throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA106807
`ESTTA Tracking number:
`10/30/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`
`Address
`
`TEXAS TECH UNIVERSITY
`ACADEMIC TEACHING
`INSTITUTION
`2500 BROADWAY
`LUBBOCK, TX 79409
`UNITED STATES
`
`Citizenship
`
`TEXAS
`
`Attorney
`information
`
`ALICIA GRAHN JONES
`KILPATRICK STOCKTON LLP
`1100 PEACHTREE STREET SUITE 2800
`ATLANTA, GA 30309
`UNITED STATES
`aljones@kilpatrickstockton.com Phone:404-815-6500
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78620437
`10/30/2006
`
`Publication date
`Opposition
`Period Ends
`
`10/17/2006
`11/16/2006
`
`Spiegelberg, John
`2416 Broadway
`Lubbock, TX 79401
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and sevices in the class are opposed, namely: clothing and accessories, namely shirts,
`pants, jackets, shorts, sweat bands, sweat suits, socks, and hats
`
`Attachments
`
`10.30 NOO to Raiderland.PDF ( 4 pages )(242190 bytes )
`Exh A to NOO Opposer's Motion to Suspend.PDF ( 32 pages )(1865623 bytes )
`
`Signature
`Name
`Date
`
`/alicia grahn jones/
`ALICIA GRAHN JONES
`10/30/2006
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRLAL AND APPEAL BOARD
`
`In the matter of Application
`
`Serial No. 78/620,437
`Mark: RAIDERLAND
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`TEXAS TECH UNIVERSITY,
`
`Opposer,
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`V.
`
`JOHN SPIEGELBERG d/b/a RED
`RAIDER OUTFITTER,
`
`Applicant.
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`NOTICE OF OPPOSITION
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`Opposer Texas Tech University is a general academic teaching institution of the State of
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`Texas, having its principal location at 2500 Broadway, Lubbock, Texas 79409 (“Opposer”).
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`Opposer believes it will be damaged by the registration of the mark RAIDERLAND (Serial No.
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`78/620,437), and opposes the same pursuant to 15 U.S.C. § 1063, and 37 C.F.R. §§ 2.101 and
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`2.104(a). Application Serial No. 78/620,437 is currently at issue in a case between the parties
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`pending before the United States District Court for the Northern District of Texas and, therefore,
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`Opposer is filing a Motion to Suspend Proceedings concurrently with this Notice of Opposition}
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`The ground for the opposition are as follows.
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`1.
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`On information and belief, on April 30, 2005, Applicant John Spiegelberg d/b/a
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`Red Raider Outfitter (“Applicant”) filed an application to register the mark RAIDERLAND
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`(Serial No. 78/620,437) (“Applicant’s Mark”) for use in connection with “clothing and
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`accessories, namely shirts, pants, jackets, shorts, sweat bands, sweat suits, socks, and hats” in
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`' Opposer’s Motion to Suspend Proceedings is attached as Exhibit A.
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`_ 1 _
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`

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`International Class 25. Applicant’s trademark was first published for Opposition in the Official
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`Gazette dated October 17, 2006. Thus, Opposer has timely filed this Notice of Opposition.
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`2.
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`Texas Tech University (“TTU”) was founded in 1923, and its academic and
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`athletic programs are well known and respected across the United States. TTU’s athletic teams
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`and others affiliated with TTU are often referred to as RED RAIDERS and TTU’s mascot is
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`RAIDER RED.
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`3.
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`In 1936, TTU adopted the RED RAIDERS mark for use in connection with its
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`athletic programs. TTU has used the RED RAIDERS mark for more than sixty years in
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`connection with a wide range of goods and services, including T-shirts, hats, and the like?‘ Tech
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`has also long been known as “RAIDERS,” an abbreviation of RED RAIDERS. As a result,
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`Tech extensively has used and promoted the terms RED RAIDERS and RAIDERS as a
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`trademarks of the university.
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`4.
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`TTU has used the mark RAIDER RED for more than thirty years and the design
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`of RAIDER RED (the “Raider Red Design Mark”) since at least as early as 1971 in connection
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`with various goods and services in the educational and entertainment realm, including in
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`connection with its highly acclaimed athletic programs. TTU owns United States Trademark
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`Registration No. 2,433,675 for the Raider Red Design Mark for “paper goods and printed
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`matter, namely, notecards and game programs; clothing, namely, shirts, t-shirts, caps and
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`boxer shorts; and entertainment services, namely, arranging and conducting athletic events,
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`tournaments and exhibitions,” registered on March 6, 2001.
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`5.
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`TTU’s famous marching band is the “Goin’ Band from Raiderland.” Because the
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`band was one of the few that would travel to away games, and because it came from the home of
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`2 TTU owns State of Texas trademark Registration No. 49,917 for the RED RAIDERS mark and Registration No.
`49,912 for the TEXAS TECH UNIVERSITY RED RAIDERS mark.
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`-2-
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`

