Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`91208894
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`Plaintiff
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`Karen Dillard's College Prep, L.P.
`STEPHEN A KENNEDY
`KENNEDY LAW PC
`1445 ROSS AVENUE, SUITE 4950
`DALLAS, TX 75202
`UNITED STATES
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`skennedy@sak|aw.net, mhoskins@sak|aw.net
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`Motion to Suspend for Civil Action
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`Stephen A. Kennedy
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`
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`mhoskins@sak|aw.net, skennedy@sak|aw.net
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`/Stephen A. Kennedyl
`01/02/2014
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`2014 1 2 MOTION TO STAY.pdf(5107027 bytes )
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA579737
`ESTTA Tracking number:
`01/02/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91208894
`Plaintiff
`Karen Dillard's College Prep, L.P.
`STEPHEN A KENNEDY
`KENNEDY LAW PC
`1445 ROSS AVENUE, SUITE 4950
`DALLAS, TX 75202
`UNITED STATES
`skennedy@saklaw.net, mhoskins@saklaw.net
`Motion to Suspend for Civil Action
`Stephen A. Kennedy
`mhoskins@saklaw.net, skennedy@saklaw.net
`/Stephen A. Kennedy/
`01/02/2014
`2014 1 2 MOTION TO STAY.pdf(5107027 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
`
`
`
`91208894
`
`Plaintiff
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`Karen Dillard's College Prep, L.P.
`STEPHEN A KENNEDY
`KENNEDY LAW PC
`1445 ROSS AVENUE, SUITE 4950
`DALLAS, TX 75202
`UNITED STATES
`
`skennedy@sak|aw.net, mhoskins@sak|aw.net
`
`Motion to Suspend for Civil Action
`
`Stephen A. Kennedy
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`
`
`mhoskins@sak|aw.net, skennedy@sak|aw.net
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`/Stephen A. Kennedyl
`01/02/2014
`
`2014 1 2 MOTION TO STAY.pdf(5107027 bytes )
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA579737
`ESTTA Tracking number:
`01/02/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91208894
`Plaintiff
`Karen Dillard's College Prep, L.P.
`STEPHEN A KENNEDY
`KENNEDY LAW PC
`1445 ROSS AVENUE, SUITE 4950
`DALLAS, TX 75202
`UNITED STATES
`skennedy@saklaw.net, mhoskins@saklaw.net
`Motion to Suspend for Civil Action
`Stephen A. Kennedy
`mhoskins@saklaw.net, skennedy@saklaw.net
`/Stephen A. Kennedy/
`01/02/2014
`2014 1 2 MOTION TO STAY.pdf(5107027 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`* * * * *
`
`
`In the Matter of Trademark Application Serial No. 85-688,755.
`For the mark “KD College”
`Published in the Official Gazette on January 1, 2013 at page TM 1155
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`
`* * * * *
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`KAREN DILLARD’S COLLEGE PREP, L.P.
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`v.
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`KD STUDIO, INC.
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`MOTION TO STAY
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`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Opposer, Karen Dillard’s
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`College Prep, L.P. (“Opposer”) respectfully request this Board to suspend Proceeding Number
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`91208894 (the “Proceeding”) in light of a civil action pending before the U.S. District Court for
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`the Eastern District of Texas, Tyler Division, Case No. 6:13-CV-13-710, which will have a
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`bearing on the Proceeding. Filed herewith in support of this Motion to Stay is Opposer’s
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`memorandum of law and other supporting documents.
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`Respectfully submitted,
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`/s/ Stephen A. Kennedy
`Stephen A. Kennedy
`Kennedy Law, P.C.
`1445 Ross Ave., Suite 4950
`Dallas, Texas 75202
`Attorney for Opposer
`Karen Dillard’s College Prep, L.P.
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`Dated: January 2, 2014
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that he served a copy of the foregoing by first class mail, return
`receipt requested, on January 2, 2014 upon:
`
`
`Sheree McCall
`Vernon Law Group PLLC
`4925 Greenville Ave Suite 200
`Dallas, TX 75206
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`
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`
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`/s/ Stephen A. Kennedy
`Stephen A. Kennedy
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`2
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`* * * * *
`
`
`In the Matter of Trademark Application Serial No. 85-688,755.
