Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA545620
`ESTTA Tracking number:
`06/27/2013
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91210760
`Defendant
`Shuffle Master, Inc.
`MICHELE L. MCSHANE
`SHUFFLE MASTER, INC.
`LEGAL DEPT 1106 PALMS AIRPORT DR
`LAS VEGAS, NV 89119
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`mmcshane@shufflemaster.com;trademark@sh
`Motion to Suspend for Civil Action
`Erica J. Van Loon
`evanloon@glaserweil.com, jwood@glaserweil.com
`/Erica J. Van Loon/
`06/27/2013
`2013-06-27 Motion to Suspend TTAB Proceeding -- CASINO WAR
`(final).pdf(16384 bytes )
`Exhibit A to Mtn to Suspend.pdf(3791217 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
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91210760
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`Mark: Casino War
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`Serial No. 85/718,633
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`Filed: August 31, 2012
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`Spielo International Canada ULC,
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`Opposer,
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`Shuffle Master, Inc.,
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`Applicant
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`____________________________________)
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`MOTION TO SUSPEND PROCEEDING
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`PENDING OUTCOME OF RELATED CIVIL ACTION
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`Applicant, SHFL entertainment, Inc. formerly known as Shuffle Master, Inc. (“SHFL” or
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`“Applicant”) hereby moves this Board for an order under 37 C.F.R. § 2.117(a) suspending the
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`above-referenced Opposition proceeding filed by Spielo International Canada ULC (“Opposer”)
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`for SHFL’s CASINO WAR trademark, Serial No. 85/718,633 pending disposition of a related
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`civil action, Case No. CV 13-00796-ODW (MRWx), which is presently pending in the United
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`States District Court for the Central District of California (the “Civil Action”). A true and
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`correct copy of SHFL’s Complaint, filed February 5, 2013, is attached to the Motion as Exhibit
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`A (“Complaint”).
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`SHFL is the owner of a federal trademark registration, Registration No. 1,860,468, issued
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`by the USPTO on October 25, 1994, for CASINO WAR, in international class 028 for use on or
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`in connection with “card game.” Complaint at ¶59, Exhibit (“Exh.”) 29. Affidavits have been
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`filed pursuant to Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 and 1065, and this
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`registration is incontestable. Id. On August 31, 2012, SHFL applied to register the CASINO
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`WAR trademark with the United States Patent and Trademark Office (“USPTO”), Serial Number
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`85/718,633, in international class 41, for use on or in connection with entertainment services,
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`namely, providing online electronic games.
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`SHFL filed the Civil Action on February 5, 2013. In the Complaint, SHFL alleges that
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`Opposer and its related corporate family market, distribute, display and sell unauthorized Casino
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`War games and software in interstate commerce bearing the same and/or confusingly similar
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`imitations of SHFL’s federally registered and common law CASINO WAR marks. Complaint at
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`¶¶13-14, 68, 111, 116. SHFL alleges that Opposer’s conduct is likely to cause confusion,
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`deception and mistake by creating the false and misleading impression that Opposer’s products
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`are manufactured, produced, distributed, endorsed, sponsored, approved or licensed by SHFL, or
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`are associated or connected with SHFL. Id. at ¶¶111, 116. The Complaint seeks, inter alia,
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`damages and an injunction prohibiting Opposer from using the Casino War trademark.
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`In its Notice of Opposition filed on May 22, 2013, Opposer contends that SHFL’s
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`CASINO WAR trademark, Serial No. 85/718,633, is not entitled to registration on the grounds
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`that “Casino War” is the generic term for Applicant’s proposed services of entertainment
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`services, namely, providing online electronic games, which it is not. Notice of Opposition, at
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`¶¶9-10. In any event, the issue of whether SHFL owns a valid and enforceable CASINO WAR
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`mark will be determined in the pending Civil Action.
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`Therefore, the outcome of the Civil Action will be dispositive of or have a bearing on this
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`Opposition proceeding, and this proceeding should be suspended until termination of the Civil
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`Action. 37 C.F.R. § 2.117; see also Black Box Corp. v. Better Box Communication Ltd., 2002
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`TTAB LEXIS 253 (TTAB 2002) (“It is the policy of the Board to suspend proceedings when the
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`2
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`parties are involved in a civil action which may be dispositive of or have bearing on the Board
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`case.”)
