Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA604726
`ESTTA Tracking number:
`05/16/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91211961
`Defendant
`Diageo Brands B.V.
`Plaintiff
`The Explorers Club
`No
`
`Proceeding.
`Applicant
`
`Other Party
`
`Have the parties
`held their discov-
`ery conference
`as required under
`Trademark Rules
`2.120(a)(1) and
`(a)(2)?
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Diageo
`Brands B.V. hereby requests suspension of this proceeding pending a final determination of the civil action.
`Trademark Rule 2.117.
`Diageo Brands B.V. has secured the express consent of all other parties to this proceeding for the suspen-
`sion and resetting of dates requested herein.
`Diageo Brands B.V. has provided an e-mail address herewith for itself and for the opposing party so that any
`order on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Facsimile or email (by agreement only) on this date.
`Respectfully submitted,
`/Evan Gourvitz/
`Evan Gourvitz
`evan.gourvitz@diageo.com, trademarks@diageo.com, gina.vendittelli@diageo.com, jen-
`nifer.hamilton@diageo.com
`RWoodbridge@foxrothschild.com, GHecht@foxrothschild.com, jischiller@bsfllp.com
`05/16/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 85/608,859
`Published in the Official Gazette on February 26, 2013
`Mark: JOHNNIE WALKER EXPLORERS’ CLUB COLLECTION THE SPICE ROAD
`International Class: 33
`
`Opposition No. 9121 1961
`
`
`
` THE EXPLORERS CLUB,
`
`Opposer,
`
`
`
`-against-
`
`DIAGEO BRANDS B.V.,
`
`
`Applicant.
`
`APPLICANT’S MOTION ON CONSENT TO SUSPEND
`
`PENDING FINAL DETERMINATION OF FEDERAL ACTION
`
`Applicant Diageo Brands B.V. (“Diageo”), by and through its counsel, and with the consent
`
`of Opposer The Explorers Club (“the Club”), hereby moves to suspend this opposition pursuant to
`
`37 C.F.R. § 2.1l7(a) and TBMP § 5 l0.02(a) pending final determination in two pending civil
`
`actions that likely will have a bearing on the instant proceeding. The pending federal civil action is
`
`The Explorers Club 1:. Diageo plc et al., No. 14 CV 1959 (S.D.N.Y., filed Mar. 20, 2014) and the
`
`pending state action is The Explorers Club 12. Diageo plc er al., No. 152524/2014. A copy of the
`
`complaint filed in this federal action is attached as Exhibit 1. A copy of the verified petition filed in
`
`the state action is attached as Exhibit 2.
`
`The TTAB Manual of Procedure (the “TBMP”) instructs that a TTAB action may be
`
`suspended if a party is engaged in a pending related civil action. See TBMP § 5l0.02(a)
`
`(“[w]henever it comes to the attention of the Board that a party or parties to a case pending before it
`
`are involved in a civil action which may have a bearing on the Board case, proceedings before the
`
`

`
`Board may be suspended until final determination of the civil action.”).] This is, at least in part,
`
`because, “[t]o the extent that a civil action in a federal district court involves issues in common with
`
`those in a proceeding before the Board, the decision of the federal district court is often binding upon
`
`the Board, while the decision of the Board is not binding upon the court.” TBMP § 5 l0.02(a).
`
`Further, the TBMP instructs that “[o]rdinarily, the Board will suspend proceedings in the case before
`
`it if the final determination of the other proceeding will have a bearing on the issues before the
`
`Board.” In’.
`
`Here, it is indisputable that both pending civil actions may have a bearing on the instant
`
`action due to the obvious and numerous similarities between the proceedings. First, the parties in
`
`both the federal and state civil actions include both parties to this opposition. Second, in the federal
`
`action the Club asks that Diageo be enjoined from registering the mark at issue in this proceeding.
`
`In the state action, the Club asks that Diageo be enjoined from any use of the Explorers Club name.
`
`Third, in both this proceeding and in the federal action, the Club argues that Diageo’s applied-for
`
`mark is confusingly similar to the Club’s marks and is likely to cause consumer confusion. In the
`
`state action, the Club argues that Diageo’s applied-for mark unlawfully uses the Club’s name.
