Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA234703
`ESTTA Tracking number:
`09/04/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91180128
`Defendant
`Hidden Values, Inc.
`Wendy B. Mills
`Law Office of Wendy B. Mills
`100 Crescent Court, Ste. 700
`Dallas, TX 75201
`UNITED STATES
`wbm@wbmillslaw.com
`Motion to Suspend for Civil Action
`Wendy B Mills
`wbm@wbmillslaw.com
`/Wendy B Mills/
`09/04/2008
`Motion to Suspendl.pdf ( 3 pages )(122333 bytes )
`Exhibit A -PACER Complaint.pdf ( 16 pages )(1437705 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
`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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`Opposition No. 91180128
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`Serial No: 78/7721,429
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`Published: June 19, 2007
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`§ §
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`§
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`§ §
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`§
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`§ §
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`§
`§
`§
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`KID’S DIRECTORY, INC.,
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`Opposer,
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`V
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`HIDDEN VALUES, INC.
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`Applicant.
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`APPLICANT’S MOTION TO SUSPEND FOR CIVIL ACTION
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`Applicant Hidden Values, Inc. (“Applicant”) hereby submits this Motion to
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`Suspend for Civil Action. Applicant requests that this proceeding be suspended pending
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`the outcome of the civil action styled: Hidden Values, Inc. v. Kid ’s Directory, Inc. and
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`Robert C. Spott, Jr; Civil Action No. 3-08 CV l370-M in the United States District Court
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`for the Northern District of Texas, Dallas Division.1 Applicant requested that Opposing
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`party agree to suspend this matter until the civil action is resolved, but the Opposing party
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`refused.
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`The issues in this civil action are identical or nearly identical to the issues raised
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`in this Trademark Trial and Appeal Board (“Board”) proceeding in that the civil action
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`relates to the mark “Kids Directory,” and the rights to use this mark, which is the issue
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`before the Board.2 Therefore, this civil action will likely have a bearing on this Board
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`proceeding. “Whenever it comes to the attention of the Board that a party or parties to a case
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`1 See a true and accurate copy of the Complaint styled Hidden Values, Inc. v. Kid ’s Directory, Inc. and
`Robert C. Spott, Jr; Civil Action No. 3-08 CV l370-M in the United States District Court for the Northern
`District of Texas, Dallas Division attached hereto as Exhibit A.
`2 See Exhibit A.
`MOTION TO SUSPEND FOR CIVIL ACTION
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`Page 1
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`pending before it are involved in a civil action which may have a bearing on the Board case,
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`proceedings before the Board may be suspended until final determination of the civil
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`action.”3 By suspending the proceedings before the Board, this would avoid undue burden
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`and cost on the parties and would serve the interest of administrative and judicial
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`economy.
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`Because the civil action may have a bearing on the Board case, proceedings
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`before the Board should be suspended until such final determination of the pending civil
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`action. Additionally, discovery should be suspended and the discovery and trial dates
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`should be reset upon the conclusion of the civil action.
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`Date: September 4, 2008
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`Respectfully submitted,
`HIDDEN VALUES, INC.
`
`By:
`
`/WendyB. Mills/
`Wendy B. Mills
`LAW OFFICE OF WENDY B. MILLS
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`100 Crescent Court, Suite. 700
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`Dallas, TX 75201
`Tel: (214) 459-3188
`Fax: (214) 764-7600
`wbm@wZ9milZslaw.com
`
`Attorney for Applicant
`HIDDEN VALUES, INC.
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`3 See 37 CFR § 2117(a), General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933 (TTAB
`1992); Toro Co. v. Hardigg Industries, Inc., 187 USPQ 689 (TTAB 1975), rev'd on other grounds, 549 F.2d
`785, 193 USPQ 149 (CCPA 1977); Other Telephone Co. v. Connecticut National Telephone Co., 181
`USPQ 125 (TTAB 1974), petition denied, 181 USPQ 779 (Comm'r 1974); Tokaido v. Honda Associates
`Inc., 179 USPQ 861 (TTAB 1973); Whopper—Burger, Inc. v. Burger King Corp., 171 USPQ 805 (TTAB
`1971); and David B. Allen, TIPS FROM THE TTAB: Impact of TTAB Decisions in Civil Litigation: The
`Alphonse-Gaston Act, 74 Trademark Rep. 180 (1984).
