Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA823529
`
`Filing date:
`
`05/26/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91222005
`
`Party
`
`Correspondence
`Address
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`Submission
`
`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
`
`Defendant
`Theodorou Steve, Theodorou Phillip
`
`STEVEN THEODOROU
`446 EWINGVILLE RD
`EWING, NJ 08638-1539
`UNITED STATES
`Weprinttheworld@gmail.com
`
`Motion to Dismiss - Rule 12(b)
`
`steve Theodorou
`
`weprinttheworld@gmail.com
`
`/Steve Theodorou/
`
`05/26/2017
`
`Responses.compressed.pdf(742977 bytes )
`1exhibit114.pdf(2016322 bytes )
`2exhibit114.pdf(3781906 bytes )
`3exhibit114.pdf(1842847 bytes )
`4exhibits114.pdf(1180657 bytes )
`1Exhibits15.pdf(2517516 bytes )
`2Exhibits15.pdf(4064185 bytes )
`3Exhibits15.pdf(1850732 bytes )
`exhibit 16-19.compressed.pdf(5188111 bytes )
`
`

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`ROBERT KIRKMAN, LLC,
`
`Opposer,
`
`-against—
`
`Consolidated Proceeding:
`
`PHILLIP THEODOROU and
`ANNA THEODOROU,
`
`Applicants.
`
`ROBERT KIRKMAN, LLC,
`
`Opposer,
`
`-against—
`
`Consolidated Proceeding:
`
`Opposition N0. 91222005 (parent)
`Opposition No. 91222719
`
`Opposition No. 91217941 (parent)
`Opposition No. 91217992
`Opposition No. 91218267
`
`Opposition No. 91227277
`
`STEVEN THEODOROU and
`
`PHILLIP THEODOROU,
`
`Appliconts.
`
`ROBERT KIRKMAN, LLC, _
`
`Opposer,
`
`-against-
`
`STEVEN TI-IEODOROU and
`PHILLIP THEODOROU,
`
`Applicants.
`
`
`
`

`

`ROBERT KIRIQIAN, LLC,
`
`Opposer,
`
`-against—
`
`Opposition No. 91233571
`
`PHILLIP THEODOROU and
`
`STEVEN THEODOROU,‘
`
`Applicants.
`
`
`
`“—I
`
`ROBERT KIRKMAN, LLC,
`
`OPPUS‘":
`'-against—
`
`_ Opposition No. 91233806
`
`
`
`
`
`PHILLIP THEODOROU and
`
`STEVEN THEODOROU,
`
`Applicants.
`
`ANSWER
`
`OPPOSITION TO MOTION
`
`NOTICE OF MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM
`
`UNLAWFUL USE OF THE ROCOL MARK E)
`
`AND FOR FRAUD AND MISREPRESENTATION
`
`PURSUANT TO THE LANHAM ACT, Sect. 1125, 12(b)(6)
`and Fed. R. Civ. P. 9(1))
`
`Applicants, PHILLIP THEODOROU, STEVE THEODOROU, and
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`ANNA THEODOROU (collectively —Defendants”) respectfully moves this court
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`to grant an order cancelling Opposers‘ applications for trademarks THE
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`' WALKING DEAD and TWD, and awarding an issuance of the mark to
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`

`

`Defendants, PHILLIP THEODOROU, STEVE THEOROU, AND ANNA
`
`THEODOROU, in International Classes: 3, 4, 18, 21, 25, 27, 30, 32, 43.
`
`and in support thereof says the following:
`
`On April 21, 2017, by Stipulation, the following Oppositions were
`
`consolidated with the USPTO. The parties named in the above proceedings have
`
`agreed that it would be more efficient to have all of these proceedings
`
`consolidated herein, and made a part of the instant motion, together with all
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`pertinent trademark applications, inclusive of TWD.
`
`Consolidated Opposition Proceeding No. 91217941 (parent);
`
`- Consolidated Opposition Proceeding No. 91222005 (parent);
`0 Opposition Proceeding No. 91227277;
`0 Opposition Proceeding No. 91233 571; and
`0 Opposition Proceeding No. 91233 806
`
`I namewarden.com
`
`
`1. THE WALKING DEAD or its equivalent TWD terms, at issue in all of
`
`these proceedings, are the same (hereinafter —Terms”).
`
`2. A trademark is a trademark because it is indicative of the origin of the
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`goods. Trademarks have been used for hundreds of years. They were developed
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`to trace responsibility for shoddy workmanship, which developed into myriads
`
`of rules and regulations and laws to prevent the practice of trademark fraud and
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`other violations.
`
`3..
`
`One of the predominant trademark law treatises defines trademarks
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`in a crowded fieid issue in this way: --—E]n a wcmwded‘ field of similar marks,
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`each member of the crowd, is relatively =weak‘ in its ability to prevent use by
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`others in the crowd.“ However, the law does not permit common generic terms
`
`to be removed from common and pervasive use so that a single company may
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`profit.
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`

