BULKY DOCUMENTS
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`(Exceeds 300 pages)
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`Proceeding] Serial No: 91 157178
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`Filed: O9-22-2008
`
`Title: Applicant’s Memorandum and Evidentiary
`Materials in Response to _Opposer’s Motion for
`Summary Judgment
`‘
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`Part 301‘ 3
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`
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`Processed by Duane Foster
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`

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`Opposition No. 91157178
`
`Applicant Tonya S. Vaughan's
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`Exhibit
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`9 O
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION
`
`pkg
`
`V .
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`INTERNATIONAL STAR REGISTRY OF
`ILLINOIS, LTD., an Illinois
`corporation,
`
`Plaintiff,
`
`M&M ASSOCIATES,
`
`a Partnership;
`_
`MELVIN L. FULLER,
`an Individual;
`
`MAGGIE WEISBERG,
`an Individual; and
`
`TANYA VAUGHN,
`an Individual,
`
`COMPLAINT
`
`NATURE AND STATUTORY BASIS OF ACTION
`
`M?z’f“_‘i»°'1"‘*3'I1"‘..-‘.'~’;.»"*~,1r"1-,7 .*Y,.'.T)‘.3.Z.. Cr? ,Z.vjY‘$,«§&;§.I<._‘§
`
`1.
`
`This is an action for (a) Unfair Competition under the
`
`laws of the United States, as provided for by Title 15, United
`
`States Code, Section ll25(a);
`
`(b) Trademark Infringement and
`
`Unauthorized Use of a Trademark;
`
`(c) Common Law Unfair
`
`Competition;
`
`(d) Deceptive Trade Practices and Consumer Fraud;
`
`(e) Dilutionfi
`
`THE PARTIES
`
`2.
`
`Plaintiff, International Star Registry of Illinois,
`
`Ltd.
`
`(hereinafter sometimes referred to as ”ISR"),
`
`is an Illinois
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`corporation having its principal place of business at 34523 N.
`
`Wilson Road, Ingleside, Illinois 60041.
`
`3.
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`Defendant, M&M Associates, on information and belief,
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`is a partnership.
`
`On information and belief Defendants Melvin L.
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`#91157178V§ughanEx.
`'7,-‘J
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`

