throbber
TTA
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`91162804
`
`)
`
`) )
`
`)
`)
`
`) )
`
`) )
`
`)
`
`In re: U.S. Trademark Application
`Serial Nos. 78/263,330
`
`Toledo Mud Hens Baseball Club, Inc.,
`
`Opposer,
`
`V.
`
`Mudhen Espresso, Inc.,
`
`Applicant
`
`LETTER FORWARDING COPY OF
`
`COMPLAINT IN CIVIL ACTION
`
`Opposer is now providing a copy of the complaint in the civil action. As of this
`
`date, the case has been transferred to the District Court for the Eastern District of Michigan,
`
`Northern Division. A judgehas not yet been assigned.
`
`Respectfully submitted,
`Toledo Mud Hens Baseball Club, Inc.
`
`Mark C. Schaffer
`
`EMCH, SCHAFFER, SCHAUB
`& PORCELLO CO., L.P.A.
`P.O. Box 916
`
`Toledo, Ohio 43697-0916
`Ph: (419) 243-1294
`FAX: (419) 243-8502
`Attorney for Opposer
`
`||||||||||||||||l||||||||||l||||||lll||||||||l||||
`
`03-09-2006
`u.s. Patent 3. TMOfcITM Mail Rcpt 0t. #30
`
`

`
`CERTIFICATE OF SERVICE
`
`This is to certify that a copy of this Letter Forwarding Copy of Complaint in Civil
`Action was sent by regular U.S. mail to, Glenn W. Smith, Esq., from the law firm of
`Bensinger, Cotant & Menkes, PC, 122 W. Bluff Street, Marquette, MI 49855, attorney for
`Applicant, this
`9
`th day of March, 2006.
`
`Mark C. Schagr
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United States
`Postal Service "Express Mail Post Office to Addressee" service under 37 CFR 1.10 as U.S.
`Express Mail No. EV547553023 on this 951' day of March, 2006,
`in an envelope
`addressed to: BOX TTAB, Assistant Commissioner for Trademarks, P.O. Box 1451,
`
`‘
`
`Alexandria, VA 22313-1451.
`
`all
`
`

`
`
`
`"#
`
`..~ \~ J 3
`:.«
`- 3
`‘0’
`ma 9
`
`*
`
`a
`-
`.
`
`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO,g/VESTERNMDI
`5%’
`“
`
`«la.
`
`
`s C
`
`ase No.
`
`TOLEDO MUD HENS BASEBALL
`CLUB, INC.
`406 Washington Street
`Toledo, Ohio 43604,
`
`VS.
`
`Plaintiff,
`
`MUDREN ESPRESSO’, INC.
`4197 Morgan Road
`Gaylord, Michigan 49735
`
`Defendant.
`
`Judge:
`
`iijeee EATIIE
`
`KATE
`
`COMPLAINT FOR DAMAGES
`AND INJUNCTIVE RELIEF FOR
`PATENT INFRINGEMENT AND
`DEMAND FOR JURY TRIAL
`
`Charles R. Schaub (0001827)
`Mark C. Schaffer (0000665)
`Emch, Schaffer, Schaub
`& Porcello Co., L.P.A.
`One SeaGate, Suite ‘I980
`P.O. Box 916
`
`Toledo, Ohio 43697-091 6
`Telephone: 419-243-1294
`Fax: 419243-8502
`E-Mail:
`crschaub@essp-law.com
`mschaffer@essp—law.com
`
`)
`
`i-*******'k*'A'1\'**k*k***
`
`Plaintiff, Toledo Mud Hens Baseball Club, lnc., for its Complaint against Defendant,
`
`Mudhens Espresso, lnc., states as follows:
`
`THE PARTIES
`
`5.
`.... —';
`
`1.
`
`Plaintiff is a corporation existing under the laws of the State of Ohio, having
`
`its principal place of business at 406 Washington Street, Toledo, Ohio 43604.
`
`

