IN THE UNI ED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE T E TRADEMARK TRIAL AND APPEAL BOARD
`
`PLAYMAKERS, LLC,
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`-against-
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`ESPN, INC.,
`
`Opposer,
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`Applicant.
`
`Opposition No. 91 159357
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`APPLICANT’S MOTI I N TO SUSPEND THE OPPOSITION PROCEEDING
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`Pursuant to TBMP § 51 .O2(a) and 37 C.F.R. § 2.1l7(a), applicant ESPN, Inc., by its
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`attorneys White & Case LLP, =-reby moves the Board for an order suspending the above-
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`captioned proceeding pending t e outcome of PlayMakers, LLC v. ESPN Inc. et al., Case No.
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`C03-2894P, a civil action curren ly pending before the United States District Court for the
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`Western District of Washington t Seattle and PlayMakers, LLC v. ESPN Inc. et al., Case No.
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`04-35031, an associated appeal or the district court’s denial of the plaintiffs motion for
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`preliminary injunction currently pnding before the United States Court of Appeals for the Ninth
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`Circuit (collectively, the “Federal A ction”). The Federal Action involves the same parties and
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`similar issues as those in this oppoition proceeding such that the outcome of the Federal Action
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`will be dispositive of the opposition proceeding.
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`Plaintiff in the Federal Actim (Opposer in this proceeding) brought its action for
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`trademark infringement, dilution, u fair competition, and related claims under federal and
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`Washington statutory and common lw, seeking injunctive relief, damages, profits, reasonable
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`attorneys’ fees, costs, and such other and further relief as the federal court deems just and proper
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`to prevent ESPN, Inc. (Applicant int is proceeding) from using the title “Playmakers” for an
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`original dramatic scripted sries chronicling the lives of the players, families, coaches and owner
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`of a fictional professional fotball team. (E Complaint, attached hereto as Exhibit 1.)
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`Disposition of these c aims will determine whether Applicant’s proposed registration
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`damages or will damage Opp o ser. Specifically, the Federal Action will address whether
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`Applicant’s mark PLAYMAK RS for the services set forth in the application so resembles
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`Opposer’s PLAYMAKERS mrks as to be likely to cause confusion, mistake or deception;
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`whether Applicant’s mark PLA MAKERS consists of or comprises matter which falsely
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`suggests a connotation with Op oser; and whether Applicant’s mark PLAYMAKERS, as used in
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`connection with the services set orth in the application, is confusingly and deceptively similar to
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`Opposer’s PLAYMAKERS mar - s. Accordingly, the issues to be resolved by the Board will be
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`largely duplicative of the issues a» be resolved by the Federal Action. Suspending this
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`proceeding pending the Federal A tion will be the most administratively efficient means of
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`adjudicating this dispute. Therefo e, Applicant brings this motion to suspend the proceeding in
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`good faith, and not for reasons of dlay.
`
`Dated: New York, New York
`March 15, 2003
`
`WHITE & CASE
`
`
`
`Jennifer J. Millones
`
`1155 Avenue of the Americas
`
`New York, New York 10036
`(212) 819-8200
`
`ATTORNEYS FOR ESPN, INC.
`
`t
`
`— CERTIFICATE OF EXPRESS MAIL
`
`37 C.F,R. §
`
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`EXHIBIT 1
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`

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`5.4
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`lllllll Illll lllll Illll IIIIH III lllll l||| III!
`llllllllIIIIIIIIIIIIIIIIIIIII HIII
`03-CV-02894-CMP
`
`J
`
`_____FlLED ____,_ENTERED
`__..__...LODGED._____ RECEIVED
`SE?
`3 2003
`9’
`A1 SEATTIE
`CLERK ‘J 5. Dr_=“iuc1 COURT
`wasmm Drsmxc: or was:-«moron
`DEPu1Y
`
`BY
`
`: ITED STATES DISTRICT COURT
`' TERN DISTRICT OF WASHINGTON
`AT SEATTLE
`
`PLAYMAKERS, LLC, a Was ' gton limited
`liability company,
`
`Plaintiff,
`
`V.
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`was 2894.?
`
`COMPLAINT FOR INJUNCI‘IVE
`RELIEF AND DAMAGES FOR:
`
`ESPN, ]NC., aDelaware coxporat on, ABC
`CABLE NETWORKS GROUP, a California
`corporation; ORLY ADELSON
`PRODUCTIONS 1NC., a Califo
`
`a corporation,
`
`Defendants.
`
`1.
`
`2.
