BULKY DOCUMENTS
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`(Exceeds 100 pages)
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`Filed: (cid:9)
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`11/7/11
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`Title: APPLICANT'S NOTICE OF RELIANCE. (VOLUME
`3 of 3)
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`Part (cid:9)
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`2 of 2
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`91183888
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`88 88
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`Case
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`:07-cv-08234-MMM-YBK Document 1 Filed 12/19/07 ;Page 1 of 65 Page ID #:3
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`Michael L. Meeks, Esq. (State Bar. No. 172000)
`Michael A. Rule, Esq. (State Bar No. 152452)
`Becky Hsiao, Esq. (State Bar. No. 232361)
`PEPPER HAMILTON LLP
`5 Park Plaza, Suite 1700
`Irvine, CA 92614
`Telephone: 949.567.3500
`Fax: 866.777.8799
`E-Mail: hsiaob@pepperlaw.com
`
`M. Kelly Tillery, Esq. (PA Bar No. 30380)*
`PEPPER HAMILTON LLP
`3000 Two Logan Square
`Eighteenth and Arch Streets
`Philadelphia, PA 19103-2799
`Telephone 215.981.4000
`Facsimile 215.981.4750
`E-Mail: tilleryk@pepperlaw.com
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`Attorneys for IN-N-OUT BURGERS, a California Corp.
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`UNITED STATES DISTRICT COURT
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`CENTRA.L DISTRICT OF CALIFORNIA — WESTERN DIV,LS ON
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`Ccsver - 0825 4
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`IN-N-OUT BURGERS, a California
`Corporation,
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`Plaintiff,
`
`V.
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`IN & OUT PALLETS, INC., a
`California Corporation,
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`Defendant.
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`COMPLAINT FOR TRADEMARK
`INFRINGEMENT
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`JURY TRIAL DEMANDED
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`Applicant's Exhibit 888
`In-N-Out Burgers, Inc. v.
`Fast Lane Car Wash & Lube, LLC
`Opposition No. 91183888
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`*Motion to Admit Pro Hac Vice filed
`simultaneously.
`
`FORM
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`Complaint
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`

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`Case
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`:07-cv-08234-MMM-VBK Document 1 Filed 12/19/07 Page 2 of 65 Page ID #:4
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`Plaintiff IN-N-OUT BURGERS, a California Corporation, (hereinafter "IN-
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`N-OUT BURGERS"), by and through its undersigned Counsel, hereby files its
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`Complaint against Defendant IN & OUT PALLETS, INC. (hereinafter "Defendant"
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`or "IN & OUT PALLETS"). In support of its Complaint, IN-N-OUT BURGERS
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`alleges as follows:
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`1.
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`This action concerns Defendant's Trademark Infringement and Unfair
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`Competition under The Lanham Act, Trademark Infringement and Unfair
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`Competition under California Statutory and Common Law, and Trademark Dilution
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`under California Law.
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`PARTIES
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`2.
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`Plaintiff IN-N-OUT BURGERS is a California corporation with its
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`principal place of business in Irvine, California.
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`3.
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`Defendant IN & OUT PALLETS is a California corporation with its
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`headquarters and/or principal place of business at 3233 Grand Avenue, Suite 108,
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`Chino Hills, California 91709.
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`4.
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`IN & OUT PALLETS manufactures, repairs, distributes, advertises
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`and/or sells new and used wooden pallets, custom wood pallets, drum pallets, skids
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`and plastic pallets in Orange County and throughout the Southern California
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`Region.
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`JURISDICTION AND VENUE
`This Court may exercise jurisdiction over Defendant because
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`5.
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`Defendant regularly transacts business in California, and the causes of action
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`alleged herein arose in whole or in part in California.
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`6.
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`This Complaint alleges claims under the Lanham Act, making
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`jurisdiction proper in this Court pursuant to Title 28 U.S.C. §§ 1331, 1338, and
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`1367. This Complaint alleges claims under §§ 32 and 43 of the Lanham Act. The
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`Complaint also alleges State Law claims under California Law that are so related to
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`Complaint
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`Case
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`:07-cv-08234-MMM-V8 Document 1 Filed 12/19/07 Rage 3 of 65 Page ID #:5
`K
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`the Federal Question Claim under The Lanham Act that they form part of the same
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`case and controversy, thereby making the exercise of Supplemental Jurisdiction
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`under Title 28 U.S.C. § 1367 appropriate.
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`7.
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`Venue is proper in this District pursuant to Title 28 U.S.C. § 1391(b)
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`because Defendant conducts substantial business in this Judicial District.
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`8.
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`Venue also is properly laid in this Judicial District pursuant to Title 28
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`U.S.C. § 1391(b) on the ground that the infringing acts alleged herein arose, in
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`whole or in part, within this Judicial District. (cid:9) Defendant uses Infringing
`Trademarks in connection with the manufacturing, distribution, advertising, and/or
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`sale of its products in this Judicial District.
`BACKGROUND — THE BUSINESS OF PLAINTIFF
`Long prior to the acts complained of herein, IN-N-OUT BURGERS
`adopted and commenced use of the mark "IN-N-OUT". IN-N-OUT BURGERS
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`9.
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`has been engaged in the business of providing specially-prepared sandwiches to
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`consumers in restaurants since at least as early as 1948.
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`10.
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`IN-N-OUT BURGERS currently has over 200 locations throughout
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`California and the southwestern United States, and plans to expand its restaurant
`operations in California and to other states.
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`11.
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`Since at least as early as 1960, IN-N-OUT BURGERS has used the
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`mark "IN-N-OUT" in interstate commerce in connection with its advertising,
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`promotion, offering to provide, and providing specially-prepared sandwiches and
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`other goods and services to consumers both in its restaurants and through its
`automobile drive-through windows.
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`12.
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`IN-N-OUT BURGERS owns all right, title, and interest in and to the
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`mark "IN-N-OUT," and has obtained Federal Trademark and Service Mark
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`Registrations for the mark "IN-N-OUT" for a wide range of food and other
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`products, including, inter alia, hamburger sandwiches and cheeseburger
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`sandwiches, French fried potatoes, hot co3ffee, milkshakes, bumper stickers,
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`Complaint
`
`

