`ESTTA78530
`ESTTA Tracking number:
`04/28/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91168664
`Defendant
`THE FREECYCLE NETWORK
`THE FREECYCLE NETWORK
`901 NORTH PERRY AVENUE
`TUCSON, AZ 85705
`
`JAMES L. VANA
`PERKINS COIE LLP
`1201 3RD AVENUE
`SEATTLE, WA 98101-3099
`UNITED STATES
`pctrademarks@perkinscoie.com
`Motion to Suspend for Civil Action
`James L. Vana
`pctrademarks@perkinscoie.com
`/James L. Vana/
`04/28/2006
`SFX6F14.pdf ( 3 pages )(53729 bytes )
`CA US Fed Court summons.pdf ( 58 pages )(2453054 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`The Freecycle Network
`
`Applicant
`
`V
`
`Opposition No. 91168664
`
`Freecyclesunnyvale
`Opposer
`
`MOTION TO SUSPEND FOR CIV]L ACTION
`
`Pursuant to Trademark Trial and Appeal Board Manual of Procedure Rule 510.02(a)
`
`and 37 CFR 2.1 l7(a), Applicant hereby requests that Opposition Proceeding No. 91168664
`
`(the "Opposition") be suspended pending the outcome of civil action Case No.
`
`C 06-00324 CW, pending before the United States District Court, Northern District of
`
`California between the Opposer and Applicant as set forth below. Applicant believes that the
`
`issues set forth in the civil action will have direct bearing on the issues presented in the
`
`Opposition.
`
`Attached is a true and correct confirmed copy of the Civil Complaint filed by
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`Opposer on January 18, 2006, in the United States District Court, Northern District of
`
`Cali "rnia (the ''Complaint''). As the issues that are the subject of the civil action bear
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`directly on the issues and allegations in the Opposition, Applicant respectfiilly requests that
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`the Opposition be suspended immediately.
`
`[60383-7001/SL061180.091]
`
`4/28/06
`
`
`
`A copy of this Motion with all attachments is being served on Opposer's counsel of
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`record by first class mail on April 28, 2006.
`
`Respectfully submitted this 28“ day of April, 2006.
`
`
`
`Seattle, WA 98101-3099
`Telephone: (206) 359-8000
`Fax: (206)359-9000
`jVana@perkinscoie.com
`
`Attorneys for The Freecycle Network
`
`[60383-700]/SL061180.091]
`
`-2-
`
`4/28/06
`
`
`
`CERTIFICATE OF MAILING
`
`I hereby certify that on April 28, 2006, I filed via the Electronic System for
`
`Trademark Trials and Appeals this MOTION TO SUSPEND FOR CIVIL ACTION with the
`
`U.S. Patent and Trademark Office:
`
`with a copy via First Class Mail to:
`
`Ian N. Feinberg
`Mayer Brown Rowe & Maw LLP
`Two Palo Alto Square. Suite 3003000 El Camino Real
`Palo Alto, CA 94306
`ifeinberg@mayerbro wnrowe.co1n
`(Attorneys for Opposer)
`
`L nda L. Martin
`
`[60383-700l/SL061180.091]
`
`-3-
`
`4/28/06
`
`
`
`United States District Court
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`é"-'reecyc!eSLmnyvaie
`
`SUIVEMONS IN A CIVIL CASE
`
`CASE NUMBER:
`
`The Freecycte Network
`
`
`
` V gt“;
`J
`
`TO? (Name and address of defendant)
`
`The Free-cycie Network
`PO. Box 294
`Tucson AZ 85702-0294
`
`c/o Statutory Agent for Service of Process
`James A. Jutry
`2525 N, Broadway #200
`Tucson AZ 85716
`
`i
`V’
`It
`=
`‘t
`Emiiifjiiiifiifig
`
`YOU ARE HEREBY SUMMONED and required to serve upon PLAENTIFRS ATTORNEY (name and address)
`
`tan N" Feiraberg (SBN 88324)
`ifeinberg@rneyerbrownrowencorn
`MAYER, BROWN, ROWE & MAW LLP
`Two Peio Aito Square, Suite 300
`3600 E! Carnino Real
`Paio Aito. CA 94308~2T12
`Telephone: (650) 3312000
`
`days after service of this summons upon you,
`an answer to the complaint which is herewith served upon you, within 4”
`exclusive of the day ot service.
`If you fail to do so. judgement by default wéil be taken against you for the relief demaneed in
`the compiainti You must also file your answer with the Clerk of this Court wéthin a reasonabie period of time after service.
