobil’s EXXON Marks in Violation of the New Hampshire anti-dilution statute, RSA
`
`350-A112.
`
`I
`
`i
`
`60.
`
`The acts Of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxOnMObil’s EXXON Marks in violation of the New York anti-dilution statute, New York
`
`General Business Law § 360-1.
`
`61.
`
`The acts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxonMobil’s EXXON Marks in violation of the common law of Ohio.
`
`62.
`
`The acts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxOnMObil’s EXXON Marks in Violation of the Oregon anti-dilution statute, ORS 647.107.
`
`63.
`
`The acts of the Dexxon Defendants complained of herein constitute dilution of
`
`ExxOnMObil’s EXXON Marks in Violation of the Rhode Island anti-dilution statute, R.l. Gen.
`
`Laws § 6-2-12.
`
`COUNT 8: REFUSAL OF APPLICATION FOR REGISTRATION
`
`64.
`
`ExxonMobil repeats the above allegations as if fully set forth herein.
`
`2553 1 708.1
`
`11
`
`

`
`65.
`
`This Court has the power under 15 U.S.C. § lll9 to determine Dataworx R.V.’s
`
`right to registration of the mark DEXXON.
`
`66.
`
`Dataworx R.V.’s mark DEXXON,
`
`the H subject of Application Serial No.
`
`75/511,805, so resembles ExxonMobi1’s EXXON Marks as to be likely to cause confusion, or to
`
`cause mistake, or to deceive, and/or to cause dilution of its famous EXXON Marks, individually
`
`and collectively. Registration should therefore be refused under 15 U.S.C. § 1052.
`
`WHEREFORE, ExxonMobil prays that:
`
`a)
`
`The Dexxon Defendants, their officers, agents, servants, employees, attorneys,
`
`and all those persons in active concert or participation with them, be permanently
`
`enjoined from using the mark DEXXON, any mark featuring an interlocking X
`
`design, and any other mark that is confusingly similar to or diluting of any of
`
`ExxonMobil’s EXXON Marks;
`
`b)
`
`The Dexxon Defendants, their officers, agents, servants, employees, attorneys,
`
`and all those persons in active concert or participation with them, be required to
`
`modify all products, packaging, and promotional material, including all Internet
`
`and other electronic communications or representations, to eliminate the mark
`
`DEXXON and any interlocking X design mark;
`
`(0)
`
`The Dexxon Defendants, their officers, agents, servants, employees, attorneys,
`
`and all those persons in active concert or participation with them, be required to
`
`deliver to the Court for destruction, or show proof of destruction of, any and all
`
`products,
`
`labels,
`
`signs,
`
`prints,
`
`packages, wrappers,
`
`receptacles,
`
`and
`
`25531708.]
`
`12
`
`

`
`advertisements, and any other materials in the Dexxon Defendants’ possession or
`
`control that use mark DEXXON or any interlocking X design mark in any manner
`
`whatsoever;
`
`<1)
`
`The Dexxon Defendants be ordered to file with this Court and to serve upon
`
`ExxonMobi1, within 30 days after the entry and service on the Dexxon Defendants
`
`of an injunction, a report in writing and under oath setting forth in detail the
`
`manner and form in which the Dexxon Defendants have complied with. the
`
`injunction;
`
`ExxonMobil recover all damages it sustains as a result of the Dexxon Defendants’
`
`infringement, dilution, and unfair competition, and that said damages be trebled;
`
`g)
`
`An accounting be directed to determine the Dexxon Defendants’ profits resulting
`
`from their activities complained of herein, and that such profits be paid over to
`
`ExxonMobi1, increased as the Court finds to be just under the circumstances of
`
`this case;
`
`h)
`
`The Court enter an Order pursuant to 15 U.S.C. §"lll9, certified to the United
`
`States Patent and Trademark Office, directing that U.S. Application Serial No.
`
`75/511,805 be refused with prejudice;
`
`ExxonMobil recover its reasonable attorney fees;
`
`J)
`
`k)
`
`ExxonMobil recover its costs of this action and prejudgment and post-judgment
`
`interest; and
`
`ExxonMobil recover such other relief as the Court may deem appropriate.
`
`25531708.1
`
`13
`
`

