Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA580964
`ESTTA Tracking number:
`01/09/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91213310
`Defendant
`Riesett, Sandra L.
`DONNA M.D. THOMAS
`ASTRACHAN GUNST THOMAS RUBIN, P.C.
`217 E REDWOOD ST FL 21
`BALTIMORE, MD 21202-3305
`UNITED STATES
`dthomas@agtlawyers.com, mbetz@agtlawyers.com
`Motion to Suspend for Civil Action
`Donna M.D. Thomas
`dthomas@agtlawyers.com, mbetz@agtlawyers.com
`/donna md thomas/
`01/09/2014
`MotionForSuspension.pdf(968890 bytes )
`ExAtoMotionforSuspension.pdf(2147368 bytes )
`ExBtoMotionForSuspension.pdf(5689043 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
`
`In the matter of trademark application Serial No. 85/794867
`For the Mark SHOW YOUR SOFT SIDE
`
`Published in the Official Gazzette on May 7, 2013
`
`Mayor and City Council of Baltimore
`
`Opposition N0_912133 10
`
`Opposer,
`
`V.
`
`Sandra L. Riesestt,
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`Applicant
`
`
`MOTION FOR SUSPENSION
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`Applicant Sandra L. Riesett (“Riesett”) moves for suspension of the aboVe—iclentified
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`opposition proceeding pursuant to Trademark Rule of Practice 2.117(a) (37 C.F.R. § 2.11’/'(a))
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`and Section 510.02(a) of the Trademark Trial and Appeal Board Manual of Procedure
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`(“TBMP”).
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`In the above-captioned proceeding, Opposer Mayor and City Council of Baltimore (“City
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`of Baltimore”) has opposed Applicant Riesett’s Application No. 85/794867 to register the mark
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`SHOW YOUR SOFT SIDE (the “Mark”). The City of Baltimore has based its opposition on
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`allegations that: (i) Riesett, through her advertising agency, created the Mark for the City of
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`Baltimore; (ii) the City of Baltimore is the owner and prior user of the Mark; (iii) Applicant°s use
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`of the Mark is likely to cause confusion with regard to the City ofBaltimore’s affiliation, license
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`or endorsement of Applicant and/or the Mark; and (iv) Applicant‘s registration of the Mark
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`would be inconsistent with the City of Baltirnore’s rights in the mark at common law.
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`

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`On June 26, 2013, Applicant Riesett filed a Complaint for Declarative Relief captioned
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`Riesett 12. Mayor and City Council ofBaZrim0re, Civil Action No. GLR—l 3-1860, which is
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`currently pending in the United States District Court for the District of Maryland (the “Civil
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`Action”). (A copy of Riesett’s Complaint in the Civil Action is attached hereto as Exhibit A and
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`a copy of the Answer, Affirmative Defenses and Counterclaim of Defendant/Opposer is attached
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`hereto as Exhibit B.) In the Civil Action, Riesett claims to have created an anti—animal abuse
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`public service advertising campaign (the “Campaign”) in connection with which she uses the
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`Mark, and formerly licensed use of the Campaign and the Mark to the City of Baltimore.
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`In the
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`Civil Action, Riesett seeks, in part, a judgment declaring that the Defendant/Opposer City of
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`Baltimore is not entitled to ownership or registration of the marks associated with the Campaign,
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`which include the Mark, and that she is entitled to sole and exclusive ownership and registration
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`of the marks associated with the Campaign, including the Mark. See paragraphs a and b on page
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`7 of the Complaint attached hereto as Exhibit A.
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`In its Answer, Affirmative Defenses and Counterclaim in the Civil Action,
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`Defendant/Opposer alleges that the Mark was created by Applicant for the City of Baltimore and
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`seeks final judgment declaring that the City of Baltimore is entitled to ownership and registration
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`of the marks associated with the Campaign, including the Mark, and that Plaintiff/Applicant
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`Riesett is not entitled to ownership or registration of the marks associated with the Campaign,
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`including the Mark. See paragraphs a and c on page 12 of Defendant/Opposer’s Answer,
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`Affinnative Defenses and Counterclaim attached hereto as Exhibit B. Because the Civil Action
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`between Riesett and City of Baltimore involves determination of the ownership of and the right
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`to register the Mark between the parties involved in this opposition proceeding, the Civil Action
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`will have a bearing on Defendant/Opposer City of Baltimore’s trademark rights in the SHOW
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`88888.0'."'."(l 1 I960)
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`2
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`

