Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA479026
`ESTTA Tracking number:
`06/20/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91204116
`Defendant
`Renaissance Pictures Ltd.
`MICHAEL CHIAPPETTA
`FROSS ZELNICK LEHRMAN ZISSU PC
`866 UNITED NATIONS PLAZA
`NEW YORK, NY 10017
`UNITED STATES
`mc@fzlz.com, bsolomon@fzlz.com
`Motion to Suspend for Civil Action
`Michael Chiappetta
`mc@fzlz.com, bsolomon@fzlz.com
`/Michael Chiappetta/
`06/20/2012
`Motion to Suspend for Civil Action (F1032077).PDF ( 41 pages )(2054759 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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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Application Serial No. 85/052146
`For the Mark EVIL DEAD
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`——————————————————————————————————————————————————————X
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`AWARD PICTURES, LLC,
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`Opposer,
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`- against -
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`RENAISSANCE PICTURES, LTD,
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`Applicant.
`.................................................... --x
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`Opposition No. 912041 16
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`MOTION TO SUSPEND OPPOSITION
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`PENDING RESOLUTION OF CIVIL ACTION
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`Applicant Renaissance Pictures, Ltd. (“Applicant”), hereby moves for an order
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`suspending this opposition proceeding pursuant to 37 C.F.R. § 2.1 17(a) and TBMP § 510.02(a)
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`until a final determination has been made in a civil action now pending between the same parties
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`concerning the same mark in the United States District Court for the Central District of
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`California, Civil Action No. CV12-3805-DSF(JCGx) (the “Civil Action”).
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`On February 22, 2012, Award Pictures, LLC (“Opposer”) initiated this proceeding (the
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`“Opposition”) against Applicant’s Application Serial No. 85/052146 (the “Application”) to
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`register the mark EVIL DEAD in connection with entertainment services. (DKT #1.) On June 1,
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`2012, the Board granted Applicant’s motion to strike Opposer’s improper pleading (DKT # 14),
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`and on June 19, 2012, Opposer filed and served Applicant with its Amended Notice of
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`Opposition in the case. (DKT #15.) In its Amended Notice of Opposition, a copy of which is
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`annexed hereto as Exhibit A, Opposer alleges use of and rights in the EVIL DEAD mark, which
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`use and rights are the basis for its alleged standing in the Opposition and for its claim pursuant to
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`(P1031197 I)
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`1
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`Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). (Exhibit A, 111] 1-2, 5-7.) Opposer also
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`challenges the Application on the alleged grounds that (i) Applicant has not used the EVIL
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`DEAD mark in commerce to support its use-based Application (Id., 1[1[ 8-14); (ii) the EVIL
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`DEAD mark is not registrable as it is descriptive (Id., M 15-19) and; (iii) Applicant has
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`abandoned its rights in the EVIL DEAD mark. (Id., W 20-33). Pursuant to the Board’s June 1,
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`2012 order, Applicant’s answer to the Amended Notice of Opposition is due July 19, 2012.‘
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`On May 2, 2012, Applicant filed the Civil Action against Opposer. A copy of the
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`Complaint in the Civil Action is attached as Exhibit B. In the Civil Action, Applicant asserts
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`that it is the owner of common law rights in the EVIL DEAD mark based on its longstanding use
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`and licensing of the EVIL DEAD mark in connection with multiple motion pictures, video
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`games and other entertainment-related goods and services (Exhibit B, M 9-24), and that
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`Opposer’s use of the name and mark EVIL DEAD, as alleged in its Notice of Opposition,
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`constitutes, inter alia, false designation of origin, unfair competition, and false advertising in
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`violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). (Id., W 25-39.) As part of
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`the relief sought in the Civil Action, Applicant requests that Opposer be enjoined from any
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`further use of the EVIL DEAD mark, that it be enjoined from representing that it owns rights in
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`the EVIL DEAD mark, and that it be prohibited from seeking to register EVIL DEAD as a mark.
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`(See Exhibit B at pp. 15-17.)
