Trademark Trial and Appeal Board Electronic Filing System. 3935
`
`ESTTA Tracking number: ESTTA35190
`
`Filing date3
`
`06/08/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`91165417
`Plaintiff
`Texas Department of Transportation
`
`1 Z
`
`Proceeding
`
`Party
`
`7 C
`
`hristopher L. Graff
`TROP, PRUNER & HU, P.C.
`Correspondence 8911 N. CAPITAL OF TEXAS HWY., SUITE 4150
`Address
`g Austin, TX 78759
`UNITED STATES
`§ tphpto @tphm. com
`
`Submission
`
`Motion to Amend P1eading/Amended Pleading
`
`Date
`Attachments
`
`06/080005
`TDT_0OO5 First Amended Notice of Opposition.pdf ( 35 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TRADEMARK
`
`In the matter of Application Serial No.: 76/121,980
`by RICHARD TUCKER
`for the Mark: DON’T MESS WITH TEXAS
`
`Filed: September 5, 2000
`
`Published in the Official Gazette
`
`on March 18, 2003 at TM 398
`
`TEXAS DEPARTMENT OF
`
`TRANSPORTATION,
`
`V.
`
`Opposer,
`
`RICHARD TUCKER,
`
`Applicant.
`
`Opposition No. 91165417
`
`FIRST AMENDED NOTICE OF OPPOSITION
`
`Opposer, Texas Department of Transportation, an agency of the State of Texas, with a
`
`principal place of business at 125 East 11th Street, Austin, Texas, 78701, believes that it will be
`
`damaged by registration of the mark shown in Application Serial No. 76/121,980 and hereby
`
`opposes the same. As grounds for opposition, Opposer asserts the following:
`
`1.
`
`Applicant seeks to register the mark DON’T MESS WITH TEXAS for clothing,
`
`namely boots, shoes, belts, hats, caps, scarves and neckties, based on an alleged first use date of
`
`June 1, 1999.
`
`2.
`
`Since at least as early as 1986, Opposer has prominently and continuously used
`
`the identical mark DON’T MESS WITH TEXAS in connection with its famous and award-
`
`TDT.OOO5
`
`

`
`winning anti-litter public service campaign, and to identify the various services and goods
`
`provided in connection with that campaign, including clothing such as t-shirts, hats and caps.
`
`3.
`
`Opposer has employed many different types of media in connection with its
`
`extensive promotion of its DON’T MESS WITH TEXAS mark and campaign,
`
`including
`
`television, radio, road-side signage, billboards, Internet websites, press releases, and special
`
`events held in numerous communities.
`
`4.
`
`For example, Opposer’s award-winning DON’T MESS WITH TEXAS public
`
`service announcements, which prominently feature Opposer’s DON’T MESS WITH TEXAS
`
`mark, have aired on thousands of occasions on numerous television networks and radio stations
`
`since January 1986, exposing literally millions of people to Opposer’s DON’T MESS WITH
`
`TEXAS mark and campaign.
`
`In addition to prominently featuring Opposer’s mark, these public
`
`service announcements have featured numerous famous celebrities, including but not limited to
`
`singer Willie Nelson, boxer George Foreman, actor Matthew McConaughey, singer LeAnn
`
`Rimes, guitarist Stevie Ray Vaughan, and singer Lyle Lovett. Additionally, many of these
`
`public service announcements have displayed Opposer’s goods bearing the mark DON’T MESS
`
`WITH TEXAS, including clothing.
`
`5.
`
`Opposer’s promotion of its DON’T MESS WITH TEXAS mark and campaign
`
`have been both massive and extensive. Since the inception of its DON’T MESS WITH TEXAS
`
`campaign in 1986, Opposer has spent over $32 million promoting its DON’T MESS WITH
`
`TEXAS mark and program.
`
`In addition, $120 million in free television and radio public service
`
`airtime has been donated to air Opposer’s DON’T MESS WITH TEXAS public service
`
`announcements.
`
`Similarly, more than 20 million litterbags bearing DON’T MESS WITH
`
`TDT.0005
`
`Page 2
`
`

`
`TEXAS and more than 13 million bumper stickers bearing DON’T MESS WITH TEXAS have
`
`been distributed.
`
`6.
`
`As a result of Opposer’s long usage and extensive promotion, the mark DON’T
`
`MESS WITH TEXAS has acquired a favorable reputation to consumers as an identifier and
`
`symbol of Opposer and its goods and services. Through these extensive efforts by Opposer, the
`
`DON’T MESS WITH TEXAS mark has become well-known and widely recognized — and
`
`indeed, famous — to consumers.
`
`7.
`
`As a result of Opposer’s usage and promotion of its DON’T MESS WITH
`
`TEXAS mark, Opposer has developed great and valuable goodwill and strong common law
`
`rights in that mark.
`
`8.
`
`In addition to its common law rights, Opposer is the owner of the following
`
`United States trademark registrations for its DON’T MESS WITH TEXAS mark:
`
`MARK
`
`REG. NO.
`
`GOODS & SERVICES
`
`DON’T MESS WITH TEXAS
`
`2,616,831
`
`
`
`Promoting the beautification of Texas
`highways and the public awareness of the need
`for litter prevention and litter cleanup through
`the development and dissemination of
`educational materials and public service
`announcements, and the development,
`planning and implementation of anti-litter
`ro rams.
`IC 42
`
`Printed matter and paper products, namely
`stickers, decals, bumper stickers, paper food
`containers, paper bags, plastic trash bags,
`paper and plastic litter bags, grocery bags,
`playing cards; promotional materials, namely,
`pamphlets and brochures in the fields of litter
`revention and litter cleanu.
`
`DON’T MESS WITH TEXAS
`
`2,627,196
`
`DON’T MESS WITH TEXAS
`
`2,619,887 Decorative magnets (IC 9)
`Jewelry, namely lapel pins (IC 14)
`Plastic key chains (IC 20)
`
`TDT.0005
`
`Page 3
`
`