`For the mark “KD College”
`Published in the Official Gazette on January 1, 2013 at page TM 1155
`
`
`* * * * *
`
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`KAREN DILLARD’S COLLEGE PREP, L.P.
`
`v.
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`KD STUDIO, INC.
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`OPPOSER’S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION TO STAY
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`TO THE HONORABLE JUDGE OF SAID COURT:
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`
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`COMES NOW Opposer, Karen Dillard’s College Prep, L.P. (“Opposer” or “KD
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`College Prep”) who submits this Memorandum of Law in Support of its Motion to
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`Stay Proceeding No. 91208894 (the “Proceeding”) in light of the civil action pending
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`before the U.S. District Court for the Eastern District of Texas, Tyler Division,
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`stylized KD College Prep, LP v. KD Studio, Inc., Case No. 6:13-CV-13-710 (the “Civil
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`Action”). See Exhibit 1. The Applicant, KD Studios, Inc. (“KD Studios”), has
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`answered and asserted counterclaims in the Proceeding. See Exhibit 2. As the
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`outcome of the Civil Action will have a direct bearing on this Proceeding, involves
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`identical parties, implicates the same trademark, and contains similar issues
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`regarding registration, Opposer respectfully requests the Board to suspend the
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`Cancellation in order to avoid duplicative proceedings that will waste resources of
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`the Board, the parties, and the District Court.
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`3
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`I.
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`STATEMENT OF FACTS
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`On April 22, 2011, Opposer filed a trademark application for the word mark
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`“KD College Prep,” Serial No. 85302388, in the United States Patent and
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`Trademark Office (“PTO”) to register the Opposer’s Mark for use in connection
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`with “[e]ducational services, namely, providing live and on-line classes,
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`seminars, and workshops in the field of preparing for college entrance
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`examinations.” (“Opposer’s Services”). International Class: 041 – Primary Class,
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`U.S. Class: 100, 101, 107. The date of first use of Opposer’s KD COLLEGE
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`PREP® Mark was February 01, 2004. (“Opposer’s First Use Date”). Opposer’s
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`Mark was registered as U.S. Registration 4148891 on May 29, 2012.
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`Applicant filed a trademark application assigned Application Serial No. 85-
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`688,755 in the PTO on July 27, 2012 to register the word mark “KD College”
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`(“Applicant’s Mark” or “KD College Mark”) for use in connection with
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`“[e]ducational services, namely, providing courses of instruction at the associates
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`of applied arts degree level and distribution of course material, namely in acting
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`performances, musical theatre and motion picture productions; miscellaneous
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`adult shorter courses, namely, acting classes, musical theatre and motion picture
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`production classes; educational services, namely, preparing students for work in
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`the entertainment industry through acting classes, musical theatre classes, firm
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`making programs and motion picture production classes.”
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`(“Applicant’s
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`Services”). International Class 041 – Primary Class, U.S. Class: 100, 101, 107.
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`The Application filed by Applicant on July 27, 2012 (“Applicant’s Filing
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`Date”) was based on the Applicant’s alleged use of the Applicant’s Mark with the
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`Applicant’s Services on or before March 27, 2011. (“Applicant’s Alleged First Use
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`Date”).
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`The Opposer’s Filing Date of April 22, 2011 and Opposer’s First Use Date for the
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`KD COLLEGE PREP® Mark of February 1, 2004 are both earlier than the
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`Applicant’s Filing Date of July 27, 2012 and Applicant’s Alleged First Use Date of
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`March 27, 2011.
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`The Application for the Applicant’s Mark was published in the Official Gazette
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`on January 1, 2013. Opposer filed its Notice of Opposition on January 16, 2013. On
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`August 22, 2013, Opposer deposed Applicant’s corporate representative, Kathy
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`Tyner. During Ms. Tyner’s deposition it became apparent that this matter may no
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`longer reach an amicable conclusion. Therefore, on September 25, 2013 Opposer
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`filed a federal civil complaint in the Eastern District of Texas alleging, inter alia,
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`federal and common law trademark infringement, federal and common law unfair
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`competition, false designation of origin, unjust enrichment, tortious interference
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`with prospective business relations, and common law trademark dilution claims in
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`connection with Applicant’s continued use of the KD COLLEGE Mark. See Ex. 1.
