Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA597650
`ESTTA Tracking number:
`04/09/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91182881
`Plaintiff
`Glenn Danzig
`PAUL D SUPNIK
`9401 WILSHIRE BLVD, SUITE 1250
`BEVERLY HILLS, CA 90212
`UNITED STATES
`paul@supnik.com
`Motion to Suspend for Civil Action
`PAUL D. SUPNIK
`paul@supnik.com
`/paul d. supnik/
`04/09/2014
`14.04.09 FINAL Motion to suspend.pdf(2738810 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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`Glenn Danzig,
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`Plaintiff,
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` v.
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`Defendant.
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`Opposition No. 91182881
`(parent)
`Opposition No. 91184044
`Cancellation No. 92045173
`Cancellation No. 92050014
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`Serial Nos. 76605515
` 76605840
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`Registration Nos.: 2793533
` 2634215
` 2735848
` 2770984
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`Defendant’s Claimed Marks:
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`MISFITS (word mark)
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`MISFITS (stylized “horror font
`logo”)
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`“Fiend Skull” design
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`Cyclopian Music, Inc.
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`1
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`Commissioner for Trademarks
`P.O. Box 1451
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`Alexandria, VA 22313-1451
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`3421.065/756460.3
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`MOTION FOR SUSPENSION PENDING CIVIL ACTION
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`To the Commissioner for Trademarks:
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`Petitioner, Glenn Danzig (“Danzig”), by and through his attorney, and
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`pursuant to 37 CFR section 2.117, hereby moves to suspend the above
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`captioned proceedings (the “Proceedings”) because a civil action that is currently
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`pending in the United States District Court for the Central District of California is
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`likely to resolve the matters in the Proceedings. In support of this motion, Danzig
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`states as follows:
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`A.
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`The Instant Motion
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`1.
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`This motion is to suspend the Proceedings based on the pendency
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`of an action before the United States District Court for the Central District of
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`California, Glenn Danzig v. Gerard Caiafa, etc., and Cylcopian Music Inc., etc., et
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`al., United States District Court for the Central District of California, Case No.
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`CV14-2540 RGK (the “District Court Action”), filed April 3, 2014. A copy of the
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`summons and complaint and related court forms in the District Court Action is
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`attached hereto as Exhibit “A.” The summons and complaint and related court
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`forms were served by certified mail on defendants Gerard Caiafa (“Caiafa”) and
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`the corporation through which he does business, Cyclopian Music, Inc.
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`(“Cyclopian”) on April 9, 2014, in accordance with applicable California and
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`Federal procedure. Courtesy copies have been emailed to their counsel in these
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`Proceedings.
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`3421.065/756460.3
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`B.
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`Procedural Background
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`2.
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`The District Court Action involves the issues identical to the issues
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`herein, and is likely to resolve all matters at issue in the Proceedings.
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`Specifically, Danzig alleges in the District Court Action that the registrations and
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`applications also at issue in the Proceedings should be cancelled and granted
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`because Cyclopian is not the owner of the marks at issue.
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`3.
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`To the contrary, pursuant to a 1994 settlement agreement between
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`Danzig, on the one hand, and Caiafa and certain others on the other hand,
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`Danzig and Caiafa co-own the Marks. Caiafa’s registrations and attempted
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`registrations of the Marks are improper because they fail to disclose that Danzig
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`is a co-owner of the marks and, for the same reason, are fraudulent as the PTO.
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`The District Court Action also alleges that Caiafa’s and Cyclopian’s wrongful
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`assertions of ownership of the Marks constitute false advertising in violation of
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`the Lanham Act, 15 U.S.C. § 1125, breach of contract, and interference with
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`Danzig’s prospective business advantage.
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`C.
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`Factual Background
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`4.
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`From 1977 to 1983, Danzig and Caiafa were members of the band
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`The Misfits. Effective December 31, 1994, Danzig and Caiafa entered into a
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`written agreement settling pending litigation between them over, among other
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`things, ownership of the Marks (the “1994 Settlement Agreement”). In the
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`3421.065/756460.3
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`Settlement Agreement Danzig and Caiafa agreed to be co-owners of the Marks,
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`each having the non-exclusive right (as to each other) to use the marks.
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`5.