`
`Each of these registrations is valid and subsisting. Two status and title copies of each of these
`
`registrations are attached hereto as Exhibit A, and are hereby incorporated herein.
`
`9.
`
`Opposer is not connected in any way with either Applicant or the goods offered
`
`by Applicant under the mark DON’T MESS WITH TEXAS.
`
`10.
`
`There is no issue as to priority. Applicant’s alleged date of first use is over
`
`twelve years subsequent to Opposer’s date of first use of the mark DON’T MESS WITH
`
`TEXAS.
`
`ll.
`
`Applicant’s proposed mark is identical to Opposer’s registered DON’T MESS
`
`WITH TEXAS mark in terms of overall appearance,
`
`sound, meaning and commercial
`
`impression.
`
`12.
`
`The mark of the application sought to be denied, namely DON’T MESS WITH
`
`TEXAS, so nearly resembles Opposer’s mark DON’T MESS WITH TEXAS as to be likely to be
`
`confused therewith and mistaken therefore, when used in connection with Applicant’s goods.
`
`Applicant’s mark is deceptively similar to Opposer’s mark so as to cause confusion and lead to
`
`deception as to the source, sponsorship, approval, or affiliation of Applicant’s goods offered
`
`under Applicant’s mark. Registration should therefore be refused under 15 U.S.C. § l052(d).
`
`13.
`
`Registration of Applicant’s mark would be a source of damage to Opposer
`
`because consumers and prospective consumers are likely to believe that Applicant’s goods
`
`offered under that mark are in some way affiliated, connected, or associated with Opposer or its
`
`goods and services.
`
`14.
`
`Registration of Applicant’s mark would be a source of damage to Opposer, as
`
`such registration would confer upon Applicant various statutory presumptions to which it is not
`
`entitled in view of Opposer’s long-standing prior use of its DON’T MESS WITH TEXAS mark.
`
`TDT.0005
`
`Page 4
`
`

`
`Moreover, registration of Applicant’s mark would cast a cloud upon Opposer’s right to continue
`
`to use, register and expand the use of its famous DON’T MESS WITH TEXAS mark.
`
`15.
`
`Furthermore, registration of Applicant’s mark would be a source of damage to
`
`Opposer, as a result of dilution of the distinctive quality of Opposer’s famous DON’T MESS
`
`WITH TEXAS mark. Registration should therefore be refused under 15 U.S.C. §§ 1063,
`
`1 125(c).
`
`16.
`
`Additionally, Applicant was aware of Opposer’s DON’T MESS WITH TEXAS
`
`mark prior to the filing of the application at issue.
`
`In fact, Applicant has admitted under oath
`
`that he selected and adopted the mark DON’T MESS WITH TEXAS only after seeing Opposer’s
`
`use of DON’T MESS WITH TEXAS on roadside signage and “decid[ing] that would be a good
`
`3
`name for his clothing line.’ Accordingly, Applicant has committed fraud in its Application
`
`Serial No. 76/121,980 in that the formal application papers filed by Applicant, under notice of
`
`Section 1001 of Title 18 of the United States Code, stated that Applicant was the owner of the
`
`mark DON’T MESS WITH TEXAS and that no other person, firm, corporation, or association
`
`had the right to use the mark DON’T MESS WITH TEXAS in commerce, when in fact it was
`
`and is well-known that Opposer had been using the mark DON’T MESS WITH TEXAS in
`
`commerce since long before Applicant’s filing date of September 5, 2000. Those statements
`
`were made by Applicant with the knowledge and belief that those statements were false. Those
`
`false statements were made with the intent to induce authorized agents of the United States
`
`Patent and Trademark Office to grant Applicant’s application for registration. Opposer is
`
`damaged by those false statements, and will be further damaged if the application in question is
`
`allowed registration. Further, Opposer is damaged by Applicant’s false statements because
`
`Opposer, since as early as 1986, has continuously used the mark DON’T MESS WITH TEXAS,
`
`TDT.0005
`
`Page 5
`
`

`
`and Opposer’s continued and legal use of its mark will be impaired if Applicant’s application is
`
`allowed.
`
`17.
`
`Upon information and belief, Applicant has shown a pattern (if not a propensity)
`
`for wrongfully copying and infringing upon the intellectual property rights of others.
`
`In the last
`
`three years alone, Applicant has been sued at least twice by parties claiming that Applicant
`
`wrongfully infringed their intellectually property.
`
`18.
`
`For example, Applicant was sued by Patch Magic Group I, L.P. in February of
`
`2002 for wrongfully copying the plaintiff‘ s copyrighted “Horse Design” on jackets sold by
`
`Applicant’s business. A true and correct copy of the Complaint from this lawsuit is attached
`
`hereto as Exhibit B, and is hereby incorporated herein. An agreed injunction was entered in that
`
`lawsuit,
`
`in which the U.S. District Court enjoined Applicant from “directly or indirectly
`
`infringing Patch Magic’s copyright in the Horse Design.”
`
`19.
`
`As another example, Applicant was sued by photographer Richard D. Vanderpool
`
`in April of 2004 for wrongfully copying the plaintiffs copyrighted photomontage on garments
`
`sold by Applicant’s business. A true and correct copy of the Complaint from this lawsuit is
`
`attached hereto as Exhibit C, and is hereby incorporated herein. Upon information and belief,
`
`Applicant quickly settled this lawsuit on terms which included the payment of damages and/or
`
`royalties to the plaintiff.
`
`20.
`
`As further grounds for rejection of the present application, upon information and
`
`belief Applicant has not in fact made use of the mark DON’T MESS WITH TEXAS in interstate
`
`commerce in connection with Q of the goods identified in Applicant’s use-based application.
`
`Accordingly, Applicant is not entitled to registration since the application is void ab initio.
`
`TDT.0005
`
`Page 6
`
`

