Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA756062
`
`Filing date:
`
`07/01/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91227788
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Textron Inc.
`
`JOSEPH M. LAFATA AND ELIZABETH K. BROCK
`Harness Dickey & Pierce P L C
`5445 Corporate Dr Ste 200
`Troy, MI 48098-2683
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`dfuad@orrick.com, kgoss@orrick.com, ipprosecution@orrick.com
`
`Motion to Suspend for Civil Action
`
`David Fuad
`
`dfuad@orrick.com, kgoss@orrick.com, ipprosecution@orrick.com
`
`/David Fuad/
`
`07/01/2016
`
`Motion to Suspend.pdf(15024 bytes )
`Exhibit-A.pdf(2611459 bytes )
`Exhibit-B.pdf(777792 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of application Serial No. 86/634,354
`For the Trademark STAMPEDE filed May 19, 2015
`Published in the Official Gazette on April 5, 2016
`
`TRAXXAS LP,
`
`Opposer,
`
`Opposition No. 91227788
`
`v.
`
`TEXTRON INC.,
`
`Applicant.
`
`APPLICANT’S MOTION TO SUSPEND
`
`Pursuant to 37 C.F.R. § 2.117(a) and section 510.02(a)(2) of the Trademark Trial and
`
`Appeal Board Manual of Procedure (“TBMP”), Applicant TEXTRON INC. (“Applicant”)
`
`hereby moves to suspend this opposition proceeding pending disposition of two civil actions that
`
`concern the same trademarks that are at issue here, namely:
`
`1. Textron Inc. and Textron Specialized Vehicles Inc. v. Traxxas LP, Case No. 1:16-
`
`cv-00081-JRH-BKE, filed by Applicant on June 10, 2016 in the United States
`
`District Court for the Southern District of Georgia, Augusta Division
`
`(“Applicant’s Action”); and
`
`2. Traxxas LP v. Textron Inc. and Textron Specialized Vehicles Inc., Case No. 6:16-
`
`cv-00506, filed by Opposer TRAXXAS LP (“Opposer”) on June 15, 2016, in the
`
`Eastern District of Texas, Tyler Division (“Opposer’s Action,” and together, the
`
`“Civil Actions”).
`
`The issues presented in both Applicant’s Action and Opposer’s later-filed Action overlap with
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`

`
`this proceeding, including whether Applicant’s STAMPEDE mark for off-road vehicles is likely
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`to cause confusion with Opposer’s mark for radio-controlled model vehicles, and thus, whether
`
`Opposer may prevent Applicant from obtaining a federal registration for its STAMPEDE mark.
`
`In addition, Opposer’s Action asserts numerous state and federal trademark claims, such as
`
`unfair competition, dilution, and unjust enrichment, and seeks relief not available in this
`
`proceeding, including an injunction and damages. Accordingly, Applicant respectfully requests
`
`that all further proceedings in this opposition proceeding be suspended pending disposition of the
`
`Civil Actions.
`
`I.
`
`FACTUAL BACKGROUND
`
`On or about May 10, 2016, Opposer filed a Notice of Opposition with the Trademark
`
`Trial and Appeal Board (“TTAB”), opposing Applicant’s STAMPEDE mark for use in
`
`connection with “Off road vehicles, namely, all-terrain vehicles and utility terrain vehicles,
`
`excluding tires and wheels.” Opposer claims that Applicant’s mark is confusingly similar to its
`
`STAMPEDE mark for “radio-controlled model vehicles and parts therefor” and that it will be
`
`damaged if Applicant’s mark proceeds to registration.
`
`On or about June 10, 2016, Applicant filed a complaint in United States District Court for
`
`the Southern District of Georgia seeking a declaratory judgment of non-infringement.
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`Two days after being served with Applicant’s complaint, Opposer filed its own civil
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`action on or about June 15, 2016 in United States District Court for the Eastern District of Texas,
`
`alleging state and federal trademark infringement and related claims.
`
`II.
`
`ARGUMENTS & AUTHORITIES
`
`“Whenever it shall come to the attention of the … Board that a party or parties to a
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`pending case are engaged in a civil action … which may have a bearing on the case, proceedings
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`before the Board may be suspended until termination of the civil action or the other Board
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`2
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`