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`Fuller and Maggie Weisberg are general partners associated with
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`said partnership.
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`On information and belief, Tanya Vaughn is a
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`distributor or licensor of the Defendant, M&M Associates and/or
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`of the other individual Defendants.
`
`On information and belief,
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`the Defendant partnership has its principal place of business
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`located at 12424 Main Street, Box 1020, Fort Jones, California
`
`96032 and, on information and belief,
`
`the Defendant individuals,
`
`Melvin L. Fuller and Maggie Weisberg, also reside in the State of
`
`California, with the Defendant Tanya Vaughn, on information and
`
`belief, residing in Oregon.
`
`4.
`
`The Defendants have, on information and belief,
`
`distributed or offered for sale the services and products as will
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`be subsequently described within this Complaint which form the
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`basis for the violations of Federal and Illinois laws alleged
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`herein. The Plaintiff and, on information and belief, Defendants
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`market their respective services and products to prospective
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`purchasers within the Northern District of Illinois, Eastern
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`Division.
`
`COUNT I
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`FEDERAL UNFAIR COMPETITION
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`5.
`
`As a complete and first ground for relief,
`
`ISR hereby
`
`alleges that the Defendants have committed Unfair Competition as
`defined under the Trademark Laws of the United States, and in
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`particular 15 U.S.C. 1125(a), and re—alleges Paragraph Nos.
`
`1
`
`through 4 of this Complaint.
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`6.
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`Since 1979 Plaintiff has been continually engaged in
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`the business of providing the service of naming stars for members
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`of the public.
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`The Plaintiff has identified a large number of
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`unnamed stars and Created a gift package including original and
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`creative materials for presentation to an individual if a star is
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`to be named after him or her.
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`For a small fee the Plaintiff will
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`assign names of individuals to such stars as a gift or
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`remembrance item for a friend or loved one.
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`7.
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`The iniqte star identification materials sent by
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`Plaintiff to customers ordering a star to be named,
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`or after whom
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`a star has been named,
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`include a decorative certificate suitable
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`for framing, bearing a gold seal,
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`identifying the star and the
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`new name of the star, a cover letter from the Plaintiff, a
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`constellation chart
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`to aid in the location of the star by showing
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`constellations, drawn and created by an employee of Plaintiff,
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`and a detailed star map showing a portion of the sky with the
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`customer's star marked thereon. Also the materials include a
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`booklet by Dr. James J. Rickard and formerly by Dr. T. Harry
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`Leith (both noted Doctorates in Astronomy)
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`to promote an interest
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`in astronomy.
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`The star naming package is packed in a flat
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`cardboard carton measuring 12 X 17 inches and sent directly to
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`the customer.
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`8.
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`The star identification package, contents, and format
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`have been used continuously by Plaintiff for many years in its
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`business of naming stars for customers, and have acquired a
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`secondary meaning whereby they are associated with the Plaintiff
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`by members of the public familiar with Plaintiff and Plaintiff's
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`services and products associated with astronomy.
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`9.
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`Plaintiff has adopted several
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`trademarks and service
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`marks on or in association with its advertising for its star
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`identification packages in order to identify its services to the
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`public,
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`including the service mark,
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`trademark, and trade name
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`INTERNATIONAL STAR REGISTRY, and the service mark and trademark
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`STAR REGISTRY, which marks have come to be known by members of
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`the public as identifying Plaintiff and Plaintiff's star naming
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`services and star naming packages and literature associated with
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`astronomy.
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`10.
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`The Plaintiff maintains a directory and publishes
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`books, which list each star by the designated name and show the
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`coordinates for the identified star.
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`11.
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`The Plaintiff has registered in the United States
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`Patent and Trademark Office the mark INTERNATIONAL STAR REGISTRY
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`as Registration No. 1,420,543,
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`issued on December 9, 1986. This
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`registration issued upon the Principal Trademark Register and is
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`in full force and effect.
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`A Section 8 & 15 Declaration was
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`approved for this registration and the registration has achieved
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`”incontestable” registration status.
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`A copy of this Registration
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`is attached as Exhibit A.
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`ISR has also registered in the United
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`States Patent and Trademark Office upon the Principal Trademark
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`Register the mark INTERNATIONAL STAR REGISTRY as Registration
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`No. 2,101,458, and the mark STAR REGISTRY as Registration
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`No. 2,101,459, both registrations issued on September 30, 1997.
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`Copies of these Registrations are attached as Exhibits B and C,
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`respectively.
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`In addition,
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`ISR has registered in the United
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`States Patent and Trademark Office upon the Supplemental Register
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`the mark INTERNATIONAL STAR REGISTRY as Registration
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`No. 1,356,046,
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`issued on August 20, 1985.
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`A copy of this
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`Registration is attached as Exhibit D.
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`12. Plaintiff has spent considerable sums of money in
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`promoting and advertising its business under the service marks,
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`trademarks, and trade names INTERNATIONAL STAR REGISTRY and
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`STAR REGISTRY throughout
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`the United States,
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`including advertising
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`in major metropolitan areas such as Chicago, New York, Los
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`Angeles, and many other areas.
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`13. Plaintiff has made sales in excess of Four Million
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`Dollars ($4,000,000.00) during the calendar year of 1998 alone
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`for the service of naming stars, all under plaintiff's well—known
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`service marks,
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`trademarks, and trade names.
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`14. Plaintiff has named over Seven Hundred Fifty Thousand
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`(750,000) stars for persons throughout all of the United States,
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`including Illinois and this District.
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`15. Plaintiff's advertising and extensive sales throughout
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`the United States have created a substantial amount of goodwill
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`in Plaintiff's service marks,
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`trademarks, and trade names and has
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`created an excellent reputation for Plaintiff under the service
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`marks,
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`trademarks and trade names INTERNATIONAL STAR REGISTRY and
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`STAR REGISTRY.
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`16.
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`In publicizing, promoting and advertising its products
`
`and services the Plaintiff has incurred expenses in excess of
`Four Million Dollars ($4,000,000.00)
`in the last four years
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`alone.
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`The mark INTERNATIONAL STAR REGISTRY has been widely
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`promoted in connection with the Plaintiff's products and
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`5
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`services.
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`Promotional or advertising activities have included
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`network television advertising or publicity,
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`radio advertising,
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`magazine advertising, newspaper advertising and a multitude of
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`other activities associated with promoting the service marks,
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`trademarks, and trade names INTERNATIONAL STAR REGISTRY and
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`STAR REGISTRY. Over One Billion (l,OO0,000,000) consumer
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`impressions of the mark INTERNATIONAL STAR REGISTRY are
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`calculated to have occurred just during a recent four
`
`(4) year
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`time period.
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`17. Plaintiff has,
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`for a long time, maintained an 800 area
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`code telephone number listing under the service marks
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`INTERNATIONAL STAR REGISTRY and STAR REGISTRY for taking
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`telephone orders from customers, and these service marks have
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`acquired a secondary meaning associated exclusively with
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`Plaintiff and Plaintiff's business. Customers often identify
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`Plaintiff as INTERNATIONAL STAR REGISTRY and STAR REGISTRY in
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`their correspondence and conversations with Plaintiff.
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`18. Plaintiff has prepared original promotional pamphlets
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`and materials which have been widely distributed throughout
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`the
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`United States, which have developed a secondary meaning and
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`appearance associated in the mind of consumers as indicating
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`Plaintiff and Plaintiff's services and products.
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`19. As a result of the extensive advertising, sales, word
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`of mouth and editorial comment
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`in newspapers and other
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`publications throughout
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`the United States, Plaintiff has
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`developed valuable goodwill symbolized by Plaintiff's service
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`marks,
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`trademarks, and trade names and the distinctive
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`fulfillment materials and advertising brochures and material
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`distributed by Plaintiff.
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`20.
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`The Plaintiff's use of the service marks,
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`trademarks,
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`and trade names INTERNATIONAL STAR REGISTRY and STAR REGISTRY in
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`connection with various services and products and on marketing
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`materials for promoting these services and products are shown on
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`Exhibits E, F, and G.
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`215 Plaintiff continues to enjoy great success in selling
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`services and products associated with the service marks,
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`trademarks, and trade names INTERNATIONAL STAR REGISTRY and
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`STAR REGISTRY.
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`22.
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`The service marks,
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`trademarks, and trade names
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`INTERNATIONAL STAR REGISTRY and STAR REGISTRY are of substantial
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`value to the Plaintiff.
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`For more than fifteen (15) years of
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`Plaintiff's use of the service marks,
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`trademarks, and trade names
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`INTERNATIONAL STAR REGISTRY and STAR REGISTRY, great effort and
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`substantial sums of money have been expended by Plaintiff in the
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`development, marketing, promotion and sale of Plaintiff's
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`services and products using these marks and trade names and in
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`making these marks and trade names familiar to the trade and
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`consuming public for such services and products provided by the
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`Plaintiff.
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`23. As a result of these activities,
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`the Plaintiff's marks
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`and trade names have gained widespread public recognition and
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`goodwill, and the trade and consuming public have come to
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`associate these marks with the Plaintiff. Based upon the
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`foregoing uses of the marks and names INTERNATIONAL STAR REGISTRY
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`and STAR REGISTRY, consumers,
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`the trade and others have come to
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`properly recognize products under the marks and trade names as
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`being associated with, affiliated with, or sponsored by a single
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`source of origin.
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`24. Notwithstanding the Plaintiff's well—known and prior
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`established rights in its service marks,
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`trademarks, and trade
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`names INTERNATIONAL STAR REGISTRY and STAR REGISTRY,
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`the
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`Defendants have commenced using marks or names including:
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`INTERNATIONAL STAR REGISTRY and variations of this mark upon the
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`Internet for the sale and distribution of star naming materials
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`which at times are similar to the type of star naming materials
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`of Plaintiff. These services and products could be sold in the
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`same or similar channels of trade,
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`to the same or similar
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`prospective purchasers as those of Plaintiff's services and
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`products sold under the service marks,
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`trademarks, and trade
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`names INTERNATIONAL STAR REGISTRY and STAR REGISTRY. Exhibits H
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`and I, on information and belief,
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`show the Defendants’ use of the
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`service mark, or trademark or trade name INTERNATIONAL STAR
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`REGISTRY or variations thereof.
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`25. Defendants’ use of the service mark,
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`trademark, and
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`trade name INTERNATIONAL STAR REGISTRY or variations thereof is
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`causing, and is likely to cause, confusion and mistake with
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`Plaintiff's services and products, sold in connection with the
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`marks and names INTERNATIONAL STAR REGISTRY and STAR REGISTRY, or
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`the Plaintiff's business so as to deceive the consumers,
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`the
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`trade and others, and thereby constitutes an infringement of the
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`Plaintiff's rights through unfair competition.
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`26.
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`The Defendants have adopted and are using the service
