IN THE UNITED STATES PATENT AND TRADEMARK OFFICE‘
`BEFORE THE TRADEMARK TRIAL AND APPEAL
`
`
`
`MR. OYSTER, INC. D/B/A
`CRABBY DICKS'
`‘
`.
`
`Opposer,
`
`v.
`FTH, INC.
`
`.
`V Applicant.
`.
`is
`
`- )
`)y
`)
`)
`)
`5
`)
`)
`)
`, 1
`
`Opposition No. 91153727
`
`,-
`1
`
`F‘
`'r_‘
`
`3
`3,3
`:3
`
`v
`
`i3
`7'
`
`‘
`
`HQ
`3;
`
`MOTION TO SUSPEND FURTHER PROCEEDINGS p
`
`Applicant, FTH, Iric., hereby moves-that all further proceedings in this Opposition be
`
`suspended, pending resolution of Civil Action No. O2-CV-3979-‘WMN, nowfpending in the
`
`United States District Court for the District of Maryland (the “Civil Action”)... A copy of the
`
`Complaint filed and the Answer served in the Civil Action are attached to the accompanying
`
`Declaration of James M. Pacious, Esq.‘
`
`Pursuant to Trademark Rule 2.1l7(a),'
`
`Whenever it shall come to the attention of the Trademark Trial and
`Appeal Board that a party or parties to a pending case are engaged
`in a civil action or another Board proceeding which may have a
`bearing on the case, proceedings before the Board may be
`suspended until termination of the civil action or the other Board
`proceeding.
`
`In addition, proceedings may also be suspended, for good cause, __upon ‘motion approved by the
`
`Board. Trademark Rule 2.1l7(c). As indicated by the contents of the Complaint and attached
`
`Declaration of Mr. Pacious, the issues presented in the pending Civil Action have more than “a
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL
`
`
`
`MR. OYSTER, INC. D/B/A
`CRABBY DICKS'
`‘
`.
`
`Opposer,
`
`v.
`FTH, INC.
`
`.
`V Applicant.
`.
`is
`
`- )
`)y
`)
`)
`)
`5
`)
`)
`)
`, 1
`
`Opposition No. 91153727
`
`,-
`1
`
`F‘
`'r_‘
`
`3
`3,3
`:3
`
`v
`
`i3
`7'
`
`‘
`
`HQ
`3;
`
`MOTION TO SUSPEND FURTHER PROCEEDINGS p
`
`Applicant, FTH, Iric., hereby moves-that all further proceedings in this Opposition be
`
`suspended, pending resolution of Civil Action No. O2-CV-3979-‘WMN, nowfpending in the
`
`United States District Court for the District of Maryland (the “Civil Action”)... A copy of the
`
`Complaint filed and the Answer served in the Civil Action are attached to the accompanying
`
`Declaration of James M. Pacious, Esq.‘
`
`Pursuant to Trademark Rule 2.1l7(a),'
`
`Whenever it shall come to the attention of the Trademark Trial and
`Appeal Board that a party or parties to a pending case are engaged
`in a civil action or another Board proceeding which may have a
`bearing on the case, proceedings before the Board may be
`suspended until termination of the civil action or the other Board
`proceeding.
`
`In addition, proceedings may also be suspended, for good cause, __upon ‘motion approved by the
`
`Board. Trademark Rule 2.1l7(c). As indicated by the contents of the Complaint and attached
`
`Declaration of Mr. Pacious, the issues presented in the pending Civil Action have more than “a
`
`
`
`
`
`bearing on the case;” they are identical to those in this Opposition. The Civil Action involves the
`
`_ same two parties and involves resolution of the same issues raised in this Opposition." The
`
`parties have not conducted any discovery in this Opposition and there are no pending motions
`
`before the Board. Therefore, good cause exists pursuant to Trademark Rule 2.117 to suspend
`
`‘ these proceedings until the Civil Action is resolved.
`
`Accordingly, since the United States District Court for the District of Maryland is E
`presently resolving all of the issues related to this Opposition, the Applicant respectfully requests
`
`thatall further proceedings in this Opposition be suspended until the Civil Action is finally
`
`resolved.
`
`—
`
`Respectfully submitted’
`
`4 1'
`
`JAMES . PACIOU
`
`
`
`' ,
`
`E Q.
`
`Washington, DC 20007 i
`
`Attorney for Applicant, FTI-I, Inc.
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`This is to certify that on this 25th day of April 2003, a copy of the foregoing Motion to .
`Suspend Proceedings was deposited in the United States mail, first—class, postage pre-paid,
`addressed to the following:
`‘ .
`V
`4
`.
`
`A
`
`John E. Cepican, Esq.
`STURM & FIX
`,
`'
`101 .West Second Street, Suite 304
`Davenport, IN 52801
`
`4 ‘Attorney for Opposer, Mr. Oyster, I
`
`
`
`
`
`
`
`o
`
`*1:
`
`I
`
`IN THE IJNITED STATES DISTRICT COURT
`- FOR THE DISTRICT OF MARYLAND
`
`Case No.