`
`Richard W. Wéeking
`CLERK
`
`
`(BY) DEPUW CLERK
`
`
`
`
`
`A0 440 (Rev 8/01) Summons in rs Civil Action
`
`RETURN OF SERVICE
`
`DATE
`
`Service of the Summons and Complaint was made by me 1
`Name of SERVER
`
`YITLE
`
`
`
`
`
`
`
`
`Check one box below to indicate appropriate method of service
`[3
`Served Personally upon the Defendant‘ Place where served:
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`
`
`
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`Left copies thereof at the defendants dwelling house or usual place of abode with a person of suitable age and
`discretion then residing therein
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`Name of person with whom the summons and complaint were left:
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`Returned unexecuted:
`
`
`
`SERVICES
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` DECLARATION OF SERVER
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`Other {specify}“ STATEMENT OF SERVICE FEES
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` E declare under penalty of perjury under the laws of the United States of America that the foregoing
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`
`
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`information contained in the Return of Service and Statement of Service Fees is true and correct
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` Executed on
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`Signature of Server
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`
`
`Address of Server
`
`
` (1) As to who may serve a semmoos see Rule 4 of the Federal Rules of Civil Procedure
`
`
`
`
`__;=; 44 -c.-we (Rev rrroar
`
`='
`
`CIVIL COVER SHEET
`The JS-44 civfi cover sheet and the information contained herein neII?rer replace nor suppiament the IEIIr: and servtca of pteadiags or other papers as required by
`law, except as provided by Iocat rules of court. This form. approved by the Judiciat Conference of the Unlted States in September 1974. is naqtrtred ior the use of
`the Clerk at Court for the purpose of initiating the civiI docket sheet
`(SEE INSTRUCTIONS ON PAGE TWO )
`l.(a) P LAINTIFFS
`DEFEN’-“ANTS
`
`Freecycieflsnnyvale
`
`The Freecycie Network
`
`(I3) CDUNW OF REEDENCE OF FIRST LISTED FLMNWFF _._..._j__....
`(EXCEP7 W U 5 Pl-NNTJFF CASES)
`2131 ' 3.111
`3
`
`
`
`Is) AT'¥ORI€EYS {FIRM NAm:.Anoru:ss. mm TELEPHONE Numaem
`
`coutrrv or: assrnsncs or rmsr usrsn DEFENDANT
`(w u s. PLAINTIFF CASES ONLY)
`IN LAND coraosurmrron cases. usa ma I.0CA"£'ION or ms
`TRACT OF LAND INVOLVED
`
`NOTE:
`
`""°R”E"5 I’? "”°“"”
`
`:12!
`
`_.
`
`MAYER. BROWN, ROWE & MAW LLP ((650) .331»20O0)
`I
`’
`4% E
`“two Pnio Alto Square, Suite 300, Pate Aim. CA 94306-2132
`
`33!" Mars 09 JURISDICTION (mcerwm omoxcmm III. CI‘{£‘§E-I{ISI§Q‘II§ 0‘? ii-'Rmcrr>AL PARTIEs,gLrcem~.mEuq;_§;a‘i;;gr§'i-an.;r
`(For diversity cases only)
`g ” 3% s. 0): ronursrkmrarbrg
`:1: us somnmen:
`pry
`-: E .
`3:--rr: 95;:
`Cilizoa arms sum
`Incorpomtod ars=rmEipa:r=|ace
`I234
`{:14
`Plainlifi
`[:31
`or Business In Thls Slnto
`[:32 U.5 G
`ammunt
`Dotondant
`Incarpumrau and Princlpat Place [:35 I.'..‘J5
`W
`°’ 9”“‘"°" '“ "‘"°""" 5”“
`Foreign Nation
`
`IIZI3 Fudnral Gvmlinn
`(U S Gnvnrnm on! No! is Party)
`I:l-I Diversity
`glndrcam curzunamp oIParl1ns£n
`Item Ill)
`
`Cllizan nmnamar State
`
`[:32
`
`1:11
`
`E212
`
`Citizen ursubjotzt of a
`Foroign country
`
`E21:
`
`£233
`
`£222.15
`
`[:35
`
`IV. ORIGIN
`
`rprxrcsmv-.x'r~ am: am: omv;
`
`[_‘_'] Appeal to District
`[:1 MuIIIdir3I:Ir:t
`E] Trnnsfarno from
`{:1 Fiainulatud or
`[,2] Rumnzrdud from
`[2] Removed {rum
`E] Drigtnal
`.Juugu from Magistrate
`Lttignlitm
`Anothuz distréct
`Reopened
`Appullnla Cour!