`

`protection might unfairly monopolize common speech or set up a barrier to
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`communication. However, the law does not permit common ugeneric” terms,
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`such as THE WALKING DEAD-and/or TWD to be removed from common and
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`pervasive use so that a single company may profit.
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`5. All of the oppositions listed above are Opposers, their agents, servants,
`
`directors, shareholders, principals, licensees, distributors, attorneys, assignees,
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`licensees, affiliates, subsidiaries and assigns, and all those persons in concert or
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`participation with any of them, including Opposers‘ licensee AMC Network
`
`Entertainment, LLC (#iMC”) (hereinafter collectively —one or more of the
`
`Plaintiffs?)
`
`
`
`
`
`4. Thus generic terms, or common descriptions, receive no trademark-
`protection and may be used with impunity. Giving generic terms trademark
`
`'4
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`6.
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`One or more of the Plaintiffs have made attempts to extend its
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`I market power to control the use of common generic terms, THE WALKING
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`DEAD and TWD, by asking this Court to issue an order which will effectively
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`appropriate to Plaintiffs‘ exclusive use of a common, functional term frequently
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`used by the general public in all walks of life as far back as the 1800s, if not
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`earlier. viz: authors, movie makers, comic book authors, commentators alike to
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`describe a medley of emotions which feeds a portion of the general publics‘
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`frenzy for all things —gory” and —Zombie.”
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`7. Plaintiffs have no rights entitling it to such relief. The Court should
`
`stop this lawsuit and prevent trademark bullies like the Plaintiffs from
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`

`

`proceeding any further.
`
`8.
`
`To that end, Defendants, pro se, submit the Statement of Facts in
`
`support of its motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of
`
`Civil Procedure and common laws. Defendants move to dismiss on the grounds
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`that the generic terms —'I‘HE WALKING DEAD” and —TWD” are not
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`protectable, nor does any one of the Plaintiffs own it.
`
`9. In order to further attempt to intimidate Defendants into abandoning
`
`their applications for trademarks, Plaintiffs filed suit against Defendants in the
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`United States District Court for the District of New Jersey, on December 3, 2015,
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`Case 3:15~CV-08474—M AS-DEA, citing violations of the Lanham Act, and other
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`laws, citing trademark infringement, false designation of origin, unfair
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`competition, or trademark dilution based on'Defendants use of these generic
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`terms.
`
`5
`
`
`—Plaintiffs failed to establish that Defendants —used the mark,” in
`commerce, denying without prejudice Plaintiff‘s Motion for Summary
`Judgment as to liability; denying without prejudice Plaintiff's Motion for
`Declaratory Judgment; denying without prejudice Defendant's Cross-
`
`10.
`
`Based on the outcome of the civil action in (which case has now been
`
`voluntarily dismissed without prejudice) and remanded back to the USPTO,
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`Plaintiffs have failed to convey the Courts‘ memorandum decision on this matter
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`which is attached herewith as Exhibit 1. Plaintiffs were defeated in their
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`summary judgment motion in Supreme Court, by memorandum of Hon.
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`Michael Shipp on November 30, 2016, stating, in pertinent part:
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`