`MOTION TO SUSPEND FOR CIVIL ACTION
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`Page 2
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`CERTIFICATE OF TRANSMISSION
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`I hereby certify that this paper is being electronically transmitted to the United States
`Patent and Trademark Office on the date below:
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`Wendy B. Mills
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`09/04/08
`Date
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`/Wendy B. Mills/
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 4th day of September, 2008, a true and correct copy of the
`foregoing Notice of Appearance was served by First Class mail, postage prepaid, on:
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`Mr. David A. Bell
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`Ms. Leanne Stendall
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`Haynes and Boone, LLP
`901 Main Street, Suite 3100
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`Dallas, Texas 75202-3789
`Attorneys for Kid’s Directory, Inc.
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`/Wendy B. Mills/
`Wendy B. Mills
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`MOTION TO SUSPEND FOR CIVIL ACTION
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`Page 3
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`Case 3:08—ov~Q13?’Q—M Dooumentt
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`Filed O8./O?/2008
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`HIDDEN VALUES, INC.
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`Plaintiffs
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`v.
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`KID’S DIRECTORY, INC. and
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`ROBERT C. SPOTT, JR.
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`Defendants.
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`Plaintiff Hidden Values,
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`Inc.
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`files
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`this Original Complaint and application for
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`Preliminary and Permanent Injunction.
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`PARTIES
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`1.
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`Plaintiff Hidden Values, Inc. (“Hidden Values”) is a Texas corporation having its
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`principal office and place of business in Dallas, Texas.
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`2. Defendant Kid’s Directory, Inc. (“KDI”) is a Texas corporation having its principal
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`place of business in Houston, Texas. Defendant KDI may be served with process by serving
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`Robert C. Spott, Jr., its registered agent, at 5320 Gulfton, Suite 9, Houston, Texas 77081, or
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`wherever he may be found.
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`3. Defendant Robert C. Spott Jr. (“Spott”) is an individual residing in Houston, Texas,
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`and may be served at his residence located at 1229 Columbia Street, Houston, Texas 77008 or at
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`his place of employment located at 5320 Gulfton, Suite 9, Houston, Texas 77081, or wherever
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`he may be found.
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`JURISDICTION AND VENUE
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`4.
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`This is an action for trademark infringement and trademark counterfeiting, under 15
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`U.S.C. § lll4, unfair competition under 15 U.S.C. § ll25(a)(l), trade dress infringement under
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`15 U.S.C. § l125(a), .trademark dilution under 15 U.S.C. l125(c), under the Trademark Act of
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`1946, as amended, 15 U.S.C. § 1051 et seq. (“Lanham Act”), and unjust enrichment and related
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`claims under state and common law
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`5.
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`This Court has jurisdiction over the subject matter of this action under 15 U.S.C.
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`§ 1121 and 28 U.S.C. §§ 1331, and 1338, and has supplemental jurisdiction under 28 U.S.C.
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`§ 1367(a) over Hidden Values’ Texas law claims.
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`6. A substantial part of the events giving rise to the claim occurred or a substantial part
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`of property that is the subject of this action is situated in Dallas, Texas. Defendants have caused
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`confusion and diminution in the value of Hidden Values’ Kids Directory mark in Dallas, Texas.
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`Venue is proper in the Northern District of Texas pursuant to 28 U.S.C. § 1391 (b).
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`Hidden Values, Its Business, and the Kids Directory Mark
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`FACTS
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`7.
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`James Crofford, Jr. created Hidden Values in 1986 to publish directories across
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`Texas and the United States that provide advertising resources and targeted marketing. To
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`accomplish those means, Hidden Values created unique business plans, ideas, and strategies and
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`affixed them into a business template to allow Hidden Values and its various directories to
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`experience fast growth while creating high quality products and achieving its goal of exemplary
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`service and value to its customers. Hidden Values, through its marketing, advertising, and
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`quality of services, has attracted business people throughout the United States to enter into
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`licensing agreements with them. For the last twenty years, Hidden Values and its directories
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`have grown from the ground up, one region to the next, to where it is today, nationally known
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`and operated.
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`8.
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`Since its inception, Hidden Values has created and published directories across the
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`country providing advertising and targeting various markets with select businesses and services
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`to meet their personal needs, including but not limited to directories focused on parents and their
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`children, outlet shopping, weddings, restaurants, women, and homes.
