throbber
Trademark Trial and Appeal Board Electronic Filing System. 3935
`
`ESTTA Tracking number: ESTTA42892
`
`Filing date3
`
`08/22/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`l91162896
`ipmmnfi
`Wet Willie's, Inc.
`
`Proceeding
`
`Party
`
`1 Z
`
`7 E
`
`ROBERTIALEE
`ALSTON & BIRD, LLP
`Correspondence 1201 W. PEACHTREE STREET
`Address
`ATLANTA, GA 30309-3 424
`
`BLee@a1ston.com
`
`Submission
`
`Motion to Suspend for Civil Action
`
`Robert L. Lee
`Filer's Name
`e-.n;af;~1éi;@;i;{5g.c}§;1{;
`
`Signature
`Date
`
`Attachments
`
`/Robert L. Leer’
`08/22l2005
`WetWi11iesMotiontoSuspend.pdf ( 3 pages )
`WetWi11iesCornp1aint.pdf ( 18 pages )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of U.S. Application Serial No. 78/259,969
`Mark: WET VVILLY’S
`
`Filing Date: June 9, 2003
`
`WET WILLIE’S, INC.,
`
`Opposer,
`
`Opposition No. 91162896
`
`V.
`
`IMPACT DISTRIBUTION,
`
`Applicant.
`
`
`OPPOSER’S MOTION TO SUSPEND FOR CIVIL ACTION
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`Pursuant to 37 C.F.R. § 2.117, Opposer Wet Willie’s, Inc. (“Opposer”) hereby files its
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`Motion to Suspend for Civil Action, and shows the Board as follows:
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`On August 18, 2005, Opposer’s affiliated entities, Wet Willie’s Management Corp. and
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`South Beach Wet Willie’s, Inc., filed a civil action against Applicant for trademark infringement,
`
`dilution, and unfair competition in the United States District Court for the Southern District of
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`Florida, Miami Division (Case No. 05—CV—22300). A copy of the complaint is attached hereto.
`
`Opposer submits that the Federal Court Complaint has a direct bearing on this proceeding, as
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`Opposer and its affiliated entities seek damages and injunctive arising from Applicant’s use of the
`
`mark WET VVILLY’S — the mark at issue in this proceeding. Opposer and its affiliated entities also
`
`seek an order from the Federal Court requiring Applicant to abandon its application which is the
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`subject of this proceeding, as well as another pending application for its WET VVILLY’S mark.
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`Since there are no dispostive motions pending this proceeding, Opposer submits that its Motion to
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`Suspend for Civil Action should be granted.
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`

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`Respectfully submitted, this 22nd day of August, 2005.
`
`/s/ Robert L. Lee
`
`ROBERT L. LEE
`
`Georgia Bar Number 443978
`ANDREW J. VVILSON
`
`Georgia Bar Number 737599
`ALSTON & BIRD, LLP
`One Atlantic Center
`
`1201 W. Peachtree Street
`
`Atlanta, Georgia 30309-3424
`(404) 881-7000 — telephone
`(404) 881-7777 — facsimile
`
`Attorneys for Opposer
`WET VVILLIE’S, INC.
`
`

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`CERTIFICATE OF SERVICE
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`I do hereby certify that a copy of the foregoing OPPOSER’S MOTION TO SUSPEND
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`FOR CIVIL ACTION was served by first class mail, postage prepaid, upon counsel for Applicant,
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`addressed as follows:
`
`Christopher J. Palermo
`HICKMAN PALERMO TRUONG & BECKER LLP
`
`2055 Gateway Place Suite 550
`San Jose, California 95110-1089
`
`Dated: August 22nd, 2005.
`
`/s/ Robert L. Lee
`
`ROBERT L. LEE
`
`

