Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA807708
`
`Filing date:
`
`03/16/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91228595
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Dille Family Trust
`
`VINCENT G LOTEMPIO
`KLOSS STENGER & LOTEMPIO
`69 DELAWARE AVENUE, SUITE 1003
`BUFFALO, NY 14202
`UNITED STATES
`vglotempio@klosslaw.com, cmedines@klosslaw.com, office@klosslaw.com, jdk-
`loss@klosslaw.com
`
`Motion to Suspend for Civil Action
`
`Vincent G. LoTempio
`
`vglotempio@klosslaw.com
`
`/VGL/
`
`03/16/2017
`
`Motion to Suspend.pdf(234284 bytes )
`Exhibit 1 Buck Rogers.pdf(3468413 bytes )
`Exhibit 2 Armageddon Motion.pdf(4109333 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK
`OFFICE BEFORE THE TRADEMARK TRIAL AND
`APPEAL BOARD
`
`
`
`
`DILLE FAMILY TRUST,
`Opposer.
`
`
`
`v.
`
`NOWLAN FAMILY TRUST
`
`Applicant.
`
`
`
`
`
`
`Opposition Nos.: 91228592;
`91228595; 91228597; 91228598
`
`Marks: Wilma Deering; Killer
`Kane; Dr. Huer; Black Barney
`
`
`
`
`
`
`MO T IO N FO R S US PE N S IO N
`
`Opposer, DILLE FAMILY TRUST, moves for a suspension of the above-styled
`
`opposition proceeding pursuant to Trademark Rule of Practice 2.117(a). See 37 C.F.R. §
`
`2.11 7(a).
`
`The parties to this proceeding are involved in a civil action, THE DILLE
`
`FAMILY TRUST v. THE NOWLAN FAMILY TRUST, Civil Action No. 15 -06231,
`
`which is currently pending in the United States District Court for the Eastern District
`
`of Pennsylvania (the “Civil Action”), involving the issue of whether Applicant’s past,
`
`present and intended use of “BUCK ROGERS IN THE 21 st CENTURY” is in conflict
`
`of Opposer’s intellectual property rights in the mark. “BUCK ROGERS IN THE 21 st
`
`CENTURY” is a title of a character, a series of movies, various books, and comic
`
`strips, and other media, which stories include the corresponding characters in which
`
`the Applicant is intending to use: “WILMA DEERING”, “KILLER KANE”, “BLACK
`
`BARNEY” and “DR. HUER”.
`
`These issues are likewise raised by the above-styled Opposition, and the civil
`
`action therefore may be dispositive of this proceeding. (A copy of the Opposer’s Complaint
`
`

`

`(Dkt. 1 for the Civil Action) is attached as Exhibit 1.) Therefore, Opposer respectfully requests
`
`that the Board suspend this Opposition proceeding pending termination of the civil action. See
`
`New Orleans Louisiana Saints LLC and NFL Properties LLC v. Who Dat?, Inc., 99 USPQ2d
`
`1550 (TTAB 2011) [precedential]; Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733 (2nd Cir. 1994).
`
`Further, this issue has been previously resolved by the Trademark Trial and Appeal
`
`Board (“TTAB”) in Opposition No. 91225273 (a copy of which is attached as Exhibit 2). In
`
`Opposition No. 91225273, the TTAB suspended the Opposition of the mark ARMAGEDDON,
`
`another corresponding character to BUCK ROGERS, until the Civil Action is resolved.
`
`
`
`Dated: March 13, 2016
`
`Buffalo, New York
`
`
`Respectfully submitted,
`
`
`/s/Vincent G. LoTempio
`Vincent G. LoTempio
`New York Bar No. 2134633
`Member New York Bar Attorney for
`Registrant Kloss, Stenger & LoTempio
`9545 Main St.
`Clarence, NY 14031
`Telephone: 716-853-1111
`Facsimile: 716-759-1094
`Email: vglotempio@klosslaw.com
`
`