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`II.
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`ARGUMENT
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`A. The Pending Federal Civil Action Will Have a Bearing on the
`Proceeding Pending Before the Board
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`It is within the Board’s broad discretion to suspend cancellation proceedings
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`when the final resolution of a civil action “may have a bearing on” issues presented
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`in the action before the TTAB. 37 C.F.R. § 2.117(a) (2007); see also TBMP §
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`510.02(a) (“Whenever it comes to the attention of the Board that a party or parties
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`5
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`to a case pending before it are involved in a civil action which may have a
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`bearing on the Board case, proceedings before the Board may be suspended until
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`final determination of the civil action”); Midland Coop., Inc. v. Midland Int’l
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`Corp., 421 F.2d 754 (C.C.P.A 1970) (Board suspended proceedings when the civil
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`action, commenced nearly 2 months after the Board proceeding was filed, had
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`bearing on the issues pending before the Board.)
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`Here, the Proceeding filed by Opposer alleges that Applicant’s Mark is
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`confusingly similar to Opposer’s Mark, will cause dilution by blurring and
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`tarnishment, and various registration deficiencies. Specifically, Opposer alleges
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`that Applicant’s Mark “KD College” is nearly identical to Opposer’s Mark “KD
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`College Prep.”
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`The similarities and deleterious effects of Applicant’s Mark on Opposer’s
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`Mark are likewise at issue before the District Court, as Opposer has alleged
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`federal and common law trademark infringement, federal and common law
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`unfair competition, false designation of origin, unjust enrichment, tortious
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`interference with prospective business relations and common law trademark
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`dilution claims in connection with Applicant’s continued use of the KD College
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`mark.
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`In addition, because these two marks are in the same geographic region (i.e.,
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`North Texas) and operate under the same general services, they travel in the
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`same channels of trade and are viewed by the same customers. Specifically, the
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`“[e]ducational services” and “educational services,” challenged by Opposer in
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`6
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`both the District Court complaint and its Notice of Opposition comprise an integral
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`part of KD Studio’s services and are essential to the District Court’s analysis of the
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`Marks in determining whether the respective services offered by the parties are
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`sufficiently similar to cause consumer confusion. Indeed, in determining whether
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`the services offered by the parties are confusingly similar, the District Court must
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`necessarily determine the extent of both parties’ uses. As the Proceeding will
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`similarly require the Board to analyze the parties’ use of their respective marks, the
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`District Court’s findings regarding use in commerce will have a direct bearing on
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`the pending Proceeding. Because the pending federal civil action will have a direct
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`bearing on the Proceeding before the Board or, at a minimum, “may” have a bearing
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`on the Proceeding, the current proceeding should be suspended in accordance with
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`37 C.F.R. § 2.117(a) (2007) and TBMP § 510.02(a).
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`the TTAB Proceeding Will Avoid Duplicative
`B. Suspension of
`Proceedings and Unnecessary Burden to the Parties and the Board
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`As discussed above, the District Court is faced with determining the issue of
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`priority and the respective rights in the KD College name, infringement, false
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`designation of origin and unfair competition. See Exh. 1. While the Board may hear
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`the claim regarding registration of the Applicant’s Mark, the Board’s jurisdiction is
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`limited to Opposer’s objection to registration only. See Black Box Corp. of Penn. v.
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`Better Box Communications Ltd. 2002 TTAB LEXIS 253, at *4 (T.T.A.B. 2003).
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`Conversely, the District Court has jurisdiction to hear all of the applicable issues,
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`including the validity of proposed registration. See 15 U.S.C. § 1119. In this regard,
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`efficient resolution of all disputes in a single forum is particularly valuable where,
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`7
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`as here, the District Court has jurisdiction over all issues between the parties
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`and where, as here, “the decision of the Federal district court is often binding on
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`the Board, while the decision of the Board is not binding on the court.” See Black
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`Box Corp., at *4; TBMP § 510.02(a).
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`In instances such as this, the TTAB’s policy favoring efficient adjudication of
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`all issues in a single forum, rather than duplicative proceedings in various
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`forums, supports suspension of the present Proceeding. See Black Box Corp., at
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`*4 (judicial economy favors suspension of Board proceedings). Such a ruling by
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`the Board will further the economical disposition of all issues between the
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`parties and will not result in prejudice to any party, since Applicant is free to
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`adjudicate the issues present in the Proceeding in the pending litigation before
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`the District Court. Thus, the current Proceeding should be suspended in
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`accordance with 37 C.F.R. § 2.117(a) (2007) and TBMP § 510.02(a).