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`proceeding.” Trademark Rule 2.117(a). See TBMP § 510.02(a). “Ordinarily, the Board will
`
`suspend proceedings in the case before it if the final determination of the other proceeding will
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`have a bearing on the issues before the Board.” Id. The civil action need not be dispositive of the
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`Board proceeding to warrant suspension; it need only have a bearing on the issues before the
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`Board. See New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552
`
`(TTAB 2011).
`
`Here, the outcome of either Civil Action will have a direct bearing upon the outcome of
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`this opposition proceeding. Indeed, they will likely be dispositive of the issues in this
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`proceeding. To the extent that a civil action in a federal district court involves issues in common
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`with those in a Board proceeding, the district court decision would be binding on the Board. See
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`Goya Foods, Inc. v. Tropicana Products, Inc., 846 F.2d 848, 853 (2d Cir. 1988). The Civil
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`Actions and this proceeding all involve the same trademarks, the same registration issues, and
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`essentially the same parties. Applicant’s Action seeks a declaratory judgment that its
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`STAMPEDE mark does not infringe Opposer’s trademark. Opposer’s Action alleges federal and
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`state trademark infringement, dilution, and unjust enrichment claims, as well as a claim expressly
`
`seeking the denial of Applicant’s trademark application that is at issue in this proceeding. Copies
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`of Applicant’s Action and Opposer’s Action are attached hereto as Exhibits A and B,
`
`respectively.
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`At issue in all three proceedings is the likelihood of confusion between Applicant and
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`Opposer’s marks and goods. The eventual resolution of the Civil Actions will determine whether
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`Applicant’s use of its STAMPEDE mark in connection with off-road vehicles has a likelihood of
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`confusion with Opposer’s mark for radio-controlled model vehicles. The Civil Actions will also
`
`determine the parties’ respective rights or damages in light of any such likelihood of confusion
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`based upon Applicant’s and Opposer’s trademark infringement claims. Neither party would be
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`3
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`

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`prejudiced by a suspension because this opposition proceeding is the earliest stages; Applicant
`
`has not yet responded to Opposer’s Notice of Opposition.
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`Therefore, in order to facilitate the expedient and economic resolution of these and
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`related issues involving Applicant’s rights in its mark, Applicant respectfully requests that this
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`opposition proceeding be suspended pending the outcome of the Civil Actions. This suspension
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`will prevent the needless duplication of proceedings, avoid inconsistent judgments, and assist the
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`parties in consolidating for resolution in a single adjudication all issues presented in this
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`opposition together with related federal and state claims that are within the jurisdiction of a
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`federal court but that exceed the jurisdiction of this Board. To further these goals, the TTAB has
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`stated that “it is better policy to suspend proceedings…until the civil suit has been finally
`
`concluded.” Tokaido v. Honda Associates, 179 USPQ 861, 862 (TTAB 1973); Miller v. B&H
`
`Foods, Inc., 209 USPQ 357, 359 (TTAB 1981) (“[U]nder normal circumstances…it is the
`
`practice to suspend the proceeding before the Board to await the outcome of the civil action and
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`to determine its effect on the issues”). The proceeding most appropriate for suspension is the
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`proceeding which has no jurisdiction over the broader claims of, among others, infringement and
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`unfair competition – here, this opposition proceeding. See, e.g., Tokaido, 179 USPQ at 861.
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`Any attempt by Opposer to rely upon B & B Hardware, Inc. v. Hargis Indus., Inc., 575
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`U.S. __, 135 S. Ct. 1293 (2015) to oppose a suspension fails. Because an ostensibly final
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`decision of the TTAB may be reviewed de novo by a district court, any potentially preclusive
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`effect under B&B Hardware would be negated by such an appeal. Thus, suspension of this
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`proceeding pending determination of the Civil Actions would serve judicial economy because
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`any decision here can ultimately be relitigated in federal court, but not vice versa. A suspension
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`of this opposition proceeding will avoid the unnecessary duplication of litigation concerning
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`registration issues that are currently pending in the Civil Actions and that will ultimately be
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`4
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`

`
`subject to appeal and resolution by the Civil Actions themselves.
`
`III.
`
`CONCLUSION
`
`As set forth above, the issues in the Civil Actions overlap with the issues in this
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`opposition proceeding and therefore the Civil Actions have a bearing on this proceeding
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`warranting a suspension pending resolution of the Civil Actions. Applicant respectfully requests
`
`that the Board grant Applicant’s Motion to Suspend.
`
`Dated: July 1, 2016
`
`Respectfully submitted,
`
`__/s/ Kent B. Goss______________________
`Kent B. Goss
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`777 S. Figueroa St., Suite 3200
`Los Angeles, California 90017
`Telephone: (213) 629-2020
`kgoss@orrick.com
`
`Attorneys for Applicant
`Textron Inc.
`
`5
`
`