`State Court
`Proceeding
`Judgment
`{nper:Ify)
`
`
`
`
`
`
`PROPERTY RIGHTS
`.....-..........-~—....:—
`321} copy,-mhga
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`mass RSI grnsum
`FEDERAL TAX SUITS
`
`V‘. NATUR$ OF SUIT {PLACEAN "X"!N ONEBOX ONLY)
`CONTRACT
`OTHER STATUTES
`FORFEITUREIPE NALTY
`BANKRUPTCY
`
`
`
`
`
`m11urnsum:u:a
`PERSONAL INJURY
`PERSONAL ireasnv
`U610 Auriculturu
`422 Appuarza use 153
`E13400 Stats Reappnrtlonmmt
`E21129 Marina
`U 310 All-plane
`Z352 Personal Injury
`[1629 Othor Food & Drug
`423 Wlthdruwal 28 USC 15?
`|::|451fl Anflirust
`E313!) Millor Act
`315‘Ah-planu Product
`M63 M||?PI’=|7"¢'=
`E1615 Qrun Rnlalud Sclzurn of
`B43!) Banks: and Bonitlrm
`[Z3140 9ionalInb1e Znstrurmant
`Lluhlilly
`C3355 9"°W°F“" 1"l”")’
`Ff°P°?*)'21 555 531
`CZ]-I50 Cumrnarcaticc Raluslutc.
`E31159 Rucavnry or Ovorpzsymunt 320 Assault Llbnl 8-
`P'°¢"=|U*=b"|I3'
`E1630 I-hzuori-awn
`£2]-we Dnpomauun
`
`H. Entorcumunt of
`5'*'‘"‘‘W
`Z355 A-'i’0¢=1D5 PEI‘-“M31
`[3640 RR &‘t'ruck
`[3475 Rackflgu-|nflum}c3d and
`13% Fuduralf.-Ernpioyarrr.
`Jurfgmunl
`lnéwy F11‘-Iflulii LIa3a|I|Iy
`ijusu Aiding Reg;
`Convpt 0,-93,-,|muum
`E3151MN3!=Ne M!
`'-'““‘'“Y
`Dean occupatrnnar
`E3310 Sulactlva Suntan
`*’E“5°""'- PROPERTY
`E13152 ancmmry or Detaunnd
`340 Mam
`Saran-Inunrm
`ljjaso Sacurittanlcomrnndltloal
`[3310 Other Fraud
`Simian! Loam: (Exp!
`ZI-15 Marine Product
`I .s I o . .
`Exchanga
`
`
`Vnturansj
`Llahiilty
`{Z1311 Truth In Lrmdlng
`375 can mm, gnaw“ ,,
`JED Mnlorvnhlclu
`Z380 OthurPursunnI
`SOCIAL SEGURETY
`C3153 Rucovory oI' Ovurpaymunt
`[:3
`121:5; 3414)
`U
`
`
`
`
`
`355 Mntorvnhlcle
`Property Damage
`ufVnturan's Benefits
`E3fl51AW|mH,_,,=]Acu
`
`
`?rodu::tE.lnblII.Iy
`[3335 Proparty Damage
`E3160 stoukhoid-.-rs suns
`£3392 Ec,,,,,,,,,,,, 5,,h...,,,,;,,,,
`
`:50 Diner Pursunal Injury
`PrDdIJclL|nI31llIy
`B190 Othur Contract
`Act
`[:}195 Contract Product Llabllit-y
`mag: Env|mnmgm;| gunman
`E3196 F’"‘”“
`E359‘ E“'“W “"°°”“°" N“
`mm ""’°“°"‘ “' '"'°"““"""'
`REAL PROPERTY
`Act
`mafia APPWIM no
`ouaamlmmun um“
`aqua, km,“ to Juwcn
`E3950 Conutltufionalltyaf State
`5“"‘”"“
`E3390 Other St.1IuIoryActIun=
`
`muiawm Act
`[Em Railwaylabnrllcl
`gran Olhurtabnr Lttlgotton
`BT31 Empf.RaL Im:..Sur:uriIy
`
`DEED Motion to Vacate
`Ac‘
`[jfl'r't] Trams (U5 Plnlnlifl or
`
`
`
`Santuncu Holman Corpun:
`Dclurrdant
`_
`D535 5'3"”?!
`D87‘ ms 'Th1'd P"'f5'
`
`
`CZI5-so Mamamun 3. other
`4-an oumctvrr mgms
`E3555 lmm ?‘°""“"
`25 us: my
`
`-H5 Amerwl dlsnh -r Empl
`[3550 cm Rlghts
`446 Amer wl dIsab ~ Other
`1 4130 Conaurnor Credli
`£3555 Frlsan Condtllan
`l 496 Cablufsalaltlto TV
`
`VI. CAU SE OF ACTION {CITE THE US CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE BRIEF STATEMENT OF CAUSE. DO NOT
`CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
`
`
`
`
`
`
`Plaizatiff seeks cteoiaratoryjudgmem of nondnfringcmen: under I..an§ram Act (17 USC. § 1653 et seq.) of defendants alleged trademark
`rights in generic term "freecycle" and/or logo Iicensed to Plaintiff
`vn. REQU 53575:: IN COMPLAINT: E3 cascx rrr oars as A CLASS ACTION
`UNDER F R op. 23
`
`DEMAND $[.T,ZIJcHE:r< was only If Gamancted Ira complaint:
`JURY oEMANo:EZ! YES €133 NO
`
`.
