Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA99923
`ESTTA Tracking number:
`09/19/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91171049
`Plaintiff
`JohnSpiegelberg
`JohnSpiegelberg
`2416 Broadway Street
`Lubbock, TX 79401
`UNITED STATES
`Erik J. Osterrieder
`Schubert Osterrieder & Nickelson PLLC
`6013 Cannon Mtn. Dr., S14
`Austin, TX 78749
`UNITED STATES
`ejo@sonlaw.com
`Motion to Suspend for Civil Action
`Erik J. Osterrieder
`ejo@sonlaw.com
`/Erik J. Osterrieder/
`09/19/2006
`Reply to Response to Motion to Suspend.pdf ( 4 pages )(18846 bytes )
`Appendix.pdf ( 1 page )(11375 bytes )
`Exhibit 1.pdf ( 2 pages )(22831 bytes )
`Exhibit 2.pdf ( 13 pages )(466727 bytes )
`Exhibit 3.pdf ( 7 pages )(50584 bytes )
`Exhibit 4.pdf ( 2 pages )(181744 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`JOHN SPIEGELBERG,
`d/b/a CHROME
`
`Opposer,
`
`V.
`
`CHROME CLOTHING COMPANY,
`
`Applicant
`
`COJCOJCOJCOJCOJCUJCUJCOJCOJCUJ
`
`OPPOSITION No. 91171049
`
`Serial No. 78/687,171
`
`Design Mark: CHROME CLOTHING
`COMPANY
`
`Pub. For Opp. Date: 5/2/06
`
`OPPOSER’S REPLY TO APPLICANT’S RESPONSE TO OPPOSER’S MOTION TO
`
`SUSPEND PROCEEDINGS
`
`Opposer John Spiegelberg, d/b/a Chrome, files this Reply to counter Applicant’s unsupported
`
`arguments that allege forum—shopping. Filing an opposition to arrest improper registration is
`
`properly done with the Trademark Trial and Appeal Board. A trademark infringement action is
`
`properly brought in a federal court and not before the Trademark Trial and Appeal Board. This
`
`is exactly what Opposer has done, and, therefore, is not based on forum shopping as Applicant
`
`incorrectly and without support claims in its Response. To avoid the possibility of inconsistent
`
`judicial outcomes and to preserve taxing the judicial resources of both the TTAB and a federal
`
`court, Opposer has properly filed a motion to suspend proceedings.
`
`Notably,
`
`in its Response, Applicant concedes the TTAB has discretion to suspend, but
`
`Applicant neither provides any legal authority nor controverts Opposer’s legal authority provided
`
`in the Motion as to why the TTAB should not suspend the instant proceedings.
`
`In fact, the
`
`Motion’s legal authority clearly shows that
`
`the TTAB should exercise its discretion in
`
`suspending the instant proceedings because the proceedings in the co—pending, federal action will
`
`conclusively determine the Chrome’s and CCC’s respective rights in the mark under application,
`
`Page 1 of 4
`
`

`
`and, therefore, will be dispositive of all issues raised in this proceeding. See Tokaido V. Honda
`
`
`Assoc.
`Inc., 179 U.S.P.Q. at 862 (“[W]hile a decision of the District Court would be binding
`
`upon the Patent Office, a decision by the Trademark Trial and Appeal Board would only be
`
`advisory in respect to the disposition of the case pending in the District court.”); See also Sam S.
`
`Goldstein Indus., Inc. V. Botany Indus., Inc., 301 F. Supp. 728, 731, 163 U.S.P.Q. 442, 443
`
`(S.D.N.Y. 1969) (noting that PTO “findings would not be res jadicata in this [civil action]” and
`
`denying motion to stay district court proceedings). See Opposer’s Brief in Support of its Motion
`
`to Suspend, pp. 2, 3.
`
`Finally, as to outstanding discovery, Applicant calls upon equity to forestall suspension.
`
`First, discovery continues until July 16, 2007 in the co—pending, federal action, and, thus, there is
`
`plenty of time for discovery. See Exhibit 1. Second, the equitable bromide of he who seeks
`
`equity must do equity is applicable here. That is, Applicant cannot rely on equity because it has
`
`unclean hands. Opposer filed and served the co—pending, federal action on June 7, 2006. See
`
`Exhibit 2. Opposer rightly requested Applicant in the federal action to execute and return a
`
`request for waiver of service of summons on or before July 7, 2006 in order to avoid the expense
`
`of personal service. Fed. R. Civ. P. 4.
`
`If executed by July 7, 2006, then the response was not
`
`due until August 7, 2006.
`
`Instead, Applicant in the federal action failed and refused to ever
`
`execute the request for waiver of service of summons. See Exhibit 3. As a result, Opposer had
`
`to have a summons issued and served on Applicant in the federal action on August 28, 2006. See
`
`Exhibit 4. On September 15, 2006, Applicant finally made a filing in the federal action — 3
`
`months after the answer was due — and Opposer now must file a motion to recoup unnecessary
`
`expenses for service because Applicant has neither offered to pay for this unnecessary service
`
`nor provided any reason for its refusal to timely file anything except that its four attorneys were
`
`Page 2 of 4
`
`