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`TRADEMARK INFRINGEMENT
`
`(FEDERAL);
`TRADEMARK INFRINGEMENT -
`REVERSE CONFUSION
`
`(FEDERAL);
`DILUTION OF TRADEMARK BY
`
`TARNISI-IMENT (FEDERAL);
`LANHAM ACT VIOLATION
`
`(FEDERAL);
`UNFAIR COMPETITION
`
`,
`(FEDERAL);
`TRADEMARK INFRINGEMENT
`
`(STATE);
`TRADEMARK INFRINGEMENT —
`
`REVERSE CONFUSION (STATE);
`VIOLATION OF CONSUMER
`
`PROTECTION ACT (STATE);
`DILUTION OF TRADEMARK BY
`
`TARNISHMENT (STATE); AND
`ACCOUNTING (STATE)
`
`COMPLAINT - 1
`(5138! Doc)
`
`RIGINAL
`
`HENDRICKS & Lewis
`99‘? THIRD AVENUE. SUITE 2675
`SEATIIE. WASHINGTON 93104
`(206) 624-1933
`
`

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`JURISDICTION AND VENUE
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`1.
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`This Court h original jurisdiction over the subject matter of this action pursuant
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`to 15 U.S.C. § 1125(a) et seq , 28 U.S.C. §§ 1331, 1338(a) and (b), and the principles of
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`supplemental jurisdiction. V ue in this district is proper pursuant to 28 U.S.C. § 1391 (b) and
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`(0)-
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`NATURE OF ACTION
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`2.
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`This is an actio for trademark infringement in violation of Section 32 ofthe-
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`La.nham Act, 15 U.S.C. § 1114 for false designation of origin and false descriptions and
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`representations in commerce un er Section 43 of the Lanham Act, 15 U.S.C. § 1125; for unfair
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`and deceptive methods of comp tition in violation of Section 43 of the Lanham Act, 15 U.S.C. §
`1125 and in violation ofthe Was 'ngton’s Consumer Protection Act, RCW 19.86, et seq.; for
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`trademark dilution by tamishme t in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §
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`1125 and under RCW 19.77.160; and for an accounting under Washington law.
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`PARTIES
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`3.
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`Plaintiff is, and has been at all times material hereto, a limited liability company
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`organized and existing under the 1 s ofthe State of Washington, having its principal place of
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`business in Seattle, Washington.
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`4.
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`Plaintiff is the own of two registered service marks for the word
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`“PLAYMAKERS" (hereinafter refe - - to as “the Service Marks”) for, among other things,
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`agency services, including represent: - g and advising professional athletes and aspiring
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`professional athletes in contract nego 'ations with professional sports teams and in endorsements
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`and appearance agreements.
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`5.
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`Since January 1997, P1 ' - tiff has continuously used the Service Marks in the
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`10
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`COIWPLAINT - 2
`{5138l.DOC)
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`HENDRICKS & LEWIS
`sEArn.i=. WASHINGTON mm
`999'1‘HlRDAVENUE. SUTTE2675
`(305) 614-1933
`
`
`

`
`
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`
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`offering, marketing, promotion and sale ofits agency services for professional and aspiring
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`professional athletes, incluing football players.
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`6.
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`Upon info ation and belief‘, Defendant ESPN (“ESPN”) is a corporation
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`organized under the laws 0 the State of Delaware, headquartered in Bristol, Connecticut, and
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`subject to the jurisdiction of
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`'5 Court. Upon further information and belief, ESPN is
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`promoting, producing, and ditributing material in Washington and throughout the United States
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`that infringes, dilutes, and/or .
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`-‘shes Plaintifi"s Service Marks. Upon further information and
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`belief, Defendant ESPN is the leading cable sports broadcaster with seven domestic networks
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`that reach more than 87 millio r homes in the United States.
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`7.
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`Upon informatin and belief, Defendant ABC Cable Networks Group (“ABC”) is
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`a corporation organized under e laws of California, is headquartered in Burbank, California
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`and subject to the jurisdiction 0 this Court. Further upon information and belief, ABC owns and
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`operates cable television charmel for its parent company, the Walt Disney Corporation, and has
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`an eighty percent (80%) ownersh p in Defendant ESPN. Upon further information and belief,
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`ABC’s executive producer, John I 'sendrath, created, writes and serves as executive producer for
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`the cable television program “PL ‘ YMAKBRS."
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`8.