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`Accordingly, SHFL requests that this proceeding be suspended pending disposition of the
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`Respectfully submitted,
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`/Erica J. Van Loon/
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`Erica J. Van Loon, California State Bar
`GLASER WEIL FINK JACOBS HOWARD
`AVCHEN & SHAPIRO LLP
`10250 Constellation Blvd., 19th Floor
`Los Angeles, California 90067
`(310) 282-6260
`evanloon@glaserweil.com
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`Attorneys for Applicant,
`SHFL entertainment, Inc.
`formerly known as Shuffle Master, Inc.
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`Civil Action.
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`Dated: June 27 , 2013
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing MOTION TO SUSPEND PROCEEDING
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`PENDING OUTCOME OF RELATED CIVIL ACTION was served upon the attorneys for
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`Spielo International Canada ULC, by first class mail, postage prepaid, to Andrew S. Ehard,
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`Merchant & Gould P.C., 80 South Eighth Street, Suite 3200, Minneapolis, Minnesota 55402-
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`2215 on the date given below.
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`/Erica J. Van Loon/
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`ERICA J. VAN LOON
`Attorneys for Applicant,
`SHFL entertainment, Inc.
`formerly known as Shuffle Master, Inc.
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`CERTIFICATE OF ELECTRONIC FILING
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`Dated: June 27, 2013
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`I hereby certify that this paper is being filed with the United States Patent and Trademark
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`Office via the Electronic system for Trademark Trials and Appeals (ESTTA) on the date shown
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`/Erica J. Van Loon/
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`ERICA J. VAN LOON
`Attorneys for Applicant,
`SHFL entertainment, Inc.
`formerly known as Shuffle Master, Inc.
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`4
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`below.
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`Dated: June 27, 2013
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`Exhibit A
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`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 1 of 162 Page ID #:8
`-\ Casi; 2:13—cv.—0_0796—MMM—MRW Document1
`Filed 02/05/13 Pag'e1of162 Page ID #28
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`.
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`ADRIAN M. PRUETZ - State Bar No. 118.215
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`Attorneys for Plaintiff‘
`SHFL entertainment, Inc.
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`WESTERN DIVISION
`
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`
`SI-IFLEN’I'ERTAII}l1VmN'I,1NC., 8.
`Minnesota coxporatlon,
`Plaintiff,
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`CASE 1 - U 0 7 9 6”‘? V 5
`COMPLAINT FOR
`‘
`'
`1 - 4. PATENT INFRINGEMENT
`5. TRADEMARK INFRINGEMENT
`6- FEDERAL UNFAIR
`A
`°°M"”"‘°”
`7. COPYRIGHT INFRINGEMENT
`8. CALIFORNIA STATU'I‘0RY
`UNFAIR COMPEHTION
`9.
`V CALIFORNIA COMMON LAW
`UNFAIR COMPETITION
`
`-
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`.
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`[JURY TRIAL DEMANDED]
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`10
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`H
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`12
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`'13
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`14
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`'15
`16
`17
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`18
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`I9
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`20
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`21
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`22
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`23
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`Defendants.
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`27
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`28
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`790095
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` COMPLAINT
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`

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`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 2 of 162 Page ID #:9
`Case 2:13—cv—00796-MMM-MRW Document 1
`Filed 02/05/13 Page 2 of 162 Page ID #:9
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`1
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`2
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`Plaintiff SHFL entertainment, Inc. formerly known as Shuffle Master, Inc.
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`(“SHFL” or “Plaintiff’), submits the following Complaint against Defendants Boss
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`3 Media AB (“Boss”), GTech Corporation (GTech), GTech Holdings Corporation
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`4
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`(“GTech Holdings”), Lottomatica Group S.p.A. (“Lottomatica”), Spielo International
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`5 Canada ULC (“Spielo Canada”), Spielo International UK Ltd. (“Spielo UK”), Spielo
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`6
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`International USA, LLC (“Spielo USA”) (collectively, “Defendants”) and alleges as
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`follows:
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`9
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`JURISDICTION AND VENUE
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`1.
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`This Complaint arises under the laws of the United States, specifically
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`the patent, trademark and copyright laws of the United States, 15 U.S.C. §§1114 and
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`1125, 17 U.S.C. §101, et seq. and 35 U.S.C. §271, et seq. This Court has original
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`jurisdiction ofthis action under 15 U.S.C. §1121 and 28 U.S.C. §§ 1331 and 1338.