`
`seeking other counsel in Tulsa, which has at least 16 firms that practice intellectual property law
`
`according
`
`to Martindale—Hubbell
`
`listings.
`
`See htt :/./"wwwmartindale.con1/Intellectual-
`
`.Er_9r:;c:_r__t:<£;Ql§._E;:;1t1g2r23s:iZiZs=fl_;iaZ_iéi;;{§;LL§@itIirm§_J2im3.
`
`(Visited Septembér
`
`19, 2006).
`
`In sum,
`
`Applicant’s reliance on equity to forestall suspension is unavailable because its conduct has been
`
`far from equitable and Vitiates its reliance on equity to have the TTAB exercise its discretion in
`
`its favor and counter to well—established law on suspension.
`
`Opposer again respectfully requests the Board to grant its Motion to Suspend.
`
`Dated: September 19, 2006
`
`Respectfully submitted,
`
`By:
`
`/Erik J. Osterrieder/
`Erik J. Osterrieder
`
`Schubert Osterrieder & Nickelson PLLC
`
`6013 Cannon Mtn. Dr., Sl4
`
`Austin, Texas 78749
`
`(713) 533-0494
`
`(5 12) 301-7301 (fax)
`ejo @ sonlawzcom
`ATTORNEY FOR OPPOSER
`
`Page 3 of 4
`
`

`
`CERTIFICATE OF TRANSMISSION
`
`This is to certify that a true and correct copy of OPPOSER’S MOTION TO SUSPEND
`PROCEEDINGS PURSUANT TO 37 C.F.R.
`2.117 a is being transmitted, via ESTTA, to the
`Trademark Trial and Appeal Board, on the date of signing below.
`
`Dated: September 19, 2006
`
`By:
`
`/Erik J. Osterrieder/
`Erik J. Osterrieder
`
`Schubert Osterrieder & Nickelson PLLC
`
`6013 Cannon Mtn. Dr., S14
`
`Austin, Texas 78749
`
`(713) 533-0494
`
`(512) 301-7301 (fax)
`ejo @ sonlawzcom
`ATTORNEY FOR OPPOSER
`
`CERTIFICATE OF SERVICE
`
`This is to certify that a true and correct copy of OPPOSER’S REPLY TO APPLICANT’S
`RESPONSE TO OPPOSER’S MOTION TO SUSPEND PROCEEDINGS was provided via
`courtesy email and served on the date of signing below, on Applicant Chrome Clothing Company,
`through their attorneys of record, via First Class Mail, with sufficient postage, in an envelope
`addressed to:
`
`Head, Johnson & Kachigian
`Mark Kachigian, Jason Jenkins, and Shawn Dellegar
`228 West 17d‘ Place
`
`Tulsa, Oklahoma 74119
`
`Dated: September 19, 2006
`
`By:
`
`/Erik J. Osterrieder/
`Erik J. Osterrieder
`
`Schubert Osterrieder & Nickelson PLLC
`
`6013 Cannon Mtn. Dr., S14
`
`Austin, Texas 78749
`
`(713) 533-0494
`
`(512) 301-7301 (fax)
`
`§4L22_§?_§_gU_.Ea§y_.s;s2m
`ATTORNEY FOR OPPOSER
`
`Page 4 of 4
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`JOHN SPIEGELBERG,
`d/b/a CHROME
`
`Opposer,
`
`V.
`
`CHROME CLOTHING COMPANY,
`
`Applicant
`
`COJCOJCOJCOJCOJCUJCUJCOJCOJCUJ
`
`OPPOSITION No. 91171049
`
`Serial No. 78/687,171
`
`Design Mark: CHROME CLOTHING
`COMPANY
`
`Pub. For Opp. Date: 5/2/06
`
`OPPOSER’S REPLY TO APPLICANT’S RESPONSE TO OPPOSER’S MOTION TO
`
`APPENDIX OF EXHIBITS FOR
`
`SUSPEND PROCEEDINGS
`
`Enclosed with the filing of this Reply are true and correct copies of the following:
`
`Exhibit 1:
`
`Scheduling Order in co—pending, federal action showing discovery deadline is
`July 16, 2007;
`
`Exhibit 2:
`
`Filed—stamped June 7, 2006 copy of co—pending, federal action;
`
`Exhibit 3:
`
`Email correspondence between Opposer’s counsel and four attorneys (i.e.,
`McCollam, Patton, Schwerdtfeger, and Catalano) associated with Applicant in
`regards to executing request for waiver of service of summons, avoiding
`unnecessary expense for personal service, and motion to suspend; and
`
`Exhibit 4:
`
`Return of personal service of process by server on Applicant for the co—pending,
`federal action.
`
`

