Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA767585
`08/30/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91229773
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`EB IP Holdings, LLC
`
`Jeffrey B. Sladkus, Esq.
`The Sladkus Law Group
`1827 Powers Ferry RoadBuilding 6, Suite 200
`Atlanta, GA 30339
`UNITED STATES
`jeff@sladlaw.com, jason@sladlaw.com, mandy@sladlaw.com
`
`Motion to Suspend for Civil Action
`
`Jeffrey B. Sladkus
`
`jeff@sladlaw.com, jason@sladlaw.com, mandy@sladlaw.com
`
`/Jeffrey B. Sladkus/
`
`08/30/2016
`
`PDLDRIVERS Motion to Suspend - FINAL.PDF(293876 bytes )
`EB IP Holdings v. Pro-Driver Leasing Complaint.pdf(654946 bytes )
`
`
`ESTTA767585
`08/30/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91229773
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`EB IP Holdings, LLC
`
`Jeffrey B. Sladkus, Esq.
`The Sladkus Law Group
`1827 Powers Ferry RoadBuilding 6, Suite 200
`Atlanta, GA 30339
`UNITED STATES
`jeff@sladlaw.com, jason@sladlaw.com, mandy@sladlaw.com
`
`Motion to Suspend for Civil Action
`
`Jeffrey B. Sladkus
`
`jeff@sladlaw.com, jason@sladlaw.com, mandy@sladlaw.com
`
`/Jeffrey B. Sladkus/
`
`08/30/2016
`
`PDLDRIVERS Motion to Suspend - FINAL.PDF(293876 bytes )
`EB IP Holdings v. Pro-Driver Leasing Complaint.pdf(654946 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EB IP Holdings, LLC
`
`
`
`
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`Plaintiff,
`
`
`v.
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`
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`Pro-Driver Leasing Systems, Inc.,
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`Defendant.
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`Opposition No. 91229773
`
`Serial No. 86908684
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`
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`
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`
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`PLAINTIFF’S MOTION TO SUSPEND
`
`Plaintiff EB IP Holdings, LLC (“Plaintiff”) hereby moves to suspend this proceeding
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`pending the outcome of a civil action between the parties in federal district court pursuant to
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`TBMP 510. A copy of the Complaint filed by EB IP Holdings, LLC against Defendant in the
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`United States District Court for the Southern District of Texas, case 4:16-cv-01659, is attached.
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`Respectfully submitted this 30th day of August, 2016.
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`
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`
`
`
`
`
`
`/Jeffrey B. Sladkus/
`Jeffrey B. Sladkus, Esq.
`Georgia Bar No. 651220
`Mark L. Seigel, Esq.
`Of Counsel
`Georgia Bar No. 634617
`The Sladkus Law Group LLC
`1827 Powers Ferry Rd NE
`Bldg 6 Ste 200
`Atlanta, Georgia 30339
`404-252-0900 (phone)
`404-252-0970 (fax)
`
`
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`1
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` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EB IP Holdings, LLC
`
`
`
`
`
`Plaintiff,
`
`
`v.
`
`
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`
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`
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`Pro-Driver Leasing Systems, Inc.,
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`Defendant.
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`Opposition No. 91229773
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`Serial No. 86908684
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 30, 2016 I served a true and correct copy of the foregoing
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`PLAINTIFF’S MOTION TO SUSPEND on Counsel for Defendant by First Class Mail addressed
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`JOHN P. FREDRICKSON
`BOYLE FREDRICKSON, S.C.
`840 N. PLANKINTON AVE.
`MILWAUKEE, WISCONSIN UNITED STATES 53203
`
`/Jeffrey B. Sladkus/
`Attorney for Plaintiff
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`as follows:
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`4846-8121-1703, v. 1
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`2
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`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 1 of 19
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`IN THE UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`
`
`
`
`CIVIL ACTION NO. _____________
`
`
`EB IP Holdings LLC, and Professional
`Drivers
`of Georgia,
`Inc.
`d/b/a
`ProDrivers
`
` Plaintiffs,
`
`v.
`
`Pro-Driver Leasing Systems, Inc., and
`PDL, Inc.,
`
` Defendants.
`
`
`
`Plaintiffs EP IP Holdings LLC and Professional Drivers of Georgia, Inc.
`
`COMPLAINT
`
`(collectively, “Plaintiffs”), hereby bring this complaint against Defendants Pro-
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`Driver Leasing Systems, Inc., and PDL, Inc. (collectively, “Defendants”):
`
`PARTIES
`
`1.
`
`Plaintiff EB IP Holdings LLC is a Delaware limited liability company
`
`(“EB IP Holdings”) with its principal place of business at 1040 Crown Pointe
`
`Parkway, Atlanta, Georgia 30338.