`

`Motion for Summary Judgment, without prejudice. A subsequent hearing
`stated that Defendants‘ claims for fraud or ~unclean hands” were a
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`11. Hence, Defendants‘ instant claim in the USPTO against one or more
`
`of the Plaintiffs for fraud, misrepresentation, and deceptive practices, unclean
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`hands, unlawful use of the Rocol Mark (E, pursuant to the Lanham Act, Sect.
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`1125, and Fed. R. Civ. P. 9(b)
`
`12. Consequently, Plaintiffs cannot state a claim for trademark
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`infringement, false designation of origin, unfair competition, or trademark
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`dilution based on Defendants use of these generic terms. Plaintiffs‘ do not have a
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`registered trademark for both terms, for goods other than in the entertainment
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`field. The Terms are not protectable because the terms are generic, commonly
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`used term for virtually all things —Zombie.” Plaintiffs cannot have exclusive
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`rights to the terms, as outlined herein and in the Statement of Facts herein.
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`separate claim. Plaintiffs subsequently asked the court for dismissal of the
`action and to be returned to the USPTO for further action, which was
`granted.
`
`produced and marketed not in the entertainment field, as portrayed in their
`
`
`
`MISUSE AND FRAUD OF THE ROCOL MARK 02) ON GOODS
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`OTHER THAN THE ENTERTAINMENT FIELD
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`13. Upon knowledge, information and belief, Defendants state that
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`Plaintiffs intentionally and negligently used the Rocol mark (E on goods
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`

`

`applications, and made misrepresentations of material facts that they had rights
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`to all goods in their individual fields and others.
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`14. This action arises, upon knowledge, information and belief that one
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`or more of the Plaintiffs, manufactured, compounded, packaged, designed,
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`distributed, fabricated, merchandised, advertised, promoted and sold goods with
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`the Rocol Mark ® on T—Shirts, clothes, beverage ware, cups, Toys, Lottery
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`Tickets, lighters, Casino Slot Machines, and the Walking Dead restaurant, and
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`Waking Dead Restaurant (hereinafter —-The Unauthorized Merchandise,”) all in
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`Defendant‘s applications for goods in different classes to Plaintiffs.
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`15. Upon information and belief the Term, Title, Tradename andlor
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`Trademarks and/or likenesses on all the Unauthorized Merchandise, are
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`dependant on the trademarks applications that are suspended and/or refused, or
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`have preceding applications pending in the United States Patent & Trademark
`
`Office (hereinafter —I—JSPT0.”)
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`16. Upon information and belief, one or more of the Plaintiffs , in excess of'8
`
`occasions, fraudulently applied the Rocol marks ®, on goods, other than the
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`Jcrzees, receipt included. See Exhibit 2.
`
`
`March 3, 2015, an official licensed product-T-Shirt with Tags having the name
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`entertainment field.
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`Defendants Applications: Viz:
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`(1) T-Shirts” in International Class 25 with ® mark was Purchased on
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`

`

`A second T-shirt purchased on or about 2015 with Tags showing Glidden
`as a Source. See Exhibit 3.
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`intentionally opened a Restaurant known as the —-WAKING DEAD, which
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`(3) —Beverage,I glassware, cups, mugs, drinking glasses” in International
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`Class 21; Viz Cups, purchased on May 2017. See Exhibit 6.
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`(4) —Lighters, ashtrays, matchboxes, cigars and cigarillos.” International
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`Class 28. Plaintiffs never applied for a trademark for lighters, however it did not
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`deter one or more of the Plaintiffs from displaying the Rocol Mark ® on the
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`lighters. See Exhibit 7.
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`(5) —I-.ottery Ticke ” in International Class 28. Class 28 encompasses
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`games, and toys, slot machines etc. (suspended by office action), did not deter
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`one or more of the Plaintiffs from stamping the Rocol Mark ® on the Lottery
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`Tickets, Toys (Action Man), and Slot Machines in Atlantic City Casinos, See
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`Exhibit 8.
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`(6) Toys — Action Man, See Exhibit 9.
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`It has been shown that the ® mark on the front of several T-shirts,
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`purchased from Haines, Fruit of the Loom, Gilden, Jersees, and a few other
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`names have —nked trademarks,” that is no source identifier. See Exhibit 4
`
`(2)
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`Subsequently, a T—Shirt was purchased in May 2017 (receipts
`
`attached) with the ® on the front of it, with a tag identifying The Walking Dead
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`as a source identifier. Exhibit 5.
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`(7) Casino One-arm-bandit Machines, See Exhibit 10.
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`(3) Restaurant Services in Class 43; Plaintiffs knowingly, deliberately, and
`
`
`
`