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`Numerous pivotal issues in this Opposition are likewise at issue in the Civil Action:
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`First, Opposer asserts as the basis for its standing to bring this Opposition its alleged use
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`of and plans to use the EVIL DEAD name and mark. (Exhibit A, W 1-2, 5.) This issue of
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`standing is at the heart of the Civil Action since central to the Civil Action is Applicant’s claim
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`1 For purposes of this motion, Applicant has treated the Amended Notice of Opposition as being
`in compliance with the Board’s June 1, 2012 order. Should the Opposition ultimately have to go
`forward, Applicant reserves the right to move to dismiss the Amended Notice of Opposition on
`the grounds that it fails to comply with the Board’s June 1, 2012 order.
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`(P10311971)
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`2
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`

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`that Opposer lacks any rights to use the EVIL DEAD mark. If the Court in the Civil Action
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`concludes that Opposer’s use of the EVIL DEAD name and mark infringes Applicant’s
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`longstanding common law rights in the EVIL DEAD mark, and the Court grants the relief
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`requested by Applicant that Opposer be permanently enjoined from using the EVIL DEAD mark,
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`Opposer would not have a basis for standing in this opposition proceeding.
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`Second, in this opposition proceeding, Opposer purports to assert a claim under Section
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`2(d) of the Lanham Act, 15 U.S.C. § 1052(d), alleging that Opposer owns rights in the EVIL
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`DEAD mark that are prior to Applicant’s rights and Applicant’s registration of the EVIL DEAD
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`mark is likely to cause confusion with Opposer’s alleged rights in the EVIL DEAD mark.
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`(Exhibit A, 111] 5-7.) Just as with respect to Opposer’s alleged standing, if the Court concludes
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`that Opposer’s use of the EVIL DEAD name and mark infringes Applicant’s longstanding
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`common law rights in the EVIL DEAD mark, and the Court grants the relief requested by
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`Applicant that Opposer be permanently enjoined from using the EVIL DEAD mark, it will
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`necessarily have decided and rejected Opposer’s claim of prior rights in the mark and Opposer’s
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`claims in this proceeding under Section 2(d) would necessarily fail.
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`fliiii, to substantiate Applicant’s claims in the Civil Action, Applicant must demonstrate
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`its use of and ownership of common law trademark rights in the EVIL DEAD mark, which is
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`precisely what Opposer challenges in this Opposition on multiple grounds (i.e., non-use,
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`descriptiveness and abandonment). (Exhibit A, 111] 8-33.) As such, Opposer’s claims in this
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`proceeding that Applicant lacks rights in the EVIL DEAD mark to support its use-based
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`Application will necessarily be addressed and resolved when the District Court in the Civil
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`Action determines that Applicant owns valid trademark rights in the EVIL DEAD mark.
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`Pursuant to 37 C.F.R. § 2.117(a), “[w]henever it shall come to the attention of the
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`Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a civil
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`action .
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`.
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`. which may have a bearing on the case, proceedings before the Board may be
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`(F1031197.1 )
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`3
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`

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`suspended until termination of the civil action .
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`.
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`. .” As the TTAB Manual of Procedure
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`recognizes, “Most commonly, a request to suspend pending the outcome of another proceeding
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`seeks suspension because of a civil action pending between the parties in a federal district court.”
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`See also TBMP § 510.02(a). Here, Applicant and Opposer are involved in such a “civil action”
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`pending in the Central District Court in California. Here, the Civil Action concerns the very
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`mark at issue in this Opposition. Resolution of the Civil Action will directly bear on and will be
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`dispositive of the Very issues in this Opposition proceeding, namely whether Opposer has the
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`right to use the EVIL DEAD mark to support its alleged standing and to satisfy the basis for its
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`Section 2(d) claim, and whether Applicant owns valid common law rights in the EVIL DEAD
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`mark notwithstanding Opposer’s arguments to the contrary. Indeed, the Board routinely grants
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`motions to suspend opposition proceedings pending the outcome of a pending civil action where
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`the issues to be resolved in the civil action are dispositive of the inter partes proceedings. TBMP
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`§ 510.02(a); see Other Tel. Co. v. Conn. Nat ’l Tel. Co., 181 U.S.P.Q. 125, 126 (T.T.A.B. 1974)
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`and cases cited herein.