`
`Because a ruling in the pending civil suits would almost certainly have a bearing on the instant
`
`action, the instant proceeding should be suspended until the civil actions are resolved.
`
`In addition to the “bearing on the issues” standard, the TBMP includes an alternate ground
`
`for suspension, namely, that proceedings may be suspended “for good cause upon motion or upon
`
`stipulation of the parties approved by the Board.” Id. § 5l0.03(a); see also 37 CPR. § 2.1 l7(c)
`
`(“[p]roceedings may also be suspended, for good cause, upon motion or a stipulation of the parties
`
`I See also 37 C.F.R. § 2.11’/'(a) (“[w]henever it shall come to the attention of the Trademark Trial and Appeal
`Board that a party or parties to a pending case are engaged in a civil action or another Board proceeding
`which may have a bearing on the case, proceedings before the Board may be suspended until termination of
`the civil action or the other Board proceeding”).
`
`

`
`approved by the Board”). Here, the Club has consented to the present motion, and for the reasons
`
`discussed above, there is clearly good cause for suspending the instant TTAB proceeding. There
`
`are pending civil actions that implicates the same trademark application and legal arguments, and
`
`accordingly, this opposition proceeding should be suspended until the civil actions are resolved.
`
`Suspension is within the Board’s discretion, see TBMP § 510.02(a), and good cause for suspension
`
`exists here.
`
`CONCLUSION
`
`For all of the reasons discussed above, Diageo respectfully requests that the Board suspend
`
`the instant opposition proceeding until a final determination is reached in the civil actions pending
`
`in the Southern District of New York and the New York State Supreme Court for the County of
`
`New York.
`
`Dated: Norwalk, Connecticut
`May 16, 2014
`
`Respectfully submitted,
`
` .,
`
`Evan Gourvitz
`
`Diageo North America, Inc.
`801 Main Avenue
`
`Norwalk, Connecticut 06851
`Phone: (203) 229-4265
`Caunselfor Applicant Diageo North America, Inc.
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I have caused a true and correct copy of the foregoing
`
`APPLICANTS MOTION ON CONSENT TO SUSPEND PENDING FINAL DETERMINATION
`
`OF FEDERAL ACTION to be served upon App1icant’s‘ counsel via email (by agreement) on this
`
`16"‘ day of May 2014, at the following email addresses:
`
`RWoodbridge@f0xrothschi1d.com
`
`GHecht@foXrothschild.com
`
`jischi11er@bsfl1p.com
`
`
`
`inaVenditte11i
`
`

`
`JUDGEmu
`
`
`
`'0RIGE\IAL
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF NEW YORK 14
`
`.....................................................--
`
`I
`
`THE EXPLORERS CLUB, INC.
`
`Plaintiff,
`
`v.
`
`DIAGEO PLC,DIAGEO BRANDS B.V.,
`DIAGEO AMERICAS SUPPLY, INC.,
`DIAGEO NORTH AMERICA, INC., and
`DIAGEO AMERICAS, INC.
`
`Defendants
`
`:
`
`:
`
`:
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`
`.......................................................-_x
`
`E
`
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`
`fl
`
`Civ.
`
`(
`
`1
`
`Complaint
`
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`
`The Explorers Club (the “Club” or “Plaintiff’), by and through its attorneys, alleges as
`
`follows for its complaint against Diageo plc, Diageo Brand B.V., Diageo Americas Supply, Inc.,
`
`Diageo North America,
`
`Inc., and Diageo Americas,
`
`Inc.
`
`(collectively, “Defendants” or
`
`“Diageo”):
`
`NATURE OF ACTION
`
`1.
`
`This is an action in law and equity for trademark infringement, false designation of
`
`origin, and unfair competition under the Lanham Act, 15 U.S.C. §§ 1051 et seq.; trademark
`
`dilution under 15 U.S.C. § 1125(c); unfair competition under the common law;
`
`trademark
`
`infringement under New York General Business Law § 360-k; trademark dilution and injury to
`
`business reputation under New York General Business Law § 360-], and the unlawful use of the
`
`name and identification of a non-profit organization under New York General Business Law §
`
`397.
`
`

`
`2.