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`III.
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`CONCLUSION
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`For the reasons set forth above, Opposer, KD College Prep, respectfully
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`requests that the Board enter an order to Stay Proceeding No. 91208894 pending
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`the resolution of the federal civil action before the U.S. District Court for the
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`Eastern District of Texas, Tyler Division, Case No. 6:13-CV-13-710.
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`/s/ Stephen A. Kennedy
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`Stephen A. Kennedy
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`Kennedy Law, P.C.
`4950 Ross Avenue, Suite 4950
`Dallas, TX 75201
`(214) 716-4343
`(214) 593-2821
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`8
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`Dated: January 2, 2014
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that he served a copy of the foregoing by first class
`mail, return receipt requested, on January 2, 2014 upon:
`
`
`Sheree McCall
`Vernon Law Group PLLC
`4925 Greenville Ave Suite 200
`Dallas, TX 75206
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`
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`/s/ Stephen A. Kennedy
`Stephen A. Kennedy
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`9
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`4835-5758-3382, v. 1
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`Exhibit 1
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`Exhibit 1
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`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 1 of 30 PageID #: 1
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`KAREN DILLARD’S
`COLLEGE PREP, L.P.,
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` Plaintiff,
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`v.
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`KD STUDIO, INC.,
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` Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`CIVIL ACTION NO. 6:13-cv- 13-710
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` DEMAND FOR JURY TRIAL
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`PLAINTIFF’S ORIGINAL COMPLAINT
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`Karen Dillard’s College Prep, L.P. (“KD College Prep” or “Plaintiff”), by its
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`attorney, as and for its complaint against KD Studio, Inc (“Studio” or “Defendant”),
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`states as follows:
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`I.
`NATURE OF THE ACTION
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`1.
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`This is an action for trademark infringement and unfair competition
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`under the United States Trademark Act, 15 U.S.C. § 1114 (Lanham Act); false
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`designation of origin, false description, false advertising, and trademark dilution
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`under 15 USC § 1125 (Lanham Act); for trademark dilution under Texas Business
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`and Commerce Code § 16.29; for tortious interference with prospective business
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`relations; and for trademark infringement, unfair competition, and unjust
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`enrichment under Texas common law.
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`
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`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 2 of 30 PageID #: 2
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`2.
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`KD College Prep was first founded in the Eastern District of Texas
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`approximately twenty (20) years ago as a sole proprietorship. Plaintiff converted the
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`sole proprietorship into a Texas limited partnership approximately ten (10) years
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`ago. Over the last two decades, it has grown to become a highly-esteemed scholastic
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`college preparatory institution that provides classes and individual tutoring for the
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`PSAT, SAT and ACT. Plaintiff has helped more than 30,000 students in the
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`Southwest geographic region prepare for college admissions testing, with 1,300
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`students earning National Merit Semifinalists awards in the last ten (10) years
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`alone. Furthermore, thirty-three (33) of Plaintiff’s students have obtained perfect
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`scores in the last 24 months. Plaintiff’s instructors are college-degreed, highly
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`experienced teachers.
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`3.
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` KD Studio, Inc. is a Dallas-based organization that offers acting
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`classes. Recently, Studio began using the name “KD College” for its acting classes.
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`4.
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`KD College Prep and Studio both market to high school students as
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`their primary source of clientele. This lawsuit is brought to stop Defendant from
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`infringing Plaintiff’s valuable trademark which it has built over twenty years. KD
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`College Prep has invested significantly in the trademark resulting in widespread
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`consumer acceptance and success. Defendant’s use of Plaintiff’s trademark is an
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`intentional effort to imitate Plaintiff’s successful mark and enjoy its benefits. There
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`is no doubt that Defendant’s infringement of Plaintiff’s trademark has already
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`resulted in confusion among Plaintiff’s customers. Plaintiff seeks intervention of
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`this Court to stop Defendant from continuing its knock-off strategy.
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`2
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`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 3 of 30 PageID #: 3
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`II.
