Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA33680
`
`Filing d9-l533
`
`05/23/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91 160515
`
`Defendant
`Bugatti International S.A.
`Bugatti International SA.
`§ 8 - 10, rue Mathias Hardt LUX
`Luxembourg, 1717
`
`SUSAN B. FLOHR
`BLANK ROME LLP
`Correspondence 600 NEW HAMPSHIRE AVENUE, N.W.
`Address
`Washington, DC 20037
`
`Submission
`Filer's Name
`
`flohr@blanl<_rorne.com
`Motion to Suspend for Civil Action
`Susan B. Flohr
`
`Filer's e—mail
`
`flohr@blanl<ro1'ne.com, deVitis@blanl<rome.com
`
`Signature
`Date
`
`/SBF/
`05/23/2005
`
`Attachments
`
`MOTION to Suspend.tif( 39 pages )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91160515
`In re App Serial No. 78l7647- EB BUGATTI & Design
`
`9/\/\/\&§/\J%J
`
`Bugatti, Inc.,
`Opposer.
`
`V.
`
`Bugatti International, S.A.
`Applicant.
`
`Trademark Trial and Appeal Board
`US. Patent and Trademark Office
`
`P.O. Box 1451
`
`Alexandria, VA 22313—l451
`
`Opposition No. 91160515
`
`MOTION TO SUSPEND OPPOSITION PROCEEDING
`
`Bugatti International, S.A., Applicant in the above-entitled action, by and through its
`
`attorneys, respectfully requests that the Trademark Trial and Appeal Board suspend the instant
`
`opposition proceeding pending the resolution and final determination of Civil Action No. 05-
`
`11067 PBS, docketed as Volkswagen AG, Volkswagen of America,
`
`Inc. and Bugatti
`
`1r;t_ernational, S.A. v. The Bugatti, Inc., which was filed today in the United States District Court
`
`for
`
`the District of Massachusetts
`
`and which may be dispositive of
`
`this matter,
`
`T.B.M.P. § 510.02(a).
`
`Dated: May 23, 2005
`
`BUGATTI INTERNATIONAL, S.A.
`
`Respectfully submitted,
`
`BLANK ROME LLP
`600 New Hampshire Avenue, NW
`Washington, DC 20037
`(202) 772-5870
`(202) 572-1407
`
`11633300120/35678845v1
`
`1%/v.—«i/(.,uJ 6‘-Wiuéa
`Susan B. Flohr
`Michael D. White
`Attorneys for Applicant
`
`

`

`CERTIFICATE OF SERVICE
`
`The Undersigned, hereby certifies that on the 23rd day of May, 2005, she caused a copy
`
`of the foregoing MOTION TO SUSPEND OPPOSITION PROCEEDING to be served via
`
`facsimile and by first class mail on:
`
`JOHN J. ARADO, ESQ.
`WILDMAN, HARROLD, ALLEN & DIXON LLP
`225 WEST WACKER DRIVE
`
`CHICAGO, ILLINOIS 60606-1229
`
`Tami DeVitis
`
`11633300120/35678845vl
`
`