`
`WHEREFORE, Opposer prays that Application Serial No. 76/121,980 for DON’T MESS
`
`WITH TEXAS be rejected, and that the registration of the mark of the application be denied and
`
`refused.
`
`Respectfully submitted,
`
`By:
`
`/cl graff/
`Christopher L. Graff
`Attorney for Opposer
`
`Date: June 8, 2005
`
`Trop, Pruner & Hu, P.C.
`7718 Wood Hollow Drive
`
`Suite G-50
`
`Austin, TX 78731
`
`(512) 418-9944
`
`CERTIFICATE OF SERVICE
`
`A true and correct copy of the foregoing FIRST AMENDED NOTICE OF OPPOSITION
`was served on all attorneys of record, in accordance with the Federal Rules of Civil Procedure,
`via U.S. Mail, first-class mail, certified and return receipt requested on May 7, 2003 to:
`
`Lee Craig
`Law Office of Lee Craig
`P.O. Box 833091
`
`Richardson, TX 75083-3091
`
`/cl graff/
`CHRISTOPHER L. GRAFF
`
`TDT.0005
`
`Page 7
`
`

`
`EXHIBIT A
`
`Duplicate Status and Title Copies of U.S. Trademark Registration Nos.
`(1) 2,616,831
`(2) 2,627,196
`(3) 2,619,887
`
`TDT.OOO5
`
`

`
`
`
`
`
`
`UNITED STATES DEPARTMENI‘ OF COEVIEVIERCELE
`
`United States Patent and Trademark Uffice
`
`Aprii 20, 2005
`
`THE ATTACTHED L‘-LS. TRAD}%I.{\-’IARK REGISTRATION 2,62 7,196 IS
`C_ERTIFIED TO BE A 'I‘R.UE— COPY OF‘ THE REGISTRATION ISSUED BY
`
`’I‘HF. UNITED STATES PA'TENT AND TRADEMARK OFFICE \¥HiEIH
`
`REGXSTRATION IS IN FI..«’LL FORCE AND EFFIECT.
`
`RE-GISTERED FOR A TERAI OF 10 YEARS FROM {}ct0Mber~ (F1, 2002
`SAID RICCURDS SHOW TITLE: TO BE : Regisrrazzt
`
`By Authority of the
`
`M
`
`—
`
`T COPr'i1\-'I1ISSIONER OF PATENTS A;\'D TiRADE;“¥-IARKS
`
`- “ ©\£gt.~l/\fl/vL<.Q
`
`T. LAWRENCE
`
`
`Certifying Officer
`
`
`{L{§3é~l11§&3.1§§F‘§§§.I;Q3i[€TH5E‘5,!§i REL?
`
`—,—,—.—.—,a \A r§
`
`~-» '\
`
`._.....f;
`
`
`
`
`
`‘ V‘.‘ 2‘
`
`

`
`
`
`1111:‘ CL: 16
`
`%R
`
`Prior US. C!s.: 2, 5, 22, 23, 29, 37, 38 and Si}
`
`eg. N0. 2,627,196
`United States Patent and Trademark Office Remm on 1, 2902
`
`
`
`PRINCIPAL REGISTER
`
`DON’T NIESS WTTH
`
`rams DEPARTMENT or TRANSPORTATION
`{TEXAS AGENCY OF THE STATE)
`335 3 11TH STREET
`AUSTf.N. TX ':am2433
`
`PAMPHLETS AND BROCHURES IN ma FIELDS
`01: LFITER PREVENHLDN AND LI'F'I'ER CLEANUP.
`IN CLASS m (us. cm '2, 5, 22, 23, 29, 3?, 33 AND say.
`
`Fox; pamrfig Mgrnm _4N:; FAPER pm)-
`DUCIS, NAMEH’
`DECALS, BUMPER
`STECKERS, PAPER F0-OD CONTAINERS, PAPER
`BAGS. Pmsm: TRASH BAGS, pansy. AND pus.
`TIC L—H.‘I'£<ZR BAGS, (}R.(‘)CER‘r’ BAGS, PLAYING
`CARDS; PROMOTIONAL MATERIALS, NAMELY,
`
`FIRST USE 3-31-198é~,!N C‘.{‘JMMERCE 3-3I~l§86.
`
`«
`1
`551*‘ NO‘ "5"93”59’ “LED mam‘
`
`JOANNA MATEJA. £:‘XM~«iINI2‘>£Gz5.'FI1Z)R.?~IE‘r’
`
`iK §§\
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`\..~:
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`.-.-
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`
`= 31*" =
`
`‘
`
`"UNI'.[‘EI) STATES DEPARTMENT OF COMMERCE
`
`United States Patent and Trademark Office
`
`April 20, 2005
`
`
`
`
`THE ATTA(.‘.HE~D U.S. TRADEIVIARK REvGISTR.:~X.T[()N 2,.6I6,831" IS
`
`CERTIFIEIJ TO BE A TRUE COPY OF THE REGISTRATION ISSUED BY
`
`THE UNI'I’l:T.}) STATES PATENT D 'I‘RADEMTARK OFFICE ‘WHICH
`
`REGISTRATI().N IS IN FULL FORCE AND EFFECT.
`
`REGIS7I'E.REI) FOR A TERAI OF 10 YEARS FR{Z}}.\;'I Septernber I :9, 2002
`
`SAID RECORBS SIIOW TITLE TO BE IN: R€§fSlr£IPZf
`
` By Authority efthe
`-
`:COMMISS{(};’\E}:ZLR OF PATIENTS AND ’I‘RA!}E,\iIARES
`
`sflmwm
`
`T. L-AWTRENCE
`
`
`Certifying Offcer
`
`
`