`PARTIES
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`KD College Prep is a limited partnership organized under the laws of
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`5.
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`the State of Texas, with its principal place of business at 2001 Coit Road, Suite 103,
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`Plano, TX 75075, and whose general partner is KDCD Management, LLC.
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`6.
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`On information and belief, Studios, is a Texas based corporation with
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`its principal place of business at 2600 Stemmons Freeway, Suite 117, Dallas, TX
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`75207.
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`7.
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`III.
`JURISDICTION AND VENUE
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`This Court has jurisdiction over the subject matter of this action
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`under 15 U.S.C. § 1121 (actions arising under the Lanham Act) and 28 U.S.C. §§
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`1331, 1338, and 1367.
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`8.
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`This Court has personal jurisdiction over Defendant because on
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`information and belief, Defendant is committing tortious acts within this State by,
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`among other things, using an infringing mark in connection with its marketing and
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`causing grievous injury to KD College Prep.
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`9.
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`Venue is proper in this Federal District pursuant to 28 USC § 1391.
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`On information and belief, Defendant is subject to personal jurisdiction in the
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`Federal District and the torts relevant to paragraph 1 occur within this Federal
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`3
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`District.
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`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 4 of 30 PageID #: 4
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`IV.
`PLAINTIFF HAS A VALID OWNERSHIP RIGHTS
`IN THE WORD MARK KD COLLEGE PREP
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`Plaintiff is a well-known provider of educational services.
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`Plaintiff is the registered owner of the word mark KD COLLEGE
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`10.
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`11.
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`PREP® (“Plaintiff’s Mark” or “Mark”)
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`12. On April 22, 2011, Plaintiff filed a trademark application for the word
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`mark “KD College Prep,” to register Plaintiff’s Mark for use in connection with
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`“[e]ducational services, namely, providing live and on-line classes, seminars, and
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`workshops in the field of preparing for college entrance examinations.” (“Plaintiff’s
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`Services”). International Class: 041 – Primary Class, U.S. Class: 100, 101, 107.
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`13.
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`The date of first use of Plaintiff’s KD COLLEGE PREP® Mark was
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`February 01, 2004. (“Plaintiff’s First Use”).
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`14.
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`Plaintiff’s Mark was registered as U.S. Registration 4148891 on May
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`29, 2012. One copy of the certificate of registration for the KD COLLEGE PREP®
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`Mark showing the current active status of the registration of Plaintiff’s Mark is
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`attached as Exhibit 1.
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`15.
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`Plaintiff has used the Mark in association with Plaintiff’s Services
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`since at least as early as February 01, 2004 and Plaintiff is currently using its
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`registered mark in association with Plaintiff’s Services.
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`16.
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`Plaintiff uses the Mark to promote and identify its highly-esteemed
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`scholastic college preparatory institution which provides classes and individual
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`tutoring for the PSAT, SAT and ACT. Over the last 20+ years, Plaintiff has helped
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`4
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`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 5 of 30 PageID #: 5
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`more than 30,000 students in the North Texas geographic area prepare for college
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`admissions testing, with 1,300 students earning National Merit Semifinalists
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`awards in the last ten (10) years alone. Furthermore, thirty-three (33) of Plaintiff’s
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`students have obtained perfect scores in the last 24 months. Plaintiff’s instructors
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`are college-degreed, highly experienced teachers.
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`17.
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`Plaintiff advertises the Mark to a national audience through Plaintiff’s
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`webpage at www.kdcollegeprep.com, a Facebook page, Twitter account, and
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`YouTube video broadcasts. Generally, Plaintiff advertises the Mark in North Texas
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`through paper mailers, which are also occasionally sent across the country. Its
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`students come from many different states, from different North American countries
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`and abroad.
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`V.
`DEFENDANT’S APPLICATION TO REGISTER SIMILAR MARK
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`18. Defendant, Studios, is a Dallas-based organization that offers acting
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`classes for individuals of all ages in North Texas.