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`In the early and mid-2000s, Caiafa, acting through his company
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`Cyclopian, applied to register the Marks in Cyclopian’s name, without disclosing
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`the existence of the 1994 Settlement Agreement.
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`6.
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`On November 15, 2005, Danzig instituted a cancellation proceeding
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`to cancel registrations for the registrant’s marks MISFITS and MISFITS in a
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`stylized form, U.S. registration numbers 2793533, 2634215 and 2735848.
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`7.
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`Later, Danzig filed three other related proceedings. Two were
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`oppositions involving other MISFITS marks, (91182881 and 91184044) and a
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`third was a cancellation proceeding against a design mark referred to as the
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`“fiend skull” mark (92050014). Although the parties have made substantial
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`efforts to resolve this dispute over a number of years, and the Board has granted
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`a number of extensions to accommodate the parties’ ongoing settlement
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`discussions, to date the parties have not reached a settlement.
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`8.
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`On April 1, 2014, the TTAB entered an order consolidating the
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`above-entitled Proceedings as they involve the same parties and factual and
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`legal issues.
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`D.
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`Suspension Is Proper
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`9.
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`Suspension of TTAB proceedings when an action on the same
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`issues is pending in the district court is appropriate, even when the action is filed
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`3421.065/756460.3
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`while the TTAB proceedings are close to being decided. See e.g. National Ass'n
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`of Professional Baseball Leagues, Inc. v. Very Minor Leagues, Inc., 223 F.3d
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`1143, 1145-1146, 55 U.S.P.Q. 2d 1628 (10th Cir. 2000) (TTAB opposition
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`proceedings suspended even though motion for summary judgment pending
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`when party opposing registration filed United States District Court action
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`concerning the same matters at issue before the TTAB).
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`10.
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`In the Proceedings, Danzig contends that the subject registrations
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`were improperly obtained, and the subject applications should be denied, for the
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`same reasons alleged in the District Court Action: Caiafa improperly filed his
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`applications for the marks at issue in the name of Cyclopian rather than in the
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`name of both Cyclopian and Danzig, therefore rendering the registrations and
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`pending applications invalid ab initio. The District Court action which Danzig filed
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`on April 3, 2014, alleges five claims, (1) breach of contract, (2) violation of
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`Section 43(a) of the Lanham Act, (3) interference with prospective business
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`advantage, (4) declaratory relief and (5) accounting. The predicate for each of
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`these claims is Cyclopian is not the exclusive owner of the Marks and that
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`Cyclopian’s applications which are the subject of each of the underlying
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`applications and registrations in the proceedings were fraudulently procured. .
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`(See Exhibit “A,” especially at ¶22 as to the registrations and applications, ¶¶28-
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`32 as to breach of contract, ¶¶34-36 as to violation of Section 43(a) of the
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`3421.065/756460.3
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`Lanham Act; ¶¶39-41 as to intentional interference with prospective business
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`advantage; ¶¶45-47 as to declaratory relief).
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`11.
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`For the same reasons, Danzig has alleged in the District Court
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`Action that Cyclopian has breached the Settlement Agreement by notifying
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`merchandisers not to exploit the Misfits marks on behalf of Danzig. Danzig
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`claims false advertising under Section 43(a) of the Lanham Act and interference
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`with prospective business advantage by contending that Cyclopian has
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`misrepresented to merchandisers that it owns exclusive rights to the marks. The
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`claim for declaratory relief also asserts that Danzig claims to be the co-owner of
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`the Misfits marks and not Cyclopian. As a consequence, Danzig contends that
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`the registrations be cancelled. A determination of these issues is likely to be
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`collateral estoppel in the TTAB proceeding and determinative of the issues
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`involved in the Proceedings.
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`12.
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`It is anticipated that defendant Cylopian will assert in the District
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`Court action the same defenses as has been asserted in this TTAB proceeding.
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`13.
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`37 CFR section 2.117 provides, in relevant part:
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`(a) whenever it shall come to the attention of the trademark
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`Trial and Appeal Board that a party or parties to a pending case are
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`engaged in a civil action or other Board proceeding which may
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`have a bearing on the case, proceedings before the Board may be
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`3421.065/756460.3
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`suspended until termination of the civil action or the other Board
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`proceeding.