`
`This action arises out of Diageo’s marketing and sale of whisky under the name
`
`“Explorers’ Clu ,” which infringes, dilutes, and misappropriates The Explorers Club’s
`
`distinctive, famous and federally registered trademarks for “The Explorers Club” in a manner
`
`that is likely to cause confusion, mistake, and deception among consumers as to the sponsorship,
`
`affiliation, connection, or identification of the Explorers’ Club whiskies and The Explorers Club,
`
`and in fact has already caused such confusion among consumers.
`
`In addition, Diageo is
`
`unlawfully misappropriating the name and other identifying devices of a New York non-profit
`
`organization without its written authorization.
`
`3.
`
`Diageo has intentionally embarked on a scheme to trade on the popularity, goodwill,ancil
`
`reputation that The Explorers Club and its members have earned in the course of more than 100
`
`years of exploring this world and beyond, and promoting the scientific exploration of land, sea,
`
`air, and space by supporting research and education in the physical, natural and biological
`
`sciences.
`
`4.
`
`Diageo’s willful, deliberate, and unauthorized use of The Explorers Club’s name and
`
`trademarks has damaged, and if continued, threatens to irreparably injure the Club. The
`
`Explorers Club’s valuable trademarks are at the mercy of Diageo’s infringing use. The extent of
`
`Diageo’s infringement threatens to dilute the distinctiveness of the Club’s marks, deteriorating
`
`the value that the Club has built through decades of achievement at great risk to its many notable
`
`members and at great expense to the Club.
`
`PARTIES
`
`5.
`
`Plaintiff, The Explorers Club, Inc. is a charitable corporation as defined in subparagraph
`
`(1)(5) of section 102 of the New York Not-For-Profit Corporation Law with a business address
`
`of 46 East 70th Street, New York, New York, 10021. Pursuant to Section 201 of that Law, the
`
`

`
`Club is a Type-B corporation.1 The Explorers Club is a multidisciplinary, professional society
`
`dedicated to the advancement of field research, scientific exploration, resource conservation, and
`
`the ideal that it is vital to preserve the instinct to explore.
`
`6.
`
`Upon information and belief, Diageo plc is a corporation having an address and principal
`
`place of business of Lakeside Drive, Park Royal, London, NW1O 7HQ.
`
`7.
`
`Upon information and belief, Diageo Brands B.V. is a subsidiary of Diageo plc and is a
`
`private limited company organized under the laws of the Netherlands, having a mailing address
`
`of Molenwerf 10-12, Amsterdam, Netherlands 1014BG.
`
`8.
`
`Upon information and belief, Diageo Americas Supply, Inc. is a subsidiary of Diageo plc
`
`and is a New York Corporation with a registered agent address of Corporate Creations Network
`
`Inc., 15 North Mill Street, Nyack, New York, 10960 and a business address of 801 Main
`
`Avenue, Norwalk, Connecticut 06851.
`
`9.
`
`Upon information and belief, Diageo North America, Inc. is a subsidiary of Diageo plc
`
`and is a Connecticut Corporation with a business address of 801 Main Avenue, Norwalk,
`
`Connecticut 06851.
`
`10.
`
`Upon information and belief, Diageo Americas, Inc. is a subsidiary of Diageo plc and is a
`
`Delaware Corporation with a business address of 801 Main Avenue, Norwalk, Connecticut
`
`06851.
`
`11.
`
`Upon information and belief, Diageo plc, and each of the above named subsidiaries, have
`
`manufactured, imported, advertised, promoted, offered for sale, sold and distributed and/or are
`
`manufacturing,
`
`importing, advertising, promoting, offering for sale, selling and distributing
`
`1 The Explorers Club is also a not-for-profit organization as defined under Section 501(c)(3) of the
`Internal Revenue Code.
`
`

`
`products that infringe The Explorers Club’s marks and intend to continue to conduct such
`
`activities.
`
`12.
`
`According to its website, Diageo is “the world’s leading premium drinks business with an
`
`outstanding collection of beverage alcohol brands across spirits, beer and wine.” See
`
`http://www.diageo.com/en-row/OurBusiness/Pages/default.aspx. Johnnie Walker is a Scotch
`
`whisky brand owned by Diageo. Some of the other brands Diageo distributes include Crown
`
`Royal, J&B, Windsor, Buchanan's and Bushmills whiskies, Smirnoff, Ciroc and Ketel One
`
`vodkas, Baileys, Captain Morgan, Tanqueray and Guinness.