`
`Vila. RE LATED CASE(S)
`PLEASE REFER To own. :_.r2..3m12 cozecsarqrwcs REQUIREMENT TO FILE
`IF ANY
`"NOTICE OF RELATED CASE".
`
`
`IX. DIVISIONAL ASSIGNMENT (CIVIL LNRH 3-2)
`(PLACE AND "X” IN ONE BOX ONLY)
`
`E] SAN FRANCISCOIOAKLAND
`
`CI SAN JOSE
`
`DATE
`
`SIGNATUR
`
`F
`
`1]15[2093 %:-
`
`Cyhtff OF RECORD
`
`
`13210 Land Condemnation
`E3220 Fnrrrclnsuru
`S330 REF“ E-"53 5- Elfifitmflfll
`{:‘2‘"' T'’'‘‘ ‘° "“"“
`E3245 Tort Product L1uIJ|I|ty
`[3290 AII Othur Raul Propuiw
`
`
`
`JS 44 P - 2
`(Rev raid?)
`
`il\!STR.UCTiONS FOR ATTORNEYS COM?LE.TING CIVIL COVER SHEET FORM .iS-44
`Authority For Civil Cover Sheet
`
`The lS—44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or
`other papers as required by law, except as provided by iocal rules of court This fbnn, approved by the indiciai Conference of the United States
`in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet Consequently a civil cover
`sheet is submitted to the Clerk of Court for each civil complaint filed The attorney fiiing a case should complete the form as follows:
`
`is a government
`(a) Piaintiffs - Defendants Enter names (last, first, rniddie initial) ofplaintift and defendant If the plaintiifor defendant
`E
`agency, use only the full name or standard abbreviations. If the plaintiff‘ or defendant is an official within a government agency, identify iirst the
`agency and then the official, giving both name and title
`
`iisted plaintiff
`(la) County of Residence. For each civil case filed, except U S. plaintiffcases, enter the name of the county where the first
`resides at the time oiiiling In U S plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of tiling
`(NOTE: in land condemnation cases, the county of residence of the "defendant" is the iocation of the tract of land invoived.)
`
`(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record If there are several attorneys, list them on an
`attachment, noting in this section "(see attachment)"
`
`Jurisdiction The basis of'_jurisdiction is set forth under Rule 8(a) F.R.C.P., which requires tliatjurisdictions be shown in pieadings Place
`II
`an "X" in one of the boxm ifthere is more than one basis ofjurisdiction, precedence is given in the order shown below
`
`United States piaintiff (1) Jurisdiction based on 28 U S C 1345 and 1348. Suits by agencies and officcrs of the United States are included here
`
`United States defendant
`
`(.2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box
`
`Federal question (3) This refers to suits under 28 U S C. E331, where jurisdiction arises under the Constitution ofthc United States, an
`amendment to the Constitution, an act of Congress or a treaty of the United States In cases where the U S is a party, the U S. plaintiff or
`defendant code takes prececience, and box l or?. should be niariced.
`
`Diversity of citizenship (4) This refers to suits under 28 U S. C 1332, where parties are citizens of difierent states When Box 4 is checked, the
`citizenship of‘ the different parties must be checked (See Section Iii below; federal question actions take precedence over diversity cases )
`
`iii Residence (citizenship) of Principal Parties This section of the .iS—44 is to be completed if diversity of citizenship was indicated above.
`Mark this section for each principal party
`
`IV. Origin. Piace an " "’ in one of the seven boxes
`
`Original Frocecdings (1) Cases which originate in the United States district courts
`
`(.1) Proceedings initiated in state courts may be removed to the district courts under Title 28 U S C, Section 2441.
`Removed from State Court
`When the petition for removal is granted, check this box.
`
`Remanded from Appellate Court (3) Check this box for cases remanded to the district court for further action Use the date of remand as the
`filing date
`
`Reinstated or Reopened (4) Check this box for cases reinstated or reopened in the district court Use the reopening date as the filing date
`
`Transi'crred from Another District (5) For cases transferred tinder Title 28 US C Section i4iD4${a). Do not use this for within district transfers or
`tnaltidistrict litigation transfers.