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`depicted images of cups, and THE WALKING DEAD term., contrary to
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`Defendants application. See Exhibit 11.
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`17. Upon information and belief, Plaintiffs have and will continue to
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`engage in such unauthorized activities in this state and elsewhere in interstate
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`functionality of the generic and descriptive Terms, THE WALKING
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`DEADITWD, all to the great injury to Defendants.
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`commerce and are likely to continue until such time a determination is made as
`to (a) the unlawful conduct of the Plaintiff; (b) the generic quality or
`
`9
`
`18.
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`Plaintiffs‘ oppositions in the USPTO has blocked Defendants from
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`proceeding, therefore , interfering With Defendants‘ ability to secure the full
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`protection afforded by registration of the mark for all the goods set forth in
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`Defendants‘ applications, and Defendants were damaged as a result of the
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`aforesaid acts, in an amount presently incalculable.
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`19. As a result of Plaintiffs‘ misrepresentations, reckless disregard
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`of the truth, bullying, intimidation with respect to use of a trademark
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`Title, in a crowded field of marks, caused Defendants intentional emotional
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`distress, monetary damages due to the instant action and other out-of—
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`pocket expenses and failure to promote their goods or start up procedures,
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`caused loss of potential revenue from the intended sale of these goods,
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`thereby enhancing Plaintiffs‘ profits based on the falsity of their claims.
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`20. These representations were made by Plaintiffs, knowingly,
`
`willfully, and recklessly wit
`copyright oflicerSPTO,
`
`n1
`
`Defendants and targets to withdraw their applications for trademarks.
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`Upon information and belief, several other applicants for the Walking
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`

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`FALSE REPRESENTATIONS
`
`21.
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`Plaintiffs claims of —exclusivity” representing goods and services in
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`the entertainment field, is totally distinguishable from the Defendants whose
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`goods pertain to T-Shirts, clothes, beverage ware, coffee, cups, a restaurant, etc.,
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`obviously in different classes, and the channels of trade also differ.
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`22.
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`This action also arises out of the false and fraudulent
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`representations made to Defendants and members of the media and the general
`
`public, that one or more of the Plaintiffs were the —sole owners” of the
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`trademark THE WALKING DEAD, that they had —exclusive” rights” to The
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`Walking DeadfTWD generic terms and the series of goods related to it.
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`Dead mark abandoned their claims after being intimidated by Plaintiffs, in
`one, form or another. See Exhibit 12.
`
`_10
`
`
`23. Upon knowledge, information and belief, one or more of the
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`Plaintiffs copyrighted them -—The Walking Dead,” and described it as such in
`
`their application with the Copyright office. Copyright protection, does not
`
`extend to titles, names, slogans, or short phrases, so The Walking Dead title is
`
`open to interpretation and use, by any one,'portrayed by the Plaintiffs.
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`24. Upon knowledge, information and belief, a_11 or one or more of
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`Plaintiffs‘ registrations in the copyright office were for ~print” and —mterial”
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`with no reference to -—omic books”, not long after a co-author, Tony Moore,
`
`brought suit against Plaintiff, and wherein dates of use were backdated. See
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`Exhibit 13. Copyright 2009.
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`25. Upon knowledge, information and belief, the alleged "comic books”
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`were never registered in the copyright office or in the trademark office until
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`

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`April 28, 2012 and April 22, 2013, respectively, and were for goods exclusively in
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`the entertainment field. See Exhibit 14.
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`26. Upon knowledge, information and belief, one or more Plaintiffs have
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`misrepresented the scope of their —authorship,” failed to inform the Copyright
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`Office of the co~authors responsible in the creation of the alleged +omic books,”
`
`] 1
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`and used these potentially invalid copyrights to gain control over components
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`for Which they have no rights.
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`27. Upon information and belief one or more of the Plaintiffs‘ claimed
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`—exclusive use” of the Walking Dead trademark, when no trademark for The
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`Walking Dead term was ever applied for or registered with the Trademark
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`office from 2003 through April 21, 2013 (almost 10 years) for goods and services
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`other than in the entertainment industry.
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`28.
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`The aforesaid Terms The Walking DealeWD is used by Plaintiffs
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`in the entertainment field from on or about 2003 through the present for goods
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`and merchandise catering to performing, recording, merchandising, and other
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`related goods in all aspects of the entertainment industry, viz: global internet
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`sales, computer generated merchandise, etc. which embody the names, likenesses
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`and trademarks of various actors andfor performers.
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`29. Upon information and belief, one or more of the Plaintiffs‘ dates of
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`fl the trademarks for their goods and services, other than the entertainment
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`field, has yet to be determined as all Plaintiffs‘ and Defendants‘ trademark-
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`applications have been suspended, pending the resolution of the instant action.
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`30. Upon information and belief, one or more of the Plaintiffs possessed
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`superior knowledge of and awareness of and intentionally failed to disclose
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`material facts to the Copyright Office concerning the authorship of the comic
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`