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`Finally, the procedural history of the Opposition shows that there will be no harm to
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`Opposer if this motion to suspend is granted. This motion is being filed within one day of
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`Applicant’s receipt of Opposer’s Amended Notice of Opposition, and before Applicant’s
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`deadline has run to file its Answer to the Amended Notice of Opposition. Thus, the Opposition
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`is in its infancy, with neither Party having served initial disclosures, neither party having taken
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`discovery and neither party having devoted any significant resources to the Opposition.
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`[Fl03ll97 l]
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`4
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`CONCLUSION
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`Since there is no good cause for opposing the motion to suspend and given that the
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`Trademark Rules of Practice specifically recognize the appropriateness of suspending opposition
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`proceedings for the very reasons that exist in this case, Applicant respectfully requests that in the
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`interest ofjudicial economy the Board suspend the Opposition proceeding pending final
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`resolution of the Civil Action between the parties.
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`Dated: New York, New York
`June 20, 2012
`
`FROSS ZELNICK LEHRMAN,1_r
`& ZISSU, P.(;.
`
`
`
`
` /'
`A‘ Michael “lfiappett,
`I
`Barbara A. Solo
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`866 United Nations Pla
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`New York, New York 10017
`(212) 813-5900
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`Attorneys for Renaissance Pictures, Ltd.
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`[F103ll97.1 )
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`5
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 20th day of June, 2012, a true and correct copy of the foregoing
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`MOTION TO SUSPEND OPPOSITION PENDING RESOLUTION OF CIVIL ACTION was
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`served on Applicant Glenn S. MacCrae, who has appeared pro se in this case, by U.S. Mail and
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`e-mail at Award Pictures LLC, 112 Carmen 2 Hill, New Milford, Connwticut 06776-4511,
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`tsmi [award icturesi.com.
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`
`
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`

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`EXHIBIT A
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`

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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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`PURSUANT TO THE UNITED STATES TRADEMARK ACT,
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`15 U.S.C. § 1063(a), [Trademark Act 13(a)]:
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`OPPOSITION TO REGISTRATION OF TRADEMARK APPLICATION
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`SERIAL NUMBER 85052146 WORD MARK: Evil Dead
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`OPPOSITION # 91204116
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`Award Pictures, LLC v. Renaissance Pictures, Ltd
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`Award Pictures, LLC, A Limited Liability Company
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`Organized Under the Laws of the State of Connecticut
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`112 Carmen 2 Hill
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`New Milford, Ct.
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`06776-4511
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`AMENDED NOTICE OF OPPOSITION
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`1. Award Pictures, LLC, a Limited Liability Company organized under the laws of
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`the State of Connecticut, would be damaged by the registration of the above specified
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`Trademark Application because of Award Pictures’ bona fide intent to use the title,
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`and/or, title element, Ev// Dead, in Award Pictures’ coming motion picture productions
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`of, but not limited to; Evil Dead.‘ Genes/3 of the Necronom/‘con; Ev// Dead: Genesis of the
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`Necranom/con, Part 2; Ev// Dead: Consequences, and all other Feature Motion Pictures
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`that use the title, or title element, Evil Dead
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`2. Additionally, Award Pictures has used Evil Dead in commerce as a motion
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`picture title (please see plaintiff's exhibit #1); Award Pictures has entered into motion
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`picture distribution contracts for one of Award Pictures’ motion picture properties that
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`uses the alleged “mark,” Evil Dead, as a motion picture title element (please see
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`plaintiff's exhibits #2 and #3); Award Pictures has used, and is currently using, the
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`alleged “mark,” Evil Dead as a motion picture title element on Award Pictures’ company
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`website at www.awardpictures.com (please see plaintiff's exhibit #4); and Award
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`Pictures has previously attempted to register Evil Dead as its company's mark in
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`Trademark Application #78/359289 and Trademark Application #77/831522 (please see
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`plaintiff's exhibits #5 and #6). The registration of the defendant's above specified
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`application would, except as authorized by law, give the defendant the exclusive right to
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`use Evil Dead in its application category 41, and would interfere with, limit, or prevent
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`Award Pictures, LLC, from using Evil Dead as a motion picture title, or title element,
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`which would damage Award Pictures, LLC.