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`YOUR SOFT SIDE mark, which in turn affects its right and basis to oppose Applicant Riesett’s
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`applied-for mark in the above—captioned proceeding.
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`Pursuant to Trademark Rule 2.117(a), the Board has discretion to suspend proceedings
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`pending the final determination of a civil action which may have a bearing on the case. See also
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`General Motors Corp. v. Cadillac Club Fashions Inc, 22 USPQ2d 1933 (TTAB 1992); Tom Co.
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`v. Hardigg Industries. Inc, 187 USPQ 689 (TTAB 1975), rev ‘a’ on other grounds, 549 F.2d 785,
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`193 USPQ 149 (CCPA 1977). Accordingly, the Board has discretion to suspend the instant
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`proceedings pending final determination of the Civil Action, where, as here, the outcome of the
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`Civil Action will clearly have a bearing on Opposer City of Baltimore’s ownership of and right
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`to use and register the SHOW YOUR SOFT SIDE mark, which is the basis of this opposition
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`proceeding against Riesett.
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`Therefore, Applicant Riesett respectfully requests that the Board suspend this opposition
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`proceeding pending determination of the Civil Action.
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`Dated: January 9, 2014
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`Respectfully submitted,
`
`gb ML
`
`DONNA M.D. THOMAS
`
`JAMES B. ASTRACHAN
`
`Astrachan Gunst Thomas, PC.
`217 E. Redwood Street, 21“ Floor
`
`Baltimore, MD 21202
`410-783-3550
`
`410-783-3530 (fax)
`jastrachan@,agtlawyers.com
`dthomastcbagtlaflerscom
`
`88888.0'i'7'(l I 1960)
`
`3
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`

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`CERTIFICATE OF SERVICE
`
`The undersigned, a member of the Maryland Bar, hereby certifies that on this 9th day of
`January, 2014, she caused a copy of the foregoing Motion for Suspension to be served via first
`class mail, postage prepaid on:
`
`Suzanne Sangree, Chief Solicitor
`Patrick D. Sheridan, Assistant Solicitor
`
`Baltimore City of Law Dept.
`100 N. Holliday St., Room 109
`Baltimore, MD 21202
`
`Attorneys for Opposer
`
`,Q:/wQ71—\
`
`Donna MD. Thomas
`
`88888.077(ll1960)
`
`4
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`

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`EXHIBIT A
`
`

`
`Case 1:13-cv-01860—GLR Document 1 Filed 06/25113 Page 1 of 8
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF MARYLNAD
`
`(Northern Division)
`
`SANDE RIESETT
`10122 Falls Road
`
`Lutherville, Maryland 21093
`
`Plaintiff,
`
`v.
`
`MAYOR AND CITY COUNCIL OF BALTIMORE
`
`Service Upon: George A. Nilson, Esq.
`100 N. Holliday Street, Ste. 101
`Baltimore, Maryland 21202
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`Defendant.
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`*
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`>l<
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`>l<
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`>l<
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`=l=
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`*
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`=1:
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`*
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`*
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`*
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`*
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`*
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`*
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`*
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`*
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`*
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`Civil Action No.:
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`*
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`>1:
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`1!
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`=l<
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`>l<
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`COMPLAINT FOR DECLARATIVE RELIEF
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`Piaintiff, Sande Riesett (hereinafter, “Riesett"), by her undersigned counsel, sues
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`the Defendant, Mayor and City Council of Baltimore (hereinafter, “City of Baltimore"),
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`and alleges that:
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`JURISDICTION AND VENUE
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`1.
`
`This case arises under the Copyright Act, the Lanham Act and Declaratory
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`Judgment Act of the United States. This Court has subject matter jurisdiction over the
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`action pursuant to the provisions of 15 U.S.C §§ 1119, 1121, 17 U.S.C. §501 and 28
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`U.S.C. §§ 1331, 1338, 2201 and 2202. Venue is proper in this judicial district by reason
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`of the provisions of 28 U.S.C. §§ 1391(b) and 1400(a).
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`2.
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`Declarative relief is required because the City of Baltimore has claimed
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`ownership of the trademarks and copyrights associated with the “SHOW YOUR SOFT
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`88888.07?/lO7806v1
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`