`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
`
`F I I, 5 Q
`
`AUG 3 8 saga
`
`WET WILLIE’S MANAGEMENT
`
`CORP., and SOUTH BEACH WET
`
`am
`
`\ am *i”°s“;3:E?*;T
`@ 5 m 2 3
`
`WILLIE’S, INC,
`
`Plaintiffs,
`
`V.
`
`I
`,3‘:
`
`{E _J
`
`-35 wing“ 15
`
`Civil Action File No
`
`H M .
`
`mi.
`
`‘Ia
`
`JURY TRIAL DEMANDED
`
`IMPACT DISTRIBUTION, INC, a/k/a
`
`IMPACT BEVERAGE Co.,
`
`Defendant.
`
`
`COMPLAINT FOR INJUNCTIVE RELIEF AND DAMAGES
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`Plaintiffs Wet Willie’s Management Corp. and South Beach Wet Willie’s,
`
`Inc. (collectively “Wet Willie’s” or “PlaintifI”) file this Complaint for Injunctive
`
`Relief and Damages against Defendant Impact Distribution, Inc., a/k/a Impact
`
`Beverage Co. (“Impact” or “Defendant”), and in support allege as follows:
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`NATURE AND BASIS OF ACTION
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`1.
`
`This is an action for trademark and service mark infringement in
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`Violation of the Federal Lanham Act, 15 U.S.C. § 1114(1), and the common law of
`
`the State of Florida; unfair competition in violation of the Federal Lanham Act, 15
`
`U.S.C. § 1125(a)(1)(A); trademark dilution in Violation of the Federal Lanham Act;
`
`

`
`15 U.S.C. § 1125(0), and Fla. Stat. Ann. § 495.151; and deceptive trade practices
`
`in violation of the Florida Deceptive and Unfair Trade Practices Act, Fla. Stat.
`
`Ann. § 501.201 et seq. Plaintiff seeks injunctivc relief, damages, and recovery of
`
`its reasonable costs and attorneys’ fees.
`
`, PARTIES
`
`2.
`
`Wet Willie’s Management Corp.
`
`is a corporation organized and
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`existing under the laws of the State of Florida, with its principal place of business
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`at P.O. Box 60127, Savannah, Georgia 31420. Wet Willie’s Management Corp. is
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`the owner of right, title and interest to the WET WILLIE’S Mark (defined below),
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`and has licensed it to various affiliated companies for use in connection with
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`restaurant and bar services, and related goods and services.
`
`3.
`
`South Beach Wet Wil1ie’s, Inc. is a corporation organized and existing
`
`under the laws of the State of Florida, with its principal place of business at 760
`
`Ocean Drive, Miami Beach, Florida 33139. South Beach Wet Wi11ie’s owns and
`
`operates a restaurant and bar in Miami Beach under the trademark and service
`
`mark WET WILLIE’S under license from Wet Wil1ie’s Management Corp.
`
`4.
`
`Defendant Impact is a corporation organized and existing under the
`
`laws of the State of California.
`
`Impact’s principal place of business is 2800
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`Leavenworth Street, Suite 370, San Francisco, California 94133.
`
`

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`JURISDICTION AND VENUE
`
`5.
`
`This Court has original jurisdiction over the subject matter of this
`
`action pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1332, 1337 and 1338,
`
`because this case arises under the Trademark Act of 1946, 15 U.S.C. §§ 1051, et
`
`seq.,
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`the parties hereto are citizens of different states, and the amount
`
`in
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`controversy exceeds the sum or value of $75,000.
`
`6.
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`This Court has supplemental jurisdiction over Wet Willie’s state law
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`and common law claims pursuant to 28 U.S.C. § 1367.
`
`7.
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`This Court has personal
`
`jurisdiction over Defendant because
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`Defendant has, inter alia, transacted business within the State of Florida, derived
`
`substantial revenue from goods used or consumed or services rendered in the State
`
`of Florida, committed tortious acts within the State of Florida, and/or caused injury
`
`to persons in the State of Florida arising out of acts committed outside this state.
`
`8.
`
`Venue is proper in this District pursuant to 28 U.S.C. § 1391. A
`
`substantial part of the events or omissions giving rise to the claims occurred in this
`
`District.
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`In addition, Defendant is subject to personal jurisdiction within this
`
`District.
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`