`

`From: ecl_paed@paed.uscourts.gov
`Subject: Activity In Case 2:15-cv-06231-WB THE DILLE FAMILY TRUST v. THE NOWLAN FAMILY TRUST Complaint
`Date: November 19. 2015 12:56:48 PM EST
`To: paedmail@paed.uscourts.gov
`
`This is an automatic e-mail message generated by the CM/ECF system. Please DO NOT RESPOND to this email because the
`mail box is unattended.
`
`"‘NOTE TO PUBLIC ACCESS USERS'“ Judicial Conterence oi the United States policy permits attorneys oi record and parties
`in a case (Including pro se litigants) to receive one tree electronic copy of all documents tiled electronically. ii receipt is
`required by law or directed by the flier. PACER access tees apply to all other users. To avoid later charges, download a copy 01
`each document during this first viewing. However, it the referenced document Is a transcript. the tree copy and 30 page limit
`do not apply.
`
`United States District Court
`
`Eastern District of Pennsylvania
`
`Notice of Electronic Filing
`
`The following transaction was entered on 11/19/2015 at 12:56 PM EST and filed on 11/19/2015
`Case Name:
`THE DILLE FAMILY TRUST v. THE NOWLAN FAMILY TRUST
`Case Number:
`2:15-cv-06231- 8
`Filer:
`THE DILLE FAMILY TFIUST
`
`Document Number: 1_
`
`Docket Text:
`COMPLAINT against THE NOWLAN FAMILY TRUST ( Filing fee 5 400 receipt number 131041.), filed by THE DILLE FAMILY
`TRUST. (Attachments: # (1) Exhibit, # (2) Exhibit, # (3) Exhibit, # (4) Civil Cover Sheet. it (5) Case Management Track Fom. it (6)
`Designation Form)(rt)
`
`2:15-cv-06231-WB Notice has been electronically mailed to:
`
`DANIEL I. HERMAN
`
`daniel@geerandherman.com. admin@geerandherman.com. Iori@geerandherman.com
`
`2:15-cv—06231-WB Notice will not be electronically mailed to:
`
`The following document(s) are assocrated with this transaction.
`
`Document descriptionzMain Document
`Original tilenamem/a
`Electronic document Stamp;
`[STAMP dcecfStamp_lD=1001600548 [Date=11/19/2015] [FileNumber=13781073
`-O) [50851d220e9e1 12e44361 b26521 87d252ibb67fb80ee1 c9t2c44d45d591076die
`cc15t8t302b28detb91c24a7efl24b43bfb923109d4e0t739c2d6f936a2f00bn
`Document description:Exhibit
`Original tilenamem/a
`Electronic document Stamp:
`[STAMP dceclStamp_lD=1001600548 [Date=11/19/2015) [FileNumber=13781073
`~11 [207cd030e58ddc07002c907cd0b6809b1c67a87e4255dd50a06e5020201 1e5390
`i405eedb0924e2773b7e1c03d1 9cdc41134677d6b16d23c245b41 1 7210934231]
`Document descriptioanxhibit
`Original tilename:n/a
`Electronic document Stamp:
`[STAMP dceciStamp_lD=1001600548 [Date=11/19/2015) [FiIeNumber=13781073
`-2] [1 b90a8b0361a7ebbd59ca8i3201681 9aa5925398ba6b2fl2cab450aaeebc552d7
`51dcc70c592b1 td56574d887d 1 e1 b88387eb27oscee7abd624ta856015566031]
`Document description:Exhibit
`Original tIlenamezn/a
`Electronic document Stamp:
`[STAMP dceclStamp_ ID=1001600548 [Date=11/19/2015) lFileNumber=13781073
`-3] [052706720909775e38deadd9c90990cc3d9248a7128cd6a19914a638ac0ca6451
`025892” e4389a8t03b0680d2767ae8e6dc451 91 271268b38c021 a74d2408961]
`
`

`

`Document description:Civil Cover Sheet
`Origlnel tllenamem/a
`Electronlc document Stamp:
`[STAMP dcectStamp_ID=1001600548 [Date=1 1119/2015] [FileNumber=13781073
`-4] [59b59596dc106105ab8d359cda4554745c92b1 15e01 1512acc77889b6657b514f
`013724996aa$327d08fb123caec0758c1490c19515a31755db6d1b031b0e3371]
`Document description:Case Management Track Form
`Orlglnal lllenamem/a
`Electronic document Stamp:
`[STAMP dcecfStamp_lD=1001 600548 [Date=11/19I2015] [FileNumber=13781073
`-5] [b9342fb9d132368dabefe4159d53592014a7261 a7e06c2207a8bd654c8b9a1090
`fa8051caeb98354029d6a3391 ab67ddb94a06583febc03d1693d31 503b3955011
`Document descflptlonzDesignation Form
`Original tllenamezn/a
`Electronic document Stamp:
`[STAMP dcecfStamp_lD=1001600548 [Date=1 1/19/2015) [FileNumberz13781073
`-61 [c149671cd13849934a1a778708c1521508bac07e2027af41 a03e36974a694dd7a
`5384a91 7805752039b8fa2635698cf477ffab6dfb35d06bcfeeb97eb6de329a]]
`
`