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`Upon information . d belief‘, Defendant Orly Adelson Productions (“Adelson”) is
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`a corporation organized under the lws of Califomia, headquartered in Los Angeles, California
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`and subject to the jurisdiction ofthi ~ Court. Upon further information and belief, Defendant
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`Adelson serves as an executive prod cer of the television program “PLAYMAKERS.”
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`9.
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`Upon information and belief, each of the Defendants was the agent, representative
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`and/or employee of each of the other D efendants, and in doing the things hereinafter alleged, was
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`acting within the scope and course of uch agency, representation and/or employment.
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`COD/IPLAINT - 3
`{51381.DoC}
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`HENDRICKS 8r Lzwrs
`999 THIRD AVENUE. surrr. 1675
`sm-rrz WASHINGTON 98104
`(206) 614-I933
`
`

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`
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`GENERAL ALLEGATIONS
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`10.
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`Plaintiffwas founded in 1997. Since its inception, Plaintiffhas used the Service
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`Marks to market, promote and offer agency services to professional and aspiring professional
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`athletes. P1aintiff’s services include, but are not limited to, representation of athletes in contract
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`negotiations with professional sports teams, procurement of endorsement and/or appearance
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`contracts, and sports career guidance. Plaintiff's clients include professional and aspiring
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`professional football players.
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`11.
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`On or about January 16, 1997, Plaintiff filed two applications for registration of
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`the Service Mark “PLAYMAl(ERS.” The first application claimed the word mark
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`“PLAYMAKERS” in international class 35 and was registered on September 30, 1997 under
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`registration number 2,101,700. The second application claimed the word mark plus a graphic
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`design in the same class and was registered on October 7, 1997 under registration number
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`2,103,639. Both Service Marks are now incontestable under 15 U.S.C. § 1065.
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`12.
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`Plaintiff has built up substantial goodwill in the Service Marks and relies upon
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`that goodwill to attract additional clients to its business. Plaintiff advertises and markets the
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`Service Marks to persons associated with the professional sports industry using, without
`limitation, direct mail, word-of-niouth, presence at national sporting events, and other interstate
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`charmels.
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`13.
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`Upon information and belief, in 2003, ESPN, ABC and Adelson (collectively,
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`“Defendants”) entered into an agreiement under which ABC and.Adelson would develop and
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`produce a television series called “l?LAYMAKERS" to be broadcast on Defendant ESPN's cable
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`television charmels throughout the blnited States.
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`14.
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`Upon information anti belief, in the late summer of 2003, Defendants began a
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`COMPLAINT - 4
`{5l38l.DOC)
`
`HENDRICKS 8: LEWIS
`999 THIRD AVENUE. SUITE 2675
`SEATTLE. WASHINGTON 98104
`(105) 624-1933
`
`

`
`
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`massive nationwide adv sing campaign to promote the August 26, 2003 debut of a new,
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`original television series c led “PLAYMAKERS.” This television program purports to
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`dramatize the lives of fictio Iprofessional football players.
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`15.
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`' Upon informtion and belief, Defendants advertise and promote the
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`“PLAYMAKERS" series in 'nterstate commerce and in Washington State, including, but not
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`limited to, advertisements on most of their national television programs and websites, in national
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`and Washington State radio . - vertisernents, in national and Washington magazines and
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`newspapers, and other public . tions. Attached hereto as Exhibit A are true and correct examples
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`of Defendants’ print advertisi g in local and national media.
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`16.
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`Initial episodes - f the “PLAYMAKERS” series have been broadcast nationally,
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`including in Washington State, beginning on August 26, 2003.
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`17.
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`Both Plaintiff an - Defendants direct their marketing to persons associated with
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`the professional sports industry, including, without limitation, players, their families, coaches,
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`and sports equipment and clothing manufacturers. The services offered by Plaintiff and
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`Defendants are substantially rela ed. Plaintiff offers agency services to professional and aspiring
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`athletes, including football playe . Defendants offer a television program featuring professional
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`and aspiring athletes, including fo otball players. Both Plaintiffand Defendants seek to capture,
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`attract, and retain the interest and usiness of athletes and sports-minded individuals.
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`18.
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`Defendants’ mark i . identical in sound, appearance, and meaning to the word
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`mark “PLAYMAKERS” owned b Plaintiff and substantially similar to its design mark
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`incorporating the word “PLAYM ‘
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`' RS.”
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`19.