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`FACTUAL BACKGROUND
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`Wet Willie’s and its Famous WET WILLIE’S Mark
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`9.
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`Wet Willie’s has licensed the WET WILLIE’S Mark for use in
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`restaurants and bars in cities throughout the southeastern United States, including
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`Savannah, GA, Memphis, TN, Charleston, SC, Shreveport, LA, Miami Beach, FL,
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`West Palm Beach, FL, Coconut Grove, FL, and St. Petersburg, FL.
`
`In addition,
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`Wet Willies is currently developing and executing plans to expand into markets in
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`Trenton, N], Jackson, MS, and Paris, France.
`
`10.
`
`Since at least as early as 1990, Wet Willie’s, or its licensees and/or
`
`affiliates, has continuously used the trademark and service mark WET WILLIE’S
`
`and the slogan WET WILLIE’S —- A BAR, A PARTY, AN INSTITUTION
`
`(collectively, the “WET WILLIE’S Mark”) in interstate commerce to identify its
`
`restaurant and bar services, and related goods and services.
`
`11.
`
`Currently, Wet Willie’s has licensed the WET WILLIE’S Mark for
`
`use in eight different full—service restaurants and bars in five states. Wet Willie’s
`
`restaurants and bars specialize in more than 18 variations of frozen cocktails, as
`
`well as “jello-shots” and other alcoholic beverages. Wet Willie’s locations have
`
`become destination attractions for both tourists and local residents alike. Wet
`
`Willie’s frozen cocktails are frequently offered under creative, memorable names,
`
`such as, for example, “Attitude Improvement,” “Call a Cab,” “Monkey Shine,”
`
`

`
`“Shock Treatment,” “Polar Cappuccino,” “Chocolate Thunder,” “Cherry Bomb,”
`
`“Monster Melon,” and “Grape Escape.”
`
`12. Wet Willie’s also utilizes its WET WILLIE’S Mark in connection
`
`with the promotion and sale of apparel and merchandise, including t—shirts and
`
`hats.
`
`13. Wet Willie’s spends substantial sums annually to promote the goods
`
`and services it sells under its WET WILLIE’S Mark, and Wet Willie’s generates
`
`substantial revenue from the sale of such goods and services.
`
`14. As an integral part of its marketing plan, Wet Willie’s operates an
`
`Internet Web site under the domain name <wetwillies.com> (the “Wet Willie’s
`
`Web Site”). Using the Wet Willie’s Web Site, Internet users can locate a Wet
`
`Willie’s bar and restaurant near them, review the standard menu for Wet Willie’s
`
`locations, review upcoming events at Wet Wi11ie’s locations, purchase WET
`
`WILLIE’S branded apparel, and learn the history of Wet Willie’s.
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`15. As a result of Wet Willie’s long~terrn and widespread use of the WET
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`WILLIE’S Mark in commerce, and the amount of favorable publicity surrounding
`
`WET WILLIE’S restaurant and bar services,
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`the WET WILLIE’S Mark has
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`achieved a level of recognition such that it is a famous mark in the United States
`
`and abroad. The WET WILLIE’S Mark acquired such fame well prior to the date
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`on which Defendant commenced the acts complained of herein.
`
`