`

`F
`CIVIL COVER SHEET
`wsu om. woo
`r 1
`r: «.3
`uired by law, except as provided
`.
`The JS 44 civil cover sheet and the information contained herein neither re lace nor su plement the filing and seryiee ofplgaditgpr
`by local rules ofcourt This form, approved by the Judicial Conference 0 the United
`games In September 197§,i~:§ r~_e_qx1i_iieg:ti>r'tlte,uz9qftfefifi029%ourt for the purpose ofinitiating
`the civil docket sheet.
`(SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`
`
`1. (a)
`
`PLAINTIFFS
`
`VOLKSWAGEN AG, VOLKSWAGEN OF AMERICA, INC. AND
`BUGATTI, INTERNATIONAL, S.A.
`
`(b) County ofkesidence ofFirst Listed Plaintiif Wolfsburg, Germany
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`DEFENDANTS
`W" ":3
`THE BUGATIIGI,-rNé.~
`
`m
`au= 9":
`'
`~
`
`J:\
`
`-
`
`
`suflblk C°“ntY
`County ofResiqlehee
`‘Q g 3 S‘ ;.:3qi[«i q'.s.[P,ir‘.'«tir‘;¢1tr_i'-‘Q-'.§(;§$i;s ONLY)
`IN LAND CONDEMNATION CASl§, USE THE LOCATION OF THE
`LAND INVOLVED.
`
`NOTE:
`
`(c) Attorney's (Firm Name, Address. and Telephone Number)
`
`David A. Brown (556161) Margaret H. Paget (567679) SHERIN AND
`LODGEN LLP, 101 Federal Street, Boston MA 02110 617.646.2000
`
`II. BASIS OF JURISDICTION (Place an “X" in one Box Only)
`
`
`
`D 1
`
`US. Government
`
`I 3 I-‘edwal
`((1.8. Government Not a Party)
`
`U 2
`
`U.S. Governmnit
`Defendant
`
`CI 4 Diversity
`(Indicate Ci .
`
`hip onamcs in mm m)
`
`(For Diversity Cases Only)
`PTF
`U I
`
`Citizen ofThis State
`.
`
`DEF
`D I
`
`and One Box for Defuidnnt)
`PIT
`DEF
`0 4 U 4
`
`Incorporated or Principal Place
`ofBusiness In This State
`
`Citizen ofAnmlier State
`
`Citizai '01‘ Subject ofn
`ForeiCo
`
`U 2
`
`U 2
`
`D 3
`
`U 3
`
`IneorpomedandPi'ineipaI Place
`ofBusiness In Another State
`Foreigi Nation
`
`U 5
`
`Cl 5
`
`U 6 U 6
`
`
`
`1 1 0) 6 ? PBS
`III. CITIZENSHIP OF PRINCIPAL PART[Es(Plwe an "X" in one Box for Plaintiff
`
`
`
`
`
`CI
`cl 6200dierFood&Drug
`U 625 Drug Related Seizure
`ofPropertyzl USC 881
`D 630 Liquor Inws
`0 640 RR. & Trufl
`U 650 Airline Regs.
`U 660 Occupational
`
`
`
`
`
`
`CI
`CI 410 Antitrust
`D 362 Personnllnjury-
`0 3l0AirpIane
`CI 430 Banks and Banking
`Med. Mnlpnetiee
`D 315 Airplane Product
`El 130 Miller Act
`CI 450 Cnunnaee
`CI 365 Personal Injury -
`Liability
`U I40 Negotiable Instrument
`U 460 Deportation
`Product Liability
`U [50 Recovery ofOverpaymmt D 320 Assault, Libel &
`U 470 Rlketeer Influenced and
`U 363 Asbestos Personal
`&. Fnfamtstnult ofludgmait
`Slander
`Corrupt Orynifions
`lnjiny Product
`CI 151 Medicare: Act
`D 330 Federal Employers‘
`U 480 Consumer Credit
`Liability
`D 152 Reoovay ofDefiiulted
`Liability
`U 490 Clbldsat TV
`Student Loans
`U 340 Marine
`PERSONAL PROPERTY
`
`Cl 810 Selective Service
`D 345 Marine Product
`Cl 370 Other Fraud
`Cl
`(Excl. Velzerzns)
`
`
`
`Liability
`0 371 Trulh in
`" '
`.
`-
`~
`'
`-.'«fi‘:$"‘¥.i&§
`'
`V
`‘
`" “
`:'. CI 350 Sec\n'iIies/Canmoditi$/
`D 153 Recovery ofovfipaylnenl
`
`
`CI 710 Fair Lnhor Stnndar
`CI 861 HIA (l395fi)
`of Veteran‘: Benefits
`D 350 Motor Vdiicle
`El 380 Other Personal
`Exchange
`
`
`Act
`CI 160 Stockholders’ Suits
`U 355 Motor Vehicle
`Property Damage
`U 862 Black Lung (92!)
`U 875 Customer Challenge
`
`U 720 LaborIMpnt. Relations 0 853 DIWC/DIWW (405(g))
`D 190 Other Contract
`Product
`D 385 Propaty Damage
`I2 USC 3410
`
`U 195 Contract Product Liability 0
`Product Liability
`U 730
`D 86455“) Title
`D 890 Other Statutory Actions
`
`& Disclosure Act
`,
`Acts
`U 391
`
`.
`._
`f=‘fl{ISONl:‘.It'J’.E? H ' N
`Cl 740 Railway Labor Act
`*5=;£‘§§FEl5EIl7A'L":
`.. . ‘ Cl 892 1-zcammie Stabilization Act
`D 510 Motion: to Vncate
`U 790 Other Labor Litigation D 370 Totes (U.S. I’lIinl‘ifl'
`0 210 Land Condemnation
`CI 893 Environrnmtnl Matters
`
`
`
`
`D 220 Foreclosure
`Sentaice
`U 791 Eupl. Rat. Inc.
`or Defendant)
`Cl 894 Energy Allocation Act
`Hnbeas Corpus:
`Seairity Act
`CI 871 IRS—’[‘hird Pnrty
`D 230 Rent Lease &. Ejectmait
`D 895 Freedom oflnforrnntion
`D 530 General
`26 USC ‘I609
`D 240 Torts to Land .
`Act
`
`CI 535 Death Penalty
`0 245 Tort Product Liability
`0 9ooAppen otree Determination
`
`0 S40 Mandamus at Other
`U 290 All Other Real Property
`Under‘ Equal Acoes
`D 550 Civil Rights
`to Justice
`
`
`C] 950 Cmstitutionnlity of
`D 555 Prison Condition
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`'3 7
`
`fit: Distflct
`c m
`gistrate
`
`AP
`Ju
`
`
`
`Vie
`
`
`
`.
`
`3 25/05
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`f
`T
`ed f
`V. ORIGIN
`(‘Place an "X" in One Box Only)
`rans err mm
`.
`'3 4 Reinstated or U 5 another district
`1 Original
`0 2 Removed from
`D 3 Remanded from
`'3 6 Multidistrict
`
`s
`i
`Reo ned
`Proceedm
`State Court
`llate Court
`Liti’
`tion
`l’
`cl
`I
`C'
`.
`. C" il
`'
`d’
`'
`:
`lug8 _
`igec tistgge 23-elti E (Do not
`he jurisdiction: statutes unless
`iversity)
`
`VI. CAUSE OF ACTION
`
`
`
`
`_
`Brief_description of cause:
`_
`_
`_
`_
`_
`_
`_
`_
`Detendant has used the trademarks ot the plaintiffs without authority in violation ot the Lanham Act.
`
`
`CHECK IF THIS IS A CLASSACTION
`DEM_AN_D S
`CHECK YES only ifdemanded in complaint:
`UNDER F.RC.P. 23
`and In
`my DEMAND:
`Yes
`:1 No
`,
`_
`_
`S
`‘ °° ‘"““‘°“°""'
`
`VII. REQUESTED IN
`COMPLAINT:
`VIII. RELATED CASE(S)
`IF ANY
`
`JUDGE
`
`DOCKET NUMBER
`
`(
`
`DATE
`SIGNA OF ATTORNEY O
`‘V I
`
`4 54.4 . "
`FOR OFFICE ISE ONLY
`‘
`
`
`
`