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`9. Of all of Hidden Values’ directories, the largest and most profitable is the Kids
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`Directory that Hidden Values started in 1990. Hidden Values began publishing the Kids
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`Directory in 1990 in four cities including Houston, Dallas, and Fort Worth, and their surrounding
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`geographic areas, and has continuously used the Kids Directory mark in commerce throughout
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`the United States since that time.
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`10. Today, Hidden Values’ has sixty-nine licensees distributing its Kid’s Directories in
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`eighty-one different regions located in thirty—two States throughout the United States, including
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`Texas. In Texas, Hidden Values has published Kids Directory in Amarillo, Abilene, Austin, Bell
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`County, Beaumont, College Station, Corpus Christi, Dallas, East Texas, El Paso, Fort Worth,
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`Houston, Laredo, Rio Grande Valley, San Antonio, and Waco.
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`In addition to printed directories,
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`since the mid-nineties, Kids Directory has offered access to its shopping resources and
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`advertising on-line through a primary website, www.kidsdirectory.com, and through its
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`regionally tailored websites.
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`11. Since 1990, Hidden Values has prominently used and promoted the Kids Directory
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`and its mark in various media in the manner customary in the trade. Hidden Values has
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`advertised and promoted the Kids Directory and its mark to consumers and retailers and has
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`spent a significant investment of time and energy advertising the Kids Directory and its services
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`to potential publishers and licensees throughout the United States, including Houston, Texas and
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`its surrounding areas including Fort Bend County.
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`In fiscal year 2007, revenues for,Hidden
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`Values from the Kids Directory and its mark exceeded four and one-half million dollars.
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`12. As a result of the quality of the Kids Directory and Hidden Values’ extensive usage,
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`distribution and promotion of the Kids Directory mark, the Kids Directory mark has become
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`distinctive to designate Hidden Values’ services from the services of others, and to distinguish
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`the source or origin of Hidden Values’ services. These efforts by Hidden Values have caused the
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`Kids Directory and its mark to become well known, widely recognized, and famous to
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`consumers and the public in general. After eighteen years of usage and promotion, Hidden
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`Values has developed valuable goodwill and strong common-law rights in the mark.
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`Registration ofMark
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`13.
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`In 1998,
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`in accordance with the provisions of the Lanham Act, Hidden Values
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`registered the Kids Directory mark on the supplemental register of the United States Patent and
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`Trademark Office, Registration No. 2,209,901 for printed catalogs
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`featuring children’s
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`merchandise and services.
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`(Filed on March 2, 1998, and issued on December 8, 1998).
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`In
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`December 2005, Hidden Values filed this mark on the principal register of the USPTO, serial
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`number 78772429 for publishing catalogs featuring children’s merchandise and services.
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`14. On October 17, 2007, Defendant KDI filed a Notice of Opposition with the United
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`States Patent and Trademark Office (“USPTO”) before the Trademark Trial and Appeal Board
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`(“TTAB”) to the registration of Hidden Values’ KID’S DIRECTORY mark. Prior to filing this
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`Notice of Opposition, Hdden Values and KDI were engaged in ongoing dialog regarding KDI’s
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`unauthorized use of Hidden Values’ mark, KID’S DIRECTORY. On November 29, 2007, KDI
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`filed a Motion for Leave to Amend the Notice of Opposition with TTAB to assert a claim for
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`fraud based on newly discovered evidence and Hidden Values objected to KDI’s Motion. On
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`July 17, 2008, TTAB issued a decision regarding KDI’s Motion for Leave to Amend the Notice
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`of Opposition finding that “the proposed claim of fraud would be futile, and opposer’s motion
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`for leave to amend is therefore, DENIED, WITHOUT PREJUDICE.” This lawsuit is being filed
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`to resolve the infringement matter between the parties and enjoin Defendants KDI and Robert
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`Spott from engaging in further infringing activities, which cannot be accomplished through the
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`TTAB action. Contemporaneous with the filing of this lawsuit, Hidden Values is filing a Motion
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`to Suspend the TTAB proceedings until such time as the infringement matter is resolved through
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`this Court in order to avoid duplicative discovery and other related costs that will likely be
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`incurred as a result of this litigation.
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`Hidden Values Fort Bend County Operations
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`15. On August 5, 2005, Hidden Values entered into a Licensing and Printing Agreement
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`(the “Licensing Agreement”) for the Kids Directory with licensee S.P Mallios, Inc. d/b/a/ Fort
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`Bend County Kids Directory. The Licensing Agreement granted S.P. Mallios, Inc. the exclusive
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`right to use the Kids Directory name and mark and to publish the Kids Directory in Fort Bend
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`County, Texas and the City of Katy, Texas.