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`13 This Court has supplemental jurisdiction under 28 U.S.C. §, 1367 because the claims
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`14
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`are so related as to form part of the same case or controversy.
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`2.
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`This Court has personal jurisdiction over Defendants because Defendants
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`solicit, transact and do business in California and this District, a substantial part of the
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`wrongful acts or omissions complained of occurred in this District, and Defendants
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`18
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`19
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`are subject to personal jurisdiction in this District. Defendants purposefully directed
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`their activities toward this District when they willfully infringed SHFL’s intellectual
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`20 property rights, specifically targeted consumers here, a substantial part of the harm
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`21 was felt in this District, and several Defendants are registered to do business with the
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`22 California Secretary of State.
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`23
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`3.
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`‘Venue is proper in the United States District Court for the Central
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`24 District of California under 28 U.S.C. §§ 1391(b) and (c).
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`25
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`26
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`4.
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`Plaintiff SHFL is a Minnesota corporation with _its principal place of
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`THE PARTIES
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`27 business at 1106 Palms Airport Drive, Las Vegas, Nevada 89119.
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`28
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`5.
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`On information and belief, Defendant Boss is a Swedish company doing
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`790095
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`1
`(3()Iv[PI.zxIrJ1?
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`HowardAvchen&ShapiroLLP
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`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 3 of 162 Page ID #:10
`Case 2:13—cv-00796-MMM-MRW Document1
`Filed 02/05/13 Pagei.3 of162 Page ID #210
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`HowardAvchen&ShapiroLLP
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`1 business at 10 Memorial Boulevard, Providence, Rhode Island 02903, and is a
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`2
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`subsidiary of Lottomatica. Boss is registered to do business in California with the
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`3 California Secretary of State.
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`4
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`6.
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`On information and belief, Defendant GTech is a Delaware corporation
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`5 doing business at 10 Memorial Boulevard, Providence, Rhode Island 02903, and is a
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`subsidiary of Lottomatica. GTech is registered to do business in California with the
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`7 California Secretary of State.
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`7.
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`On information and belief, Defendant GTech Holdings is a Delaware
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`corporation doing business at 10 Memorial Boulevard, Providence, Rhode Island
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`10 02903, and is a subsidiary of Lottomatica.
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`8.
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`On information and belief, Defendant Lottomatica is an Italian company,
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`doing business at Viale del Campo Boario 56/D, Rome, Italy 00154.
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`9.
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`On information and belief, Defendant Spielo Canada is a Nova Scotia
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`company doing business at 10 Memorial Boulevard, Providence, Rhode Island 02903,
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`and is a subsidiary of Lottomatica. Spielo Canada is registered to do business in
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`16 California with the California Secretary of State.
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`17
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`18
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`10.
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`On information. and belief, Defendant Spielo UK is a United Kingdom
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`company doing business at 70 Chancery Lane, London WC2A 1AF, United
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`19 Kingdom, and is a subsidiary of Lottomatica.
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`20
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`21
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`22
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`11.
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`On information and belief, Defendant Spielo USA is a Nevada limited
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`liability company doing business at 6757 Spencer Street, Las Vegas, Nevada 89119,
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`and is a subsidiary of Lottomatica. Spielo USA is registered to do business in
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`23 California with the California Secretary of State.
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`I
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`24
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`12.
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`SHFL is unaware of the true names and capacities of Defendants sued
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`25 hereunder as DOES 1 through 10 inclusive, and therefore sues these Defendants by
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`26
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`such fictitious names. SHFL is informed and believes and thereon alleges that each
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`27 of the fictitiously named Defendants is responsible in some manner for the
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`28 occurrences herein alleged, and that SHFL’s damages as herein alleged were
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`790095
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`2
`COMPLAINT
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`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 4 of 162 Page ID #:11
`Case 2:13—cv-00796-MMM-MRW Document 1
`Filed 02/05/13 Page 4 of 162 Page ID #:11
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`HowardAvchen&Shapiro1.1?
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`1 proximately caused by their conduct. SHFL will amend this complaint to allege the
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`true names and capacities of the Defendants DOES 1 through 10 when ascertained.
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`13.