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`19. Defendant filed a trademark application assigned Application Serial
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`No. 85-688,755 in the PTO on July 27, 2012 (“Application”) to register the word
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`mark “KD College” (“Defendant’s Mark” or “KD College Mark”) for use in connection
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`with “[e]ducational services, namely, providing courses of instruction at the
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`associates of applied arts degree level and distribution of course material, namely in
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`acting performances, musical theatre and motion picture productions; miscellaneous
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`adult shorter courses, namely, acting classes, musical theatre and motion picture
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`production classes; educational services, namely, preparing students for work in the
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`5
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`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 6 of 30 PageID #: 6
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`entertainment industry through acting classes, musical theatre classes, film
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`making programs and motion picture production classes.” (“Defendant’s Services”).
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`International Class: 041 – Primary Class, U.S. Class: 100, 101, 107. One copy of the
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`PTO record showing the status of Defendant’s Application is attached as Exhibit 2.
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`20.
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`The Application filed by Defendant on July 27, 2012 (“Defendant’s
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`Filing Date”) was based on Defendant’s alleged use of Defendant’s Mark with
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`Defendant’s Services on or before March 27, 2011. (“Defendant’s Alleged First Use
`
`Date”). The Application for Defendant’s Mark was published in the Official Gazette
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`on January 1, 2013.
`
`
`
`VI.
`CLAIMS AND CAUSES OF ACTION
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`COUNT 1: FEDERAL TRADEMARK INFRINGEMENT
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`21.
`
`Plaintiff re-alleges and incorporates by reference paragraphs 1 – 20, as
`
`though fully set forth here.
`
`22.
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`Plaintiff has a protectable right in the KD College Prep Mark. Plaintiff
`
`owns a trademark for the registration of the Mark with the United States Patent
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`and Trademark Office, specifically, United States Trademark Registration Number
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`4148891.
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`23.
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`Plaintiff’s use of the KD College Prep Mark and related stylistic
`
`designs pre-date Defendant’s use of its version of the Mark.
`
`24.
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`The application filed by Defendant for the Defendant’s Mark classified
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`its mark in the same class as Plaintiff’s Mark, proving that Defendant’s use of its
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`mark and related stylistic designs is in the same class as Plaintiff’s use.
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`
`
`6
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`
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`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 7 of 30 PageID #: 7
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`25.
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`Plaintiff is the owner of a valid, protectable, and registered trademark,
`
`namely the KD College Prep Mark. In addition, in the minds of the public, the
`
`primary significance of the Mark is to identify the source of the services in addition
`
`to the service itself.
`
`26. Defendant’s Mark, “KD College,” is nearly identical to Plaintiff’s Mark,
`
`KD College Prep. Defendant’s Mark is confusingly similar in sound, meaning, and
`
`appearance to Plaintiff’s Mark. Defendant’s use of the KD College Mark would
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`likely create confusion, mistake, or deception in the minds of prospective purchasers
`
`as to the origin or source of the services associated with Defendant’s Mark.
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`Defendant’s mark has in fact already caused such confusion among customers.
`
`27. Defendant’s Services are closely related to and/or are in the natural
`
`zone of expansion of Plaintiff’s Services. Plaintiff’s Services include educating others
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`by providing courses of instruction, seminars, workshops and short courses.
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`Likewise, Defendant’s Services include educating others by providing courses of
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`instruction, seminars, workshops and short courses.
`
`28.
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`Plaintiff’s Services and Defendant’s Services travel in the same
`
`channels of trade and are viewed by the same customers, including those who are in
`
`need of educational instruction. Defendant’s Services are therefore substantially
`
`similar to Plaintiff’s Services with which Plaintiff’s Mark is used.
`
`29.
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`Customers familiar with Plaintiff’s Services are likely to mistakenly
`
`believe that Defendant’s Services are sponsored by, authorized, endorsed, affiliated
`
`with or otherwise approved by Plaintiff because the KD College Mark being used by
`
`
`
`7
`
`
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`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 8 of 30 PageID #: 8
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`Defendant is identical to or confusingly similar to Plaintiff’s KD COLLEGE PREP®
`
`Mark.
`
`30.
`
`Such unauthorized use by Defendant has not only caused actual
`
`confusion but is likely to continue causing confusion, mistake, or deception to the
`
`public.
`
`31. Defendant’s conduct thus constitutes trademark infringement in
`
`violation of Section 32 of the Lanham Act, 15 U.S.C. §1114(1)(a).
`
`32.