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`3. Therefore, Award Pictures, LLC states the following grounds for Opposition to
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`Register Trademark Application 85052146:
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`4. Under Trademark Act § 2(d), 15 U.S.C. § 1052(d), the defendant's
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`alleged “mark,” Evil Dead, so resembles a mark or trade name previously used
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`in the United States by another and not abandoned, as to be likely, when used
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`on or in connection with the goods or services of the defendant, to cause
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`confusion, or to cause mistake, or to deceive.
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`5. Award Pictures has used Evil Dead as a motion picture title element in
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`commerce in the United States of America in 2004 (please see plaintiff's exhibit #1);
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`Award Pictures has entered into motion picture distribution contracts for one of Award
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`Pictures’ motion picture properties that uses the alleged “mark,” Evil Dead, as a motion
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`picture title element (please see plaintiff's exhibit #2 and #3); Award Pictures is using
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`the alleged “mark,” Evil Dead, on Award Pictures’ company website at
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`www.awardpictures.com (please see plaintiff's exhibit #4); and Award Pictures has
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`previously attempted to register Evil Dead as its company's mark (please see plaintiff's
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`exhibits #5 and #6).
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`6. Due to the defendant's abandonment of the alleged “mark,” Evil Dead, which
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`is addressed in paragraphs 20 to 33, inclusive, and Award Pictures’ use of Evil Dead
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`decades after the defendant's abandonment of the alleged “mark,” Evil Dead Award
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`Pictures has priority of use in regard to use of the alleged “mark,” Evil Dead, and the
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`defendant's filing of application 85052146, which was filed on June 1, 2010 (please see
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`plaintiff's exhibits #1,#2,#3,#4,#5, and #6).
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`7. Therefore, in, and of, itself, because the defendant's alleged “mark” so
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`resembles Award Pictures’ mark that it has previously used in the United States and not
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`abandoned, as to be likely, when used on or in connection with the goods or services of
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`the defendant, to cause confusion, or to cause mistake, the plaintiff respectfully submits
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`that registration of the defendant's alleged “mark,” Evil Dead is not in accordance with
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`U.S. law.
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`8. Under Trademark Act § 1(a), 15 U.S.C. § 1051(a), the defendant's
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`alleged “mark," Evil Dead, did not have Bona Fide use in commerce prior to
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`the filing of a use-based application for its registration:
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`9. The alleged “mark,” Evil Dead, is not a trademark or service mark, and thus,
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`because it is not a trademark or service mark, but a title of a single work, did not have
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`Bona Fide use in commerce prior to the filing of its use-based application for its
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`registration.
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`10. The defendant is the legal source of only one motion picture, The Book of
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`the Deaa; a.k.a. The Evil Dead, a.k.a. Evil Dead, that uses Evil Dead as a title, or title
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`element. Therefore, under the above cited Federal.|aw and from related court decisions,
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`the defendant's single work, Evil Dead does not qualify under law to be registered as a
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`trademark or service mark.
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`11. Because the defendant's work in relation to De Laurentiis Entertainment
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`Group, Inc. / Rosebud Releasing Corporation's 1987 motion picture, Evil Dead II, and
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`Dino De Laurentiis Communications, Inc.’s 1992 motion picture, Army of Darkness
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`a.k.a. Army ofDarkness: Ev/7 Dead 11!, a.k.a. Evil Dead 111: Army ofDarkness, a.k.a.
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`Bruce Campbell vs. Army of Darkness, was only “work for hire,” which was purchased by
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`the two separate legal sources of these two films, these motion pictures are also single
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`works by their separate legal sources, which renders null and void any claim by the
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`defendant that it has been, or is, the source of a series of films that use the alleged
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`“mark,” Ev/7 Dead (Please see plaintiff's exhibits #7 and #8).