`
`wan 02 cv 3 9 7 9
`
`- FTH, Inc-.,
`606 South Broadway
`Fells Point, Maryland 21231
`Baltimore County
`
`'
`
`Plaintiffs,
`
`,
`
`'
`
`. V.
`
`Dick Cami,
`»
`712 Duval Street
`-Key West, Florida 330400
`
`'
`
`John Stone,
`712 Duval Street
`
`Key West, Florida 33040
`
`
`
`Mr. Oyster, Inc. dba Crabby Dicks’.
`, 712 Duval Street
`A
`0
`
`Key West, Florida 33040
`
`.' Defendants.
`
`.
`
`» COMPLAINT
`
`FTH, Inc. ‘(hereinafter “Crabby Dick’s” or “Plaintiff’) alleges the following in support of
`
`its claims against Dick Cami and John Stone (hereinafter “Defendants”).
`
`NATURE OF THEACTION
`
`1.
`
`This is an action for federal and state trademark infringement, failse designation of
`
`origin, trade dress infringement, all with respect to Plaintiff's distinctive common law trademarks,‘
`
`
`
`
`
`
`
`"9.
`
`including CRABBY DI¢K’S (hereinafter the “CRABBY DICK’S Mark”), copyright infringement, I
`
`and‘ breach of contract. Defendants ‘have unlawfully misappropriated and exploited Plaintiffs
`
`CRABBY DICK'S Mark by impermissiblyi using the term “CRABBY DICKS” iniconjunction I
`
`with Defendants’ sale of t—shirts, restaurant services, and retail store servicesgby using Plaintiff's
`
`proprietary trade dress in its retail stores; and, by impermissibly using Plaintiffs copyrighted I
`
`work.‘
`
`In addition, Defendants have breached their sales contract with Plaintiff by failing to
`
`compensate Plaintiff pursuant to the terms of that Agreement.
`
`2.
`
`John Buchheit, President of FTH, began selling t-shirts bearing the distinctive
`
`CRABBY DICK’S Mark in Baltimore, Maryland in 1985.
`
`the early 1990’: sales of the shirts -
`
`increased. Throughout the early l990’s, Mr. Buchheit worked hard at cultivating the success of
`
`the CRABBY DICK’S Mark and expanding the use of the Mark. As recognition of the CRABBY
`
`V DICKTS Mark grew it was applied to an increasing number of items, as well as to a retail store and
`
`restaurant located in Baltimore, Maryland. The CRABBY DICK’S Mark has achieved wide
`
`p. recognition nationally due to the use of the Mark in Baltimore’s Inner Harbor, which is located if
`
`' directly adjacent to the East Coast's main highway corridor, Interstate 95.
`
`3.
`
`Defendants’ use of the confusingly similar term “CRABBY DI€KS" has damaged
`
`and continues to irreparably damage Plaintiffs hard-earned reputation and goodwill as the origin
`
`of the’CRABBY DICK’S Mark andmaker of t—shirts and other retail itemsassociated with the
`
`Mark. Defendants have misappropriated Plaintiffs CRABBY DICK’S Mark ‘and continue their
`
`"
`
`blatant attempts to profit on the back of Plaintiffs hard work.
`
`4.
`
`In addition, Defendants have infringed and continue to infringe Plaintiffs registered
`
`copyrights through the unauthorized printing of t—shirts and other items incorporating Plaintiffs
`
`2
`
`
`
`
`
`
`
`
`
`__‘_*
`
`copyrighted vvorks, and offering these items for sale, via Defendants’ retail store, restaurant and V
`
`5
`
`online website.
`
`THE PARTIES
`
`5.
`
`Plaintiff, FTH, Inc.,
`
`is a'M'aryland corporation, having its._ principal place of
`
`_ business at 606 South Broadway, Fells Point, Maryland, 21231.
`
`6.
`
`' Upon information andiibelief, Defendants, Dick Carni and John Stone, are Florida
`
`residents.
`
`0
`
`7.
`
`Upon information and belief, Defendant, -Mr. ‘Oyster, Inc., is a Florida Corporation,
`
`having its principallpilace of business at 712 Duval Street, Key West, Florida 33040.
`
`_'JUR'ISDICTION AND VENUE
`2 Pursuant to.l5 U.s._c.
`'§ l125(a) (2002), 17 U.S.C. §501 (2002), and 28iU.S.C.
`
`‘
`
`, 8.
`
`._§§ 1331, 1332, & 1338 (2002), this Court has sub_ject—matter jurisdiction over this action.) This
`C
`7 action arises under 15 U.S.C. § 1l25(a) (the Lanham Act), and 17 U.s.c]§ 101' et seq.
`(the
`
`Copyright Act), and involves Defendants’ unauthorized use of common law trademarks and
`registered copyrights owned by.Plaintiff.. Pursuant
`to 28 U.S.C. §,1367(a),i
`Court has '
`supplemental jurisdiction over all state claims asserted in this Complaint as these claims are so
`related to the claims within this Court's jurisdiction that they form part of the same case or
`
`controversy under Article III of the United States Constitution.