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`SHFL is informed and believes and thereon alleges that at all times
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`relevant hereto each of the Defendants was the agent, affiliate, officer, director,
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`manager, principal, alter—ego and/or employee of the other Defendants and was at all
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`times acting within the scope of such agency, affiliation, alter—ego relationship and/or
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`employment and actively participated in, or subsequently ratified and adopted, or
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`both, each and all of the acts or conduct alleged herein, with full knowledge of all the
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`facts and circumstances.
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`14.
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`SHFL is informed and believes that the corporate relationship between
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`the Defendants is intentionally muddled to conceal the source of the products
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`12 complained of herein. As best SHFL can tell, Defendants are the providers of the
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`infringing products described herein, however, SHFL reserves the right to amend this
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`Complaint should it obtain information to the contrary.
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`FACTUAL ALLEGATIONS
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`SHFL’s Proprietary Games and Intellectual Property
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`15.
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`For decades, SHFL has been a leading global supplier of innovative
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`18 products and technologies for the gaming industry. Among other assets, SHFL owns
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`a substantial portfolio of proprietary casino table games, electronic table systems,
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`20 electronic gaming machines and website games, which feature online versions of
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`21 SHFL’s table games as well as online play-for-fun games, and associated intellectual
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`22 property rights.
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`23
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`16.
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`SHFL created and/or acquired through purchase the rights in the casino
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`24 games entitled Let It Ride, Three Card Poker, Pair Plus which is a side bet featured in
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`connection with certain table games, Casino War, Caribbean Stud Bonus and
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`26 Caribbean Stud Poker (individually and collectively, the “SPEL Games”).
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`27
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`'17.
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`Through its marketing and promotional efforts, SHFL popularized the
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`28 SHFL Games.
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`790095
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`3
`COMPLAINT
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`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 5 of 162 Page ID #:12
`Case 2:13—cv-00796-MMM-MRW Document 1
`Filed 02/05/13 Page 5 of 162 Page ID #212
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`HowardAvchen&Shapiro1.1.?
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`18.
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`SHFL has developed and continues to develop electronic versions of its
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`2 proprietary games, including the SHFL Games, for use in connection with online
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`casinos, social gaming sites and mobile applications.
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`19.
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`SHFL licenses the SHFL Games to casino operators located in
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`California, throughout the United States and internationally.
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`20.
`In particular, SHFL extensively licenses its intellectual property
`including the SHFL Games to Indian Gaming Casinos throughout Southern California
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`and this District.
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`21.
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`SHFL earns a substantial portion of its business revenue through
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`licensing SHFL Games and associated intellectual property rights to third parties
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`worldwide.
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`22.
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`SHFL is registered to do business in California through the California
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`Secretary of State.
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`23.
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`In addition, SHFL is registered to do business in all fifty-eight counties
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`in California, including every single county in this District.
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`24.
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`Further, SHFL’s casino products and related services in California and
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`this District are subj ect to stringent regulation and approval procedures by the
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`California Gambling Control Commission (“CGCC”). Accordingly, SHFL has
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`several licenses from the CGCC, including Manufacturer & Distributor of Gambling
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`—I O
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`,_n ,_n
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`—I—I—-—I—I>—>—I>—\O00\]ONEll-PU3I\)
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`I\)0 Equipment — Vendor and Gaming Vendor Provider and SHFL is included on the
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`I9 —I CGCC’s list of Gaming Resource Suppliers (Vendors) Found Suitable by the CGCC.
`[Q[Q
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`SHFL’s Patents
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`23
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`25.
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`SHFL is the exclusive owner of all rights to United States Patent No.
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`24 6,23 7, 916 entitled “Method and Apparatus for Playing Card Games” (the “’9l6
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`25 Patent”) including but not limited the right to sue for damages. The United States
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`26 Patent and Trademark Office (“USPTO”) duly and legally issued the ’9l6 Patent on
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`27 May 29, 2001. Attached hereto as Exhibit 1
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`is a true and correct copy of the ’9l6
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`28 Patent.
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`790095
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`4
`COMPLAINT
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`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 6 of 162 Page ID #:13
`Case 2:13—cv-00796-MMM-MRW Document 1
`Filed 02/05/13 Page 6 of 162 Page ID #213
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`HowardAvchen&ShapiroLLP
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`1
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`26.
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`SHFL is the exclusive owner of all rights to United States Patent No.