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`the RED RAIDERS, it came to be known as the “Goin’ Band From Raiderland.” TTU has used
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`the RAIDERLAND mark in connection with the “Goin’ Band From Raiderland” for more than
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`thirty years, and TTU has used and licensed the RAIDERLAND mark in connection with apparel
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`since as early as 1975.
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`6.
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`Opposer’s RED RAIDERS, RAIDERS, RAIDER RED, Raider Red Design, and
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`RAIDERLAND marks are collectively referred to as “Opposer’s Marks.”
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`7.
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`As a result of TTU’s longstanding and extensive use, Opposer’s Marks are
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`symbolic of the extensive goodwill and consumer recognition established by TTU. By virtue of
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`TTU’s expenditure of substantial amounts of time, effort and money in advertising and
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`promoting its goods and services under Opposer’s Marks, Opposer’s Marks have come to
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`identify TTU’s athletic and other goods and services.
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`8.
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`Opposer will be damaged by the registration of Applicant’s Mark because the
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`mark and its associated goods so resemble Opposer’s Marks and the associated goods and
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`services as to be likely to cause confusion, mistake and deception. Applicant’s Mark contains
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`the term “RAIDER” which is a reference Opposer’s mascot, nickname, athletic identity and its
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`Goin’ Band from Raiderland marching band.
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`9.
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`Persons familiar with Opposer’s Marks are likely to believe erroneously that
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`Applicant’s goods are offered by TTU or are authorized, licensed, endorsed or sponsored by
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`TTU, and registration of Applicant’s Mark on the Principal Register will be inconsistent with
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`Opposer’s rights in the Opposer’s Marks.
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`10.
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`Applicant’s applied-for mark also falsely suggests a connection with TTU, in
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`violation of Section 2(a) of the Lanham Act, 15 U.S.C. § l052(a).
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`

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`11.
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`Registration of Applicant’s Mark would cause dilution to the distinctiveness of
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`Opposer’s Marks by eroding consumers’ exclusive identification of these famous marks with
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`Opposer, tarnishing and degrading the positive associations and prestigious connotations of the
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`marks, and otherwise lessening the capacity of the marks to identify and distinguish the goods
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`and services of Opposer.
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`12.
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`Registration of Applicant’s Mark should be refused because the application is
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`being procured by fraud. Specifically, either Applicant knows or should have known that: (1)
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`Opposer is the owner of the RAIDERLAND mark; (2) Applicant is not entitled to use the
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`RAIDERLAND mark in commerce; and (3) Opposer has the right to use the RAIDERLAND
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`mark in commerce.
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`13.
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`On information and belief, Applicant’s attorney was acting on behalf of Applicant
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`without his authority when Applicant’s counsel filed the application to register the mark
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`RAIDERLAND.
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`14.
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`Enclosed is the PTO-2038 authorizing the credit card payment of the $300.00
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`filing fee.
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`WHEREFORE, Opposer requests that Application Serial No. 78/620,437 be refused
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`registration and this Notice of Opposition be sustained in favor of Opposer.
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`Dated: October 30, 2006
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`Respectfully submitted,
`
`/s/ Alicia Grahn Jones
`
`R. Charles Henn Jr.
`
`Alicia Grahn Jones
`
`KILPATRICK STOCKTON LLP
`
`1100 Peachtree Street
`
`Suite 2800
`
`Atlanta, Georgia 30309-4530
`(404) 815-6500
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`