`
`Muitidistrict Litigation. (6) Check this box when a muitidistrict case is trarzsterred into the district under authority of Title 28 U S C Section
`1407 When this box is checked, do not check (5) above
`
`Appeal to District lodge from Magistrate ludgrnent
`
`(7) Check this box for an appeal from a1nagistr.1tejudgc's decision
`
`‘V’ Nature of Suit Place an "X" in the appropriate box. If the nature of suit cannot be determined, be sure the cause of‘ action, in Section EV
`above, is sufficient to enable the deputy clerk or the statisticai cierks in the Administrative Office to determine the nature ofsuit If the cause fits
`more than one nature oisuit, select the most definitive
`
`VI Cause of Action Report the civil statute directiy related to the cause of action and give a brici description of" the cause
`
`VII Requested in Complaint Class Action Place an "X" in this box if you are filing a class action =.1nder3“t.uie 23, F R Cvi’
`
`Demand In this space enter the doliat amount (in thousands of doiiars) being demanded or indicate other demand such as a preliminary
`injunction.
`
`Jury Demand Check the appropriate box to indicate whether or not a jury is being demanded
`
`VIII Rciated Cases This section of the 3S—44 is used to reference reiated pending cases if any. if there are related pending cases, insert the
`docket num bers and the coIr*esponding,,iudge names for such cases Date and Attorney Signature.
`
`Date and Attorney Signature. Date and sign the civil cover sheet.
`
`
`
`UNITED STATES DESTRICT COURT
`NORTHERN DISTRICT OF CALEFORNIA
`
`No. C 06-00324 CW
`
`
`
`FREECYCLE SUNNYVALE ,
`
`Plaintiff (5),
`
`V.
`
`THE FREECYCLE NETWORK,
`Defendant( s).
`
`
`
`*
`ORDER SETTING ENITIAL CASE
`
`MANAGEMENT CONFERENCE
`
`AND ADR ]}EA})LINE3
`
`IT IS HEREBY ORDERED that this action is assigned to the Honorable Claudia Wilicen,
`When serving the complaint or notice of rernoval, the plaintiff or removing defendant must serve on all
`other parties a copy of this order, the handbook entitled “Dispute Resolution Procedures in the
`Northern District of California" and all other documents specified in Civil Local Rule 4-2“ Counsel
`must comply with the case schedule listed below unless the Court otherwise orders.
`
`IT IS FURTHER ORDERED that this action is assigned to the Alternative Dispute Resolution
`(ADR) Multi-Option Program governed by ADR Local Rule 3. Counsel and clients shall familiarize
`themselves with that rule and with the handbook entitled “Dispute Resolution Procedures in the
`Northern District of California.”
`
`CASE SCHEDULE -ADR MULTLOPTION PROGRAM
`
`Date
`
`Event
`
`Governing Rule
`
`1/ 1 8/2006
`
`Complaint Filed
`
`3/31/2006
`
`Last day to:
`- meet and confer re: initial disclosures, early
`settlement, ADR process selection, and discovery plan
`
`FRCivP 26; f) &__A_QR
`L.R. 3-5
`
`-
`
`file Joint ADR Certification with Stipulation to ADR
`I’rocess or Notice of Need for ADR Phone
`Conference
`
`Civil L.R. I6-8
`
`4/14/2006
`
`Last day to complete initial disclosures or state objection
`in Rule 260‘) Report, file Case Management Statement
`and file/serve Rule 26(f) Report
`
`l
`FRCivP 26 a
`Civil L.R .
`l6—9
`
`4/21/2006
`
`CASE MANAGEMENT CONFERENCE (CMC) in
`
`Civil L.R. 16-10
`
`Courtroom 2, Oakland at 1:30 PM
`
`
`
`NOTICE
`
`Criminal Law and Motion calendar is conducted on Mondays at
`2:00 p.m. Civil Law and Motion calendar is conducted on Fridays
`at 19:06 a.m. Case Management Conferences and Pretrial
`Conferences are conducted on Fridays at 1:30 p.m. Order of call
`is determined by the Court. Counsel need not reserve a hearing
`date for civil motions; however, counsel are advised to check
`the legal newspapers or the Courts website at
`www.cand.uscourts gov for unavailable dates.
`Motions for Summary Judgment: All issues shall be contained
`within one motion and shall conform with Civil L.R. 7-2.
`Separate statements of undisputed facts in support of or in
`opposition to motions fior summary judgment will not be
`considered by the Court.
`{§ee Civil Local Rule 56—2{a)). All
`briefing on motions for summary judgment must be included in the
`memoranda of points and authorities in support of, opposition
`to, or reply to the motion, and must comply with the page iimits
`of Civil Local Rule 7—4,
`The memoranda should include a
`statement of facts supported by citations to the declarations
`filed with respect to the motion. Cross or counter—motions
`shall be contained within the opposition to any motion for
`summary judgment and shall conform with Civil L.R. 7~3.
`The
`Court may,
`sua sponte or pursuant to a motion under Civii L.R.
`6~3, reschedule the hearing so as to give a moving party time to
`file a surreply to the cross or counter—motion.