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`12. Therefore, the defendant's work on these two films did not, and does not,
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`constitute the defendant being the source of a series of motion pictures that use EV/7
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`Dead as a title, or title element.
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`13. Because of the different sources of these two above specified motion
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`pictures, the defendant was the source of only one motion picture that used the alleged
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`“mark,” Ev/7 Dead specifically, The Book of the Dead a.k.a. The Evil Dead a.k.a. Evil
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`Dead and therefore, this motion picture is a single work by the defendant, and, as such,
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`is not registrable upon the Principal or Supplemental Register of Trademarks.
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`14. Therefore, because the alleged “mark,” Evil Dead is the title of a single
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`work, in, and of, itself, Evil Dead is not registrable under §§1, 2, and 45 of the
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`Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, and the plaintiff respectfully submits
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`that registration of the defendant's alleged “mark,” Evil Dead, is not in accordance with
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`U.S. law.
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`15. Under Trademark Act § 2(e)(1), the defendant's alleged “mark,"
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`Evil Dead, when used on or in connection with the goods or services of the
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`defendant, is merely descriptive:
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`16. The alleged “mark,” Evil Dead, is merely descriptive because it is a title of a
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`motion picture that describes a film about dead persons, who are evil. As such, the
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`defendant's alleged “mark” describes the film's ingredients, and features, which include
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`grotesque, evil, dead, persons.
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`17. Also, because the “evil,” “dead,” persons referred to in this motion picture's
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`title are both evil, and dead, their characteristics of being “evil,” and “dead,” are
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`descriptive of this horror genre motion picture, which independently of the description of
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`the film's ingredients, and features, in paragraph 16, immediately above, establishes
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`that the defendant's alleged “mark,” Ev/7 Dead, is merely descriptive.
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`18. Additionally, because the alleged “mark,” Evil Dead, is but a title of a single
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`work, which is addressed in paragraphs 10 to 14, inclusive, and paragraphs 24 and 25, it
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`does not identify the source of the alleged “mark,” Ev/7 Dead
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`19. Therefore, regardless of any alleged distinctiveness, or alleged, acquired,
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`distinctiveness of the defendant's alleged “mark,” Evil Dead, the alleged “mark,” Evil
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`Dead is inherently, and merely, descriptive.
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`20. Under The United States Trademark Act § 45, 15 U.S.C. § 1127, the
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`defendant has discontinued use of the alleged “mark," with intent not to
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`resume use, which constitutes abandonment of the alleged “mark,” Evil Dead:
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`21. After the defendant's production of The Book of the Dead a.k.a. The Evil
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`Dead; a.k.a. Evil Dead; the defendant's principals, Robert Tapert and Sam Raimi,
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`publicly declared that the defendant abandoned the alleged “mark,” Evil Dead, for
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`trademark, service mark, and all other purposes when they made the following
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`statement: ‘ “Ha,” said Rob and Sam, “We're never going to do a sequel.” ’ This
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`statement appears in the internationally distributed book, The Evil Dead Companion, ©
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`2000, by Bill Warren, published in the U.S.A. by St. Martin's Griffin, New York, on page
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`103, in the second paragraph, in lines two and three (Please see plaintiff's exhibit #9).
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`22. This statement is a public declaration by the defendant that the defendant
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`abandoned the alleged “mark,” Evil Dead, decades ago.
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`23. In the decades after this declaration of abandonment, the defendant has not
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`been the legal source of any motion pictures that used the alleged “mark,” Evil Dead as
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`a title, or title element, thus abandoning the alleged “mark,” Evil Dead, due to nonuse
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`for far longer than the statutory period of three consecutive years.
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`24. Because the defendant's work in relation to De Laurentiis Entertainment
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`Group, Inc. / Rosebud Releasing Corporation's 1987 motion picture, Evil Dead 11, and
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`Dino De Laurentiis Communications, Inc.’s 1992 motion picture, Army of Darkness,
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`a . k.a. Army ofDarkness: Evil Dead [11, a. k.a. Evil Dead 111.’ Army ofDarkness; a.k.a
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`Bruce Campbell vs. Army of Darkness was only “work for hire," the defendant's
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`purchased work on these films did not, and does not, constitute the defendant's bona
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`fide use of the alleged “mark,” Evil Dead, in the ordinary course of trade.