`

`Case 2:15-cv-06231-WB Document 1 Filed 11/19/15 Page 1 of 11
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF PENNSYLVANIA
`
`
`THE DILLE FAMILY TRUST,
`
`Case No.:
`
`Plaintiff,
`
`vs.
`
`THE NOWLAN FAMILY TRUST
`
`Defendant.
`
`
`
`COMPLAINT AND DEMAND
`FOR JURY TRIAL
`
`NOW COMES Plaintiff, THE DILLE FAMILY TRUST, by and through its undersigned
`
`attorneys, GEER & HERMAN P.C., on its behalf and for its Complaint against the above named
`
`Defendant, THE NOWLAN FAMILY TRUST. alleges and avers as follows:
`
`PARTIES
`
`1.
`
`Plaintiff THE DILLE FAMILY TRUST (hereinafter “Plaintifi” or “DF”I"), is a trust duly
`
`formed under the laws of the State of California. filed with the Commonwealth of
`
`Pennsylvania having a regular and established place of business at 2100 Wilmington
`
`Road, New Castle, Lawrence County, Pennsylvania.
`
`2.
`
`Upon information and belief, Defendant THE NOWLAN FAMILY TRUST (hereinafter
`
`"Defendant” or “Nowlans") is a trust duly formed under the laws of the Commonwealth
`
`of Pennsylvania, entity number 4155897, having a regular and established place of
`
`business at 325 Swede Street, Norristown, PA 19407. Upon information and belief, the
`
`current trustee is Brian McDevitt.
`
`g Q RISDICTION AND YEN UE
`
`3.
`
`This Court has subject matter jurisdiction of this action on the following basis:
`
`

`

`Case 2:15~cv-06231-WB Document 1 Filed 11/19/15 Page 2 of 11
`
`a Under 28 U.S.C. § 1331 since this action arises under the Laws of the United
`
`States, i.e., the Lanham Act {543(3), 15 U.S.C. § 1125 el. seq.;
`
`b. Under 28 U.S.C. § l338 since this action arises under the Trademark and Unfair
`
`Competition Laws of the United States, i. e., the Lanham Act {543(3), 15 U.S.C. §
`
`1 125 et. seq.;
`
`0. Under 15 U.S.C. § 1121 since this action involves questions arising under the
`
`Trademark Laws of the United States, Lanham Act §43(a), 15 U.S.C. §§ HM,
`
`1125 et. seq.;
`
`(1. Under 15 U.S.C. § 1071(b) since this action includes an appeal from the
`
`Trademark Trial and Appeal Board of the United States Trademark Ofiice; and
`
`e. Under 28 U.S.C. § 1367(a) since this action alleges state law violations that are
`
`part of the same case or controversy as those claims arising under the laws of the
`
`United States and the Commonwealth of Pennsylvania.
`
`4. This Court has personal jurisdiction over the parties to this action because: (i) Plaintifi‘s
`
`claims arise in the judicial district, (ii) Defendant resides in this Judicial District; and (iii)
`
`all parties are located within the Commonwealth of Pennsylvania.
`
`5. Venue is proper
`
`in the United States District Court
`
`for
`
`the Eastern District of
`
`Pennsylvania pursuant to 28 U.S.C. § 1391(b) and (c), Plaintiff‘s claim arise in this
`
`Judicial District, each party does business in this Judicial District, witnesses and evidence
`
`are located within this Judicial District and a substantial portion of the harm sought to be
`
`avoided, and a substantial part of the events and omissions giving rise to the claims
`
`asserted herein, occurred within this Judicial District.
`
`

`

`Case 2:15-cv-06231-WB Document 1 Filed 11/19/15 Page 3 of 11
`
`FACTUAL BA K ROUND
`
`6. The Plaintiff, the Dille Family Trust. executed on August 16, 1979, and as amended
`
`January 5, 1982, has been and is now using, itself or through license the BUCK ROGERS
`
`mark (hereinafier “the Mark") on goods, including but not limited to, licenses, comic
`
`books, books, graphic novels, T.V. series. action figures, replica figures, ray guns, guns,
`
`toys, statues, artwork, posters. feature films, t-shirts. computer sofiware, DVDs and radio
`
`programs.
`
`7. The Mark has acquired distinctiveness over the past century; it is a famous mark, first
`
`used by the John F. Dille Company adopted and first used as early as I928 and 1929 and
`
`its subsequent successors and assigns, ultimately becoming the property of the Dille
`
`Family Trust.
`
`8. Buck Rogers was created by John F. Dille in or about I928. John F. Dille, and the John F.
`
`Dille Company began to use the BUCK ROGERS mark in commerce as early as 1929.
`
`9. Phillip Francis Nowlan was at the time (1928-29) contracted by the John F. Dille
`
`Company to work on Buck Rogers comic strip. However, on May 14, 1942, Mr. Nowlan
`
`through his estate and Theresa Nowlan, Executrix, released and assigned all rights and
`
`interest in BUCK ROGERS to John F. Dille and the John F. Dille Company with
`
`payment of consideration a full and complete release and assignment.
`
`10. The John F. Dille Company assigned all of its copyrights, marks, and registration to
`
`Robert C. Dille December 31, 1962. Robert C. Dille assigned his copyrights, marks, and
`
`registration to the National News Syndicate, Inc., on February 1, 1963. On March 3,
`
`1963, the National News Syndicate conveyed all of its interest to Robert C. Dille by a bill
`
`