`
`Case 1:16-cv—OOO81-JRH-BKE Document 1 Filed 06110/16 Page 1 of 10
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`IN THE UNITED STATES IDISTRICT COURT
`
`FOR. THE SOUTHERN DISTRICT OF GEORGIA
`AUGUSTA DIVISION
`
`Case No.
`
`I.
`I.
`
`I iil lI.I.I.I.I.I.I.I.I EI.I.I.I.I.I.
`
`TEXTRON INC, a Delaware corporation,
`and TEXTRON SPECIALIZED
`
`VEI-IICLES INC., a Delaware corporation,
`
`Plaintiffs,
`
`V.
`
`TRAXXAS LP, a Texas limited
`partnership, and DOES I through 10,
`inclusive,
`
`Defendants
`
`._...._!
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`TEXTRON INC. (“Textron”) and TEXTRON SPECIALIZED VEI--IICLES INC.
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`(“TSV” and togethe1‘with Textron, the “Plaintiffs”), by and through their attorneys, hereby
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`file this Complaint for Declaratory Judgment against Defendant TRAXXAS LP (“Traxxas”
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`or “I)eferIdant”) and allege as follows:
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`NATURE OF THIS ACTION
`
`1.
`
`TSV manufactuies and sells off—road vehicles for commercial and
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`recreational use. This action concerns TSV’s newest off-road vehicle, the Stampede. The
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`Stampede is a ga5—powe1‘ed utility terrain vehicle that is manufacttired in a state-of-the-art
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`facility in Augusta, Georgia.
`
`2.
`
`The Stampede trademarlc is owned by Textron. TSV is a wholly~owned
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`subsidiary of Textron and uses the Stampede mark pursuant to an exclusive license from
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`Text1'on.
`
`

`
`Case 1:16—CV-00081-JRH-BKE Document 1 Filed O6i'1OI16 Page 2 of 10
`
`3.
`
`Defendant Traxxas sells remote-controlled model cars, boats, and quad-
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`1'otor helicopters under a variety of names, such as the “Bandit,” “Slash,” and “Rustler.”
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`Shortly after TSV began selling the Stampede, Textron and TSV received a letter from
`
`Traxxas claiming that TSV’s Stampede off-road vehicle infringes and dilutes Traxxas’
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`“STAMPEDE” trademarlc. Although the United States Patent and Trademark Office
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`(“USPTO”) concluded that there is no likelihood o'fco11fusio11 between Traxxas’ and
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`Tcxtron’s goods and allowed Textroifs trademark application to proceed to publication,
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`Traxxas has nonetheless demanded that TSV cease and desist from selling its Stampede
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`oft’-1'0ad vehicles.
`
`4.
`
`TSV is currently rolling out a new marketing and sales campaign to
`
`promote the Stampede. In order to settle the parties’ rights, including avoiding a potential
`
`shutdown of TSV’s brand-few factory, Plainti'[’fs seek a deciaration from this Court that the
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`sale and advertising of TSV’s Stampede off-road vehicles does not infringe Traxxas’
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`trad emarlc for radio-controlled model cars.
`
`Tl-IE PARTIES
`
`5.
`
`Textron Inc. is a Delaware corporation organized and existing under the
`
`laws of Delaware and having its principal place of business at 40 Westminster Street,
`
`Providence, Rhode Island 02903.
`
`6.
`
`Textron Specialized Vehicles Inc. is a Delaware corporation with its
`
`principal place of business at 1451 Marvin Griffin Road, Augusta, Georgia 30906. TSV
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`manufactures gas and electric~powered off—1‘oad vehicles, including all-terrain and utility
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`terrain vehicles (“ATVs” and “UTVS,” respectively). TSV’s products are soid
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`commercially as well as directly to consumers.
`
`

