IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter ofApplication Serial No. 78,862,497
`
`Published in the Official Gazette on May 15, 2007
`Mark: UNKER’S
`
`Opposition No. 91 177847
`
`)
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`) )
`
`Pro 10 Originals, LLC
`
`Opposer,
`
`v.
`
`Applicant.
`
`UIC
`
`TRANSMITTAL LETTER
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`Tel: 571-272-1000
`
`Dear Sir/Madam,
`
`Applicant timely submits herewith the following documents for filing:
`
`1. Motion to Suspend Opposition Proceedings
`
`2. Memorandum of Law in Support of Motion Suspend Opposition
`
`3. Order
`
`4. Certificate of Service for Motion to Suspend Opposition Proceedings
`
`5. Federal Civil Action Complaint; and
`
`6. Certificate of Service for Federal Action Complaint.
`
`7. Notice of Opposition against the above captioned ‘497 Mark
`
`8. Timely answer of Applicant to the Notice of Opposition
`
`2llllllllillllllllllllllllllllllIlllllllllllllllll
`
`05-29-2008
`
`2. more/W. Mail Ram.
`
`in
`
`#72
`
`

`
`Dated: 5/29/2008
`
`Respectfully submitted,
`
`;)¢a‘a-._:Jc fie,
`
`Patrick Henry
`Individual/Applicant/Defendant
`UIC
`637 Pine Street
`
`Upton, WY 82730-0827
`Tel: 307-468-2843
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`3
`Express Mail label number
`I hereby certify that this correspondence is being us
`deposited with the United States Postal Service
`‘Express Mail Post Office To Addressee" service in an
`envelope addressed to:
`
`
`
`Attn:1TAB — NO FEE
`Commis;ic6neBr for11"1I:l1clemarks
`.
`.
`OX
`Alexandria, VA 22313-1451
`wolhll‘
`Qllcwx 5 as o
`Diana McMillan
`Date
`
`_
`
`In the Matter of Application Serial No. 78,862,497
`Published in the Official Gazette on May 15, 2007
`Mark: UNKER’S
`
`)
`)
`)
`)
`)
`
`) )
`
`)
`)
`
`) )
`
`_
`_
`Pro 10 Originals, LLC
`
`Oppose“
`
`v.
`
`UIC
`
`Applicant.
`
`Opposition No. 91 177847
`
`MOTION TO SUSPEND OPPOSITION PROCEEDINGS
`
`Comes now, the Applicant and Applicant respectfully requests that the
`
`present Opposition be suspended pending the adjudication of a pending Federal
`
`Declaratory Judgment Action before the U.S. District Court for the District of
`
`Wyoming between the above captioned parties, 08-CV-138-J. Applicant herein
`
`provides the Board with a copy of the civil action complaint. The Motion is supported
`
`by the attached Memorandum of Law. A proposed form of Order is attached.
`
`Dated: 5/29/2008
`
`Patrick Henry/Individual/Applicant
`
`?ae.;;2¢ jg
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78,862,497
`Published in the Official Gazette on May 15, 2007
`Mark: UNKER’S
`
`Opposition No. 91 177847
`
`)
`
`) )
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`Pro 10 Originals, LLC
`
`Opposer,
`
`v.
`
`UIC
`
`Applicant.
`
`MEMORANDUM OF LAW IN SUPPORT OF
`MOTION TO SUSPEND OPPOSITION
`
`I. Introduction and Factual Background
`
`This paper is respectfiilly submitted in Support of Applicant’s Motion to
`
`Suspend the present Opposition, pending the adjudication of a Federal Declaratory
`
`Judgment Action which has been pending since May 28, 2008 in the United States
`
`District Court for the District of Wyoming (08-CV-138-J) and which involves the
`
`very same parties. The federal dispute involves declaratory judgment under 28 U.S.C.
`
`§220l and §2202 regarding infringement of the Applicant’s mark UNKER’S.
`
`

`
`II. Argument
`
`This action should be stayed. As the Board has previously noted:
`
`“It is the policy of the Board to suspend proceedings when the parties
`
`are involved in a civil action which may be dispositive of or have bearing on
`
`the Board case. See Trademark Rule 2.117(a); see also TMBP § 510.02 (a)
`
`(2d ed. Rev 2004).
`
`The exact same rationale applies here.
`
`1. The Federal Lawsuit Will Adjudicate All of the Issues Raised Here.
`
`This Opposition seeks to adjudicate issues that will be before the Federal
`
`Court in Wyoming and which will be finally adjudicated there.
`
`All of the issues raised in the Opposition will be adjudicated as part of
`
`Applicant’s Federal Declaratory Judgment claim. All issues involving the subject
`
`matter of U.S. Serial No. 78/862,497 will be adjudicated by the Wyoming Federal
`
`Court in a trial.
`
`The Federal Court in Wyoming will thus adjudicate the very issues
`
`raised in the Opposition in the context of Applicant’s Federal Declaratory Judgment
`
`claim. The federal lawsuit will be depositive of or have a bearing on the Opposition.
`
`The action should be suspended under Rule 2.117(a).
`
`