`

`Case 2:15-cv—06231-WB Document 1 Filed 11/19/15 Page 4 of 11
`
`of sale and fitrthcrmore on May 31, 1974, the national News Syndicate conveyed and
`
`assigned all of its marks to Robert C. Dille.
`
`ll.
`
`On August 16, 1979, the Dille Family Trust was created and the Trustees were Robert C.
`
`and Virginia N. Dille. On August 16, 1979, Robert C. Dille executed an assignment of
`
`marks and registration and assignments of all applications to die Dille Family Trust.
`
`In
`
`September, 1980, Robert C. Dille executed an assignment of copyright and an assignment
`
`of marks and registrations and an assignment of agreements from himself to the Dille
`
`Family ansL
`
`12.
`
`The Plaintiff is informed and believes and therefore avers that the Defendant herein, the
`
`Nowlan Family Tnist, consists of the descendants, successors, and assigns of the settlers
`
`of the release, set forth with more particularity hereinafter. The aforementioned release
`
`dated May 14, 1942, specifically waived the rights to Buck Rogers and all of its
`
`associated properties in behalf of Teresa Marie Nowlan and her heirs and waived any
`
`right that “Phillip Francis Nowlan or 1 have had, now have, or may have in the future, or
`
`which my heirs, executors, or administrators, hereinafter can, shall, or may have, for or
`
`by reason of any matter, cause or thing whatsoever, including all claims, etc., to all
`
`receipts from Newspaper strips, merchandise, radio, movies, and all other subject matter,
`
`and including all claims, etc.,
`
`to all receipts which may arise under any contracts
`
`heretofore or hereinafier entered into by the parties of the second part or any of them
`
`relating to newspaper strips, merchandise, radio and movies, and all other subject manor.
`
`All contracts of every kind or nature which exist or may exist and all rights thereunder
`
`are hereby terminated and forever released. [T]he party of the first part hereby assigns,
`
`releases, waives, and conveys all claims. rights, and interests of any kind to whatsoever in
`
`
`
`

`

`Case 2:15-cv-06231-WB Document 1 Filed 11/19/15 Page 5 of 11
`
`and to all copyrights to John F. Dille Co., and to all
`
`trade-marks, goodwill,
`
`titles
`
`including specifically “Buck Rogers” and “Buck Rogers [n The 25‘h Century” and all
`
`characters, patents, and inventions, and all other subject matter relating in any way to the
`
`Buck Rogers features to John F. Dille."
`
`13.
`
`Accordingly, pursuant to the release, the Nowlan Family Trust, as it consists of the
`
`parties aforementioned in paragraph 12 hereinabove, as the Descendants of Phillip
`
`Francis Nowlan, are accordingly barred from making a trademark application in the first
`
`place based upon the aforementioned release, see Exhibit “A” attached hereto and
`
`incorporated by reference herein in toto.
`
`14.
`
`15.
`
`l6.
`
`In or about 1979. Robert C. Dille assigned rights to Buck Rogers, to the Dille Family
`
`Trust.
`
`Since said 1979 assignment, the DFT has maintained the rights to Buck Rogers and used
`
`the Mark, whether common law trademark or registered trademark (United States
`
`registrations or international registrations), in commerce continuously since 1979.
`
`In 1981, BUCK ROGERS was registered with the United States Trademark Office
`
`(Registration Numbers 0714184 and 1555871). Although these registrations were
`
`cancelled in or about April 201 1, the DFT continued to use the Mark in commerce.
`
`17.
`
`On or about September 2009,
`
`the DFT filed an application (Serial No. 77/831393)
`
`seeking registration of the BUCK ROGERS mark in numerous classes (009, 016, 018,
`
`021, 024, 025, 026, 028, 035 and 041) and for a variety of goods including, computer
`
`game programs, downloadable sound recordings and audiovisual recordings featuring
`
`music, science fiction and adventure, printed materials, folders, calendars, bags, wallets,
`
`