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`Defendants’ unautho ‘zed use of Plaintiff’s Service Marks creates the likelihood
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`that consumers will be confused as t the source, affiliation, connection, or sponsorship of the
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`COMPLAINT - 5
`gsusruoc)
`
`Hsnnmcxs St Laws
`999 THIRD AVENUE. SUIT!‘-. 2675
`SEATTLE. WASHINGTON 93104
`(206) 624-1933
`
`

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`
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`21.
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`Since the launch of Defendants’ advertising campaign and initial broadcast of the
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`“PLAYMAKERS” series, Plaintiff has become aware of actual confi1sion regarding Plaintiffs
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`sponsorship of the Defendants’ television program and/or the relationship of Defendants’
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`program to Plaintiff and/or the services Plaintifl‘ offers under its registered Service Marks.
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`Plaintiff’s existing and potential clients, including professional football players, have contacted
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`Plaintiff and expressed confusion as to the source of and/or affiliation with Defendants’
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`television program. As Defendants continue to advertise, promote and broadcast the
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`PLAYMAKERS program, Plairititf continues to receive additional reports of actual confusion.
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`22.
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`Defendants’ unatithorized and infiinging use of the Service Marks in association
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`with a sensationalized and/or fictlionalized depiction of the lives ofprofessional athletes also
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`tamishes Plaintiff’s mark. Defendants’ television program purports to feature a “gritty ensemble
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`chronicling the behind-the-scenes and ofilthe-field lives ofthe players, families, coaches and
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`owner of a fictional professional football team.” The promotional materials also promise to take
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`the viewer “behind Sunday’s glory, ‘good guy’ endorsements, and super-jock celebrity.” To this
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`end, Defendants’ television prograin features, for example, professional football players using
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`cocaine, heroin, and other illegal drugs, conspiring to defeat the league’s drug—testing policy,
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`having sexual encounters with multiple partners at the same time, and committing acts of
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`COMPLAINT - 6
`{SIJSLDOC}
`
`Hzunmcxs Er LEWIS
`999 THIRD AVBQUE. SUITE 1575
`SEATTLE. WASHINGTON 98104
`(205) 624-1933
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`Service Marks. Defendants’ use has also significantly weakened the ability of the
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`PLAYMAKERS mark to singularly identify Plaintifl’s agency services withinthe professional
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`sports market.
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`20.
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`The effect oil Defendants’ massive advenising campaign and broadcast of initial
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`episodes was to flood and/or swamp the sports industry with Defendants’ unauthorized use of the
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`Service Marks.
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`domestic violence.
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`23.
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`Defendants’ elevision program has not been we1l—received. Several television
`It-0*
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`reporters have criticized the lsensational nature of the series and its negative depiction of football
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`players. In addition, many piofessional football players, as well as the commissioner ofthe
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`National Football League (“NFL”) have publicly complained about the inaccurate stereotypes
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`portrayed on the program and the negative effects of such portrayals on the profession. Because
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`Defendants have overwhelmed the market with their unauthorized use ofPlaintiff’s Service
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`Marks, the PLAYMAKERS iiiark has developed a negative connotation and the relevant public,
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`10
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`including Plaintiffs existing and potential clients, now has a negative impression associated with
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`11
`12
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`15
`15
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`17
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`18
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`the PLAYMAKERS mark. Atiached hereto as Exhibit B are true and correct copies of four
`examples reporting the negative feedback on Defendants’ television program.
`24.
`On or about Mayi9, 2003, DefendantESPN filedan application forregistration of
`the service mark “PLAYMAKE S" in international class 41 for entertainment services, namely,
`an ongoing television program on the subject offootball. This application was filed on an intent-
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`to-use basis. At the time of Defendant ESPN’s application, Plaintiffhad a valid and
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`incontestable registration for the iiervice Mark “PLAYMAKERS,” which was readily revealed
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`through a basic search of records ifthe United States Patent and Trademark Oflice.
`19
`25.
`:
`Years afierthe adoption, use and incurring ofexpenses by Plaintiffofits Service
`22 Marks in connection with its serviées, the Defendants have promoted, produced and broadcast
`23
`programs incorporating Plaintiffs Service Mark, using said infringing Service Mark in
`24
`commerce without Plaintiffs consent. The Defendants are not licensed by Plaintiff, and at all
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`relevant times were not authorized by Plaintiff, or any authorized agent of Plaintiff, to promote,
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`produce, or broadcast a cable television program under Plaintifi’s mark. The Defendants are
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`25
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`26
`27
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`28
`
`COIWPLAINT - 7
`{5l38l.DOC)
`
`‘
`
`HENDRICKS 81 LEWIS
`SEKTTLF. WASHINCTTON 9510‘
`999 THIRD AVENUE. some 2575
`(106) 624-1933
`
`
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`

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`currently engaged in such rise and unless enjoined by this Court will, upon information and
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`belief, continue such use.