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`16.
`
`In recognition of Wet Willie’s rights in and to the WET WILLIE’S
`
`Mark, the U.S. Patent and Trademark Office (“USPTO”) has granted Wet Wil1ie’s
`
`Reg. No. 1,679,064 for its mark WET WILLIE’S —— A BAR, A PARTY, AN
`INSTITUTION on the principal register.
`
`17.
`
`In accordance with Sections 7, 22, and 33(a) of the Trademark Act of
`
`1946, 15 U.S.C. §§ 1057, 1072, and 11l5(a), Wet Willie’s federal trademark
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`registration is valid and subsisting in law, was duly and legally issued, is prima
`
`facie evidence of the validity of the mark registered, and constitutes constructive
`
`notice of the ownership of the mark by Wet Willie’s.
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`In addition, Wet Willie’s
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`federal trademark registration has become incontestable pursuant to Section 15 of
`
`the Trademark Act of 1946, 15 U.S.C. § 1065, and, pursuant to Section 33(b) of
`
`the Act, 15 U.S.C. § 1l15(b), this registration is therefore conclusive evidence of
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`Wet Wil1ie’s exclusive right to use the WET WILLIE’S Mark.
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`Defendant’s Wrongful Conduct
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`18. Defendant
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`Impact manufactures
`
`and distributes gelatin-based,
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`alcoholic “edible cocktails,” or “jello-shots,” under the mark WET WILLY’S.
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`Like Wet Wi1lie’s drink offerings and jello-shots, Defendant’s jello-shots are
`
`offered under creative and memorable names,
`
`such as “Passion Fruit,”
`
`“Karmakazi,” “Blue Islander,” “Purple Shooter,” “Melon Drop,” and “Golden
`
`Splash.”
`
`

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`19. Upon information and belief Defendant sells its jello-shots cocktails
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`in markets in ten different states, including, but not limited to, Florida, Georgia,
`
`and South Carolina — states in which Wet Willie’s operates its restaurants/bars.
`
`20. Defendant also maintains an Internet Web site using the domain name
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`<wetwillys.com>. Visitors to the <wetwillys.com> Web site can order WET
`
`WILLY’S—branded edible cocktails from Defendant, obtain information regarding
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`WET WlLLY’S cocktails, including drink recipes and suggested party themes, and
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`view a schedule of upcoming WET WILLY’S promotional events at restaurants
`
`and bars.
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`21.
`
`On June 7, 2004, Defendant filed an application with the USPTO,
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`Serial No. 78/431,295, seeking registration of the mark WET WILLY’S and
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`Design for use in connection with “edible alcoholic drinks.”
`
`22.
`
`On June 9, 2004, Defendant filed an application with the USPTO,
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`Serial No. 78/259,969, seeking registration of the word mark WET WILLY’S for
`
`use in connection with “alcoholic beverages namely edible cocktails, packaged for
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`off premises consumption and sold in retail stores excluding restaurants and bars.”
`
`Defendant’s application was published for opposition on October 12, 2004. On or
`
`about November 12, 2004, Wet Willie’s filed a Notice of Opposition against
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`Defendant’s application, which proceeding is currently pending before the
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`Trademark Trial and Appeal Board.
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`

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`23. Upon information and belief, Defendant has adopted and is using
`
`marks virtually identical in sight, sounds, and meaning to the WET WILLIE’S
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`Mark in connection with its alcoholic beverages and related goods and services,
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`with full knowledge of Wet Willie’s and its exclusive rights to the WET
`
`WlLLIE’S Mark, and with full knowledge that Defendant has no legal right to use
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`the WET WILLIE’S Mark to promote or sell its own goods or services.
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`24. Upon information and belief, Defendant is using the WET WILLIE’S
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`Mark with the sole purpose and intent of trading on the goodwill that Wet Willie’s
`
`has developed in the WET WILLIE’S Mark, and in a manner designed to mislead
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`consumers into believing that Defendant and/or its WET WILLY’S branded goods
`
`and services are affiliated or associated with, or endorsed or sponsored by, Wet
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`Willie’s.
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`In fact, Defendant’s unlawful actions have led to actual consumer
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`confusion between Defendant’s use of its WET WILLY’S mark and Wet Willie’s
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`and it’s WET WILLIE’s Mark.
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`COUNT I
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`Federal Trademark and Service Mark Infringement
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`25. Wet Willie’s incorporates by reference the allegations contained in
`
`paragraphs 1 - 24 of this Complaint, as if fully set forth herein.
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`26. Wet Willie’s federally registered WET WILLIE’S Mark serves to
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`identify to the public certain goods and services that are offered by Wet Willie’s
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`