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`books and tv series and the related goods and services; they madeandfor
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`concealed the aforementioned representations to the Trademark OffiCe,
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`regarding the true origin of the goods and the generic terms. Their intent was to
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`defraud and/or induce Defendants to abandon their rights to trademarks.
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`31.
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`Therefore, there is accordingly nothing unlawful about Defendants‘.
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`the function of promoting their goals.
`
`ARGUMENT
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`use of the generic noun for the Term/Title of THE WALKING DEAD/TWD for
`
`12
`
`32. ‘When a plaintiff cannot prove any set of facts to state a claim which
`
`would entitle it to relief, the applications/oppositions should be dismissed with
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`prejudice. Fed. R. Civ. P. 12(b)(6). A Rule12(b)(6) motion tests the legal
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`sufficiency of the Plaintiffs‘ claims.
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`33.
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`Plaintiffs Trademark infringement, unfair competition, and
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`trademark dilution claims under the Lanham Act should be dismissed because
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`Plaintiffs do not own the Walking Dead/TWD term.
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`34. As a matter of Law, it is irrelevant how much money Plaintiff
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`allegedly has spent on promotions, because no amount of advertising, even
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`advertising directed at a specific term, can convert the generic term, The
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`Walking DeatUTWD, into a trademark.
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`35. No matter how much money and effort the user of a generic term
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`has poured into promoting the sale of its merchandise, it cannot deprive
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`competing manufacturers of the product of the right to call an article by its
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`name.” Even if some consumers may happen to associate a generic term with a
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`specific company - a situation that usually arises when that company is the
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`largest user of the generic term in question, and Plaintiffs are not the largest
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`user as aforementioned , - this merely establishes —de facto secondagy
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`meaning,” which is irrelevant to a trademark analysis. A showing of —secondary
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`
`
`

`

`meaning,” no matter how strong, can never earn trademark status for a generic
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`word or phrase. It is this fact that has led to the coining of the phrase —de facto
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`secondary meaning.” For example, while some people may identify only IBM
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`McCarthy , McCarthy on Trademarks.
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`36. To the extent that Plaintiffs are attempting to claim acquired
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`Distinctiveness or secondary meaning by providing promotional and advertising
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`information, the TTAB notes that such evidence of acquired distinctiveness
`
`cannot suffice to convert the generic term :The Walking DeadITWD‘ into a
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`registerable service mark.” Under the 9th Circuit standard a term may be
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`generic even though the public recognizes the contested term as a brand name,
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`which is source indicative, if the court finds that the trademarked goods
`
`constitute their own genus.
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`computers with the generic name —personal computer” or —PC,” that does not
`mean that those terms are trademarks of products made by IBM.2, J. Thomas
`
`13
`
`37.
`
`To the extent that Plaintiffs are attempting to claim fafl based on
`
`the ratings, publicity, and —most watched show,” the show itself is not a
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`household name as it is deemed suitable for people 13 years and over only, which
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`leaves out a considerable amount of households with under 18 year olds. In
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`addition, ratings are governed by AMC, Plaintiffs own licensee. AMC, whose
`networks monopolize, regulate and renew TV screen dramas, could make or
`
`break a show. Further AMC could prolong andIor renew The Walking Dead
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`series ad naseum or intentionally, as The Walking Dead series may have a
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`considerable impact on the outcome of the instant suit.
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`38. However, the Walking Dead ratings have been decreasing and
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`Forbes contributors for one, state —here was a brewing meta-narrative as well,
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`that the show was losing steam.” Further, Wall Street analysts have concerns
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`