`
`2.
`
`Defendant, Mudhen Espresso, lnc., on information and belief, is a
`
`corporation organized and existing under the laws of the State of Michigan, having an
`address at 4197 Morgan Road, Gaylord, Michigan 49735. '
`
`JUR!SD|CTl0N AND VENUE
`
`3.
`9 Plaintiff brings this suit for trademark infringement, which arises under the
`trademark laws of the United States, namely, Title 15 of the United States Code and
`
`more particularly, 15 U.S.C. 114 and 15 U.S.C. 1116-18 inclusive.
`
`4.
`
`This Court has jurisdiction under the provisions of 15 U.S.C. 1121 and 28
`
`U.S.C. ‘l338(a).
`
`5.
`
`Venue is proper in this district under the provisions of 28 U.S.C. 1391 (b)
`
`and 1391 (c).
`
`FACTS COMMON TO ALL CLAIMS
`AND
`
`FIRST CLAIM FOR RELIEF
`TRADEMARK INFRINGEMENT
`
`6.
`
`Plaintiff is the owner by assignment of a valuable trademark application
`
`and trademark and service mark registrations therefore, including but not limited to U.__S.
`
`Trademark Application, Serial No. 78/436,103, U.S. Registration Nos. 1,364,566,
`
`2,089,241 and 2,108,740, true and accurate copies of which are ‘attached to this
`
`Complaint, as Exhibit “A”.
`
`7.
`
`The name “MUD HENS" was first used in 1896 in connection with the
`
`minor league baseball team in Toledo, Ohio and was used as the‘ team’s name from
`
`_ 1896 until about 1955.
`
`In 1965, the name “MUD HENS" was re-adopted by the team as
`
`2
`
`

`
`its. name and has been continuously used since that time.
`
`8.
`
`Plaintiff has continuously used its mark MUD HENS and the design of a
`
`“mud hen" in interstate commerce since at least‘ as early as 1965 to identify its goods
`
`and services and to distinguish them from others by prominently displaying them on its
`
`goods and on signs, displays, and in advertising and promotional literature relating to its
`
`services.
`
`9.
`
`Plaintiff has sold and continues to sell coffee in coffee cups and other ’
`
`beverages in beverage containers that show Plaintiffs marks.
`
`10.
`
`Plaintiff has sold and continues to sell food items with packaging materials
`
`that show Plaintiff’s marks.
`
`11.
`
`Plaintiff has sold and continues to sell a wide variety of promotional items,
`
`
`
`‘max’~x.,.=-‘
`
`including labeling and packaging that show Plaintiff’s marks.
`
`12.
`Defendant’s markand Plaintiff’s marks are essentially identical and when
`used in connection with coffee or coffee products is likely to cause confusion as to the
`
`source or sponsorship of the respective goods.
`
`13.
`
`Plaintiffs marks are symbolic of extensive goodwill and consumer
`
`recognition built up by Plaintiff through substantial amounts of time, effort, and money
`
`in advertising and promotion.
`In view of the similarity of the respective marks and the
`related nature of goods and services of the respective parties, it is allegedthat
`Defendants mark so resembles Plaintiffs marks previously used in the United States,
`
`and not abandoned, as to be likely to cause confusion, or to cause mistake, or to
`
`deceive.
`
`

`
`Plaintiff’s marks, MUD HENS and the design of a mud hen, have become
`14.
`famous because of their uniqueness and their use for over 100 years. The Mud Hens
`attained widespread notoriety on the long running television show M*A*S*H as the
`favorite team of the character Maxwell Q. Klinger. Jamie Farr, who played Klinger,
`
`appeared in episodes wearing a “MUD HENS” cap and baseball jersey. MUD HENS
`merchandise has been presented to President bush, President Clinton, President
`Reagan, Charles Barkley, Bob Costas,Spike Lee, Katie Holmes, Karl Malone, Phil
`
`Mickelson and many other national celebrities. The MUD HENS. has also been
`referenced in movies such as “Major League”. The term "MUD HEN” has thus become
`
`inextricably connected to the Toledo Mud Hens baseball team by the public at large.
`
`The marks MUD HENS and the design of a mud hen have strong trademark
`
`significance to the public which indicate Plaintiff as the source of goods and services
`
`offered under the marks.
`
`15.
`
`The marks, MUD HENS and the design of a mud hen, have become
`
`famous throughout the United States and the world as marks of Plaintiff.
`
`16.
`
`Defendant, on June 17, 2003, caused an application for registration of its
`
`trademark with the United States Patent and Trademark Office. A true and accurate
`
`copy of that application is attached hereto as Exhibit “B”.
`
`17.
`
`‘ On information and belief, Defendant had not, as of the date of filing said
`
`application to register its trademark, yet used its trademark in commerce.
`_ 18.
`V
`Plaintiff is the first to use its famous MUDTHENS trademark in commerce
`
`throughout the United States.
`
`