`
`9.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. § l39l(b)(2), or in the "
`
`alternative, section 139 l (b)(3).
`
`10.
`
`This Court has personal jurisdiction over Defendants pursuant to Md. "Code. Ann,
`
`Cts. & Jud. Proc. § 6-lO3(b)(l) (2002) (the Maryland long-arm statute), based on Defendants’
`
`3
`
`
`
`
`
`
`
`visits .to Maryland for the purpose of transacting business with Plaintiff, namely, to purchase t-
`
`shirts bearing the CRABBY DICK’S Mark and contract with Plaintiff tosell the t-shirts in Florida.
`
`11.
`
`In the altemative, this Court has personal jurisdiction under section 6-103(b)(4),
`‘I
`
`based on Defendants’ tortious breach of that Agreement and continual anjd unlawfiil use of
`
`Plaintiff's trademarks in Florida; on Defendants’ persistent course of conduct with Maryland
`
`through contracts with other businesses involving Maryland food products to be used for
`
`Defendants’- Florida
`
`restaurant;
`
`and .V by ‘Defendants’ maintenance ‘of
`
`the website‘
`
`_ CRABBYDICKSKEYWESTCOM, which is accessible to Maryland consumers twenty-four hours I
`
`a day, and which solicits consumers to purchase merchandise and advertises Defendants’ Florida A
`
`'
`
`A- restaurant.
`
`GENERAL ALLEGATIONS .
`
`'
`
`12.
`
`A The Plaintiff, FTH, Inc., is a Maryland business that designs
`
`sells t-shirts and._
`
`other retail items b.earing the_CRABBY DICK’S Mark.
`
`13.
`
`Plaintiff's President, John Buchheit, originally began selling t-shirts bearing the ,
`
`CRABBY DICK’S Mark in Baltimore, Maryland in 1985. In the early l990’ssales of t-shirts and ‘
`
`other items bearing the CRABBY DICK_’S Mark grew rapidly. In or around 19927, Plaintiff opened
`
`a store in Maryland (hereinafter the “Crabby Dick's Store” or “Store”) to ‘sell
`
`the specially
`
`designed t-shirts, and other items. The store is _located in Baltimore’s popular Inner Harbor,
`
`directly adjacent to the main East Coast traffic corridor, Interstate 95. The Crabby Dick‘s Store
`
`prominently displays a mannequin of “Crabby Dick” wearing a t-shirt bearing the CRABBY
`
`DICK’S Mark.
`
`The walls of the Store are painted with broken brush-style paint and the
`
`merchandise is arranged on nautical style furniture.
`
`
`
`
`
`
`
`‘t
`
`14.
`
`Plaintiff has continuously used the CRABBY DICK’S Mark" in relation to its t-.
`
`l
`
`'
`
`P
`
`shirts since at least as early as 1985, to its store’ since\l997, and in relation to its _other'reta-ill
`
`services and items since 2000. H.
`
`15.
`
`Since the inception er Plaintiffs use of the CRABl__3Y DICK’S’ Mark, Plaintiff has
`
`spent a considerable amount offinancial resources and has expended extensive effort in promoting I
`
`its specially designed t-shirts and unique Store under the CRABBY DICK’S Mark. As a result of
`\
`.
`
`Plaintiff's .long and continuous use, advertisement, and promotion of the CRAlj3BY DICK’S Mark P
`
`I
`
`in interstate commerce:
`
`a. Plaintiff has developed substantial and valuable goodwill associated with the I.
`CRABBY DICK’S Mark in the minds of consumers in Maryland and throughout
`
`— the United :States; and
`
`b. -Plaintiff has established exclusive common law ownership of the CRABBY.
`
`DICK’S Mark.
`
`'
`
`16.,
`
`Plaintiff ‘is the owner of twenty-nine Crabby 4Dick’s t-shirt; design copyright
`
`registrations covering at least forty-eight separate designs. A representative _sample of the ‘
`
`copyright registrations, as reflected by the enclosed printouts from the Copyright Qffice web site,
`
`A
`
`include:
`
` Registration
`Exhibit Publication
`Filing Date
`No.
`
`and
`
`Effective Date -
`VA1-125610
`
`
`
`A
`
`July.15, 1989
`
`
`
`
`
`Apni17,2oo2
`
`
`
`Crabby Dick's Baltimore MD
`(Crab Design Overtop of
`Maryland State Flag)
`
`
`
`April 18. 2002
`
`
`
`
`
`
`
`
`
`
`
`
`VA 1-125-610
`
`Aprilfifl 8, 2002
`
`
`
`- April 17, 2002
`
`Crabby Dick's
`
`(Crab Design with Compass,
`Protractor. and "Treasure
`
`Map")
`
`
`July 15, 1989
`
`
`
`
`
`March 15, 1993
`
`
`
`VA 1.,-125-611
`April 17, 2002
`
`April '18.» 2002 i
`
`Crabby Dick’s Baltimore MD
`(Crab Design Overtop Red
`and White Background
`Halves)
`
`
`November 15;
`April 17, 2002
`CrabbyJDick's Been Gettin'
`«
`1994
`
`Any Lately?