`

`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`V
`,='
`
`1. Title of case (name of first party on each side only)
`
`r«.
`
`2. category in which the case belongs based upon the numbered nature of suit code lhted on1the(:cIvii?é¢'i:V'i3rs:ii’_¢3,i$t'.{~?j('$ee iocai
`Me 4,,_,(,,(,,,_
`:'.Tii ‘S 1'51‘! 73 ‘.-" Si-'
`i";
`.
`E I.
`
`160, 410, 470, 535, R.23, REGARDLESS OF NATURE OF SUIT.
`
`II.
`
`iii.
`
`iv.
`
`V.
`
`(DEC!
`
`195, 196. 368, 400, 440, 441-446, 540, 550, 555, 625. 710, 720, 730,
`740, 790, 791, 820", 830'. 840‘, 850. 890, 892-894, 395, 950.
`
`‘Also complete A0 120 orA0 121
`for patent, trademark or copyright cases
`
`110, 120, 130,- 140, 161, 190, 210, 230, 240, 245, 290, 310,
`315, 320. 330, 340, 345. 350, 355, 360, 362, 365, 370, 371,
`380, 385, 450, 891.
`Q ”"’
`4'
`220,422,423,430,«so. no,490. 510.530.mg.fie»,uoiso. £3,
`V
`sec. 810, causes, inc, 311,315, 900.
`150, 152, 1 53.
`
`-1
`
`-g
`
`r
`
`3.. Title and number, if any, of related cases. (See local rule 443.1(9)). lfmore than one prior related case has been filed In this
`district please indicate the title and number of the first filed case in this court.
`
`
`
`4,. Has a prior action between the same parties and based on the same claim ever been filed In this court?
`Yes
`|:]
`MO
`5.. Does the complaint in this case question the constitutionality of an act of congress affecting the public interest?
`§24o3)
`
`(See 28 USG
`
`it so, is the U.s.A. or an officer, agent or employee of the U.S. a party?
`
`Yes D
`
`NO
`
`Yes D no
`is this case required to be heard and detennlned by a district court of three judges pursuant to title 28 usc §22fl4?
`
`6,.
`
`NO I:
`Yes [3
`7.. Do all of the parties in this action, excluding govemmentai agencies of the united states and the commonwealth of
`Massachusetts (“govemrnentai agencies"), residing In Massachusetts reside In the same division? - (See Local Rule 40.1(d)).
`
`Yes D
`If yes, in which division do_g1i of the nongovernmental parties reside?
`[:1
`Western Division
`Eastern Division
`|:]
`Central Division I:
`if no, in which division do the majority of the plaintiffs or the only parties, excluding govemmentai agencies.
`residing in Massachusetts reside?
`
`NO
`
`A.
`
`8.
`
`Western Division B
`Central Division B
`Eastern Division E
`if filing a Notice of Removal - are there any motions pending in the state court requiring the attention of this Court? (if yes,
`submit a separate sheet identifying the motions)
`
`8.
`
`(PLEASE TYPE OR PRINT)
`A.,.roRNEY.s NAME David A. Brown (556161), Margaret H. Paget (567679)
`A)DDREss
`Sherin and Lodgen LLP, 101 Federal Street, Boston MA 02110
`TELEPHONE NO. 617'646‘2°0°
`
`Yes C]
`
`No
`
`[3
`
`(CategoryForm.wpd - 512/05)
`
`