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`…
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`(c) Proceedings may also be suspended for good cause,
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`upon motion or a stipulation of the parties approved by the Board.
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`14.
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`The cancellation proceeding should be suspended for the reasons
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`provided in 37 CFR section 2.117 (a) and (c).
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`15. Suspension of cancellation proceedings is warranted under 37
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`C.F.R. Section 2.117 (a) because petitioner is a party in both actions, and the
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`civil action “may have a bearing” on the cancellation proceeding. One of the
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`central issues to be determined in the civil action is whether the 1994 settlement
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`agreement stating that the parties shall be co-owners of the marks shall
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`determine ownership rights in the MISFITS trademarks which are the subject of
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`the cancellation proceedings.
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`16. Other issues include whether Cyclopian’s contentions in the TTAB
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`proceedings, that Danzig’s rights have been abandoned, are valid. A judgment
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`of a United States District Court is binding on the Board, while an administrative
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`decision of the Board may only have persuasive value in a later court
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`proceeding. Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805 (TTAB
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`1971).
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`3421.065/756460.3
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`17.
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`The issues also involve contract interpretation and a policy
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`determination as to whether contract and consumer expectations are to control,
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`or whether a more elusive determination of abandonment, if any, based on
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`purported nonuse by one side, is to apply. In addition, claims for declaratory
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`relief, when accompanied by other substantive claims such as for Lanham Act
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`violations, breach of contract, and intereference with prospective business
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`advantage, are appropriately litigated in court, rather than the TTAB, whose
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`jurisdiction and remedial powers are more limited.
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`18.
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` The TTAB’s special expertise is not necessary here where federal
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`district courts regularly adjudicate trademark matters and where the issues do
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`not involve highly technical questions or subject matter. E. & J. Gallo Winery v.
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`F. & P. S.p.A. 889 F.2 Supp. 465, 35 USPQ 2d 1857 (E.D. Cal. 1994); W & G
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`Tennessee Imports, Inc. v. Esselite Pendaflex Corp., 769 F.Supp. 264 (M.D.
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`Tenn. 1991).
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`19. Suspension of the Proceedings is also warranted for good cause
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`under 37 C.F.R. Section 2.117 (c) because if they are not suspended, the Board
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`and the District Court could reach different and inconsistent conclusions
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`regarding whether the Marks are jointly owned by the Petitioner and Respondent
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`or whether Petitioner has valid rights in its claimed MISFITS marks to be
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`damaged in the first place. Therefore suspending the Proceedings to allow the
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`3421.065/756460.3
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`civil action to proceed first will avoid the possibility of inconsistent rulings and
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`thereby serve the interest of judicial economy.
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`Wherefore, Danzig respectfully requests that the Board grant this motion
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`to suspend.
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`Respectfully,
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`/s/
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`Dated: April 9, 2014
`By:____________________________
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`PAUL D. SUPNIK
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`Attorney for Plaintiff
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`GLENN DANZIG
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`9401 Wilshire Boulevard, Suite 1250
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`Beverly Hills, CA 90212
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`Telephone: (310) 859-0100
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`Fax: (310) 388-5645
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`3421.065/756460.3
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`9
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on April 9, 2014 he caused a copy
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`of the above MOTION FOR SUSPENSION PENDING CIVIL ACTION
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`to be served by First Class Mail, postage prepaid on this date to:
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`Curtis B. Krasik, Esq.
`Christopher M. Verdini, Esq.
`K&L GATES LLP
`K&L Gates Center
`210 Sixth Avenue
`Pittsburgh, PA 15222-2613
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`and with a courtesy copy to curtis.krasik@klgates.com and to
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`christopher.verdini@klgates.com.
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`/s/
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`By:____________________________
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`PAUL D. SUPNIK
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`Attorney for Plaintiff
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`GLENN DANZIG
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`9401 Wilshire Boulevard, Suite 1250
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`Beverly Hills, CA 90212
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`Telephone: (310) 859-0100
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`Fax: (310) 388-5645
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`Dated: April 9, 2014
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`3421.065/756460.3
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`10
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`Name & Address:
`Howard E. King, Esq. - SBN 077012
`Stephen D. Rothschild, Esq. - SBN 132514
`KING, HOLMES, PATERNO & BERLINER, LL
`1900 Avenue of the Stars, 25th Floor
`Los Angeles, California 90067-4506
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`GLENN DANZIG, an individual,
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`CASE NUMBER
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`v 1 4 - 2 5 4 0 ｾＭ ｾＢ＠
`
`SUMMONS
`
`v.