`-
`April 118, 2002
`
`
`VA 1-1125-613
`June 15, 1995
`Crabby Dick's Firefighter
`April 17, 2002
`Some Like it Hot
`
`VA 19125-512
`
`April 18. 2002
`
`
`
`
`
`
`
`
`
`
`
`
`VA 1-.125-61-3
`
` Crabby Dick's Go Hard Or Go
`
`June 15, 1995 _
`April«17, 2002
`Home
`
`April 18, 2002‘
`VA 1-3125-614
`
` July 15, 1995 Crabby Dick's April 17, 2002
`
`
`
`(Crab Design with Rifle)
`
`
`
`April 118. 2002
`VA 1-"125-514
`April 17, 2002
`Crabby Dick's Big Gun Hunt
`
`
`
`Club You Never Forget Your
`'
`First Buck
`
`
`
`
`
`
`
`
`July 15, 1995
`‘
`
`April 1:8, 2002
`
`
`
`June 15, 1996
`
`' Oh Boy What A Dick
`
`April 17,2002
`
`VA_1-125-615
`
` April 18, 2002
`
`These registrations are prima facie evidence of Plaintiffs exclusive ownership of the Crabby
`
`Dick’s t—shirt design copyrights, and that the copyrights are valid.
`
`17.
`
`In early 2000, Defendants, Dick Cami and John Stone, visited fPlaintifFs Crabby
`
`_
`
`Dick's Store and spoke with Mr. Buchheit. They discussed their interest in establishing a store in
`
`Key West, Florida that would be identical to the Plaintiffs Crabby Dick’s Store and would sell
`
`Plaintiffs t-shirts bearing the CRABBY DICK’S Mark.
`
`
`
`
`
`
`
`‘t
`
`18.
`
`Plaintiff entered into an oral agreement _with the Defendants whereby the ._
`
`Defendants would purchase CRABBY DICK’S t-shirts fi'om the Plaintiff and sell them in their
`
`Florida store. Soon afterwards, Plaintiff noted a reduction in the number of shirts ordered by
`Defendants. Plaintiff visited the Defendants’ Florida store and discovered that the Defendants
`
`were reproducing Plaintiff's CRABBY DICK’S tn-shirts without authorization. At" that
`
`time, _i
`
`Plaintiff demanded that they-stop this unauthorized reproduction and sale. Defendants agreed‘ to
`
`stop the infringing activity.
`
`19.
`
`‘As a result of this visit, the parties entered into a written agreement on March 17,
`
`2001. Under the agreement, Plaintiff would maintain the right to‘ stock the Defendants’ Florida '
`
`. store _and arrange the layout of the merchandise sold in the store.
`
`In return, the: Defendants agreed
`
`.to compensate Plaintiff five‘ percent (5%) of all gross sales over $12,000 per month and pay A
`Plaintiff to visit the Florida store bi—rnonthly.
`
`20.
`
`Basedion the Agree'n'ient,.Defend'ants obtained Plaintiffs CRABBY DICK’S t-
`
`shirts and designed their Florida store in an identical fashion to Plaintiffs Crabby Dick’s Store in.
`
`Maryland.
`
`21.
`
`I Defendants, however, failed to pay Plaintiff any percentage of the sales. To date,
`
`Defendants have failed to provide any accounting of the sales.
`
`lg 22.
`
`In February 2002, Defendants terminated the contract for. CRABBY DICK’S goods
`
`and services. Despite terminating the Agreement, Defendants continue to use the CRABBY
`
`DICK’S Mark in conjunction with Defendants’ restaurant, retail stores and :the sale of items
`
`bearing theCRABBY DICK’S Mark.
`
`
`
`
`
`
`
`23‘.
`
`On several occasions in 2002, Plaintiffs counsel requested that Defendants cease
`
`and desist their unauthorized use of the CRABBY DICK’S Mark. I"
`
`24.
`
`lDefendants continue to use the CRABBY DICK’S 'Mark*Vwithout.Plaintiffs
`
`authorization in conjunction with Defendants’ restaurant, retail stores and the sale of items bearing b
`the CRABBY DICK’S Mark.
`
`I
`
`b
`
`.
`
`_ 25.
`
`Defendants’ promotion and use of the CRABBY DICK’S Marlci in conjunction with.
`
`the Florida restaurant, t—shirt_s, and retail store services is harmful to Plaintiffs business and its
`
`V CRABBY DICK’S Mark.
`
`26.
`
`‘Upon information and belief, Defendants began their offending. activities long
`
`
`
`subsequent to Plaintiffs first uses of the CRABBY DICK’S Mark.
`
`'
`
`27.