`

`
`
`
`Mai] stop 3
`REPORT ON THE
`Director of the U.S. Patent and Trademark Office
`FILING OR DETERMINATION OF AN
`
`
`
`P.0. Box 1450
`ACTION REGARDING A PATENT OR
`
`
`Alexandria, VA 22313-1450
`TRADEMARK
`
`
`
`
`
`
`To
`'
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
` on the following G Patents orMassachusetts G Trademarks:
`
`filed in the U.S. District Court
`DOCKET NO.
`
`PLAINTIFF
`
`VOLKSWAGEN AG, VOLKSWAGEN OF AMERICA,
`INC. AND BUGATTI INTERNATIONAL, S.A.
`
`“
`
`«
`
`DATE OF PATENT
`OR TRADEMARK
`
`’
`
`1
`
`1 ,,883,332
`
`2 2,100,963
`
`3 2,299,293
`
`
`3/15/2005
`
`DATE INCLUDED
`
`INCLUDED BY
`
`G Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`3/8/2005
`
`G Answer
`
`G Cross Bill
`
`1 2,930,238
`
`2 2,932,356
`
`In the above—entitled case. the following decision has been rendered orjudgement issued:
`DECISION/JUDGEMENT
`
`ICLERK
`
`
`Copy l.——Upon initiation of action, mail this copy to Director Copy 3—Upon tennination ofaction, mail this copy to Director
`Copy 2—Upon filing document adding patent(s). mail this copy to Director Copy 4—Case file copy
`
`

`

`IN THE UNITED sTATEs_pI
`
`FOR THE DISTRICT O'I="=1\-“/IA SA
`
`s
`
`
`
`VOLKSWAGEN AG, VOLKSWAGEN OF
`AMERICA, INC. and BUGATTI
`INTERNATIONAL, S.A.,
`
`2885 rm 2 3 A 10 5 8
`
`_
`
`I
`
`,-,1
`
`.;_-;,--u;«2:;
`L5,, 5 ,- i 5; -;
`mar: =1‘: gr Ass.
`
`Case No
`
`
`
`Plaintiffs,
`
`V.
`
`
`
`THE BUGATTI, INC.,
`
`Defendant.
`
`MOTION TO APPOINT SPECIAL PROCESS SERVER
`
`Pursuant to Fed. R. Civ. P. 4(c)(2), the Plaintiffs move the Court to allow the
`
`appointment of Dewsnap & Associates, LLC, J.W. McCorInack Station, P.O. Box 4538, Boston,
`
`MA 02101, and the constables employed thereby, qualified persons over the age of 18, and not
`
`parties to this action, as special process servers authorized to serve all process in this action upon
`
`The Bugatti, Inc.
`
`Respectfully submitted,
`
`VOLKSWAGEN AG, VOLKSWAGEN
`OF AMERICA, INC. and BUGATTI
`INTERNATIONAL, S.A.,
`
`By their attorneys,
`
`
`
`Davi A. Brown (BBO# 556161)
`Margaret H. Paget (BBO# 567679)
`SHERIN AND LODGEN LLP
`101 Federal Street
`
`Boston, Massachusetts 02110
`Telephone: 617.646.2000
`Facsimile: 617-646-2222
`
`Of Counsel:
`
`Susan B. Flohr
`Michael D. White
`BLANK ROME LLP
`
`600 New Hampshire Avenue, NW
`Washington, DC 20037
`Telephone: (202) 772-5800
`Facsimile: (202) 772-5858
`
`Dated: May 23, 2005
`
`00067553.DOC /
`
`

`

`1
`VOLKSWAGEN AG, VOLKSWAGEN OF AMERICA,
`INC. and BUGATTI INTERNATIONAL, S.A.,
`
`:
`:
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`t’}i'FlC£
`p
`
`:.:i.‘;.:?-=1.»
`W
`,_...;
`¢-:3
`;*.,‘.
`-.;.J.
`(I H P __ ___
`EEC-=
`'
`*-,-’.:-':;.-
`
`CASE Nb:"“i"~' U?‘ HAS:'5.
`
`Plaintiffs,
`
`V.
`
`i
`
`U Defendant.
`
`JURY TRIAL DEMANDED
`
`5:1 1 06 7 PBS
`
`COMPLAINT FOR DAMAGES AND
`INJUNCTIVE RELIEF
`
`Volkswagen AG (“VWAG”) and Volkswagen of America, Inc. (“VWOA”) (VWAG and
`
`VWoA collectively “Volkswagen”) and Bugatti International, S.A. (“Bugatti Intemational”),
`
`(VWAG, VWoA and Bugatti International collectively “Plaintiffs”), by and through their
`
`undersigned attorneys, file this civil action against The Bugatti, Inc. (“Defendant”), as follows:
`
`THE PARTIES
`
`1.
`
`VWAG is a corporation organized and existing under the laws of Germany, with a
`
`principal place of business in Wolfsburg, Federal Republic of Germany.
`
`2.
`
`VWoA is a corporation organized and existing under the laws of the State of New
`
`Jersey, with a principal place of business in Auburn Hills, Michigan.
`
`3.
`
`Bugatti International is a corporation organized and existing under the laws of
`
`Luxembourg, with a principal place of business in Luxembourg.
`
`116333.()0120/35675783vl
`00067528.DOC / 2
`
`