`GERALD CAIAFA, an individual; CYCLOPIAN
`MUSIC, INC., a corporation; and DOES 1
`through 10, inclusive,
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`PLAJNTIFF(S)
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`DEFENDANT(S) .
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`TO: DEFENDANT(S):
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`A lawsuit has been filed against you.
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`21 days after service of this summons on you (not counting the day you received it), you
`Within
`must serve on the plaintiff an answer to the attached [][) complaint D
`amended complaint
`DcounterclaimDcross-claim or a motion under Rule 12 of the Federal Rules of Civil Procedure. The answer
`or motion must be served on the plaintiffs attorney, Howard E. King, Esg:.
`, whose address is
`. Ifyoufailtodoso,
`1900 Avenue of the Stars. 25th Floor, Los Angeles, CA 90067
`judgment by default will be entered against you for the relief demanded in the complaint. You also must file
`your answer or motion with the court.
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`APR -3 2014
`D a t ed : - - - - - - - - - - - - -
`
`By:
`
`ｄ･ｰｵｴｹｾｾｾ＠
`1784
`(Seal ofthe Cou
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`[Use 60 days if the defendant is the United States or a United States agency, or is an officer or employee of the United States. Allowed
`60 days by Rule 12(a)(3)}.
`
`CV-OIA (lOIII
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`SlJMMONS
`
`EXHIBIT A
`
`3421.065
`CCD-1A
`
`

`
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`ｾＭＭＭＮ＠
`
`Attorneys for Plaintiff GLENN DANZIG
`
`1 KING, HOLMES, PATERNO & BERLINER, LLP
`HOWARD E. KING, ESQ., STATE BAR No. 77012
`2 STEPHEN D. ROTHSCHILD, ESQ., STATE BAR No. 132514
`ROTHSCHILD@KHPBLA W.COM
`3 1900 A VENUE OF THE STARS, 25TH FLOOR
`LOS ANGELES, CALIFORNLA 90067-4506
`4 TELEPHONE: (31 0) 282-8989
`FACSIMILE: (31 0) 282-8903
`
`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION
`
`5
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`6
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`7
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`8
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`9
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`10
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`G'Vi 1tf- 2 5 4 0 ｾ＼［ｩ｟ｌＭ ｾＭｺ｟＠
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`COMPLAINT for
`1) Breach of Contract
`2) Violation of Lanham Act
`3) Interference with Prospective
`Business Advantage
`4) Accounting
`5) Declaratory Relief
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`JURY TRIAL DEMANDED
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`11 GLENN DANZIG, an individual,
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`12
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`13
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`vs.
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`Plaintiff,
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`14 GERALD CAIAF A, an individual;
`CYCLOPIAN MUSIC, INC., a
`15 ｾｯｲｰｯｾ｡ｴｩｯｮ［＠and DOES 1 through 10,
`mclus1ve,
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`Defendants.
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`Plaintiff Glenn Danzig ("Danzig") alleges as follows:
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`THE PARTIES
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`1.
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`Plaintiff Glenn Danzig is and at all times material herein has been an
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`internationally known recording artist and a resident of Los Angeles, California.
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`2.
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`On information and belief, defendant Gerald Caiafa ("Caiafa'') is and at
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`23 all times material herein has been a resident of the State ofNew Jersey.
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`24
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`3.
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`On information and belief, defendant Cyclopian Music, Inc.
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`25 ("Cyclopian") is a corporation organized and existing under the laws of the State of
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`26 New Jersey. References hereinafter to "Caiafa" include Cyclopian.
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`27
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`4.
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`Defendants Does 1 through 10, inclusive, are sued herein under
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`28 fictitious names. Their true names and capacities are unknown to Danzig. When
`EXHIBIT A
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`1 their true names and capacities are ascertained, Danzig will amend this complaint by
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`2
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`inserting their true names and capacities herein. Upon information and belief, each
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`3 defendant named herein as a Doe acted with defendants and is responsible for the
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`4 damages to Danzig herein alleged. Each reference in this complaint to any
`5 defendant also refers to all defendants sued under fictitious names.