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`EXHIBIT A
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application
`
`Serial No. 78/620,437
`Mark: RAIDERLAND
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`TEXAS TECH UNIVERSITY,
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`Opposer,
`
`v.
`
`JOHN SPIEGELBERG d/b/a RED
`RAIDER OUTFITTER,
`
`Applicant.
`
`OPPOSER’S MOTION TO SUSPEND PROCEEDINGS
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`PURSUANT TO 37 C.F.R. § 2.1171211
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`Opposer, Texas Tech University respectfully requests that the Board suspend proceedings
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`in this Opposition pursuant to 37 C.F.R. § 2.117(a). As discussed in further detail in Opposer’s
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`Brief in Support of this Motion, Opposer has filed a civil action in the United States District
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`Court for the Northern District of Texas, which will dispose of the issues raised in this
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`opposition proceeding. Therefore, Registrant respectfully submits that this opposition
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`proceeding should be suspended pending disposition of the civil action.
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`Dated: October 30, 2006
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`Respectfully submitted,
`
`/s/ Alicia Grahn Jones
`
`R. Charles Henn Jr.
`
`Alicia Grahn Jones
`
`KILPATRICK STOCKTON LLP
`
`1100 Peachtree Street
`
`Suite 2800
`
`Atlanta, Georgia 30309-4530
`(404) 815-6500
`
`US2000 95589041
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`

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`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing has been served on Applicant’s counsel by depositing a true and correct
`copy thereof with the United States Postal Service as First Class Mail, postage prepaid, in an envelope addressed to:
`Erik J. Osterrieder, Schubert Osterrieder & Nickelson PLLC, 6013 Cannon Mtn. Dr., S14, Austin, Texas 78749 on
`October 30, 2006.
`
`By:
`
`/s/ Alicia Grahn Jones
`Alicia Grahn Jones
`
`USZOOO 9558904. l
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application
`
`Serial No. 78/620,437
`Mark: RAIDERLAND
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`TEXAS TECH UNIVERSITY,
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`Opposer,
`
`V.
`
`JOHN SPIEGELBERG d/b/a RED
`RAIDER OUTFITTER,
`
`Applicant.
`
`OPPOSER’S BRIEF IN SUPPORT OF ITS MOTION TO SUSPEND
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`Opposer, Texas Tech University (“TTU”) respectfully requests that the Board suspend
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`proceedings in this Opposition pursuant to 37 C.F.R. § 2.1 17(a).
`
`I.
`
`BACKGROUND
`
`On April 30, 2005, Applicant John Spiegelberg d/b/a Red Raider Outfitter (“Applicant”)
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`filed an application to register the mark RAIDERLAND (Serial No. 78/620,437), which is the
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`subject of this opposition proceeding.1
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`On August 24, 2005, TTU filed a civil action against Applicant alleging trademark
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`infringement and dilution, unfair competition, breach of contract, and related causes of action
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`under state law (the “Civil Action”).2 The Civil Action will address several issues including
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`TTU’s rights in the RAIDERLAND mark. The Civil Action was filed in the United States
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`District Court for the Northern District of Texas where Applicant resides. Thus, Petitioner can
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`claim no prejudice or burden stemming from litigation in this forum. The Civil Action will
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`' TTU’s Notice of Opposition is being filed concurrently with this Motion to Suspend.
`2 TTU’s Complaint against Applicant is attached as Exhibit 1.
`US2000 95588991
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`

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`dispose of the issues raised in this Opposition, and TTU therefore seeks suspension of these
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`proceedings.
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`Applicant notes that Cancellation No. 92044727 filed by Applicant, which concerns
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`TTU’s Registration No. 2,433,675 for the Raider Red Design mark, was suspended on January
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`13, 2006 pending disposition of the Civil Action. Also, Opposition No. 91172335, filed by TTU
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`against Applicant regarding the WRECK ‘EM TECH mark (Serial No. 78/620,435), was
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`suspended on August 28, 2006.
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`II.
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`ARGUMENT
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`The Board has the power to suspend proceedings in favor of a pending civil action
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`pursuant to 37 C.F. R. § 2.117(a), which provides:
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`Whenever it shall come to the attention of the Trademark Trial and Appeal Board
`that a party or parties to a pending case are engaged in a civil action or another
`Board proceeding which may have a bearing on the case, proceedings before the
`Board may be suspended until termination of the civil action or the other Board
`proceeding.
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`This Board regularly exercises this power in the interests of promoting judicial economy and
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`conserving resources.
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`§e_e Vining Indus., Inc. v. Libman Co., 1996 TTAB LEXIS 455, at *6
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`(T.T.A.B. July 16, 1996) (suspending Board proceedings “in the interest ofjudicial economy and
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`consistent with [the Board’s] inherent authority to regulate [its] proceedings to avoid duplicating
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`the effort of the court and the possibility of reaching an inconsistent conclusion”); Tokaido v.
`
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`Honda Assocs.
`lnc., 179 U.S.P.Q. 861, 862 (T.T.A.B. 1973) (“[N]otwithstanding the fact that
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`the Patent Office proceeding was the first to be filed, it is deemed to be the better policy to
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`suspend proceedings herein until the civil suit has been finally concluded”); Townley Clothes,
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`Inc. v. Goldring, Inc., 100 U.S.P.Q. 57, 58 (Comrn’r Pat. 1953) (“[I]t would not seem to be in the
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`interests of ‘judicial economy’ for the parties to proceed in two forums. .
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`. .”).
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`US2000 9558899. I
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`