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`Case l:l3—cv—01860—GLR Document 1 Filed O6l25/13 Page 2 of 8
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`SIDE" anti-animal abuse public service advertising campaign created by Riesett (the
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`“Campaign”). In furtherance of its position that it owns the Campaign, the City of
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`Baltimore has threatened to sue Riesett to establish ownership. Such threats of
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`litigation are inconsistent with the rights of Riesett pursuant to the copyrights and
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`trademarks she asserts ownership of, will cause irreparable harm to Riesett, and result
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`in her inability or hindered ability to license the Campaign for use in other markets, as it
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`is now used in Baltimore City.
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`3.
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`4.
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`Riesett is an individual and a domiciliary of Lutherville, Maryland.
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`Riesett is a seasoned advertising professional who has authored numerous
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`advertising campaigns, including those employed by non—profits. Riesett is the owner
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`and president of Outlaw Advertising, LLC (“Outlaw’?, a Maryland company which
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`provides advertising services to small businesses and non—profit organizations. Prior to
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`forming Outlaw, Riesett worked for very large advertising agencies on accounts as
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`diverse as MOBIL oil, IAMS pet food, and THE LONDON TIMES.
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`5.
`
`The Mayor and City of Baltimore is a corporation established by the
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`Charter of Baltimore City, Article 1, Section 1.
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`l=F\_CT§
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`6.
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`In or about January 2011, Riesett became concerned at the growing
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`number of reported incidents of animal abuse occurring in the City of Baltimore,
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`particularly the news report regarding several pre—teens who were alleged to have set a
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`dog on fire. Riesett reasoned that as well as posing a threat to animals, pre-teens such
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`88888377} 107806v1
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`

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`Case l:13~cv—D1860-GLR Document 1 Filed 06/25/13 Page 3 of 8
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`as these, who would maliciously injure an animal, would likely perpetuate violent
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`behavior on people.
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`7.
`
`Riesett wanted to develop a public service campaign to promote kindness
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`to animals and to educate young people and the public at large that cruelty to animals
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`is not acceptable social behavior.
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`In the Spring of 2011 Riesett attended a meeting of
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`the Mayor's Anti-Animal Abuse Task Force, which subsequently became, by approval of
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`the Baltimore City Council, the Mayor's Anti-Animal Abuse Advisory Commission (the
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`“Commission"), where she learned that many of the most horrific cases of animal abuse
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`were committed by preteens and teenagers.
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`8.
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`Thereafter, the idea originated with Riesett that any advertising message
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`would need to speak to its intended audience through a person or persons that a
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`youthful audience would respect. With the aim of formulating a message that would
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`have an impact on youth, Riesett conceived of the idea of using weil—known “tough
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`guys” such as professional athletes and celebrities to show how animals bring out a
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`person's soft side.
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`9.
`
`Riesett’s next step was to create the Campaign. Riesett developed concept
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`boards for the Campaign featuring professional athletes and celebrities with their pets
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`and she created the slogans “ONLY A PUNK WOULD HURT A CAT OR DOG", and
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`“SHOW YOUR SOI-‘I’ SIDE” (collectively, the “Marks”).
`
`10.
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`Riesett sought the help of a friend who had contacts with celebrities and
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`athletes to enlist their participation in the Campaign. Through these efforts, a number
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`of professional athletes and celebrities agreed to donate their services and personas for
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`88888.D77!107806v1
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`