`
`Case :07-cv-08234-MMMNBK Document 1 Filed 12/19/07 Page 4 of 65 Page ID #:6
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`backpacks, and coffee mugs. IN-N-OUT BURGERS' Federal Trademark and
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`Service Mark Registrations for the mark "IN-N-OUT" include:
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`U.S.P.T.O.
`MARK REGISTRATION CLASS (cid:9)
`No.
`2217307 (cid:9)
`
`IC 014 (cid:9)
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`IN-N- (cid:9)
`OUT
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`DESCRIPTION OF SERVICES OR GOODS
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`Watches
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`IC 016 (cid:9)
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`Decals in the nature of bumper
`stickers; publications in the nature of
`house organs; gift certificates.
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`IC 018 (cid:9)
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`Backpacks
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`IC 021 (cid:9)
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`Coffee mugs and thermal mugs
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`IC 025 (cid:9)
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`Shirts, baseball caps, letterman's
`jackets, and cooks aprons.
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`IN-N- (cid:9)
`OUT (cid:9)
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`IN-N- (cid:9)
`OUT (cid:9)
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`2285823 (cid:9)
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`IC 042 (cid:9)
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`1525982 (cid:9)
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`IC 032 (cid:9)
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`IC 030 (cid:9)
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`IC 029 (cid:9)
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`IC 042 (cid:9)
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`IN-N- (cid:9)
`OUT (cid:9)
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`1522799 (cid:9)
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`IC 029 (cid:9)
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`Computer services, namely, providing
`data bases in the field of restaurant
`services and in the field of retail and
`mail order merchandising services.
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`Lemonade and soft drinks for
`consumption on or off the premises.
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`Hamburger sandwiches and
`cheeseburger sandwiches, hot coffee,
`and milkshakes for consumption on or
`off the premises.
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`Milk and French fried potatoes for
`consumption on or off the premises.
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`Restaurant services and carry-out
`restaurant services.
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`Milk and French fried potatoes for
`consumption on or off the premises.
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`IC 030 (cid:9)
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`Hamburger sandwiches and
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`4
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`Complaint
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`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
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`Case
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`:07-cv-08234-MMM-VBK Document 1 Filed 12/19/07 (Page 5 of 65 Page ID #:7
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`IC 032 (cid:9)
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`IC 042 (cid:9)
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`1101628 (cid:9)
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`IC 029 (cid:9)
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`cheeseburger sandwiches, hot coffee,
`and milkshakes for consumption on or
`off the premises.
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`Lemonade and soft drinks for
`consumption on or off the premises.
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`Restaurant services and carry-out
`restaurant services.
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`Milk and French fried potatoes for
`consumption on or off the premises.
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`IC 032 (cid:9)
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`Lemonade and soft drinks for
`consumption on or off the premises.
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`1085163 (cid:9)
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`IC 042 (cid:9)
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`Restaurant services and carry-out
`restaurant services.
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`1101638 (cid:9)
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`IC 030 (cid:9)
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`Cheeseburgers, hamburgers, hot coffee
`and milkshakes for consumption on or
`off premises.-
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`IN-N- (cid:9)
`OUT (cid:9)
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`IN-N- (cid:9)
`OUT (cid:9)
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`IN-N- (cid:9)
`OUT (cid:9)
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`13.
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`IN-N-OUT BURGERS' seven (7) Federal Service Mark and
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`Trademark Registrations relating to these services and products are attached
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`respectively hereto as Exhibits "A" through "G".
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`14.
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`In addition, IN-N-OUT BURGERS has been engaged in the interstate
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`financial sponsorship of automobiles and the automobile racing industry since at
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`least as early as 1985. IN-N-OUT BURGERS owns all right, title, and interest in
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`and to the mark "IN-N-OUT BURGERS" and "IN-N-OUT BURGERS
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`FOUNDATION" to the following Federal Service Mark Registrations relating to
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`the interstate financial sponsorship of automobiles and the automobile racing
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`industry:
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`///
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`///
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`5
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`Complaint
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`