`
`III. Conclusion
`
`For the reasons set forth herein, the present Opposition should be
`
`Suspended pending the adjudication of the Wyoming Lawsuit.
`
`Dated: 5/29/2008
`
`Patrick Henry/Individual/Applicant
`
`?..>a.;0..- J2,
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78,862,497
`Published in the Official Gazette on May 15, 2007
`Mark: UNKER’S
`
`Opposition No. 91 177847
`Serial No. 78/862,497
`
`)
`
`) )
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`ORDER
`
`Pro 10 Originals, LLC
`
`Opposer,
`
`V.
`
`Applicant.
`
`UIC
`
`Opposition No. 91177847 is hereby suspended pending the final
`
`determination of the pending Civil Action in Wyoming District Court.
`
`TTAB
`
`Dated:
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78,862,497
`Published in the Official Gazette on May 15, 2007
`Mark: UNKER’S
`
`Opposition No. 91 177847
`
`)
`
`) )
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`Pro 10 Originals, LLC
`
`Opposer,
`
`V.
`
`Applicant.
`
`UIC
`
`Certificate of Service
`
`I hereby certify that on this date the foregoing Motion to Suspend Opposition
`Proceedings, Memorandum of Law in Support of Motion to Suspend Opposition, and
`Order were sent via Facsimile and EXPRESS MAIL by the United States Postal
`Service to:
`
`Peter M. deJonge
`Attorney for Opposer
`THORPE NORTH & WESTERN LLP
`
`8180 South 700 East, Suite 350
`
`Sandy, Utah 84070
`Telephone 801.566.6633
`Fax: 801.566.0750
`
`Dated: 5/29/2008
`
`Patrick Henry/Individual/Applicant
`
`?»e~.:;J.- ,5/2,
`
`

`
`CIVIL COVER SHEET
`gig
`N544 <R°V- 12/07)
`as r
`Thels 44civil coversheetand the informationcontained hereinneitherre lacenorsu plementthefilingandserviceofpleadin orotherfa
`by loca_l rules ofcourt. This form, approved by the Judicial Conference of?the United tates in September 1974, is required fort euse oft e lerk of
`the GIVII docket sheet.
`(SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`
`1
`iredby law, except asprov
`urt for the purpose ofrniti}
`
`I. (:1) PLAINTIFFS
`Patrick Henry, Dinah Henry, the United Israel Church, and UIC
`
`DEFENDANTS
`Pro 10 Originals LLC and Gerald R. Doerr
`
`(b)’ County of Residence ofFirst Listed Plaintiff Weston COLIIIEX
`(EXCEPT IN US. PLAINTIFF CASES)
`
`Washakie County
`County of Residence of First Listed Defendant
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE
`IAND INVOLVED.
`
`NOTE:
`
`(c) Attorney's (Firm Naure,.'Addness, and Telephone Number)
`{ir(r3§tcI;,yéIg1.eI,(r;’r~r§st§%r-aves, Miller & Kingston I..LC, 408 West 23'“ Street, Suite
`
`Attorneys (If Known)
`Gordon K. Hill, Esq., TI-IORPE NORTH &. WESTERN, 8180 South 700 East, St
`35, Sandy, Utah 84070
`
`II. BASIS OF JURISDICTION (Place an‘')(’’ in One Box Only)
`
`D l
`
`U.S. Government
`Plaintiif
`
`0 3 Federal Question
`(U.S. Government Not a Party)
`
`D 2 U.S. Goverruncnl
`Defendant
`
`El 4 Diversity
`(indicate Citizenship ofParties in Item III)
`
`111.‘ CITIZENSHIP OF PRINCIPAL PARTIES(r1ace an “x" in One Box for Plain
`(For Diversity Cases Only)
`and One Box for Defendant)
`PTF
`DE]
`CI
`4
`Cl
`4
`
`Citizen of This State
`
`PTF DEF
`U 1
`Cl
`I
`
`Incorporated or Principal Place
`of Business In This State
`
`‘
`
`Citizen ofAnother State
`
`G 2
`
`D 2
`
`Citizen or Subject of a
`Forai Coun
`
`D 3
`
`D 3
`
`Ineorporatedrmd Principal Place
`of Business In Another sum
`Foreign Nation
`
`CI
`
`5
`
`CI 6
`
`Cl
`
`CI
`
`IV. NATURE OF SUIT Plaoenn“X"inOneBox
`
`
`
`CI 610 Agriculture
`CI
`U 422 Appeal 28 USC I58
`400 State Rcapporliormtent
`D 620 Other Food & Dnrg
`CI 423 Withdrawal
`Cl 410 Antitrust
`CI 625 Drug Related Seizure
`28 USC 157
`D 430 Banks and Banking
`
`of Property 21 USC 881
`CI 450 Commerce
`0 630 Liquor Laws
`-
`-7 D 460 Deportation
`0 640 RR. & Truck
`CI 470 Racketeer Influenced an’
`0 650 Airline Regs.
`Corrupt Organizations
`I3 660 Occupational
`CI 480 Consumer Credit
`Safety/Health
`D 490 Cablclsal TV
`Cl 690 Otli r
`Cl
`810 Selective Service
`
`
`
`-'
`-';.'~
`. .
`"
`“L C!
`850 Securities/Couunodities
`
`
`D 710 Fair Labor Standards
`CI 861 HIA (1
`Exchange
`
`
`Act
`[3 862 Black Lung (923)
`CI 875 Customer Challenge '
`
`0 720 Labor/Mgmt. Relations
`D 863 DIWC/DIWW (405(g))
`12 USC 3410
`0 730 Labor/Mgrnt.Reporting
`CI 864 SSID Title XVI
`D 890 Other Statutory Actions
`& Disclosure Act
`CI 89l_Agricultu.raI Acts
`D 740 Railway labor Act
`5‘ D 892 Economic Stabilization.
`D 790 Other Labor Litigation
`Cl
`893 Environmental Matters
`CI 791 Empl. Rel. Inc.
`D 894 Energy Allocation Act
`0 895 Freedom of Information
`Act
`D 900Appeal of Fee Determine
`Under Equal Access
`to Justice
`El 950 Constitutionality of
`State Statutes
`
`
`
`
`
`or Defendant)
`D 87l IRS-Third Party
`26 USC 7609
`
`_;
`
`I 462 Nature ' tion Application
`0 463 Habeas Corpus -
`Alien Detainee
`D 465 Other lnunigration
`Actions
`
`
`
`
`
`
`
`
`
`
`D 110 Insurance
`PERSONAL INJURY
`El 310 Airplane
`0 120 Marine
`CI
`315 Airplane Product
`D 130 Miller Act
`. Liability
`Cl 140 Negotiable instrument
`Cl 150 Recovery ofOverpayment CI 320 Assault. Libel &
`& Enforcement ofJudgment
`Slander
`El 15] Medicare Act
`0 330 Federal Employers’
`0 152 Recovery of Defaulted
`Liability
`Student Loans
`340 Marine
`(Excl. Veterans)
`345 Marine Product
`0 I53 Recovery ofOverpayment
`Liability
`o,fVetcrsn’s Benefits
`D 350 Motor Vehicle
`0 160 Stockholders‘ Suits
`CI
`355 Motor Vehicle
`U 190 Other Contract
`Product Liability
`O 195 Contract Product Liability D 360 Other Personal
`
`
`C1 I96 Franchise
`~
`In‘
`
`‘M.
`‘‘'..x.
`.
`:
`'
`510 Motions to Vacate
`ermrauon
`CI
`Sentence
`0 220 Foreclosure
`El 442 Employment
`Habeas Corpus:
`0 230 Rent Lease & Ejectment
`CI
`443 Housing/
`D 530 General
`0 240 Torts to Land
`Accommodations
`0 535 Death Penalty
`0 245 Tort Product Liability
`444 Welfare
`Cl
`I3 290 N10?-I19!’ Real PTOPW)’
`Cl 445 Amer. w/Disabilities - CI
`540 Mandamus & Other
`Employment
`0 550 Civil Rights
`CI 446 Amer. w/Disabilities - Cl
`555 Prison Condition
`Other
`,
`D 440 Other Civil Rights
`"
`
`PERSONAL INJURY
`D 362 Personal Injury -
`Med. Malpractice
`Cl 365 Personal Injury -
`Product Liability
`CI 368 Asbestos Personal
`Injury Product
`Liability
`PERSONAL PROPERTY
`CI 370 Other Fraud
`D 37l Truth in Lending
`Cl
`380 Other Personal
`Property Damage
`0 385 Property Damage
`Product Liability
`
`_
`
`
`
`
`
`
`
`CI
`El
`
`V. ORIGIN
`(Place an “X"inOne Boxonly)
`-
`»
`" I
`ne“a’...a.... D 2 ‘si°;::°é:°..£'°m
`0 3
`
`'
`
`-
`
`'
`
`Transfenedfm
`
`D 4 .‘§a';:*.r;*:r“°' D 5 am-su+c=”’ D 6
`
`1t0'DistI
`AP
`Ju gefro
`
`-
`
`-
`
`-
`
`D 7
`
`Cite the U.S. Civil Statute under which you are filing
`VI’ CAUSE OF ACTION Briefdescription ofcause:
`Trademark
`
`not cite jurisdictional statutes unless diversity):
`
`III CHECK IF THIS Is A CLASS ACTION
`VII. REQUESTED IN
`CHECK YES only if demanded in complaint:
`DEMAND S
`
`
`
` COMPLAINT: UNDER F.lLC.P.23 JURY DEMAND: D Yes 31 No
`
`VIII. RELATED CASE(S)
`S
`_
`_
`_
`JUDGE
`IF ANY
`( °° '"“"'°”°“”‘
`oocrorr NUMBER
` DATE
`
`
`
`
`
`FOR OFFICE U E ONLY
`
`RECEIPT ii
`
`
`MAG. JUDGE j—
`
`APPLYING IFP
`
`JUDGE
`
`
`
`
`
`

`
`UNITED STATES DISTRICT Cwaaéyggrrgé clerk
` DISTRICT OF WYOMING y
`
`
`Tl
`
`FELFD
`u.s. DISTHFCT COURT
`DISTRICT OF wvosvmxxa
`
`MAY 2 8 2888
`
`PATRICK HENRY, DINAH HENRY,
`the UNITED ISRAEL CHURCH and
`
`.
`
`UIC,
`P1aintiff(s),
`
`V.
`
`PRO 10 ORIGINALS, LLC and
`GERALD R; DOERR
`
`CasCNumber:
`
`fl
`
`Defendant(s).
`
`
`PRAECIPE
`
`TO THE CLERK OF THIS SAID COURT:
`
`Please issue a SUMMONS
`
`in the above-entitled cause for:
`
`PRO 10 ORIGINAL LLC
`1263 Lane 14
`'
`P.O. Box 39
`Worland, Wyoming 82401
`
`_
`
`GERALD R. DOERR
`1263 Lane 14
`P.O. Box 39
`Worland, Wyoming 82401
`
`\/‘-"‘
`
`(@8105
`
`_ Date
`
`Attorney for
`
`
`
`””~*”"fi5
`
`

`
`®sAO440 (Rev. 8/01) Summons in a Civil Case
`
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF WYOMING
`
`PATRICK HENRY, DINAH HENRY,
`the UNITED ISRAEL CHURCH and
`
`UIC,
`P1aint1'ff(s),
`
`V.
`
`PRO 10 ORIGINALS, LLC and
`GERALD R. DOERR
`
`Defendant(s).
`
`SUMMONS IN A CIVIL CASE
`
`Case Number:
`
`C ‘V;
`
`1 3
`
`
`
`TO:
`
`Pro 10 Originals, LLC
`1263 Lane 14
`
`P.O. Box 39
`
`Worland, Wyoming 82401-9565.
`
`YOU ARE HEREBY SUMMONED and required to serve on PLAINTIFF‘S ATTORNEY (name
`and address)
`
`Timothy C. Kingston
`Graves, Miller & Kingston, LLC.
`408 West 23'“ Street, Suite 1
`Cheyenne, Wyoming 82001
`
`days after
`20
`an answer to the complaint which is served on you with this summons, within
`service of this summons on you, exclusive of the day of service. If you fail to do so, judgment by
`default will be taken against you for the reliefdemanded in the complaint. Any answer that you serve
`on the parties to this action must be filed with the Clerk of this Court within a reasonable period of
`time after service.
`
`.
`
`Stephan Harris . Q cf2~§|§)%
`
`
`CLERK
`.
`‘
`DATE
`
`

`
`
`
`
`
`-
`
`_
`
`Johnna Galik" .
`
`63‘?
`
`(By) DEPUTY CLERK
`NAO440 (Rev. 8/01)‘ Summons in a Civil Case.
`
`RETURN OF SERVICE
`
`NAME OF SERVER (PRINT)
`
`TITLE
`
`Check one box below to indicate appropriate method of service
`
`0 Served personally upon the defendant. Place where served:
`
`
`
`
`
`
`
`
`
`
`
`
`Cl Lefi copies thereof at the defendant's dwelling house or usual place of abode with a person of suitable age and
`discretion then residing therein.
`
`Name of person with whom the summons and complaint were left:
`
`CI Returned unexecuted:
`
`D Other (specify):
`
`»
`
`STATEMENT OF SERVICE FEES
`
`V DECLARATION OF SERVER
`
`"’”‘
`
`
`
`

`
`Executed on
`
`Signature of Server
`
`I declare under penalty of perjury under the laws of the United States of America that the foregoing infonnation
`contained in the Return of Service and Statement of Service Fees is true and correct.
`
`Address of Sewer
`
`(1) As to who may serve a summons see Rule 4 of the Federal Rules of Civil Procedure.
`
`

`
`%AO440 (Rev. 8/01) Summons in a Civil Case
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF WYOMING
`
`PATRICK HENRY, DINAH HENRY,
`the UNITED ISRAEL CHURCH and
`
`,.
`
`SUMMONS IN A CIVIL CASE
`
`Case Number;
`
`@
`
`‘
`
`T ‘H’
`
`‘='
`
`.4:
`
`<-’
`
`UIC,
`Plaintiff(s),
`
`V.
`
`PRO 10 ORIGINALS, LLC and
`GERALD R. DOERR
`
`Defendant(s).
`
`TO:
`
`Gerald R. Doerr
`
`1263 Lane 14
`
`P.O. Box 39
`
`Worland, Wyoming 82401-9565
`
`YOU ARE HEREBY SUMMONED and required to serve on PLAINTIFF'S ATTORNEY (name
`and address)
`
`Timothy C. Kingston
`Graves, Miller & Kingston, LLC.
`408 West 23"’ Street, Suite 1
`Cheyenne, Wyoming 82001
`
`days after
`20
`an answer to the complaint which is served on you with this summons, within
`service of this summons on you, exclusive of the day of service. If you fail to do so, judgment by
`default will be taken against you for the reliefdemanded in the complaint. Any answer that you serve
`on the parties to this action must be filed with the Clerk of this Court within a reasonable period of
`time afier service.
`
`Stephan Harris
`
`CLERK
`
`'
`
` «bias oi _
`DATE
`
`
`
`y
`
`

`
`R
`
`Johnna Galik
`
`(By) DEPUTY CLERK
`
`Q/X0440 (Rev. 8/01) Summons in a Civil Case
`
`
`
`NAME OF SERVER (PRINT)
`
`%(
`
`we
`TITLE
`
`
`
`Check one box below to indicate appropriate method of service
`
`D Served personally upon the defendant. Place where served:
`
`
`
`
`Cl Left copies thereof at the defendant's dwelling house or usual place of abode with a pexson of suitable age and
`discretion then residing therein.
`
`Name of person with whom the summons and complaint were left:
`
`0 Returned unexecuted:
`
`C] Other (specify):
`
`
`
`
`
`
`STATEMENT OF SERVICE FEES
`
`DECLARATION OF SERVER
`
`‘°”‘
`
`
`
`
`
`

`
`Executed on
`
`Signature of Server
`
`I declare under penalty of perjury under the laws of the United States of America that the foregoing information
`contained in the Return of Service and Statement of Service Fees is true and correct.
`
`Address of Sewer
`
`(1) As to who may.serve a summons see Rule 4 ofthe Federal Rules of Civil Procedure.
`
`

`
`Timothy C. Kingston
`Graves, Miller and Kingston
`408 West 23rd Street
`Cheyenne, Wyoming 82001
`(307) 638-8885
`ldngston@rockymtn1aw.com
`Attorney for Plaintifis
`«
`.
`.
`
`.
`
`-
`
`FILED
`u.s. DISTRICT COURT
`D’STR'CT OF WYOMWG
`MM 2 3 2593
`
`Stephan Harris, Clerk
`Cheyenne
`
`UNITED STATES DISTRICT COURT
`
`FOR 'I'I-IE DISTRICT OF WYOMING
`
`Case
`
`
`
`) ) 3
`
`3
`
`) ) ) )
`
`)
`
`PATRICK HENRY, DINAH HENRY,
`the UNITED ISRAEL CHURCH and UIC,
`
`Plaintiffs,
`
`vs.
`
`PRO 10 ORIGINALS, LLC and
`GERALD R. DOERR
`
`Defendants.
`
`COMPLAINT
`
`Plaintiffs, Patrick Henry, Dinah Henry, and the United Israel Church and UIC, by and through
`
`their attorney, Timothy C. Kingston ofGraves, MillerandKingston, hereby state fortheir Complaint
`as follows.
`I
`
`PARTIES
`
`1.
`
`Plaintiff United Israel Church is a church located in the state of Wyoming. It is an
`
`unincorporated association with members in this state.
`
`_
`
`2.
`
`PlaintiffUIC is an unincorporated entity and is affiliated and associated with UIC.
`
`Henceforth, the United Israel Church and UIC will collectively be referred to as “UIC”.
`
`A
`
`1
`
`

`
`3.
`
`Patrick and Dinah Henry are residents ofthe state of Wyoming. They are members,
`
`as well as officers and directors of UIC,
`
`4.
`
`Defendant Pro 10 Originals, LLC (“Pro 10") is a Wyoming limited liability company
`
`doing business in the state of Wyoming.
`
`5.
`
`On information and belief, Defendant Gerald R. Doerr is the managing member or
`
`an officer and director of Defendant Pro 10.
`
`JURISDICTION AND VENUE
`
`6.
`
`« This Court has jurisdiction over this case pursuant to 15 U.S.C. § 1121, 28 U.S.C. §
`
`1331, and 28 U.S.C. § l338(a) as this action arises under the Trademark Laws ofthe United States.
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`7.
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`This Court has supplemental and ancillary jurisdiction over the state law claims of
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`this Complaint pursuant to 28 U.S.C. § l367(a).
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`8.
`Defendant Pro Ten is doing business in the state of Wyoming and elsewhere. Venue
`is proper in this Districtpursuantto 28 U.S.C. § 1391(b), based on the regular and ongoing business
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`activities of the Defendant involving the subject trademark in the state of Wyoming. Further, the
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`matters at issue in this Complaint took place, to a substantial part, in this state.
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`9.
`
`On information and belief, Defendant Gerald R. Doerr is a resident of the state of
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`Wyoming.
`
`FACTS
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`10.
`
`The Plaintiffs, whether as the individual Plaintiffs or acting by and through the
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`Plaintiff entity UIC, have manufactured and distributed a multipurpose medicated antibacterial,
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`analgesic balm, and mentholated salve for many years. Since at least April of 1982, they have
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`manufactured and marketed the product under the mark “UNKER’_S”. _
`
`2
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`

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`11.
`
`On April 17, 2006, the Plaintiffs filed a trademark application in the United States
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`Patent and Trademark Office for the UNKER’S mark for “Liquid soap, bars of soap, body mist, lip
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`balm, lip protector, and lip enhancer” in IC 003. The application also sought trademark protection
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`for the UNKER’S mark for “multipurpose medicated antibacterial cream, analgesic balm and
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`mentholated salve, medicated lip balm” in IC 105 (hereafter “Application”). The Application was
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`assigned United States Trademark Application No. 78/862,497. The Application set forth a date of
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`first use and date of first use in commerce of the UNKER’S mark for the manufacture and
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`distribution ofthe Plaintiffs’ products described above ofApril of l 982. _S_§_e Plaintiffs’ Application,
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`« attached hereto as Exhibit 1.
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`12.
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`The Plaintiffs have sole and exclusive rights to use the UNKER’ S mark in connection
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`with the goods shown in the above-described Trademark Application.
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`13.
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`The Plaintiffs are also the owner of common law rights in the UNKER’S mark by
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`virtue ofcontinuous use ofthe mark since at least April of 1982. For the past 26 years, the Plaintiffs
`have used the mark to identifytheir various personal care products, During this time, the UNKER’S
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`mark has become imbued with goodwill and renown, exclusively associated with UIC and the
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`individual Plaintifis.
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`14.
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`The Defendants are also engaged in the business ofmarketing personal care products.
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`The personal care products marketed by the Defendants include salves, balms, creams, and other
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`products that are virtually identical to those marketed by the Plaintiffs. E Side-by—Side
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`Comparison of parties’ products, attached hereto as Exhibit 2.
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`15.
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`On October 12, 2006, the Defendants filed a trademark application in the United
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`States Patent and Trademark Office for a mark designated as “UNKER’S” for “medicated salve,
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`3
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`

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`spray and liquid for arthritic pain, bug bits, allergies, minor burns, cuts and dry skin” in IC 005. The
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`Defendants’ application was assigned Serial No. 77/019,566, with an asserted and alleged date of
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`first use and date of first use in commerce of January of 2(l00.
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`_S_e_e Defendants’ Application,
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`attached hereto as Exhibit 3.
`
`’
`
`16.‘
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`The Defendants advertise, market, and sell
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`their products under the name
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`"UNKER’S” (hereafter the “Infringing Designation”). For example, the Defendants operate a
`website thatprominently featuresthe InfringingDesignation inthe marketing oftheirproducts. _S_e_e
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`‘Copy of Defendants’ Web Page, attached hereto as Exhibit 4.
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`17.
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`Also, as shown in Exhibit 2 and otherwise, the Defendants intentionally and
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`deliberately use the Infringing Designation on labels, signs, prints, packages, Wrappers, receptacles
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`and advertisements in their marketing and sales of their products.
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`18.
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`The Plaintiffs have never transferred or assigned the UNKER’S mark to the
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`Defendants or to any other person or entity.
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`19.
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`, Since at least April 10, 2001, the Plaintiffs have demanded that the Defendants stop
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`using the Infringing Designation.
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`20.
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`However, the Defendants have refused to stop using the Infringing Designation in
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`their business and continue to use the Infringing Designation to the date of the filing of this
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`Complaint in the manner described above.
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`FIRST CLAINI FOR RELIEF-TRADEMARK INFRINGEMENT IN VIOLATI'0'N‘OF‘l5
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`" "T
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`'
`
`U.S.C. § 1114(1)
`
`21.
`
`The Plainu'fl’s hereby reallege paragraphs 1-20 ofthis Complaint as if fully set forth
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`'
`
`herein.
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`

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`22.
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`Title 15 U.S.C. § 1114(1) provides:
`
`(1)
`
`Any person who shall, without consent of the registrant-
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`(a) use in commerce any reproduction, counterfeit, copy, or colorable
`imitation of a registered mark in connection with the sale, ofiering for sale,
`distribution, or advertising of any goods or services on or in connection with
`such use is likely to cause contusion, or to cause mistake, or to deceive; or
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`(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and
`apply such reproduction, counterfeit, copy, or colorable imitation to labels,
`signs, prints, packages, wrappers, receptacles or advertisements intended to
`be used in commerce upon or in connection with the sale, offering for sale,
`distribution, or advertising ofgoods or services on or in connection with such
`use is likely to cause confusion, or to cause mistake, or to deceive,
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`shall be liable in a civil action by the registrant for the remedies hereinafter provided.
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`23.
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`As set forth above, the Defendants have purposefully and intentionally used the
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`Infringing Designation in the marketing and distribution oftheir products. The Defendants’ use of
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`the Iniiinging Designation has “been committed with knowledge that such imitation is intended to
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`be used to cause confusion, or to cause mistake, or to deceive” within the meaning of 15 U.S.C. §
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`1 1 14(1).
`
`24.
`
`The Defendants’ use ofthe Infringing Designation in connection with personal care
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`products and otherwise is likely to cause confusion, to cause mistake, or to deceive in violation of
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`15 U.S.C. § 1114(1).
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`25.
`
`The Defendants’ use ofthe Infringing Designation in connection with personal care
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`products and otherwise has caused confusion, has caused mistake, and has deceived consumers and
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`the trade, in violation of 15 U.S.C. § 1114(1).
`
`26.
`
`The Defendants’ acts as described in this Complaint were committed willfully,
`
`knowingly, maliciously, and in conscious disregard oftheir legal obligations to the 1.-"laintiffs.
`
`5
`
`

`
`27.
`
`The Defendants’ acts as described in this Complaint have caused and, unless
`
`restrained by the Court, will continue to cause immediate, great, and irreparable harm to the
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`Plaintiffs’ property and business.
`
`28.
`
`29.
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`The Plaintiffs have no adequate remedy at law.
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`The Defendants are liable to the Plaintiffs for their infringement of the Plaintiffs’
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`rights in the UNKER’S mark and for their violation of 15 U.S.C. § 1114(1).
`
`SECOND CLAIM FOR RELIEF—TRADEMARK INFRINGEMENT IN VIOLATION or
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`l5»U.S.C. § 1125(a)
`
`30.
`
`The Plaintiffs hereby reallege paragraphs 1-29 of this Complaint as if fully set forth
`
`herein.
`
`31.
`
`Title 15 U.S.C. § 1125(a) provides:
`
`(1)
`
`Any person who, on or in connection with any goods or services, or any
`container for goods, uses in commerce any word, tenn, name, symbol, or
`device, or any combination thereof, or any false designation of origin, false
`ormisleading description offact, or false or misleading representation offact,
`which-
`
`(a) is likely to cause confusion, or to cause mistake, or to deceive as to the
`affiliation, connection, or association of such person with another person, or
`as to the origin, sponsorship, or approval of his or her goods, services or
`commercial activities by another person,
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`shall be liable in a civil action by any person who believes that he or she is likely to
`be damaged by such act.
`
`A 32.
`
`The Defendants’ use ofthe Infiinging Designation in connection with personal care
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`products and otherwise is likely to cause confiision, or to cause mistake, or to deceive, in violation
`
`of15U.S.C. § 1125(a).
`
`.
`
`

`
`33.
`
`The Defendants’ acts as described in this Complaint were committed willfitlly,
`
`I knowingly, maliciously, and in conscious disregard of its legal obligations to the Plaintiffs.
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`34.
`
`The Defendants’ acts as described in this Complaint have caused and, unless
`
`restrained by the Court, will continue to cause immediate, great, and irreparable harm to the
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`Plaintiffs’ property and business.
`
`35.
`
`The Plaintiffs have no adequate remedy at law.
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`36.
`
`The Defendants are liable to the Plaintiffs for their infringement of the Plaintiffs’
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`rights in the UNKER’S mark and for their violation of 15 U.S.C. § 1l25(a).
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`THIRD CLAIM FOR RELIEF-PENDENT JURISDICTION—VIOLATION OF STATE
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`TRADEMARK LAW
`
`37.
`
`The Plaintiffs hereby reallege paragraphs 1-36 of this Complaint as if fully set forth
`
`herein.
`
`38.
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`The Wyoming Trademarks and Service Marks Act prohibits a person or entity from
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`using a mark that infringes upon another’s prior rights to and ownership in a trademark. The Act
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`further prohibits and provides a private right of action against any person or entity whose infringing
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`use of a trademark, or any reproduction, copy, counterfeit, or colorable imitation of a mark, is likely
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`to cause confusion or mistake or to deceive as to the source of origin or goods and services. Wyo.
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`Rev. Stat. §§ 40-1-101-116.
`
`39.
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`The Defendants’ use of the Infringing Designation in connection with personal care
`
`products and otherwise is likely to cause confilsion, or to cause mistake, or to deceive, in violation
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`ofWyo. Rev. Stat. §§ 40-1-101-116.
`
`

`
`40.
`
`The Defendants’ acts as described in this Complaint were committed willfully,
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`knowingly, maliciously, and in conscious disregard of their legal obligations to the Plaintiffs.
`
`41.
`
`The Defendants’ acts as described in this Complaint have caused and, unless
`
`restrained by the Court, will continue to cause immediate, great, and irreparable harm to the
`
`Plaintiffs’ property and business.
`
`42.
`
`The Plaintiffs have no adequate remedy at law.
`
`43.
`
`The Defendants are liable to the Plaintiffs for their infiingement of the Plaintiffs’
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`rights in the UNKER’S mark and for their violation of Wyo. Rev. Stat. §§ 40-1-101-116.
`
`PRAYER FOR RELIEF
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`WHEREFORE,
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`A.
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`A preliminary and permanent injunction preventing the Defendants and their officers,
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`agents, servants, employees, attorneys and all other persons in active concert with
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`them, from:
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`1.
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`Using, reproducing, advertising, or promoting the Infringing Designation in
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`connection with the offer or sale of any goods, the use ofany domain name,
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`the rendering of any service, or any commercial activity.
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`2.
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`Using, reproducing, advertising, or promoting any mark or URL that is
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`confiising similar to, or a colorable imitation of, any ofthe Plaintiffs’ marks.
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`3;
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`Using, reproducing, advertising, or promoting any mark or name that may be
`
`calculated to represent or that has the effect ofrepresenting that the products
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`or services ofthe Defendants are sponsored by, authorized by, or in some way
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`~ associated with the Plaintiffs.
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`

`
`Using, reproducing, advertising, or promoting in connection with any product
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`or service the name, mark, or URL UNKER’S or any name, mark, or URL
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`confusingly similar therewith.
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`Injuring the commercial reputation, renown or goodwill of the Plaintiffs or
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`the Plaintiffs’ UNKBR’S mark.
`
`I
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`Using or reproducing any work, term, name, symbol, or device, or any
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`combination thereof, which confuses or falsely represents or misleads, is
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`calculated to confuse, falsely misrepresent or mislead, or which has the effect-
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`of confiising, falsely presenting or misleading, that the activities of the
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`Defendants or another are in some way connected with the Plaintiffs, or are
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`sponsored, approved, or licensed by the Plaintiffs.
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`7.
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`Otherwise unfairly competing with the Plaintiffs.
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`B.
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`An Order barring the Defendants from applying to register, registering, or
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`maintaining any URL that contains the Plaintiffs’ mark or confusingly similar marks
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`or combinations.
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`An Oder barring the Defendants from applyingto register, registering, or maintaining
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`any trademark that contains the UNKER’s mark or confusingly similar marks or
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`combinations.
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`An accounting to determine the Defendants’ sales and profits in connection with its
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`sales of products or services identified by the Infringing Designation, or use by the
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`4 Defendants of any mark, badge, or designation likely to be confiised with the
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`foregoing and an award to the Plaintiffs for such sales and_profits.
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`

`
`E.
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`An award of compensatory damages arising out of Defendants’ infiingement and
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`trebling of those damages as provided by 15 U.S.C. § 1117.
`
`F.
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`An award ofcompensatory damages as allowed under the Wyoming Trademarks and
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`Service Marks Act.
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`_G.
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`An award of the Plaintiffs’ attorney’s fees and costs incurred in the bringing of this
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`action as allowed under 15 U.S.C. § 1117.
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`H.
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`And for whatever other relief allowed by law and deemed appropriate by the Court.
`
`Date: May 28, 2008.
`
`PATRICK HENRY, DINAH HENRY, and
`UNITED ISRAEL CHURCH and UIC,
`Plaintiffs
`
`
` TIMOTHY C. KINGST
`
`Attorney for Plaintiffs
`Graves, Miller and Kingston
`408 West 23rd Street
`
`« Cheyenne, WY 82001
`(307) 638-8885
`kjngston@rockymtn1aw.com
`
`

`
`Plaintiffs Application
`
`EXHIBIT 1
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`

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`Latest Status Info
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`..
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`Page 1 0f3
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`Thank you for your request. Here are the latest results from the 7w_e,,b §9_ITV.’,§.lf.-
`
`This page was generated by the TARR system on 2008-05-09 20:04:45 ET
`
`Serial Number: 78862497 Assignment Informatio1_1
`Registration Number: (NOT AVAILABLE)
`
`Trademark Document Retr_i_eya_l
`A
`
`Mark
`
`
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`(words only): UNKER'S
`
`Standard Character claim: Yes
`
`Current Status: An opposition is now pending at the Trademark Trial and Appeal Board.
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`Date of Status: 2007-06-14
`
`Filing Date: 2006-04-17
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`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 104
`
`Attorney Assigned:
`FINNEGAN TIMOTHY J
`
`Current Location: 650 -Publication And Issue_Section
`
`Date In Location: 2007-04-09
`
` ‘
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. UIC
`
`Address:
`UIC
`
`P.O. Box 440 637 Pine St.
`
`Upton, WY 82730
`United States
`
`httnt//tarnusnto.gov/servlet/farr‘?reoser=seri21Rmnh~v=7RR6?4Q’7
`
`-
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`4/0/70052
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`

`
`Latest Status Info
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`.
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`Page 2 Of 3
`
`Legal Entity Type: Uninc. Association
`State or Country Where Organized: Wyoming
`
`
`G(.)H0DS AND/OR SERVICES
`
`International Class: 003
`Class Status: Active
`
`Liquid soap, bars of soap, body mist, lip balm, lip protector, and lip enhancer
`Basis: 1(a)
`First Use Date: 1982-04-00
`First Use in Commerce Date: 1982-04-00
`
`International Class: 005
`Class Status: Active
`Multipurpose medicated antibacterial cream, analgesic balm and mentholated salve; medicated lip balm
`Basis: 1(a)
`'
`First Use Date: 1982-04-00
`
`First Use in Commerce Date: 1982-04-00
`
`
`
`ADDITIONAL INFORMATION
`
`(NOT AVAILABLE)
`
`
`
`0 MADRID PROTOCOL INFORMATION
`
`(NOT AVAILABLE)
`
`
`
`PROSECUTION HISTORY
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document
`Retrieval" shown near the top of this pag