`
`2.
`
`Plaintiff Professional Drivers of Georgia, Inc. d/b/a ProDrivers
`
`(“ProDrivers”) is a Georgia corporation with a principal place of business at 1040
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`Crown Pointe Parkway, Atlanta, Georgia 30338.
`
`-1-
`
`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 2 of 19
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`3.
`
`Upon information and belief, Defendant Pro-Driver Leasing Systems,
`
`Inc. is a Wisconsin corporation with a principal place of business at 6015 W.
`
`Forest Home, Unit 3, Milwaukee, Wisconsin 53220.
`
`4. Upon information and belief, Defendant PDL, Inc. is a Wisconsin
`
`corporation with a principal place of business at 6015 W. Forest Home, Unit 3,
`
`Milwaukee, Wisconsin 53220.
`
`JURISDICTION AND VENUE
`
`5.
`
`This
`
`is
`
`an
`
`action
`
`for
`
`trademark
`
`infringement,
`
`trademark
`
`counterfeiting, and unfair competition arising under the Trademark Act of 1946, as
`
`amended, 15 U.S.C. § 1051 et seq., and for common law trademark infringement
`
`and unfair competition.
`
`6.
`
`This Court has jurisdiction over all causes of action set forth herein
`
`pursuant to 15 U.S.C. § 1121, 28 U.S.C. §§ 1331, 1338(a) and (b), and the
`
`supplemental jurisdiction of the Court as provided in 28 U.S.C. § 1367.
`
`7.
`
`Personal jurisdiction over the Defendants is proper in this jurisdiction,
`
`pursuant to Tex. Civ. Prac. & Rem. Code § 17.042, on the grounds that Defendants
`
`transact regular and continuous business within the State of Texas and within this
`
`judicial district and division, and committed acts referenced in this Complaint
`
`within the State of Texas and within this judicial district and division.
`
`-2-
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`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 3 of 19
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`8.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §
`
`1391(b) because this Court has personal jurisdiction over Defendants within this
`
`judicial district and division.
`
`RELEVANT FACTS
`
`
`9.
`
`Plaintiff Professional Drivers of Georgia, Inc. (“ProDrivers”) is the
`
`nation’s leading provider of temporary driver staffing and other services related to
`
`employment in the trucking industry.
`
`10. Since at least as early as August 1995, ProDrivers, either directly or
`
`through its predecessors-in-interest, has used the mark PRODRIVERS in
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`advertising for its services, and has rendered those services in interstate commerce.
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`ProDrivers has used the mark PRODRIVERS continuously since that date and has
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`not abandoned the mark.
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`11. ProDrivers has offices in 40 cities in 23 states, including Chicago,
`
`Illinois; Houston, Texas; and Kohler, Wisconsin.
`
`12. Plaintiff EB IP Holdings was established in 2015 as an intellectual
`
`property holding company.
`
`13. EB IP Holdings owns U.S. Trademark Registration No. 2,062,248 for
`
`the mark PRODRIVERS, which was filed on November 7, 1995, and registered on
`
`May 13, 1997, for “providing temporary employment agency services, namely
`
`truck drivers, heavy equipment operators and transportation related employees”
`-3-
`
`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 4 of 19
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`(the “ `248 Registration”). The `248 Registration is valid and incontestable. A true
`
`and correct extract from the U.S. Trademark Office’s online database summarizing
`
`the details of this registration is attached as Exhibit A.
`
`14. EB IP Holdings owns U.S. Trademark Registration No. 2,821,668 for
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`the mark PRODRIVERS ADVANTAGE & Design, which was registered on
`
`March 9, 2004, for “employee leasing services, namely leasing of truck drivers,
`
`heavy equipment operators and other transportation-related employees” (the “ `668
`
`Registration”). The `668 Registration is valid and incontestable. A true and correct
`
`extract from the U.S. Trademark Office’s online database summarizing the details
`
`of this registration is attached as Exhibit B.
`
`15. EB IP Holdings owns U.S. Service Mark Registration No. 2,821,674
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`for the mark PRODRIVERS ADVANTAGE (word), which was registered on
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`March 9, 2004, for “employee leasing services, namely leasing of truck drivers,
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`heavy equipment operators and other transportation-related employees” (the “ `674
`
`Registration”). The `674 Registration is valid and incontestable. A true and correct
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`extract from the U.S. Trademark Office’s online database summarizing the details
`
`of this Registration is attached as Exhibit C. (The marks PRODRIVERS,
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`PRODRIVERS ADVANTAGE (word), and PRODRIVERS ADVANTAGE &
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`Design are collectively referred to as the “ProDrivers Marks.”)