`

`Case 2:15-cv-06231-WB Document 1 Filed 11/19/15 Page 6 of 11
`
`mugs,
`
`t-shirts, jackets, games,
`
`toys, videos, non-downloadable web-based television
`
`programs featuring science fiction and adventure, and action figures and accessories.
`
`18.
`
`Also in or about September 2009, the DFT filed an application (Serial No. 77/831213)
`
`seeking registration of the mark BUCK ROGERS in numerous classes (009, 016, 020,
`
`028 and 041) and for a variety of goods including, motion picture films featuring science
`
`fiction and adventure, audio—visual recordings featuring science fiction and adventure.
`
`sound recordings featuring musical soundtracks, a series of books featuring a collection
`
`of comic strips, toy action figures, non-downloadable television programs, and figurines
`
`made of plastic.
`
`I9.
`
`The Defendant filed an application (Serial No. 77/650082), based on an intent-to-use,
`
`seeking registration of the mark BUCK ROGERS in numerous classes (009. 016, 025,
`
`028 and 041) and for a variety of goods including, motion picture films featuring science
`
`fiction and adventure, audio-visual recordings featuring science fiction and adventure,
`
`sound recordings featuring musical soundtracks, a series of books featuring a collection
`
`of comic strips, toy action figures. Said application had an application date of January 15,
`
`2009.
`
`20.
`
`Serial No. 77/650082 was published for opposition purposes on June 14, 201 l. The DPT
`
`timely filed a Notice of Opposition with the Trademark Trial and Appeal Board
`
`(“TTAB”) on July 12, 2011. Between February 2015 and April 20l5 the parties
`
`submitted final briefs, and oral argument before the TTAB was held on September 3.
`
`2015.
`
`

`

`Case 2:15-cv-06231-WB Document 1 Filed 11/19/15 Page 7 of 11
`
`21.
`
`On September 25, 2015,
`
`the TTAB issued a decision (hereinafter the “Decision”)
`
`rejecting the DFT’s opposition of the Nowlan Family Trust‘s application, attached hereto
`
`as Exhibit “B" and incorporated by reference herein in toto.
`
`22.
`
`Prior to the TTAB decision, going back as far as 2005. upon information received, the
`
`Defendants, their agents, servants, and representatives of the Nowlan Family Trust have
`
`made declarations that they are the owners of Buck Rogers, even though they have never
`
`produced any products or granted any licenses. The Plaintiffs on information received
`
`believe and therefore aver that in the last 45 days, prior to the filing of the instant
`
`Complaint, agents, servants, and representatives of the Defendant have specifically gone
`
`to individuals and indicated that the Dille Family Trust has no right in Buck Rogers, that
`
`parties are free to use Buck Rogers and that the Dille Family Tmst lost in the underlying
`
`Trademark decision even though it is noted on the record that the actions of the TI‘AB
`
`that this matter is “case still suspended."
`
`23.
`
`The actions and declarations of the representatives of the Nowlan Family Trust shows its
`
`intent to continue to wrongfully compete with, infringe upon and dilute the Dille Family
`
`Trust’s proprietary rights in the BUCK ROGERS trademarks. The harm to the Dille
`
`Family Trust’s goodwill is extensive and irreparable and made in bad faith. The Dille
`
`Family Trust seeks an injunction to halt Defendant’s wrongful conduct and award of
`
`damages as well as attomeys' fees and expenses for Defendant’s willful and wanton
`
`conduct
`
`

`

`Case 2:15-cv-06231—WB Document 1 Filed 11/19/15 Page 8 of 11
`
`9.9%!
`Fedgral Unfair Comnetitjgn gaging!!! to 15 U.S.C, § 1125“)
`est
`0
`fOri n
`F
`
`ri
`
`‘
`
`a
`
`'on
`
`24. Plaintiff The Dille Family Trust incorporates by reference the allegations contained in
`
`paragraphs 1-23 of the Complaint as though fully set forth herein.
`
`25. Defendant
`
`the Nowlan Family Trust’s conduct, as described herein,
`
`including their
`
`current (if any) use or intent to use the mark BUCK ROGERS, constitutes unfair
`
`competition because it falsely designates the origins as to the affiliation, connection and
`
`association between Defendant’s services and Plaintiff‘s services, in violation of Section
`
`43(a) of the Lanham Act. 15 U.S.C. § 1 l25(8).
`
`26. Upon information and belief,
`
`the Defendant,
`
`through its agents,
`
`servants, and
`
`representatives, and particularly Attorney John J. O’Malley, has sent correspondence to
`
`various entities, businesses, and customers in the comic book and entertainment industry
`
`claiming to have created and implying and inferring that the use of Buck Rogers will be
`
`legally sanctioned and that by being associated with the Dille Family Trust and/or using
`
`Buck Rogers and/or even working on Buck Rogers will subject them to potential liability
`
`and lawsuit which constitutes a false description and representation regarding the source
`
`of trademark rights in the use of Buck Rogers.
`
`27. As a direct and proximate result of Defendant’s wrongful conduct, Defendant has caused
`
`Plaintiff irreparable harm and injury. Plaintiff has faced resistance and or rejection of
`
`various entertainment and/or publishing opportunities as a result of Defendant’s willful
`
`conduct to deceive publishers as to the origin of the BUCK ROGERS mark.
`
`28. Defendant’s acts of infringement and unfair competition are knowing and willful.
`
`