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`Case 1:l3—cv—01860—GLR Document 1 Fiied 06/25/13 Page 4 of 8
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`use in the Campaign. Riesett secured the services of photographer Leo Lubow to
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`photograph the athletes and celebrities, and she obtained licenses to use such images
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`and photographs in the Campaign.
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`11.
`
`Riesett created all of the Campaign's advertising materials, namely
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`posters, billboards, print and online advertising, calendars, radio spots, tv spots, videos
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`and a Facebook page, including all of the copy, text, layout and design of such
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`advertising materials.
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`12.
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`In or about August 2011, when Riesett was prepared to launch the
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`Campaign, some of the advertising materials were shown to certain members of the
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`Commission and the City of Baltimore, and the City of Baltimore asked that the City
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`logo be included in the materials. Riesett agreed and, until recently, included the City’s
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`logo on the Campaign's advertising materials in the Baltimore City market.
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`13.
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`Riesett solicited friends and the media to provide free media space for the
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`Campaign's advertising materials, such as no cost billboard space. Riesett and her
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`friends have solicited sponsors and donors, and have personally donated funds, to
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`support and pay for the cost of production and media placement for the Campaign.
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`Riesett also raised money for the Campaign through events and the sale of branded
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`merchandise.
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`14.
`
`Riesett always intended to retain, and has never relinquished, ownership
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`of the Campaign and its associated advertising materials and intellectual property
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`rights, and has filed applications with the United States Patent and Trademark Office
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`(“USPTO") to register the Marks in her name. At no time did Riesett convey to the City
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`88888.07?/107B06v1
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`

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`Case 1:13-cv-01860-GLR Document 1 Filed 06/25/13 Page 5 of 8
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`of Baltimore or to the Commission, any rights of ownership in the Campaign and its
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`associated advertising materials and intellectual property rights, and despite repeated
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`requests that the City of Baltimore produce any evidence of transfer, it has failed to do
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`so.
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`15.
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`There are no written agreements between Riesett, the City of Baltimore
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`and/or the Commission regarding use of the Campaign, the Campaign's advertising
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`materials, the Marks and copyrights. The City of Baltimore and the Commission have
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`merely been granted by Riesett a non—exclusive, terminable at will, license to use the
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`Campaign in the City of Baltimore.
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`16.
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`Neither the City of Baltimore nor the Commission paid for the creation of
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`the Campaign, the associated advertising materials or the copyrights and Marks
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`associated therewith. The only payments that Riesett has received in connection with
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`the City of Baltimore's use of the Campaign include reimbursement of costs advanced
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`by Riesett or Outlaw for media production and media placement, such as the cost to
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`produce posters or billboards and the cost of non—donated advertising space for
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`displaying same on billboards and in bus shelters in Baltimore City. Such costs were the
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`responsibility of the Commission or the City of Baltimore as the advertiser, and have
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`been reimbursed to Riesett from local animal rescue shelters and the Baltimore City
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`Foundation (“BCF”) out of funds donated to the shelters and BCF primarily from
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`sponsors and donors solicited by Riesett and her friends. Riesett has also personally
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`donated funds to cover these costs.
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`88888077/1G7806v1
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`

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`Case 1:13-cv-01850-GLR Document 1 Filed 0625/13 Page 6 of 8
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`17.
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`Despite the City of Baltimore's lack of ownership, and lack of any
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`document transferring ownership, the City of Baltimore has asserted ownership of the
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`Campaign and its associated advertising materials and intellectual property rights.
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`18.
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`The City of Baltimore Law Office has also advised that it intends to oppose
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`Riesett’s registration of one of the Marks with the USPTO, and has filed with the USPTO
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`a request for extension of time to oppose Riesett’s application to register the mark
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`SHOW YOUR SOI-‘I’ SIDE within the statutory period.
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`19.
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`Despite an in-person meeting with the City of Baltimore Law Office, and
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`the tender to the City of Baltimore of a written royalty-free license to employ the
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`Campaign and its associated advertising materials in the Baltimore City market, the City
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`of Baltimore continues to assert ownership of the Campaign and its associated
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`advertising materials and intellectual property rights (including the Marks and
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`copyrights), threatens to file its opposition to Riesett’s registration of one of the Marks
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`with the USPTO, and has threatened to sue Riesett to establish ownership of the
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`Campaign.
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`20.
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`On information and belief, the City intends to create derivative works of
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`the Campaign and its associated advertising materials.
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`COUNT I
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`DECLARATIVE RELIEF
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`21.
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`Riesett realleges each and every allegation set forth in paragraphs 1
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`through 20, and incorporates them herein.
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`88888.07?/107806v1
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`