`
`Case 1:16—cv-00O81—JRH-BKE Document 1 Filed 06/10/16 Page 3 of 10
`
`7.
`
`Upon information and belief, Traxxas LP is a Texas limited partnership
`
`with its principal place of business in Collin County, Texas. Traxxas advertises itself as the
`
`“The Fastest Name in Radio Control” and sells radio-controlled model cars, boats, and
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`quad-rotor helicopters. Upon information and belief, Traxxas advertises and sells its
`
`products for sale nationally, and advertises, markets and sells its products through a vast
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`dealer network in the State of Georgia, including through dealers selling Traxxas products
`
`in this district.
`
`8.
`
`Plaintiffs are ignorant of the true names and capacities of Dec Defendants
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`1-10 and therefore sue them by fictitious names. Plaintiffs will amend this Complaint to
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`allege the true names of these Defendants if and when Plaititiffs identify them.
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`JURISDICTION AND VENUE
`
`9.
`
`This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201,
`
`and the Lanharn Act, 15 U.S.C. § 1051, ex seq. This Court has subject matter jurisdiction
`
`over this action pursuant to 28 U.S.C. §§ 1331 (federal question) and 133 8(a) (jurisdiction
`
`over trademark actions).
`
`10.
`
`Venue is proper in thisjudicial district pursuant to 28 U .S.C. §§ 1391 in that
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`a substantial part of the events giving rise to the claims herein occurred in this judicial
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`district, including the design, manufacture, and advertising of TSV’s Stampede line of off-
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`road vehicles, and Traxxas’ advertising and sales of its radio-cont1'olled model cars, boats,
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`helicopters.
`
`I I.
`
`This Court has personal jurisdiction over Traxxas because Traxxas has
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`advertised and sold its radio-controlled model cars within this district, including, upon
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`infonnation and belief, providing service and support to its customers in this district.
`
`La-J
`
`

`
`Case 1:16—cv—0OO81—JRH—BKE Document 1 Filed 06x’10l.’L6 Page 4 of 10
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`Traxxas has established at least minimum contacts with the forum such that the exercise of
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`jurisdiction over it would not offend traditional notions of fair play and substantial justice.
`
`FACTUAL ALLEGATIONS
`
`12.
`
`011 May 19, 2015, Textron filed an intent~to—use trademark application with
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`the United States Patent and Trademark Office for the mark STAMPEDE in International
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`Class 12, covering “Off road vehicles, namely, all-terrain vehicles and utility terrain
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`vehicles.”
`
`13.
`
`On June 25, 2015, the USPTO issued an office action noting two existing
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`registrations:
`
`a. Registration No. 1337798 for STAMPEDE, owned by TBC
`
`Trademarks, LLC, covering automobile tires in Class l 2', and
`
`b. Registration No. 2417720 for STAMPEDE, owned by Traxxas,
`
`covering 1'adio-controlled model vehicles and parts therefor in Class
`
`28.
`
`14.
`
`On December 28, 2015, Textron responded to the office action. As to
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`Registration No. 1 337798, Textroii amended its application to specifically exclude tires
`
`and wheels and also submitted a consent agreement with registrant TBC Trademarks, LLC.
`
`15.
`
`As to Registration No. 241 "F720, Textron asserted that its off~road ATVS
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`and UTVS are categorically di'l“[’erent from radio—controlled model cars that are sold to
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`hobbyists, and that the USPTO had not met its burden of demonstrating that confusion was
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`probable between Textron’s and Traxxas’ marks and products. Textron pointed out that
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`ATVs and UTVS are sold at highly specialized “powersports" or “motorsports” dealers,
`
`which is a different trade channel than that in which Traxxas’ highly specialized radio-
`
`

`
`Case 1:16-CV—O008l-.JRH—BKE Document 1 Filed D6l10l16 Page 5 of 10
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`controlled model cars are sold. Textron also explained that both companies’ products are
`
`expensive (TSV’s Stampede UTV starts at $13,799 while Traxxas’ radio-controlled
`
`Stampede model car costs more than $200), and that consumers of either company’s
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`products are therefore knowledgeable and discriminating purchasers who would not
`
`confuse a high-end off-road vehicle designed to carry people and cargo with a radio-
`
`controlled model car. Although TSV’s off-road U'I“Vs and ATVs are not related to
`
`Traxxas’ radio—controlled model cars, Textron nonetheless offered to amend its application
`
`to specifically exclude “radio-controlled model vehicles and parts therefor.”
`
`16.
`
`The USPTO was persuaded by '1"extron’s response to the office action and
`
`published the ST/—\Ml’EDE mark for opposition on April 5, 2016 even without requiring
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`Textron to exclude 1'adio~controlled model Vehicles from its application. In other words,
`
`the USPTO concluded that there is no likelihood of confusion between Textron’s
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`STAMPEDE mark and Traxxas’ STAMPEDE mark.
`
`17.
`
`TSV‘s Stampede off—road UTV was released to very favorable reviews from
`
`trade journals. For example:
`
`a. Outdoorhub, an online resource for outdoor enthusiasts, wrote on
`
`May 19, 2016: “The big thing to take away and like here is simple:
`
`Stampede is built in Augusta, Georgia, and it’s a tough, high-
`
`performance side~by-side that deserves very serious consideration
`
`from anyone looking to buy a utility:’1'ec machine 'F0rwo1'kr’pIay.”
`
`b. PowerSports Business wrote on May 23, 2016: “Powered by an
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`846cc liquid-cooled, 80 hp engine that produces 59 foot-pounds of
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`