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`Case
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`:07-cv-08234-MMM-?(/BK Document 1 Filed 12/19/07 :Page 6 of 65 Page ID #:8
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`MARK (cid:9)
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`IN-N-OUT (cid:9)
`BURGERS
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`IN-N-OUT (cid:9)
`BURGERS
`FOUNDATION
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`IN-N-OUT (cid:9)
`BURGERS
`FOUNDATION
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`U.S.P.T.O.
`REGISTRATION
`No.
`2291183
`
`CLASS DESCRIPTION OF SERVICES OR
`GOODS
`Financial Sponsorship of race
`cars and race car drivers
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`IC 036 (cid:9)
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`2121178
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`IC 036 (cid:9)
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`Financial Sponsorship of race
`cars and race car drivers
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`2035491
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`IC 036 (cid:9)
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`Financial Sponsorship of race
`cars and race car drivers
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`15.
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`IN-N-OUT BURGERS' three (3) Federal Service Mark Registrations
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`relating to the interstate financial sponsorship of automobiles and the automobile
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`racing industry are attached respectively hereto as Exhibits "H" through "J".
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`16.
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`IN-N-OUT BURGERS makes use of its ten (10) Registered Marks in
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`interstate commerce by displaying its Registered Marks on product packaging,
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`menus, signage, promotional materials, race cars, and advertising media.
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`17.
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`IN-N-OUT BURGERS owns a fleet of over 350 vehicles, over 120 of
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`which are a part of a distribution system that includes tractor trailers, cat trucks,
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`maintenance vehicles, delivery vans, cookout trucks, and pallets. IN-N-OUT
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`BURGERS' Registered Marks, including the IN-N-OUT BURGERS name and
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`stylized arrow, are prominently displayed on each vehicle in its fleet. Members of
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`the consuming public associate IN-N-OUT BURGERS' Registered Marks with the
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`vehicles in the IN-N-OUT BURGERS distribution system.
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`18. Since the date of First Use of the Registered Marks, IN-N-OUT
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`BURGERS has manifested the intent to maintain exclusive ownership of the
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`Registered Marks and to continue use of the Registered Marks in interstate
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`Complaint
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`

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`Case :07-cv-08234-MMUNBK Document 1 Filed 12/19107 , Page 7 of 65 Page ID #:9
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`commerce in connection with IN-N-OUT BURGERS' products and services
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`offered for sale in restaurants in California and the southwestern United States.
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`19.
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`IN-N-OUT BURGERS has invested millions of dollars in advertising
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`its Registered Marks in the United States in an effort to create a strong association
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`between IN-N-OUT BURGERS' products and services, good will, and its
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`Registered Marks.
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`20.
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`The Registered Marks are strong, arbitrary marks that warrant broad
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`protection in both related and unrelated product and/or service classes.
`21. As a result of the care and skill exercised by IN-N-OUT BURGERS in
`the conduct of its business, the high quality of IN-N-OUT BURGERS' products
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`and services offered under its Registered Marks, and the extensive advertising, sale,
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`and promotion of IN-N-OUT BURGERS' products bearing its Registered Marks,
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`its Registered Marks have acquired Secondary Meaning in the United States,
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`including in the State of California.
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`22.
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`IN-N-OUT BURGERS was the first drive-through hamburger
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`restaurant, opened in 1948, and since then, always has operated with the drive-
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`through business at the core of its business concepts. IN-N-OUT BURGERS does
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`not place its restaurants in shopping centers, ball parks, or other such locations that
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`would detract from and which would not be conducive to the drive-in culture and
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`experience.
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`23.
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`Since its inception, IN-N-OUT BURGERS business model has
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`focused on the car culture of California.
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`24.
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`In keeping with the car culture business model, every year IN-N-OUT
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`BURGERS creates and sells apparel featuring cars.
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`25. By virtue of its drive-through operations and promotions, as well as it
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`extensive sponsorship of race cars, IN-N-OUT BURGERS and its Registered
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`Marks are closely tied to the automobile culture in California and throughout the
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`country.
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`Complaint
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`