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`6
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`5.
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`Upon information and belief, at all times material herein each of the
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`7 defendants was the agent and employee of the other defendants and in doing the
`8 things hereinafter alleged was acting within the course and scope of such agency
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`9 and employment.
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`10
`11
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`JURISDICTION AND VENUE
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`6.
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`This Court has subject matter jurisdiction herein under the Lanham Act,
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`12 15 U.S.C. § 1125, the Declaratory Judgment Act, 28 U.S.C. §§ 2201-02, and
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`13 pursuant to 28 U.S.C. §1332 (a)(l), in that Danzig is a citizen of the State of
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`14 California, defendants are citizens of the State of New Jersey, and the amount in
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`15 controversy exceeds $75,000, exclusive of interest and costs. In addition, this Court
`16 has subject matter jurisdiction over Danzig's state law claims pursuant to 28 U.S.C.
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`17 §§ 1331 and 1367(a).
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`7.
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`18
`19 a substantial part of the events and omissions giving rise to the claims alleged herein
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`Venue lies within this Court pursuant to 28 U.S.C. § 1391(b)(2), in that
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`20 occurred, and a substantial amount of property that is the subject ofthis action is
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`21 situated, in this district.
`22
`FACTS APPLICABLE TO ALL CLAIMS FOR RELIEF
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`23
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`8.
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`In 1977, Danzig founded the seminal "horror punk" rock group The
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`24 Misfits. Danzig was the creative force behind The Misfits.
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`25
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`9.
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`After forming the band, Danzig replaced the original bass player with
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`26 Caiafa, whose primary qualification was that he had recently received a bass guitar
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`27 for Christmas.
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`28
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`10. The Misfits were a prominent part of the punk rock scene until 1983,
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`KiNG, HOLMES,
`PATERNO &
`BERLINER, LLP
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`3421.065/754532.1
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`EXHIBIT A
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`1 when they disbanded because Danzig decided to pursue other projects.
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`2
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`11. Danzig was the creative force behind The Misfits and was solely
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`3 responsible for the band's success and its continuing enormous influence on popular
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`4 music, including not only punk rock, but also heavy metal, alternative rock and
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`5 other genres. Danzig wrote the vast majority of the music and lyrics of all of The
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`6 Misfits songs.
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`7
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`12. Danzig also was responsible for The Misfits placing skeletal patterns
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`8 and motifs in their performances, including what became known as the "Fiend
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`9 Skull." The skeletal figure and the Fiend Skull became Misfits logos. Caiafa did
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`10 not design the logo.
`11
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`13. Among fans, 1977-1983 is known as the "Classic Misfits Era" by virtue
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`12 of Danzig's founding and creative leadership of the group during that period.
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`13
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`14. After disbanding The Misfits, Danzig continued to perform The Misfits
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`14 songs in live performances, to sell merchandise bearing The Misfits name, and to
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`15 refer to The Misfits in interviews and during performances.
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`16
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`17
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`15.
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`In contrast, after the 1983 breakup of The Misfits, Caiafa disavowed
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`involvement with The Misfits material, telling one interviewer in 1989 "We're not
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`18 back to sell you the Misfits because we want to let Glenn [Danzig] sell them."
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`19 Caiafa worked at his father's factory and formed a Christian oriented group called
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`20 "Kryst the Conqueror."
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`21
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`16. Danzig's post-Misfits popular success led to renewed interest in The
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`22 Misfits. In the late 1980s The Misfits' albums were reissued and new compilations
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`23 of The Misfits' music were released. In the early 1990s, some of the world's most
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`24 successful bands, including Metallica and Guns N' Roses, recorded and released
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`25 The Misfits' songs.
`26
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`1 7.
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`In 1992, seeing opportunity in the response to The Misfits' music's
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`27 resurgence, Caiafa and other former Misfits members filed a lawsuit against Danzig
`28 (the "1992 lawsuit") in the United States District Court for the Southern District of
`
`KING, HOLMES,
`PATERNO&
`BERLINER, LLP
`
`3421.065/754532.1
`
`EXHIBIT A
`
`3
`
`

`
`1 New York, in which they claimed, among other things, the exclusive right to use
`2 The Misfits' name and associated logos and artwork.