`
`Case 5:Q€3~cvwC)O11?
`
`Document 9
`
`Fiied Q9./’15.f20C)6
`
`Page? of 2
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF TEXAS
`
`LUBBOCK DIVISION
`
`JOHN SPIEGELBERG, d/b/a CHROME,
`
`Plaintiff,
`
`V.
`
`CHROME CLOTHING COMPANY, LLC,
`
`Defendant.
`
`\_/\_/\_/\_/\_/\_/\_/\_/\_/
`
`Civil Action No. 5:06—CV—l l7—C
`
`ECF
`
`ORDER
`
`1.
`
`Pursuant to Rule l6(b), Fed. R. Civ. P., the Court establishes the following
`
`schedule for this case:
`
`(a)
`
`All motions to join other parties and amend the pleadings must be filed by
`
`3:00 p.m. on December 15, 2006.
`
`(b)
`
`Unless otherwise identified pursuant to written discovery, experts must be
`
`disclosed pursuant to Fed. R. Civ. P. 26(a)(2) by 3:00 p.m. on March 15, 2007.
`
`(c)
`
`All other pretrial motions, including motions for summary judgment, must
`
`be filed, and all discovery must be completed, by 3:00 p.m. on July 16, 2007.
`
`Deadlines will “not be extended except upon good cause shown and by order of
`
`the Court.” See Saavedra v. Murphy Oil U.S.A., Inc. v. L0u—C0n, Inc., 930 F.2d ll04, ll07 (5th
`
`Cir. 1991).
`
`2.
`
`Unless further ordered by the Court, the parties are not required to make initial
`
`disclosures under Rule 26(a)(l), Fed. R. Civ. P., and no conferences are required under Rule
`
`26(f), Fed. R. Civ. P.
`
`

`
`Case 5:Q€3~evwC)O11?
`
`Document 9
`
`Fiied Q9./’15.f20C)6
`
`Page 2 of 2
`
`3.
`
`Counsel and unrepresented parties are expected to cooperate with each other in
`
`conducting discovery, clarifying the issues, and getting the case ready for trial. Specifically,
`
`counsel must strictly comply with the mandates set forth in Dondi Properties Corp. v. Commerce
`
`Savs. and Loan Ass’n, l2l F.R.D. 284 (N.D. Tex. 1988) (en banc) (per curiam).
`
`4.
`
`Counsel are referred to the Standing Order Designating Case for Enrollment in
`
`the Electronic Case Files “ECF” System. Filing documents electronically is not mandatory,
`
`however. In all cases where electronic case filing is permitted, counsel may serve and respond to
`
`written discovery requests through electronic mail service. This discovery practice will be
`
`governed by Northern District of Texas Local Rules and this Court’s Local Rules regarding
`
`electronic case filing procedures.
`
`5.
`
`Counsel and unrepresented parties are referred to the Local Rules of the Northern
`
`District of Texas, the Civil Justice Cost and Delay Reduction Plan of the Northern District of
`
`Texas, and the Local Rules of this Court.
`
`6.
`
`All parties will be notified by separate order of the date of trial and the date for
`
`filing the proposed pretrial order.
`
`SO ORDERED.
`
`Dated September 15, 2006.
`
`\ ‘
`g
`
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`
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`
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`
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`

`
`Case 5:{)6—ov~Q0"H7’
`
`Doeume:-anti
`
`Filed O6.r’O?/2005
`
`Paget of ‘E3
`
`
`
`LUBBOCK DIVISION
`
`Cl‘-‘ERR. U.s. msarmcr COURT
` &—¢
`§ ~
`§
`
`aml E 4?}
`
`JOHN SPIEGELBERG,
`d/b/a CHROME
`Pl ' rrr,
`
`A
`
`A
`
`E,
`
`v.
`
`CHROME CLOTHING COMPANY, LLC
`Defendant.
`
`§
`§
`§
`§
`
`CIVIL ACTION No.
`
`JURY DEMANDED
`
`ORIGINAL COMPLAINT
`
`Plaintiff John Spiegelberg d/b/a Chrome (“Chrome”), collectively Plaintiff Chrome, by and
`
`through its attomey(s),
`
`files this Original Complaint against Defendant Chrome Clothing
`
`Company, LLC (“CCC”), and allege as follows:
`
`1.
`
`Parties
`
`1. Plaintiff Chrome is a sole proprietorship of John Spiegelberg (“Spiegelberg”), who is a U.S.
`
`citizen and resident of Lubbock, Texas. Plaintiff Chrome’s place of business is in Lubbock,
`
`Texas, is located at 2601 19th Street, Lubbock, TX 79410, and its business mailing address is 2416
`
`Broadway, Lubbock, Texas 79401.
`
`

`
`Case 5:O6—ov~{3{3‘i 1?’ Document 1
`
`Filed O6.r’O?/2005
`
`Page 2 of ‘E3
`
`2. Based on information and belief, and according to searchable online Oklahoma corporate
`
`records, Defendant CCC is an Oklahoma limited liability corporation, and its principal business,
`
`correspondence, and acceptable service of process address is Chrome Clothing Company, 1732
`
`South Boston Avenue, Tulsa, Oklahoma 74119.
`
`3. Based on information and belief, and according to searchable online USPTO records,
`
`Defendant CCC is incorrectly listed an Oklahoma partnership comprised of the following US
`
`citizens: Kevin Otis, Kristin Jacobs, and Brian Kidd. That
`
`is, Defendant CCC is not an
`
`Oklahoma partnership, but instead an Oklahoma limited liability company.
`
`II.
`
`Jurisdiction and Venue
`
`4. This action arises under, and subject matter jurisdiction is pursuant
`
`to,
`
`the Lanham
`
`(“Trademark”) Act, 15 U.S.C. §§ 1114 et seq., and also through 28 U.S.C. §§ 1331, 1332, and
`
`1367.
`
`5. Venue is proper under 28 U.S.C. §§ 1391 (b), (c) because Defendant CCC, a corporation,
`
`resides in this judicial district because it
`
`is subject to personal jurisdiction of this judicial
`
`district’s courts and/or is found in this judicial district.
`
`Page 2 of 12
`
`