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`&l
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`*-‘O\OOO\lO\\J|uD~U3l\3
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`26.
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`By engaging in the conduct described above, the Defendants have acted in Willflll
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`disregard oftrademark law and other laws protecting Plaintiffs goodwill and Service Marks, and
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`have confused and deceived, or threaten to confuse and deceive, the consuming public as to the
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`source and sponsorship ofDefendants’ television program and have willfully acted to tarnish the
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`goodwill associated with Plaintiff’s Service Marks and the services provided thereunder.
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`27.
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`On or about Atigust 25, 2003, Plaintiffs counsel sent a letter to ESPN, demanding
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`they cease and desist fi'orn infringing Plaintiff’s mark through unauthorized use in the same
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`industry. Counsel for ESPN relfirsed this demand.
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`r—- N
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`FIRST CAUSE OF ACTION FOR
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`FEDERAL TRADEMARK INFRINGEMENT
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`AGAINST ALL DEFENDANTS
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`28.
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`Plaintiff repeats and adopts each allegation contained in paragraphs 1 through 27
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`of this Complaint as though fully set forth herein.
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`29.
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`Plaint1'ft’s claim aiises under section 32 ofthe Lanham Act, 15 U.S.C. § 1114, for
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`infringement ofPlaintiff’s registered and now incontestable Service Marks.
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`30.
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`Plaintiff is the owner of the Service Marks.
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`31.
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`The Defendants have intentionally and knowingly copied Plaintiffs distinctive
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`Service Marks and used the copied word mark in association with their television program.
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`Defendants’ mark is identical in sound, appearance, and meaning to Plaintiff’s Service Marks.
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`32.
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`The Defendants, without permission, license, or authority from Plaintiff, have
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`produced, promoted and broadcast their television program, within this District and throughout
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`COMPLAINT - 8
`{5l381.DOC)
`
`Hsnomcxs & LEWIS
`999THlRD AVENUE. surrs 2675
`SEUTLE. wasmncrou 93104
`(206) 624-1933
`
`
`
`

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` the United States, in violatiim of Plaintiffs rights in its Service Marks.
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`33.
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`Defendants’ use of the mark “PLAYMAKERS” is likely to cause confusion,
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`
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`cause mistake, or to deceive
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`Service Marks. Such use also creates a substantial, adverse effect on Plaintiffs existing and
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`
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`customers as to the source, origin, and sponsorship of the services
` offered by Plaintiff and/or the television program promoted by Defendants.
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`34.
`The Defendants’ infringing use ofthe Service Marks in association with a
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`television show featuring illegal drugs, domestic violence, and seamy sexual conduct has had
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`and will continue to have the effect oftarnishing the goodwill Plaintiffhas established in its
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`projected future interstate agen\cy services as identified by its Service Marks, the goodwill of
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`Plaintiff’ s business connected with the use of, and symbolized by, Plaintiff‘ s Service Marks, and
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`the existing positive reputation of services offered under Plaintiffs Service Marks.
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`35.
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`Service Marks free from infringement and/or tarnishment.
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`36.
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`The Defendants’ activities and conduct constitute infringement ofPlaintiffs
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`registered Service Marks in violation of Section 32 of the Lanham Act, 15 U.S.C. § ll14(l)(a).
`
`
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`The acts ofthe Defendants will nullify Plaintiffs right to the exclusive use of its
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`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`37.
`
`Plaintiff‘ has been rind continues to be damaged by the Defendants’ activities and
`
`conduct, including without limitation, broadcast and promotion ofthe cable television program
`
`
`
`“PLAYMAKERS,” by which Defendants have profited. Plaintiff thus seeks to recover
`
`Plaintiffs damages, Defendants’ profits, and the costs ofthis action pursuant to 15 U.S.C. §
`
`1ll7(a).
`
`38.
`
`The Defendants have intentionally and knowingly copied and used Plaintiff’s
`
`Service Marks. Plaintiff is therefore entitled to a judgment of up to three times its damages or
`
`Defendants’ profits, together with reasonable attorneys’ fees pursuant to 15 U.S.C. § ll17(b).
`
`COMPLAINT - 9
`
`[5l38l.DOC}
`
`HENDRICKS £1 LEWIS
`999TH]RDAVENUE.SUTl'£2675
`SEATTLE. WASHINGTON 98104
`(206) 614-1933
`
`
`
`
`
`
`
`

`
`39.