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`alone, and the goods and services offered in connection with that mark are
`
`regarded by the public as being offered by, sponsored by, approved by, authorized
`
`by, associated with, or affiliated with Wet Wil1ie’s.
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`27. Defendant has used a colorable imitation of the WET WILLIE’S
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`Mark, Without authorization, in commerce in connection with the sale, offering for
`
`sale, distribution, or advertising of goods and services, and such use is likely to
`
`cause confusion, mistake, or deception as to the true source or sponsorship of such
`
`goods and services.
`
`28.
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`Defenda_nt’s conduct will enable Defendant to earn profits to which
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`Defendant is not in law, equity or good conscience entitled, and has unjustly
`
`enriched Defendant, all
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`to Defendant’s profit and Wet Willie’s damage and
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`detriment.
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`29. Defendant’s
`
`conduct
`
`constitutes
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`trademark and service mark
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`infringement in violation of Section 32(1) of the Trademark Act of 1946, 15 U.S.C.
`
`§ 1114(1).
`
`30. As a direct and proximate result of Defendant’s conduct in violation
`
`of 15 U.S.C. § 1114(1), Wet Willie’s has suffered actual and irreparable injury for
`
`which no adequate remedy exists at law.
`
`31. Defendant’s wrongful conduct will continue to cause such injury
`
`unless enjoined by this Court.
`
`

`
`COUNT II
`
`Common Law Trademark and Service Mark Infringement
`
`32. Wet Wi1lie’s incorporates by reference the allegations contained in
`
`paragraphs 1 - 24 of this Complaint, as if fully set forth herein.
`
`33. Wet Willie’s, by virtue of its prior adoption and use of the WET
`
`WILLIE’S Mark in interstate commerce, has acquired, established and owns
`
`valuable common law rights in the WET WILLIE’S Mark, which serve to identify
`
`goods and services offered by Wet Willie’s alone, and the goods and services
`
`offered in connection with that mark are regarded by the public as being offered
`
`by, sponsored by, approved by, authorized by, associated with, or affiliated with
`
`Wet Willie’s.
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`34. Defendant has used a colorable imitation of the WET WILLIE’S
`
`Mark, without authorization, in commerce in connection with the sale, offering for
`
`sale, distribution, or advertising of goods and services, and such use is likely to
`
`cause confusion, mistake, or deception as to the true source or sponsorship of such
`
`goods and services.
`
`35. Defendant's
`
`conduct
`
`constitutes
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`trademark and service mark
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`infringement in violation of the common law of the State of Florida.
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`-10-
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`

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`36. As a direct and proximate result of Defendant’s trademark and service
`
`mark infringement, Wet Wil1ie’s has suffered actual and irreparable injury for
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`which no adequate remedy exists at law.
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`37. Defendant’s wrongful conduct will continue to cause such injury
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`unless enjoined by this Court.
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`COUNT III
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`Federal Unfair Competition
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`38. Wet Willie’s incorporates by reference the allegations contained in
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`paragraphs 1 - 24 of this Complaint, as if fully set forth herein.
`
`39. Defendant has used the WET WILLIE’S Mark, without authorization,
`
`in commerce in connection with the sale, offering for sale, distribution, or
`
`advertising of goods and services, and such use is likely to cause confusion,
`
`mistake, or deception as to the true source or sponsorship of such goods and
`
`services.
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`40. Defendant’s conduct constitutes unfair competition in violation of the
`
`Federal Lanham Act, 15 U.S.C. § 1125(a)(l)(A).
`
`41. As a direct and proximate result of Defendant’s conduct in Violation
`
`of 15 U.S.C. § 1125(a)(i)(A), Wet Wi1lie’s has suffered actual and irreparable
`
`injury for which no adequate remedy exists at law.
`
`-11-
`
`