`All DISCOVERY MOTIONS are referred to a Magistrate Judge to
`be heard and considered at the convenience of his/her calendar.
`All such matters shall be noticed by the moving party for
`hearing on the assigned Magistrate Judge‘s regular law and
`motion calendar, or pursuant to that Judge's procedures,
`In all “E—Filing" cases when filing papers in connection
`with any motion for determination by the judge,
`the parties
`shall,
`in addition to filing papers electronically,
`lodge with
`chambers a printed copy of the papers by the close of the next
`court day following the day the papers are filed electronically.
`These printed copies shall be marked "Chambers Copy" and shall
`he submitted to the Clerks Office,
`in an envelope clearly
`marked with the judges name. case number and'ThFiling Chambers
`Copy." Parties shall not file a paper copy of any document with
`the Clerks Office that has already been filed electronically.
`
`(rev. 8/is/02)
`
`
`
`
`
`Ian N. Feinberg (SEN 88324)
`ifeinberg@mayezbrownrowe.com
`Eric B. Evans (SBN 232476)
`eevans@mayerbrownIowe.com
`MAYER, BROWN, ROWE 82; MAW LLP
`;*“S%%:‘:W:,Pn§SS:=
`Paio Alto, CA 9430542112
`Telephone:
`(550) 3314000
`Facsimile;
`(550) 331-2050
`
`Attorneys for Plaintiff
`FREECYCLESUNNYVALE
`
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`UNITED STATES DISTRICT COURT
`
`NORTISERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
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`FREECYCLESUNNYVALE,
`a California Imincorporated association,
`
`‘
`
`Plaintiff,
`
`v,
`
`TI-IE FREBCYCLE NETWORK,
`an Arizona corporation,
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`Defendant,
`
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`COMPLAINT FOR DECLARATORY
`JUDGMENT OF TRADEMARK NON~
`INFRINGEMENT AND TORTIOUS
`INTERFERENCE WITH BUSINESS
`RELATIONS
`
`CERTIFICATION OF INTERESTED
`PARTIES
`
`
`
`
`
`COMPLAINT AND JURY TRIAL DEMAND
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`PlaintiffFreecycleSunnyvale(“FreecycleSur1nyvale”), through its pro bono attorneys
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`Mayer, Brown, Rowe & Maw LLP, aileges upon knowledge as to itself and its own actions, and
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`on information and belief as to all other matters, against Defendant The Freecycle Network as
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`follows:
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`ran PARTIES
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`1.
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`Plaintiff FreecycleSunnyvale is an unincorporated non—profit association with its
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`principal place of business in Sunnyvale, California, which is located in the Northern District of
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`California. FreecycleSunnyvale promotes fieecycling by providing support and advice to
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`freecyclers.
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`2,
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`Defendant The Freecycle Network is an Arizona nonuprofit corporation with its
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`principai place of business in Tucson, Arizona. The Freecycle Network also promotes
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`fieecycling by providing support and advice to freecyclers who wish to create Internet fora for
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`freecycling. The Freecycle Network has provided support, advice and other services to
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`freecycling associations in California within the jurisdiction ofthis Court.
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`JURISDICTION AND VENUE
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`3.,
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`Jurisdiction is proper in this court because this litigation arises under federal law,
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`namely 17 U,S.C. § 1051 et seq. (Lanham Act). The Court has jurisdiction over this action under
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`28 l},.S,C, § 1333. (federal question), 28 U.S.C. § 1338(a) (trademarks), and 28 U.S.C.. § 2201
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`(Declaratory Judgment Act),
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`4.
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`This Court has supplemental jurisdiction over FreecycieSunnyvale’s state law
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`claims under 28 USC. § 1367(3) because these claims are so related to FreecycleSunnj,rvale’s
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`Lanhazni Act claims as to form part of a single case or controversy because they arise Erom the
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`same nucleus of operative facts and amount to a single judicial proceeding.
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`5.
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`This Court has personal jurisdiction over The Freecycle Network because The
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`Freecycle Network conducts business in California by, among other things: (a) providing support,
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`advice and other services to fieecycling associations in California within the ‘jurisdiction of this
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`Court and (b) operating online services hosted by Yahoo! Inc. (“Yahoo!”), an online service
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`provider with its headquarters in Califomia within the jurisdiction of this Court.
`-1-
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`COMPLAINT AND suav rarar. DEMAND
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`6.
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`7.
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`Venue is proper in this district under 28 USC, §§ 139l(b) and 1391(0).
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`An actual case or controversy has arisen between the parties. The Freecycle
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`Network has: (a) threatened litigation against Freecycleélunnyvale, (b) caused
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`FreecycleSunnyva1e’s oniine service provider, Yahool, to suspend FreecycleSunnyva1e’s Yahoo!