`
`Case 5:O6—ev~{3{3‘i 1?’ Document 1
`
`Filed O6.fO?/2505
`
`Page 3 of ‘:3
`
`III.
`
`Facts and Allegations Common to All Counts
`
`6. On or about February 28, 2006, Plaintiffs counsel, Mr. Erik Osterrieder, wrote a certified
`
`mailed letter to Defendant CCC, wherein the letter contained the following quoted language:
`
`(1) We represent Chrome, a clothing retail business operated by our client, Mr. Stephen
`
`Spiegelberg. Our client has asked us to contact you regarding your and/or your agents’
`
`(collectively, “you” or “your”) actual use of Chrome and/or Chrome Clothing, which you, like
`
`our client, associate with clothing; (2) Before your usage of Chrome and Chrome Clothing, our
`
`client was already using, and still does use, CHROME as a tradename and mark associated with
`
`clothing and clothing retail business. Our client’s use of CHROME has been throughout the
`
`nation from its headquarters located in Lubbock, Texas. As a result, we view your junior use of
`
`our client’s name and mark alone,
`
`i.e., CHROME, as well as in the dominant, non-generic
`
`portion of “CHROME CLOTHING” as ones that would damage the goodwill our client has
`
`accumulated in CHROME.
`
`In fact, our client has experienced actual confusion already through
`
`at least one of your customers seeking to return your clothing goods to my client. As you may
`
`know, trademark law only requires a likelihood of confusion — not actual confusion — to found
`
`trademark infringement. As a result, we kindly ask that you choose another name and mark for
`
`your clothing and clothing business that does not interfere with our client’s senior rights in
`
`CHROME; and (3) We are simply writing you now to seek your cooperation with this matter
`
`and to prevent an avoidable conflict between you and our client so as to ensure continued,
`
`amicable relations. This is simply a business interest matter — not meant personally by any
`
`means.
`
`Page 3 of 12
`
`

`
`Case 5:O6—cv~{30‘i 1?’ Document 1
`
`Filed O6.r’0?’/2005
`
`Page 4 of ‘E3
`
`7. On or about March 12, 2006, Mr. M. E. McCollam, an attorney holding himself out as
`
`representing Defendant CCC, wrote a letter to Plaintifi"s counsel, Mr. Osterrieder, in response to
`
`the letter referenced in paragraph 6. Although Mr. McCollam’s letter was dated “May 12,
`
`2004,” the actual date of Mr. McCollam’s letter was on or about March 12, 2006. Mr.
`
`McCollam’s letter stated: Please be advised that I represent Chrome Clothing Company, Tulsa,
`
`Oklahoma. Please direct any and all future correspondence to the undersigned. We are in
`
`receipt of your letter dated February 28, 2006 and will investigate this matter. Once we have
`
`completed our investigation, we will be back in touch.
`
`. On or about March 18, 2006, Plaintiff’ s counsel, Mr. Osterrieder, wrote Mr. McCallom, who
`
`represented Defendant CCC, a letter, wherein this letter contained the following quoted
`
`language:
`
`(1) Thank you for writing me in response to our February 28, 2006 letter‘. Since
`
`your response informs us that you are investigating the facts of our previous letter to you, I will
`
`provide you with more information regarding the matter. Furthermore, my client has requested
`
`that I contact you again and explain in further detail why it objects to your and/or your agents’
`
`(collectively, “you” or “your”) actual, continued use of Chrome, which you, like our client,
`
`associate with trending clothing; (2) My client has been continually using CHROME as a mark
`
`throughout the United States for roughly 4.5 years. As a result, my client has common law
`
`trademark rights in CHROME by this stated usage, and those rights are superior to your rights in
`
`CHROME; that is, my client’s continual actual use of CHROME precedes your first usage
`
`dates; (3) The test for service mark infringement is “likelihood of confusion.” When testing for
`
`likelihood of confusion, multiple factors, when of record, must be considered, but no single
`
`factor is dispositive.
`
`
`In re Dixie Restaurants Inc., 105 F.3d 1405, 1406 (Fed. Cir. 1997); (4)
`
`1 Mr. M letter to me is dated “,” but I am surmising that you meant “.”
`
`Page 4 of 12
`
`