`
`Case lil5~CV~0008l-JRH-BKE Document 1 Filed 06i'l0!16 Page 6 Of 10
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`torque, the Stampede is evidence that Bad Boy is prepared to make a
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`bigger impact on the powersports industry.”
`
`c. The NRA’s American Hunter wrote on May 2, 2016: “I drove the
`
`I Stampede during a Texas turkey hunt in March, and I can say I’m
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`excited for ATV consumers to learn just what the Bad Boy brand
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`has done to itself. The 900-class SXS is capable and comfortable.”
`
`18.
`
`By way of comparison, Traxxas’ radio-controlled model cars are reviewed
`
`by radio—controlled hobby media sources:
`
`‘:1. Remote Control Cars Guide wrote: “The Stampede has many
`
`features that other RC monster trucks simply don’t have. For one
`
`thing, the sealed electronics design allows you to use the Stampede
`
`whether it’s snowing, muddy or wet. Unlike other RC equipment,
`
`the Stampede’s digital steering, receiver box and speed control are
`
`all waterproof.”
`
`About.com I--Iome RC Vehicles wrote: “When it's play time at the
`
`track I can give the Stampede to my 7 year old son and tell him
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`“race like there's no tomorrow” knowing that this tough truck is
`
`going to take what my son ca11 dish out. He's hard on racing RC3 and
`
`has flipped, rolled, and did some unintentional wild acrobatics.”
`
`Big Squid RC wrote: “In the air, the truck was amazingly easy to
`
`control. All the power makes you a big air master in no time. Back
`
`flips, double back flips, and front flips are all done on command
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`with precise landings.”
`
`

`
`Case 1:16—cv-00081-JRH-BKE Document 1 Filed 06110116 Page 7 of 10
`
`19.
`
`On or about May 6, 2016, Plaiiitiffs received a letter from Traxxas claiming
`
`trademark infringement and dilution and demanding that TSV cease and desist from all use
`
`of the word “Stampede” in connection with off-road vehicles.
`
`20.
`
`On May 10, 2016, Traxxas commenced an opposition proceeding with the
`
`U Sl”'['O’s 'l"rade1na1'k Trial and Appeal Board (“'I."'I"AB").
`
`2 i.
`
`On or about May 9, 2016 counsel for Textron:’TSV contacted counsel for
`
`Traxxas. That call was unproductive and the parties were unable to reach a resolution.
`
`Traxxas unequivocally stated that it considered TSV’s use of the STAMPEDE mark to be
`
`infringing and that the parties could not coexist. Plaintiffs and Traxxas have not had any
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`further discussions since that date.
`
`22.
`
`TSV is currently in the process of manufacturing, marketing, and selling its
`
`new Stampede UTV, and has made a significant investment in the STAMPEDE name, in
`
`part in reliance on the USPTO finding no likelihood of confusion. Traxxas has sent
`
`Plaintiffs a cease and desist letter and is opposing Text:ron’s trademark application in a
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`TTAB proceeding. Plaintiffs therefore seek a declaration from this Court that their use of
`
`Textron’s STAMPEDE mark does not infringe Traxxas’ mark, so that TSV can proceed
`
`with its product roilout, including continuing its marketing and sales campaign and
`
`avoiding a potential shutdown of its new factory.
`
`CLAIM FOR RELIEF
`
`(Declaratory Judgmentt
`
`23.
`
`"Paragraphs 1 through 22 are incorporated by reference as if fully set forth
`
`herein.
`
`24.
`
`Traxxas has asserted, by a cease and desist letter to Plaintiffs and by
`
`opposing, the registration of Textron’s STAMPEDE mark with the USPTO, that TSV's use
`
`