`
`JURY DEMAND
`
`Pursuant to Fed. R. Civ. P. 38(b), ExxonMobi1 demands a trial by jury on all issues
`
`triable of right by a jury.
`
`Date:
`
`fl’;
`
`jZfl2£
`
`OF COUNSEL:
`
`William R. Cohrs
`
`Texas Bar No. 04514300
`
`Exxon Mobil Corporation
`5959 Las Colinas Boulevard
`
`Irving, Texas 75039
`Telephone: (972) 444-1418
`Facsimile: (972) 444-1412
`
`Respectfully submitted,
`
`
`
`Texas Bar No. 16033
`William G. Barber
`
`0
`
`Texas Bar No. 01713050
`
`Stephen P. Meleen
`Texas Bar No. 00795776
`
`FULBRIGHT & JAWORSKI L.L.P.
`
`600 Congress Ave., Suite 2400
`Austin, Texas 78701
`Tel: (512) 474-5201
`Fax: (512) 536-4598
`
`Michael J. Fogarty, III
`Texas Bar No. 24002097
`
`FULBRIGHT & JAWORSKI L.L.P.
`
`2200 Ross Avenue, Suite 2800
`
`Dallas, Texas 75201
`
`Tel: (214) 855-8000
`Fax: (214) 855-8200
`
`ATTORNEYS FOR PLAINTIFF EXXON MOBIL CORPORATION
`
`2553 1 708.1
`
`

`
`Exhibit A
`
`

`
`fauemarx mectromc oearcn bySLCIIl Unoo)
`
`L -5. . VA .
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`United States Patent and. .ademark Office
`
` Home I Site Index I Search I FAQ I Glossary I Guides I Contacts IeBusiness I eBiz alertsl News I Help
`
`7‘
`
`'lemarks > Trademark Electronic Search System (TESS)
`
`rademark Electronic Search System(Tess)
`
`SSS was last updated on Thu May 5 06:35:04 EDT 2005
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`
`I CH: ‘rilals (TARR contains current status, correspondence address and attorney of record for this
`mark. Use the "Back" button of the Internet Browser to return‘ to TESS)
`
`yped Drawing
`
`lord Mark
`oods and
`ervlces
`
`EXXON
`IC 004. US 015. G & S: PETROLEUM AND PETROLEUM PRODUCTS—NAMELY, INDUSTRIAL OILS AND GREASES,
`PETROLEUM AND MINERAL WAXES, LUBRICANTS, HYDROCARBON FUELS, PETROLEUM ILLUMINANTS AND
`CRUDE OIL. FIRST USE: 19671205. FIRST USE IN COMMERCE: 19671205
`
`(1) TYPED DRAWING
`'3'" '?’a""‘"9
`erial Number 72296761
`
`iling Date
`
`April 29, 1968
`
`urrent Filing
`asis
`
`rlglnal Filing
`asis
`
`1A
`
`1A
`
`egistration
`umber
`
`:f'e‘“"“°"
`wner
`
`0902044
`
`November 10, 1970
`(REGISTRANT) STANDARD OIL COMPANY CORPORATION NEW JERSEY 117 MAIN ST. FLEMINGTON NEW
`JERSEY 08822
`
`(LAST LISTED OWNER) EXXON MOBIL CORPORATION CORPORATION BY CHANGE OF NAME NEW JERSEY
`5959 LAS COLINAS BOULEVARD IRVING TEXAS 750392298
`
`5“9“"'°"‘
`ecorded
`
`ASSIGNMENT RECORDED
`
`ype of Mark
`
`TRADEMARK
`
`egister
`ffidavit Text
`enewal
`
`PRINCIPAL
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20010726.
`2ND RENEWAL 20010726
`
`I3?é3.‘if‘.“
`
`LIVE
`
`
`
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`tp://tess2.uspto.gov/bin/showfie1d?%doc&state=1shur2.2.1
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`05/05/2005 12:45:22 PN.
`
`