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`25. Due to the defendant's work on these two films having been purchased by
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`the legal sources of these motion pictures, all related legitimate payment to the
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`defendant by the legal sources of these two motion pictures, regardless of the manner
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`in which it was, or is, paid, has no validity in relation to the defendant's nonuse of the
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`alleged “mark,” Evil Dead, for three consecutive years (Please see plaintiff's exhibits #7
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`and #8).
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`26. Therefore, in the decades after the defendant's principals declared that the
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`defendant abandoned Evil Deaa; the defendant has not been the legal source of any Evil
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`Dead films, and has not legitimately, or legally, used the alleged “mark,” Evil Dead, in
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`trade.
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`27. Under Trademark Act § 45, 15 U.S.C. § 1127, the alleged “mark,”
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`Evil Dead, has been abandoned through the defendant's conduct that has
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`caused loss of trademark significance:
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`28. The motion picture title, or title element, Evil Dead, has been used by many
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`unrelated sources.
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`29. The words, “Evil Dead,” have been used in produced and distributed motion
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`pictures twenty-one times as a motion picture title, or title element. Twenty of these
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`uses have been by sources other than the defendant.
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`30. The above produced and distributed twenty motion pictures that use Evil
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`Dead, as a title, or title element (Please see plaintiff's exhibit #11), have eighteen
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`separate sources.
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`31. The twenty motion pictures on the above list, and their eighteen different
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`sources, have used the title, or title element, Evil Dead, without control, regulation, or
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`defense of the alleged “mark,” Evil Deaaj by the defendant.
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`32. This uncontrolled, unregulated, and undefended use of Evil Dead, as a
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`motion picture title, or title element, from multiple, different, sources, has established
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`the defendant's failure to police, restrict, or control the motion picture title, or title
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`element, Evil Dead
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`33. The above enumerated, uncontrolled, and unregulated use of Ev/7 Dead, as a
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`motion picture title, or title element, has established the defendant's abandonment of
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`the alleged “mark,” Ev/'/ Dead due to the defendant's course of conduct that has caused
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`the alleged “mark” to lose significance as an indication of source.
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`34. Under The United States Trademark Act § 1(a), 15 U.S.C.
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`§1051(a)(3)(A)(B) (C) and (D), the defendant committed fraud during the
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`prosecution of its application for registration by verifying subsections
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`(A)(B)(C) and (D)-
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`35. (A) the person making the verification believes that he or she, or the juristic person in whose
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`behalf he or she makes the verification, to be the owner of the mark sought to be registered;
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`(B) to the best of the verifier’s knowledge and belief, the facts recited in the application
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`are accurate;
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`(C) the mark is in use in commerce; and
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`(D) to the best of the verif1er’s knowledge and belief, no other person has the right to use
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`such mark in commerce either in the identical form thereof or in such near resemblance
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`thereto as to be likely, when used on or in connection with the goods of such other
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`person, to cause confusion, or to cause mistake, or to deceive...
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`36. However, under The United States Trademark Act § 1(a), 15 U.S.C.
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`§1051(a)(3)(A), (B), (C), and (D), the defendant, its principals, and attorney have, with
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`scienter, committed multiple frauds during the prosecution of the defendant's application
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`for registration of the alleged “mark,” Evil Dead, because, in relation to; subsection (A),
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`the defendant, its principals, and attorney have, with scienter, falsely verified that the
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`defendant is the owner of the alleged “mark,” Evil Dead,‘ in relation to subsection (B),
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`the defendant, its principals, and attorney have, with scienter, recited “facts" in the
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`application that are not accurate; in relation to subsection (C), the defendant, its
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`principals, and attorney have, with scienter, falsely stated that the alleged “mark,” Ev/'/
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`Dead is in use in commerce by the defendant; and in relation to subsection (D), the
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`defendant, its principals, and attorney, have, with scienter, falsely stated that “to the
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`best of the verifier’s knowledge and belief, no other person has the right to use such
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`mark in commerce either in the identical form thereof or in such near resemblance
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`thereto as to be likely, when used on or in connection with the goods of such other
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`person, to cause confusion, or to cause mistake, or to deceive.”