`
`In accordance with Section 34 of the Lanham Act, 15 U.S.C. §1116,
`
`Defendant should be preliminarily and permanently enjoined, upon notice and
`
`hearing, from using Plaintiff’s Marks and any confusingly similar variant thereof,
`
`alone or in combination with other words, as a trademark, corporate name, trade
`
`name component, domain name, or to otherwise market, advertise, distribute, or
`
`identify products or services.
`
`33.
`
`As a direct and proximate result of Defendant’s infringement, Plaintiff
`
`has suffered damages within the jurisdictional limits of the Court. Under Section
`
`35 of the Lanham Act, 15 U.S.C. §1117, Plaintiff is entitled to recover from
`
`Defendant: (i) Defendant’s profits from its unauthorized use of Plaintiff’s Marks; (ii)
`
`actual damages sustained by Plaintiff; and (iii) the costs of this action.
`
`COUNT 2: FALSE DESIGNATION OF ORIGIN OR SPONSORSHIP, FALSE
`ADVERTISING, AND TRADE MARK DILUTION UNDER 15 U.S.C. §1125
`
`Plaintiff re-alleges and incorporates by reference paragraphs 1 – 20, as
`
`34.
`
`though fully set forth here.
`
`
`
`8
`
`
`
`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 9 of 30 PageID #: 9
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`35.
`
`Plaintiff owns a valid, protectable, and registered trademark, namely
`
`the KD College Prep Mark.
`
`36. Without Plaintiff’s permission or authorization, Defendant knowingly
`
`and intentionally used and continues to use Plaintiff’s Marks in commerce in
`
`connection with the services that Defendant advertises, promotes, and/or sells.
`
`37. Defendant’s use of Plaintiff’s Marks alleged above is likely to cause
`
`and/or has caused customers, purchasers, and members of the public to be confused,
`
`misled, and/or deceived as to the origin, source, sponsorship, or affiliation of
`
`Defendant’s services and is likely to cause people to believe in error that
`
`Defendant’s services have been authorized, sponsored, endorsed, and/or licensed by
`
`Plaintiff or are in some way affiliated with Plaintiff or its services.
`
`38.
`
`Plaintiff has developed valuable goodwill associated with its Marks
`
`and there is a high degree of recognition of the mark among Plaintiff’s current and
`
`prospective customers.
`
`39. Defendant’s Mark has caused and will further cause dilution by
`
`blurring because it associates Plaintiff’s Mark with teaching the art of acting as
`
`opposed to teaching how to prepare for college entrance exams.
`
`40. Defendant’s Mark will cause dilution through tarnishing by
`
`associating the KD COLLEGE PREP® Mark with unsavory or unflattering
`
`associations. For example, Exhibit 3 is an advertisement created by Defendant and
`
`distributed throughout North Texas.
`
`
`
`9
`
`
`
`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 10 of 30 PageID #: 10
`
`41.
`
`Exhibit 3 is for a theatrical production of the musical Cabaret, which
`
`includes a provocative photo of burlesque-style dancers on one side, and the “KD
`
`COLLEGE” Mark featured on the other. This advertisement was found in the same
`
`building where KD COLLEGE PREP® has its classrooms for studying and
`
`preparing for scholastic testing. Parents of the students, and the students
`
`themselves, have had access to the advertisement. At least one individual has
`
`questioned whether KD COLLEGE PREP® is the sponsor of the burlesque-style
`
`Cabaret production.
`
`42.
`
`The provocative nature of the advertisement causes significant dilution
`
`of the KD COLLEGE PREP® Mark. Plaintiff has spent years building the
`
`reputation of KD COLLEGE PREP® as a place where young adults can prepare for
`
`standardized testing. The use of the infringing KD COLLEGE Mark on an
`
`advertisement featuring an image of burlesque-style dancers taints, dilutes and
`
`denigrates the esteemed reputation associated with the registered and protected
`
`KD COLLEGE PREP® Mark. Such dilution compromises the value and goodwill of
`
`the KD COLLEGE PREP® Mark.
`
`43. Defendant’s acts constitute false designation of the origin, false
`
`advertising, dilution by blurring, and dilution by tarnishment in violation of 15
`
`U.S.C. §1125 (a) and (c).
`
`44.