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`mark,
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`trademark, and trade name INTERNATIONAL STAR REGISTRY or
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`variations thereof in commerce in connection with the
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`distribution, promotion, advertising and sale to the consuming
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`public and trade of nearly identical types of services to those
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`offered by the Plaintiff under its marks and names.
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`27. Defendants’ conduct
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`in the designation of nearly
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`identical types of services to those offered by -he Plaintiff,
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`together with designing star naming materials or fulfillment
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`materials with similarities to the type of materials offered by
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`the Plaintiff, will increase the likelihood of confusion between
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`Defendants’ marks and names and the Plaintiff's marks and names.
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`28. Upon information and belief,
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`the mark and name
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`INTERNATIONAL STAR REGISTRY or variations thereof were selected
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`by Defendants in order to trade upon the reputation and goodwill
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`of Plaintiff. Defendants seek to reap where Defendants have not
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`SOWD .
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`29.
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`Persons familiar with Plaintiff's service marks,
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`trademarks, and trade names and the business of the Plaintiff
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`and/or Plaintiff's advertising or star naming materials, are
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`likely to be confused, mistaken and/or to be deceived upon seeing
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`Defendants’ use of the mark and name INTERNATIONAL STAR REGISTRY
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`or variations thereof, Defendants’ advertising and fulfillment
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`products, and to believe that Plaintiff's and Defendants’
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`businesses are one and the same, or that Defendants’ business is
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`endorsed by, sponsored by, or in some way connected with
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`Plaintiff or Plaintiff's business.
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`30. Defendants’ use of Plaintiff's service marks,
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`trademarks,
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`trade names, distinctive advertising or star naming
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`materials,
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`is likely to cause confusion, mistake and/or to
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`deceive those familiar with Plaintiff, Plaintiff's trademarks, or
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`Plaintiff's services or trade name into falsely believing that
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`Defendants’ services and business emanate from or are associated
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`with Plaintiff. Defendants have, on information and belief,
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`‘
`intentionally and willfully attempted to trade upon the goodwi
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`‘I
`.L
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`l
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`of Plaintiff in its marks,
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`trade names, advertising materials and
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`fulfillment materials.
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`31.
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`On information and belief, several unsuspecting members
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`of the public have already been tricked and deceived into
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`believing that Defendants and Defendants’ business are sponsored
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`by, associated with, and/or are the successors to, Plaintiff's
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`business.
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`32. Defendants’ advertising, sale and distribution of star
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`naming services and star naming materials has injured and will
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`continue to damage and injure Plaintiff's reputation and goodwill
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`among the public.
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`33. Defendants’ use in commerce of the service mark,
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`trademark and trade name INTERNATIONAL STAR REGISTRY or
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`variations thereof in connection with Defendants’ marketing,
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`distribution, promotion and sale to the consuming public of their
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`star naming services and products constitutes a misappropriation
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`of the distinguishing and identifying features which Plaintiff
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`created through substantial effort and expense,
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`thus evoking from
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`the trade, consumers and others an immediate commercial
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`10
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`impression or association favorable to Defendants, based on and
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`derived from Plaintiff's service marks,
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`trademarks, and trade
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`names INTERNATIONAL STAR REGISTRY and STAR REGISTRY and the
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`goodwill associated therein.
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`34. Defendants’ use of the service mark,
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`trademark, and
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`trade name INTERNATIONAL STAR REGISTRY or variations thereof
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`constitutes false representations that Defendants have some
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`connection or association with, or sponsorship by Plaintiff, and
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`that the services and products identified with Plaintiff are
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`available from Defendants.
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`35.
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`Said actions of Defendants constitute violations of
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`15 U.S.C. §ll2S(a)
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`in that such false designation and
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`representations of origin and quality are used on or in
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`connection with the services and products that Defendants cause
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`to enter into, or to affect commerce, which may lawfully be
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`regulated by Congress.
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`36. As a result of these misappropriations, Plaintiff has
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`been irreparably damaged and, unless Defendants’
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`infringing
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`activities are enjoined,
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`the Plaintiff will continue to suffer
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`irreparable injury to its property and goodwill.
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`37. Unless Defendants’ unfair and infringing acts are
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`restrained,
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`the serious damage suffered by Plaintiff will
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`continue to Plaintiff's irreparable harm.
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`COUNT II
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`38. Plaintiff re-alleges Paragraphs 1-37 of this Complaint
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`as though same were fully set forth in this Count II.
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`ll
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`39.
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`In addition to the Plaintiff‘s Federal Registrations
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`for the mark INTERNATIONAL STAR REGISTRY the Plaintiff also holds
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`an Illinois State Registration for the mark STAR REGISTRY.
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`40. Defendants’ use of the mark and name INTERNATIONAL STAR
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`REGISTRY or variations thereof is without permission and
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`authority of Plaintiff and constitutes willful infringement of
`Plaintiff's rights in the marks shown within the Plaintiff's
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`Federal-and State Trademark Registrations.
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`COUNT III
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`41. Plaintiff re-alleges paragraphs 1-37 and 39-40 of this
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`Complaint as though the same were fully set forth in this Count
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`III.
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`42. Defendants have misappropriated and unlawfully
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`exploited the valuable property rights and goodwill of Plaintiff
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`in its marks and names INTERNATIONAL STAR REGISTRY and
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`STAR REGISTRY through the use of confusingly similar service
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`mark,
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`trademark, and trade name,
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`INTERNATIONAL STAR REGISTRY or
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`variations thereof. As a result of these misappropriations,
`
`Plaintiff has been damaged and, unless Defendants’
`
`infringing
`
`activities are enjoined,
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`the Plaintiff will continue to suffer
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`irreparable injury to its property and goodwill,
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`including
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`destruction of the business value of the Plaintiff's marks, names
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`and reputation, and Defendants will be unjustly enriched thereby.
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`43.
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`These acts enable Defendants to unfairly compete with
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`Plaintiff and to deceive others by the use of the service mark,
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`trademark, and trade name INTERNATIONAL STAR REGISTRY or
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`12
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`variations thereof for Defendants’ profit and to Plaintiff‘s
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`detriment
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`in violation of the Illinois Trademark Act 765 ILCS
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`1035/0.01 et[seg.,
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`in violation of the Illinois Consumer Fraud
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`and Deceptive Business Practices Act, 815 ILCS 505/I-12, and in
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`violation of the Illinois Uniform Deceptive Trade Practices Act,
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`815 ILCS 510/l-7.
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`COUNT IV
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`44.- Plaintiff re-alleges paragraphs 1-37, 39-40, and 42-43
`
`of this Complaint as though the same were fully set forth in this
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`Count
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`IV.
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`45. Defendants,
`
`through the use of the service mark,
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`trademark, and trade name INTERNATIONAL STAR REGISTRY or
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`variations thereof, have engaged in unfair methods of competition
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`and unfair and deceptive acts and practices in and affecting
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`commerce, which conduct is likely to cause confusion, mistake or
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`deception of prospective purchasers into believing there is some
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`affiliation, association or common source of sponsorship between
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`Plaintiff's and Defendants’ mark, services, products or business
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`in violation of the Common Law of Unfair Competition through
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`engaging in Trademark Infringement.
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`COUNT V
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`46. Plaintiff re—alleges paragraphs 1-37, 39-40, 42-43, and
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`45 of this Complaint as though the same were fully set forth in
`
`this Count V.
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`47.
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`The actions of the Defendants have diluted the
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`distinctive quality of Plaintiff's marks
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`13
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`INTERNATIONAL STAR REGISTRY and STAR REGISTRY,
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`in violation of
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`the Dilution Statute of the State of Illinois, 765 ILCS 1035/15,
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`and the Federal Trademark Laws, resulting in irreparable harm and
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`damage to the Plaintiff.
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`The Plaintiff does substantial business
`
`in Illinois under the service marks,
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`trademarks, and trade names
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`INTERNATIONAL STAR REGISTRY and STAR REGISTRY and the Defendants,
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`on information and belief, offer their services which use the
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`mark INTERNATIONAL STAR REGISTRY or variations thereof in
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`Illinois.
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`48. Continuous use by Defendants of an identical or a
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`nearly identical mark to Plaintiff's marks,
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`in the sale of
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`Defendants’ services and products, works an inexorable adverse
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`effect upon the distinctiveness of Plaintiff's marks. Unless
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`Defendants’ unauthorized and uncontrolled conduct is stopped
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`immediately, it will continue to dilute the distinctive quality
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`of Plaintiff's marks and inevitably destroy the value of such
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`marks to Plaintiff and the goodwill associated with its marks,
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`which Plaintiff has spent considerable time, energy and money to
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`develop.
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`WHEREFORE, Plaintiff prays:
`
`A.
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`That
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`judgment be entered finding that the Defendants,
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`through their use of the confusingly similar service mark,
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`trademark, and trade name,
`
`INTERNATIONAL STAR REGISTRY or
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`variations thereof in the advertising, marketing and promotion of
`
`their services and products, have competed unfairly with
`
`Plaintiff in violation of the Federal Unfair Competition Law and
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`the Trademark Infringement Laws.
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`14
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`B.
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`That Defendants, Melvin L. Fuller, Maggie Weisberg, and
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`Tanya Vaughn individually and Defendant, M&M Associates, and any
`of its officers, agents, servants, employees, attorneys and all
`
`“
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`persons in active concert or participation with them who receive
`notice, be preliminarily and permanently enjoined and restrained
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`from:
`
`(i)
`
`Using the service mark,
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`trademark, and trade name
`
`INTERNATIONAL STAR REGISTRY, or any colorable variations or
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`imitations thereof, or any words, designs or representations
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`confusingly similar thereto in connection with the advertising,
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`offering for sale and/or sale of the Defendants’ services or
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`products;
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`(ii) Otherwise infringing the service marks,
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`trademarks, and trade names INTERNATIONAL STAR REGISTRY and
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`STAR REGISTRY, or adopting or using confusingly similar marks;
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`(iii) Unfairly competing with Plaintiff or diluting the
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`distinctiveness of Plaintiff's marks, or the Plaintiff's
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`distinctive uses thereof, or injuring Plaintiff's business
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`reputation in any manner; and
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`(iv) Causing a likelihood of confusion or
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`misunderstanding as to source, sponsorship, approval or
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`certification of Defendants’ services or goods or as to
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`affiliation, connection or association of them with, or approval
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`of them by Plaintiff, or engaging in conduct
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`tending to create a
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`false commercial
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`impression of Defendants’ services, products, or
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`any other conduct which similarly creates a likelihood of
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`confusion, misunderstanding or false representation.
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`15
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`
`C.
`
`That Defendants be directed to deliver up to this Court
`
`for destruction, pursuant
`
`to 15 U.S.C. 1118, all prints,
`
`advertisements,
`
`tapes,
`
`labels, packaging or other articles
`
`bearing the mark or name INTERNATIONAL STAR REGISTRY or any
`
`variations thereof, and any reproduction, counterfeit, copy or
`
`colorable imitation thereof, and all plates, molds, matrices,
`
`screens, and other means of making the same.
`
`D.
`
`- That Defendants be directed to discontinue the use of
`
`and be prohibited from using in the future any advertising or
`
`fulfillment materials which are copied or derived from the
`
`Plaintiff or where confusingly similar marks or names of the
`
`Plaintiff appear in connection with such materials.
`
`E.
`
`That an accounting be held and judgment rendered
`
`against Defendants jointly and severably for three (3)
`
`times:
`
`(i) All profits received from the sale of their
`
`unfairly competing products since the date such activity
`
`commenced; and
`
`(ii) Actual damages sustained by Plaintiff on account
`
`of Defendants’ unfair competition,
`
`infringement and deceptive
`
`practices.
`
`F.
`
`That Defendants be ordered to abandon any applications
`
`or cancel any federal or state registrations for the mark or name
`
`INTERNATIONAL STAR REGISTRY or any variations thereof.
`
`G.
`
`That this Court require that Defendants jointly and
`
`severably be required to pay reasonable attorneys‘
`
`fees and
`
`taxable costs incurred by Plaintiff.
`
`l6
`
`