`
`Unless the conduct ofthe Defendants is enjoined, Plaintiff and its goodwill and
`
`reputation will continue to suffer irreparable injury, which cannot be adequately compensated
`
`solely by monetary damages; Plaintiffthus seeks preliminary and permanent injunctive relief
`
`pursuant to 15 U.S.C. § 1l16t
`
`SECOND CAUSE or ACTION FOR
`FEDERAL TRADEMARK INFRINGEMENT - REVERSE CDNFUSION
`
`AGAINST ALL DEFENDANTS
`
`40.
`
`Plajntiffrepeatsi and adopts each allegation contained in paragraphs 1 through 39
`
`of this Complaint as though fully set forth herein.
`
`4].
`
`The Defendantsl activities and conduct constitute infringement of P1aintifi’s
`
`Service Marks in violation of S¢tion 32 ofthe
`
`Act, 15 U.S.C. § 1ll4(1)(a).
`
`42.
`
`The Defendants’ extensive, yet junior, use of Plaintifi”s Service Marks in the
`
`same industry as Plaintiffs use ih likely to cause substantial reverse confusion and devaluation of
`
`Plaintifl’s Service Marks. Defenldants’ extensive use ofthe mark will likely cause consumers to
`
`mistakenly believe that Plaintiffs subsequent use ofthe Service Marks originates from, and/or
`
`was authorized, licensed, or sponsored by Defendants.
`
`43.
`
`The Defendants’
`
`use of the Service Marks in association with a
`
`television show featuring illegal dilugs, domestic violence, and seamy sexual conduct has had
`
`and will continue to have the effect oftarnishing the goodwill Plaintiff has established in its
`
`Service Marks. Such use creates a substantial, adverse effect on Plaintiff's existing and
`
`projected future interstate agency services as identified by its Service Marks, the goodwill of
`
`Plaintiffs business connected with the use of, and symbolized by, Plaintiffs Service Marks, and
`
`the existing positive reputation of services offered under Plaintiffs Service Marks.
`
`COMPLAINT - 10
`[5l38l.DOC}
`
`Hannmcxs St Lawns
`999 rump AVENUE. sum: 2675
`SLQTLE. WASHINGTON 93104
`(206) 6244933
`
`

`
`
`
`1-1
`
`\'JO0\IO\\l\-l>sU0l~J
`
`44.
`
`The Defend ts have intentionally and knowingly used Plaintiff’s Service Marks.
`
`Plaintiff is therefore entitl -* to a judgment ofup to three times its damages or Defendants’
`
`profits, together with reaso e le attorneys’ fees pursuant to 15 U.S.C. § l1l7(b).
`
`45.
`
`Plaintiffhas - een and continues to be damaged by Defendants’ activities and
`
`conduct. The Defendants ha e profited thereby and unless their conduct is enjoined, Plaintiff
`
`and its goodwill and reputati -u will suffer irreparable injury, which cannot be adequately
`
`compensated solely by mone damages. Accordingly, Plaintiff seeks preliminary and permanent
`
`injunctive relief pursuant to 1 U.S.C. § 1116.
`
`1RD CAUSE OF ACTION FOR
`
`FEDERAL FALSE DES GNATION OF ORIGIN AND FALSE DESCRIPTIONS
`
`UNDER 8 CTION 43 (A) OF THE LANHAM ACT
`
`- GAINST ALL DEFENDANTS
`
`46.
`
`Plaintiff repeats =
`
`1 cl adopts each allegation contained in paragraphs 1 through 45
`
`of this Complaint as though fully et forth herein.
`
`i
`.
`
`47.
`
`Plaintiffs claim .
`
`ses under section 43(a) ofthe Lanham Act, l5 U.S.C. §
`
`l125(a), for false designation of o ‘gin and false descriptions and representations in interstate
`
`commerce.
`
`48.
`
`Plaintiff’ s Service
`
`arks have been used throughout the United States and are
`
`well known to members of the rele -
`
`t markets. The public generally and the sports industry in
`
`particular associate and identify P1a' tiffs Service Marks with the Plaintiff and its services
`
`herein.
`
`49.