`
`Case 5:O6—cv~{3{3‘i 1?’ Document 1
`
`Filed O6.fO?/2505
`
`Page 5 of ‘:3
`
`Under the first two Qlfimt factors, which are often the most crucial
`
`in a service mark
`
`infringement analysis, both overwhelmingly favor my client.
`
`Specifically,
`
`the marks are
`
`identical
`
`in appearance, sound, and spelling, and the marks are associated with identical
`
`services, i.e., retail trending clothing retail services.
`
`(CLOTHING in your mark will provide
`
`you little, if any, trademark distinguisability [sic] — as a result, the dominant portions of each of
`
`the marks at issue are identical.) Furthermore, analysis of the remaining relevant factors also
`
`favors my client, and any that are questionable also favor my client because “courts begin with
`
`the proposition that a defendant, being a newcomer, has an infinity of marks to choose from.”
`
`
`Perfumania Inc. v. Perfulandia Inc., 279 F. Supp. 2d 86, 101 (D.P.R. 2003) ; 3 Jerome Gilson,
`
`Anne Gilson Lalonde & Karin Green, Trademark Protection and Practice § 5.07[2][c], at 5-
`
`121(2001); Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, (lst Cir. 1987); (5)
`
`As a result and as we previously wrote, we view your junior and identical use of our client’s
`
`name and mark as ones that do and would continue to damage the goodwill our client has
`
`accumulated in CHROME. Rather than litigating this matter, we again kindly ask that you
`
`choose another name and mark for your clothing and clothing business that does not interfere
`
`with my client’s senior rights in CHROME; and (6) We are simply writing you again to seek
`
`your cooperation with this matter and to prevent an avoidable conflict between you and our
`
`client so as to ensure continued, amicable relations.
`
`In addition, we thought the foregoing
`
`analysis of trademark law would help show you that my client is on solid legal ground.
`
`. On or about April 20, 2006, Plaintiffs counsel, Mr. Osterrieder, telephoned Mr. McCallom,
`
`who represents Defendant CCC as informed by his letter referenced in paragraph 7, to
`
`discuss the instant trademark dispute. During that telephone conversation, Mr. McCallom
`
`Page 5 of l2
`
`

`
`Case 5:O6—ov~{3{3‘i 17 Document 1
`
`Filed O6/€37’/2005
`
`Pages of ‘E3
`
`informed Mr. Osterrieder of the following:
`
`(1) he believed his client was not interested in
`
`changing its name or its mark(s); and (2) his client has a pending trademark application for a
`
`CHROME CLOTHING COMPANY design mark, which is under opposition as of at least the
`
`filing date of this complaint.
`
`10.
`
`On information and belief, Defendant CCC uses CHROME CLOTHING COMPANY as a
`
`word mark associated with clothing goods and/or clothing retail services.
`
`11.
`
`On information and belief, Defendant CCC uses CHROME CLOTHING COMPANY as part
`
`of a design mark associated with clothing goods and/or clothing retail services.
`
`12.
`
`On information and belief, Defendant CCC first began actual use of the alleged mark in
`
`paragraphs 10 less than 4.5 years ago.
`
`13.
`
`On information and belief, Defendant CCC first began actual use of the alleged mark in
`
`paragraphs 11 less than 4.5 years ago.
`
`14.
`
`On information and belief, Defendant CCC, in this judicial district, has sold clothing goods
`
`associated with the alleged mark in paragraphs 10.
`
`15.
`
`On information and belief, Defendant CCC, in this judicial district, has sold clothing goods
`
`associated with the alleged mark in paragraphs 11.
`
`Page 6 of 12
`
`

`
`Case 5:O6—ov~{3{3‘i 1?’ Document 1
`
`Filed O6.r’O?/2005
`
`Page 7 of ‘E3
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`22.
`
`Defendant CCC sells and ships ordered clothing goods from its website, www.chromecc.com.
`
`Based on information and belief, Defendant CCC has sold and shipped clothing goods into
`
`this
`
`judicial
`
`district
`
`based
`
`on
`
`clothing
`
`goods
`
`ordered
`
`through
`
`its website,
`
`www.chromecc.com.
`
`At least some of the clothing goods referenced in paragraphs 16 and 17 are associated with at
`
`least one of the alleged marks referenced in paragraph 10.
`
`At least some of the clothing goods referenced in paragraphs 16 and 17 are associated with at
`
`least one of the alleged marks referenced in paragraph 1 1.
`
`Defendant CCC is aware of at least one instance of actual confusion between clothing goods
`
`associated with Plaintiff Chrome’s mark, CHROME, and either of Defendant CCC’s alleged
`
`marks referenced in paragraph 10 and/or 1 1.
`
`Defendant CCC plans to continue use of at least one of the alleged marks referenced in
`
`paragraph 10 and/or 11.
`
`The word CLOTHING found in either of the alleged marks referenced in paragraph 10
`
`and/or 11, the CLOTHING portion describes a feature, function, use, purpose, ingredient, or
`
`characteristic of the goods and/or services associated with the alleged marks referenced in
`
`paragraph 10 and/or 11.
`
`Page 7 of 12
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`