`
`H.
`
`Such other and further relief as the Court deems just
`
`and equitable.
`
`INTERNATIONAL STAR REGISTRY OF
`ILLINOIS, LTD., an Illinois
`
`corporation,
`Burton S. Ehrlich
`//
`//7'
`,/ //I
`WI
`\
`John C. Brezina
`/4
`Brezina & Ehrlich
`j?%:Z2;?Z%;;2;% 1/<7/;4//i
` Dearborn_Station Tower . //’ ’
`
`
`47 West PO1k Street
`By One of its/Attorneys
`Suite 333
`
`N
`
`,—u
`
`.
`
`
`
`I./
`
`A
`
`/~
`
`IL 60605-2092
`Chicago,
`(312) 408-0077
`
`17
`
`

`
`Int. CL: 42
`
`Prior U.S. CL: 101
`
`United States Patent and Trademark Office
`
`_
`Reg. No. 1,420,543
`Rsg;-'st:r:d Dec. 9, 1985
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`I;\T‘ERNATION.$.L STAR REGISTRY
`
`I.\‘T‘;‘R.\'.—\T!Om\’AL STAR REGISTRY OF ILLI«
`.\’r‘f<. LTD. (ILLINOIS CORPORATION)
`;3;z v~‘11_r_r_w~:‘ ROAD
`.\‘C?.'-.7-1FIELD,IL 5CC93
`
`—
`aészcxrnwc c:;.=.smL S.ARS WIT’-1
`.\'.«.x::s SE~'.E’”"".;:.D av CUSTO-Ni.‘-IRS AND
`PROVIDING CZ-RTE.’-‘zC.4.T:'S AND A REC-iS-
`TR?‘ z.\' 33-0 -NTTION THEREOF.
`IN cuss
`11:115. CL. 10i).
`
`CO‘«{‘w{ER:E
`Ix
`c—~’3—1979
`LS5
`T~":R5"‘
`0-15-1979.
`0 ‘ER 0?’ L73. ?EC-. NO 1356.04-5
`E
`NO CLAIM ‘S MADE T
`THE. EIKLLLE
`'~UGI~.”“ TO USE
`STAR REGISTRY
`-\°—’“
`’-"ROM “"
`.\IAR.‘< -XS S2~ZO‘~\'.
`5;- -\
`323+-‘o. 549.027. FILED 7-19-1925.
`_
`~93" _, :~;«\\c*~ s‘:wv\1>:c ATTO?‘ :
`
`HIBI
`
`