`

`4.
`
`Upon information and belief, Defendant is a Massachusetts corporation with its
`
`principal place of business at 100 Condor Street, East Boston, Massachusetts 02128.
`
`JURISDICTION AND VENUE
`
`5.
`
`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§
`
`1331 and 1338 because this case involves trademarks and arises under the laws of the United States,
`
`inter alia, 15 U.S.C. §§ 1114,1117 and 1125.
`
`6.
`
`This Court also has supplemental jurisdiction over the state law claims pursuant to 28
`
`U.S.C. § 1367 as the state law claims are so related to the claims falling within this Court’s original
`
`jurisdiction that they form part of the same case or controversy under Article HI of the Constitution
`
`of the United States.
`
`7.
`
`This Court has personal jurisdiction over Defendant because, inter alia, Defendant: is
`
`a corporation organized under the laws ofthe forum state; transacts business within and has availed
`
`itself of this forum; contracts to sell goods and render services within the forum, both through
`
`traditional means and through the Internet; engages in a persistent course of conduct in this forum;
`
`expects, or should reasonably expect, its acts to have legal consequences in this forum; and maintains
`
`substantial, systematic and continuous minimum contacts in this forum.
`
`8.
`
`Venue is proper in this District pursuant to 28 U.S.C. § 1391 because a substantial
`
`part of the events or omissions giving rise to the claims are based here.
`
`1161333.00120/35675783vl
`00067528.DOC / 2
`
`

`

`FACTS COMMON TO ALL CLAIMS FOR RELIEF
`
`Xolkswagen AG’s Business and Marks
`
`9.
`
`VWAG is a manufacturer of automobiles, which have achieved worldwide fame and
`
`recognition. VWAG is recognized worldwide as the source of VW automobiles. VWAG is the
`
`owner of the letter mark VW and the VW Concentric Circle Logo
`
`(collectively, “the VW Marks”). VWAG owns hundreds of trademark registrations throughout the
`
`world for the VW Marks, including in the United States the following U.S. Trademark Registration
`
`Nos.: 1,883,332 dated March 14, 1995, which covers inter alia lntemational classes 12 and 18 and
`
`is incontestable; 2,100,963 dated September 30, 1997, which covers lntemational class 12 and is
`
`in.contestable; 2,299,293 dated December 14, 1999, which covers inter alia lntemational class 12;
`
`2,181,615 dated March 2, 2004, which covers inter alia lntemational class 12; 2,849,974 dated June
`
`8, 2004, which covers inter alia lntemational classes 12 and 18; 2,930,238 dated March 8, 2005,
`
`which covers lntemational class 11; and 2,932,356 dated March 15, 2005, which covers inter alia
`
`International class 12. VWAG is also the owner of the following pending U.S. Trademark
`
`Application Nos.: 79001131 for the VW Logo in lntemational classes 12 and 18 inter alia and
`
`79001 133 for the mark VW which covers inter alia lntemational class 12 and 79001521 for a color
`
`version of the VW Logo in lntemational class 12 inter alia.
`
`11633100120/35(:75783v1
`00067528.DOC / 2
`
`