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`37. In support of the above, it is recorded in the United States Library of
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`Congress, that on March 5"‘, 1986, the defendant, referred to in plaintiff's exhibit #7 as
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`“Producer,” for good and valuable consideration, assigned the copyright and all rights to
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`both the literary work entitled Evil Dead [1 (the “Work”), and the motion picture that
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`would be made from that literary work (the “Picture”), to DeLaurentiis Entertainment
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`Group, Inc. (DEG) (Please see plaintiff's exhibit #7).
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`38. Because the owner of a work's copyright, and all rights to that work owns
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`every right to that work that can be owned under law, when the defendant granted,
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`sold, assigned, transferred, and conveyed the copyright, and all rights to both the
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`literary work, Evil Dead 11', and the motion picture made from that work, to DEG, it
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`included the alleged “mark,” Ev/7 Dead, which became DEG’s property.
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`39. Therefore, the sale of the copyright, and all rights to both the literary
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`property, Evil Dead 11, and the motion picture that would be made from that property,
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`by the defendant, to DEG, terminated all of the defendant's ownership of the alleged
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`“mark,” Ev// Dead(P|ease see plaintiff's exhibit #7).
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`40. It is also recorded in the United States Library of Congress, that on Nov. 7,
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`1986, the copyright to the motion picture, 777e Book of the Dead, a.k.a. The Evil Dead
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`a.k.a. Evil Dead which included the ownership of the alleged “mark,” Evil Dead, was
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`owned by the Cannon Film Library (Please see plaintiff's exhibits #10A, #10B, and
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`#10C).
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`41. Therefore, at some time before Nov. 7, 1986, the defendant sold the
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`copyright, including all trademark and service mark rights, to the motion picture, The
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`Book of the Dead a.k.a. 777e Evil Dead a.k.a. Evil Dead to either an intermediate
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`owner, or directly to the Cannon Film Library, at which time the defendant ceased to
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`have any legal ownership of, in, or to, that motion picture, and the alleged “mark,” Evil
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`Dead.
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`42. This recorded ownership of The Book of the Dead a.k.a. The Evil Dead
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`a.k.a. Evil Dead by the Cannon Film Library (please see plaintiff's exhibits #10A, #10B,
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`and #10C), establishes, in addition to the defendant's sale of all rights to Evil Dead [1, to
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`DEG, that the defendant has committed fraud upon the United States Patent and
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`Trademark Office by claiming, with scienter, that it is, “the owner of the trademark
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`sought to be registered,” when the above relevant exhibits clearly show that the
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`defendant has not been “the owner of the trademark sought to be registered” since the
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`1980's.
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`43. These records of the defendant's sale of all rights to the literary property,
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`and motion picture, Evil Dead II, which included the alleged “mark,” Evil Dead and the
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`defendant's sale of the copyright, which included trademark and service mark rights, to
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`777e Book of the Dead a.k.a. The Evil Dead a.k.a. Evil Dead and the alleged “mark,”
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`

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`Evil Dead, prove that the defendant legally terminated all of its ownership of the alleged
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`“mark,” Evil Dead.
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`44. It is not believable that the defendant's principals, who have been working
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`professionally in the motion picture industry for years, and necessarily have legal
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`counsel that must always inform them of the legal consequences of their actions, are
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`not completely aware of what their company has sold, and what it, and they, own; thus,
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`the defendant's principals, and their attorney, Gary S. Phillips, knew that they had
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`previously sold all of their right, title, and interest in, of, and to, the alleged “mark,” Evil
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`Dead, when one of the defendant's principals, or their attorney of record, Gary S.
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`Phillips, fraudulently signed and submitted the application form to register the alleged
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`“mark,” Evil Dead
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`45. In summation, the defendant, its principals, and their attorney, Gary S.