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`Case 2:07-cv-08234-MMM-VBK Document 1 Filed 12/19/07 Page 8 of 65 Page ID #:10
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`DEFENDANT'S INFRINGING ACTIVITIES
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`26.
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`IN & OUT PALLETS manufactures, repairs, distributes, advertises
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`and/or sells pallet products to consumers in Orange County, California.
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`27.
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`IN & OUT PALLETS has used, and continues to use, the marks "IN &
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`OUT PALLETS" and/or "IN & OUT PALLETZ" ("Infringing Marks") in the
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`manufacturing, repair, distribution, advertising and/or sale of pallet products to
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`consumers in Orange County, California. IN & OUT PALLETS also uses and
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`displays the Infringing Marks alongside an arrow on its delivery trucks.
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`28.
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`IN & OUT PALLETS has advertised the Infringing Marks in
`California and this Judicial District.
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`29.
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`The Infringing Marks constitute colorable imitations of IN-N-OUT
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`BURGERS' Registered Marks.
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`30.
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`IN-N-OUT BURGERS has over eighty (80) IN-N-OUT BURGERS
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`restaurants throughout Los Angeles County and Orange County, California.
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`Several of these restaurants are located within a short drive from Defendant's
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`office(s) and business location(s).
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`31.
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`IN-N-OUT BURGERS did not authorize, and would never authorize,
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`IN & OUT PALLETS to use the Infringing Marks or any other colorable imitations
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`of the Registered Marks.
`32.
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`IN-N-OUT BURGERS has asked IN & OUT PALLETS to cease and
`desist from all present and future uses of the Infringing Marks or any colorable
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`imitations of the Registered Marks. IN & OUT PALLETS has refused.
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`COUNT I — FEDERAL TRADEMARK INFRINGEMENT
`TITLE 15 U.S.C. 4 1114
`Paragraphs 1 - 32 are incorporated herein by reference.
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`IN-N-OUT BURGERS exclusively owns the Registered Marks.
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`IN-N-OUT BURGERS has used the Registered Marks in interstate
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`33.
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`34.
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`35.
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`commerce in connection with the advertsing and promotion of its restaurant goods
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`Complaint
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`

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`Case
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`:07-cv-08234-MIV1M-VBK Document 1 Filed 12/19/07 Page 9 of 65 Page ID #:11
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`and services and financial sponsorship of automobiles and the automobile racing
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`industry.
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`36.
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`IN & OUT PALLETS has used, and continues to use, colorable
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`imitations of the Registered Marks in interstate commerce in connection with the
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`manufacturing, repair, distribution, advertising, and/or sale of pallet products.
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`37. Upon information and belief, IN & OUT PALLETS' unauthorized use
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`of colorable imitations of the Registered Marks has caused, and will likely cause,
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`confusion, mistake, or deception in the relevant consumer market.
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`38. Upon information and belief, IN & OUT PALLETS' unauthorized use
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`of colorable imitations of the Registered Marks constitutes Trademark Infringement
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`in violation of Title 15 U.S.C. §§ 1114 and 1117.
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`39.
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`IN & OUT PALLETS acted in bad faith and/or willfully in adopting
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`colorable imitations of the Registered Marks in connection with the manufacturing,
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`repair, distribution, advertising, and/or sale of pallet products in an effort to reap the
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`benefits of the goodwill associated with IN-N-OUT BURGERS' Registered Marks.
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`40.
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`IN & OUT PALLETS' infringing acts have caused, and will continue
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`to cause, IN-N-OUT BURGERS to suffer irreparable injuries to its reputation and
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`good will. IN-N-OUT BURGERS does not have an adequate remedy at law to
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`recover for this harm, and therefore, IN-N-OUT BURGERS is entitled to injunctive
`relief.
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`WHEREFORE, IN-N-OUT BURGERS requests judgment in its favor and
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`that this Court enter a Permanent Injunction enjoining IN & OUT PALLETS from
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`any further use of the Infringing Marks and any further use of any colorable
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`imitations of the Registered Marks.
`COUNT Ii— FEDERAL UNFAIR COMPETITION
`TITLE 15 U.S.C. § 1125
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`41.
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`Paragraphs 1 - 40 are incorporated herein by reference.
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`Case •07-cv-08234-MMM-VBK Document 1 Filed 12/19/07 Page 10 of 65 Page ID #:12
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`42. Upon information and belief, IN & OUT PALLETS' unauthorized use
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`of colorable imitations of the Registered Marks constitutes a false designation of
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`origin, a false or misleading description of fact, and/or false or misleading
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`representation of fact, and has caused and is likely to cause confusion, mistake,
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`and/or deception as to the following:
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`a) the affiliation, connection or association of the marks "IN
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`& OUT PALLETS" or "IN & OUT PALLETZ" with IN-
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`N-OUT BURGERS;
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`the origin, sponsorship, or approval of IN-N-OUT
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`BURGERS of the marks "IN & OUT PALLETS" or "IN
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`& OUT PALLETZ"; and/or
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`c) the nature, characteristics, or qualities of Defendant's
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`goods that bear the marks "IN & OUT PALLETS" or "IN
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`& OUT PALLETZ".
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`43. The aforesaid acts constitute Federal Unfair Competition in violation
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`of Title 15 U.S.C. § 1125(a).
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`WHEREFORE, IN-N-OUT BURGERS requests judgment in its favor and
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`that this Court enter a Permanent Injunction enjoining IN & OUT PALLETS from
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`any further use of the Infringing Marks and any further use of any colorable
`90 imitations of the Registered Marks.
`COUNT III— TRADEMARK INFRINGEMENT (CALIFORNIA LAW)
`CAL. BUS. & PROF. CODE 14335
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`21 (cid:9)
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`44. Paragraphs 1 - 43 are incorporated herein by reference.
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`45. Section 14335 of the California Business & Professions Code
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`authorizes this Court to enjoin any infringing use of a mark registered under Title
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`15 of the U.S. Code.
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`46. The Registered Marks are registered under Title 15 of the U.S. Code.
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`47. IN-N-OUT BURGERS exqjsively owns the Registered Marks.
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`Complaint
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`