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`This Opposition should be suspended because proceedings in the Civil Action will
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`conclusively determine TTU’s rights in the RAIDERLAND mark, and therefore will be
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`dispositive of all issues raised in this proceedings.
`
`
`_S_e_e Tokaido V. Honda Assocs.
`Inc., 179
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`U.S.P.Q. at 862 (“[W]hile a decision of the District Court would be binding upon the Patent
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`Office, a decision by the Trademark Trial and Appeal Board would only be advisory in respect to
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`the disposition of the case pending in the District Court”); see also Sam S. Goldstein Indus. Inc.
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`v. Botany Indus., Inc., 301 F. Supp. 728, 731, 163 U.S.P.Q. 442, 443 (S.D.N.Y. 1969) (noting
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`that PTO “findings would not be res judicata in this [civil action]” and denying motion to stay
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`district court proceedings).
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`III.
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`CONCLUSION
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`For the foregoing reasons, TTU respectfully submits that this opposition proceeding
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`should be suspended pending disposition of the Civil Action.
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`Dated: October 30, 2006
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`Respectfully submitted,
`
`/s/ Alicia Grahn Jones
`
`R. Charles Henn Jr.
`
`Alicia Grahn Jones
`
`KILPATRICK STOCKTON LLP
`
`1100 Peachtree Street
`
`Suite 2800
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`Atlanta, Georgia 30309-4530
`(404) 815-6500
`
`US2000 9558899.]
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`

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`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing has been served on App1icant’s counsel by depositing a true and correct
`copy thereof with the United States Postal Service as First Class Mail, postage prepaid, in an envelope addressed to:
`Erik J. Osterrieder, Schubert Osterrieder & Nickelson PLLC, 6013 Cannon Mtn. Dr., S14, Austin, Texas 78749 on
`October 30, 2006.
`
`By:
`
`/s/ Alicia Grahn Jones
`Alicia Grahn Jones
`
`USZOOO 9558899.!
`
`

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`EXHIBIT 1
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`

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`(as
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`LUBBOCK DIVISION
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`TEXAS TECH UNIVERSITY,’ ‘
`'
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`Plaintiff,
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`v.
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`JOHN SPIEGELBERG, individually, and
`d/b/a RED RAIDER OUTFITTER,
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`Defendants.
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`
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`H 5n0
`Civil Action No.
`'
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`COMPLAINT
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`Plaintiff, Texas Tech University (“Plaintiff” or “Texas Tech”) states the following for its
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`Complaint against Mr. John Spiegelberg, individually, and d/b/a Red Raider Outfitter.
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`SUBSTANCE OF THE ACTION
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`1.
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`This is an action for trademark infringement and dilution, unfair competition, and
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`breach of contract, arising under the Federal Trademark Act of 1946, 15 U.S.C. § 1051 iseg.
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`(“Lanham Act”); the Texas Trademark Act, Tex. Bus. & Comm. Code Ann. §§ 16:01 isegn
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`including the Texas Anti-Dilution Statute, Tex. Bus. & Comm. Code Ann. § 16:29, as well as
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`the trademark and anti-dilution laws of the several states; and the common law.
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`2.
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`Defendant Spiegelberg is the sole proprietor of a retail store operating adjacent to
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`the Texas Tech campus in Lubbock, Texas. Spiegelberg and his Red Raider Outfitter retail store
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`also
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`sell merchandise
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`through websites
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`operating
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`under
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`domain
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`names
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`such
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`as
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`www.redraideroutfitter.com and www.texastechoutfitter.com.
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`Some of this merchandise is
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`produced by third parties and officially licensed by the University. Defendants also, however,
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`produce or arrange for the production of merchandise that is unlicensed and not otherwise
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`