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`Case 1:13-cv-01860-GLR Document 1 Filed 06/25/13 Page 7 of 8
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`22.
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`Riesett has a reasonable apprehension that the City of Baltimore will sue
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`her to attempt to obtain ownership of the Campaign and its associated advertising
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`materials and intellectual property rights, including copyrights and the Marks, and will
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`file an opposition to registration of the Marks with the USPTO. Further, Riesett intends
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`to license the Campaign and its associated advertising materials and intellectual
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`property rights, including copyrights and Marks, to other jurisdictions, and any such
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`iicense will be required to represent that Riesett is the sole owner thereof, that there
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`are no third party claims associated therewith, and that she will indemnify the licensee
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`against any such claims. As asserted by the City of Baltimore, such claims exist. These
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`actions and assertions will result in immediate and irreparable injury.
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`WHEREFORE, Riesett prays a final judgment declaring that:
`
`a.
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`Neither the City of Baltimore, nor the Commission, is entitled to ownership
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`or registration of the copyrights to the Campaign and its associated advertising
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`materials and the Marks;
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`b.
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`Riesett is entitled to sole and exclusive ownership and registration of the
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`copyrights to the Campaign and its associated advertising materials and the Marks;
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`c.
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`Neither the City of Baltimore, nor the Commission, can exercise any rights
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`associated with ownership of copyrights to the Campaign and its associated advertising
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`materials under 17 U.S.C. § 106, including the preparation of derivative works;
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`cl.
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`The City of Baltimore's, and the Commission's, right to use the Campaign
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`and its associated advertising materials, copyrights and the Marks is revocable by
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`Riesett at any time; and
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`88888.07?’/107B06v1
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`

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`Case 1:13-cv-0l860—GLR Document 1 Filed 06/25/13 Page 8 of 8
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`e.
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`Riesett be awarded such other relief as may be just and appropriate,
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`including her costs and attorneys’ fees.
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`Respectfully submitted,
`
`/s/
`
`JAMES B. ASTRACHAN Bar No. 03566
`
`DONNA M.D. THOMAS Bar No. 23499
`
`CHRISTOPHER J. LYON Bar No. 27443
`
`Astrachan Gunst Thomas, P.C.
`217 E. Redwood Street
`
`21“ Floor
`
`Baltimore, MD 21202
`410-783-3550
`
`410-783-3530 (fax)
`
`Attorneys for Plaintiff
`
`88888.07?/107806v1
`
`

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`EXHIBIT B
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`

`
`Case 1:13—cv—Ol860-GLR Document 23 Filed 10/16l13 Page 1 of 14
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
`(Northern Division)
`
`SANDE RIESETT,
`
`Plaintiff
`
`v.
`
`MAYOR AND CITY COUNCIL
`OF BALTIMORE,
`
`Defendant.
`
`\—d\a“-..d\./\..r'-_t\a-..r\e\.v
`
`Civil Action No.: GLR-13-1860
`
`ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIM OF
`DEFENDANT MAYOR AND CITY COUNCIL OF BALTIMORE
`
`Defendant Mayor and City Council of Baltimore (“the City"), by its attorneys, for its
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`answer, affirmative defenses and counterclaim alleges as follows:
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`RESPONSE TO ALLEGATIONS IN THE COMPLAINT
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`Pursuant to Federal Rule of Civil Procedure 8, the City generally denies the allegations
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`and resulting liability, and denies that Plaintiff is entitled to the requested relief as set forth in
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`each paragraph of the Complaint, except as follows:
`
`I.
`
`2.
`
`The City admits the allegations in Paragraph 1.
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`Whether declaratory relief is required is a legal conclusion to which no response“
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`is required. The City admits that it asserts ownership of the trademarks associated with the’
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`Mayor's Anti—Animal Abuse Advisory Commissi0n’s “Show Your Soft Side” advertising
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`campaign (“the Campaign"). The City generally denies the remaining allegations in Paragraph 2
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`of the Complaint.
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`