`
`JURISDICTION AND VENUE
`
`13.
`
`This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. § 1121,
`
`and 28 U.S.C. §§ 1331 and 1338 with respect to the claims arising under federal law and
`
`supplement jurisdiction pursuant to 28 U.S.C. § 1367 and 28 U.S.C. § l338(b) with respect to the
`
`claims arising under the laws of New York State.
`
`14.
`
`Venue in this county is proper under 28 U.S.C. § 1391 because defendants conduct or
`
`have conducted business in this judicial district and Plaintiff has suffered injury in this district,
`
`and because this Court has personal jurisdiction over Defendants in this district.
`
`FACTS COMMON TO ALL CLAIMS FOR RELIEF
`
`A. The Explorers Club Trademarks Are Distinctive, Famous, And Have Acguired
`Secondary Meaning
`
`15.
`
`The Explorers Club is a not-for-profit corporation, founded in 1904 and incorporated in
`
`1905. The New York Times anticipated the fame the Club would go on to achieve when it
`
`declared, “The Explorers’ Club, which had its first housewarming at the new clubrooms, 23
`
`West Sixty-seventh Street, on Oct. 26, is likely to become one of the most important factors in
`
`

`
`American affairs.” A copy of the November 5, 1905, article from The New York Times is
`
`attached as Exhibit A.
`
`16.
`
`To this day, that prediction remains true. The Club has since been recognized by
`
`numerous publications covering the growth of this esteemed organization and the many
`
`accomplishments of its ever growing membership.
`
`17.
`
`The Explorers Club presently encompasses twenty-six chapters throughout the world and
`
`its membership includes field scientists and explorers from over sixty countries whose
`
`disciplines include: polar exploration, mountaineering, aeronautics, physics, anthropology,
`
`archaeology,
`
`astronomy, biology,
`
`ecology,
`
`entomology, marine biology, oceanography,
`
`paleontology, planetology, and zoology.
`
`18.
`
`The Explorers Club, both at its headquarters and at its Chapters throughout the world,
`
`regularly sponsors expeditions, funds student research, presents public lectures, hosts dinners and
`
`fundraisers, and organizes film festivals dedicated to its core mission of furthering the pursuits of
`
`exploration and scientific discovery. These activities receive substantial media attention,
`
`especially in the New York market. The New York Times in particular has published hundreds of
`
`articles covering the Club’s activities and services. In recent years, the Club has been featured
`
`and received unsolicited coverage in online and print publications such as The New York Times,
`
`The New Yorker, Hufiington Post, Fox News, ABC News, NBC News, USA Today, Outside
`
`magazine, National Geographic, Bloomberg, The Wall Street Journal, Gotham, The New York
`
`Observer, Thrillist, and Gothamist. The Club’s web series, “Exploring Legends,” featuring
`
`interviews with accomplished explorers and scientists, has been shown on Bloomberg, CSPAN
`
`and AskMen.com.
`
`

`
`a. The Explorers Club Owns Multiple Valid, Incontestable Registered Marks in
`Addition to Valid, Legally Protectable Unregistered Marks Per the Common
`LE
`
`19.