`
`Int. C1442
`
`Prior US. ($15.: 100 and 101
`
`United States Patent and Trademark Office
`
`Reg. No. 2,616,831
`Sep. 10, 2002
`
`SERVICE I‘:/‘IARK
`PRINCIPAL REGISTER
`
`DON’?
`
`WITH TEXAS
`
`TEXAS DEPARTMENT OF TRANSPORTATION
`{TEXAS STATE AGENCY}
`E25
`HT}-I STREET
`AUSTH-7‘ TX 78':‘(3¥2-433
`
`FOR: PRQMOTING THE BEAUTIFTCZATION OF
`TEXAS HIGHWAYS AND THE PUBLIC AWARE-
`NESS QF THE NEED FOR UTFER PREVENTION
`AND LETTER CLEANUP THROUGH THE DEVEL»
`OPMENT AND DISSEMINATION OF EDUCATION-
`AL MATERlALS AND PUBLIC SERVICE
`
`ANNOUNCEMENTS, AND THE IJEVBLCWMENT,
`PLANNING AND §MPI..EME!*-TATION OF ANTI»
`LITTER PROGRAMS. EN CLASS 42 (US. CLS. 100
`AND {OE}.
`
`FIRST USE 1148-1935; IN COMMERCE }i«30—l98S.
`
`SER. N0. 76-!48,.‘.1-M, FILED i{H5~.>".“000.
`
`JOANNA MATFJA, E.Y£AMINl?~«"G ATFDRNEY
`
`

`
`
`'vLi§) A@.:_._mE~'!‘a€.i!;3‘.«‘}1*5~!.;1i!!;!i
`
`5J!..MiI5;...;.a 'E€3;*3'.,_.__...M
`
`U1T‘€I’I‘I?;D STATES I}EPARTMEN’I‘ OF COMMER(i.’.E
`
`United States Patent and Trademark Clffice
`
`
`
`
`
`April 20, 2005
`
`
`
`
`
`THE ATTACHE1} LES. TI{ADF.:\"IARK REGISTRATION 2,61 9,88 IS
`CERTII-"IE.D TO
`A TRUE COPY OF THE REGIS".[‘RATl'ON ISSUED BY
`THE UNITED STATES PATENT AND TRADEMARK OFFICE ‘WHICH
`REGISTRATION IS IN FULL FORCE AND EFFECT.
`
`
`
`
`REGISTERED FOR A TERVI OF 10 YEARS FROM September I 3?, 2302
`SAID RECORDS SHOW TI'I’I_.-E TO BE IN: Regismmt
`
`By Authority 0f the
`
`COMMISSIONER OF PATENTS AND TRAI)EMARK-S
`
`,4’.
`
`<1‘
`~‘
`‘
`A W
`
`5”‘ -Ifitfififfi ’
`-.33;
`
`‘
`
`Certifying Officer
`
`six
`
`‘i:§£{“‘€5“~"*
`
`

`
`Int. £719.: 9, 14 and 20
`
`Prior US. ($33.: 2, 13, 21, 22, 23, 25, 26, 27, 28, 32, 36,
`38 and 50
`
`Reg. No. 2,619,837
`United States Patent and Trademark Office
`Regstemd Sep. 17, 200;
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`DON’?
`
`WITH TEXAS T
`
`TEXAS DEPARTMENT OF TRANSPORTATION
`{TEXAS STATE AGENCY}
`325 E. H’!-H STREET
`AUSTIN’ TX 787912483
`
`FIRST USE 4.14995; IN COMMERCE 444995.
`
`‘
`‘
`FCR1 PLASTIC KEY CTUUNS. IN CLfis.SS 20 (L35.
`CLS. 2, 13, 23‘ 25, 32 AND’
`
`FDR: DECQRATIVE M AGNETS, IN CLASS 9 (US.
`CLS. 23, 313. '15. 35 AND 33)»
`
`HRS!‘ USE 3-‘$2000; IN COMMERCE 3-9-2000.
`FUR: JEWELRY, NAMELY LAPEL PINS,
`CLASS 14 (US. CLS. 2, 27, 28 AND 3&3}.
`
`IN
`
`F§RST USE 4-5-199?; IN COMMERCE 4—§—3‘J97.
`
`SER‘ NO. 76~M8lS49, FILED w_i€__2m0‘
`
`JOANNA MATEJA. EXAMINING Ai IGIKNEH’
`
`

`
`
`
`
`
`
`UNITED STATES DEPARTMENI‘ OF COEVIEVIERCELE
`
`United States Patent and Trademark Uffice
`
`Aprii 20, 2005
`
`THE ATTACTHED L‘-LS. TRAD}%I.{\-’IARK REGISTRATION 2,62 7,196 IS
`C_ERTIFIED TO BE A 'I‘R.UE— COPY OF‘ THE REGISTRATION ISSUED BY
`
`’I‘HF. UNITED STATES PA'TENT AND TRADEMARK OFFICE \¥HiEIH
`
`REGXSTRATION IS IN FI..«’LL FORCE AND EFFIECT.
`
`RE-GISTERED FOR A TERAI OF 10 YEARS FROM {}ct0Mber~ (F1, 2002
`SAID RICCURDS SHOW TITLE: TO BE : Regisrrazzt
`
`By Authority of the
`
`M
`
`—
`
`T COPr'i1\-'I1ISSIONER OF PATENTS A;\'D TiRADE;“¥-IARKS
`
`- “ ©\£gt.~l/\fl/vL<.Q
`
`T. LAWRENCE
`
`
`Certifying Officer
`
`
`{L{§3é~l11§&3.1§§F‘§§§.I;Q3i[€TH5E‘5,!§i REL?
`
`—,—,—.—.—,a \A r§
`
`~-» '\
`
`._.....f;
`
`
`
`
`
`‘ V‘.‘ 2‘
`
`