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`r
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`W rt
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`approved by Texas Tech. Defendants have sold and are selling unlicensed merchandise that
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`incorporates word marks, design marks, color schemes and other source-identifying indicia
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`associated with the University.
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`Spiegelberg is using this
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`source-identifying indicia in
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`combination with other phrases, designs, terminology, and information in a way calculated to
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`create the misimpression that his merchandise is licensed or sponsored by or otherwise affiliated
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`with the University. Plaintiff brings this action to stop Defendants from continuing to pass off
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`their unlicensed merchandise as that of Plaintiff and to prevent Defendants from trading on the
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`enormous goodwill associated with Texas Tech University. Defendants’ misconduct is likely to
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`cause confiision and to deceive consumers and the public and will continue to do so absent relief
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`from this Court.
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`JURISDICTION AND VENUE
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`3.
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`This Court has subject matter jurisdiction under section 39 of the Lanham Act, 15
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`U.S.C. § 1121, and under 28 U.S.C. §§ 1331 and 1338. This Court has jurisdiction over
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`Plaintiffs related state and common law claims pursuant to 28 U.S.C. §§ 1338 and 1367.
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`4.
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`This Court has personal jurisdiction over Defendants because Defendants reside in
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`this state, do business in this state, have committed tortious acts in this state, and have otherwise
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`established contacts with this state making the exercise of personal jurisdiction proper.
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`5.
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`Venue is proper in this District pursuant to 28 U.S.C. § 139l(b)(l) & (2) because
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`Defendants reside in this District and a substantial part of the events or omissions giving rise to
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`the action occurred in this District.
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`

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`.r
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`0
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` U
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`THE PARTIES
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`6.
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`Plaintiff Texas Tech University is a general academic teaching institution of the
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`State of Texas, having its principal location at 250(l Broadway, Lubbock, Texas79.409..
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`7.
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`On infonnation and belief, Defendant Spiegelberg is an individual of the firll age
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`of majority and resides in and is a citizen of the State of Texas. On information and belief,
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`Spiegelberg is, and at all times relevant to this Complaint was, the sole proprietor of Red Raider
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`Outfitter, a retail store and apparel producer with its principal place of business at 2416
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`Broadway, Lubbock, Texas 79401, and is subject
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`to service at
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`that address.
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`Further on
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`information and belief, Spiegelberg directed, controlled, participated in, engaged in, performed,
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`authorized, approved, ratified, activelyand knowingly caused, and was the moving, active,
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`conscious force behind the acts of Red Raider Outfitter forming the basis of this Complaint.
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`FACTS COMMON TO ALL CLAIMS FOR RELIEF
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`Plaintiff Texas Tech University and Its Trademark Rights
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`8.
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`Plaintiff Texas Tech University was founded in 1923, and its academic and
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`athletic programs are well known and respected throughout the region and beyond. Plaintiff is
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`located in Lubbock, Texas, which was selected by a legislative committee to be the site for the
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`university now known as Texas Tech University.
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`Plaintiffs academic and athletic programs
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`have long been a centerpiece of Lubbock city life, and,
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`in the appropriate context and
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`circumstances, references to “Lubbock” will be understood by the relevant consuming public as
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`references to Plaintiff.
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`9.
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`Plaintiff has extensively used and promoted “Texas Tech University” and “Texas
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`Tech” as its name, as well as a trademark and a service mark. Plaintiff developed trademark
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`rights in its name long before the activities at issue in this Complaint, and the TEXAS TECH
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`