`
`’ Upon ‘information and belief, Defendants’ use of the CRABBY DICK’S Marl<_in_
`
`conjunction with its Florida restaurant, t-shirts", and retail store services has irreparably damaged
`
`V Plaintiffs business,
`
`the goodwill
`
`in its marks, and Plaintiffs reputation
`
`the provider of
`
`CRABBY DICK’S t—shirts and retail ‘services. Unless Defendants’ unauthorized use of the
`
`CRABBY DICK’S Mark is stopped, the damage to_Plaintiff will be irreversible.
`
`COUNT ONE
`
`Infringement of Common Law Trademark under Federal Law
`
`'_ 28;
`
`Plaintiff realleges and incorporates the allegations set forth in Paragraphs one
`
`I
`
`through twenty—seven above.
`
`29.
`
`Plaintiff is the common law owner of the CRABBY DICK’S Mark as discussed
`
`above.
`
`
`
`
`
`
`
`‘St
`
`30.
`
`Plaintiff has not consented to Defendants’ use of‘the CRABBY DICK’S Mark or a
`
`'
`
`confusingly similar mark in conjunction with Defendants’ restaurant, sale of t-shirts, online
`
`activities, and retail store services.
`
`31.
`
`Defendants have, without the consent ofPlaintiff, used in commerce a reproduction,
`
`counterfeit, cop)’. or colo7rab»le imitation of Plaintiff’ s CRABBY DICK‘S Mark in connection with "
`
`_ the sale, offering for sale, distribution, or advertising of goods and services.
`
`'. 3-2.
`
`Defendants have reproduced,-rcopied, or colorably imitated Plaintiffs CRABBY
`
`V,.DlCK’S Mark, bandhave been using this Markin commerce and in connection "with the sale,
`
`offering for sale, distribution, or advertising of goods and services.
`
`33.,
`
`‘Defendants unauthorized use of the CRABBY,DICK’S Mark has caused and will
`
`A" continue to cause_confusion, mistake, or deception in violation of 15 U.S.C. § l!l25(a).
`
`_ 34. 3
`
`As a direct and proximate result of Defendants‘ violations of
`
`U.S.C.. § l'l25(a),
`
`Plaintiffhas suffered and will continue to suffer substantial and irreparable harm.
`
`COUNT TVVO
`
`False Desio,nation of Orio,in
`
`35.
`
`’ Plaintiff realleges and incorporates the allegations ‘set forth in l?aragraphs one
`
`through thirty-four above.
`
`I’ 36.
`
`Defendants have used and are presently using the deceptively similar “CRABBY
`
`DICKS” term in connection with their Florida restaurant,‘ t-"shirts, retail items, and website
`
`promoted and sold directly to the public in a fashion that is likely to cause confusion, mistake, or
`
`deception among consumers and potential customers of Plaintiff as to the affiliation, connection, or
`
`
`
`
`
`
`
`
`
`association of Plaintiff with Defendants, or as to the origin, sponsorship, or approval of the goods
`
`_ provided by Defendants.
`
`37.
`
`_ Defendants’ unauthorized use and misappropriation of Plaintiff’s CRABBY '
`
`DICK’S Mark is likely to cause confusion, mistake, and deception in violation of 15 U.S.C._
`
`§ 1125(a)..
`
`38.
`
`e As a direct and proximate result of Defendants’ violations of l5 U.S.C. § 1125(a),
`
`"Plaintiffhas suffered and will continue to suffer substantial and irreparable
`
`COUNT THREE
`
`Trade Dress Infrina,ement
`
`39.
`
`Plaintiff realleges and incorporates the allegations set forth 1 in Paragraphs one
`
`through thirty-eight above." ,_
`
`40.
`
`Plaintiffs Crabby Dick’s Storeprominently:displays _a mannequin of “Crabby
`
`Dick” wearing a CRA.BBY.DICK’S t-shirt. The walls of the store are painted :with broken brush— V
`style paint and the merchandise is arranged on nautical-style furniture.
`’ 41.
`Plaintiffs tradedress is nongfunctional.
`
`42.
`
`Defendants, without authorization, are presently using a deceptively similar style
`
`and décor in their Florida Store to Plaintiffs Crabby Dicks Store in Maryland: Defendants’ store
`displays a “Crabby Dick” manneouin wearing a t—shirt bearing the CRABBY DICK’S Mark.
`
`43.
`
`Defendants’ unauthorized use in their‘Florida store of Plaintiffsldistinctive interior
`
`V
`
`l
`
`P
`
`design or trade dress of its Maryland Crabby Dick’s Store is likely to cause confusion, mistake, or,
`
`deception among consumers and potential customers of Plaintiff as to the affiliation, connection, or
`
`association ofPlaintiff with Defendants in violation of 15 U.S.C. § 1125(a).
`
`10
`
`
`
`
`
`
`
`. 44.
`As a direct and proximate result of Defendants’ violations of
`Plaintiffhas suffered and will continue to suffer substantial and irreparable harrni.
`
`U.S,CL § ll25(a), P
`.
`
`COUNT FOUR
`
`* Copyright Infrino,ement
`
`45.