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`Case 2 . 07-cv-08234-MMM-VBK Document 1 Filed 12/19/07 Page 11 of 65 Page ID #:13
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`48. IN-N-OUT BURGERS has used the Registered Marks in intrastate and
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`interstate commerce in connection with the advertising and promotion of its
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`restaurant goods and services and financial sponsorship of automobiles and the
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`automotive racing industry.
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`49. IN & OUT PALLETS has used colorable imitations of the Registered
`
`Marks in interstate commerce in connection with the manufacturing, repair,
`
`distribution, advertising, and/or sale of pallet products.
`
`50. Upon information and belief, IN & OUT PALLETS' unauthorized use
`
`of colorable imitations of the Registered Marks has caused, and will likely cause,
`
`confusion in the relevant consumer market.
`
`51. Upon information and belief, IN & OUT PALLETS' unauthorized use
`
`of colorable imitations of the Registered Marks constitutes false designation of
`
`origin, false or misleading description of fact, and/or false or misleading
`
`representation of fact, and has caused and is likely to cause confusion, mistake,
`
`and/or deception as to the following:
`
`a)
`
`the affiliation, connection or association of the marks "IN
`8c OUT PALLETS" or "IN & OUT PALLETZ" with IN-
`N-OUT BURGERS;
`
`b)
`
`the origin, sponsorship, or approval of IN-N-OUT
`
`BURGERS of the marks 'IN & OUT PALLETS" or "IN &
`OUT PALLETZ"; and/or
`
`c)
`
`the nature, characteristics, or qualities of Defendant's
`
`goods that bear the marks "IN & OUT PALLETS" or "IN
`
`& OUT PALLETZ".
`
`52. IN & OUT PALLETS' false designations, descriptions, and
`
`representations were made deliberately and with knowledge of their falsity.
`
`Complaint
`
`

`
`Case 2: 7-cv-08234-MMMNBK Document 1 Filed 12/19/07 page 12 of 65 Page ID #:14
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`1
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`/2
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`23
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`27
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`28
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`53.
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`IN & OUT PALLETS acted in bad faith and/or willfully in adopting
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`colorable imitations of the Registered Marks in an effort to reap the benefits of the
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`goodwill associated with IN-N-OUT BURGERS' Registered Marks.
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`54.
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`IN & OUT PALLETS' infringing acts have caused, and will continue
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`to cause, IN-N-OUT BURGERS to suffer irreparable injuries to its reputation and
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`good will. IN-N-OUT BURGERS does not have an adequate remedy at law to
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`recover for this harm, and therefore, IN-N-OUT BURGERS is entitled to injunctive
`
`relief
`
`WHEREFORE, IN-N-OUT BURGERS requests judgment in its favor and
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`that this Court enter a Permanent Injunction enjoining IN & OUT PALLETS from
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`any further use of the Infringing Marks and any further use of any colorable
`
`imitations of the Registered Marks.
`COUNT IV — UNFAIR COMPETITION (CALIFORNIA LAW1
`CAL. BUS. & PROF. CODE 4 17200
`Paragraphs I — 54 are incorporated herein by reference.
`
`55.
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`56.
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`IN-N-OUT BURGERS owns and enjoys rights in California and other
`
`jurisdictions throughout the United States in the Registered Marks.
`
`57.
`
`IN-N-OUT BURGERS has used the Registered Marks in intra and
`
`interstate commerce in connection with the advertising and promotion of its
`
`restaurant goods and services and financial sponsorship of automobiles and the
`automotive racing industry.
`
`58.
`
`IN & OUT PALLETS has used colorable imitations of the Registered
`
`Marks in interstate commerce in connection with the manufacturing, repair,
`
`distribution, advertising, and/or sale of pallet products.
`
`59. Upon information and belief, IN & OUT PALLETS' unauthorized use
`
`of colorable imitations of the Registered Marks has caused, and will likely cause,
`
`confusion in the relevant consumer market.
`
`12
`
`Complaint
`
`