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`(7
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`name and mark, of ‘course, serves as a powerful indicator of the source of goods and services
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`provided by or otherwise affiliated with Plaintiff. Plaintiff is the owner of U.S. Trademark
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`Registration No. 2,511,970 for its TEXAS TECH UNIVERSITY name and mark, which
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`registration issued on November 27, 2001. On-line records from the United States Patent and
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`Trademark Office (“PTO”) for this mark are attached as Exhibit 1. Plaintiff is also the owner of
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`a variety of Texas State registrations consisting of or incorporating the TEXAS TECH name and
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`mark, including Texas State Registrations Nos. 59,823, 59,822, 49,935, 49,912, and 49,910.
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`10.
`A very common shorthand for referring to Plaintiff is “Tech.” In the appropriate
`context and circumstances, use of the term “Tech” will be perceived by the relevant consuming
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`public as a reference to Plaintiff. Plaintiffs licensees have often used the moniker “Tech” as a
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`means of referring to Plaintiff.
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`Plaintiff is the owner of trademark rights in the term “Tech,”
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`when said term is used in the appropriate context or circumstances, such as merchandise that
`makes reference to Plaintiff, Plaintiffs accomplishments, or events in which Plaintiff will be
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`participating.
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`ll.
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`Plaintiff's athletic identity is the “Red Raider." Plaintiff has regularly used the
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`mark and name RED RAIDERS in connection with its athletic programs since at least as early as
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`1936. Plaintiff, through its licensees, has also used the RED RAIDER mark in connection with a
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`wide variety of apparel and other merchandise. Plaintiff is the owner of Texas State Registration
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`Nos. 49,917 and 49,912 for, respectively, RED RAIDERS and TEXAS TECH UNIVERSITY
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`RED RAIDERS for apparel items. Plaintiff is the owner of valuable trademark rights in its RED
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`RAIDERS mark.
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`12.
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`Plaintiff has adopted, used and promoted a design mark known as “Raider Red,”
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`which is based in imagery drawn and developed from Plaintiffs’ RED RAIDERS athletic
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`ti
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`identity.
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`one depiction of the Raider Red Design Mark is featured in .U.S. Trademark
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`Registration No.,2,433,675, which registration issued on March 6, 2001. The registration .
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`certificate for this mark is attached as Exhibit 2.
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`Plaintiff is the owner of valuable trademark
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`rights in its Raider Red Design Mark, as a result of its use and promotion, as well as the
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`aforementioned registration. Plaintiff developed trademark rights in its Raider Red Design Mark
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`long before the activities at issue in this Complaint, and the Raider Red Design Mark serves as a
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`powerful indicator of the source of goods and services provided by or otherwise affiliated with
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`Texas Tech.
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`13.
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`Plaintiff uses a scarlet and black color scheme in connection with its educational
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`and entertainment services and its licensed apparel and other merchandise,
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`including the
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`uniforms of its athletic teams, souvenirs and memorabilia. The scarlet and black color scheme is
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`used prominently and repeatedly in connection with Plaintiffs athletic teams and its many other
`
`organizations, activities and services, as well as with goods sold by Plaintiff or its licensees.
`
`Plaintiff uses the scarlet and black color scheme in connection with its name, the RED RAIDERS
`
`mark, the Raider Red Design Mark, as an element of its other logos and design marks, and in
`
`numerous additional contexts. Texas Tech extensively and continuously used and promoted its
`
`scarlet and black color scheme before the activities of Defendants outlined in this Complaint.
`
`Plaintiff's scarlet and black color scheme serves as a trademark in the appropriate context and
`
`circumstances,
`
`such
`
`as merchandise
`
`that makes
`
`reference
`
`to
`
`Plaintiff, Plaintiffs
`
`accomplishments, or events in which Plaintiff will be participating. Plaintiffs TEXAS TECH
`
`name and mark, RED RAIDERS word mark, Raider Red Design mark, and Scarlet and Black
`
`Color Scheme mark, are hereinafter collectively referred to as “Plaintiffs Marks.”
`
`

`
`14.
`
`' Plaintiffs Marks ‘havelbeen used in interstate commerce and have achieved
`
`significant fame and public recognition, especially when appearing in connection with collegiate
`
`athletic teams and events and related apparel
`
`items. Because of their widespread use in
`
`connection with Plaintiff's activities and licensed merchandise, Plaintiffs Marks have
`
`tremendous power as source identifiers.
`
`15.
`
`Plaintiff licenses Plaintiffs Marks through its licensing agent, The Collegiate
`
`Licensing Company (CLC), which is the nation’s leading collegiate licensing and marketing
`
`representative. CLC assists collegiate licensors in protecting and controlling the use of their
`
`logos through trademark licensing. CLC represents more than 190 universities, bowl games, and
`
`conferences, including Texas Tech University.
`
`Defendants’ Unlawful Activities
`
`16.
`
`In 1997, Defendants entered into a license agreement with Plaintiff via CLC. A copy
`
`of said license agreement is attached as Exhibit 3 (the “License Agreement”). The License
`
`Agreement contains a number of provisions protecting Plaintiff’ s Marks, including the following:
`
`Afler expiration or termination of this [License] Agreement for any reason,
`Licensee [Defendants] shall refrain from further use of any of the Licensed Indicia
`or any similar mark, including any geographic reference or depiction, directly or
`indirectly, or any derivation of the Licensed Indicia or a similar mark .
`.
`.
`.
`
`License Agreement, Exh. 3, at ‘If 20(a). The tenn “Licensed Indicia” is defined as the “names,
`
`symbols, designs, and colors of the Member Universities [Plaintiff], including without limitation,
`
`the trademarks, service marks, designs, team names, nicknames, abbreviations, city/state names
`
`in the appropriate context, slogans, logographics, mascots, seals and other symbols associated
`
`with or referring to the respective Member Universities.” License Agreement, Exh. 3, at 1] 1(b).
`
`