`
`Plaintiff realleges and incorporates here the allegations set forth in Paragraphs one '
`
`through forty-four above.
`
`46.
`
`‘Plaintiff is the registrant of the. Crabby Dicl<_’s t-shirt copyright designs as recited
`
`above.
`
`
`
`p».Plaintiff has not consented to Defendants’ unauthorized reproduction of t-shirts -
`47.
`bearing Plaintiff’s Crabby Dicl<’s designs.
`
`48.
`
`Defendants’ unauthorized reproduction "of Plaintiffs Crabby 'Dicl<’s designs
`
`infringes Plaintiffs copyright in the designs in violation of 17
`
`§ 50l(a).
`
`— As‘ a" direct and proximate result of Defendants’ violations of i7_U.s.c. §50l(a), "
`49.
`P Plaintiffhas suffered and will continue to suffer substantial and irreparable harm.
`
`COUNT FIVE"
`
`I State Common Law Trademark Infringement
`
`50.
`
`Plaintiff realleges and incorporates the allegations set forth in Paragraphs one"
`
`H through forty-nine above.
`
`51.
`
`Pursuant to Maryland common law, Plaintiff has established exclusive ownership of "
`
`the CRABBY DICK’S Mark in Maryland for use in the design of t-shirts and retail services.
`
`52.
`
`Defendants’ unauthorized use and misappropriation of Plaintiffs CRABBY
`
`DICK’S Mark violates Plaintiffs common law rights.
`
`11
`
`
`
`
`
`
`
`
`
`53.
`As
`a direct and ‘proximate
`result.‘ of ‘ Defendants’ unauthorized use and,
`‘misappropriation of the
`DICK’S Mark, Plaintiff has suffered and will continue to suffer
`' substantial and irreparable harrn..
`‘
`.
`-
`
`-'
`
`A
`
`I
`
`COUNT srx
`
`State Common Law Unfair Competition
`
`A 54.
`
`’ Plaintiff realleges and incorporates the allegations. set forth in Paragraphs one
`
`through fifty-three above.
`
`55._
`
`The previously described acts of Defendants constitute unfair- competition, unjust
`
`enrichment, and misappropriation of Plaintiff's rights under the common law of the State. of ‘
`
`- Maryland. These actions permit and will continue to permit Defendants to use and benefit from
`
`Plaintiffs CRABBY DICK’S Mark in violation of the common law of Maryland.
`
`_ 56.
`
`As
`
`a direct
`
`and proximate result of Defendants’ unauthorized use
`
`and
`
`misappropriation of the CRABBY DICK’S Mark, Plaintiff has suffered and will continue to suffer_ V
`
`substantial and irreparable harm.
`
`COUNTiSEVEN
`
`Breach of Contract
`
`57.
`
`Plaintiff real_leges and incorporates the allegations set forth in Paragraphs one ’
`
`through fifty-six.
`
`58.
`
`Plaintiff entered into an oral agreement with the Defendants regarding the sale of "
`
`Plaintiff’s CRABBY DICK’S t—shirts._ The parties later placed this agreement in writing.‘ Under
`
`the Agreement, Plaintiff would maintain the right to stock the Defendants’ Florida store and
`
`arrange the layoutiof the merchandise sold in the store.
`
`In return,
`
`the Defendants agreed to
`
`,
`
`l2
`
`
`
`
`
`
`
`compensate P-laintiff five ‘percent. (5%) of all gross..sales_ over $12,000 per month, and to pay
`
`. Plaintiff to visit the _Florida store bi-monthly.‘
`
`in
`
`a
`
`59.
`
`Defendants have violated all
`
`terms of the Agreement by , continuing to sell
`
`Plaintiffs téshirts without allocating any percentage of sales to Plaintiff or providing an accounting
`ofsale, and thus failing to compensate the Plaintiff.
`60,
`Defendantsl violation of the Agreement constitutes a breach of contract under the
`common law _of Maryland.
`
`‘ 61.
`
`As a direct and proximate result of Defendants’ breach of co1_1tract,bPlaintiff has
`
`- suffered and will continue to suffer substantial" damages.
`
`62:.
`
`Plaintiff demands a trial by jury on all issues raised in the Complaint.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiffprays thatzu
`
`A.
`
`Pursuant
`
`to is U.S.C. §1116 and 17 U.S.C. §5o2, Defendants,
`
`their agents,
`
`-
`
`‘
`
`t
`
`.
`
`servants, employees, fianchisees, licensees, and attorneys, and all others in concert or participation
`
`with Defendants, be enjoined and restrained during the pendency of this action and permanently
`
`thereafter from:
`
`' 1.
`
`Using the CRABBY DlCK’S Mark or any other marks that are confusingly
`
`similar to, or a colorable imitation of, Plaintiffs CRABBY DICK’s Mark;
`
`and
`
`2.
`
`Doing any other act or thing likely to or calculated to induce the belief that
`
`'
`
`Defendants or the Defendants’ businesses or goods are in any way affiliated,
`
`-13
`
`
`
`
`
`
`
`connected, or associated with Plaintiff or Plaintiffs products, services, or
`
`business.