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`42. Defendant’s wrongful conduct will continue to cause such injury
`
`unless enjoined by this Court.
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`COUNT IV
`
`Federal Trademark Dilution
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`43. Wet Willie’s incorporates by reference the allegations contained in
`
`paragraphs 1 — 24 of this Complaint, as if fully set forth herein.
`
`44.
`
`By Virtue of years of widespread and prominent use in connection
`
`with bar and restaurant—related goods and services, the WET WILLIE’S Mark has
`
`become famous and an asset of substantial value to Wet Willie’s.
`
`45. Defendant has used the WET WILLIE’S Mark, without authorization,
`
`in commerce in connection with the sale, offering for sale, distribution, or
`
`advertising of goods and services.
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`46. Defendant’s use has occurred after the WET WlLLIE’S Mark became
`
`famous, and it ‘dilutes the distinctive quality of Wet Willie’s famous WET
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`WILLIE’S Mark, including by blurring and by tarnishment.
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`47. Defendant’s conduct constitutes trademark dilution in violation of the
`
`Federal Lanham Act, 15 U.S.C. § 1125(c).
`
`48. As a direct and proximate result of Defendant’s conduct in violation
`
`of 15 U.S.C. § 1125(c), Wet Willie’s has suffered actual and irreparable injury for
`
`which no adequate remedy exists at law.
`
`-12-
`
`

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`49. Defendant’s wrongful conduct will continue to cause such injury
`
`unless enjoined by this Court.
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`COUNT V
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`State Trademark Dilution and Injury to Business Reputation
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`50. Wet Willie’s incorporates by reference the allegations contained in
`
`paragraphs 1 - 24 of this Complaint, as if fully set forth herein.
`
`51. Defendant’s unauthorized use of the WET WILLIE’S Mark in
`
`connection with the promotion and sale of Defendant’s goods or services is likely
`
`to injure the business reputation of Wet Willie’s by diluting the distinctive quality
`
`of the WET WILLIE’S Mark.
`
`52. Defendant’s conduct constitutes state trademark dilution and injury to
`
`business reputation in violation of Fla. Stat. Ann. § 495.151, for which Wet
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`Wi11ie’s has no adequate remedy at law.
`
`53. Defendant’s wrongful conduct will continue to cause such injury
`
`unless enjoined by this Court.
`
`COUNT VI
`
`Deceptive Trade Practices
`
`54. Wet Willie’s incorporates by reference the allegations contained in
`
`paragraphs 1 - 24 of this Complaint, as if fully set forth herein.
`
`-13-
`
`

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`55. Defendant has, in the course of its business, used the WET WILLIE’S
`
`"Mark, without authorization, in commerce in connection with the sale, offering for
`
`sale, distribution, or advertising of goods and services.
`
`56.
`
`In so doing, Defendant has passed off its goods or services as those of
`
`Wet Willie’s.
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`57. Defendant’s unauthorized use of the
`
`WILLIE’S Mark is likely
`
`to cause confusion or misunderstanding as to the source, sponsorship, approval, or
`
`certification of Defendant’s goods or
`
`services, or
`
`to cause confusion or
`
`misunderstanding as
`
`to the affiliation, connection, or association between
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`Defendant and its goods and services, on the one hand, and Wet Wil1ie’s and its
`
`goods and services, on the other.
`
`58. Defendant’s conduct constitutes deceptive trade practices in violation
`
`of Fla. Stat. Ann. § 501.201 et seq.
`
`59. As a direct and proximate result of Defendant’s deceptive trade
`
`practices,‘ Wet Willie’s has suffered actual and irreparable injury for which no
`
`adequate remedy exists at law.
`
`60. Defendant’s wrongful conduct will continue to cause such injury
`
`unless enjoined by this Court.
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`-14-
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`

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`JURY DEMAND
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`Wet Willie’s hereby demands trial by jury of all
`
`issues raised in this
`
`Complaint that are so triable.
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`PRAYER FOR RELIEF
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`WHEREFORE, by virtue Defendant’s unlawful conduct as alleged in
`
`Counts I through VI of this Complaint, Wet Willie’s respectfully prays that:
`
`1.
`
`The Court enter judgment that the WET WILLIE’S Mark is valid and
`
`enforceable, and that Defendant, as a result of its unauthorized use of the WET
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`WILLIE’S Mark has:
`
`a.
`
`infringed, either directly or oontributorily, Wet Willie’s rights in
`
`the WET WILLIE’S Mark in violation of 15 U.S.C. §1ll4(1), and
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`the common law of the State of Florida;
`
`b. engaged in unfair competition with Wet Willie’s in violation of the
`
`Federal Lanham Act, 15 U.S.C. § 1125(a)(l)(A);
`
`c. diluted the distinctive quality of the WET WILLIE’S Mark in
`
`violation of 15 U.S.C. § l125(c) and Fla. Stat. Ann. § 495.151; and
`
`d. engaged in deceptive trade practices, in violation of Fla. Stat. Ann.
`
`§ 501.201 et seq.
`
`-15-
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`