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`Group oniine service and (c) asserted ’£hatFreecycleSun11y'vale’s use of the generic term
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`“fieecycle” constitutes trademark infiingexznent. These statements have caused injury to
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`Freecyc1eSunnyva1e and threaten further injury in the future,
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`INTRA-DISTRICT ASSIGNIVENT
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`8.
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`Because it arises under the Lanhaln Act, this action is an intellectual Property
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`Action. Under Local Rule 3—2(c), it is therefore subject to assi-gnrnern on a districtvwide basis.
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`_l§_TATUR_E OF THE ACTION
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`9,
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`FreecycleSuz1nyvale promotes freecycling—recycling by giving something away
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`to another for free. Freecyc1eSunnyvaie, until recently, administered an Internet fonnn, hosted by
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`Yahcoi, its online service provider, where freecyclers could freecycle items.
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`10.
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`The Freecycle Network claims trademark rights in the generic terms “freecycle”
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`and “freecycling” and in a logo it licensed to FreecycleSunnyvale, The Freecycle Network sent a
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`connnmncation or communications to Yahoo! falsely asserting that FreecycleSunnyva1e’s use of
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`these terms and/or the logo constituted trademark infiingernent.
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`l 1,
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`The Freecycle Network’s false statements caused Yahoo! to terminate its contract
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`with Freecyclesunnyvale and stop providing online services.
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`12.
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`FreecycleSunnyvale now seeks a declaration that use of the genetic terms
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`“fieecycle” and “freecyc1i:og” and/or the licensed logo is not trademark infringement, and
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`compensation for damages it has suffered
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`GENERAL ALLEGATIDNS
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`Freecvcling
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`13.
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`Freecycling is the common or generic name for the practice of recycling by giving
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`something away to another, often a person who is poor or disadvantaged in some way, for free. A
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`person who freecycles is called a freecyclet. Freecyciing has two principal advantages for
`-2-
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`COMPLAIN T AND JURY '?fUAI, DEMAND
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`society:
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`(1) it reduces iandfill by preventing or delaying the disposal of items unwanted by their
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`current owners; and (22) it gives these same items to others for free, who do want them and may
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`be unable to afford to purchase them.
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`14,
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`Many freecyciers announce the availability of the items they wish to give away
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`online by, for example, sending an email message to an email distribution list. Many of the emaii
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`distribution lists fieecyclers use are hosted by Yahoo} as part of its Yahoo! Groups ouline service,
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`15.
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`Freecyclers who use the Yahoo! Groups online service to freecycle items enter
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`into a contract with Yahooi
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`In exchange for their cornpiiance with Yahoo! ’s conditions, the
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`Ereecyclers receive Yahool’s oniine services, These services allow freecyclers to reach many
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`other fteecyclers in their area by sending a single email message.
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`16.
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`The Freecycle Network was founded in May 2003, The Fareecycle Network helped
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`popularize ireecycling by assisting local freecyciing groups, including FreecycleSuuuyvale, in
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`using Yahoo l’s online services to freccycle items.
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`17,
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`FreecycleSunnyva1e was founded in October 2003.
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`It entered into a contractual
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`relationship with Yahoo! and used Yahoo!’s oniine services to assist fieecyclers in the Sunnyvale,
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`California area in fr'eecyc1ingiten1s..
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`18,
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`19.
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`Network.
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`FreecycleSurmyvale used a Yahoo! Group with the name “fieecyclesunnyvale,”
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`Freecyciesunnyvale initially received enthusiastic support from The Freecycle
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`20“ When a member of FreecycleSunnyvale requested assistance in creating a graphic
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`logo reading “}5reecycleSunnyvale,” the Board Chair and Executive Director of The Freecycle
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`Network, granted permission to do so, provided that the logo was not used for commercial
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`purposes. The text of the email granting permission reads: “Yeah, Sunnyvale!
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`You can get the
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`neutral logo from http://www,£reecycle.org ,just don't use it for commercial purposes or maybe
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`Mark or Albert can help you to do your own fancy schmancy logo!”
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`21.
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`Freecyciers and The Freecycle Network treated freecycling as the common or
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`generic name for giving something away to another for free. In August 2004, The Freecycle
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`Network’s home page included, among others, the references to freecycling:
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`(a) “Number of cities fieecycling: 1,210”
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`(b) “Number of people freecyclingt 406,949”
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`(c) “Have fun and keep on Freecyciiifl”
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`(cl) “How does Freecycling work?”
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`(e) “Who can Freecycle?”
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`The Freecycle Network submitted a copy of the home page ofits website, containing these uses
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`of freecycle and freecycling in a generic sense, as a specimen to its pending application for
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`registration of the marl»: FREECYCLB on the Principe} Register on or about August 27, 2004, A
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`copy of the application and specimen submitted is attached as Exhibit 1.