`
`
`
`1111:‘ CL: 16
`
`%R
`
`Prior US. C!s.: 2, 5, 22, 23, 29, 37, 38 and Si}
`
`eg. N0. 2,627,196
`United States Patent and Trademark Office Remm on 1, 2902
`
`
`
`PRINCIPAL REGISTER
`
`DON’T NIESS WTTH
`
`rams DEPARTMENT or TRANSPORTATION
`{TEXAS AGENCY OF THE STATE)
`335 3 11TH STREET
`AUSTf.N. TX ':am2433
`
`PAMPHLETS AND BROCHURES IN ma FIELDS
`01: LFITER PREVENHLDN AND LI'F'I'ER CLEANUP.
`IN CLASS m (us. cm '2, 5, 22, 23, 29, 3?, 33 AND say.
`
`Fox; pamrfig Mgrnm _4N:; FAPER pm)-
`DUCIS, NAMEH’
`DECALS, BUMPER
`STECKERS, PAPER F0-OD CONTAINERS, PAPER
`BAGS. Pmsm: TRASH BAGS, pansy. AND pus.
`TIC L—H.‘I'£<ZR BAGS, (}R.(‘)CER‘r’ BAGS, PLAYING
`CARDS; PROMOTIONAL MATERIALS, NAMELY,
`
`FIRST USE 3-31-198é~,!N C‘.{‘JMMERCE 3-3I~l§86.
`
`«
`1
`551*‘ NO‘ "5"93”59’ “LED mam‘
`
`JOANNA MATEJA. £:‘XM~«iINI2‘>£Gz5.'FI1Z)R.?~IE‘r’
`
`iK §§\
`
`. E§>
`
`.~
`\..~:
`
`.-.-
`$k
`<1§.
`
`§6S3€ §‘»\
`
`

`
` ,‘.,,...‘!-‘:Q-V$‘.",.'..“]‘§‘.‘.l....;.V;..».I§a..».';..~.:‘
`
`= 31*" =
`
`‘
`
`"UNI'.[‘EI) STATES DEPARTMENT OF COMMERCE
`
`United States Patent and Trademark Office
`
`April 20, 2005
`
`
`
`
`THE ATTA(.‘.HE~D U.S. TRADEIVIARK REvGISTR.:~X.T[()N 2,.6I6,831" IS
`
`CERTIFIEIJ TO BE A TRUE COPY OF THE REGISTRATION ISSUED BY
`
`THE UNI'I’l:T.}) STATES PATENT D 'I‘RADEMTARK OFFICE ‘WHICH
`
`REGISTRATI().N IS IN FULL FORCE AND EFFECT.
`
`REGIS7I'E.REI) FOR A TERAI OF 10 YEARS FR{Z}}.\;'I Septernber I :9, 2002
`
`SAID RECORBS SIIOW TITLE TO BE IN: R€§fSlr£IPZf
`
` By Authority efthe
`-
`:COMMISS{(};’\E}:ZLR OF PATIENTS AND ’I‘RA!}E,\iIARES
`
`sflmwm
`
`T. L-AWTRENCE
`
`
`Certifying Offcer
`
`
`

`
`Int. C1442
`
`Prior US. ($15.: 100 and 101
`
`United States Patent and Trademark Office
`
`Reg. No. 2,616,831
`Sep. 10, 2002
`
`SERVICE I‘:/‘IARK
`PRINCIPAL REGISTER
`
`DON’?
`
`WITH TEXAS
`
`TEXAS DEPARTMENT OF TRANSPORTATION
`{TEXAS STATE AGENCY}
`E25
`HT}-I STREET
`AUSTH-7‘ TX 78':‘(3¥2-433
`
`FOR: PRQMOTING THE BEAUTIFTCZATION OF
`TEXAS HIGHWAYS AND THE PUBLIC AWARE-
`NESS QF THE NEED FOR UTFER PREVENTION
`AND LETTER CLEANUP THROUGH THE DEVEL»
`OPMENT AND DISSEMINATION OF EDUCATION-
`AL MATERlALS AND PUBLIC SERVICE
`
`ANNOUNCEMENTS, AND THE IJEVBLCWMENT,
`PLANNING AND §MPI..EME!*-TATION OF ANTI»
`LITTER PROGRAMS. EN CLASS 42 (US. CLS. 100
`AND {OE}.
`
`FIRST USE 1148-1935; IN COMMERCE }i«30—l98S.
`
`SER. N0. 76-!48,.‘.1-M, FILED i{H5~.>".“000.
`
`JOANNA MATFJA, E.Y£AMINl?~«"G ATFDRNEY
`
`