`
`Case 1:16—cv-00081-JRH-BKE Document 1 Filed 06I.’L0!16 Page 8 of 10
`
`of Textrozfs STAMPEDE mark infringes the Traxxas STAMPEDE mark. Plaintiffs have
`
`asserted that TSV’s use of the mark is n0n~in'f1‘inging and is not likely to cause confusion
`
`in the marketplace. As a result, l3’laintiffs have areal and reasonable apprehension of
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`trademark infringement litigation such that an actual controversy has arisen and now exists
`
`between Plaintiffs and Traxxas within the meaning of 28 U.S.C. § 2201.
`
`25.
`
`Traxxas further contends that any use by TSV of the “Stampede” mark
`
`going forward is willful infringement entitling Traxxas to an injunction, seizure and
`
`destruction of allegedly infringing materials, and the recovery of damages, including
`
`TSV’s profits and Traxxas’ attorneys’ fees.
`
`26.
`
`Traxxas’ claims are legally and factually incorrect. TSV’s use of the
`
`STAMPEDE mark does not infringe, dilute, or otherwise cause confusion with Traxxas’
`
`mark because, among other reasons, (i) a full-sizic utility terrain vehicle designed to carry
`
`people and cargo over off-road terrain is not related to a radio-controlled model hobby car;
`
`(ii) the parties’ goods are sold in different channels to discriminating consumers, (iii)
`
`consumers are used to distinguishing between different “Stampede” marks; and (iv) the
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`USPTO correctly concluded there was no likelihood of confusion. Plaintiffs further
`
`contend that any alleged trademark infringement, even if proven, is not willful.
`
`2?.
`
`Plaintiffs seek, and are entitled to, a judicial determination and declaration
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`from this Court under the provisions of the Declaratory Judgment Act, 28 U.S.C. § 2201
`
`that TSV’s use of the STAMPEDE mark for off-road vehicles does not infringe, dilute, or
`
`otherwise cause confusion with Traxxas’ STAMPEDE mark for radio-controlled model
`
`C€:1l'S .
`
`

`
`Case 1:16-cv~OOO81-JRH-BKE Document 1 Filed 06l1OI16 Page 9 of 10
`
`PRAYER FOR RELIEF
`
`W1-IEREFORL, Plaintiffs prays for judgment against Traxxas, granting Plaintiffs
`
`the following relief:
`
`A.
`
`A declaration that Textrorfs STAMPEDE mark, USPTO Application No.
`
`86634354, does not infringe, dilute, or otherwise cause confusion with Traxxas’
`
`STAMPEDE mark, USPTO Registration No. 2417720;
`
`B.
`
`A declaration that Plaintiffs have not infringed, diluted, or otherwise caused
`
`confusion with Traxxas’ STAMPEDE mark in the past;
`
`C.
`
`A declaration that that any alleged infringement by Plaintiffs, ifproven, was
`
`innocent;
`
`D.
`
`13.
`
`For costs of suit; and
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`Such other, further, and different relief as may be just and proper.
`
`

`
`Case 1215-CV-00081-JRH-BKE Document 1 Filed 06!l0!l6 Page 10 of 10
`
`Dated: June 10, 2016
`
`Respectfully submitted,
`
`HULL BARRETT, P.C.
`
`By:
`
`S/S David E. Hudson
`
`David E. I-Iudson Ga. Bar No. 374450
`
`Hull Barrett, PC
`P. O. Box 1564
`
`Augusta, GA 30903-1564
`1’: (706) 722-4481
`dhuclson@hul1barrett.eom
`
`and
`
`ORRICK, I-I1-1RR.INGTON & SUTCLIFFE LL13
`Kent B. G033
`
`777 S. "Figueroa St, Suite 3200
`Los Angeles, California 90017
`(213) 629-2020
`(pro hac vice to be filed)
`
`Attorneys for Plaintiffs
`TL-71X’l”RON INC. and TEXTRON
`
`SPECIALIZED VEHICLES INC.
`
`10
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`

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`Case 6:16—cv-00506 Document 1 Filed 06/15/16 Page 1 of 12 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE EASTERN DISTRICT OF TEXAS
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`TYLER DIVISION
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`Civil Action No. 6:16-cv-506
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`JURY TRIAL DEMANDED
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`§ §
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`§ §
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`§
`§
`§
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`§ §
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`§
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`TRAXXAS, L.P.,
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`Plaintiff;
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`v.
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`-
`_
`TEXTRON INC. and TEXTRON
`SPECIALIZED VEHICLES INC.,
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`Defendants.
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`ORIGINAL COMPLAINT FOR TRADEMARK INFRINGEMENT,
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`UNFAIR COMPETITION, DILUTION, UNJUST ENRICHMENT, AND DENIAL OF
`TRADEMARK APPLICATION
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`COMES NOW Plaintiff Traxxas, L.P. and files this Original Complaint for Trademark
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`Infringement, Unfair Competition, Dilution, Unjust Enrichment, and Denial of Trademark
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`Application against Defendants Textron Inc. and Textron Specialized Vehicles Inc. (collectively
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`“Textron”), alleging as follows:
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`I. NATURE OF THE SUIT
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`1.
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`This is a claim for infringement of a federally registered trademark, unfair
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`competition, and denial of a federal trademark application arising under the Lanham Act, 15
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`U.S.C. § 1051 et seq., and related claims for trademark dilution under Texas Business and
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`Commerce Code § 16.103 and trademark infringement, unfair competition, and unjust
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`enrichment under Texas common law.
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`