`
`3
`
`18. On December 31, 1994, the parties to the 1992 lawsuit entered into a
`
`4 written settlement agreement (the "1994 Agreement"). Danzig entered into the 1994
`
`5 Agreement in Los Angeles, California and, on information and belief, Caiafa
`6 entered into it in New York, New York.
`
`7
`8
`
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`23
`24
`25
`26
`27
`28
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`19. The 1994 Agreement contained a paragraph entitled "Merchandising"
`
`that provided that Danzig, on the one hand, and Caiafa and certain other parties to
`
`the 1994 Agreement aligned with Caiafa on the other hand, would share ownership
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`of The Misfits' name, trademarks, logos and artwork in existence during the Classic
`
`Misfits Era. Among other things, the agreement provided as follows:
`
`"The Plaintiffs and Danzig shall each have the non-
`
`exclusive right to conduct merchandising and to exploit
`
`other rights relating to the use and exploitation of the
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`name 'Misfits' and accompanying logos and artwork
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`except that neither party shall use the names, likenesses
`
`and visual representations of the members of the other
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`party without written consent."
`
`20. Thereafter, Danzig and Caiafa both used The Misfits name, trademarks,
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`logos and artwork. Danzig performed Misfits songs in live performances, including
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`with original Misfits member Doyle Caiafa (Caiafa's brother); spoke to audiences
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`about The Misfits and their music; and licensed The Misfits name, trademark, logos
`
`and artwork on merchandise including tee shirts, caps, and other items.
`
`21.
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`In or about 1995, to capitalize on the resurgent popularity of The
`
`Misfits, Caiafa formed an entirely new group which he called "The Misfits."
`
`Caiafa's registrations and attempted registrations of The Misfits related trademarks
`
`and his attempts to obtain exclusive rights to their use is a fraudulent effort to
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`capitalize on The Misfits' and Danzig's popularity and Danzig's goodwill as the
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`KING, HOLMES,
`PATERNO&
`BERLINER,LLP
`
`3421.065/754532.1
`
`EXHIBIT A
`
`4
`
`

`
`1 creative force behind The Misfits and as a still-successful recording artist, composer
`
`2 and performer, calculated to deceive consumers into believing that Danzig endorses
`
`3 Caiafa's exclusive use of the Marks in connection with his imitation misfits.
`
`4
`
`5
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`Caiafa's Fraudulent Assertion of Exclusive Ownership of the Marks
`
`22. Caiafa has breached the 1994 Agreement by filing trademark
`
`6 registration applications seeking to misappropriate for himself exclusive ownership
`
`7 of The Misfits' name, logo and artwork, as follows:
`
`8
`
`9
`
`The Registered Marks
`
`a)
`
`On or about October 2, 2000, without Danzig's knowledge or consent,
`
`10 Caiafa filed an application with the United States Patent and Trademark Office (the
`
`11 "PTO") to register the trademark "MISFITS," Serial Number 76138226, for
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`12 International Class 041 goods, in which he fraudulently concealed Danzig's co-
`
`13 ownership of that mark and fraudulently stated that the first use of the mark was
`
`14 October 5, 1999. On December 16, 2003, the PTO registered that mark under
`
`15 Registration Number 2793533.
`
`16
`
`b)
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`On or about November 20, 2000, without Danzig's knowledge or
`
`17 consent, Caiafa filed an application with the PTO to register the trademark
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`18 "MISFITS," Serial Number 76167459, for International Classes 16 and 41 goods, in
`
`19 which he fraudulently concealed Danzig's co-ownership of that mark and
`
`20 fraudulently stated that the first use of the mark was April19, 1994. On October 2,
`
`21 2002, the PTO registered that Mark under Registration Number 2634215.
`
`22
`
`c)
`
`On or about November 20, 2000, without Danzig's knowledge or
`
`23 consent, Caiafa filed an application with the PTO to register a trademark consisting
`
`24 of the word "MISFITS" in stylized script, Serial Number 76152924, for
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`25 International Classes 9, 16 and 25 goods, in which he fraudulently concealed
`
`26 Danzig's co-ownership of that mark and fraudulently stated that the first use of the
`
`27 mark was April19, 1994. On July 15, 2003, the PTO registered that Mark under
`
`28 Registration Number 2735945.