`
`rademark mectromc Searcn System (1 Loo)
`
`1 95V 1 UL .
`
`United States Patent and .ademark Office
`
`Home I Site Index Isearch I FAQ I Glossary I Guides I Contacts IeBusiness I eBiz alerts I News I Help
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`ESS was last updated on Thu May 5 06:35:04 EDT 2005
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`I-3m,.vw:.u l'1u._-.
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`
`Record 1 out of 1
`
`
` (TARR contains current status, correspondence address and attorney of record for this
`mark. Use the "Back" button of the Internet Browser to return to TESS)
`
`
`
`Io... Mark
`aoods and
`arvices
`
`‘:3’; °"""‘“9
`
`EXXON
`IC 004. US 015. G & S: PETROLEUM AND PETROLEUM PRODUCTS—NAMELY. INDUSTRIAL OILS AND
`GREASES. PETROLEUM AND I MINERAL WAXES ], LUBRICANTS, HYDROCARBON FUELS, PETROLEUM
`ILLUMINANTS AND [CRUDE OIL]. FIRST USE: 19711004. FIRST USE IN COMMERCE: 19711004
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`“I9” S°°'°"
`ode
`
`261112 261121
`
`erial Number
`
`72407854
`
`lllng Date
`
`November 16, 1971
`
`urrent Filing
`asls
`
`Irig_inaI Filing
`asns
`
`1A
`
`1A
`
`':fiI:‘;f"°"
`
`0968512
`
`:fe""""'°"
`Iwner
`
`September 18, 1973
`(REGISTRANT) EXXON CORPORATION CORPORATION NEW JERSEY 5959 Las Colinas Boulevard Irving TEXAS
`750392298
`
`(LAST LISTED OWNER) EXXON MOBIL CORPORATION CORPORATION NEW JERSEY 5959 LAS COLINAS
`BOULEVARD IRVING TEXAS 750392298
`
`"5‘9""‘°"‘
`dad
`.tt‘c. .1ey of
`{Word
`
`ASSIGNMENT RECORDED
`
`ROBERT D. RIPPE. JR.
`
`"°'
`
`0902044;AND OTHERS
`
`1p://tess2.uspto.gov/bin/showfie1d?f=doc&state=1 shur2.3 .1
`
`05/05/2005 12:45 :54 P1\/.
`
`

`
`rademark Electromc Search system (1'J:;§b_)
`
`raga .». u; 2
`
`TRADEMARK
`PRINCIPAL
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20040221.
`2ND RENEWAL 20040221
`
`egistrations
`ype of Mark
`egister
`ffiqavlt Text
`9;
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`I.HOME I SITE INDEXI SEARCH I GBUSINESS I HELP I PRIVACY POLICY
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`tp://tess2.uspto.gov/bin/showfield?1%-doc&state=1shuI2.3.1
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`‘
`
`05/05/2005 12:45:54 PM
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`'ad3InarK EICCIIOHIC Search §yStCn1 [1 EDD)
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`1 a5» 1 Lu A
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`United States Patent and ‘I .a'demark Office
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`Home I Site Index I Search I FAQ I Glossary I Guides I Contacts I eBusiness I eB_iz alerts] News I Help
`
`‘I.’
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`"iemarks > Trademark Electronic Search System (TESS)
`
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`
`SSS was last updated on Thu May 5 06:35:04 EDT 2005
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`- Please logout when you are done to release system resources allocated for you.
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`lecord 1 out of 1
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`mark. Use the "Back" button of the Internet Browser to return to TESS)
`
`Iora lIIlark
`oods and Services
`lark Drawing Code
`erial Number
`
`XX
`IC 004. US 001 006 015. G & S: GASOLINE. FIRST USE: 19870619. FIRST USE IN COMMERCE: 19870619
`(5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM
`75474257
`
`Iling Date
`
`April 24, 1998
`
`urrent Filing Basis
`
`1A
`
`1A
`
`riginal Filing Basis
`ublished for
`October 12, 1999
`pposmon
`egistration Number 2305494
`
`egistration Date
`wner
`
`January 4, 2000
`(REGISTRANT) Exxon Corporation CORPORATION NEW JERSEY 5959 Las Colinas Boulevard Irving TEXAS
`750392298
`
`(LAST LISTED OWNER) Exxon Mobil Corporation CORPORATION NEW JERSEY 5959 Las Colinas Boulevard
`Irving TEXAS 750392298
`
`ssignment Recorded ASSIGNMENT RECORDED
`rior Registrations
`1384919;1412809;2149419
`
`TRADEMARK
`ype of Mark
`PRINCIPAL
`egister
`SECT 15. SECT 8 (6-YR).
`ffidavit Text
`LIVE
`ivelDead Indicator
`
`
`
`
` $‘I.=v1;«::I=.;H:-:12 E1‘-,'¢{.}‘£;1'{3.«1
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`05/05/2005 12:46:22 PM
`
`