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`
`'vLi§) A@.:_._mE~'!‘a€.i!;3‘.«‘}1*5~!.;1i!!;!i
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`5J!..MiI5;...;.a 'E€3;*3'.,_.__...M
`
`U1T‘€I’I‘I?;D STATES I}EPARTMEN’I‘ OF COMMER(i.’.E
`
`United States Patent and Trademark Clffice
`
`
`
`
`
`April 20, 2005
`
`
`
`
`
`THE ATTACHE1} LES. TI{ADF.:\"IARK REGISTRATION 2,61 9,88 IS
`CERTII-"IE.D TO
`A TRUE COPY OF THE REGIS".[‘RATl'ON ISSUED BY
`THE UNITED STATES PATENT AND TRADEMARK OFFICE ‘WHICH
`REGISTRATION IS IN FULL FORCE AND EFFECT.
`
`
`
`
`REGISTERED FOR A TERVI OF 10 YEARS FROM September I 3?, 2302
`SAID RECORDS SHOW TI'I’I_.-E TO BE IN: Regismmt
`
`By Authority 0f the
`
`COMMISSIONER OF PATENTS AND TRAI)EMARK-S
`
`,4’.
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`<1‘
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`Certifying Officer
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`six
`
`‘i:§£{“‘€5“~"*
`
`

`
`Int. £719.: 9, 14 and 20
`
`Prior US. ($33.: 2, 13, 21, 22, 23, 25, 26, 27, 28, 32, 36,
`38 and 50
`
`Reg. No. 2,619,837
`United States Patent and Trademark Office
`Regstemd Sep. 17, 200;
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`DON’?
`
`WITH TEXAS T
`
`TEXAS DEPARTMENT OF TRANSPORTATION
`{TEXAS STATE AGENCY}
`325 E. H’!-H STREET
`AUSTIN’ TX 787912483
`
`FIRST USE 4.14995; IN COMMERCE 444995.
`
`‘
`‘
`FCR1 PLASTIC KEY CTUUNS. IN CLfis.SS 20 (L35.
`CLS. 2, 13, 23‘ 25, 32 AND’
`
`FDR: DECQRATIVE M AGNETS, IN CLASS 9 (US.
`CLS. 23, 313. '15. 35 AND 33)»
`
`HRS!‘ USE 3-‘$2000; IN COMMERCE 3-9-2000.
`FUR: JEWELRY, NAMELY LAPEL PINS,
`CLASS 14 (US. CLS. 2, 27, 28 AND 3&3}.
`
`IN
`
`F§RST USE 4-5-199?; IN COMMERCE 4—§—3‘J97.
`
`SER‘ NO. 76~M8lS49, FILED w_i€__2m0‘
`
`JOANNA MATEJA. EXAMINING Ai IGIKNEH’
`
`

`
`EXHIBIT B
`
`

`
`IN THE UNITED STATES DISTRICT COUR
`FOR THE NORTHERN DISTRICT OF TEXA
`
`DALLAS DIVISION
`
`W Q
`
`\@\§¥I>‘\’
`R
`
`
`
`PATCH MAGIC GROUP I, L.P.,
`
`Plaintiff,
`
`v.
`
`PROMOTIONAL FASHIONS, INC.
`d/b/a RICHMAR FASHIONS,
`
`Defendant.
`
`C0>€0>C»0'J(03C0>c0J(0'J60'JCO’><0>(0'J
`
`CIVIL ACTION NO.
`
`3-02-CV-O268H IOI I7
`
`JURY TRIAL DEMANDED
`
`FIRST AMENDED COMPLAINT
`
`Plaintiff Patch Magic Group I, L.P. (“Patch Magic"), complaining of Defendant
`
`Promotional Fashions, Inc. d/b/a Richmar Fashions, avers as follows:
`
`Parties
`
`1.
`
`Plaintiff Patch Magic is a Texas limited partnership with its principal place of
`
`business at 4260 Justin Road, Highland Village, Texas 75077.
`
`2.
`
`Defendant Promotional Fashions, Inc. does business in the State of Texas,
`
`including doing business in Dallas County, Texas underthe name “Richmar Fashions.” Lee
`
`Craig, Esq., has agreed to accept service of this pleading on behalf of Defendant
`
`Jurisdiction and Venue
`
`3.
`
`This is a copyright Infringement action in which the Court has subject matter
`
`jurisdiction pursuant to the provisions of 17 U.S.C. § 501 and 28 U.S.C.§§1331,1338(a).
`
`4.
`
`This Court has personal jurisdiction over Defendant pursuant to the Texas
`
`-1-
`
`I7)
`
`

`
`Long-Arm Statute, Tex. Civ. Prac. & Rem. Code §§ 17.041, et seq. Defendant, at all times
`
`material to this action, has done business in Texas,
`
`including, without limitation,
`
`(i)
`
`operating a wholesale showroom at the Dallas Apparel Mart in Dallas, Texas, (ii) marketing
`
`and selling goods (including the items at issue in this lawsuit) in Texas, and (iii) committing
`
`a tort (i.e., the conduct at issue in this lawsuit) in whole or in part in Texas. Upon
`
`information and belief, Defendant has also entered into one or more contracts by mail or
`
`othen/vise with Texas residents and either party was to perform the contract in whole or in
`
`part in Texas. Defendant does not maintain a place of regular business in Texas or a
`
`designated agent in Texas for service of process. This lawsuit arises out of Defendant’s
`
`business in Texas. Accordingly, Defendant may be cited by serving the Secretary of State
`
`of Texas provided that the citation and Complaint are fon/varded to Defendant’s principal
`
`place of business at 3599 Andrew L. Tucker Road, Fort Mill, South Carolina 29715 via
`
`certified mail, return receipt requested.
`
`5.
`
`Venue is proper in this district under 28 U.S.C.§1400(a), because Defendant
`
`"may be found” in this district.
`
`