`
`The Defendants’ actio and conduct in the promotion and production of the
`
`material incorporating and bearing Pl '
`
`tiff’ s Service Marks constitutes false designations of
`
`COMPLAINT - 1 1
`{$l381.DOc}
`
`Hznpmcxs 8t Lawns
`9991'HIllDAVF.NU£.Sl.Tl’l'Ez675
`szxrnr. wesumoron sum
`(206) 624-1933
`
`

`
`
`
`
`
`
`
`
`
`origin or sponsorship and t ds to falsely represent that said material originates from Plaintifi‘ or
`
`that the material and Defen ants have been sponsored, approved, or licensed by Plaintiff or are
`
`in some way affiliated or co in ected with Plaintiff. This conduct is likely to confuse, cause
`
`mistake, mislead and/or dec 've Defendants’ viewers, customers, and members ofthe public as
`
`to the origin and quality of s . 'd services and Plaintiffs Service Marks or cause said persons to
`
`mistakenly believe that those ervices and/or Defendants have been sponsored, approved,
`
`authorized, or licensed by P1 ‘ tiff or are in some way affiliated or connected with Plaintiff, all
`
`in violation of 15 U.S.C. § 11 5(a).
`
`50.
`
`Upon informati -~ and belief, the Defendants deliberately adopted and used
`
`Plaintiffs Service Marks with ‘w
`
`1 lcnowledge of Plaintiffs prior use and registration of the
`
`Service Marks, creating the infe ence that Defendants’ actions were done willfully with full
`
`knowledge ofthe falsity of such designations of origin and false descriptions or representations,
`and with the express intent to ea
`c confusion, and to mislead and deceive the purchasing public.
`
`51.
`
`Plaintifi‘ has been = d continues to be damaged by the Defendants’ activities and
`
`conduct, by which Defendants ha e profited. Plaintiffthus seeks to recover Defendants’ profits,
`
`Plaintiffs damages, and the costs f this action pursuant to 15 U.S.C. § 11l7(a).
`
`52.
`
`The Defendants ha e intentionally and knowingly used Plaintiff's Service Marks.
`
`Plaintiff is therefore entitled to aju - gment of up to three times its damages or Defendants’
`
`profits, together with reasonable attmeys’ fees pursuant to 15 U.S.C. § 1 1l7(b).
`
`53.
`
`Plaintiff has no adeq ate remedy at law. The Defendants’ conduct described
`
`above, has caused and, if not enjoin - - , will continue to cause irreparable damage to Plaintiff’ s
`
`rights in its Service Marks, and to th business, positive reputation and goodwill ofPlaintiff,
`
`which cannot be adequately compensted solely by money damages. Plaintiff therefore seeks
`
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`
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`COMPLAINT — I2
`¢513s1_poc)
`
`HENDRICKS 81 LEWIS
`999 mm: avmus. sum: 2675
`SEATIIE. WASHINGTON 98104
`(105) 524.1933
`
`
`
`

`
`
`
` l
`
`preliminary and permanent « junctive relief pursuant to 15 U.S.C. § 1116.
`
`' OURTH CAUSE OF ACTION FOR
`
`' DERAL UNFAIR COMPETITION
`
`AGAINST ALL DEFENDANTS
`
`54.
`
`Plaintiff repeat and adopts each allegation contained in paragraphs 1 though 53
`
`of this Complaint as though fir ly set forth herein.
`
`55.
`
`Plaintiffs clai u arises under Section 43(3) of the Lanham Act, 15 U.S.C. §
`
`1 l25(a)(l)(B).
`
`56.
`
`Defendants’ in -
`
`ging use of the Service Marks in association with a television
`
`program that portrays professio 1 football players using illegal drugs, evading the league's drug
`
`testing policy, committing dometic violence, and having sexual encounters with multiple
`
`partners at the same time has the efiect of tarnishing the goodwill Plaintiff has created in its
`
`Service Marks and relies upon to » arket its agency services. Such acts constitute acts of unfair
`
`competition against Plaintifi‘.
`
`57.
`
`Plaintiff‘ has been . d continues to be damaged by the Defendants’ activities and
`
`conduct. Accordingly, pursuant to 15 U.S.C. § lll7(a), Plaintiff is entitled to recover the costs
`
`of this action, Plaintiff’s damages, = well as Defendants’ profits received as a result ofthe
`
`infringement.
`
`58.
`The Defendants hav intentionally and knowingly used Plaintiff’ s Service Marks.
`Plaintiifis therefore entitled to ajud ent ofup to three times its damages or Defendants’
`
`profits, together with reasonable atto eys’ fees pursuant to 15 U.S.C. § lll7(b).
`
`59.
`
`Unless the Defendant ’ conduct is enjoined, Plaintiff and its goodwill and
`
`reputation will suffer irreparable inj
`
`I , which cannot be adequately calculated or compensated
`
`O\900\lG‘\V\\D~UJl\?