`
`The Explorers Club owns a collection of marks, both trademarks and collective
`
`membership marks, registered with the United States Patent and Trademark Office (“USPTO”):
`
`Registration No.;
`
`Registration Date;
`Status
`
`Goods/Services
`
`0872783
`
`July 8, 1969
`Incontestable
`
`Indicating Membership in
`Applicant
`
`08 8 1 91 5
`
`December 2, 1969
`Incontestable
`
`0881 916
`
`December 2, 1969
`Incontestable
`
`0882156
`December 9, 1969
`Incontestable
`
`Indicating Membership in
`Applicant
`
`Indicating Membership in
`Applicant
`
`Scientific and Educational
`Quarterly Journal
`
`The Explorers Club Incorporated
`1 905
`
`Explorers Joumal
`
`World Center For Exploration
`
`May 25, 1976
`Incontestable
`
`Applicant
`
`The Explorers Club
`
`The Explorers Club
`
`December 25, 1984
`Incontestable
`
`1361774
`September 24, 1985
`Incontestable
`
`Banquet Services
`
`Books Recounting the
`Adventures and Culinary
`interests of organizations
`
`

`
`
`
`members; magazines of
`education and scientific
`
`interest; newsletters and
`awards certificates
`
`
`Clothing, Namely- Ties
`
`
`
`13 5421 5
`
`
`
`August 13, 1985
`Incontestable
`
`
`
`
`
`
`
`1344379
`
`
`
`Periodical Publications,
`Namely, A Scientific and
`Educational Quarterly
`Journal
`
`June 25, 1985
`
`Incontestable
`
`
`
`2631432
`
`October 8, 2002
`
`
`Incontestable
`
`Clothing, namely, golf
`shirts, caps, neckties
`
`Arranging travel tours,
`travel agency services,
`namely, making
`reservations and booking
`for transportation, travel
`booking agencies; travel
`guide services; and travel
`
`2962855
`
`June 21, 2005
`Incontestable
`
`information services.
`
`3530503
`
`November 11, 2008
`
`Printed publications,
`namely a magazine in the
`field of exploration.
`
`
`
`The Explorers Journal
`
`The Explorers Club
`
`The Explorers Club Travelers
`
`
`
`20.
`
`All the aforementioned registrations are valid and subsisting and all but one of these
`
`registrations have become incontestable pursuant to 15 U.S.C. § 1065. Copies of the registrations
`
`and status pages from the USPTO are attached as Exhibit B.
`
`

`
`21.
`
`In addition to its rights based on these Federal registrations, the Club has extensive
`
`common law rights in theterms, “The Explorers Club,” “Explorers Club” and any similar
`
`derivation. From its earliest days, the Club has been known as and referred to as the “Explorer’s
`
`Club,” the “Explorers Club,” or even the “Explorers’ Club.”
`
`22.
`
`Since its founding in 1904, The Explorers Club has regularly used its marks — both
`
`registered and unregistered — in connection with goods and services in ways that ensure that
`
`consumers have come to recognize and associate the marks with the Club and its activities.
`
`Through the Club’s success and achievements, its marks have become famous and, accordingly,
`
`are exceedingly strong marks entitled to a wide scope of protection. The marks are inextricably
`
`linked in the public’s perception to The Explorers Club, its accomplished membership, and its
`
`philanthropic endeavors. The fame of Club member
`
`led expeditions,
`
`the variety of
`
`accomplishments first achieved by Club members, and the renown and respect with which The
`
`Explorers Club is held has led to the creation of a world-wide non-profit organization that is
`
`inimitable. Both the federally registered marks and the marks owned by The Explorers Club
`
`through its common law rights are strong, inherently distinctive, and have achieved significant
`
`secondary meaning.
`
`23.
`
`The Explorers Club’s use of its marks in the travel
`
`industry predates any use of
`
`“Explorers’ Club” by Diageo.
`
`lBy the very nature of the services associated with The Explorers
`
`Club, by the global reach of its Chapters and the events they sponsor, and through the media
`
`coverage of the Club’s activities throughout the world, the marks of the Club have long been
`
`associated with travel and exploration.
`
`

`
`b. The Members of The Explorers Club
`
`24.
`
`Explorers Club members consist of individuals who, as members of the Club and
`
`participants in its expeditions, are responsible for some of the most acclaimed discoveries and
`
`accomplishments of the last 110 years. The reputation and significance of The Explorers Club is
`
`demonstrated by the credentials of those that choose to participate as active members in the
`
`Club’s mission. Their achievements, and many others, received widespread media attention and
`
`public acclaim, establishing the reputation and goodwill of The Explorers Club through decades
`
`of
`
`courageous
`
`expeditions. World-renowned
`
`Explorers
`
`Club members
`
`include:
`
`a. Robert Peary
`b. Sir Ernest Shackleton
`
`c. Robert Falcon Scott
`d. Charles Lindbergh
`e. President Theodore Roosevelt
`
`f. Sir Edmund Hillary
`g. Tenzing Norgay
`h. Roy Chapman Andrews
`i. Thor Heyerdahl
`j.