`
`
`
`5%»
`
`Int. CL: 16
`
`Prior U.S. CIs.: 2, 5, 22, 23, 29, 37, 38 and 50
`
`United States Patent and Trademark Office
`
`Reg. No. 2,101,458
`
`Registered Sop. 30, I997
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`INTERNATIONAL STAR REGISTRY
`
`USE
`
`6—O—I979;
`
`TO. IN CLASS I6 (us. 0.5. 2. 5. 22. 23, :9. 37. JR
`AND 50).
`FIRST
`6-0-1979.
`OWNER OF US. REG. NOS.
`|,42o,543.
`SEC. 2(F).
`
`IN
`
`COMMERCE
`
`1,356,046 AND"
`
`IN"I'I_':RNATI()N/\L STAR RI‘~.C?IS‘I‘RY OF II.I.I-
`NOIS. LTD. (ILLINOIS CORPOR/\'I'ION)
`34523 N. WILSON ROAD
`INGLESIDE, IL 6004I
`
`FOR: PRINTED PUBLICATIONS, NAMELY.
`BOOKLETS, BROCHURES, CHARTS, AND
`SHEETS IDENTIFYING CELESTIAL BODIES,
`PERTAINING TO ASTRONOMY AND FOR
`PERSONS HAVING AN INTEREST IN AS-
`TRONOMY AND TOPICS RELATED THERE-
`
`SER. NO. 75—I75,895. FILED 9~27—I996.
`
`JEFFERY COWARD, EXAMINING ATTORNEY
`
`
`
`