`
`Case •07-cv-08234-MMM-yBK Document 1 Filed 12/19/07 page 13 of 65 Page ID #:15
`
`60. Upon infounation and belief, IN & OUT PALLETS' unauthorized use
`
`2
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`of colorable imitations of the Registered Marks constitutes false designation of
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`3 origin, false or misleading description of fact, and/or false or misleading
`
`4
`
`5
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`6 (cid:9)
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`7 (cid:9)
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`8 I (cid:9)
`9 (cid:9)
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`10 (cid:9)
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`11 (cid:9)
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`12 (cid:9)
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`13 (cid:9)
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`14 (cid:9)
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`15 (cid:9)
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`representation of fact, and has caused and is likely to cause confusion, mistake,
`
`and/or deception as to the following:
`
`a) the affiliation, connection or association of the marks "IN
`
`& OUT PALLETS" or "IN & OUT PALLETZ" with IN-
`
`N-OUT BURGERS;
`
`b) the origin, sponsorship, or approval of IN-N-OUT
`
`BURGERS of the marks "IN & OUT PALLETS" or "IN
`
`& OUT PALLETZ"; and/or
`
`c)
`
`the nature, characteristics, or qualities of Defendant's
`
`goods that bear the marks "IN & OUT PALLETS" or "IN
`
`& OUT PALLETZ".
`
`61. IN & OUT PALLETS' false designations, descriptions, and
`
`16 representations were made deliberately and with knowledge of their falsity.
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`17 (cid:9)
`
`18
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`19
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`20 (cid:9)
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`21
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`22
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`23
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`24 (cid:9)
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`25 (cid:9)
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`26
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`27 (cid:9)
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`28
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`62. IN & OUT PALLETS acted in bad faith and/or willfully in adopting
`
`colorable imitations of the Registered Marks in an effort to reap the benefits of the
`
`goodwill associated with IN-N-OUT BURGERS' Registered Marks.
`
`63. IN & OUT PALLETS infringing acts have caused, and will continue
`to cause, IN-N-OUT BURGERS to suffer irreparable injuries to its reputation and
`
`good will. IN-N-OUT BURGERS does not have an adequate remedy at law to
`
`recover for this harm, and therefore, IN-N-OUT BURGERS is entitled to injunctive
`
`relief.
`
`64. IN & OUT PALLETS' actions constitute Unfair Competition under
`the Statutory Law of California, including Cal. Bus. & Prof. Code § 17200, et seq.
`
`WHEREFORE, IN-N-OUT BURGERS requests judgment in its favor and
`
`that this Court enter a Permanent Injun9tion enjoining IN & OUT PALLETS from
`
`Complaint
`
`

`
`Case 2 . 07-cv-08234-MMM-VBK Document 1 Filed 12/19/07
`
`tPage 14 of 65 Page ID #:16
`
`yr
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`4
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`7
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`8
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`20
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`21
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`23
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`24
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`25
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`26
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`27
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`28
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`any further use of the Infringing Marks and any further use of any colorable
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`imitations of the Registered Marks.
`COUNT V — UNFAIR COMPETITION (CALIFORNIA LAW)
`CALIFORNIA COMMON LAW
`Paragraphs 1 — 64 are incorporated herein by reference.
`
`65.
`
`66.
`
`IN-N-OUT BURGERS owns and enjoys rights in California and other
`
`jurisdictions throughout the United States in the Registered Marks.
`
`67.
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`IN-N-OUT BURGERS has used the Registered Marks in intra and
`
`interstate commerce in connection with the advertising and promotion of its
`
`restaurant goods and services and financial sponsorship of automobiles and the
`
`automotive racing industry.
`
`68.
`
`IN & OUT PALLETS has used colorable imitations of the Registered
`
`Marks in interstate commerce in connection with the manufacturing, repair,
`
`distribution, advertising, and/or sale of pallet products.
`
`69. Upon information and belief, IN & OUT PALLETS' unauthorized use
`
`of colorable imitations of the Registered Marks has caused, and will likely cause,
`
`confusion in the relevant consumer market.
`
`70. Upon information and belief, IN & OUT PALLETS' unauthorized use
`
`of colorable imitations of the Registered Marks constitutes false designation of
`
`origin, false or misleading description of fact, and/or false or misleading
`representation of fact, and has caused and is likely to cause confusion, mistake,
`
`and/or deception as to the following:
`
`a)
`
`the affiliation, connection or association of the marks "IN
`
`& OUT PALLETS" or "IN & OUT PALLETZ" with IN-
`
`N-OUT BURGERS;
`
`b)
`
`the origin, sponsorship, or approval of IN-N-OUT
`
`BURGERS of the marks "IN & OUT PALLETS" or "IN
`
`& OUT PALLUZ"; and/or
`
`Complaint
`
`