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`Case 5:O6—ov~{3{3‘i 1?’
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`Documesnt 1
`
`Filed O6.fO?/2505
`
`Page 8 of ‘E3
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`23. The word COMPANY found in either of the alleged marks referenced in paragraph 10 and/or
`
`11, the COMPANY portion is a generic word under trademark law.
`
`24. Plaintiff Chrome has priority of use and superior trademark rights in the mark CHROME.
`
`25. Defendant CCC’s unauthorized use of Plaintiff Chrome’s mark, CHROME, in the alleged marks
`
`referenced in paragraph 10 and/or 11, is damaging the rights of Plaintiff Chrome in its mark,
`
`CHROME, and is done deliberately in bad faith, and with full knowledge that Plaintiff Chrome
`
`is being damaged thereby.
`
`26. A newcomer, such as Defendant CCC, has a legal duty to select a mark that will not cause
`
`public confusion or conflict with another’s rights, such as Plaintiff Chrome’s rights in its mark,
`
`CHROME.
`
`Page 8 ofl2
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`

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`Case 5:O6—ov~{3{3‘i 1?’
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`Documesnt 1
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`Fiied O6.fO?/2505
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`Page 9 of ‘:3
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`IV.
`
`Claims for Relief
`
`Count I —Trademark Infrin ement/Unfair Com etition — 15 U.S.C. Section 1125 a
`
`
`
`
`
`27. Re-alleging and incorporating by this reference the preceding paragraphs, Defendant CCC’s use
`
`in commerce of CHROME CLOTHING COMPANY, on or in connection with any goods or
`
`services, and/or any container for goods, is likely to cause confiision, to cause mistake, or to deceive
`
`as to the affiliation, connection, or association of Defendant CCC with Plaintiff Chrome, or, as to
`
`the origin, sponsorship, or approval of Defendant CCC’s goods/services or commercial activities
`
`with Plaintiff Chrome, all of which occur in light of Plaintiff Chrome’s mark, CHROME.
`
`28. Defendant CCC’s use in commerce of CHROME CLOTHING COMPANY is with full
`
`knowledge of Plaintiff Chrome’s prior rights in and prior use of the mark CHROME.
`
`29. Defendant CCC’s actions entitle Plaintiff Chrome, under 15 U.S.C. Section 1116, to have the
`
`court preliminarily and permanently enjoin Defendant CCC from any and all further use of
`
`CHROME CLOTHING COMPANY.
`
`Such injunction should include a provision directing
`
`Defendant CCC to file with the court and serve on Plaintiff Chrome, within thirty days after the
`
`service on Defendant CCCof such injunction, a report in writing under oath setting forth in detail
`
`the manner and form in which Defendant CCC has complied with the injunction.
`
`Page 9 ofl2
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`

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`Case 5:Q€3~evwC)O11?
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`Document 1
`
`Filed Q6/’{)?.r’20C)6
`
`Page 10 of "33
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`30. Defendant CCC’s actions constitute a willful violation of the Lanham Act, entitling Plaintiff
`
`Chrome to relief for Defendant CCC’s profits, Plaintiff Chrome’s damages, including trebling the
`
`same, and Plaintiff Chrome’s costs under 15 U.S.C. Section 1ll7(a).
`
`31. Defendant CCC’s actions make this an exceptional case, entitling Plaintiff Chrome to an award
`
`of reasonable attorney fees under 15 U.S.C. Section 1117(a).
`
`32. Defendant CCC’s actions entitle Plaintiff Chrome, under 15 U.S.C. Section ll18, to have the
`
`court order that all labels, signs, prints, packages, wrappers, receptacles, advertisements, and all
`
`other tangible things,
`
`in the possession of Defendant CCC, bearing CHROME CLOTHING
`
`COMPANY to be delivered up and destroyed.
`
`Count II — Iniugy to Business Reputation or Trade Name or Mark
`
`Tex. Bus. & Comm. Code, Sec. 16.29
`
`33. Re-alleging and incorporating by this reference the preceding paragraphs, Defendant CCC’s
`
`actions entitle Plaintiff Chrome, under Tex. Bus. & Comm. Code, Sec. 16.29, to have the court
`
`preliminarily and permanently enjoin Defendant CCC from any and all further use of CHROME
`
`CLOTHING COMPANY.
`
`Page 10 of 12
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`

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`Case 5:C2€5~cv—GO1 1?
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`Documentl
`
`Filed Q6/’O?.r’2OC}6
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`Page:->11 of "33
`
`Prayer
`
`Plaintiff Chrome requests a judgment from the Court that includes:
`
`I.
`
`III.
`
`IV.
`
`Defendant CCC’s actions and use of CHROME CLOTHING COMPANY infringe
`
`Plaintiff Chrome’s mark, CHROME, as well as constitute unfair competition;
`
`An award of costs and damages, including enhanced (e. g., trebled) damages as a
`
`result of the willful nature of the infringement, to Plaintiff Chrome;
`
`A declaration of an exceptional case that requires Defendant CCC to pay Plaintiff
`
`Chrome’s reasonable attorney fees;
`
`A preliminary and permanent injunction ordering that any and all use by Defendant
`
`CCC of CHROME CLOTHING COMPANY cease, and restraining Defendant CCC
`
`from:
`
`(a) infringing Plaintiff Chrome’s mark, CHROME; (b)
`
`injuring Plaintiff
`
`Chrome’s business reputation; (c) unfairly competing with Plaintiff Chrome; and (d)
`
`engaging in unfair and deceptive trade practices;
`
`An order requiring delivery and destruction of all
`
`labels, signs, prints, packages,
`
`wrappers, receptacles, advertisements, and all other tangible things, in the possession
`
`of Defendant CCC, bearing CHROME CLOTHING COMPANY; and
`
`VI.
`
`Additional relief, at law or equity, available to Plaintiff Chrome that this Court deems
`
`just, reasonable and proper.
`
`
`Dated: June 7 2006
`
`Respectfully submitted,
`
`By:
`
`
`
`Page 11 of 12
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`