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`Case 1:13-cv—01860-GLR Document 23 Filed 10/16713 Page 2 of 14
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`3.
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`The City is without knowledge or information sufficient to admit or deny the.
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`allegations in Paragraph 3 ofthe Complaint.
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`4.
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`The City is without knowledge or information sufficient to admit or deny the
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`allegations in Paragraph 4 ofthe Complaint.
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`5.
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`The City denies the allegations in Paragraph 5 ofthe Complaint, but asserts that it
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`is a corporation named the “Mayor and City Council of Baltimore.”
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`6.
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`The City is without knowledge or information sufficient to admit or deny the
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`allegations in Paragraph 6 of the Complaint.
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`7.
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`The City is without knowledge or infonnation sufficient to admit or deny the
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`allegation in the first sentence of Paragraph 7. The City admits that Plaintiffattended a meeting
`of the Mayor’s Anti-Animal Abuse Advisory Commission (“the Commission”) in March 201 I,
`where she offered her volunteer services to develop an advertising campaign to address animal
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`abuse. At
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`that meeting, Commission members educated her concerning the goals of the
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`Commission, the nature of animal abuse and the demographics of the perpetrators of animal
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`abuse in Baltimore City. As to the remainder of the allegations in Paragraph 7, the City either
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`denies, or lacks sufficient information to admit or deny those allegations.
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`8.
`
`The City lacks sufficient
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`information to admit or deny the allegations in
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`Paragraph 8 of the Complaint, except to admit that the idea of using well—known “tough guys”
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`such as professional athletes and other celebrities in an advertising campaign did not exist prior
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`to Plaintiff's attendance at the Commission meeting in March 20] i.
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`9.
`
`The City lacks sufficient
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`information to admit or deny the allegations in
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`Paragraph 9 of the Complaint except to state that the City admits that the Campaign slogans
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`“ONLY A PUNK WOULD HURT A CAT OR A DOG” and “SHOW YOUR SOFT SIDE"
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`

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`Case 1:13-cv—01860-GLR Document 23 Filed 10l16i'13 Page 3 of 14
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`(collectively the "Marl<s”), did not exist prior to the Commission engaging Plaintiff and her
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`company, Outlaw Advertising, LLC (“Outlaw") in March 201 I.
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`I0.
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`The City is without knowledge or information sufficient to form a belief as to the‘
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`truth of the allegations in the first sentence of Paragraph I0 of the Complaint, and in the first
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`clause of the second sentence of Paragraph l0 (“Through these efforts .
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`. ."). The City admits the
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`allegations in the second clause of the second sentence of Paragraph l0 in that professional
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`athletes and celebrities agreed to pose for photographs for the Campaign. The City is without
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`knowledge or information sufficient to admit or deny the allegations in the third sentence of
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`Paragraph I0 of the Complaint, except to aver that licenses, jointly in the names of the Mayor’s
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`Anti-Animal Abuse Advisory Commission and the advertising agency acting on its behalf,
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`Outlaw, were obtained from the photographer, Leo Lubow. and the talent (i.e.
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`the athletes,
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`celebrities and City personnel).
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`ll.
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`The City is without knowledge or information sufficient to admit or deny the‘-
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`allegations in Paragraph l
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`l of the Complaint.
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`l2.
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`The City is without knowledge or information sufficient to admit or deny the
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`allegations in Paragraph 12 of the Complaint. The City avers that it authorized the use of its seal
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`for the Campaign, that its seal appeared on all publications of the Campaign up until recently
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`when Plaintiff removed it without authorization and that the Commission was provided the
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`opportunity to approve of or object to the materials used for the Campaign.
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`l3. The City is without knowledge or information sufficient
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`to admit or deny the
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`allegations in Paragraph I3 of the Complaint.
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`I4. The City is without knowledge or information sufficient to fonn a belief as to
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`Plaintiff's intent as alleged in the first clause of the first sentence of Paragraph 14. The City
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`