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`Phillips, violated 15 U.S.C. §1051(a)(3)(A), by fraudulently stating, with scienter, that
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`“the person making the verification believes that he or she, or the juristic person in
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`whose behalf he or she makes the verification, to be the owner of the mark sought to
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`be registered.” As addressed immediately above, in paragraph 44, it is not believable
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`that the defendant's principals, and their attorneys, did not know that the defendant
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`sold the alleged “mark,” Evil Dead decades ago, when the defendant's principals sold all
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`rights to the literary property, Evil Dead [1, and the motion picture that would be made
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`from that work, and when the defendant's principals sold the copyright, and all rights to
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`The Book of the Dead a.k.a. The Evil Dead a.k.a. Evil Dead, including trademark rights,
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`and the alleged “mark,” Evil Dead to the purchaser of that motion picture's copyright,
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`which included that copyright’s underlying rights, trademark rights, and the alleged
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`“mark,” Evil Dead (Please see plaintiff's exhibits #7, #10A, #10B, and #10C).
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`11
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`

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`46. The defendant, its principals, and their attorney, Gary S. Phillips, violated 15
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`U.S.C. §1051(a)(3)(B), by fraudulently misrepresenting, with scienter, that, “to the best
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`of the verifier’s knowledge and belief, the facts recited in the application are accurate”
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`when it is not believable that experienced motion picture professionals, and their
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`experienced intellectual property attorneys, were unaware of the defendant's sales of
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`the copyright and all rights to the literary work, Evil Dead [1, and the motion picture that
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`would be made from that work, which included the alleged “mark,” Evil Dead, to DEG,
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`and the sale of the copyright, and all rights, including the alleged “mark,” Evil Dead to
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`the purchaser of the copyright to The Book of the Dead, a.k.a. The Evil Dead, a.k.a. Evil
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`Dead (Please see plaintiff's exhibits #7, #10A, #10B, and #10C).
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`47. The defendant, its principals, and their attorney, Gary S. Phillips, violated 15
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`U.S.C. §1051(a)(3)(C), because of the defendant, its principals, and their attorney, Gary
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`S. Phillips’ fraudulent statement, which was made with scienter, that “the mark is in use
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`in commerce” when the defendant is not currently using the alleged “mark,” Evil Dead
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`in commerce, due to the defendant's sale of all of its ownership of the alleged mark, Evil
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`Dead decades ago (Please see plaintiff's exhibits #7, #10A, #10B, and #10C).
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`48. The defendant, its principals, and their attorney, Gary S. Phillips, violated 15
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`U.S.C. §1051(a)(3)(D), by the defendant, its principals, and their attorney, Gary S.
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`Phil|ips’s fraudulent misrepresentation, which was made with scienter, that, “to the best
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`of the verifier’s knowledge and belief, no other person has the right to use such mark in
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`commerce either in the identical form thereof or in such near resemblance thereto as to
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`be likely, when used on or in connection with the goods of such other person, to cause
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`confusion, or to cause mistake, or to deceive,” which is proven to be fraudulent by the
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`plaintiff's evidence that the defendant sold all of its rights to Evil Dead, including the
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`

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`alleged “mark,” Ev/7 Deaafi decades ago. (Please see plaintiff's exhibits #7, #10A, #10B,
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`and #10C).
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`49. Therefore, it is clearly evident that the defendant, its principals, and their
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`attorney, Gary S. Phillips, have, with scienter, committed the above specified violations
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`of 15 U.S.C. §1051(3)’s subsections, (A)(B)(C), and (D), and by committing these
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`individual violations, in, and of, each violation, by itself, the defendant, its principals,
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`and/or, their attorney have committed multiple frauds upon the United States Patent
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`and Trademark Office during the prosecution of the application for registration of the
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`defendant's alleged “mark,” Evil Dead; and the plaintiff respectfully submits that
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`registration of the defendant's alleged “mark,” Evil Dead, is not in accordance with U.S.
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`law.
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`The undersigned being warned that willful false statements and the like are punishable
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`by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false
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`statements and the like may jeopardize the validity of the application or document or
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`any registration resulting therefrom, declares that all statements made of his/her own
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`knowledge are true; an