`

`Case 2:15-cv-06231-WB Document 1 Filed 11/19/15 Page 9 of 11
`
`29.
`
`Unless Defendant is enjoined from their wrongful conduct, Plaintiff will suffer further
`
`irreparable injury and harm, for which it has no adequate remedy at law.
`
`mm
`lUnf irC m e' '
`anttol U.S.C.
`Confusion Mi ake
`r
`ee ti :1
`
`112
`
`30.
`
`31.
`
`32.
`
`33.
`
`34.
`
`Plaintifi' incorporates by reference the allegations contained in paragraphs 1-29 of the
`
`Complaint as though fully set forth herein.
`
`Defendant’s conduct, as described herein, including their current use (if any) or intent to
`
`use the mark BUCK ROGERS, constitutes federal unfair competition because it causes
`
`the likelihood of confusion, mistake and/or deception as to the affiliation, connection,
`
`association between Defendant‘s services and Plaintiff’s services, in violation of Section
`
`43(a) of the Lanham Act, 15 U.S.C. § l 125(a).
`
`Upon information and belief, the Defendant has sent correspondence to various entities in
`
`the comic book and entertainment industry claiming to have superior rights to the BUCK
`
`ROGERS mark.
`
`Defendant’s conduct is a willful attempt to cause confusion, mistake and deception in the
`
`marketplace.
`
`Plaintiff has been forced to expend unnecessary time and money in an attempt to
`
`overcome Defendant‘s conduct. In many instances, Plaintiff has been unable to resolve
`
`the confusion, mistake and deception caused by Defendant, and has lost many publishing
`
`and entertainment contracts as a direct result of Defendant’s willful conduct.
`
`.Moreover, as a result of Defendant’s attempt
`
`to confuse and deceive, Plaintiff's
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`reputation in the industry has been harmed and has come under scrutiny of various
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`entertainment and publishing entities.
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`

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`Case 2:15-cv—06231—WB Document 1 Filed 11/19/15 Page 10 of 11
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`36. As a direct and proximate result of Defendant‘s wrongful conduct, Defendant has caused
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`Plaintiff irreparable harm and injury.
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`. 37. Defendant’s acts of infringement and unfair competition are knowing and willful.
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`38. Unless Defendant is enjoined from their wrongful conduct, Plaintifi" will suffer further
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`irreparable injury and harm, for which it has no adequate remedy at law.
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`QQLJflT—“l
`APPEAL OF lflE HEAL "fl DE§I§IQN
`PPO IT ON N
`1200643
`
`39. Plaintiff incorporates by reference the allegations contained in paragraphs 1-38 of the
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`Complaint as though fully set forth herein.
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`40. Plaintiff hereby appeals from the decision of the Trademark Trial and Appeal Board
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`("'I'I'AB") of the United States Patent and Trademark Office ("PTO") in Opposition No.
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`91200643, dated September 25, 2015, the appeal being to the present Court - the Federal
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`Court of the Eastern District of Pennsylvania pursuant to 15 U.S.C. § lO7l(b) and 37
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`CPR. 2.145 (c)(4), c), which provide that an [opposer] to the registration of a trademark
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`who is dissatisfied with the decision of the TTAB may “have remedy by a civil action[.]”
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`41.
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`On January 15, 2009, Defendant
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`filed an intent-to-use application to register the
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`trademark BUCK ROGERS in classes (009, 016, 020, 028 and 041) and for a variety of
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`goods including, “motion picture films featuring science fiction and adventure, audio-
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`visual recordings featuring science fiction and adventure, sound recordings featuring
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`musical soundtracks, a series of books featuring a collection of comic strips, toy action
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`figures, non-downloadable television programs, and figurines made of plastic” (the
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`“Application”). The PTO examined the Application and published the Application for
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`