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`Defendants Kid ’s Directory, Inc. and Robert Spott, Jr.
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`16. On August 13, 1990, Hidden Values entered into a Licensing Agreement with
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`Walter Fink allowing Mr. Fink the exclusive right to use the Kids Directory name and mark and
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`to publish the Kids Directory in Houston, Texas. Hidden Values, through their licensee, Walter
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`Fink, thereafter began operations in Houston, Texas. On information and belief, in or around
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`1992, Walter Fink entered into a partnership with Defendant Robert Spott to publish the Kids
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`Directory in Houston, Texas pursuant to Mr. Fink’s license with Hidden Values.
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`In conjunction
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`with the Fink/Spott partnership to publish the Kids Directory in Houston, Hidden Values
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`A
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`received payments from Mr. Fink and/or Mr. Spott through at least 1993. Later, Spott and Fink
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`stopped requesting that Hidden Values print and distribute the Kids Directory for the Houston
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`area, and discontinued all contact with Hidden Values and as such, stopped making payments to
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`Hidden Values as mandated under the 1990 Houston Licensing Agreement,
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`17. Nonetheless, Hidden Values
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`continued its Kids Directory operations
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`and
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`successfully went on to expand its operations throughout the state of Texas and the Nation.
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`18. Upon granting S.P. Mallios, Inc. a Kids Directory license in 2005 to publish in Fort
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`Bend County, Defendant Robert Spott surfaced and claimed that he had taken over the Kids
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`Directory name in Houston. Spott claimed that Hidden Values had abandoned its Kids Directory
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`mark and that Spott’s unauthorized use of the Kids Directory Mark now entitled him and his
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`business entity to the superior rights of usage on their publication. Apparently, Defendant Spott
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`had formed a business named Kids Directory, Inc., which is almost
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`identical to the Kids
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`Directory mark owned by Hidden Values. Spott threatened Hidden Values and S.P. Mallios, Inc.
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`with legal action if Hidden Values and S.P. Mallios, Inc. continued with their Harris and Fort
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`Bend County activity. Fink and Spott and/or KDI advertised and produced family resource
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`directories called “The Kid’s Directory” in Houston, Texas. Hidden Values also learned that
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`Defendants KDI and Robert Spott own and operate an Internet website called wWw.kids-
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`houston.com that advertises and promotes Kid’s Directory, Inc., published by Defendants, and
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`which contained disparaging comments about Hidden Values.
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`19. The services and directory offered by Defendants KDI and Robert Spott under the
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`name The Kid’s Directory are nearly identical to the name and mark used by Hidden Values
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`under its Kids Directory mark.
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`20. Defendants KDI and Robert Spott have commenced commercial use of the Kids
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`Directory mark in commerce without the permission or authority of Hidden Values.
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`21. Defendants KDI and Robert Spott’s unauthorized use of the Kids Directory mark in
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`their advertising, promotion, sales, labeling, and distribution of their services and directory is
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`causing confusion, causing mistake, and deceiving consumers as to the source, sponsorship,
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`approval, or affiliation of Defendants KDI. and Robert Spott’s business, products, Or services.
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`Consumers are likely to believe, erroneously, that Defendants KDI. and Robert Spott’s products
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`and services are affiliated or connected with Hidden Values’ products and services offered under
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`the Kids Directory mark. Defendants KDI. and Robert Spott are obviously using the Kids
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`Directory mark with the intent to trade off of the reputation of Hidden Values and the goodwill
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`established by Hidden Values under its Kids Directory mark, without having to pay Hidden
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`Values a license fee for such usage.
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`22. When Hidden Values’ Houston and Fort Bend County licensee, S.P. Mallios, Inc.
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`heard that
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`they might become embroiled in costly litigation, S.P. Mallios,
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`Inc.
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`received
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`permission from Hidden Values to publish their directory under another name, Kidstuff, which
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`was not known to the public and made it very difficult to begin a new directory. S.P. Mallios,
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`Inc. ultimately discontinued distribution of this directory.