`
`B.
`
`-
`
`Defendants be required to immediately shut down the Internet site located at
`
`WWW.CRABBYDICKSKEYWEST.COM and transfer the domain name to Plaintiff.
`
`V
`
`AC.
`
`Defendants be required to forever refrain from using the CRABBY DICK’s terrnnor
`
`any colorable imitation as a part of directory names, Uniforrn_Resource Locators (URLs) for web
`
`. sites, or other Internet addresses, as telephone numbers, as hidden web sitetcode,
`
`links, key
`
`words for the retrieval of data or information through Internet search engines or directories, meta-b
`
`tags, e-mail addresses, or other electronic identifiers.
`
`
`
`to 15 U.S.C. §1l17(a), 17 U.s.c. §5o4, and the common law of
`Pursuant
`D.
`'_ Maryland, that Plaintiff be awarded:
`
`1. _
`
`all profits obtained by the Defendants;
`
`2.
`
`3.
`
`4.
`
`5.
`
`damages sustained by the Plaintiff;
`
`costs incurred in connection with this action;
`
`prejudgment and post-judgment interest on all amounts awarded; and
`
`because this is an exceptional case under section l1l7(a) and/or Defendants’
`
`conduct is intentional, vexatious, fraudulent, and in bad faith, that Plaintiff ,
`
`be awarded reasonable attorneys’ fees;
`
`6.
`
`because Defendants’ actions were, and continue to be, wlillful under section
`
`504(c), that plaintiff be awarded statutory damages.
`
`E.
`
`Granting such further relief as this Court deems just and proper.
`
`14
`
`
`
`
`
`
`
`
`
`Respectfully Stibrnitted,
`
`FTH, Inc.
`606 South Broadway»
`Fells Point, Maryland 21231
`410/327-7900
`
`4
`
`Date:
`
`
`
`By: K
`
`I
`
`
`
`Kristin Pierce Barry
`John P. Feldman
`James M. Pacious
`
`'
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`COLLIER SHANNON SCOTT, PLL_C
`3050 K Street, N.W., Suite 400
`’
`- Washington, D.C. 20007 7
`'
`Phone (202) 342-8400
`‘ Fax (202) 345-8451 '
`
`» ATTORNEYS FOR PLAINTH-'~‘F,_
`PTH,'Inc.
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`‘Search For: va1125610
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`Registered Works Database (Registratiohi Number Search)
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`VA-1-125-610 (COHM)
`Title: Crabby D.ic_k's.
`Description: Art reproduction.
`Claimant: FTH,|nc_'
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`created: 1939
`
`_ Published: 15Ju|89
`
`Registered: 18AprO2
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`Application: artwork: John P. Buckhelt.
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`special Codes: 5/S
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`Description: Art reproduction.
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`Claimant: FTH, inc_
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`Created: 1989
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`Published: 15Ju|89
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`Registered: 18Apr02
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`Application: artwork: John P. Buckheit.
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`Title: Crabby Dick's : Baltimore, MD.
`' Description: Art reproduction.
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`Claimant: FTH_ Inc;_
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`A Created: 1993
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`Published:' 15Mar93
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`Registered: 18AprO2
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`[crabby Dick's]
`Title:
`Description: Art reproduction.
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`. Note: Title fromappl.‘
`Claimant; FTH,|nc,'
`
`Created: 1994
`
`_ Published: 15No\/94
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`John P. Buckheit.
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`2 :
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`Registered: 18Apr0
`Author on ©
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`Application: artwork
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`Special Codes: 5/8
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`Crabby Dick's.
`2 art reproductions.
`inc.
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`FTH,
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`Created:
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`1995
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`15Jun95
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`18Apm2
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`Author on ©
`_ Application:
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`artwork: John P. Buokheit.
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`Description: 2 art reproductions;
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`Claimant: FTH, lnc_,
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`Created:_ 1995
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`Published: 15Jun95
`‘Registered: v18Apr02
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`Author on ©
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`Application: artwork: -J_ohn P. Buckheit.
`Sgecial Codes: 5/S
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`Description: 2 art reproductions.
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`Claimant: FTH, |nc_
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`Created: 1995
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`Title: Crabby Dick's.
`Description: 2 art reproductions.
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`Created: 1995
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`‘Claimant: FTH_ Inc_
`_Created: 1996.
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`Registered: 18Apr02
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`.UEh'ERAL CONSENT TO PROCEED
`EEFORE A UNITED STATES MAGISTRATE JUDGE
`
`In accordance with the provisions of Title 28 U.S.C. § 636(c), the parties to the above}
`. captioned civil matter hereby voluntarily waive their rights to proceed before a United States
`District Judge and consent to have a United States Magistrate Judge conduct any and all fU.1’l.hCI'
`proceedings in the case, including trial, and order the entry ofa final judgment.
`
`"Name ofParty
`
`2
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`-
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`_
`
`Narne ofParty
`
`
`
`Signature of Party or Counsel
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`.