`Jacques Piccard
`k. President Herbert Hoover
`
`1. Lowell Thomas
`in. Jim Fowler
`
`n. Bertrand Piccard
`0. Don Walsh
`
`p. Chuck Yeager
`q. Neil Armstrong
`r. Buzz Aldrin
`
`s. Michael Collins
`t. Walter Cronkite
`u. Sally Ride
`v. Kathryn Sullivan
`w. James Cameron
`x.
`Jane Goodall
`
`Jacques Cousteau
`y.
`z. Senator John H. Glenn, Jr.
`
`25.
`
`Explorers Club members are responsible for the most iconic achievements in exploration.
`
`Club members were the first to reach the North Pole (Robert Peary and Matthew Henson) and
`
`the South (Roald Amundsen), first to the summit of Mount Everest (Sir Edmund Hillary and
`
`Tenzing Norgay), first to the deepest point in the ocean (Don Walsh and Jacques Piccard), and
`
`first to the Moon (Neil Armstrong, Buzz Aldrin, and Michael Collins). For generations, these
`
`epic journeys, courageous expeditions, and inspirational accomplishments have received
`
`widespread media attention and public acclaim, cementing the Club’s reputation as the champion
`
`

`
`of exploration and ensuring that The Explorers Club and its marks have acquired significant
`
`secondary meaning.
`
`26.
`
`Starting in 1918, such expeditions would frequently take place in the company of the
`
`Explorers Club Flag, further lending the Club’s imprimatur to the Voyage and thus bolstering the
`
`Club’s reputation and renown. Receiving permission to carry the Explorers Club Flag on an
`
`“Explorers Club Flag Expedition” has become a premier honor in exploration. Explorers Club
`
`Flag Expeditions have ensured that the Explorers Club Flag has flown at the summit of Mount
`
`Everest, reached the deepest part of the world’s oceans, and accompanied Buzz Aldrin, Neil
`
`Armstrong, and Michael Collins on the first trip to the Moon.
`
`
`
`
`
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`

`
`c. The Explorers Club Research Collection
`
`27.
`
`The Explorers Club maintains a significant Research Collection, which it makes available
`
`to the public. Indeed one of the original goals of the Club was the “acquisition and maintenance
`
`of a Library of exploration and travel.” An early description of this Research Collection, which
`
`continues to grow ever larger, is contained in a 1935 letter from the Treasury Depaltment
`
`confirming the Club’s tax-exempt status:
`
`“Your organization has an extensive library which consists of over eleven
`thousand volumes devoted exclusively to exploration, and a large collection of
`maps and charts. This library is considered one of the most important and
`complete of its kind to be found anywhere in the world and contains many
`rare items of great value to explorers and scholars doing research work in the
`field of exploration.”
`A copy of this letter is attached as Exhibit E.
`
`d. The Explorers Club’s Charitable Endeavors
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`28.
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`The Explorers Club charitable purposes are set forth in Article III of the Club’s bylaws:
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`“Article III: Club Purposes
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`To promote
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`exploration;
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`to sponsor,
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`encourage
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`and
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`assist research
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`in the physical, biological, and the natural sciences so as to broaden man's
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`knowledge of all phases of the universe;
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`to sponsor education and
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`educational facilities consonant with the aforesaid purposes of the Club and
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`those specific in its Charter;
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`to foster
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`the interest of people of all ages,
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`races and backgrounds
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`in exploration and scientific research through
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`lectures, publications, conferences, financial grants and all other
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`relevant
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`means;
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`to maintain library, map and other advisory facilities which will
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`assist those interested and engaged in exploration and scientific research; to
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`encourage industry,
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`organizations,
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`foundations,
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`and individuals
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`to
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`promote
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`the general and specific purposes
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`for which this Club was
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`organized.”
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`29.
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`The Explorers Club supports scientific field research through grant programs that
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`contribute significant funding to individual and group expeditions on a yearly basis. The Club’s
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`ll
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`current annual grants consist of the Youth Activity Fund Grant and the Exploration Fund Grant.