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`23. Additional discussions with KDI and Robert Spott have revealed that KDI and
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`Robert Spott have aggressive expansion goals for the very near future that would, if allowed,
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`further infringe upon Hidden Values trademark rights and negatively impact Hidden Values:
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`ability to expand its operations. As a matter Of fact, Robert Spott and KDI have already
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`expanded and caused confusion with Hidden Values’ Kids Directory publication. For instance,
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`in June 2006, Hidden Values announced that
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`it would be distributing its Kids Directory
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`publications in College Station, Texas.
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`Soon after Hidden Values’ announcement, KDI
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`announced on their Kids Directory publications and distribution lists that it would be distributing
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`its Kids Directory in College Station. This caused actual confusion with Hidden Values’ Kids
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`Directory and its new licensee asked and received permission from Hidden Values to change the
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`name of the publication to Family & Kids Directory. Despite the name change, confusion still
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`occurs. Additionally, there has been confusion with Hidden Values’ Kids Directories with
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`Robert Spott’s and KDI’s Kids Directories in Galveston, Texas. Further, on information and
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`belief, Robert Spott and KDI intend to expand to Beaumont where Hidden Values has a licensee
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`distributing its Kids Directory.
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`COUNT I: DECLARATORY JUDGMENT
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`24. Hidden Values repeats the allegations above as if fully set forth herein.
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`25. An actual controversy has arisen and now exists relating to the rights and ownership
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`of the Kids Directory mark between the parties herein in that Hidden Values contends that they
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`have superior rights to use the Kids Directory mark throughout the United States, specifically
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`including Houston and its surrounding geographic area, College Station, Texas, Beaumont,
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`Texas and Fort Bend County, Texas.
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`26. Hidden Values seeks an Order of this Court declaring that their rights to use the
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`Kids Directory mark are superior to and have priority as against any and all claims which
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`Defendants KDI and Robert Spott might assert as being the rightful owner of the Kids Directory
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`mark in Houston, Texas and its surrounding geographic area including College Station, Texas,
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`Beaumont, Texas and Fort Bend County, Texas. Hidden Values will show that Hidden Values is»
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`the owner of the Kids Directory mark within the United States and particularly in Houston,
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`Texas and its surrounding areas including College Station, Texas, Beaumont, Texas and Fort
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`Bend County, Texas as a matter of law.
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`27. Thus, Hidden Values seeks a declaratory judgment from this Court establishing the
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`following: (1) that Hidden Values owns the Kids Directory mark nationwide and in Houston,
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`Texas and its surrounding geographic region including College Station, Texas, Beaumont, Texas
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`and Fort Bend County, Texas; and (2) that any licensee of Hidden Values, has superior rights to
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`the Kids Directory mark than Defendants KDI and Robert Spott nationwide and in Houston,
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`Texas and its surrounding geographic region including College Station, Texas, Beaumont, Texas
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`and Fort Bend County, Texas.
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`COUNT II: FEDERAL TRADEMARK INFRINGEMENT
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`28. Hidden Values repeats the allegations above as if fully set forth herein.
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`29. The acts of Defendants KDI and Robert Spott complained of herein constitute
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`infringement of Hidden Values’ federally registered mark in violation of 15 U.S.C. § 1 1 14(1).
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`30.
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`In View of the nature of Defendants KDI’s and Robert Spott’s infringement, this is
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`an exceptional case within the meaning of 15 U.S.C. § ll17(a).
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`COUNT III: FEDERAL DILUTION
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`31. Hidden Values repeats the allegations above as if fully set forth herein.
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`32. The acts of Defendants KDI and Robert Spott complained of herein constitutes
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`dilution of the distinctive quality of Hidden Values’ famous Kids Directory mark, in violation of
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`the Federal Trademark Dilution Act, 15 U.S.C. § ll25(c).
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`33. Defendants KDI. and Robert Spott intended to trade on Hidden Values’ reputation
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`and to cause such dilution.
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`COUNT IV: FEDERAL UNFAIR COMPETITION
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`’ 34. Hidden Values repeats the allegations above as if fully set forth herein.
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`35. The acts of Defendants KDI and Robert Spott complained of herein constitutes
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`unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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`COUNT V. TRADE DRESS INFRINGEMENT
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`36. Hidden Values repeats the allegations above as if fully set forth herein.
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`37.
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`The acts of Defendants KDI and Robert Spott complained of herein constitutes
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`Trade Dress infringement of Hidden Values’ famous Kids Directory publication, in violation of
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`Section 43(a) ofthe Lanham Act, 15 U.S.C. § 1l25(a).