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`Case 6:16-cv-00506 Document 1 Filed 06/15/16 Page 2 of 12 PageID #: 2
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`II. THE PARTIES
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`2.
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`Plaintiff Traxxas, L.P. (“Traxxas”) is a Texas limited partnership that maintains
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`its principal place of business in McKinney, Texas.
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`3.
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`Defendant Textron Inc. is a Delaware corporation that does business in Texas,
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`directly or through intermediaries, and maintains its principal place of business in Providence,
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`Rhode Island.
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`4.
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`Defendant Textron Specialized Vehicles Inc. is a Delaware corporation that does
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`business in Texas, directly or‘ through intermediaries, and maintains its principal place of
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`business in Augusta, Georgia.
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`5.
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`Defendant Textron Specialized Vehicles Inc.
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`is a wholly owned subsidiary of
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`Defendant Textron Inc.
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`IH. JURISDICTION AND VENUE
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`6.
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`Pursuant to 15 U.S.C. § ll21(a) and 28 U.S.C. §§ 1331 and 1338(a), this Court
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`has subject matter jurisdiction over the federal trademark infringement, unfair competition, and
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`denial of federal trademark application claims because those claims arise under the Lanham Act,
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`15 U.S.C. § 1051 etseq.
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`7.
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`Pursuant to 28 U.S.C. § 1367(a), this Court has subject matter jurisdiction over
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`the state trademark infiingement, unfair competition, trademark dilution, and unjust enrichment
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`claims because those claims arise from the same nucleus of operative facts as the federal
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`trademark infringement, unfair competition, and denial of trademark application claims.
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`8.
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`This Court has specific personal jurisdiction over each defendant pursuant to due
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`process and the Texas _Long Arm Statute because each defendant, directly or
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`through
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`intermediaries, has conducted and does conduct substantial business in this forum, such
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`
`
`Original Complaint
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`Page 2
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`

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`Case 6:16-cv-00506 Document 1 Filed 06/15/16 Page 3 of 12 PageID #: 3
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`substantial business including but not limited to:
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`(i) at least a portion of the infringements
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`alleged herein; (ii) purposefiilly and voluntarily placing one or more infringing products into the
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`stream of commerce with the expectation that they will be purchased by consumers in this
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`forum; or (iii) regularly doing or soliciting business, engaging in other persistent courses of
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`conduct, or deriving substantial revenue from goods and services provided to individuals in
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`Texas and in this District.
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`9.
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`Venue is proper in this Court under 28 U.S.C. §§ l39l(b)-(d) for the reasons set
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`forth above.
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`Furthermore, venue is proper because each defendant, directly or through
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`intennediaries, sells and offers to sell infringing products to persons in this District, as discussed
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`below. Each of Defendants’ infringing acts in this District gives rise to proper venue.
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`A.
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`Traxxas and Its Trademarks
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`IV. BACKGROUND
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`10.
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`Traxxas was started in 1986 and has grown to become the number-1 selling name
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`in Ready-To-Run nitro and electric model vehicles for the last 30 years running.
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`11.
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`Since at
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`least December 1994, Traxxas has continuously used the standard
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`characters “STAMPEDE” (the “Traxxas STAMPEDE Mark”) in interstate commerce to identify,
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`advertise, and promote its radio-controlled model vehicles and parts therefor, specifically off-
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`road radio-controlled model vehicles, to the consuming public.
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`12.
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`On January 2, 2001, the United States Patent and Trademark Office (“USPTO”)
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`duly and legally issued to Traxxas United States Trademark Registration -No. 2,417,720 (the
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`“Traxxas STAMPEDE Registration”), which comprises the typed drawing “STAMPEDE” as
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`applied to radio-controlled model vehicles and parts therefor in International Class 028. A true
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`and correct copy of the Traxxas STAMPEDE Registration is attached hereto as Eithibit A.
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`
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`Original Complaint
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`Page 3
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`