`
`KING, HOLMES,
`PATERNO&
`BERLINER, LLP
`
`3421.065/754532.1
`
`EXHIBIT A
`
`5
`
`

`
`1
`
`d)
`
`On or about April29, 2000, without Danzig's knowledge or consent,
`2 Caiafa filed an application with the PTO to register a trademark consisting of a
`
`3 stylized skull referred to as the "Fiend Skull" (the "Fiend Skull") Serial Number
`4 76402336, for International Class 14 goods, in which he fraudulently concealed
`
`5 Danzig's co-ownership of that mark and represented that that the first use of the
`
`6 mark was October 1, 1978. On October 7, 2003, the PTO registered that Mark
`
`e)
`
`PTO Registration Numbers 2793533, 2634215, 2735945 and 2770984
`
`are referred to collectively hereinafter as the "Registered Marks."
`
`The Pending Application Marks
`
`7 under Registration Number 2770984.
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`a)
`
`On or about August 3, 2004, without Danzig's knowledge or consent,
`
`Caiafa filed an application with the PTO to register a trademark consisting of the
`
`word "MISFITS", Serial Number 76605515, for International Class 25 goods, in
`
`which he fraudulently concealed Danzig's co-ownership of that mark and
`
`fraudulently stated that the first use of the mark was April19, 1994.
`
`b)
`
`On or about August 3, 2004, without Danzig's knowledge or consent,
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`Caiafa filed an application with the PTO, Serial Number 76605840, to register a
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`trademark consisting of the word "MISFITS" in the same stylized script as the mark
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`registered as Registration Number 2735945, for International Class 25 goods, in
`
`which he fraudulently concealed Danzig's co-ownership of that mark and
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`fraudulently stated that the first use of the mark was Aprill9, 1994. Serial Numbers
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`76605515 and 76605840 are referred to collectively hereinafter as the "Pending
`
`Application Marks." The Registered Marks and the Pending Application Marks are
`
`referred to collectively hereinafter as the "Marks."
`
`23. On November 5, 2005, Danzig filed a cancellation proceeding with the
`
`Trademark Trial Appeals Board (the "TT AB") to cancel PTO Registration Numbers
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`2793533, 2634215, and 2735848, Cancellation Number 92045173.
`
`24. On October 6, 2008, Danzig filed a cancellation proceeding with the
`
`KING, HOLMES,
`PATERNO &
`BERLINER, LLP
`
`3421.065/754532.1
`
`EXHIBIT A
`
`6
`
`

`
`1 TTAB to cancel PTO Registration No. 2770984, Cancellation Proceeding
`2 92050014.
`
`3
`
`25. On March 7, 2008, Danzig filed an opposition proceeding with the
`
`4 TTAB opposing registration of Serial Number 76605515, Opposition proceeding
`
`5 76605515.
`
`6
`
`26. On May 9, 2008, Danzig filed an opposition proceeding with the TT AB
`
`7 opposing registration of Serial Number 76605840, Opposition proceeding
`
`27. The above-referenced cancellation and opposition proceedings are
`
`referred to collectively hereinafter as the "TTAB Proceedings." The gravamen of
`
`the TT AB proceedings is that, pursuant to the 1994 Agreement, Danzig co-owns
`
`each of the Marks, that Caiafa' s application to register the Marks failed to identify
`
`the correct owners of the Marks; and that Caiafa's applications to register the Marks
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`were fraudulent because Caiafa knowingly and intentionally failed to disclose
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`Danzig's co-ownership and, except for the Fiend Skull, misrepresent the first use of
`
`the marks as having been after the date that Danzig disbanded The Misfits, all in an
`
`effort to deny Danzig his contractual and legal rights in the Marks.
`FIRST CLAIM FOR RELIEF
`
`(For Breach of Contract)
`
`28. Danzig incorporates by reference as though fully set forth paragraphs 1
`
`8 91184044.
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`through 27 above.