`
`19.
`
`On October 29, 2004, Plaintiff duly filed its Noticelof Opposition to the
`
`registration of Defendant’s trademark. A copy of said Notice of Opposition is attached
`
`hereto as Exhibit “C".
`
`20.
`
`On information and belief, Defendant, subsequent to its filing of its
`
`application for registration of its trademark (Exhibit “A”), began using its infringing
`trademark by iicensing franchisees to display said mark on “drive through coffee shops”
`in the states of Michigan and Ohio.
`(A true and accurate copy of a page from
`Defendant’s website offering franchisees (mudhenexpresso.com) isattached hereto as
`
`Exhibit “D”.
`
`21.
`
`Defendant’s use of its infringing MUD HENS trademark has caused there
`
`to exist a likelihood of confusion as to the source of the goods and services sold and
`
`rendered by Plaintiff in connection with its famous trademark
`
`SECOND CLAIM FOR RELIEF
`COMMON LAW TRADEMARK INFRINGEMENT
`
`22.
`
`This is an action for common law trademark infringement. This cause of
`
`action is separate and independent of the cause of action set forth in the First Claims
`
`for Relief, but is between the same parties and is based on the same operative facts as
`
`set forth in the First Claim for Relief.
`
`23.
`
`Plaintiff incorporates‘ by reference the allegations of paragraphs 1-21
`
`herein above as if restated herein.
`
`

`
`24.
`
`This Courthas jurisdiction over this action under 28 U.S.C. 1332, as there
`
`is diversity as to the citizenship between the parties, and the amount in controversy
`
`exceeds the sum of Seventy Five Thousand Dollars ($75,000.00), exclusive of interest
`
`and costs. This Court also has pendent jurisdiction over this Count Two pursuant to 28
`U.S.C. 1330(b). ‘Venue is proper in this district under 28 U.S.C. 1391 ..
`25.
`Plaintiffoowns and enjoys common law rights in Ohio and throughout the
`
`United States in andto its trademarks, which are superior to any rights which Defendant
`may claim to any said trademarks and any form or style with respect to
`
`26.
`Defendant’s use of Plaintiffs trademarks is likely to cause and -has caused
`confusion as to the source of Defendant’s goods in that purchases thereof will be likely
`to associate or have associated such goods and services with and as originating with
`
`the Plaintiff, all to the determent of Plaintiff.
`
`27.
`
`Defendant’s infringement will continue, unless enjoined by this Court.
`
`THIRD CLAIM FOR RELlEF
`j
`FALSE DESIGNATION OF ORIGIN UNDER SECTION 43(A)
`OF THE LANHAM ACT
`
`.28.
`
`This is an action for false designation of origin and unfair competition
`
`pursuant to Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a). This Court has
`jurisdiction under 15 U.S.C. 1121, 15 U.S.C. 1125(a) and 28 U.S.C. 1338(a). This
`
`Court also has jurisdiction of this action under 28 U.S.C. 1332, and there is diversity of
`citizenship between the parties, and the amountin controversy exceeds the sum of
`
`Seventy Five Thousand Dollars ($75,000.00), exclusive of interests and costs. Venue
`
`is proper in this district under 28 U.S.C. 1391.
`
`6
`
`

`
`'29.
`
`Plaintiff realleges and incorporates herein the allegations of paragraph 1-
`
`27, inclusive.
`
`30.
`
`Defendant’s use of the MUD HENS marks constitute a false designation
`
`of origin, which is likely to deceive and has deceived customers into believing that the
`
`Defendant's goods and services are those of Plaintiff.
`
`31.
`
`Plaintiff has no control over the nature and quality of the products and
`
`services sold by Defendant.
`
`32.
`
`Any failure, neglect or default by Defendant in providing such products will
`
`reflect adversely on Plaintiff as the believed source of origin thereof, hampering efforts
`by Plaintiff to continue to protect its outstanding reputation for high quality and resulting
`in the loss of sales thereof and the considerable expenditures to promote its products
`
`\.__‘._‘)_“-V
`
`under its marks, all to the irreparable harm of Plaintiff.
`
`33.
`
`Defendant’s false designation of origin will continue unless enjoined by
`
`this Court.
`
`-
`
`FOURTH CLAIM FOR RELIEF
`FEDERAL TRADEMARK DILUTION ACT
`
`34.
`
`This is an action under the Federal Trademark Dilution Act, 15 U.S.C.
`
`1125(c)(1). This Court has jurisdiction under 15 U.S.C. 1-121 and 28 U.S.C. 1338(a).
`
`This Court also has jurisdiction of this action under 28 U.S.C. 1332, as there is diversity
`
`of citizenship between the parties and the amount in controversy exceeds the sum of
`
`