`
`Case
`
`:07-cv-08234-MMM-YBK Document 1 Filed 12/19/07 page 15 of 65 Page ID #:17
`
`c) the nature, characteristics, or qualities of Defendant's
`
`goods that bear the marks "IN & OUT PALLETS" or "IN
`
`& OUT PALLETZ".
`
`71.
`
`IN & OUT PALLETS' false designations, descriptions, and
`
`representations were made deliberately and with knowledge of their falsity.
`
`72.
`
`IN & OUT PALLETS acted in bad faith and/or willfully in adopting ,
`
`colorable imitations of the Registered Marks in an effort to reap the benefits of the
`
`goodwill associated with IN-N-OUT BURGERS' Registered Marks.
`
`73.
`
`IN & OUT PALLETS' infringing acts have caused, and will continue
`
`to cause, IN-N-OUT BURGERS to suffer irreparable injuries to its reputation and
`
`good will. IN-N-OUT BURGERS does not have an adequate remedy at law to
`
`recover for this harm, and therefore, IN-N-OUT BURGERS is entitled to injunctive
`
`relief.
`
`74.
`
`IN & OUT PALLETS' actions constitute Unfair Competition in
`
`violation of California Common Law of Unfair Competition.
`
`WHEREFORE, IN-N-OUT BURGERS requests judgment in its favor and
`
`that this Court enter a Permanent Injunction enjoining IN & OUT PALLETS from
`
`any further use of the Infringing Marks and any further use of any colorable
`
`imitations of the Registered Marks.
`COUNT VI — DILUTION (CALIFORNIA LAW)
`CAL. BUS. & PROF. CODE 4 14330
`Paragraphs 1 — 74 are incorporated herein by reference.
`
`75.
`
`76. Upon information and belief, IN & OUT PALLETS' use of colorable
`
`imitations of the Registered Marks has harmed IN-N-OUT BURGERS and its
`
`business reputation and has caused, and continues to cause, dilution by lessening
`
`the capacity of the Registered Marks to identify and distinguish IN-N-OUT
`
`BURGERS' goods and services from the goods and services of others.
`
`3
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`4
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`5
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`6
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`7
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`8
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`10
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`11
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`12
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`13
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`14
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`15
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`17
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`21
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`23
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`25
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`26
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`77
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`15
`
`Complaint
`
`

`
`Case 07-cv-08234-MMM-YBK Document 1 Filed 12/19/07 page 16 of 65 Page ID #:18
`
`77. Upon infoimation and belief, the infringing acts of IN & OUT
`
`PALLETS have impaired, and continue to impair, the distinctive quality of the
`
`Registered Marks.
`
`78. Upon information and belief, the infringing acts of IN & OUT
`
`PALLETS have injured, and continue to injure, the business reputation of IN-N-
`
`OUT BURGERS.
`
`79. The foregoing infringing acts of IN & OUT PALLETS constitute
`
`actionable dilution under California Business and Professions Code §14330.
`
`80.
`
`IN & OUT PALLETS acted in bad faith and/or willfully in adopting
`
`colorable imitations of the Registered Marks in an effort to reap the benefits of the
`
`goodwill associated with IN-N-OUT BURGERS' Registered Marks.
`
`81.
`
`IN & OUT PALLETS' infringing acts have caused, and will continue
`
`to cause, IN-N-OUT BURGERS to suffer irreparable injuries as a result of the
`
`impaii (cid:9) ment of the distinctiveness of the Registered Marks. IN-N-OUT BURGERS
`
`does not have an adequate remedy at law to recover for this harm, and therefore,
`
`IN-N-OUT BURGERS is entitled to injunctive relief.
`
`WHEREFORE, IN-N-OUT BURGERS requests judgment in its favor and
`
`that this Court enter a Permanent Injunction enjoining IN & OUT PALLETS from
`
`any further use of the Infringing Marks and any further use of any colorable
`imitations of the Registered Marks.
`
`///
`
`///
`///
`
`3
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`4
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`5
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`6
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`7
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`21
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`22
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`23
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`-)5
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`26
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`16
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`Complaint
`
`

`
`Case
`
`. 07-cv-08234-MMM-VBK Document 1 Filed 12/19/07 page 17 of 65 Page ID #19
`
`Dated: (cid:9)
`
`December IV, 2007 Respectfully submitted,
`
`4
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`28
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`By: (cid:9)
`
`
`
`Michael Ntèeks, Esq.
`Michael Rule, Esq.
`Becky Hsiao, Esq.
`PEPPER HAMILTON LLP
`5 Park Plaza, Suite 1700
`Irvine, CA 92614-8503
`Telephone: 949.567.2500
`Facsimile 949. 863.0151
`E-Mail: meeksmapepperlaw.com
`
`M. Kelly Tillery, Esq. (PA Bar No.
`30386)*
`PEPPER HAMILTON LLP
`3000 Two Logan Square
`Eighteenth & Arch Streets
`Philadelphia, PA 19103-2799
`Telephone: 215.981.4000
`Facsimile: 215.981.4750
`E-mail: tillerykrtivepprelaw.com
`
`Attorneys for IN-N-OUT BURGERS
`
`*Motion to Admit Pro Hac Vice filed
`simultaneously.
`
`17
`Complaint
`
`