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`Case 1:13-cv-01860—GLR Document 23 Filed 10/16/13 Page 4 of 14
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`denies that Plaintiff ever owned the Marks referred to in this first sentence of Paragraph I4, or
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`expressed her belief that she owned the Marks prior to her filing applications to register
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`the
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`Marks with the United States Patent and Trademark Office. The City avers that Plaintiff granted
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`the City a perpetual
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`license to use the copyright to the Campaign, 50 in this respect the City
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`denies that Plaintiff “has never relinquished ownership of the Campaign” as alleged in this first
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`sentence. As to the first two clauses of the second sentence of Paragraph I4 of the Complaint,_
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`the City admits that Plaintiff did not convey ownership ofthe Marks lo the City because she did
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`not possess any ownership to convey. Concerning these same first two clauses of Paragraph I4.
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`the City denies that Plaintiff did not convey any rights of ownership of the copyrights to the
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`Campaign, because she granted the City a perpetual
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`license to use the copyrights. The City
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`denies the remaining allegations in Paragraph I4 of the Complaint. As to the last clause of
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`Paragraph I4, the City avers that the City had no evidence of transfer because from the inception
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`of the Campaign, the Marks were owned by the City because they were developed by the City's
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`advertising agent.
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`15. Upon infonnation and belief, the City admits that there are no written agreements’:
`between the City and Plaintiff or between the Commission and Plaintiff. The City denies the‘.
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`allegations in the second sentence of Paragraph 15 of the Complaint.
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`I6. The City is without knowledge or information sufficient
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`to admit or deny the
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`allegations in Paragraph I6 of the Complaint.
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`17. The City denies the allegations in Paragraph l7, except to admit that the City owns
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`and asserts its ownership of the Marks to the Campaign and it owns and asserts its ownership of
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`a perpetual license to the copyrights in the Campaign.
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`Case 1:13—cv—O1860—C—I-LR Document 23 Filed 10/16113 Page 5 of 14
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`I8. The City admits the allegations in Paragraph [8 of the Complaint and avers that
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`Plaintiff consented through her attorneys to the City’s request for an extension of time to oppose
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`her application to register the mark SHOW YOUR SOFT SIDE.
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`E9. Paragraph I9 contains allegations of what was communicated during settlement
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`negotiations and the City objects to their inclusion in the Complaint. Without waiving its
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`objection, the City admits the allegation in Paragraph l9 of the Complaint that there was an in-
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`person meeting. The City also denies that Plaintiffs description of her settlement offer is
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`accurate. The City denies that it in any way threatened to sue Plaintiff, though it admits that it-
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`informed her that
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`it planned to oppose her trademark application. The City admits that
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`it
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`continues to assert ownership as delineated in Paragraph 17 above.
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`20. The City admits the allegations in Paragraph 20 ofthe Complaint but avers that it has
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`the right and/or license to do what is alleged.
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`COUNT I
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`DECLARATORY RELIEF
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`2 1. The City incorporates by reference Paragraphs l-20 of this Answer as if fully set forth
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`herein, in response to Paragraph 21 ofthe Complaint.
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`22. The City is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in the first and second sentence of Paragraph 22 of the Complaint, except
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`to admit that the City will oppose Plaintiffs trademark applications which conflict with the
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`City’s rights. The allegation in the third sentence of Paragraph 22 of the Complaint is vague and
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`subject
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`to multiple interpretations and,
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`therefore,
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`the City is unable to admit or deny the
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`allegation, “As asserted by the City of Baltimore, such claims exist." The City denies the
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`allegations contained in the fourth and last sentence of Paragraph 22 of the Complaint.
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`Case 1:13—cv~O1860-GLR Document 23 Filed 10/16113 Page 6 of 14
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`PLAINTlFF’S PRAYER FOR RELIEF
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`23. The City denies that the Plaintiff is entitled to any ofthe relief requested in
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`Paragraphs (a)—(e} ofthe Plaintiffs Prayer for Reliefor to any other relief.
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`DEFENSES
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`First Defense
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`24. The City has not infringed, contributorily infringed, or induced the infringement of
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`the Marks or any works subject to copyright protection which may be at issue in the Complaint.
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`Second Defense
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`25. Plaintiff has no trademark rights in the Marks.
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`Third Defense
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`26. Plaintiffs copyrights in the Campaign have not been infringed because the City.
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`possesses a perpetual license to use the Campaign.
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`Fourth Defense
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`27. Plaintiff has not been damaged and will not be damaged as alleged in the Complaint.
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`AFFIRMATIVE DEFENSES