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`2 6,698,759 entitled “Player Banked Three Card Poker and Associated Games” (the
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`“’759 Patent”) including but not limited the right to sue for damages. The USPTO
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`duly and legally issued the ’759 Patent on March 2, 2004. Attached hereto as Exhibit
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`2 is a true and correct copy of the ’759 Patent.
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`27.
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`SHFL is the exclusive owner of all rights to United States Patent No.
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`5,417,430 entitled “Progressive Wagering Method and Game” (the “’430 Patent”)
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`including but not limited the right to sue for damages. The USPTO duly and legally -
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`issued the ’430 Patent on May 23, 1995. Attached hereto as Exhibit 3 is a true and
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`correct copy of the ’430 Patent.
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`28.
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`SHFL is the exclusive owner of all rights to United States Patent No.
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`5,43 7,462 entitled “Wagering Game” (the “’462 Patent”) including but not limited the
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`right to sue for damages. The USPTO duly and legally issued the ’462 Patent on
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`August 1, 1995. Attached hereto as Exhibit 4 is a true and correct copy of the ’462
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`Patent.
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`SHFL’s Trademarks
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`29.
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`SHFL is the owner of several common law and federally registered
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`trademarks which it has continuously used in California and nationwide in connection
`with entertainment services and games, including the gametitles Let It Ride, Three
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`Card Poker, Pair Plus which is a side bet featured in connection with certain table
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`games, Casino War, Caribbean Stud Bonus and Caribbean Stud Poker.
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`30.
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`SHFL is the owner of a federal trademark registration, Reg. No.
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`1,840,102 issued by the USPTO on June 14, 1994_, for “Let It Ride” for use on or in
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`connection with “entertainment services; namely, providing facilities and resources,
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`including instructions, for playing card games.” Affidavits have been filed pursuant
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`to Sections 8 and 15 ofthe Lanham Act, 15 U.S.C. §§ 1058 and 1065, and this
`
`registration is incontestable. Attached hereto as Exhibit 5 is a true and correct copy
`
`28 of the Certificate of Registration for this mark.
`
`5
`COMPLAJNT
`
`790095
`
`

`
`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 7 of 162 Page ID #:14
`Case 2:13—cv-00796-MMM-MRW Document 1
`Filed 02/05/13 Page 7 of 162 Page ID #214
`
`1
`
`31.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`2 2,183,895 issued by the USPTO on August 25, 1998, for “Let It Ride” for use on or in
`
`connection with “entertainment services, namely, conducting games of chance on
`
`casino premises.” Affidavits have been filed pursuant to Sections 8 and 15 of the
`
`Lanham Act, 15 U.S.C. §§ 1058 and 1065, and this registration is incontestable.
`Attached hereto as Exhibit 6 is a true and correct copy of the Certificate of
`
`Registration for this mark.
`
`32.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`2,605,107 issued by the USPTO on August 6, 2002, for “Let It Ride” for use on or in
`
`10 connection with “lottery tickets and game tickets for playing instant games of
`
`11
`
`chance.” Affidavits have been filed pursuant to Sections 8 and 15 of the Lanham Act,
`
`15 U.S.C. §§ 1058 and 1065 , and this registration is incontestable. Attached hereto as
`
`Exhibit 7 is a true and correct copy of the Certificate of Registration for this mark.
`
`14
`
`33.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`2,178,254 issued by the USPTO on August 4, 1998, for “Let It Ride” for use on or in
`
`16 connection with “computer software for playing games; and Video game discs
`
`17
`
`18
`
`recorded on CD ROM.” Affidavits have been filed pursuant to Sections 8 and 15 of
`
`the Lanham Act, 15 U.S.C. §§ 1058 and 1065, and this registration is incontestable.
`
`19 Attached hereto as Exhibit 8 is a true and correct copy of the Certificate of
`
`20 Registration for this mark.
`
`21
`
`34.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`22 2,178,413 issued by the USPTO on August 4, 1998, for “Let It Ride Bonus” for use
`
`23 on or in connection with “entertainment services, namely, conducting games of
`
`24
`
`chance on casino premises.” Affidavits have been filed pursuant to Sections 8 and 15
`
`25 of the Lanham Act, 15 U.S.C. §§ 1058 and 1065, and this registration is incontestable.