`
`Case 2:07-cv-08234-MMM-VBK Document 1 Filed 12/19/07 page 18 of 65 Page ID #:20
`
`1
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`3
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`21
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`24
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`26
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`27
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`28
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`Plaintiff IN-N-OUT BURGER hereby demands a Jury Trial on all issues for
`
`JURY DEMAND
`
`which a Jury Trial is available.
`
`Dated: (cid:9)
`
`December 6, 2007 Respectfully submitted,
`
`By: (cid:9)
`
`
`
`4/
`Michael Mel3s, Esq.
`Michael Rule, Esq.
`Becky Hsiao, Esq.
`PEPPER HAMILTON LLP
`5 Park Plaza, Suite 1700
`Irvine, CA 92614-8503
`Telephone: 949.567.2500
`Facsimile 949. 863.0151
`E-Mail: meeksmapepperlaw.com
`
`M. Kelly Tillery, Esq. (PA Bar No. 30386)
`PEPPER HAMILTON LLP
`3000 Two Logan Square
`Eighteenth & Arch Streets
`Philadelphia, PA 19103-2799
`Telephone: 215.981.4000
`Facsimile: 215.981.4750
`E-mail: tilleryk(i4pepprelaw.com
`
`Attorneys for IN-N-OUT BURGERS
`
`18
`
`Complaint
`
`

`
`Case 2:07-cv-08234-MMM-VBK Document 1 Filed 12/19/07 page 19 of 65 Page ID #:21
`
`EXHIBI
`
`

`
`Case 2:07-cv-08234-IVIMM-VBK Document 1 Filed 12119/07 page 20 of 65 Page ID #:22
`
`Int. Cis.: 14, 16, 18, 21 and 25
`
`Prior U.S. as.: 1, 2, 3, 5, 13, 22, 23, 27, 28, 29,
`30, 33, 37, 38, 39, 40, 41 and 50 (cid:9)
`United States Patent and Trademark Office (cid:9)
`TRADEMARK
`PRINCIPAL REGISTER
`
`Reg. No, 2,217,307
`Registered Jan. 12, 1999
`
`IN-N-OUT
`
`INN-OUT BURGERS (CALIFORNIA CORPO-
`RATION)
`4199 CAMPUS DRIVE, 9TH FLOOR
`IRVINE, CA 92612
`
`FOR: WATCHES, IN CLASS 14 (U.S. CLS. 2,
`27, 28 AND 50).
`FIRST USE 8-16-1988; IN COMMERCE
`8-16-1988.
`FOR: DECALS IN THE NATURE OF
`BUMPER STICKERS; PUBLICATIONS IN THE
`NATURE OF HOUSE ORGANS; GIFT CERTIFI-
`CATES, IN CLASS 16 (U.S. CLS. 2, 5, 22, 23, 29,
`37, 38 AND 50).
`FIRST USE 0-0-1979; IN COMMERCE
`0-0-1979.
`FOR: BACKPACKS, IN CLASS 18 (U.S. CLS. 1.
`2, 3, 22 AND 41).
`
`FIRST USE 4-0-1994; IN COMMERCE
`7-0-1994.
`FOR: COFFEE MUGS AND THERMAL
`MUGS, IN CLASS 21 (U.S. CLS. 2, 13, 23, 29, 30,
`33, 40 AND 50).
`FIRST USE 8-16-1988; IN COMMERCE
`8-16-1988.
`FOR: SHIRTS, BASEBALL CAPS, LETTER-
`MAN'S JACKETS, AND COOKS APRONS, IN
`CLASS 25 (U.S. CLS. 22 AND 39).
`FIRST USE 1-20-1987; IN COMMERCE
`1-20-1987.
`OWNER OF U.S. REG. NOS. 1,023,506, 1,101,638
`AND OTHERS.
`
`SER. NO. 75-396,996, FILED 11-28-1997.
`
`LESLEY LA MOTH E, EXAMINING ATTORNEY
`
`

`
`Filed 12/19/07 Pag e 21 of 65 PageltVg:23°1
`Case 2:07-cv-08234-MMM-ypK Document
`Thank you for your requesi: here are the latest results from the r kIZR vh Ntql er.
`
`This page was generated by the TARR system on 2007-10-24 14:09:47 ET
`
`Serial Number: 75396996 Assignment Information (cid:9)
`
`I
`
`i. Lkitstlitc1.
`
`Registration Number: 2 217307
`
`Mark (words only): IN-N-OUT
`
`Standard Character claim: No
`
`Current Status: Section 8 and 15 affidavits have been accepted and ackn