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`Other grants are available from various Club Chapters.
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`30.
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`The Youth Activity Fund Grant provides grants for high school students and college
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`undergraduates to support field research and foster a new generation of explorers dedicated to the
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`advancement of the scientific knowledge of our world.
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`31.
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`The Exploration Fund Grant provides funding for graduate, post-graduate, doctorate, and
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`early career post-doctoral students to help advance their research careers.
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`32.
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`The Explorers Club receives grant applications from hundreds of students representing
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`countries around the world. In 2014, the Club received applications from students in 36 different
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`countries with proposals to conduct work in 96 different countries. Grant recipients conduct their
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`research around the world, and are frequently published in peer-reviewed publications.
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`33.
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`Renowned scientists that received fi1nding for their early research projects include
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`astrophysicist and star of the new television series, “Cosmos: A Spacetime Odyssey,” Neil
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`deGrasse Tyson, Ph.D. In his book, “The Sky is Not The Limit: Adventures of An Urban
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`Astrophysicist,” he describes the Club as follows:
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`“The Explorer’s Club is a well-paneled, well-upholstered place on
`Manhattan’s Upper East Side where, in every room, you are sure to have some
`wall-mounted bodiless mammal staring straight at you. The Club attracts,
`among its members, explorers of every ilk, who go to hang out and share
`stories of their adventures to the bottom of the ocean, to the tops of mountains,
`to the depths ofjungles, and to the reaches of space.”
`
`e. Corgorate Sponsorship
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`34.
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`One measure of the fame and recognition The Explorers Club has obtained is the quantity
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`and quality of corporate sponsorships the Club is able to attract.
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`35.
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`The Explorers Club’s reputation and good will has enabled the Club to fund a significant
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`portion of its activities and grants by licensing its intellectual property.
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`36.
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`Corporations that license the Club’s IP, and the use they make of the Club’s marks, are
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`carefully vetted to ensure that they support the charitable and scientific mission of The Explorers
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`Club. The contracts governing these corporate relationships ensure that the Club maintains
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`quality control over the use of its marks. The revenue generated by these licensing opportunities
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`directly funds the Club’s charitable work.
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`i. Corporate Sponsorships in the Liguor Indust1_'y
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`37.
`
`The Explorers Club use of its marks in the liquor industry, indeed even in the whisky
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`industry, pre-dates any use of the “Explorers’ Club” mark by Diageo.
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`38.
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`In 2011, The Explorers Club licensed certain of its marks to Whyte & Mackay for the
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`promotion of a new whisky in its Mackinlay’s brand, the Mackinlay’s Rare Old Highland Malt.
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`This whisky is a recreation of the whisky brought to Antarctica by Sir Ernest Shackleton in 1907
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`on his Nimrod expedition. Whyte & Mackay held the product launch at The Explorers Club
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`headquarters and its desire to affiliate with the reputation of the Club was succinctly stated by the
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`Marketing Director for Mackinlay’s:
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`“What impressed us most about The Explorers Club,
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`besides its obvious connection to Sir Ernest,
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`is their appreciation of discovery, historical
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`heritage, and the ability to consider the future needs of the planet through exploration — today
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`and tomorrow.” See Exhibit C. Whyte & Mackay contracted to obtain the ability to promote this
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`whisky as the “Whisky of The Explorers Club”.
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`39.
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`The launch of Whyte & Mackay’s whisky at The Explorers Club headquarters was
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`covered by the press, and the press release regarding the sponsorship was widely distributed:
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`,
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`a.
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`“103 YEARS IS apparently just the right amount of time to attract an
`adventurous crowd. That's how long it
`took for adventurer Earnest
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`Shackleton's whisky stash to travel from Antarctica to the Explorer's Club in
`Manhattan. On November 10, an appreciative capacity crowd attended the
`launch of Mackinlay's Rare Old Highland Malt Whisky, a meticulous modern
`recreation of a Scotch whisky left behind by Shackleton and his team in 1908
`and rediscovered, frozen in the tundra, in 2007.”
`“Whyte & Mackay launch Mackinlay’s “Shackleton” whisky in
`NYC.” — Examiner, November 1 1, 2011.