`
`In accordance with Section 34 of the Lanham Act, 15 U.S.C. §1116,
`
`Defendant should be preliminarily and permanently enjoined, upon notice and
`
`hearing, from using Plaintiff’s Marks and any confusingly similar variant thereof,
`
`
`
`10
`
`
`
`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 11 of 30 PageID #: 11
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`alone or in combination with other words, as a trademark, corporate name, trade
`
`name component, domain name, or to otherwise market, advertise, distribute, or
`
`identify products or services.
`
`45.
`
`As a direct and proximate result of Defendant’s infringement, Plaintiff
`
`has suffered damages within the jurisdictional limits of the Court. Under Section
`
`35 of the Lanham Act, 15 U.S.C. §1117, Plaintiff is entitled to recover from
`
`Defendant: i) Defendant’s profits from its unauthorized use of Plaintiff’s Marks; ii)
`
`actual damages sustained by Plaintiff; and, iii) the costs of this action.
`
`
`
`COUNT 3: UNFAIR COMPETITION UNDER THE LANHAM ACT
`
`46.
`
`Plaintiff re-alleges and incorporates by reference paragraphs 1 – 20, as
`
`though fully set forth here.
`
`47.
`
`Plaintiff is the owner of a valid, protectable, and registered trademark,
`
`namely the KD College Prep Mark. In addition, in the minds of the public, the
`
`primary significance of the Mark is to identify the source of the service in addition
`
`to the service itself.
`
`48.
`
`Plaintiff has developed valuable goodwill associated with the KD
`
`College Prep Mark and there is a high degree of recognition of the mark among
`
`Plaintiff’s current and prospective customers.
`
`49.
`
`As alleged above, Defendant misappropriated Plaintiff’s valuable mark
`
`to its commercial benefit and Plaintiff’s detriment.
`
`50. Defendant’s unlawful actions constitute unfair competition in violation
`
`of 15 U.S.C. §1125(a).
`
`
`
`11
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`
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`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 12 of 30 PageID #: 12
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`51. Upon information and belief, Defendant’s unfair competition has been
`
`willful and malicious, constituting an exceptional case under 15 U.S.C. §1117(a).
`
`52.
`
`As a direct result of Defendant’s unlawful misappropriation and unfair
`
`competition, Plaintiff has suffered damages within the jurisdictional limits of this
`
`Court. As such, Plaintiff is entitled to recover damages in an amount to be proven at
`
`trial, including enhanced damages as allowed by law, as well as recovery of
`
`reasonable and necessary attorneys’ fees and costs incurred in bringing this suit.
`
`COUNT 4: TRADEMARK INFRINGEMENT UNDER TEXAS COMMON LAW
`
`53.
`
`Plaintiff re-alleges and incorporates by reference paragraphs 1 – 20, as
`
`though fully set forth here.
`
`54.
`
`Plaintiff is the owner of a valid, protectable, and registered trademark,
`
`namely the KD College Prep Mark.
`
`55.
`
`Plaintiff has been an established Texas business for over 20 years and
`
`its date of first use of the trademark predates Defendant’s first use of their
`
`trademark by several years.
`
`56. Without Plaintiff’s consent, authorization, or permission, Defendant
`
`used, and continues to use, Plaintiff’s Marks and/or colorable imitations of
`
`Plaintiff’s Marks in connection with the selling and offering for sale of services in
`
`the State of Texas when such use was and is likely to deceive and/or cause confusion
`
`and/or mistake as to the source or origin of said services.
`
`57.
`
`Plaintiff has been damaged by Defendant’s unauthorized use of the KD
`
`College Prep Mark and is entitled to have Defendant enjoined from using the Mark.
`
`
`
`12
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`
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`Case 6:13-cv-00710-LED Document 1 Filed 09/24/13 Page 13 of 30 PageID #: 13
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`58.
`
`Plaintiff is entitled to recover all damages cause by Defendant’s
`
`unauthorized use of the Mark since the date of the Notice of Opposition filed on
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`January 16, 2013 with the USPTO.
`
`COUNT 5: UNFAIR COMPETITION UNDER TEXAS COMMON LAW
`
`59.
`
`Plaintiff re-alleges and incorporates by reference paragraphs 1 – 20, as
`
`though fully set forth here.
`
`60.
`
`Plaintiff’s use of the KD College Pr
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