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`Case 6:16-cv—00506 Document 1 Filed 06/15/16 Page 4 of 12 PageID #: 4
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`13.
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`Traxxas’ right to use its Traxxas STAMPEDE Mark has become incontestable.
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`14.
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`As a result of Traxxas’ long use and promotion of the Traxxas STAMPEDE
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`Mark,
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`the Traxxas STAMPEDE Mark has become distinctive to designate Traxxas,
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`to
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`distinguish Traxxas and its products from those of others, and to distinguish the source or origin
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`of Traxxas’ products. As a result of these efforts by Traxxas, the consuming public in Texas and
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`throughout the United States widely recognizes and associates the Traxxas STAMPEDE Mark
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`with Traxxas.
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`15.
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`As a result of Traxxas’ long use and promotion of the Traxxas STAMPEDE Mark
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`in Texas and elsewhere, Traxxas has acquired valuable common law rights in the Traxxas
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`STAMPEDE Mark.
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`16.
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`The Traxxas STAMPEDE Mark is famous pursuant to 15 U.S.C. § 1125(c) and
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`Texas Business and Commerce Code § 16.103.
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`B.
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`Textron’s STAMPEDE Application
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`17.
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`On May 19, 2015, Textron Inc. filed with the USPTO Application Serial No.
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`86/634,354 (the “Textron STAMPEDE Application”) for the standard characters “STAMPEDE”
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`as applied to “Off road vehicles, namely, all-terrain vehicles and utility terrain vehicles” in
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`International Class 012.
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`18.
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`On December 28, 2015, in response to an office action, Textron Inc. amended the
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`Textron STAMPEDE Application to exclude tires and wheels.
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`19.
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`On April 5, 2016, the USPTO issued a Notice of Publication concerning the
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`Textron STAMPEDE Application.
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`20.
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`On May 10, 2016, Traxxas filed in the USPTO a Notice of Opposition to the
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`Textron STAMPEDE Application on the grounds of priority and likelihood of confusion, citing
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`Original Complaint
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`.
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`Page 4
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`

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`Case 6:16-cv-00506 Document 1 Filed 06/15/16 Page 5 of 12 PageID #: 5
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`the Traxxas STAMPEDE Registration. A true and correct copy of Traxxas’ Notice of
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`Opposition is attached hereto as Exhibit B and incorporated by reference.
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`C.
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`Textron’s Infringing Activities
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`21.
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`Defendant Textron Specialized Vehicles Inc., directly or through intermediaries,
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`makes, sells, offers for sale, distributes, and advertises in the United States off-road vehicles
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`under the name “STAMPEDE” (the “Infringing Mark”).
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`22.
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`Defendant Textron Inc. purports to own the Infringing Mark and to exclusively
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`license the Infringing Mark to its wholly owned subsidiary Textron Specialized Vehicles Inc.
`23.
`By purporting to exclusively license the Infringing Mark to its wholly owned
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`subsidiary Textron Specialized Vehicles Inc., Defendant Textron Inc. makes, sells, offers for
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`sale, distributes, and advertises in the United States off-road vehicles under the Infringing Mark
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`through its intermediary Textron Specialized Vehicles Inc.
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`24.
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`Examples of Textron’s use of the Infringing Mark are attached hereto as Exhibit
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`25.
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`The Infringing Mark is identical in appearance to the Traxxas STAMPEDE Mark.
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`26.
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`27.
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`The Infringing Mark is confusingly similar to the Traxxas STAMPEDE Mark.
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`Textron is using the Infi'inging Mark in commerce.
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`28.
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`Each defendant, directly or through intermediaries, purposefully and voluntarily
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`places products bearing the Infringing Mark into the stream of commerce with the expectation
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`that they will be purchased by consumers in this District.
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`29.
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`Textron’s products bearing the Infringing Mark are sold and offered for sale in
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`this District.
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`Original Complaint
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`Page 5
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`

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`Case 6:16-cv-00506 Document 1 Filed 06/15/16 Page 6 of 12 PageID #: 6
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`30.
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`Textron is not affiliated with or sponsored by Traxxas and has not been
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`authorized by Traxxas to use the Traxxas STAMPEDE Mark or any confusingly similar marks.
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`D.
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`Effect of Textron’s Infringing Activities
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`31.
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`Textron’s unauthorized use of the Infringing Mark is likely to cause confusion, to
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`cause mistake, or to deceive customers and potential customers of the parties, at least as to some
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`affiliation, connection, or association of Textron with Traxxas, or as to the origin, sponsorship,
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`or approval of Textron’s products by Traxxas.
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`32.
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`Textron’s unauthorized use of the Infringing Mark falsely designates the ori