`

`about the —ratings erosions.” Others have commented on the dramatic recent
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`erosion in pay TV subscriber numbers. Therefore the —erosion” does not
`
`contribute to the —famous” syndrome that Plaintiffs are touting. And as stated
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`before, the TV series is ephemerical _here to day, gone to tomorrow‘ as other
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`famous Walking Dead names. Josh Sapan of the AMC Networks, has held that
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`—we have a great bias to own our own content. If we don‘t own it, we lease and
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`rent from Sony.”
`
`39.
`
`In addition, the plethora of applications and registrations for THE
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`WALKING DEAD/TWD terms, in all walks of life, in a crowded field of marks,
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`and related goods and services, many of which predate Plaintiffs" inception, is
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`further evidence that Plaintiff cannot own the words THE WALKING
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`DEAD/TWD terms as aforesaid. See Exhibit 15.
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`following:
`
`Therefore, Plaintiffs cannot own the generic noun. Moreover a cursory search in
`
`40.
`
`The terms are generic and functional. As aforementioned, it
`
`indicates what users do or say, it does not indicate a source of the product,
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`feature, or service or a category as of —Zombie.” Stulbarg Int‘l Sales Co. v.
`
`Brush & Co., 240 F.3d 832, 840 (9th Cir.2001); or refers to the emotional
`
`question —Who are you” or —What are you” after a traumatic misdeed, andlor
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`generic because it is perceived as a productfname description, not a brand name.
`
`the USPTO and Copyright databases use the noun for the term, whereas the
`
`word —Light” is an adjective.
`
`4]. Numerous other entities use the directive terms THE WALKING
`
`DEAD/TWD, solely for the functions outlined below, to name a few including the
`
`

`

`There are fourteen Federal Court opinions that use the phrase ~walking
`
`dead, See Exhibit 16. :”.
`
`The first is the 1962 Supreme Court case of Robinson v. California, 370
`
`US. 660, in which Justice Douglas quotes the New York Law Journal in
`
`his concurring opinion to describe drug addicts as walking dead:
`
`An analogy to the WALKING DEAD is excerpted below:
`
`42. The similarities to the TV Series The Walking Dead is close enough
`
`and the exact or similar wording is enacted out by one or more of the characters.
`
`The extreme symptoms of addiction have been described as follows:
`The teeth have rotted out; the appetite is lost and the stomach and
`intestines don‘t function properly. The gall bladder becomes inflamed;
`eyes and skin turn a billions yellow. In some cases membranes of the nose
`turn a flaming red; the partition separating the nostrils is eaten away —-
`breathing is difficult. Oxygen in the blood decreases; bronchitis and
`tuberculosis develop. Good traits of character disappear and bad ones
`emerge. Sex organs become affected. Veins collapse and livid purplish
`scars remain. Boils and abscesses plague the skin; gnawing pain racks the
`body. Nerves snap; vicious twitching develops. Imaginary and fantastic
`fears blight the mind and sometimes complete insanity results. Often
`times, too, death comes —— much too early in life . . . . Such is the torment
`of being a drug addict; such is the plague of being one of the walking
`dead.” N. Y. L. J., June 8, 1960, 2. 4, col. 2.
`
`15
`
`Three of the cases are threats made to someone‘s life.
`
`—¥ou‘re a walking dead man.” Montgomery v. Herring, 193 BR. 344
`(1995);
`
`—You‘re a walking dead man, I promise you that.” Wilson v.
`Washington, 138 F.3d 647 (1998); —uidentified persons told him ——Thal
`was a walking dead man and that I wouldn‘t be able to live“, United
`States v. Smith, 139 Fed. Apgx. 681 (2005!.
`
`Another is harassment, —eommented that an extremely pale female student
`dressed in black clothing looked like the —walking dead””, Roman v.
`Cornell Univ., 53 F. Sugp. 2d 223 11999).
`
`