`
`
`Signature of Party or Counsel
`
`
`
`‘ Date
`
`g
`
`,'
`
`Date
`
`ORDER OF REFERENQE
`
`
`,2o__,_.. that
`L
`day of
`IT IS HEREBY ORDERED this
`the above-captioned matter be referred__to United States Magistrate Judge _______.___..._>
`for all proceedings and the entry ofjudgment in accordance with Title 28 U.S.C. § 636(c) and th¢
`foregoing consent ofthe parties.
`
`U.S. District Court (Rev. 2/20/2002)
`
`
`
`United States District Judge
`
`
`
`
`
`r.
`
`UNITED STATES DISTRICT COURT j
`DISTRICT or MARYLAND
`omen or THE CLERK
`1 K
`.
`101 w. LOMBARD STREET
`%
`BALTIMORE, MARYLAND 21201-2691 A
`
`T
`
`Party or Counsel
`.v:Clerk.of Court
`
`I
`
`i
`
`7.
`
`
`
`Felicia C. Cannon .
`Clerk
`
`’
`
`_’
`‘V
`
`,
`
`.
`T0:
`most;
`
`‘SUBJECT:
`
`‘
`
`Disclosure of Corporate Interest
`
`DATE:
`
`_.
`:_
`ofthe
`I _\\'ithin ten (10) d'ays_of this notice please advise the Clerk,
`_ presence, ifany, ofany undisclosed corporate interest pursuant to Local Rule 103.3,_\\_:hich, ‘
`for your convenience, has been printedon the reverse side of this memo.
`V
`"I .5 3
`l
`..
`in \\'1_'jliil'l°,. This can be done
`If there is no such interest, state this matter
`completing and signing the note below. If there is such an interest, set it forth in de_tail_i_n_:
`
`’
`
`-
`
`'
`
`writino .
`
`This information is required to inform the Judge, to whom this case is
`A
`any possible need for disqualification from hearing this case._
`
`Mrs. Clerk
`
`_ Very trulyyours.
`FELICIAC. CANNON, CLERK
`
`i
`
`CIVIL 1\‘O.
`
`1
`
`~
`
`*
`
`-
`
`I _certif_v, as :1 parry/counsel in the case noted above that _____'________,____.,__._ i
`_
`(mm)
`unincorporated j
`
`is not an affiliate or parent of any corporation, and no corporation,
`1 zissociation, partnership or other business entity. not a part)‘ to the case, has a financial
`interest in the outcome ofthis litigation as set fort” in Local.Rule 103.3.
`
`PLEASE L\'Cl.i?DE CASE !\'U;\lRER
`
`Attorney for
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
`
`FTH, lnc.,
`
`V.
`
`Plaintiff,
`
`'
`
`» Dick Cami,_
`John Stone,
`Mr. Oyster, Inc. dba Crabby Dicks’,
`Defendants.
`
`.
`
`—
`
`)
`
`)
`)
`)
`)
`)
`)
`)
`
`Case No. WMN 02. cv 39.79
`‘
`.
`'
`
`I DEFENDANT$’ ANSWER
`
`Defendant, John Stoneand Defendant, Mr. Oyster, Inc. d/b/a Crabby Dicks’, by
`
`and through their attorneys, answer each enumerated paragraph of Plaintiff's Complaint
`
`in thenabove identified action as follows:
`
`Nature of the Action
`
`- 1.
`- Defendants admit that this action purports to be an action for federal and
`state trademark infringement, false designation of origin, trade dress infringement,
`I
`
`copyright infringement and breach of contract. Defendants deny the remaining I
`
`allegations of Paragrapht of the Complaint.
`
`_ 2.
`
`’
`
`Denied.
`
`3.
`
`4.
`
`- Denied.
`
`Denied.
`
`'
`
`5.
`
`Defendants admit that'FTH, Inc., 606 South Broadway, Fells Point,
`
`The Parties
`
`
`
`
`
`Maryland 21231 is listed as Plaintiff in this action. Defendants are without knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations of
`
`Paragraph 5 of the Complaint and therefore deny the same.
`
`6.
`
`Defendants ‘admit that John Stone is a Florida resident. Defendants deny A
`
`the remaining allegations of Paragraph 6 of the Complaint.
`
`7.
`
`Admitted.
`
`Jurisdiction and Venue
`
`8.
`
`Defendants deny the allegation of unauthorized use of common law
`
`trademarks and registered copyrights owned by Plaintiff. Defendants otherwise admit
`
`the allegations of Paragraph 8 of the Complaint.
`
`-
`
`9.
`
`Denied.
`
`10.
`
`Denied.
`
`I
`
`1
`
`11. Defendants admit the existence of the website but otherwise deny the
`
`' allegations of Paragraph 11 of the Complaint.
`
`General Allegations
`
`12.
`
`Defendants admit l-‘TH, lnc. sells t-shirts. Defendants denyjthe remaining
`
`allegations of Paragraph 12 of the Compl
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