`

`10.
`
`VWAG has expended substantial financial resources developing,
`
`testing and
`
`promoting its automobiles under the distinctive VW Marks. As a result of VWAG’s worldwide
`
`promotional activities under the VW Marks, and its adherence to the highest standards of quality
`
`control in the design and engineering of its VW line of automobiles, the VW Marks have become
`
`famous, and are widely recognized by the public, the trade and media.
`
`1 1 .
`
`The VW Marks became famous long prior to Defendant’s unauthorized adoption and
`
`use of the VW Marks for its leather goods.
`
`yolkswagen of America’s Business, Use and Enforcement Activities
`
`12.
`
`VWoA is the United States importer and distributor ofautomobiles manufactured by
`
`VWAG, and, as such, is charged with protecting the trademarks associated with those automobiles in
`
`the United States.
`
`13.
`
`VWoA is authorized to use the VW Marks in the United States and VWoA has also
`
`expended substantial
`
`financial
`
`resources actively advertising and promoting automobiles
`
`manufactured by VWAG under the VM Marks. VWoA also uses the VW Marks to promote
`
`accessories and gear including, inter alia,
`
`leather wallets and CD cases.
`
`Bugatti International’s Business and Marks
`
`14.
`
`In the early part of the 20”‘ century, Mr. Ettore Bugatti founded a company in
`
`Molsheim, France, for the design, manufacture and sale ofracing automobiles in connection with the
`
`BUGATTI mark. During this time, the BUGATTI mark became world famous and synonymous
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`with excellence in design and extravagant luxury, which connotations persist until this day.
`
`BUGATTI branded automobiles continued to be raced until the late 1950s.
`
`15.
`
`Prior to his death in 1947, Ettore Bugatti’s company had transitioned to the design
`
`and manufacture of aircraft engines and aircrafi.
`
`In 1963, Messier-Hispano-Bugatti assumed all
`
`rights, title and interest in the BUGATTI mark and continued in the aircraft manufacturing business.
`
`16.
`
`In 1987, Bugatti
`
`International was founded for
`
`the purpose of designing,
`
`manufacturing, and selling world-class luxury automobiles in the tradition of Ettore Bugatti.
`
`17.
`
`On or about July 1, 1988, Bugatti International acquired the U.S.
`
`trademark
`
`registrations, Reg. Nos. 1 ,407,200, 1,440,535, and 1 ,444,053 6, for the marks BUGATTI and the logo
`
`mark
`
`
`
`, which is a Red Oval Logo bearing the word
`
`BUGATTI and the stylized initials “EB” (collectively referred to as the “BUGATTI Marks”).
`
`18.
`
`In 1992, Bugatti Intemational's Italian subsidiary, Bugatti Automobili, began
`
`manufacturing automobiles and had built 139 before 1995 when it incurred financial difficulties.
`
`One of these automobiles was exhibited in the U.S. in 1993 at the Detroit Auto Show.
`
`In 1996,
`
`Bugatti Intemational's other Italian subsidiary, Ettore Bugatti SrL, signed a license agreement with
`
`Ralston Investments Inc. to operate a Bugatti boutique in Honolulu, Hawaii, specializing in luxury,
`
`branded products including pens, champagne, and watches.
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`19.
`
`In 1998, Ettore Bugatti SrL assigned its United States trademark registrations for EB
`
`ETTORE BUGATTI Logo and EB Logo, Reg. Nos. 2026214 (since cancelled) and 1787760,
`
`respectively, to Bugatti International.
`
`20.
`
`Bugatti International maintains priority rights in the BUGATTI Marks and is the
`
`owner of all right, title and interest to the BUGATTI Marks and to the related federal trademark
`
`registrations.
`
`21.
`
`In addition, Bugatti International is the owner of all right, title and interest to over
`
`eight-hundred trademark registrations worldwide for its BUGATTI Marks.
`
`22.
`
`In 1998, Bugatti International was purchased by VWAG and the original Bugatti
`
`factory of Ettore Bugatti in France was re-opened.
`
`23.
`
`Pursuant to license, Bugatti International’ s affiliated companies and licensees, Bugatti
`
`Automobiles S.A.S., a French corporation, and Bugatti Engineering GmbH, a German company,
`
`began to design and manufacture BUGATTI branded automobiles.
`
`24.
`
`The first new BUGATTI automobile was exhibited in Paris in 1998. Auto shows
`
`followed in 1999 in Geneva and Tokyo. The first BUGATTI automobile offered for sale, the
`
`VEYRON, was exhibited in January of 2000 at the Detroit Auto Show. The VEYRON bears as a
`
`badge on its grille the Red Oval Logo bearing the word BUGATTI and the stylized initials “EB.”
`
`The list price for the VEYRON is more than $1 million. BUGATTI branded automobiles have been
`
`exhibited at the annual Pebble Beach Auto show in California since 2000. The VEYRON is
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`considered a “Super Car” and holds the distinction ofbeing the fastest production automobile on the
`
`market.
`
`25.
`
`Bugatti International is the owner of pending U.S. trademark applications filed
`
`December 4, 1998, namely, Serial No. 75/599,753 for the mark BUGATTI for automobiles and U.S.
`
`Serial No. 75/983,482 for the mark BUGATTI for watches, jewelry and tie clips, printed materials,
`
`namely, brochures in the field ofautomobiles and subjects ofinterest to automotive enthusiasts, and
`
`decorative china plates, cups, saucers. Bugatti International is also the owner of pending U.S.
`
`trademark
`
`application
`-5 pr
`
`CEUGATTL
`
`Serial
`
`No.
`
`78/1 75 ,475
`
`for
`
`the
`
`logo
`
`mark,
`
`, filed October 17, 2002, for “leather goods, namely
`
`suitcases, bags, namely, athletic bags, travel bags, cosmetic cases sold empty, ladies’ bags, namely,
`
`clutch bags, shoulder bags, purses, pocket wallets and toy cars, model cars for collectors, leather golf
`
`bags.”
`
`26.
`
`Bugatti International registered its distinctive trademark VEYRON with the U.S.
`
`Patent and Trademark Office under Registration No. 2,829,102, which issued April 6, 2004 for
`
`vehicles and toy model cars.
`
`27.
`
`Bugatti International has expended substantial financial resources developing, testing,
`
`exhibiting, promoting and marketing its automobiles under the BUGATTI Marks. As a result of
`
`Bugatti Intemational’s worldwide promotional activities under the BUGATTI Marks, including in
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`the United States, and its adherence to the highest standards of quality control in the design and
`
`engineering of its BUGATTI line of automobiles, distinctiveness of the BUGATTI Marks and the
`
`flame of such marks have been further enhanced and extended, and are widely recognized by the
`
`public, the trade and the media.
`
`28.
`
`Bugatti
`
`International
`
`is recognized worldwide as the source of BUGATTI
`
`automobiles.
`
`Defendant Bugatti, Inc.’s Unauthorized Use of the VW Marks
`
`29.
`
`On information and belief, Defendant is fully aware that VWAG is the owner of the
`
`VW Marks.
`
`30.
`
`On information and belief, Defendant is fully aware that the VW Marks are famous
`
`marks.
`
`31.
`
`On information and belief, Defendant is fiilly aware that VWAG owns U.S.
`
`Trademark Registration No. 1,883,332 and 2,849,974 for leather goods.
`
`32.
`
`On information and belief, Defendant has applied the VW Marks to leather goods and
`
`accessories. Such application is shown in Defendant’s advertisements and catalogs and on the
`
`websites <www.Bugatti.com> and <www.atalante.com> operated by Defendant.