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`38. Defendants KDI. and Robert Spott intended to confuse the public by copying the
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`look and feel of Hidden Values’ Kids Directory publication.
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`COUNT VI: TRADEMARK INFRINGEMENT
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`UNDER THE COMMON LAW OF TEXAS
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`39. Hidden Values repeats the allegations above as if fully set forth herein.
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`40.
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`The acts of Defendants KDI and Robert Spott complained of herein constitutes
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`trademark infringement in violation of the common law of the State of Texas.
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`COUNT VII: UNFAIR COMPETITION
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`UNDER THE COMMON LAW OF TEXAS
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`41. Hidden Values repeats the allegations above as if fully set forth herein.
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`42.
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`The acts of Defendants KDI and Robert Spott complained of herein constitutes
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`unfair competition in violation of the common law of the State of Texas.
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`COUNT VIII: UNJUST ENRICHMENT
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`43. Hidden Values repeats the allegations above as if fully set forth herein.
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`Page I0
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`44. Defendants KDI and Robert Spott have been and continue to be unjustly enriched
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`at Hidden Values’ expense by Defendants KDI and Robert Spott’s unauthorized use of
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`the Kids Directory mark owned by Hidden Values.
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`I
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`COUNT IX: DILUTION UNDER TEXAS LAW
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`45. Hidden Values repeats the allegations above as if fully set forth herein.
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`46.
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`The acts complained of above by Defendants KDI and Robert Spott constitutes
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`dilution of the distinctive quality of the Kids Directory mark in violation of the Texas
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`Anti-Dilution Statute, TEX. Bus. & COM. CODE § 16.29.
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`COUNT X: BUSINESS DISPARAGEMENT
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`47. Hidden Values repeats the allegations above as if fully set forth herein.
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`48. Defendants KDI and Robert Spott have made disparaging statements about
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`Plaintiff Hidden Values on Kid’s Directory, Inc.’s website to Hidden Values and S.P
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`Mallios, Inc.’s customers. Specifically, but without limitation, Defendant Robert Spott,
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`writing as the publisher of Kid’s Directory, Inc., told Plaintiffs’ customers that Hidden
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`Values’ Kids Directory does not have “any consistent quality control and standardized
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`procedures.” Further, Spott’s written statements seeks to diminish and belittle Hidden
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`Values and states that, “[g]iven this scenario, it’s no wonder there is little consistency or
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`quality control.” These statements are false. Defendants made them with malice and
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`were not privileged to make them.
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`49. As a result, Plaintiffs have suffered damages including, but not limited to, lost
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`sales, loss of trade, and loss of other business dealings.
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`COUNT XI: APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`50. Hidden Values repeats the allegations above as if fully set forth herein.
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`Page 11
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`51. Defendants KDI and Robert Spott have damaged Hidden Values and are
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`continuing to damage Hidden Values by their illegal acts. Unless Defendants KDI. and
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`Robert Spott are restrained by this Court, Defendants KDI and Robert Spott will cause
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`irreparable injury to Hidden Values for which there is no adequate remedy at law.
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`JURY DEMAND
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`52. Hidden Values demands a jury trial in accordance with Fed. R. Civ. P. 38(b).