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`2?.
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`The Freecycle Netwcrl{’s use of the terms freecycle and freecycling in a generic
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`sense is consistent with prevailing practice in the national media. Examination of publicly-
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`accessible media sources reveals hundreds of newspaper and magazine articies that use treecycle
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`and freecycling to refer to the practice ofrecyciing by giving something away to another for free"
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`Examples include:
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`(a) “if a true pacltrat hordes [sic}, a ‘freecycler’ can't stand to see something that
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`might be useful to someone go to waste, languishing unused in a musty garage,
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`attic, bottom dresser-drawer or—worse yet—a lan.dfi1l..” Katharine Mieszkowski,
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`Fmm each according to his junk, to each according to her need, Saloncom, Nov,
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`23, 2003, athttp://wwwsalcn“com/tech/feature/2003/1l/25/freecycle/printhtml
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`(Attached as Exhibit 2);
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`(h) “Freecyclers use Yahoo Groups as a flee bulletin board, requiring registration
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`only. Givers post their excess items on Yahoo and takers send an email saying
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`they will come and pick it up,” Mike Cassidy, Freecjycling Movement Gains
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`G1"'0iH2d in Valley, San Jose Mercury News, Jan. 27, 2004, at C1 (Attached as
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`Exhibit 3);
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`(c) “Dusty but new exercise equipnient, a fivewperson hot tub, and enough white lkea
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`bookshelves to fL1IIfiSh a small college town have been posted online tlnough a
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`new group that practices freecycling, the giving away of useful but unwanted
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`COMPLAINT AND JURY tram. osmmo
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`
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`goods to keep them out of landfills and maybe help someone iess fortunate in the
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`process.” Tina Keliey, One Sock, With Holes? I'll Take 1:; Freecycling Brings
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`Casroff Goods Back From the Bin, The New York Times, March 16, 2004, at B1
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`(Attached as Exhibit 4);
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`(cl) “Known as ‘freeeycling,’ the approach creates Web—based connnunities in cities
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`across the country that allow members to post by e—maii a listing of items they are
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`looking to unload. The catch? Everything much be given away free,” Gambits
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`and Gamble; in the World of Technology, The Wall StreetJ0t1ma1, May 6, 2004
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`(Attached as Exhibit 5); and
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`(e) “And just how does one freecycle? ..
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`.
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`. If there‘s an object, or even a service, you
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`want to give or receive, you post an e-mail, leave a contact and, if someone bites,
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`arrange for a pickup. The rules are simple: no politics or spam, and everything
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`must he free.” Richard Jerome and Strawberry Saroyan, Free For All, People,
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`May 10, 2004, at 195 (Attached as Exhibit 6),
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`The Freecvcie Network Attempts to Seize the Generic Term Freecycle
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`23,
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`Despite the generic nature of the terms freecycle and fieccycling, The Free-cycle
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`Network filed an application for the registration of the mark FREECYCLE and a graphic logo
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`using that mark on the Principal Register of trademarks on or about August 27, 2004. The
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`application is still pending.
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`17.4.
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`In late 2004 or early 2005, The Freecyole Network. altered the text of its website to
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`remove some, but not ail, uses of freecycle and iireecycling in a generic sense, The Freecycle
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`Network’s website continues to inciude many huncireds of instances where freecycle and
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`freecycling are used in the generic sense to refer to the practice of recycling by giving something
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`away to another for free.
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`25,
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`In January or February 2005, The Freecycle Network began to assert the right to
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`exclusive use of the terms freeeycle and fie-ecycling.
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`COMPL.-MN l" AND EURY TREAL. DEMAND
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`26.
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`The Freecycle Network has created usage guidelines for users of its services‘
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`These guidelines direct users to avoid using the terms fieecycle and freecycling in a generic
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`361183,
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`27‘.
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`The ‘Ereecycle Network has not found an adequate substitute for the generic term
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`freecycling‘ “{A] gifting or exchange—oriented [web]site” or “gifting or exchanging unwanted
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`items with fellow users” have not achieved wide acceptance!
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`28.
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`The Freecycle Network has replaced the simple question “How does Freecycling
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`work?” on its home page with “How does it work?”
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`The Present Disgute
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`29!
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`On or about November 1, 2005, The Freecycle Network sent an email message to
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`FreecycleSunnyvale. The email message informed FreecycleSunnyvaie that it must “stop using
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`the tradernarlt-protected Freecycle name and logo, as well as any and all copyrighted texts,
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`graphics, rules, guidelines, title, or its URL (Yahoo group name).’’ A copy of this emaii message
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`is attached as Exhibit '7-
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`.30.
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`On or about November 5, 2005, FreeeycleSunnyvale sent an email message to
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`Yahoo