`
`26 Attached hereto as Exhibit 9 is a true and correct copy of the Certificate of
`
`27 Registration for this mark.
`
`28
`
`35.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`790095
`
`6
`COMPLAINT
`
`
`
`
`
`HowardAvchen&ShapiroLLP
`
`

`
`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 8 of 162 Page ID #:15
`Case 2:13—cv-00796-MMM-MRW Document 1
`Filed 02/05/13 Page 8 of 162 Page ID #215
`
`1 2,182,290 issued by the USPTO on August 18, 1998, for the “Let It Ride 10 J Q K A
`
`2
`
`3
`
`1 2 $” Design depicted below foruse on or in connection with “entertainment
`
`services, namely, conducting games of chance on casino premises.” Affidavits have
`
`4 been filed pursuant to Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 and
`
`5
`
`6
`
`11
`
`1065, and this registration is incontestable. Attached hereto as Exhibit 10 is a true
`
`and correct copy of the Certificate of Registration for this mark.
`
`
`
`
`
`HowardAvchen&Shapiroms
`
`12
`36.
`SHFL is the owner of a federal trademark registration, Reg. No.
`13 3,630,813 issued by the USPTO on June 2, 2009, for the “10.J Q K A 1 2 $ Let It
`
`14 Ride Bonus” Design depicted below for use on or in connection with “gambling
`15 machines, namely, stand alone, multiple player, interactive gaming machines with
`
`16 video output.” Attached hereto as Exhibit 11 is a true and correct copy of the
`
`17 Certificate of Registration for this mark.
`
`19
`
`20
`
`21
`
`22
`
`23
`
`37.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`24 2,558,783 issued by the USPTO on April 9, 2002, for the “Let It Ride Bonus 12$ A K
`25 Q J 10” Design depicted below for use on or in connection with “entertainment
`
`26
`
`services, namely, conducting games of chance on casino premises.” Affidavits have
`
`27 been filed pursuant to Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 and
`
`28
`
`1065, and this registration is incontestable. Attached hereto as Exhibit 12 is a true
`
`790095
`
`7
`COIVIPLAINT
`
`

`
`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 9 of 162 Page ID #:16
`Case 2:13—cv-00796-MMM-MRW Document 1
`Filed 02/05/13 Page 9 of 162 Page ID #216
`
`1
`
`2
`
`4
`
`6
`
`23
`
`24
`
`25
`
`
`
`
`
`HowardAvchen&ShapiroLLP
`
`and correct copy of the Certificate of Registration for this mark.
`
`..
`
`.
`
`_
`
`_
`
`V IL; ,
`
`oi
`
`-
`
`
`
`V
`r .
`*
`. ~
`.
`‘
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`38.
`
`2,100,875 issued by the USPTO on September 30, 1997, for the “10 J Q K A 12 ‘.5 Let
`
`It Ride The Tournament” Design depicted below for use on or in connection with
`
`“entertainment services, namely, promoting, arranging and providing facilities for
`
`card game play-off events.” Affidavits have been filed pursuant to Sections 8 and 15
`
`of the Lanham Act, 15 U.S.C. §§ 1058 and 1065, and this registration is incontestable.
`
`Attached hereto as Exhibit 13 is a true and correct copy of the Certificate of
`
`Registration for this mark.
`
`
`
`39.
`
`Reg. Nos. 1,840,102; 2,183,895; 2,605,107 and 2,178,254 for “Let It
`
`Ride,” Reg. Nos. 2,178,413 for “Let It Ride Bonus,” Reg. No. 2,182,290 for the “Let
`
`It Ride 10 J Q K A12 95” Design, Reg. No. 3,630,813 for the “10 J Q K A12 “.6 Let It
`
`Ride Bonus” Design, Reg. No. 2,558,783 for the “Let It Ride Bonus 12$ A K Q J 10”
`
`Design, and Reg. No. 2,100,875 for the “10 J Q K A 12$ Let It Ride The
`
`Tournament” Design are collectively the “LET IT RIDE” trademarks.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`40.