`
`
`
`Count One: Co ri ht lnfrin ement
`
`6.
`
`Patch Magic is the sole owner of all rights in and to and the sole author of a
`
`certain artistic clothing pattern known as the "Horse Design.” The Horse Design is wholly
`
`original to Patch Magic. A photograph of the Horse Design is attached hereto as Exhibit
`
`“A" and incorporated herein by reference.
`
`7.
`
`On January 15, 2002, Patch Magic secured the exclusive rights and privileges
`
`in and to the copyright in the Horse Design and duly registered a claim thereto in the United
`
`States Copyright Office, evidenced by the Certificate ofRegistration issued by the Register
`
`of Copyrights dated and identified as follows: “January 15, 2002, VA 1-112—697." A true
`
`and correct copy of such Certificate of Registration is attached hereto as Exhibit “B” and
`
`incorporated herein by reference.
`
`8.
`
`Without authorization from Patch Magic, Defendant
`
`reproduced and
`
`distributed copies of Patch Magic’s Horse Design on jackets. A photograph of Defendant’s
`
`infringing reproduction of the Horse Design as it appears on Defendant’s jackets under
`
`Defendant’s “Don’t Mess With Texas” label is shown attached hereto as Exhibit “C” and
`
`incorporated herein by reference.
`
`9.
`
`Defendant has infringed and will continue to infringe Patch Magic’s copyright
`
`in the Horse Design by reproducing and distributing copies of Patch Magic’s Horse Design
`
`without authorization.
`
`10.
`
`Patch Magic is entitled to an injunction restraining Defendant and its agents,
`
`contractors, distributors, representatives, servants, employees, and attorneys, and those
`
`persons in active concert or participation with them, from engaging in any further such acts
`
`in violation of the copyright laws.
`
`

`
`11.
`
`Patch Magic is further entitled to recover from Defendant the damages,
`
`including attorney's fees, it has sustained and will continue to sustain, and any gains,
`
`profits, and advantages obtained by Defendant as a result of Defendant’s acts of
`
`infringement alleged above. At present, the amount of such damages, gains, profits and
`
`advantages cannot be fully ascertained by Patch Magic.
`
`Jug Demand
`
`12.
`
`Patch Magic demands a jury trial for all issues triable byjury.
`
`Prayer for Relief
`
`WHEREFORE, Plaintiff Patch Magic prays for judgment against Defendant
`
`Promotional Fashions, Inc. d/b/a Richmar Fashions, as follows:
`
`a.
`
`That the Court find Defendant has infringed Patch Magic’s copyright in the
`
`Horse Design;
`
`b.
`
`That the Court find a substantial likelihood that Defendant will continue to
`
`infringe Patch Magic’s copyright in the Horse Design unless enjoined from doing so;
`
`c.
`
`That Defendant and its agents, contractors, distributors, representatives,
`
`servants, employees, and attorneys, and those persons in active concert or participation
`
`with them, be enjoined from directly or indirectly infringing Patch Magic’s copyright in the
`
`Horse Design and continuing to market, sell, offer, dispose of, license, lease, transfer,
`
`display, advertise, reproduce, develop or manufacture any work derived or copied from the
`
`Horse Design, or from participating or assisting in any such activity;
`
`d.
`
`That Defendant and its agents, contractors, distributors, representatives,
`
`servants, employees, and attorneys, and those persons in active concert or participation
`
`with them, be mandatorily enjoined to deliver to Patch Magic any and all originals, copies,
`
`-4-
`
`

`
`facsimiles or duplicates ofthe Horse Design, and derivative works incorporating the Horse
`
`Design, in their possession, custody or control;
`
`e.
`
`That Defendant and its agents, contractors, distributors, representatives,
`
`servants, employees, and attorneys, and those persons in active concert or participation
`
`with them, be mandatorily enjoined to recall from all distributors, wholesalers, drivers,
`
`dealers and retailers, and all others known to Defendant, any originals, copies, facsimiles
`
`or duplicates of any work and derivative work shown by the evidence to infringe Patch
`
`Magic’s copyright in the Horse Design;
`
`f.
`
`That Defendant be mandatorily enjoined to deliver up to be impounded during
`
`the pendency of this action, all originals, copies, facsimiles or duplicates of any work and
`
`derivative work shown by the evidence to infringe the copyright in the Horse Design, and
`
`to deliver up for destruction all infringing copies and all plates, molds, and other matter for
`
`making such infringing copies;
`
`g.
`
`That Defendant be required to file with the Court and to serve on Patch
`
`Magic, within thirty (30) days after service of the Court’s order as prayed, and report in
`
`writing under oath setting forth in detail, the manner and form in which Defendant has
`
`complied with the Court’s order and judgment;
`
`h.
`
`That judgment be entered for Patch Magic and against Defendant for Patch
`
`Magic’s actual damages (including attorneys’ fees) according to the proof, and for any
`
`profits attributed to the infringement of Patch Magic’s copyrights, in accordance with the
`
`proof;
`
`i.
`
`That Defendant be required to account for all gains, profits and advantages
`
`derived from their acts of infringement;
`
`

`
`j.
`
`That all gains, profits and advantages derived by Defendant from its acts of
`
`infringement and other violations of law be deemed to be held in constructive trust for the
`
`benefit of Patch Magic;
`
`k.
`
`That Patch Magic have judgment against Defendant for Patch Magic’s
`
`costs;
`
`I.
`
`That all issues so triable be tried byjury; and
`
`m.
`
`That the Court grant such other, further and different relief as the Court
`
`deems proper under the circumstances.
`
`Respectfully submitted,
`
`GLAST, PHILLIPS & MURRAY, P.C.
`
`/
`
`0. Luke Davis, III
`Texas State Bar No. 05532700
`John A. Thomas
`
`Texas State Bar No. 19855500
`
`13355 Noel Road, Suite 2200
`Dallas, Texas 75240
`Telephone:
`(972) 419-8300
`Fax:
`(972) 419-8329
`
`C:\Program Fi|es\Corel\WordPerfect Office 2000\Backup\wp(wp) bk2
`
`