`
`Int. CL: 16
`
`Prior U.S. CIs.: 2, 5, 22, 23, 29, 37, 38 and 50
`Reg. No. 2,101,459
`United States Patent and Trademark Office.
`
`Registered Sep. 30, 1997
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`STAR REGISTRY
`
`TO, IN CLASS 16 (US. CLS. 2. 5. 22, 23, 29, 37, 38
`AND 50).
`FIRST
`6-0-1979.
`
`USE
`
`6—O—I979:
`
`IN
`
`COMMERCE
`
`INTERNATIONAL STAR REGISTRY OF ILLI-
`NOIS, LTD. (ILLINOIS CORPORATION)
`34523 N. WILSON ROAD
`INGLESIDE. IL 60041
`
`FOR: PRINTED PUBLICATIONS, NAMELY,
`BOOKLETS, BROCHURES, CHARTS, AND
`SHEETS IDENTIFYING CELESTIAL BODIES.
`PERTAINING TO ASTRONOMY AND FOR
`PERSONS HAVING AN INTEREST IN AS-
`TRONOMY AND TOPICS RELATED THERE-
`
`OWNER OF US. REG. NOS.
`1,420,543.
`SEC. 2(F).
`
`l.356,0‘-16 AND
`
`SER. NO. 75-1’/'5,S96. FILED 9-27-1996.
`
`JEFFERY COWARD, EXAMINING ATTORNEY
`
`
`
`