`26
`27 3,011,356 issued by the USPTO on November 1, 2005, for the “Three Card Poker”
`28 Design depicted below for use on or in connection with “multiple player, stand alone
`
`790095
`
`8
`CX)b1PLAd1JT
`
`

`
`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 10 of 162 Page ID #:17
`Case 2:13—cv-00796-MMM-MRW Document 1
`Filed 02/05/13 Page 10 of 162 Page ID #217
`
`1
`
`interactive electronic game machine with video outpu .” Affidavits have been filed
`
`2 pursuant to Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 and 1065, and
`this registration is incontestable. Attached hereto as Exhibit 14 is a true and correct
`
`copy of the Certificate of Registration for this mark.
`
`
`
` [I
`PM
`
`41.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`2,650,060 issued by the USPTO on November 12, 2002, for the “Three Card Poker”
`
`Design depicted below for use on or in connection with “software for the play of card
`
`games.” Affidavits have been filed pursuant to Sections 8 and 15 of the Lanham Act,
`
`15 U.S.C. §§ 1058 and 1065, and this registration is incontestable. Attached hereto as
`
`Exhibit 15 is a true and correct copy of the Certificate of Registration for this mark.
`
`’3B&zannnrtw€
`
`42.
`
`SHFL is the owner of a federal trademark registration, Reg.‘ No.
`
`.Howard
`Avchen&Shapiroup
`
`20
`
`21
`
`22 4,109,825 issued by the USPTO on March 6, 2012, for the “Three Card Poker”
`
`23 Design depicted below for use on or in connection with “software for providing a
`
`24 game of chance on a gaming platform that enables electronic credit wagering.”
`
`25 Attached hereto as Exhibit 16 is a true and correct copy of the Certificate of
`
`26 Registration for this mark.
`
`27
`
`28
`
`790095
`
`9
`COIVIPLAINT
`
`

`
`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 11 of 162 Page ID #:18
`Case 2:13—cv—00796-MMM-MRW Document 1
`Filed 02/05/13 Page 11 of 162 Page ID #218
`
`EEE
`fzzzzclnnmtt»
`
`43.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`2,397,403 issued by the USPTO on October 24, 2000, for the “Three Card Poker”
`
`Design depicted below for use on or in connection with “entertainment services;
`
`namely providing live casino games in gaming establishments.” Affidavits have been
`filed pursuant to Sections 8 and 15 ofthe Lanham Act, 15 U.S.C. §§ 1058 and 1065,
`
`y
`
`and this registration is incontestable. Attached hereto as Exhibit 17 is a true and
`
`correct copy of the Certificate of Registration for this mark.
`
`12
`
`3
`
`4 5
`
`
`
`HowardAvchen&Shapiroup
`
`mass can iuttt
`
`44.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`2,233,569 issued by the USPTO on March 23, 1999, for the “Three Card Poker”
`
`Design depicted below for use on or in connection with “playing cards, layout cloth,
`
`and instructions sold as a unit for playing casino card games.” Affidavits have been
`
`filed pursuant to Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 and 1065,
`
`and this registration is incontestable. Attached hereto as Exhibit 18 is a true and
`
`22 correct copy of the Certificate of Registration for this mark.
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`790095
`
`I'Im:zcm M1‘
`
`45.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`2,395,326 issued by the USPTO on October 17, 2000, for the Fan Design depicted
`
`10
`COMPLAINT
`
`

`
`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 12 of 162 Page ID #:19
`Case 2:13—cv—00796-MMM-MRW Document 1
`Filed 02/05/13 Page 12 of 162 Page ID #219
`
`1 below for use on or in connection with “entertainment services; namely providing live
`
`casino games in gaming establishments.” Affidavits have been filed pursuant to
`2
`3 Sections 8 and 15 ofthe Lanham Act, 15 U.S.C. §§ 1058 and 1065, and this
`
`4
`
`registration is incontestable. Attached hereto as Exhibit 19 is a true and correct copy
`
`5 of the Certificate of Registration for this mark.
`
`9
`
`46.
`
`SI-IFL is the owner of a federal trademark registration, Reg. No.
`
`10 2,03 6,848 issued by the USPTO on February 11, 1997, for the Fan Design depicted
`
`11 below for use on or in connection with “casino card games.” Affidavits have been
`
`
`
`HowardAvchen«S1ShapiroLLP
`
`
`
`
`
`
`
`)—-)—)—-»—I)—A)—>--a)—-\D00\]ONU:->U)I\)
`
`
`
`
`
`filed pursuant to Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 and 1065,
`
`and this registration is incontestable. Attached hereto as Exhibit 20 is a true and
`
`correct copy of the Certificate of Registration for this mark.