`

`48. Because Plaintiffs cannot own the generic term THE WALKING
`
`DEAD/TWD, state law claims fail for the same reasons as do its federal claims.
`
`First, based on the aforesaid, Plaintiffs failure to state a claim for all Applicants-
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`alleged violations of the Lanham Act.
`
`49. At the time these misrepresentations were made by one or more of
`
`the Plaintiffs, Applicants were ignorant of the falsity of Plaintiffs representations
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`fraudulent behavior, and believed them to be true, causing intentional emotional
`
`distress, emotional distress, undue stress, fear of impending suit, fear of loss of
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`property, and general disquiet, and Applicants, could not, in the exercise of
`
`reasonable diligence, have discovered Plaintiffs‘ intentions, false representations
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`of —eopyright” and/or —trademark” misuse, as they based the numerous marks
`
`on their belief it was an open field, and to file their trademarks based on a
`
`crowded field of third-party marks for the Title —The Walking Dead.”
`
`unauthorized, fraudulent and unlawful use of the Rocol mark ®.
`
`Dismiss all Plaintiffs‘ claims, with prejudice, for fraud, misuse of the
`(1)
`Rocol mark ®; false designation of origin, and unfair competition.
`'
`
`50. As a result of Plaintiffs‘ misrepresentations, reckless disregard of
`
`the truth, bullying, intimidation with respect to use of a trademark Title,
`
`in a crowded field of marks, caused Applicants intentional emotional
`
`distress, monetary damages due to the instant action and other out-of—
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`pocket expenses and failure to promote their goods or start up procedures,
`
`caused loss of potential revenue from the intended sale of these goods,
`
`thereby enhancing Plaintiffs‘ profits based on the falsity of their claims.
`
`WHEREFORE, Applicants pray that this Court enter judgment against
`
`Plaintiffs as follows
`
`(2)
`
`Cancel Plaintiffs‘ trademark applications, as a result of Plaintiffs‘
`
`
`
`

`

`That a preliminary and permanent injunction be issued enjoining
`(3)
`Plaintiffs, their agents, directors, shareholders, principals, licensees,
`distributors, attorneys, servants, employees, affiliates, subsidiaries and assigns,
`and all those persons in concert or participation with any of them, inclusive of
`Plaintiffs‘ licensee AMC Network Entertainment, LLC (—AMC”), from:
`
`i.
`
`(4)
`
`Plaintiffs allegations of Trademark violations under the Lanham
`
`Act should be dismissed, with prejudice, because it does not own the Walking
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`Dead/TWD term.
`
`(5) Dismiss, with prejudice, the claim as Plaintiffs failed to state a claim
`under Fed. R. Civ. P. 12(b)(6). A Rule12(b)(6).
`
`manufacturing, producing, distributing, circulating,_selling ,
`offering .for sale, advertising, promoting or displaying any product '
`or service bearing any simulation, reproduction, counterfeit, copy,
`or colorable imitation of THE WALKING DEAD mark, any
`formatives thereof (including misspellings) or any other indicia
`associated with Applicants use of goods in Classes 3, 4, 18, 21, 25,
`27, 30, 32, 43.
`
`trademarks for goods and services as applied for.
`
`(6) Defendants desire a judicial determination of the rights of the
`
`parties and a judicial determination is necessary and appropriate at this time in
`
`order to ascertain the parties‘ rights in the Walking Dead Mark/TWD, being
`
`generic and therefore unprotected.
`
`(7) Cancelling Plaintiffs applications for trademarks with respect to the
`
`instant action, and transferring The Walking Dead generic term to Applicants in
`
`its entirety, with prejudice, as Applicants ability to proceed with their goals has
`been hindered by the Plaintiffs.
`
`(8) Declaring Defendants have priority in their applications for all
`
`

`

`V N THEODOROU
`
`..
`
`_
`
`{SE54 1
`3
`
`Tel: (212) 813-5900
`Fax: (212) 813—5901
`
`(9) Awarding such other and further relief as to the Court deems just,
`
`proper and equitable.
`
`Dated:
`
`May 2017
`
`Respectfully yours,
`{-
`
`PHILLIP ,éHEO IOROU
`
`Attorneysfor Opposer/Plaintlfi"
`
`FROSS ZELNICK LEHRMAN & ZISSU, RC.
`4 Times Square, 1'!ttl Floor
`New York, New York 10036
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`STATEMENT OF FACT
`
`THE PARTIES:
`
`OpposerfPlaintiffs:
`
`ROBERT KIRKMAN, LLC.
`
`its agents, servants, directors,
`
`shareholders. principals, licensees, distributors, attorneys, assignees,1ioensees, affiliates, subsidiaries
`and assigns, and all those persons in concert or participation with any of them, including Plaintiffs’
`
`_ licensee AMC Network Entertahnnent, LLC (“AMC”) (hereinafter collectiver “one or more of the
`
`Plaintiffs")
`
`'
`
`Upon information and belief, at all times herein material, Plaintiff was completely
`
`dominated and controlled by each other, and each was the alter ego of the other. Whenever and
`
`wherever reference is made in this Motion to any conduct by one or more Plaintiffs, such allegations
`
`and references shall also be deemed to mean the conduct of each of the Plaintiffs, acting individually,
`
`jointly and severally. Whenever and wherever reference is made to Plaintiffs who are not named as
`Plaintiffs in this Motion, but were employees andlor agents of Plaintiffs, such individuals at all relevant
`
`times acted on behalf of Plaintiff named herein within the scope of their respective employment.
`
`Applicmtleefendants: PHILLIP THEODOROU, STEVE THEODOROU, and ANNA
`
`
`
`television history”
`
`THEODOROU (collectively “ Defendants”) respectfiilly moves that this court grant an order
`cancelling Plaintiffs applications for trademarks THE WALKING DEAD and TWD, and awarding an
`
`issuance of the Trademarks to Defendants, PHILLIP THEODOROU, STEVE THEOROU, AND
`ANNA THEODOROU.
`
`INTRODUCTION
`
`1.
`
`This action arose out of Defendants“ first applications in December 2, 2013, in the
`
`USPTO' to trademark THE WALKING DEADHTWD terms for goods and services in Classes 3, 4, is,
`
`21, 25, 27, 30. 32, 43.
`
`As the Court is aware, Plaintiffs Opposed all applications on the grounds of “
`
`i.
`
`Plaintiff is the owner of all rights in and to THE WALKING DEADITWD
`
`trademarks as used in connection with its series of comic books and graphic novels, and
`
`by Plaintiffs’ licensee AMC Network Entertainment LLC (“AME”) in connection with
`
`The Walking Dead television series (the “Series”) —“the most watched drama in cable
`
`