`
`EXHIBIT C
`
`

`
`@518 44 (Rev. 3/99)
`
`. CIVIL COVER SHEET .
`The JS-44 civil cover sheet and the information contained herein neither replace nor supglement the filing and service ofpleadings or other papers as re uired
`by law, except asProvided by local rules of co_u_rt._ This form, a proved by the Judicial onference ofthe United States in September 1974, is required or the
`use of the Clerk 0 Court for the purpose of initiating the civil ocket sheet.
`(SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`1. (a) ‘PLAINTIEFS
`DEFENDANTS
`RICHARD D. VANDERPOOL
`RICHARD TUCKER, AND CARRIE TUCKER D/B/A RICHMAR
`
`(b) County of Residence of First Listed Plaintiff
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`(c) Attomey’s (Firm Name, Address, and Telephone Number)
`Michael A. O’Nei1, P.C.
`5949 Sherry Lane, Suite 820
`Dallas, Texas 75225
`214-739-0088
`
`H.
`
`(Place an “X” in One Box Only)
`
`Cl 1 U.S. Government
`Plaintiff
`
`x
`
`3 Federal Question
`(U.S. Government Not a Party)
`
`Cl 2 US. Government
`Defendant
`
`El 4 Diversity
`(Indicate Citizenship of Parties
`in Item III)
`
`County ofR;3ieI$.‘go‘f/:Pirs:eList<:(i:D¥nda§4) 6 ifi H L
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE
`LAND INVOLVED.
`
`NOTE:
`
`Attorneys (If Known)
`
`Eesewao
`
`APFH3
`
`OF
`(For Diversity Cases Only)
`PTF
`CI 1
`
`Citizen of This State
`
`DEF
`El 1
`
`' ARTI§S@lace an “X” in One ox fo Plamtifi‘
`"' *‘-'~"». l_i‘3 - N fen )
`_
`_
`4
`M
`_
`» A i ’
`*
`,‘};\l‘F
`IncorporatEd‘i37P‘rTnc’i‘p‘aPPIacé-42134
`of Business In This State
`
`DEF
`El 4
`
`‘
`
`Citizen of Another State El 2
`
`Cl 2
`
`Incorporated and Principal Place E] 5
`of Business In Another State
`
`Cl 5
`
`
`
`Place an “X” in One Box Onl
`
`Citizen or Subject of a
`Forei 1 Coun
`
`
`
`Cl 3
`
`Cl 3
`
`Foreign Nation
`
`El 6
`
`Cl 6
`
`
`
`E1422 Appeal 28 USC 158
`
`
`
`610 Agriculture
`El
`
`620 Other Food & Drug
`El
`
`:1
`625 Drug Related Seizure C1423 Withdrawal
`of Property 21 USC
`28 USC 157
`
`U 630 Liquor Laws
`
`Cl
`640 RR. & Truck
`PROPERTY RIGHTS
`:1
`650 Airline Regs.
`R820 Co
`. ms
`D 830 Pa3:13
`Cl
`660 Occupational
`
`D840 Trademark
`Safety/Healtli
`
`[1
`690 Other
`
`
`
`
`
`PERSONAL INJURY
`Cl 362 Personal Injury—~
`Med Malpractice
`El 365 Personal Injury —
`Product Liability
`:1 368 Asbestos Personal
`Injury Product
`Liability
`PERSONAL PROPERTY
`Cl 370 Other Fraud
`El 371 Truth in Lending
`:1 380 Other Personal
`Property Damage
`:1 385 Property Damage
`Product Liability
`PRISONER PETITIONS
`
`
`
`
`
`IV. NATURE OF SUIT
`
`
`
`
`
`
`OTHER STATUTES
`CONTRACT
`
`
`
`
`El 400 State Reapportionment
`PERSONAL INJURY
`CI 110 Insurance
`
`Cl 410 Antitrust
`El 310 Airplane
`Cl 120 Marine
`Cl 430 Banks and Banking
`Cl 315 Airplane Product
`Cl 130 Miller Act
`C 450 Comrnerce/ICC Rates/etc.
`Liability
`U 140 Negotiable Instrument
`1: 460 Deportation
`D 150 Recovery of Overpayment Cl 320 Assault, Libel &
`E 470 Racketeer Influenced and
`& Enforcement ofJudgment
`Slander
`Corrupt Organizations
`Cl 151 Medicare Act
`1:! 330 Federal Employers’
`El 810 Selective Service
`Cl 152 Recovery of Defaulted
`Liability
`El 850 Securities/Commodities/
`Student Loans
`I] 340 Marine
`Exchange
`(Excl. Veterans)
`345 Marine Product
`Cl
`El 875 Customer Challenge
`D 153 Recovery of Overpayment
`Liability
`12 USC 3410
`of Veteian’s Benefits
`Cl 350 Motor Vehicle
`El 891 Agricultural Acts
`El 160 Stockholders’ Suits
`El 355 Motor Vehicle
`El 892 Economic Stabilization Act
`Cl 190 Other Contract
`Product Liability
`B
`Er1i:'lig,m:1<=i:)i‘t:salnl\(:II:1t[:‘e‘rtS
`Cl 195 ContractProductLiability
`1] 360 Other Personal Injury
`
`
`
`.3 395 pmdom of
`REAL PROPERTY
`CIVIL RIGHTS
`
`mfonmfion Act
`D 900 A ea] “Fee
`:1 S10 Motions to Vacate
`Cl 4