`
`actemaric mectromc bcarcn system \1 moo)
`
`United States Patent and '7. .ademark Office
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`l-lomeISite Index I Search I FAQIGlossaryIGuidesIContacts IeBusinessIeBiz alertsI News I Help
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`Atabv ;. 51.5:
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`T’ "iemarks > Trademark Electronic Search System (TESS)
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`rademark Electronic Search System(Tess)
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`SSS was last updated on Thu May 5 06:35:04 EDT 2005
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`5‘lt-.'l.‘»'..‘.l'l.llx'%l7
`§lg:'E[_ §‘5ny,q Hi-‘.I.-'.\‘!5l
`l‘m.1
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`mark. Use the "Back" button of the Internet Browser to return to TESS)
`'
`
`E);(onMobiI
`
`loru Mark
`
`EXXONMOBIL
`
`oods and
`arvices
`
`IC 017. US 001 005 012 013 035 050. G & S: polyolefin films made from polyethylene and polypropylene polymer or
`derivatives for use in the packaging industry; polyolefin in bars, blocks pellets, rods, sheets and tubes for use in the
`manufacture of packages and labels; synthetic rubber and rubber substitutes for use in the industrial arts, for use in the
`manufacture of tires, tubes, vehicle body sealing; belts, hoses, seals, glass run channels, mechanical goods, electrical
`cable jacketing, roof sheeting, garden hoses, materials for sound deadening, adhesives, bumpers, dashboard parts,
`computer housing, electronic components, ski boots, was blends, chewing gum base and in engineering themoplastics.
`FIRST USE: 20000630. FIRST USE IN COMMERCE: 20000630
`
`IC 016. US 002 005 022 023 029 037 038 050. G & S: periodical publications, namely, reports, booklets, brochures,
`pamphlets and newsletters and all kinds of printed matters concerning items of interest about products, services, events
`and personnel of applicant and about the chemical and petroleum industry; company stationery, business cards and
`posters. FIRST USE: 19991200. FIRST USE IN COMMERCE: 19991200
`
`IC 004. US 001 006 015. G & S: aviation fuels, lubricating oils for marine, applications. FIRST USE: 20020000. FIRST
`USE IN COMMERCE: 20020000
`
`lC 001. US 001 005 006 O10 026 046. G & S: olefins, aromatic hydrocarbons, and solvents for use with paints, lacquers
`and similar products, for manufacture of inks and toners, for use in non-impact printing applications and for use in the
`industrial arts; solvents used as a component in adhesives, pharmaceuticals, fragrances, metal working fluids,
`pesticides, sealants, lubricants; polymers for use in the manufacture of adhesives and in the plastic industry;
`hydrocarbon polymers, namely resins, plastomers and elastomers in solid, semi-solid, liquid and powdered form for
`general use in the industrial arts in lieu of or in combination with natural or synthetic rubber and rubber-like materials.
`FIRST USE: 20000630. FIRST USE IN COMMERCE: 20000630
`
`:3’; °""""'"9 (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM
`
`‘lumber 75983349
`91?
`lling Date
`November 29, 1999
`
`urrent Filing 1A
`asis
`
`tp://tess2.uspto.gov/bin/showfield?f=doc&statc=1shux2.5.1
`
`05/05/2005 12:46:48 PM
`
`

`
`ademark Electronic Search system (11:55)
`
`A
`
`; a5. . \lJ. ‘
`
`riginal Filing 1B
`qsis
`ggigsszeignfor October 1, 2002
`39" ‘ration
`m
`if
`
`2791743
`
`°9istrafi°" December 9 2003
`,
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`ate
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`wner
`(REGI