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`Case 5:C2€5~ev—C)O1 1?
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`Document 1
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`Fiiad Q6/'0?."200§
`
`Page 12of”i3
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`Erik J. Osterrieder, Attorney-in-Charge
`Tex. Bar No.: 24013276
`N. D. Tex.: admitted
`
`Schubert Osterrieder & Nickelson PLLC
`
`6013 Cannon Mtn. Dr., S14
`Austin, Texas 78749
`
`(713) 533-0494
`(512)301-7301 (fax)
`e o
`son1aw.com
`ATTORNEY FOR PLAINTIFF
`
`Of Counsel:
`
`James L. Gorsuch
`Tex. Bar No.2 08221250
`N. D. Tex.: admitted
`
`James L. Gorsuch, P.C.
`4412 74"‘ Street, Suite B-102
`Lubbock, Texas 79424
`
`(806) 771-6474
`(806) 771-6476 (fax)
`jgorsuch@nts-on1ine.net
`ATTORNEY FOR PLAINTIFF
`
`Page 12 of 12
`
`

`
`Cast-3 5:Q€3~cvwC1tO1t?
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`Documeiit 1
`
`Filed Q6/’{)?.r’20C1t6
`
`Page 13 of "33
`
`W544 <R"- W04)
`
`CIVIL COVER SHEET
`
`The IS 44 civil cover sheet and the information contained herein neither re lace nor supplement the filing and service ofpleadings or other papers as required by law, except as provided
`by local rules of court. This form, approved by the Judicial Conference 0 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.
`(SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`
`C9 I bi lq
`6.) E QKSQI
`1. (3)
`(1)) County ofResidence ofFirst Listed Plaintiff L\L
`
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`rt,
`
`g~
`
`C \(> i\’\‘\\vkSc\Co ,
`County ofResidence ofFirst Listed Defendant
`
`/VkL\ SC‘ 1
`
`NOTE:
`
`(IN US. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE
`LAND INVOLVED.
`
`(Firm Name, A dress, and Te phone Number)
`(C) Attorney’
`_
`I X lg
`$6 u.\OtQ
`C><. at‘\”o
`IV“
`I
`3”“
`(;0\’S Cotvtw/in Nvtiti
`‘lbw 3.“ Ixv.I‘t*
`
`Attorneys (IfKnown)
`
`1
`
`II.
`
`D l
`
`U 2
`
`OF
`
`US, Government
`Plaintiff
`
`U S. Government
`Dcfendam
`
`(Place an “X" in One Box Only)
`
`I".
`
`8/
`3 Federal Question
`(US Government Not a Party)
`
`OF
`(For Diversity Cases Only)
`PT
`Citizen of This State
`
`I
`
`DEF
`U I
`
`PARTIES(Place an "X" in One Box for PlaintiIT
`and One Box for Defendant)
`PTF
`DEF
`Incorporated or Principal Place
`0 4
`CI 4
`of Business In This State
`
`[3 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen ofAnother State
`
`Citizen or Subject ofa
`Forei n Count
`
`U 2 UK Incorporated and Principal Place
`°rBusincss in Anmhfl Sm:
`Foreign Nation
`
`CI
`
`3
`
`CI 3
`
`CI
`
`5
`
`Cl 5
`
`CI 6
`
`CI 6
`
`IV. NATURE OF SUIT Place an “X” in One Box Onl
`
`BANKRUPTCY
`
`0 422 Appeal 28 USC 158
`
`D 423 Withdrawal
`28 USC I57
`
`
`
`
`
`
`
`CI 6lO Agriculture
`D 620 Other Food & Drug
`D 625 Drug Related Seizure
`of Property 21 USC 88I
`D 630 Liquor Laws
`0 640 RR. 8!. Truck
`U 650 Airline Regs.
`0 660 Occupational
`Safety/Health
`CI 690 Other
`
`SOCIAL SECURITY
`
`0 710 Fair Labor Standards
`0 86] HIA ( 1395f!)
`
`
`
`0 862 Black Lung (923)
`Act
`0 720 Labor/Mgmt. Relations 0 863 DIWC/DIWW (405(g))
`
`
`0 730 Labor/Mgmt.Reponing
`CI 864 SSID Title XVI
`& Disclomre Act
`0 865 RSI (405(;
`0 740 Ratlway Labor Act
`U 790 Other Labor Litigation 0 870 Taxes (US. Plaintiff
`0 79I Empl. Ret. Inc.
`or Defendant)
`Security Act
`D 87I IRS-~Third Party
`26 USC 7609