`
`33.
`
`On information and belief, Defendant has applied the VW Marks to leather goods and
`
`accessories because the V W Marks are famous marks.
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`34.
`
`On information and belief, Defendant is fully aware that it is not authorized to apply
`
`the VW Marks to any goods, or to manufacture, advertise and sell goods identified by the VW
`
`Mlarks.
`
`35.
`
`Defendant includes pictures of certain leather goods bearing the VW Marks on its
`
`websites <www.Bugatti.com> and <www.atalante.com>.
`
`3 6.
`
`The <www.atalante.com> website is linked to the <wvvw.Bugatti.com> website and is
`
`accessed by clicking on “Distributors.” On the <www.atalante.com> website Defendant has
`
`provided the following instructions:
`
`This site is provided compliments ofyou; Bugatti® Atalante” Leather Accessories
`distributor, who can arrange to have these leather accessories personalized for you.
`
`Distributors are encouraged to copy and paste pictures and descriptions from this
`web site. To save a copy of a picture to your own hard disk just click and hold
`down your mouse button on the picture you’d like to use and choose save, name it
`with a name you can remember or write down, and save it to a folder where you
`will be sure to find it — or to your desktop.
`
`As of April 15, 2005, on the <www.atalante.com> website, Defendant was providing the
`following instructions:
`
`This site is provided compliments of your Atalante TM Leather Accessories
`distributor, who can arrange to have these leather accessories personalized for you.
`
`Distributors are encouraged to use pictures and descriptions from this web site.
`
`37.
`
`Such instructions on Defendant’s <www.atalante.com> website encourage and induce
`
`Defendant’s distributors to copy and paste pictures of certain leather goods bearing the VW Marks
`
`without authorization from Volkswagen. Defendant is fully aware that such copying and pasting of
`
`pictures of certain leather goods bearing the VW Marks is without authorization of Volkswagen.
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`38.
`
`Long after Volkswagen’s adoption, use and registration of the VW Marks, with full
`
`knowledge ofVo1kswagen’s prior rights in the VW Marks, and without Volkswagen’s authorization
`
`or consent, Defendant commenced use of the VW Marks as trademarks in connection with its
`
`business activities in the Commonwealth of Massachusetts and elsewhere in the United States.
`
`39.
`
`By reason of Volkswagen’s prior rights in and to the distinctive and famous VW
`
`Marks, Defendant’s use of the VW Marks as trademarks in connection with its business is likely to
`
`cause confusion and mistake in the minds of the purchasing public, and tends to and does falsely
`
`create the impression that the goods and services of the Defendant are provided, sponsored or
`
`licensed by Volkswagen, or are otherwise affiliated with or authorized by Volkswagen.
`
`Defendant Bugatti, Inc.’s Unauthorized Use of the Bugatti Marks
`
`40.
`
`Defendant Bugatti, Inc. is a purveyor of leather goods and accessories.
`
`41.
`
`Defendant previously owned a U.S. Trademark Registration No. 1,155,090 for the
`
`mark BUGATTI for leather goods and accessories. Such Trademark Registration was cancelled on
`
`June 29, 2002. Defendant is fully aware of the cancellation of its Trademark Registration.
`
`42.
`
`Defendant filed an application Serial No. 76/536,905 for registration of the mark
`
`BUGATTI for leather goods and accessories on July 25, 2003, over one year after Trademark
`
`Registration No. 1,158,090 was cancelled.
`
`43.
`
`Application Serial No. 76/536,905 was suspended on September 15, 2004. As a
`
`consequence of such suspension, Defendant cannot obtain a registration of the mark BUGATTI for
`
`leather goods and accessories until such time as the suspension is lified.
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`44.
`
`Since June 29, 2002, Defendant has had no U.S. Trademark Registration ofthe mark
`
`BUGATTI for leather goods and accessories. Defendant is fully aware that it has no such U.S.
`
`Trademark Registration.
`
`45.
`
`Defendant has no U. S. Trademark Registration for a Red Oval Logo bearing the word
`
`BUGATTI. Defendant has no pending application for U.S. Trademark Registration of a Red Oval
`
`Logo bearing the word BUGATTI.
`
`46.
`
`Defendant is fully aware that it has no U.S. Trademark Registration for a Red Oval
`
`Logo bearing the word BUGATTI. Defendant is also fully aware that it has no pending application
`
`for U.S. Trademark Registration of a Red Oval Logo bearing the word BUGATTI.
`
`47.
`Despite the fact that Defendant has no U.S. Trademark Registration for the mark
`BUGATTI, Defendant has deliberately and willfully falsely asserted that it has a U.S. Trademark
`
`Registration for the mark BUGATTI by using the ® symbol with the word BUGATTI and on a Red
`
`Oval Logo bearing the word BUGATTI.
`
`Such false claim of registration has occurred in
`
`Defendant’s
`
`advertisements
`
`and
`
`catalogs
`
`and
`
`on websites <www.Bugatti.com> and
`
`<www.atalante.com> operated by Defendant which have been updated and/or copyrighted by
`
`Defendant as recently as April 15, 2005, subsequent to the cancellation of Defendant’s U.S.
`
`Trademark Registration No. 1,158,090 and subsequent to the filing of U.S. Trademark Application
`
`Serial No. 76/536,905.
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`48.
`
`Defendant’s false use of the ® symbol is willful and deliberate and made with full
`
`knowledge and awareness that Defendant has no U.S. Trademark Registration for the mark
`
`BUGATTI and/or the Red Oval Logo bearing the word BUGATTI.
`
`49.
`
`Defendant adopted a Red Oval Logo bearing the word BUGATTI subsequent to and
`
`with the full knowledge and awareness that Bugatti International had previously adopted a Red Oval
`
`Logo bearing the word BUGATTI.
`
`50.
`
`In operating the website <www.Bugatti.com>, Defendant has without authorization
`
`from Bugatti
`
`International used Bugatti
`
`Intemational’s registered trademark VEYRON on
`
`Defendant’s website and has provided links to photographs of Bugatti Internationa1’s VEYRON
`
`automobile identified by the Red Oval Logo bearing the word BUGATTI. Such links were provided
`
`by Defendant in order to associate itself with the VEYRON automobile, and with Plaintiff Bugatti
`
`International, when in fact, no such association exists or has been authorized.
`
`51 .
`
`In operating the website <www.atalante.com>, Defendant has provided the following
`
`instructions to its distributors:
`
`This site is provided compliments ofyour Bugatti® Atalante“" Leather Accessories
`distributor, who can arrange to have these leather accessories personalized for you.
`
`Distributors are encouraged to copy and paste pictures and descriptions from this
`web site. To save a copy of a picture to your own hard disk just click and hold
`down your mouse button on the picture you’d like to use and choose save, name it
`with a name you can remember or write down, and save it to a folder where you
`will be sure to find it — or to your desktop.
`
`Defendant has also instructed its distributors:
`
`This site is provided compliments of your Atalantem Leather Accessories
`distributor, who can arrange to have these leather accessories personalized for you.
`
`12
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`