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`PRAYER
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`WHEREFORE, Hidden Values demands judgment against Defendants Kid’s Directory,
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`Inc. and Robert Spott as follows:
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`That Defendants, Kid’s Directory, Inc. and Robert Spott, their affiliates, subsidiaries,
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`related companies, and all those acting in concert or participation with them be enjoined and
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`restrained from:
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`a)
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`using any trade name, trade dress, trademark, service mark, tag line, advertising,
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`Internet web page, domain name, signage or any materials which depict, contain, or consist of
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`any name or mark confusingly similar to the Kids Directory mark (regardless of capitalization or
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`punctuation, whether singular or plural, or whether preceded or followed by other letters,
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`numbers or symbols), and any derivative thereof, or any other word or words confusingly similar
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`thereto;
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`b)
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`otherwise competing unfairly with Hidden Values in any manner,
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`including,
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`without limitation, (i) unlawfully adopting or infringing upon the Kids Directory mark, (ii)
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`adopting or using any trade name, trademark, service mark, tag line, advertising, Internet web
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`page, domain name, signage, or any materials which depict, contain, or consist of any name or
`
`mark confusingly similar to the Kids Directory mark, and/or (iii) adopting or using any trade
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`Page 12
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`name, trademark, service mark, tag line, advertising, Internet web page, domain name, signage or
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`any materials which depict, contain, or consist of any name or mark that dilutes the distinctive
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`quality of the Kids Directory mark;
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`c)
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`committing any acts or making any statements calculated, or the reasonably
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`foreseeable consequence of which would be,
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`to infringe or dilute any of Hidden Values’
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`trademark rights, or to confuse, mislead, or deceive consumers as to sponsorship, approval or
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`affiliation of Defendants Kid’s Directory, Inc. and Robert Spott by, with, or from Hidden Values;
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`and
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`d)
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`conspiring with, aiding, assisting or abetting any other person or business entity in
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`engaging in or performing any of the activities referred to in subparagraphs (a), (b), and (c)
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`above and that
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`they remove the disparaging language about Hidden Values and its Kids
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`Directory from their website;
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`e)
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`that, consistent with paragraph (a) above, Defendants ‘Kid’s Directory, Inc. and
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`Robert Spott will remove from display, and recall, any and all directories, catalogs, brochures,
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`advertisements, web pages, and any other items bearing the infringing Kids Directory mark or
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`any word or words confusingly similar thereto;
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`D
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`that Defendants Kid’s Directory, Inc. and Robert Spott be required to deliver to
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`the Court for destruction, or show proof of destruction of, any and all
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`labels, signs, prints,
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`advertisements, signage, catalogs, brochures, Internet web pages, and any other materials in their
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`possession or control bearing or depicting any name or mark confusingly similar to the Kids
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`Directory mark, as well as all molds, plates, and other means of making the same as provided by
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`15 U.S.C. § 1118;
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`Page I3
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`g)
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`that Defendants Kid’s Directory, Inc. and Robert Spott be required to file with
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`this Court and to serve upon Hidden Values within 30 days after the entry and service on-
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`Defendants Kid’s Directory, Inc. and Robert Spott of an injunction, a report in writing and under
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`oath setting forth in detail the manner and form in which Defendants Kid’s Directory, Inc.
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`complied with the injunction;
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`h)
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`that Defendants Kid’s Directory, Inc. and Robert Spott be required to account for,
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`and turn over to Hidden Values, all money received as a result of their infringement and other
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`unlawful acts, including the amount of the revenue generated in connection with the infringing
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`mark in the United States, specifically including Houston, Texas and its surrounding areas, and
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`the price for each such product sold, increased as the Court finds just under the circumstances of
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`this case and that such money be paid over to Hidden Values, pursuant to 15 U.S.C. § 1l17(a);
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`i)
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`that Defendants Kid’s Directory,
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`Inc. and Robert Spott be prohibited from
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`publishing, distributing, advertising, marketing, and selling any goods sold in connection with
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`the infringing mark in the United States, including but not limited to Houston, Texas and its
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`surrounding areas;
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`J)
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`k)
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`That Hidden Values. be awarded compensatory damages;
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`That, pursuant to 15 U.S.C. § 1117, Hidden Values be awarded treble damages
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`and attorneys’ fees for willful infringement;
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`1)
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`That Hidden Values be awarded its costs of this action, and prejudgment and post-
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`judgment interest;
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`rn)
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`That Hidden Values be granted such other and further relief as the Court may
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`deem just and proper.
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`Page 14
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`Fiied Q8/{)?.r’2008
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`Page 15 01‘ "16
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`Respectfully submitted,
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`LAW OFFICE OF WENDY B. MILLS
`
` .
`If Le
`Wendy B. Mills
`Texas Bar No. 2
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`32861
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`100 Crescent Court, Suite 700
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`Dallas, TX 75201
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`Telephone: (214) 236-5349
`Facsimile: (214) 764-7600
`Email: wbm@wbmillslaw.com
`ATTORNEY FOR
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`HIDDEN VALUES, INC.
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`ORIGINAL COMPLAINT AND APPLICATION FOR
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`PRELIMINARY AND PERMANENT INJUNCTION
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`Page I5
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`"§aJS 44 (Rev. 10/06)
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`CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace nor su plement the filing and service of pleadin s or other papers as required by law, except as
`provided‘ by local rules of court. This form, approved by the Judicial Conference of the
`nited States in September I974 is require for the use of the Clerk of Court for the purpose
`Of Initiating the Civil docket sheet.
`(SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`,
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`1' (3)
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`PLAINTIFFS
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`(ID) C