`
`
`
`
`
`
`
`
`
`_
`_
`_
`Mtiltidistnct
`. tion
`
`D 7
`
`
`
`Remanded from
`A s llate Court
`
`D 4
`
`_
`Reinstated or
`Reoened
`
`D 5 Transferred from D 6
`another district
`eci
`
`VIII. RELATED CASE(S)
`IF ANY
`
`(See I|"ISII'\ICIlDI'IS)'
`
`JUDGE
`
`DOCKET NUMBER
`
`si
`
`
`
`
` ATURE orznoms9' RECORD
`QJV‘ ‘5 </'~
` O)
`MAG. JUDGE ..__L_.__:.....
`RECEIPT
`/glztiviouisir
`Z APPLYING IFP
`JUDGE
`
`~15.-‘-an
`
`PERSONAL INJURY
`D IIO Insurance
`D 3l0 Airplane
`D I20 Marine
`CI 3I5 Airplane Product
`CI I30 Miller Act
`Liability
`[3 I40 Negotiable Instrument
`CI 320 Assault, Libel &
`CI I50 Recovery of Overpayment
`Slander
`& Enforcement of Judgment
`0 330 Federal Employers‘
`CI l5I Medicare Act
`Liability
`CI I52 Recovery of Defaulted
`D 340 Marine
`Student Loans
`U 345 Marine Product
`(Excl. Veterans)
`Liability
`0 I53 Recovery ofOverpaymem
`CI 350 Motor Vehicle
`of Veteran’: Benefits
`CI 355 Motor Vehicle
`CI I60 Stockholders’ Suits
`Product Liability
`CI I90 Other Contract
`D I95 Contract Product Liability 0 360 Other Personal
`CI I96 Franchise
`In‘
`
`
`
`
`
`
`
`
`
`CI 2I0 Land Condemnation
`0 220 Foreclosure
`CI 230 Rent Lease & EJCCIIIICIII
`CI 240 Torts to Land
`D 245 Tort Product Liability
`D 290 All Other Real Property
`
`
`
`
`
`
`
`PROPERTY RIGHTS
`0 820 Copyrights
`
`g}30/Patent
`840 Trademark
`
`
`
`PERSONAL INJURY
`D 362 Personal Injury -
`Med. Malpractice
`D 365 Personal Injury -
`Product Liability
`D 368 Asbestos Personal
`Injury Product
`Liability
`PERSONAL PROPERTY
`CI 370 Other Fraud
`0 2m Tnith in Lending
`D 380 Other Personal
`Property Damage
`0 385 Property Damage
`Product Liability
`
`CI 400 State Reapportionment
`U 410 Antitrust
`0 430 Banks and Banking
`D 450 Commerce
`U 460 Deportation
`D 470 Racketeer Influenced and
`Corrupt Organizations
`Cl 480 Consumer Credit
`D 490 Cable/Sat TV
`D 810 Selective Service
`Cl 850 Securities/Comiiiodities/
`. Exchange
`D 875 Customer Challenge
`I2 USC 3410
`D 890 Other Statutory Actions
`D 89I Agricultural Acts
`I3 892 Economic Stabilization Act
`CI 893 Environmental Matters
`Cl 5 I0 Motions to Vacate
`CI 44I~ Voting
`CI 894 Energy Allocation Act
`Sentence
`CI 442 Employment
`D 895 Freedom of Information
`Habeas Corpus:
`CI 443 Housingl
`Act
`530 General
`Accommodations
`CI 900Appeal of Fee Determination
`CI 444 Welfare
`535 Death Penalty
`Under Equal Access
`CI 445 Amer. w/Disabilities -
`540 Mandamus & Other
`
`to Justice
`Employment
`550 Civil Rights
`0 446 Amer. w/Disabilities - D 555 Prison Condition
`0 950 Constitutionality of
`Other
`-
`State Statutes
`
`D 44l.TOther Civil Rights
`V. RIGIN
`(Place an “X" in One Box Only)
`Appeal I0 DISIIICI
`I
`.
`_
`D 2
`D 3
`Judge from
`Removed from
`Original
`Magistrate
`State Court
`Proceedin ;
`Jud merit
`
`VI CAUSE OF ACT]0N Cite She
`.S;LCi%ilCStati.i e‘i5i)de§wéiji\ch you are filin f‘?
`C
`
`
`'
`Brief description of eauseryrgx (;
`X
`’§ 3
`“CL,
`Q N\/\(& t‘ 1 L.l\
`t‘ v\/\ Q ti\:’\r\0—
`
`VII. REQUESTED IN
`[3 CHECK IF THIS is A cuss ACTION
`DEMAND 5
`CHECK YES only if demanded in complaint:
`
`COMPLAINT:
`UNDER F-RC-R 23
`JURY DEMAND:
`CI Yes
`D No
`
`

`
` Erik O ertie C373’? E
`
`“M:
`
`‘ix-=3a.E:-zaim M=-grit:-it-am’
`
`‘1'~‘y'—_sor‘:. B-.. 'S«.cm.~’.-'~er. -‘E-m‘s_iE=§1'
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