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`First Affinnative Defense
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`28. The Complaint fails to state a claim upon which reliefcan be granted.
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`Second Affirmative Defense
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`29. Upon information and belief, Plaintiffs damages claims may be barred, in whole or
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`in part, under the doctrines of waiver, estoppel, acquiescence, and laches.
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`RESERVATION OF ADDITIONAL DEFENSES
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`30. The City’s investigations into the allegations set forth in Plaintiffs Complaint are
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`ongoing and discovery has not yet commenced. The City expressly reserves the right to
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`6
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`Case 1:13—cv-01860-GLR Document 23 Filed 10/16/13 Page 7 of 14
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`assert and pursue additional defenses and affirmative defenses.
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`COUNTERCLAIM
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`Statement of Facts
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`3 I. The City incorporates by reference its responses and defenses contained in paragraphs
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`I-30 above.
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`32. On October 8, 2010, the City enacted Ordinance i0—369 to create the Commission
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`after a young pit bull terrier
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`subsequently named Phoenix was doused with gasoline and set
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`on fire in West Baltimore.' The purpose ofthe Commission is to provide the services of
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`promoting best practices for eradicating animal abuse in the City of Baltimore, raising awareness
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`ofanimal cruelty laws, improving training for law enforcement officials on how to handle animal
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`cruelty cases, and fostering improved responses to animal cruelty.
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`33. On February 7, 20] I, the second criminal trial against the teenagers charged with
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`setting Phoenix on fire ended in a hungjury. Shortly thereafter, Plaintiff, the president and sole
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`owner of Outlaw, approached Caroline Griffin. then Chair ofthe Commission, to express outrage
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`at the results ofthe criminal trial and to ask if she and her company Outlaw could do anything to
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`help the Commission with its work. At that time, neither Plaintiff nor Outlaw had created or
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`even considered any materials or taglines that might have been used in the Commissiorfs efforts.
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`34. A small meeting was held soon thereafter attended by Ms. Griffin, and several
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`members of the Commission with Plaintiff.
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`in this meeting, Plaintiff professed to know very
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`little about animal abuse and asked the Commission members to educate her about the incidence
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`of animal abuse and the demographics of its perpetrators in the City of Baitimore. which the
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`Commission members proceeded to do.
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`1 A copy of Ordinance 10-369 is attached hereto as Exhibit I.
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`7
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`Case 1:13-cv-01860-GLR Document 23 Filed 10/16/13 Page 8 of 14
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`35. Plaintiff next attended the March 9, 20! l, meeting ofthe Commission. Plaintiff
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`presented her experience and credentials and offered her services and the services of Outlaw, to
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`act as the Commission’s/City’s advertising agency and help the Commission with outreach and
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`public relations. The agenda and minutes of that meeting record that Riesett was representing
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`Outlaw. She sought the Commission members’ direction as to what type of public education
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`campaign they might wish to pursue. She asked the Commission members various questions
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`concerning the goals for a Commission campaign, including whether the campaign should focus
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`on educating the public about animal abuse, discouraging people from engaging in animal
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`abuse, or informing the public about how to report animal abuse. She asked the Commission
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`members whether the campaign should feature local celebrities. The Commission agreed to
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`consider these options.
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`36. At the March 9 meeting, Commission members told Plaintiff that any campaign
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`should target juveniles since they were the principal perpetrators of the worst incidents of abuse.
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`Commission members also agreed that any campaign should not focus on the atrocities but
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`should promote some sort of “happy ending.” This part of the meeting was a brainstorming
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`session for Plaintiffto obtain more specific guidance from the Commission. At the March 9
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`meeting, the campaign was still considered a “potential campaign.” Plaintiff was gathering input
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`from the Commission members as she asked them what they wanted as the goals of that potential
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`campaign.
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`37. After a few months of work, Outlaw, as the Commission’s/City’s advertising agency,
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`developed the Campaign on behalf of the City as Outlaw had promised. The Campaign included .
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`the Marks. developed while Outlaw, and Riesett on behalf of Outlaw, was serving as the
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`Commission’s advertising agency. The nature and quality ofthe Campaign —— being the services
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`

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`Case 1:13-cv—O1860-GLR Document 23 Filed 10/16/13 Page 9 of 14
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`ollered by the Commission was subject to the ultimate control ofthe Commission. Outlaw.
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`and Plaintillas Oullaw’s agent, knowing that the Commission had such rights of control,
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`provided the Campaign to the Commission for its approval.
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`In the summer of 20] 1, Ms. Grifiin
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`distributed to the members of the Commission the proposed anti-animal abuse advertisements
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`prepar