`
`..a.,
`
`5{
`.
`
`it
`}§
`
`.
`
`.
`
`,
`
`K,
`
`V
`
`J
`
`The License Agreement likewise prohibits Defendants from ‘applying to register marks ‘that
`
`consist of or incorporate the License Agreement. License Agreement, Exh. 3, at 1] 8(a), (b).
`17. The License Agreement was renewed and extended until 2003 and then allowed to
`
`expire by Plaintiff as a result of Defendants’ repeated failures to comply with its terms.
`
`Defendants are no longer licensed by Plaintiff but nevertheless continue to manufacture and sell
`
`unlicensed and unauthorized merchandise featuring the Plaintiff’ 5 Marks, or colorable imitations
`
`thereof, within this judicial district and elsewhere.
`
`18.
`
`Defendants have even gone so far as to seek federal trademark registrations for
`
`marks that incorporate Plaintiffs Marks or portions thereof, namely the following:
`
`
`
`Application
`Filing
`Date
`Serial No.
`
` Exhibit No.
`
`78/620,435
`
`78/620,437
`
`April 30,
`2005
`
`April 30,
`
`2005
`
`4
`
`
`
`
`
`
`
`
`
`Defendants’ Texas Tech—
`Related Trademark
`
`WRECK ‘EM TECH
`
`RAIDERLAND
`
`The above-referenced marks are designed to trade upon the identity of Texas Tech and are in
`
`direct violation of the License Agreement.
`
`On—line records from the USPTO for these
`
`applications are attached at the exhibit numbers referenced in the chart above.
`
`19.
`
`On April 15, 2005, Defendants initiated a trademark cancellation proceeding
`
`before the Trademark Trial and Appeal Board of the USPTO, Cancellation Proceeding No.
`
`92/044,727, by which they seek to cancel the federal registration for Texas Tech’s Raider Red
`
`Design Mark. A true and correct copy of Defendants’ Petition for Cancellation is attached hereto
`
`as Exhibit 6. Defendants have also initiated a declaratory judgment action solely against
`
`Plaintiffs licensing agent, CLC, in the United States District Court for the Southern District of
`
`Texas (Houston Division), Civ. Action No. H-05-I264, despite the fact that both Defendants and
`
`-7-
`
`

`
`
`
`V/M.,.__»
`
`Plaintiff reside in this District. True and correct copies of Defendants’ flomplaint and.(.?LC"s
`
`I Answer in the above-referenced action are attached hereto as. Exhibits 7 and 8, respectively.
`
`20. '
`
`A Defendants’ use ofthename of itsnretail store, Red" Raider Outfitter, and its related
`
`websites, operating under domain names including but not limited to www.redraideroutfitter.eom
`
`and www.texastechoutfitter.com, are also calculated to conjure and trade upon the identity of
`
`Texas Tech. A true and correct copy of print-outs of a web page from Defendants’ website is
`
`attached hereto as Exhibit 9.
`
`21.
`
`Defendants’ unlicensed products are not manufactured by Plaintiff, nor were they
`
`licensed, authorized, sponsored, endorsed or approved by Plaintiff.
`
`22.
`
`Plaintiffs Marks were used extensively and continuously before Defendants
`
`manufactured, offered for sale, or sold Defendants’ products.
`
`23.
`
`Defendants’ products are similar to and compete with goods sold or licensed by
`
`Plaintiff, and are sold through the same channels of trade. Defendants sell their products at or
`
`near the University, and Defendants’ unlicensed and unauthorized products appeared directly
`
`alongside merchandise authorized by Plaintiff. Defendants do everything in their power to
`
`ensure that their proximity to Plaintiff will exacerbate and increase the confusion caused by their
`
`unlicensed and unauthorized merchandise.
`
`24.
`
`Defendants’ products are likely to deceive, confuse and mislead prospective
`
`purchasers and purchasers into believing that Defendants’ unlicensed and unauthorized products
`
`were produced or authorized by or in some manner associated with Plaintiff. The likelihood of
`
`confusion, mistake and deception engendered by Defendants’ unlicensed and unauthorized
`
`products is causing irreparable harm to Plaintiff.
`
`