`
`Seventy~Five Thousand.Dollars ($75,000.00), exclusive of interest and costs. Venue is
`
`proper under 28 U.S.C. 1391.
`
`35.
`
`36.
`
`37.
`
`Defendant realleges herein the allegations of paragraphs 1 — 33 inclusive.
`
`Plaintiff is the owner of the famous MUD HENS trademark.
`
`Plaintiffs MUD HENS mark is distinctive and famous due to:
`
`(A)
`(B)
`
`its inherent and acquired distinctiveness known worldwide;
`the long period in time and extensive use of the MUD HENS
`
`trademark in connection with goods and sen/ices;
`
`(C) the long duration and great extent and publicity of the MUD HENS
`
`mark which the Plaintiff has continuously promoted;
`
`(D)
`
`the great geographic extent in which goods bearing the MUD HENS
`
`trademark are sold;
`
`'
`
`(E) the identical channels to those of Defendant in which Plaintiffs goods
`
`bearing the MUD HENS mark sold;
`
`(F)
`the degree of wide recognition of the Plaintiff’s MUD HENS trademark
`throughout the world;
`
`(G) third parties recognize and therefore do not adopt or use the same or
`
`similar marks as Defendant has as alleged herein.
`
`38.
`
`Defendants use of Plaintifl"s MUD HENS mark has caused and continues
`
`to cause dilution of the distinctive quality of the famous mark.
`
`39.
`
`Defendant is willfully trading on Plaintiff’s reputation to cause dilution of
`
`the famous MUD HENS trademark.
`
`

`
`40.
`
`Defendantts continued use of the MUD HENS trademark continues to
`
`cause dilution of the distinctive quality of Plaintiffs trademarks unless enjoined by this
`
`Court.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff prays:
`
`A.
`
`That a preliminary and permanent injunction issue restraining Defendant, its
`
`agents, servants, employees, successors and assigns and all other in concert and privity
`
`with them from infringement of Plaintiffs trademarks and service marks, including but not
`
`limited to U.S. trademark application, Serial No. 78/436,103, U.S. Registration Nos.
`
`1,364,566, 2,089,241 and 2,108,746, through their adoption of Plaintiffs trade dress, from
`
`<;...}‘2
`
`injuring Plaintiff’s business reputation, from unfairly competing with Plaintiff;
`
`B.
`
`That Defendant be required to account to Plaintiff for Defendants profits, the
`
`actual damages suffered by Plaintiff as a result of Defendant’s acts of infringement, false
`
`designation of origin, unfair competition, and unfair and deceptive trade practices, together
`
`with interest and costs;
`
`C.
`
`That Defendant be ordered to surrender for destruction all signage,
`
`nameplates,
`
`labels, advertisements and other materials constituting infringement of
`
`Plaintiffs trademark rights;
`
`

`
`D.
`
`That Deferidant be compelled to pay Plaintiff’s attorney’s fees, together with
`
`all costs of this suit; and
`
`E.
`
`For such other and further relief as may be just and equitable.
`
`Respectfully submitted,
`
`EMCH, SCHAFFER, SCHAUB
`& PORCELLO CO.
`
`
`
`-L
`
`‘
`f
`
`
`Charles R. Schaub, Esquire (OSCT #0001827)
`Mark C. Schaffer, Esquire (OSCT #0000665)
`One SeaGate, Suite 1980
`A
`P.O. Box 916
`‘
`
`4
`
`
`
`Toledo, Ohio 43697-0916
`(41 9) 243-1294
`(419) 243-8502 (Fax)
`E-Mail:
`crschaub@ essQ—law.com
`mschaffer@ essg—law.com
`
`Counsel for Plaintiff, Toledo Mud Hens
`Baseball Club, Inc.
`'
`
`10

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket