Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA205758
`ESTTA Tracking number:
`04/18/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91179853
`Plaintiff
`Miss World Limited
`Alicia Morris Groos
`Fulbright & Jaworski L.L.P.
`600 Congress Avenue, Suite 2400
`Austin, TX 78701
`UNITED STATES
`aotrademark@fulbright.com, agroos@fulbright.com, kpfertner@fulbright.com,
`cgarner@fulbright.com
`Motion to Suspend for Civil Action
`Chet Garner
`cgarner@fulbright.com, acallahan@fulbright.com, rgroos@fulbright.com,
`aotrademark@fulbright.com, agroos@fulbright.com, ebean@fulbright.com
`/chet garner/
`04/18/2008
`Motion to Suspend.pdf ( 4 pages )(81117 bytes )
`Exhibit A.pdf ( 24 pages )(633101 bytes )
`Exhibit B.pdf ( 6 pages )(136405 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of Application Serial No.: 78/564,133
`Mark: MS. WORLD
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`Filed: February 9, 2005
`Published in the Official Gazette at TM 1085 on June ()5, 2007
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`MISS WORLD LIMITED,
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`Opposer,
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`V_
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`EFFIE HORNING,
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`Applicant.
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`Opposition No. 91 179853
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`MOTION FOR SUSPENSION OF PROCEEDINGS
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`Opposer, Miss World Limited (“Miss World”), hereby requests, pursuant to Trademark
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`Rule 2.1 1(a), 37 C.F.R. § 2.1 17(a), suspension of the above-identified opposition proceeding (the
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`“Opposition”) until such time as there is. a final ruling in the civil case Miss World Limited v.
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`Phoenix Pyre Productions and Eflie Homing currently pending in the United States District
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`Court for the Southern District of California (“the Lawsuit”). A copy of the complaint in the
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`Lawsuit is attached as Exhibit A.
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`The Opposition is currently suspended pending disposition of a “Motion for Summary
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`Judgment or Alternatively to Compel Discovery” filed by the Applicant, Ms. Effie Homing, on
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`April 16, 2008 (“Applicant’s Motion”). This document is relevant to AppIicant’s Motion—and
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`therefore may be filed at this time———because the filing of the Lawsuit and the suspension
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`requested herein supersedes Applicant’s Motion and renders it moot and irrelevant. Moreover,
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`this document is also relevant to Applicanfs Motion as granting this request will dispense of
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`Miss World’s need to prepare and file a response to App1icant’s Motion.
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`7028661 8.]
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`

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`On April 17, 2008, Miss World filed the Lawsuit against Applicant and a business entity
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`affiliated with Applicant named Phoenix Pyre Productions (collectively, “Defendants”), in order
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`to finally resolve all issues between the parties, including both the use and registrability of the
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`“MS. WORLD” mark. The Lawsuit involves all of the parties, marks, and issues currently
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`before the Board in the Opposition. Central to the Lawsuit is the issue of whether the “MS.
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`WORLD” mark is confusingly similar to and dilutive of Miss World’s registered MISS WORLD
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`mark. These exact issues are currently pending before the Board in the Opposition. See Notice
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`of Opposition 111] 12-13 (copy attached as Exhibit B).
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`The District Court’s findings in the Lawsuit will be binding on the Board and will fully
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`resolve the Opposition. As such, failure to stay the Opposition would force the parties to
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`duplicate their efforts and litigate the same issues twice. Further, it would present the possibility
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`of potentially inconsistent opinions, and would waste the valuable judicial resources of both the
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`Board and District Court.
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`While the issue of suspension falls within the discretion of the Board, the TTAB Manual
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`of Procedure notes that “0ra’z'narz'Zy, the Board will suspend proceedings in the case before it if
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`the final determination of the other proceeding will have a bearing on the issues before the
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`Board.” . TBMP § 5l0.02(a) (emphasis added). Similarly, Trademark Rule 2.1l7(a) states that:
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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 tennination of the civil action or the other Board
`proceeding.
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`37 CRF 2.117(a).
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`In summary,
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`it
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`is standard practice for any opposition proceeding to be
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`suspended if a lawsuit “will have a bearing on the issues before the Board.” TBMP § 510.02(a); -
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`General Motors Corp. v. Cadillac Club Fashions, Inc. 22 USPQ.2d 1933, 1937 (TTAB 1992)
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`702866181
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`

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`(suspending proceedings in a cancellation proceeding when a decision by a district court in a
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`lawsuit would “be dispositive of the issues before the Board”). Far from merely having “a
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`bearing” on the issues before the Board, the Lawsuit will be dispositivelof all issues currently
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`pending before the Board in the Opposition.
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`For the foregoing reasons, Opposer requests that the Board suspend all proceedings in the
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`Opposition pending final resolution of the Lawsuit.
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`Respectfully submitted,
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`Dated:
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`I
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`3 03
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`By:
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`C/K/-—‘\’ <‘:)‘*-"'\-)“'>‘
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`Richard J. Groos
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`C. Ashley Callahan
`Chet F. Garner
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`FULBRIGHT & JAWORSKI L.L.P.
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`2400 One American Center
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`600 Congress Avenue
`Austin, Texas 7870l—3248
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`(512) 474-5201
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`ATTORNEYS. FOR MISS WORLD LIMITED
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`702866] 3.1
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing Motion for Suspension of
`Proceedings was served on counsel for Applicant, Erik M. Pelton & Associates, PLLC, via first
`class mail on April
`I3 , 2008 at the following address:
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`Erik M. Pelton & Associates, PLLC
`PO. Box 100637
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`Arlington, VA 22210
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`702866] 3.1
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`

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`
`
`Sarah Silbert (California State Bar No. 198594)
`FULBRIGI-IT a JAWORSKI L.I...P.
`555 South Flower Street
`Forty—First Floor
`Los Angeles, California 90071
`Telephone:
`(213) 892-9200
`Facsimile: (213) 892-9494
`Email: ssilbert@fulbright.corn
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`Richard Groos (pro hac vice motion to be filed}
`C. Ashley Callahan (pro hac vice motion to be filed)
`FULBRIGHT & JAWORSKI L.L.P.
`600 Congress Avenue
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`Suite 2400
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`081iP]g I
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`7 P
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`_ D
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`Enurzr
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`Attorneys forPlaintiff
`1 1
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`1,, Miss WORLD LIMITED
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE SOUTHERN DISTRICT OF CALIFORNIA
`-I5
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`Austin, TX 78701-2978
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`I Telephone: (512) 474-5201
`Fac_simile:' (-512) 536-4598
`Email: ,rgroos@fulbright.com
`acaliahan@fulbri ght._com
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`I,
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`,
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`_,,?
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`can [Action No.
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`9
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`) COMPLAINT FOR TRADEMARK
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`INFRINGEMENT; TRADEMARK
`) DILUTION; VIOLATION OF
`I ANTICYBERSQUATTING
`CONSUMER PROTECTION ‘ACT;
`.)
`UNFAIR COMPETITION; AND
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`j UNJUST ENRICHMENT
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`ll...n._..................m.........».......................I..
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`.
`A
`15 MISS WORLD LIMITED, a foreign company, —
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`Plaintiff,
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`V.
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`.
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`9 PHOENIX PYRE PRODUCTIONS, a general
`_ proprietorship,-and e
`EFFIE HORNING, an individual,
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`Defendant.
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`-
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`1.
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`Miss World Limited, the owner of the name and mark MISS WORLD,'appearing
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`through the undersigned counsel, files this complaint against Phoenix Pyre Productions and Effie
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`Homing (collectively “DefendantS”) on the basis of their past and present usage of the name and
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`mark “Ms. World” along with other confusingly similar variations. Plaintiff alleges as follows:
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`COMPLAINT 7
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`JURISDICTION AND VENUE
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`2.
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`This is an action for trademark infringement, dilution, unfair competition, and
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`unjust enrichment under the Trademark Act of 1946, as. amended, l5 U.S.C. § 1051 et seq,
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`(“Lanham Act”) and the laws of the State of California. Accordingly, this Court has subject
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`matter jurisdiction over this action under Section 39 of the Lanham Act, 15 U.S.C. § 1121, and
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`Title 28 of the United States Code, §§ 1331 and 1338, and supplemental jurisdiction over state
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`law claims under 28 U.S.C. § l367(a).
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`3.
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`Additionally, the matter in controversy exceeds the sum or value of $75,000,
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`exclusive of interest and costs, and is between citizens of this state and the citizen of a foreign
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`state. This Court therefore also has subject matter jurisdiction pursuant to 28 U.S.C. § 1332.
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`4.
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`This Court has personal jurisdiction over the Defendants because they are residents
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`of California, have continuing contacts with California, are amenable to service in California, and
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`committed the acts giving rise to Plaintiffs causes of action in California. The exercise of
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`personal jurisdiction over Defendants by this Court is proper under the Due Process Clause of the
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`U.S. Constitution, and all other applicable laws.
`5.
`Venue is proper under 28 U.S.C. § 13910:) because a substantial
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`of the acts
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`and omissions giving rise to this suit took place in this district and division.
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`PARTIES
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`6.
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`Miss World Limited is a foreign company incorporated under the laws of Jersey,
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`Channel Islands, United Kingdom, and having a place of business at 3] Pier Road, St. Helier,
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`Jersey, Channel Islands, United Kingdom.
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`7.
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`On information and belief, Defendant Phoenix Pyre Productions is a general
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`proprietorship owned by Defendant Effie Homing and having its principal place of business
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`located within the Southern District of California.
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`8.
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`On information and belief, Defendant Effie Homing is an individual residing at
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`3888 Cameo Drive, Oceanside, California 92056.
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`p...a
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`COMPLAINT
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`FACTS GIVING RISE TO THIS ACTION
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`A.
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`Miss World Limited and the MISS WORLD Mark
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`9.
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`Miss World Limited is a premier international pageant provider and is the owner
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`. of the name and mark MISS WORLD for beauty competitions and for goods and services related
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`thereto (the “MISS WORLD Mark”).
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`10.
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`Since at Ieast as early as 1951, Miss World Limited, through its predecessors
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`(collectively “Miss World”), has conducted, promoted, and produced the MISS WORLD beauty
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`pageant and competition which is a global event with participants from as many as 107 countries.
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`1].
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`In addition to conducting and promoting its pageants, Miss World also uses its
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`MISS WORLD mark in connection with its philanthropic efforts and has raised large amounts of
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`money for various organizations and causes throughout the world.
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`12.
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`Miss World's MISS WORLD pageant has been held in numerous countries around
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`the world, including in the United States, and is televised in the United States
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`13.
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`In addition to its common law rights, Miss World owns United States Trademark
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`Registration No. 877,221, registered September 16, 1969, for MISS WORLD for “entertainment
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`services-namely, conducting of beauty competitions” in International Class 41 (The “MISS
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`WORLD Registration”).
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`The MISS WORLD Registration is valid and subsisting, and is
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`incontestable under 15 U.S.C. § 1065. A copy of the certificate of registration for this registration
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`is attached as Exhibit A.
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`14.
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`Miss Worid uses its MISS WORLD Mark extensively in various media formats,
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`including on the Internet, to promote its MISS WORLD beauty pageant, and is the owner of the
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`domain “rnissworld.coin.”
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`15.
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`Miss World’s MISS WORLD Mark is recognized and relied upon by the public in
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`California and throughout
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`the United States to identify the MISS WORLD pageant and
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`philanthropic efforts and to distinguish these services from those of others.
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`16.
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`As a result of Miss World’s continuous usage and promotion of the MISS
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`WORLD Mark, Miss World has acquired strong common—Iaw rights along with great and
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`valuable goodwill in the MISS WORLD Mark. As a result, the MISS WORLD Mark has become
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`weli—known and famous in the United States and internationally.
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`B.
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`Defendants’ Unauthorized Activities
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`17.
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`Defendants produce and promote beauty pageants and related modeling contests
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`under various names and marks, inciuding “Ms. World,” “Teen Ms. World,” and other similar
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`variations (collectively, the “Infringing Marks”).
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`18.
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`Defendants’ “Ms. World” pageant is scheduled to be held in Temecula, California
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`on August 2] , 2008 through August 22, 2008.
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`19.
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`Defendants’ “Teen Ms. World” pageant is a separate, but aftiiiated, pageant aimed
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`at attracting teenage girls to compete for the title “Teen Ms. World.” The “Teen Ms. World”
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`pageant is scheduled to take place in the summer of 2008 in the “Great North West.”
`20.
`On or about November 24, 2006, Defendant Homing registered or caused to be
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`registered the domain “msworld.‘oiz.” At the time of the registration of the “rnsworld.biz”
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`domain, Miss Wor1d’s MISS WORLD mark was distinctive and famous. Defendants use the
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`Infringing Marks to promote their competing pageants through the domain “msworidbiz.” A
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`Printout of the homepages from Defendants’ domain is attached as Exhibit B.
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`21.
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`In April 2000, Defendant Effie Homing filed US. application Serial No.
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`78/004,268 to register the mark MS. U.S. & MS. WORLD INTERNATIONAL BEAUTY for
`“Entertainment in the nature of beauty pageants and scholarship competitions.” Miss World
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`opposed this application and was granted a default judgment by the Trademark Trial and Appeal
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`Board against Defendant Homing ordering that this application be refused. Defendant Homing
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`filed no appeal and this application is now abandoned.
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`22.
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`More recently, despite her knowledge of Miss World’s trademark rights,
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`Defendant Effie Homing filed two separate applications to register the mark MS. WORLD with
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`the United States Patent and Trademark Office. Specifically, Defendant Homing filed U.S.
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`Applications Serial Nos. 78/564,133 and 77/075,449 to register the mark “MS. WORLD” for
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`“Entertainment in the nature of beauty pageants, beauty pageant awards shows, spokesmodel
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`talent competitions, and fashion shows” and “Charitable Fund Raising Services” respectively.
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`Printouts from the U.S. TARR database are attached as Exhibit C.
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`23.
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`Miss World has written Defendant Effte Homing multiple times to inform her of
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`Miss World’s trademark rights, and to demand that Defendants stop her use of the Infringing
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`Marks. However, Defendant Homing has simply ignored Miss World’s demands.
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`24.
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`There is no issue as to priority. Miss World’s first use of its MISS WORLD Mark
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`long precedes any date upon which Defendants may rely to claim rights in the Infringing Marks.
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`25.
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`Further, Defendants’ unauthorized use of the Infringing Marks began long after the
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`MISS WORLD Mark became famous.
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`C.
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`Effect of Defendants’ Activities on Miss World and the Public
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`26.
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`Defendants’ unauthorized use of the Infringing Marks in the manner described
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`herein is likely to cause confusion, to cause mistake, and to deceive consumers and potential
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`consumers as to the affiliation, connection, sponsorship or association of Defendants with Miss
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`World, or as to the origin, affiliation, sponsorship, or approval of Defendants’ services by Miss
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`World.
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`27.
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`Defendants’ unauthorized use of the Infringing Marks falsely indicates to the
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`public that Defendants, their business, and their services are affiliated, connected, or associated
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`with Miss World, or are sponsored, endorsed, or approved by Miss World, or are in some manner
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`related to Miss World or its or services.
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`28.
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`Defendants’ unauthorized use of the Infringing Marks causes or is likely to cause
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`dilution of the distinctive quality of the MISS" WORLD Mark.
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`29.
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`Defendants’ unauthorized use of the Infringing Marks enables Defendants to trade
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`on and receive the benefit and goodwill of the reputation of the MISS WORLD Mark, and to gain
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`acceptance for Defendants’ services not solely on Defendants’ own merits.
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`30.
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`Defendants’ unauthorized use of the Infringing Marks impairs Miss World’s
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`ability to control the nature and quality of the services associated with its MISS WORLD Mark,
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`and subjects the valuable reputation and goodwill of the MISS WORLD Mark to the actions of
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`gs
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`31.
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`In addition,
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`should Defendant Horning’s pending applications mature
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`to
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`registration, Miss World will be damaged because the mark “MS. WORLD” is confusingly
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`similar to and dilutive of Miss Wo1'ld’s MISS WORLD Mark and would purport
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`to give
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`Defendant Homing at least prim-afacie evidence of the exclusive right to use the “MS. WORLD”
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`which is inconsistent with Miss World’s prior rights.
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`32.
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`As a result of Defendants’ unauthorized use of the infringing Marks, Defendants
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`are being unjustly enriched at Miss World’s expense.
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`33.
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`Unless these acts of infringement, unfair competition, and unfair and deceptive
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`practices by Defendants are enjoined by this Court, these acts will continue, and will continue to
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`cause irreparable injury to Miss World and to the public, for which there is no adequate remedy at
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`law.
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`34.
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`Finally, Defendants’ activities complained of herein have been malicious,
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`fraudulent, deliberate, willful, intentional, and in bad faith, with full knowledge and conscious
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`disregard of Miss Worid’s rights. In view of the egregious nature of Defendants’ actions, this is
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`I---B KI}
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`. an exceptional case within the meaning of Section 35(a) of the Lanham Act, 15 U.S.C. § 11l7(a).
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`:-----I C\
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`COUNT I: FEDERAL TRADEMARK INFRINGEMENT
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`Miss World repeats the above allegations as if fully set forth herein.
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`The acts of Defendants complained of herein constitute infringement of the MISS
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`35.
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`36.
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`WORLD Mark, Registration No. 877,221, in violation of Section 32 of the Lanham Act, 15
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`B.) CD
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`U.S.C. § 1114.
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`i\) r---
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`COUNT II: FEDERAL UNFAIR COMPETITION
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`37.
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`38.
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`Miss World repeats the above allegations as if fully set forth herein.
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`The acts of Defendants complained of herein constitute unfair competition in
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`violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1 l2S(a)(l )(A).
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`COUNT 111: FEDERAL TRADEMARK DILUTION
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`39.
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`40.
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`Miss World repeats the above allegations as if fully set forth herein.
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`The acts of Defendants complained of herein constitute dilution of the MISS
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`WORLD Mark in violation of Section 43(c) ofthe Lanham Act, 15 U.S.C. § 1 l25(c).
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`-6-
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`COUNT IV: VIOLATION OF ANTICYBERSQUATTING
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`CONSUMER PROTECTION ACT
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`Miss World repeats the above allegations as if fully set forth herein. 2
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`The acts of Defendants complained of herein constitute the registration, trafficking
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`41.
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`42.
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`in and/or use of a domain name that is identical or confusingly similar to or dilutive of Miss
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`World’s MISS WORLD Mark, with a bad faith intent to profit from the mark in violation of the
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`Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d).
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`COUNT V: CALIFORNIA TRADEMARK DILUTION
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`43.
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`44.
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`Miss World repeats the above allegations as if fully set forth herein.
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`The acts of Defendants complained of herein are likely to injure the business
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`reputation of Miss World and/or dilute the distinctive quality of Miss World’s MISS WORLD
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`Mark in violation of Cal. Bus. & Prof. Code § 14330 et seq.
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`COUNT VI: CALIFORNIA UNFAIR COMPETITION
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`45.
`46.
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`Miss World repeats the above allegations as if fully set forth herein.
`The acts of Defendants complained of herein constitute unfair competition in
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`Violation of Cal. Bus. & Prof. Code §§ 17200 et seq.
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`COUNT VII: UNJUST ENRJCHMENT
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`47.
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`48.
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`Miss World repeats the above allegations as if fully set forth herein.
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`Defendants have benefited at Miss World’s expense from Defendants’ wrongful
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`acts and have accepted and retained said benefit in circumstances that would make it inequitable
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`for them to retain said benefits without paying the value thereof.
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`.49.
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`The act of Defendants complained of herein constitute unjust enrichment of
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`Defendants at Miss World’s expense in violation of the common law of the State of California.
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`COUNT VIII: REFUSAL OF U.S. APPLICATION
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`50.
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`Miss World repeats the above allegations as if fully set forth herein.
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`51.
`Miss World believes that
`it will be damaged by the registration of U.S.
`Applications Serial Nos. 78/564,l33 and 77/075,449 for “MS. WORLD” as this mark is
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`confusingiy similar to and dilutive of Miss World’s registered MISS WORLD mark.
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`52.
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`Registration of these applications should therefore be refused pursuant
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`to 15
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`U.S.C. § l052(d) and 15 U.S.C. § 1125(c).
`
`COUNT IX: APPLICATION FOR
`PRELIMINARY AND PERMANENT INJUNCTION
`
`Plaintiff repeats the allegations above as if fully set forth herein.
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`Defendants have damaged Plaintiff, and are continuing to damage Plaintiff, by the
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`53.
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`54.
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`illegal acts complained of herein. Unless Defendants are restrained by this Court, Defendants
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`will cause irreparable injury to Plaintiff for which there is no adequate remedy at law.
`
`PRAYER FOR RELIEF
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`W1-IERIEFORE, Miss World prays forjudgment as follows:
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`1.
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`That Defendants and their officers and directors, agents, servants, employees,
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`attorneys, successors, heirs, and assigns, related companies, and all those acting in concert with or
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`on behalf of Defendants, be preliminarily and permanently enjoined and restrained from:
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`(a)
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`using the names and marks “Ms. Worid” and “Teen Ms. World” in any
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`manner whatsoever, specifically including in connection with any pageant, modeling,
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`philanthropic, and/or beauty-related contests or services;
`(b)
`using any trademark, service mark, trade name, domain name, advertising,
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`internet web page, signage, or other materials that depict, comprise, contain, or consist of
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`any mark, name, or other indicia that is identical to, phonetically similar to, or includes the
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`terms “miss” and “world,” or any other mark or name that is likely to cause confusion
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`with, or which is likely to dilute the distinctive quality of, Miss World’s MISS WORLD
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`Marks, including any formatives thereof incorporating other words, ethnic designations,
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`geographic designations, age designations, or other phonetic or
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`foreign language
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`equivalents of the MISS WORLD Mark, or any marks, names, or domain names that are
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`equivalent to the MISS WORLD Mark in meaning, regardless of language;
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`(c)
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`promoting, advertising, holding, or otherwise continuing in any way with
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`the planned “Ms. World” event currently scheduled to take place in Temecula, California;
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`\O!D0'~JO\LI1-I2:-la-)l\J
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`(d)
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`promoting, advertising, holding, or otherwise continuing in any way with
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`the planned “Teen Ms. World” event currently scheduied to take place in the Summer of
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`2008.
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`(e)
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`otherwise competing unfairly with Miss World in any manner, including,
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`without limitation, (i) unlawfully adopting and/or infringing upon the MISS WORLD
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`Mark, (ii) adopting or using any trademark, trade name, service mark, advertising, or
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`signage similar to the MISS WORLD Mark, and/or (iii) adopting or using any trade name,
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`trademark, service mark, advertising, or signage likely to dilute the distinctive quality of
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`the MISS WORLD Mark;
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`(f)
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`committing any other acts or making any statements calculated, or the
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`reasonably foreseeable consequence of which would be, to infringe, dilute, or tarnish any
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`of Miss Woridis trademark rights, or to confuse, mislead, or deceive consumers as to
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`sponsorship, approval or affiiiation of Miss World by, with, or of Defendants, or to
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`otherwise disparage the MISS WORLD Mark; and
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`(g)
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`conspiring with, aiding, assisting, or abetting any other person or entity in
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`engaging in or performing any of the activities referred to in subparagraphs (a) through
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`(1), above;
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`2.
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`That
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`the Defendants,
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`their officers directors, agents,
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`servants, employees,
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`attorneys, successors, heirs, assigns, related companies, and all those acting in concert with or on
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`behalf of Defendants, be required to deliver to the Court for destruction, or to show proof of said
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`destruction, of any and all displays, signs, circulars, promotional material, advertisements, sales
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`aids, and other matter in the Defendants’ possession, custody, or control which bear or depict the
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`Infringing Marks used in connection with the offering of any pageant or beauty-related services,
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`as well as all means of reproducing, counterfeiting, copying, or otherwise imitating Miss World’s
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`MISS WORLD Mark;
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`3.
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`That Defendants be ordered to remove all existing content from the web sites at
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`“msworld.biz," and from any other web site having a domain name that includes the tenns “miss”
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`and “world,” or that contains infringing content;
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`4.-
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`That Defendants be ordered to transfer to Miss World ownership of the domain
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`name registration for “msworld.biz” and any other domain names owned by Defendants that
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`include the terms “miss” and “world,” or their phonetic or foreign language equivalents;
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`5.
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`That Defendants be prohibited from owning or operating a website at any domain
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`name containing the terms “miss” and “world,” or their phonetic or foreign language equivalents.
`
`6.
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`That Defendants be ordered to file with this Court and to serve upon Miss World,
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`within thirty (30) days after the entry and service on Defendants of an injunction, a report in
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`writing and under oath setting forth in detail the manner and form in which the Defendants have
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`complied with the injunction;
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`7.
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`That Miss World recover all damages it has sustained as a result of Defendants’
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`infringement, dilution, and unfair competition, and that said damages be trebled;
`
`8.
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`9.
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`That Miss World recover statutory damages, pursuant to 15 U.S.C. § ll17(c);
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`That an equitable accounting be directed to determine Defendants’ profits resulting
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`from their infringement and unfair competition,
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`increased as the Court finds just under the
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`circumstances of this case, and that such profits be paid over to Miss World as an equitable
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`remedy;
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`10.
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`That Miss World recover the costs of this action, its reasonable attorney’s fees, and
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`pre-judgment and post-judgment interest;
`
`11.
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`That Defendant Homing be ordered to withdraw and abandon her pending U.S.
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`Applications Serial Nos. 78/564,133 and 77/075,449 and accept judgment in the oppositions
`
`against
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`these applications and that
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`this Court order that
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`these applications he denied and
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`abandoned pursuant to the provisions of the Lanham Act and 15 U.S.C. § I I 19; and
`
`u—n
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`S‘-000\JG\U:43U3l\J
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`:A
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`;._n
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`5 w
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`as U-J
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`3--L -IL
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`:—I- LN
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`r-- ON
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`-T:
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`r-d 00
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`---~ KO
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`i\} G
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`l\3 I-—-
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`1019
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`{\JU.)
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`1045-
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`l\3 U1
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`{*3 ON
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`IN) -xi
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`12.
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`That Miss World recover such other and further relief as this court may deem just
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`and proper.
`
`Dated: April 17, 2008
`
`FULBRIGHT & JAWORSKI L.L.P.
`
`Byi -* /I
`
`djfjv.
`
`Sarah Silbert (SEN 198594)
`Richard Groos (TX Bar No. 08529100)
`pro hac vice motion to be filed
`C. Ashley Callahan (TX Bar No. 24027545)
`pro hac vice motion to be filed
`
`Attorneys for Plaintiff
`MISS WORLD LIMITED
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`TABLE OF CONTENTS FOR EXHIBITS
`
`Page(s)
`
`1. Exhibit A ......................................................................................................... ..l2
`
`2. Exh1'bitB ......................................................................................................... ..}3
`
`3. ExhibitC ......................... ..'. ....................................................................... .. 14-19
`
`

`
`EXHIBIT A
`
`

`
`
`
`LIMITED
`MISS WORLD (JERSEY)
`(UNITED KINGDOM COMPANY)
`ORDNANCE HOUSE
`31 PIER. ROAD
`JERSEY. CHANNEL IS-
`ST. HELIER,
`LANDS. ASSIGNEE BY ASSIGNMENT
`AND CHANGE OF NAME MECCA
`LIMITED {GREAT BRITAIN CORPO-
`RATION) LONDON SE. 1. ENGLAND
`
`In ‘testimony’ whereof I have hereunto set my hand
`and caused the seal of The Patent and Trademark
`Office to be a_f]"txea' on Apr. 3, 1990.
`
`COMMISSIONER OF PATENTS AND TRADEMARKS
`
`Exhibit A
`12
`
`Int. CL: 4-1
`
`Prior U.S. CL: 107
`
`Reg. No. 877,221
`United States Patent and Trademark Office
`Registered Sap. 16, 1969
`10 Year Renewal
`Renewal Approved Feb. 20, 1990
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`M ISS WORLD
`
`IN CLASS :01 _(INT.
`
`COMPETITIONS.
`CL. 4:).
`FIRST USE. 7-1495}: IN COMMERCE
`11-1-1951.
`
`SER. NO. 72-195,043, FILED 4-5-1968.
`
`FOR: ENTERTAINMENT SERVICES-
`NAMELY. CONDUCTING OF‘ BEAUTY
`
`

`
`EXHIBIT B
`
`

`
`

`
`EXHIBIT C
`
`

`
`Latest Status Info
`
`Page 1 of3
`
`Thank you for your request. Here are the latest results from the '_l‘A__I_{_R web__se_r_ver._
`
`This page was generated by the TARR system on 2008-04-17 |4:46:06 ET
`
`Serial Number: 78564133 Assignment _lnfo1_'mation
`
`'i"rade1nark Document Retrieval
`
`Registration Number: (NOT AVAILABLE)
`
`Mark
`
`Ms. W'or.ld
`
`(words only): MS. WORLD
`
`Standard Character claim: Yes
`
`Current Status: An opposition is now pending at the Trademark Trial and Appeal Board.
`
`Date of Status: 2007- I 0-03
`
`Filing Date: 2005-02-09
`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 106
`
`Attorney Assigned:
`MICKLEBURGH LINDA BOHANNON
`
`Current Location: 650 ~Pub1ication And Issue Section
`
`Date In Location: 2007-05-01
`
`LAST APPLICANT{S}lOWNER(S) OF RECORD
`
`1. Effie Homing
`
`Address:
`
`Effie Homing
`3888 Cameo Dr.
`
`Oceanside, CA 92056
`United States
`
`Legal Entity Type: lndividual
`
`http:/ftarr.uspto.gov/servlet/tarr?regseFserial&entry=785643 33
`
`Exmbgt c
`14
`
`04/I 7/2008
`
`

`
`Latest Status in to
`
`Page 2 of 3
`
`Country of Citizenship: United States
`Phone Number: (760) 630-7063
`Fax Number: (760) 630-7063
`
`International Class: 04l
`Class Status: Active
`
`GOODS AND/OR SERVICES
`
`Entertainment in the nature ofbeauty pageants, beauty pageant awards shows,spokesmodel talent competitions, and
`fashion shows
`
`Basis: l(a)
`First Use Date: 1999-04-15
`First Use in Commerce Date: |999—04- I 5
`
`Section 2.(l)
`
`(NOT AVAILABLE)
`
`ADDITIONAL INFORMATION
`
`MADRID PROTOCOL INFORMATION
`
`PROSECUTION HISTORY
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document Retrieval" shown
`near the top of this page.
`
`2007-10-03 - Opposition instituted for Proceeding
`
`2007-06-29 - Extension Of Time To Oppose Received
`
`2007-06-05 - Published for opposition
`
`2007-05-16 — Notice of publication
`
`2007-04-04 - Law Office Publication Review Completed
`
`2007-04-04 - Assigned To LIE
`
`2007-03-13 - Approved for Pub - Principai Register (initial exam)
`
`2007-02-15 — Jurisdiction Restored To Examining Attorney
`
`2006-I2-l 5 - Ex parte appeal - instituted
`
`2006-i2—l 5 - EXPARTE APPEAL RECEIVED AT TTAB
`
`2006-06-28 - Final refusal e-mailed
`
`2006-06-28 - Final Refusal Written
`
`‘ http://tarr.1.:spto.gov/servlet/tarr?regser=seriai&entry=78564 I33
`
`Exhibit C
`15
`
`04/17/2008
`
`

`
`Latest Status Info
`
`Page 3 of 3
`
`2006-05-04 - Amendment From Applicant Entered
`
`2005-10-I7 - Communication received from applicant
`
`2005-10-17 - PAPER RECEIVED
`
`2005-09-1 I - Non-finai action e—maiIed
`
`2005-09-I 1 - Non-Fina! Action Written
`
`2005-09-07 - Assigned To Examiner
`
`2005-02-22 - New Application Entered In Tram
`
`ATTORNEYICORRESPONDENT INFORMATION
`
`Attorney of Record
`ERIK M PELTON
`
`Correspondent
`ERIK M PELTON
`
`ERIK M PELTON, ATTORNEY AT LAW
`PO BOX 100637
`
`ARLINGTON, VA 22210
`Phone Number: 703-525-8009
`Fax Number: 703-525-8089
`
`http://tarr.uspto.g0v/servlet/tarr?regser=serial&entry=78564 I 33
`
`Exhibit C
`16
`
`04/ I 7/2008
`
`

`
`Latest Status Info
`
`Page ] of}
`
`Thank you for your request. Here are thellatest resuits from the IA_B_R..W.c.b:._St:rYcr.
`
`This page was generated by the TARR system on 2008-04- i 7 |4:47:20 ET
`
`Serial Number: 77075449 (3.-_§_$:i_g_11/|1§|_i-.‘»I'l:l._,,lJ1fQ1':11"1E1T-iUITI
`
`T::a..c.l_e.1na.r_k_.]2ognrnentiietrigrvall.
`
`Registration: Number: (NOT AVAILABLE)
`
`Mark
`
`MS. WORLD
`
`(words only): MS. WORLD
`
`Standard Character claim: Yes
`
`Current Status: Finai review prior to publication has been completed, application will be published for opposition.
`
`Date of Status: 2008-03-19
`
`Filing Date: 2007-01-03
`
`The Information will be/was published in the Official Gazette on 2008-04-22
`
`Transformed into a National App