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`Case 2:15-cv-06231-WB Document 1 Filed 11/19/15 Page 11 of 11
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`opposition on June 14, 20] l. The DFT filed a Notice of Opposition with the TTAB on or
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`about July 12, 201 l (the “Opposition”).
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`42. The TTAB received briefing by the parties, heard oral argument on September 3, 2015,
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`and issued its decision on September 25, 2015 (the “Decision”). The Decision dismissed
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`the Opposition. See Exhibit “B". Defendant’s Application to register the BUCK
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`ROGERS mark in the USPTO, as ordered by the TTAB, will irreparably damage Plaintiff
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`and Plaintiff‘s goodwill in the BUCK ROGERS mark.
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`43. The TTAB ruled evidence of Plaintift‘s priority was insufficient. Evidence of Plaintist
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`priority should be submitted to, and considered by, this Court in this matter. Upon
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`information and belief.
`
`if evaluated on the merits, Plaintiff‘s bases for opposing
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`Defendant’s Application represent a valid ground to prevent
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`the registration of the
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`opposed BUCK ROGERS mark. The DFT. as the losing party in the Decision,
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`is
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`dissatisfied with the Decision and hereby appeals the Decision by civil action in this
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`Court pursuant to 15 U.S.C. § l07l(b)(l) and hereby requests a trial de novo.
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`COUNT IV
`
`UNDE
`HE AP L CABLE T NDARD OF REV W. THE
`URT
`DOES NOT GIVE MY EEIGHT TO THE TTAB’S FACTUAL
`OR LEGAL FINDING§§ APPEAL OF THE FINAL TTAB
`D CISION IN OPPOSITIO N0. 91200643
`
`44. The Plaintiff incorporates by reference the allegations contained in paragraphs 1 — 43 of
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`the Complaint as though fully set forth herein.
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`45. Under controlling precedent, see See SwatchAG v. Beehive Wholesale. LLC, 739 F.3d
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`150,156 (4th Cir. 2014)., 739 F.3d 150, the standard of review in this case will be de
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`novo if, as is exceedingly likely, any party opts to introduce into the record any new
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`evidence. See also, e.g., TimexGroup USA, Inc. v. Focart'no, No. l:l2-cv~1080, 20l4 WL
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`
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`—_—___J
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`

`

`Case 2:15-cv-06231-WB Document 1-1 Filed 11/19/15 Page 1 of 12
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`130977, at "' 1-2 (ED. Va. Jan. 13, 20M) (applying Swatch); ZAO Odessky Konjatschnyi
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`Zawod v. 812! "Balanarklnvesl. No.
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`l:l2-cw515.2014 WL785295, at *ll n.7 (ED.
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`Va.Feb.2l,2014) (same). Under a de novo standard,
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`the Court reviews the entire
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`evidentiary record anew, as if the case were filed as one of original jurisdiction. Under a
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`de novo standard, the Court owes no deference to the TI‘AB's Order. The Court thus
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`would not give any weight to the factual or legal findings in the TI'AB Order.
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`46. The TTAB ruled evidence of Plaintist priority was insufficient. Evidence of Plaintiffs
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`priority should be submitted to, and considered by,
`
`this Court in this matter. Upon
`
`information and belief,
`
`if evaluated on the merits, Plaintiff’s bases for opposing
`
`Defendant’s Application represent a valid ground to prevent the registration of the
`
`opposed BUCK ROGERS mark. The DFT, as the losing party in the Decision,
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`is
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`dissatisfied with the Decision and hereby appeals the Decision by civil action in this
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`Court pursuant to 15 U.S.C. § IO7I(b)(l) and hereby requests a trial de novo. -
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`COMMON LAW INFRINGEMENT, UNF'AIR COMEETITION. AER
`INTERFERENCE
`
`C
`
`NT V
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`47. Plaintiff incorporates by referenced the allegations contained in paragraphs 1- 46 of the
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`Complaint as though fully set forth herein.
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`48. The acts of the Defendant and Defendant’s use of the BUCK ROGERS mark constitute
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`trademark infringement.
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`in violation of the common law of the Commonwealth of
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`Pennsylvania, generally and codified at 54 Pa C.S.A. §ll26 Common Law Rights
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`Trademark.
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`49. Upon information and belief, Defenth has intentionally appropriated Plaintifi‘s Mark
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`with the intent of causing confusion, mistake, and deception as to the source of any
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`
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`