`
`3
`
`A
`
`A
`
`Purchasers and prospective purchasers viewing‘ Defendants’ unlicensed and
`
`unauthorized products and perceiving a defect, lack of quality, or any impropriety are likely to
`
`mistakenly attribute them to Plaintiff. By causing such ailikelihood of confusion, mistake and
`
`deception, Defendants are inflicting irreparable harm to Plaintiff‘ s goodwill.
`
`26.
`
`Defendants’ unlicensed and unauthorized merchandise is calculated to trade on
`
`the valuable goodwill and commercial magnetism of Plaintiffs reputation and identity in
`
`Lubbock and elsewhere. Defendants are attempting to pass off their merchandise as that of
`
`Plaintiff.
`
`27.
`
`Defendants willfully,
`
`intentionally and maliciously used Plaintiffs Marks, or
`
`adopted imitations of Plaintiffs Marks and combined said imitations with other material likely to
`
`cause and enhance confusion, and have otherwise deliberately attempted to pass off their
`
`unlicensed and unauthorized products as those provided or licensed by Plaintiff.
`
`COUNT I
`FEDERAL TRADEMARK INFRINGEMENT
`
`28.
`
`29.
`
`Plaintiff repeats and incorporates by reference the allegations in paragraphs l-.
`
`Defendants are using confusingly similar imitations of the TEXAS TECH name
`
`and mark and the federally registered Raider Red Design Mark on unlicensed and unauthorized
`
`merchandise. This conduct is likely to cause confusion, deception, and mistake by creating the
`
`false and misleading impression that Defendants’ unlicensed and unauthorized goods are
`
`manufactured or distributed by Plaintiff or are associated or connected with Plaintiff, or have the
`
`sponsorship, endorsement or approval of Plaintiff.
`
`30.
`
`Defendants have used confusingly similar imitations of Plaintiffs federally
`
`registered marks in violation of 15 U.S.C. § 1114, and Defendants’ activities have caused and,
`
`

`
`unless enjoined by this.Court, will continue to cause a likelihood of confusion and deception of
`
`members of the trade_ and public and, additionally,
`
`injury to the Plai_nti,ft‘s goodwill and,
`
`I
`
`reputation as lsymboliaeld by ‘Plaintiffs federally registered marks, for which Plaintiff has no
`
`adequate remedy at law.
`
`31.
`
`Defendants‘ actions demonstrate an intentional, willful, and malicious intent to
`
`trade on the goodwill associated with Plaintiff’ s federally registered marks to Plaintiffs great and
`
`irreparable injury.
`
`32.
`
`Defendants have caused and are likely to continue causing substantial injury to the
`
`public and to Plaintiff, and Plaintiff is entitled to injunctive relief and impoundment and
`
`destruction of Defendants’ infringing products and to recover actual damages, Defendants’
`
`profits, enhanced profits and damages, costs and reasonable attorneys’ fees under 15 U.S.C. §§
`
`1114, 1116,1117, 1118.
`
`COUNT II
`
`FEDERAL UNFAIR COMPETITION
`
`33.
`
`Plaintiff repeats and incorporates by reference the allegations in paragraphs 1-_
`
`as if fully set forth here.
`
`34.
`
`Defendants’ unlicensed and unauthorized goods and services have caused and are
`
`likely to cause confusion, deception, and mistake by creating the false and misleading impression
`
`that Defendants’ goods and services are manufactured or distributed by Plaintiff or are associated
`
`or connected with Plaintiff, or have the sponsorship, endorsement or approval of Plaintiff.
`
`35.
`
`Defendants have made false representations,
`
`false descriptions, and false
`
`designations of origin in violation of 15 U.S.C. § ll25(a),
`
`including, but not
`
`limited to,
`
`Defendants’ commercial and merchandising use of (i) confusingly similar imitations of the
`
`-10-
`
`

`
`Raider Red Design M

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