`
`the
`“Whyte & Mackay’s Mackinlay’s Rare Old Highland Malt brand,
`replicated Shackleton whisky, has become a corporate sponsor of The
`Explorers Club,
`the worldwide centre for exploration that bestowed upon
`Shackleton honorary membership.”
`“Shackleton Whisky Sponsor’s Shackleton’s Old Club” — Whisky-
`Drinker, November 2, 2011.
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`“The Explorers Club Toasts New Corporate Sponsor Mackinlay’s Rare Old Highland
`Malt Whisky: Shackleton’s Abandoned, Rediscovered and Recreated Whisky.”
`Press release issued November 1, 2011 — available on Yahoo.’ Finance
`
`“Attendees drank a re-creation of the malt whiskey taken to Antarctica by
`explorer Ernest Shackleton during his 1907 “Nimrod”" expedition. A piece of
`the moon brought back by Apollo astronauts was also on display, as was a
`chunk of glacier shipped from Iceland.”
`Coverage of The Explorers Club Annual Dinner in 2013, “Astronauts
`Celebrate Adventure at Explorers Club Dinner” — Spacecom, March
`20, 2013.
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`b.
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`c.
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`d.
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`40.
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`At the time Diageo released its infringing Explorers’ Club Collection of whisky, the Club
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`still had an ongoing sponsorship agreement with Whyte & Mackay for promotion of its whisky.
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`41.
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`Upon information and belief, the Explorers Club afiiliated Whyte & Mackay whisky was
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`sold in duty free stores alongside Diageo’s infringing Explorers’ Club Collection.
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`42.
`
`Upon information and belief,
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`in July 2013, Diageo actually purchased a controlling
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`interest in White & Mackay’s parent company, United Spirits. After this purchase, Diageo found
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`itself in the position of selling and marketing the infringing Explorers’ Club Collection under its
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`Johnnie Walker brand at the same time that its new affiliate, Whyte & Mackay, had a contractual
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`agreement with The Explorers Club for the promotion of a different whisky and the rights to use
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`14
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`certain of the Club’s IP in promoting its product, including the right for its product to be called
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`“Whisky of The Explorers Club.”
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`43.
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`The Club has also entered into sponsorship arrangements with other liquor, beer, and
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`wine companies and has developed Explorers Club labeled beer and wine. Recent examples of
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`sponsorships in the liquor industry include Redwood Creek wines, Dos Equis, and Double Cross
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`Vodka.
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`ii. Additional Corporate Sponsorships
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`44.
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`Since at least the early 1990s, The Explorers Club has affiliated with travel organizations
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`to run THE EXPLORERS CLUB TRAVELERS program. Through this program, consumers are
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`able to purchase tickets on Explorers Club sponsored Voyages led by renowned Explorers Club
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`members. These trips have been marketed, sold, and taken place around the globe.
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`45.
`
`Eddie Bauer, producer of high quality and reputable outdoor equipment, apparel and
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`other products, contracted with the Club to promote its brand and products. Eddie Bauer obtained
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`a license to use certain of the Club’s IP in its promotional materials, and obtained the right to be
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`designated as “Outfitter of The Explorers Club” and “Outfitter to The Explorers Club.” Eddie
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`Bauer also sponsored two significant grant programs with The Explorers Club: the “Eddie Bauer
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`— Explorers Club Youth Grant” and the “Eddie Bauer — Explorers Club Grant for Expeditions.”
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`These grants funded multiple expeditions relating to climate change, preservation, and
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`sustainability, consistent with the mission of The Explorers Club.
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`46.
`
`Land Rover sponsored a recent film festival at The Explorers Club, obtaining the rights to
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`use The Explorers Club’s intellectual property for approved promotional purposes, including
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`having the following title accompany the promotion of the film festivali “Land Rover Presents
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`the 2006 Explorers Club Documentary Film Festival.”
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`15
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`47.
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`Rolex Watch USA, Inc. contracts with the Club for promotional exclusivity in the
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`jewelry/timepiece market. Rolex licenses certain of The Explorers Club marks for pre-approved
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`uses. In addition, Rolex sponsors an “Artist in Residence” grant with The Explorers Club.
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`48.
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`Film studios also contract with the Explorers Club to ho