`Distributors are encouraged to use pictures and descriptions from this website.
`
`52.
`
`The instructions provided to Defendant’s distributors encourage and induce
`
`Defendant’s distributors to copy and paste the Red Oval Logo bearing the word BUGATTI. By
`
`following the instructions provided by Defendant, Defendant’s distributors can copy and paste the
`
`Red Oval Logo bearing the word BUGATTI.
`
`53. When the Red Oval Logo bearing the word BUGATTI is copied from the
`
`<www.atalante.com> website by Defendant’s distributors, the ® applied by Defendant is also
`
`copied. Thus, Defendant is encouraging its distributors to falsely claim a U.S. Trademark
`
`Registration.
`
`54.
`
`Long after Bugatti Intemational’s adoption, use and registration of the BUGATTI
`
`Marks, with full knowledge of Bugatti Intemational’s prior rights in the BUGATTI Marks, and
`
`without Bugatti International’ s authorization or consent, Defendant commenced use ofthe Red Oval
`
`Logo bearing the word BUGATTI as a trademark in connection with its business activities in the
`
`Commonwealth of Massachusetts and elsewhere in the United States.
`
`55.
`
`By reason of Bugatti Intemational’s prior rights in and to the distinctive and famous
`
`BUGATTI Marks for automobiles, Defendant’s use ofBUGATTI in its trademarks, is likely to cause
`
`confusion and mistake in the minds ofthe purchasing public, and tends to and does falsely create the
`
`impression that the goods of the Defendant are provided, sponsored or licensed by Bugatti
`
`International, or are otherwise affiliated with or authorized by Bugatti International.
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`[VIOLATION OF § 32 OF THE LANHAM ACT, 15 U.S.C. § 1114;
`INFRINGEMENT OF A