`
`47.
`
`Reg. Nos. 3,011,356; 2,650,060; 4,109,825 ; 2,397,403; and 2,233,569
`
`I\)O
`
`for the “Three Card Poker” Design and Reg. Nos. 2,395,326 and 2,036,848 for the
`
`21 Fan Design are collectively the “THREE CARD POKER” trademarks.
`22
`48.
`SI-IFL is the owner of a federal trademark registration, Reg. No.
`
`23 4,234,994 issued by the USPTO on October 30, 2012, for “Pair Plus” for use on or in
`
`24
`
`25
`
`26
`
`connection with “software for the play of card games.” Attached hereto as Exhibit
`
`21 is a true and correct copy of the Certificate of Registration for this mark.
`
`V 49.
`
`SI-IFL is the owner of a federal trademark registration, Reg. No.
`
`27 4,234,993 issued by the USPTO on October 30, 2012, for “Pair Plus” for use on or in
`
`28
`
`connection with “layout cloth for casino card games.” Attached hereto as Exhibit 22
`
`790095
`
`11
`'
`COMPLAINT
`
`

`
`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 13 of 162 Page ID #:20
`Case 2:13—cv-00796-MMM-MRW Document 1
`Filed 02/05/13 Page 13 of 162 Page ID #220
`
`
`
`
`
`HowardAvchen&ShapiroLLP
`
`A
`
`1
`
`2
`
`3
`
`is a true and correct copy of the Certificate of Registration for this mark.
`
`50.
`
`SHFL is the owner of the common law trademark for “Pair Plus” which
`
`it has used continuously on or in connection with its proprietary games, including as a
`
`4 proprietary side bet in SHFL’s Three Card Poker game since at least 1995.
`
`5
`
`6
`
`7
`
`51.
`
`Reg. Nos. 4,234,994 and 4,234,993 for “Pair Plus” and the common law
`
`trademark for “Pair Plus” are collectively the “PAIR PLUS” trademarks.
`
`52.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`8 3,893,104 issued by the USPTO on December 21, 2010, for “Caribbean Stud Bonus”
`9
`for use on or in connection with “entertainment services, namely providing live
`
`10 games of chance in gaming establishments.” Attached hereto as Exhibit 23 is a true
`
`11
`
`12
`
`and correct copy of the Certificate of Registration for this mark.
`
`53.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`3,325,211 issued by the USPTO on October 30, 2007, for the “Caribbean Stud
`
`14 Bonus” Design depicted below for use on or in connection with “casino gaming tables
`
`15
`
`16
`
`and casino card games.” Attached hereto as Exhibit 24 is a true and correct copy of
`
`the Certificate of Registration for this mark.
`
`17
`
`19
`
`20
`
`21
`
`22
`
`54.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`23 3,325,210 issued by the USPTO on October 30, 2007, for the “Caribbean Stud
`
`24 Bonus” Design depicted below for use on or in connection with “casino gaming
`
`25
`
`services.” Attached hereto as Exhibit 25 is a true and correct copy of the Certificate
`
`26 of Registration for this mark.
`
`27
`
`28
`
`790095
`
`12
`COIVIPLAINT
`
`

`
`Case 2:13-cv-00796-MMM-MRW Document 1 Filed 02/05/13 Page 14 of 162 Page ID #:21
`Case 2:13—cv-00796-MMM-MRW Document 1
`Filed 02/05/13 Page 14 of 162 Page ID #:21
`
`
`
`HowardAvchen5.Shapiro1.1.13
`
`
`
`
`
`
`
`5
`
`55.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`6 2,108,501 issued by the USPTO on October 28, 1997, for “Caribbean Draw ” for use
`
`7 on or in connection with “providing casino gaming services.” Affidavits have been
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`filed pursuant to Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 and 1065,
`
`and this registration is incontestable. Attached hereto as Exhibit 26 is a true and
`
`correct copy of the Certificate of Registration for this mark.
`
`56.
`
`SHFL is the owner of a federal trademark registration, Reg. No.
`
`3.,067,149 issued by the USPTO on March 14, 2006, for “Caribbean Stud” for use on
`
`or in connection with “cards or tickets for offering games of chance, namely, lottery
`
`tickets.” Attached hereto as Exhibit 27 is a true and correct