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`2.
`
`The Court issue a permanent injunction enjoining Defendant and its
`
`related companies, officers, agents, employees, attorneys, and/or representatives,
`
`and all those persons in active concert or participation with them, from:
`
`a. passing off or inducing or enabling others to sell or pass off any
`
`goods or services that are not authorized by Wet Willie’s as goods
`
`or services that are sponsored or endorsed by, associated or
`
`affiliated with Wet Willie’s;
`
`b. otherwise diluting the distinctive quality of the WET WILLlE’S
`
`Mark;
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`c. otherwise competing unfairly with Wet Willie’s; and
`
`d. engaging in deceptive trade practices with regard to the WET
`
`WILLIE’S Mark.
`
`3.
`
`Pursuant to Section 36 of the Trademark Act of 1946, 15 U.S.C.
`
`§ 1118, Defendant be directed to deliver up to Wet Willie’s for destruction all
`
`advertising and promotional materials, signs, business cards and all other materials
`
`which bear the WET WILLIE’S Mark,
`
`the WET WTLLY’S mark, or any
`
`confusingly similar variation thereof, in any form, and all plates, molds, matrices
`
`and other means of making or duplicating the same;
`
`4.
`
`Defendant be required to transfer ownership and control of the
`
`<wetwillys.com> domain name to Wet Willie’s;
`
`-15-
`
`

`
`5.
`
`Defendant
`
`be
`
`required to withdraw its
`
`pending trademark
`
`applications, Serial Nos. 78/259,969 and 78/431,295, for its WET WILLY’S mark;
`
`6.
`
`Pursuant to Section 35 of the Trademark Act of 1946, 15 U.S.C.
`
`§1117, an accounting be had and judgment be rendered against Defendant for the
`
`profits, gains and advantage derived from its wrongful actions and the damages
`
`sustained by Wet Willie’s as a result of Defendant’s actions, with such amounts to
`
`be trebled as provided by law because of the willful and deliberate nature of
`
`Defendant’s actions;
`
`7.
`
`Defendant be required to pay Wet Willie’s actual damages, enhanced
`
`damages, and punitive damages in light of the willful and intentional nature of its
`
`actions;
`
`8.
`
`Pursuant to Section 35 of the Trademark Act of 1946, 15 U.S.C.
`
`§l117(a), Defendant be required to pay Wet Willie’s the cost of this action and the
`
`reasonable attorneys’ fees Wet Willie’s has incurred in connection with this action;
`
`and
`
`9.
`
`Wet Willie’s be granted such other and further relief as the Court
`
`deems just and proper.
`
`-17-
`
`

`
`DATED this
`
`§da‘y ofAugust, 2005.
`
`ALSTON & BIRD LLP
`
`1201 West Peachtree Street
`
`Atlanta, GA 30309-3424
`Telephone: (404) 881-7000
`Facsimile: (404) 881-7777
`By: Robert L. Lee
`Andrew J. Wilson
`
`STEARNS WEAVER MILLER WEIS SLER
`
`ALI-IADEFF & SITTERSON, P.A.
`150 West Flagler Street
`Museum Tower, Suite 2200
`Miami, FL 33130
`Telephone: (305) 789-3200
`
`
`
`Counsel for Plaintiffs
`
`WET WILLIE’S MANAGEMENT
`
`CORP. and SOUTH BEACH WET
`
`WILLIE’S, INC.
`
`J:\.TBS\07000.000\WET WILLIES Impact complaint-v1.DOC
`
`-13-

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