`
`.____”
`
`
`
`
`
`
`
`».—.;~._...-....a._.....-~..........I-_...__.-.._._._.___._____
`
`Int. CI.: 35
`
`'
`
`®
`
`Prior U.S. C1,: 101
`
`Reg. No. 1,356,046
`United States Patent and Trademark Office Registered Aug. 20, 1985
`
`SERVICE MARK
`SUPPLEMENTAL REGISTER
`
`INTERNATIONAL STAR REGISTRY
`
`INTERNATIONAL STAR REGISTRY OF ILLI-
`NOIS, LTD. (ILLINOIS CORPORATION)
`182] WILLOW RD.
`NORTHFIELD, IL 60093
`
`FOR: NAMING DIFFERENT INDIVIDUAL
`STARS IN A STAR CATALOG WITH THE
`NAME DESIGNATED BY CUSTOMERS, PRO-
`VIDING CERTIFICATES
`THEREOF, AND
`PLACING THE CATALOG ON FILE WITH
`PUBLIC LIBRARIES ,
`IN CLASS 35 (U.S. CL.
`101).
`
`FIRST USE
`9-15-1979.
`
`6-0-1979;
`
`IN
`
`COMMERCE
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE “STAR REGISTRY", APART
`FROM THE MARK AS SHOWN.
`
`SER. NO. 459,110, FILED P.R. 12-30-1983: AM.
`S.R. 6-14-1985.
`
`AVIS FRAZIER-THOMAS, EXAMINING AT~
`TORNEY
`
`
`
`
`
`.._:.'.’..'.'s£......C.._....:1...
`
`
`
`_.__..._..-.--.....
`
`
`
`

`
`EXHIBKT E
`
`

`
`
`
`Corporate Headquarters
`34523 Wilson Rd.
`
`lngleside, IL 60041
`USA
`
`(800) 282—3333
`
`Australia
`P. O. Box 7681
`
`Bondi Beach, NSW 2026
`612-9130-8944
`
`Australia-Brisbane
`
`65 Gracemere St.
`The Grange, Queensland 4051
`61-7-3856-1300
`
`Canada
`
`Betelgeuse
`25-A Wilson St.
`
`Lennoxville, QB, 11M 1N2
`819-562-3700
`
`England
`24 Highbury Grove
`London, N5 2EA
`44—171—226—6886
`
`France
`
`94 Rue Rouget de Lisle
`Suresnes, 92150
`33-1-41-18-95-95
`
`Germany
`Peute Str 53C
`
`Hamburg, 20539
`49-40—78—25—96
`
`ltal)’
`PSN lntemamnal
`Via Dezza 25
`Milano, 20144
`
`39-2-498-9931
`
`Japan
`3—20—20—1703 Kaigan Minato—ku
`Tokyo—to 108
`81-3-3451-4381
`
`Reunion Island
`
`A. Hart Distribution
`39 Residence Mazagran
`Saint Dennis, 97400
`
`262-21-51-15
`
`Also In:
`
`Barcelona
`
`Hong Kong
`Johannesburg
`Moscow
`Sao Paulo
`Tel-Aviv
`
`EXHIBIT F
`
`‘
`’.
`
`1
`
`
`
`

`
`Star Regis’rry@ Booklet
`
`INTERNATIONAL STAR REGISTRY
`.
`34523 WILSON ROAD —:——INGLESIDE, ILLINOIS 60041
`
`
`
`EXHIBIT G
`
`