`

`ii.
`
`Plaintiff, through AMC, its corporate affiliates and sub—licensees, have
`
`marketed an array of Series—related goods and services under Plaintiff’s mark, including,
`
`but not limited toM;
`
`iii.
`
`As a result of Plaintiffs reputation, use, sales success and significant
`
`investment in advertising, Plaintiff’s marks have developed secondary meaning and
`
`significance in the minds of the public and have become strong trademarks identifying
`
`Plaintiffs’ products exclusively.
`
`iv.
`
`Plaintiffs have cited in the Opposition papers and excerpted herein significant
`
`investment in advertising and that Plaintiffs’ mark has become famous prior to any date
`
`upon which Defendants can rely.
`
`v.
`
`Plaintiffs’ first use” and of the Term THE WALKING DEADKTWD and
`
`exclusivity for the goods and services related to its TV series based on comic books,
`
`dating back to 2003, and used continuously.
`
`vi.
`
`Plaintiffs have stated that the goods and services were all for the
`
`entertainment field, as described herein.
`
`vii... Plaintiffs claimed that Defendants have hijacked for themselves a wide range
`
`of merchandising rights of and for the entertainment propertyl
`
`viii.
`
`that Plaintiffs owns numerous U.S. trademark registrations for the Term THE
`
`WALKING DEADJ'I'WD, including those relating to entertainment services and
`
`consumer products.
`
`ix.
`
`Plaintiffs included in their first opposition and subsequent to all Defendants
`
`trademark Applications, for the same goods and services as Defendants, but blurer the
`
`dams and time lines between their applications and Defendants, stating as a whole that
`
`they owned the various trademarks prior to Defendants’ applications.
`
`To that end, Defendants, pm se, submit this Statement of Facts in support of its motion to
`
`dismiss Plaintiffs applications, for failure to state a claim, pursuant to Rule l2(b)(6) of the Federal
`
`Rules of Civil Procedure; misrepresentation, fraud, and unclean hands, pursuant to Sect. 1125, and Fed.
`
`R. Civ. P. 9(b). Further, Defendants move to dismiss on the grounds that the generic terms “TI-1E
`
`WALKING DEAD” and
`
`are not protectable, nor do any one of the Plaintiffs own it.
`
`Defendants will endeavor to clarify all Plaintiffs’ fraudulent, misrepresentation of all the
`
`facts alleged above and identify that Plaintiffs, in fact, failed to disclose that their alleged “trademarks”
`
`of the generic Term The Walking Deadl’l'wD were in fact ‘fopyrighted” as of 2003 to the present,
`
`misrepresenting as a whole that they owned the various trademarks prior to Defendant’s applicatiOns,
`
`December 3, ZDI 5, Case 3: lS—cv—flSdT‘l—MAS-DEA)
`
`in December of 2013, for a different set of goods.
`
`' [Kirkmsn‘s Statement ofFacls. Page 5 of 34, Filed diltlfi 5