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`Case 2:15—cv-06231-WB Document 1—1 Filed 11/19/15 Page 2 of 12
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`infringing products, with the intent for the public to see those infringing products as those
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`of the Dille Family Trust.
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`50. The foregoing acts of the Defendant have injured and will continue to injure Plaintiff by
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`depriving it of sales of its genuine products, by injuring its business reputation, by
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`passing off any of Defendant’s infringing products as Plaintiffs genuine products, all in
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`violation of the common law of the Commonwealth of Pennsylvania.
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`51. As a direct and proximate result of Defendant’s wrongful conduct, Defendant has caused
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`Plaintiff irreparable harm and injury.
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`52. Defendant’s acts of infringement and unfair competition are knowing and willful.
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`53. Unless Defendant is enjoyed from their wrongful conduct, Plaintiff will suffer further
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`irreparable injury and harm, for which it has no adequate remedy at law.
`
`COUNT VI
`
`A QECLAEA ! ION TflAT THE NOWLfl FAMILY TRUST
`NEVER HAD A BONA FIDE INTENT TO USE THE BUCK ROGERS MARK
`
`WHEN IT FILED IT§ APPLlCATION
`
`54. Plaintiff incorporates by referenced the allegations contained in paragraphs 1- 53 of the
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`Complaint as though fully set forth herein.
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`55. Upon information and belief, Plaintiff assets that the Defendant did not have a bona fide
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`intent to use the BUCK ROGERS mark in commerce at the time it filed its application;
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`but filed the application merely to reserve a right in a mark.
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`56. Plaintiff respectfully asks this Court to declare Defendant’s application void ab im'tio and
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`that it never had a bona fide intent to use the BUCK ROGERS mark in commerce at the
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`time it submitted its application.
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`

`

`Case 2:15-cv-06231-WB Document 1-1 Filed 11/19/15 Page 3 of 12
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`CQLJNT V!!
`A DECLARATION TflAT THE QILLE FAMILY TRUST flA§ PRIORITY AND
`COMMON LAW RIGHTS
`EITH RESPECT TO THE BUCK ROGERS MARK
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`57. Plaintiff incorporates by referenced the allegations contained in paragraphs 1- 56 of the
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`Complaint as though fully set forth herein.
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`58. Plaintifi‘ used the BUCK ROGERS Trademark prior to the time Defendant filed its
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`Application and thus, has superior rights. Defendant has never used the Mark and is not
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`entitled to registration of the BUCK ROGERS Mark on or in connection with the goods
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`identified in the Application. Moreover, the Dille Family Trust has trademark rights in
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`the BUCK ROGERS mark that are superior to any rights the Nowlan Family Trust might
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`have in the term “BUCK ROGERS“ because DFT’s use created secondary meaning and
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`trademark significance. Plaintiff, either by itself or through a successor-in-interest, has
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`bona fide use of its Mark on its goods and services distributed and sold in United States
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`commerce. Specifically, Plaintiff has had valid and continuous use of the mark BUCK
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`ROGERS in interstate commerce in the United States since 1929. Plaintiff has developed
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`extremely valuable goodwill in the BUCK ROGERS mark by virtue of its longevity of
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`usage in commerce, expenditure of substantial time and money in promotional activities,
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`as well as the high quality of its products and services. Plaintiff‘s use in commerce of its
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`BUCK ROGERS mark has included, inter alia, the BUCK ROGERS strips, comic books,
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`movies, T.V.
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`shows, and recordings,
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`radio programs, as well as distribution of
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`dolls/action figures, figurines, art posters, printed materials, cigarette case, card holders,
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`bags, mugs, t-shirts, my guns, board games and role playing games, toys, and rocket ship
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`models in connection with the Mark throughout the United States and the world.
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`

`

`Case 2:15-cv-06231—WB Document 1—1 Filed 11/19/15 Page 4 of 12
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`59. Plaintiff’s use of its BUCK ROGERS mark in commerce has been recognized in third-
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`party news articles and other media written about the BUCK ROGERS mark and its
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`products. Moreover, Plaintiff has used the BUCK ROGERS mark in commerce since
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`1929, decades prior to the Defendant’s application date of January 15, 2009, and Plaintiff
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`has continuously used the Mark in commerce from January 15, 2009, through the present
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`day. Through this use. as well as international use and registrations of the BUCK
`
`ROGERS mark, Plaintiff has established and maintained common law rights in the
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`BUCK ROGERS mark in the United States and throughout the world. Plaintiff’s prior
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`use of the BUCK ROGERS mark would satisfy the requirements for federal registration
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`of the Mark. Plaintiff has no other remedy at law. Plaintifi‘ respectfully asks this Court
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`to declare that it has priority and common law rights with respect to the BUCK ROGERS
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`mark.
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`ll
`COUNT
`SPECIFIC PERFORMANCE
`
`60.
`
`