`
`

`
`Name a Star- An International otar Registry Programme
`
`5
`
`Page I of 2
`
`Introduction To Name a Sz‘ai°TM
`
`\.!
`
`"Ilia .‘\-‘mire a 5/ar Porgfo//0”‘ (ISBN 1-377732-.v.~'-7,") is one of the most beautiful and
`satisfying gifts you can gve to any one. .\/l-any have given the Name 0 Srzzr
`/Dorifo/i(> W as a gift. memorial or tribute for a Birth, Birthday, Wedding,
`Aflnl\'CT.S8.1'_\/'. (lrzuluation, ,‘vlo‘;l1er's Day, Father‘s Day. Valentine's Dav. Cllflf-STIIE1dS
`arid many other holidays and occasions.
`1
`
`Learn What your Nczmc a_ Star P0_7‘_l:/‘:CV7:}__l:QT““ includes when y0U
`
`'l"ne Name a .S'fa;- Porlf9z’.ioT-‘l has been used to present commeridationsi awards.-
`COl‘igl'aI1llEl[l0flS and laudations for all types of aeeomplishmems and éIClllCV ements
`of people of all ages.
`
`The .-Nome cz Szvr Porgfolzb T“ has been given by corporations ‘to pay tribute to
`employees for their outstanding work, dedication or longevity.
`
`Memorial Stars are extraordinarily powerful — Their cominiied presence in the
`Polar Slw helps l<ee memories alive with a sim le u iward glarice on a starry
`.
`.
`l
`.,
`.
`I1l9.f‘u.
`
`Each (_.er;‘_.";fz:af. 0:2’ Regz‘s~zn'1/for. is liand tailored to your needs.
`They are NOT mass produced?
`
`,,S"za_r_T_-‘_4_g'.‘_e_r:ifie__r_;_o_;VRe;_ri_str_g_i_or1 is framed. it can
`when the gOlCl.“f_l__l_‘_Z,'._‘_€$_.i'\"_§‘._’.’__T§‘.~';’_:'_i
`be kept as long as there is a basis for love, . onor and respect between the
`and the Receivers.
`
`- By lending the name ofyoizr loved to 9. Star, he or she will have a lifetime of
`occasions to look up and better ur1d.erstand their relatiotisiiip to the awesome
`unix arse.
`
`The Name a Star /302-§”o/£075‘ is available several languages iricludirig E.'nglish,
`Frenc/7, Ira/."a77. .5:/7:zm‘.s'/2 and German.
`
`OUR GUARANTEE
`
`Name a Srar’$T"“ primary purpose for doing this wonderfiil work is to bring joy.
`We love to share in the love expressed in the .-’\-"Lime a SIar""" gift. Your satisfaction
`is guaranteed but don't take our word for it. S.§_§_V_\g'}_'}_f:_If.‘()L.1_l"A__(;.‘_ll._C_1'1_l‘.S h21V_,C_t_Q__S.E1.}’ 3‘-UOLIT.
`s1t;t..servi2<_:.a1;s:_producI.
`
`The Name a Szar I-’0r{)‘b[i0"‘1"‘ is $49.95 plus sltippjgg.
`
`

`
`NEIDC 1 SET‘ An I11temationa.a:
`
`Pfogmmmg
`
`0
`
`
`
`-——~—---— Page Seleaar ~—-———-—
`
`1“
`
`-C‘ Copygjg_(3_: 1999by All rights reserved.
`Please e-mail '_i_'g_r;yg@r}a_{nc.‘\st&r,;1¢; or phone 1-800-368-7800 regarding ordcrs. pricing or shipping.
`Pie.-La». report prcbierns with this web site to wc_l_7_mg.<._te_;Ca;rw:z-..cgs_*.;~;r.n«at.
`This page last updated on September 20, 5999
`
`
`
`

`
`Opposition No. 91157178
`
`Applicant Tonya S. Vaughan's
`
`Exhibit
`
`3 (
`
`

`
`UINQEED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF ILLINOIS
`
`Michael W, Dobbins
`'
`«€EERK
`
`Office of the Clerk
`
`Joan I. Norek
`
`Attorney at Law
`180 North Lasalle Street
`1800
`
`Chicago,
`
`IL 60601
`
`Title:
`
`Intl Star Registry v. M&M Associates
`
`Assigned Judge: Honorable Wayne R. Andersen
`
`MINUTE ORDER of 10/29/01 by Hon. Wayne R. Andersen
`(Entered stipulated dismissal order). By stipulation and
`agreement of the parties, it is hereby ordered-that the
`plaintiff's complaint is dismissed with prejudice;
`defendants’ counterclaims are dismissed with prejudice and
`all parties to bear the responsibility for their own
`attorney fees and costs. Status hearing set for 12/11/01 is
`stricken terminating case. Mailed notice
`
`This docket entry was made by the Clerk on October 30, 2001
`
`ATTENTION: This notice is being sent pursuant to Rule 77(d) of the
`Federal Rules of Civil Procedure or Rule 49(c) of the Federal
`Rules of Criminal Procedure.
`It was generated by ICMS,
`1
`the automated docketing system used to maintain the