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`29. Danzig has performed all conditions, covenants and promises required
`
`on his part to be performed under the 1994 Agreement, except those that Caiafa has
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`waived or that were rendered impossible to perform.
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`30. Caiafa has breached and continues to breach the 1994 Agreement by
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`applying for and pursuing exclusive ownership of the Marks.
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`31. Caiafa has further breached and continues to this day to breach the
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`1994 Agreement by notifying merchandisers that any license to exploit the Marks
`
`KING, HOLMES,
`PATERNO&
`BERLINER, LLP
`
`3421.065/754532.1
`
`EXHIBIT A
`
`7
`
`

`
`1 must be conditioned on the merchandisers' agreements not to enter into license
`
`2 agreements with Danzig for use of the Marks and to pay monetary penalties if they
`
`3 enter into agreements with Danzig or his designees to exploit the Marks.
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`4
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`32. As a result ofCaiafa's breaches of the 1994 Agreement, Danzig has
`
`5 suffered damages in the form of lost opportunities to exploit the Marks, in an
`6 amount in excess of $75,000 to be proved at trial, plus interest at the legal rate.
`7
`SECOND CLAIM FOR RELIEF
`
`8
`
`9
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`(For Violation of the Lanham Act, 15 U.S.C. § 1125(a))
`
`33. Danzig incorporates by reference as though fully set forth paragraphs 1
`
`10 through 32 above.
`
`11
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`34. Caiafa has prevented and continues to prevent other retailers, including
`
`12 Hot Topic, which is the largest retailer of The Misfits products, from entering into
`
`13
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`licenses with Danzig and/or his designee to merchandise products bearing the Fiend
`
`14 Skull and other Marks by falsely instructing the merchandisers that he is the
`
`15 exclusive owner of the Marks, and that, if they enter into a license agreement with
`
`16 Danzig to exploit the Marks, they must pay Caiafa a license fee and/or a significant
`
`17 monetary penalty. Among others, Caiafa directed such threats specifically to
`
`18 merchandiser Hot Topic in Los Angeles, the location of Hot Topic's corporate
`
`19 offices, causing Hot Topic to refuse to license the Fiend Skull from Danzig to this
`
`20 day.
`21
`
`35. Caiafa has purposefully led merchandisers, including Hot Topic, to
`
`22 believe that they are legally bound not to accept licenses to exploit the Marks from
`
`23 Danzig or his designees, and Caiafa continues to do so.
`
`24
`
`36. Caiafa's misrepresentations have proximately caused injury to Danzig
`
`25 by causing merchandisers not to do business with him, and have deceived
`
`26 consumers as to the source of merchandise bearing the Marks, because the vast
`
`27 majority of The Misfits fans associate the Marks with the 1977-1983 Classic Misfits
`
`28 Era when Danzig was the creative heart of The Misfits, and not with Caiafa's
`
`KING, HOLMES,
`PATERNO&
`BERLINER, LLP
`
`3421.065/754532.1
`
`EXHIBIT A
`
`8
`
`

`
`1 imitation misfits.
`
`2
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`3 7. Caiafa' s false advertising and misrepresentations to merchandisers and
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`3 consumers have caused Danzig to suffer damages in excess of$75,000, plus interest
`
`4 at the legal rate.
`5
`6
`
`THIRD CLAIM FOR RELIEF
`
`(Interference with Prospective Business Advantage)
`
`7
`
`38. Danzig incorporates by reference as though fully set forth paragraphs 1
`
`8 through 3 7, above.
`
`9
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`39. Had Caiafa not interfered with Danzig's ability to exploit the Marks,
`
`10 Danzig or his designee would have entered into lucrative agreements to license the
`
`11 Marks to merchandisers, including Hot Topic.
`
`12
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`40. Caiafa knows and at all times material herein has known that Danzig
`
`13 has the contractual and legal right to exploit the Marks and that the public associates
`
`14 the Marks with Danzig, not with Caiafa.
`
`15
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`41. Caiafa has intentionally disrupted the economic relationship between
`
`16 Danzig and merchandisers, including Hot Topic, by use of threats and intimidation,
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`17 including threats to withhold licensing rights to the Marks from merchandisers and
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`18 by charging merchandisers penalties for doing business with Danzig and his
`
`19
`
`licensees.
`
`