`
`>-
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COMPLAINT - 13
`(5l38l.DOCl
`
`Henomcxs 81 Lewis
`999 mum AVENUE. sur-rs 2575
`SI-‘A‘lTLE. WASHINGTON 98104
`(206) 524.1933
`
`

`
`
`
`)-A
`
`
`
`[Qt--u-I-->—Ir-Ii—4v—IG\DOO\JG\\.nul>~Ul\'D®\lO\\J\ub~UJt\3
`
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`
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`
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`
`24
`
`solely by monetary damag . Plaintiff thus seeks permanent injunctive relief pursuant to 15
`
`U.S.C. § 1116.
`
`FIFTH CAUSE OF ACTION
`
`FOR FEDE '
`
`A DILUTION OF TRADEMARK BY TARNISHMENT
`
`AGAINST ALL DEFENDANTS
`
`60.
`
`Plaintiff repets and adopts each allegation contained in paragraphs 1 through 59
`
`of this Complaint as though '
`
`ly set forth herein.
`
`61.
`
`Plaintiffs clai arises under Section 43 of the Lanham Act, 15 U.S.C. § ll25(c).
`
`62.
`
`As a result of P aintiff’ s continuous promotion and marketing of its agency
`
`services under the Service M , the Service Marks are well-known in their market and have
`
`attained significant secondary eaning and recognition in the sports industry.
`
`63.
`
`The Defendants’ use of the Trademarks in association with a television program
`
`that portrays professional footb 1 players using illegal drugs, committing domestic violence,
`
`violating league drug-testing po cies, and having sex with multiple partners at the same time has
`
`caused dilution by tamishment o the positive reputation and distinctive quality of the Service
`
`Marks and has caused injury to P aintiff pursuant to 15 U.S.C. § ll25(c).
`
`64.
`
`Upon information = d belief, the Defendants adopted and used Plaintiff’s Service
`
`Marks with full knowledge of Pl nu tiff’s prior use and registration of the Service Marks, creating
`
`the inference that Defendants inte - ded to trade on Plaintiff’ s goodwill and reputation or to cause
`dilution ofthe Service Marks.
`'
`uant to 15 U.S.C. § lll7(a) and § l125(c)(2), Plaintiffis
`
`therefore entitled to recover its - =
`
`- ges, as well as Defendants’ profits received as a result ofthe
`
`infringement.
`
`65.
`
`Unless the Defendan ’ conduct is enjoined, Plaintiff and its goodwill and positive
`
`COMPLAINT - 14
`[5l38l.DOC)
`
`Hanomcxs 8! LEWIS
`9991141110 AVENUE. Sum: 2675
`sums wnsnmcrnon 9a 104
`(206) 614-1933
`
`
`
`

`
`
`
`reputation will suffer irrep A able injury which cannot be adequately compensated solely by
`
`monetary damages. Acco -~ gly, Plaintiff seeks permanent injunctive relief pursuant to 15
`
`U.S.C. §§ 1116 and 1125.
`
`SIXTH CAUSE OF ACTION
`
`STATE AND OMMON LAW TRADEMARK INFRINGEMENT
`
`AGAINST ALL DEFENDANTS
`
`66.
`
`Plaintiff repea . and adopts each allegation contained in paragraphs 1 through 65
`
`ofthis Complaint as though
`
`ly set forth herein.
`
`67.
`
`Plaintiff’s cl '
`
`A arises under the common law of this state relating to trademark
`
`infiingement and RCW 19.77.l ‘ 0 et. seq. This Court has jurisdiction over the subject matter of
`
`this claim pursuant to the proviions of 28 U.S.C. § 1338(b), this being a state claim of
`
`trademark infringement joined ith a substantial and related claim under the trademark laws of
`
`the United States, and under this Court’s supplementaryjurisdiction pursuant to 28 U.S.C.
`
`§ 1367.
`
`68.
`
`Plaintiffis the 0 er of all rights, title and interest in and to the distinctive trade
`
`names, service marks, designs, s
`
`u bols, and logos used by Plaintiff, including the Service
`
`Marks, by virtue of its use of such names, marks, designs, symbols and logos, as well as its
`
`federal registration and nationwide provision of services under the “PLAYMAKERS” Service
`
`Marks and other trade names, servi e marks, designs, symbols and logos (collectively “Common
`
`Law Service Marks”).
`
`69.
`
`The materials comp .' - ed of herein we