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`-4-
`
`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 5 of 19
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`16. EB IP Holdings has licensed the ProDrivers Marks to ProDrivers, and
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`exercises control over the quality of services offered by ProDrivers under the
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`ProDrivers Marks.
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`17. As a result of the widespread advertising and marketing of their
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`services under the ProDrivers Marks, together with substantial sales of those
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`services, Plaintiffs have established considerable goodwill in the ProDrivers
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`Marks, which are valuable source indicators.
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`18. Defendants provide temporary driver staffing and other services
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`related to employment in the trucking industry in direct competition with Plaintiffs.
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`19. Defendants advertise their services under the marks PRODRIVER and
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`PDL DRIVERS.
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`20. On information and belief, Defendants offer their services at locations
`
`in Houston, Texas; Elmhurst, Illinois; and Milwaukee and Sheboygan, Wisconsin.
`
`21. On
`
`information
`
`and belief, Defendants
`
`first began using
`
`PRODRIVER after August 1995.
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`22. On
`
`information
`
`and belief, Defendants
`
`first began using
`
`PRODRIVER after November 7, 1995.
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`23. On information and belief, Defendants first began using PDL
`
`DRIVERS after August 1995.
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`-5-
`
`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 6 of 19
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`24. On information and belief, Defendants first began using PDL
`
`DRIVERS after November 7, 1995.
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`25. On information and belief, Defendants first began using PDL
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`DRIVERS after March 9, 2004.
`
`26. Defendants had constructive knowledge of Plaintiffs’ PRODRIVERS
`
`mark since at least May 13, 1997, the date of registration on the Principal Register
`
`of the ‘248 Registration, pursuant to 15 U.S.C. § 1072.
`
`27. Notwithstanding such notice, Defendants have used and continue to
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`use PRODRIVER in advertising their services in Texas, Wisconsin, Illinois, and
`
`on the internet. For example, Defendants advertise their “PRODRIVER” services,
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`which include driver staffing and related services, on “prodriverleasing.com/our-
`
`services.” See Exhibit D (true and correct copy of web page from
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`prodriverleasing.com/our-services). Defendants also direct customers to various
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`“PRODRIVER” locations in Wisconsin, Illinois, and Texas on a web page
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`accessible at “prodriverleasing.com/contact-us/locations,” where
`
`they
`
`invite
`
`consumers to contact them using the nationwide toll-free number 866.PRO.DRIV.
`
`See Exhibit E
`
`(true
`
`and
`
`correct
`
`copy
`
`of web
`
`page
`
`from
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`prodriverleasing.com/contact-us/locations).
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`-6-
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`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 7 of 19
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`28. Notwithstanding such notice, Defendants have used and continue to
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`use PDL DRIVERS in advertising their services in Texas and on the world wide
`
`web.
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`29. Upon
`
`information and belief, PDL DRIVERS is an intended
`
`abbreviation of Pro-Driver Leasing.
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`30. Defendants advertise their services in connection with the nationwide,
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`toll-free number 866-PRO-DRIV.
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`31. Defendants’ use of PRODRIVER and PDL DRIVERS has caused
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`actual confusion among a significant number of Plaintiffs’ current and prospective
`
`customers and drivers.
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`32. Defendants are using PRODRIVER and PDL DRIVERS without
`
`Plaintiffs’ consent or authorization.
`
`33. Defendants’ actions are willful and in bad faith and have forced
`
`Plaintiffs to bring this action in this Court to protect their trademark rights.
`
`-7-
`
`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 8 of 19
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`COUNT I
`FEDERAL TRADEMARK COUNTERFEITING
`(15 U.S.C. § 1114)
`
`34. The allegations of the preceding paragraphs are incorporated herein
`
`by reference as if fully set forth.
`
`35. Defendants’ PRODRIVER mark is a spurious mark that is identical
`
`with, or substantially indistinguishable from, Plaintiffs’ registered PRODRIVERS
`
`mark.
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`36. Defendants’ willful and unauthorized use of PRODRIVER constitutes
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`a use in commerce of a reproduction, counterfeit, copy, or colorable imitation of
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`Plaintiffs’ PRODRIVERS mark in connection with the sale, offering for sale,
`
`distribution, and/or advertising of services for which Plaintiffs hold a federal
`
`trademark registration, and which use is likely to cause confusion, or to cause
`
`mistake, or to deceive, and will cause current and prospective purchasers and
`
`drivers to falsely believe that Defendants’ services are sponsored by, approved by,
`
`or affiliated with Plaintiffs.
`
`37. Without Plaintiffs’ consent or authorization, Defendants have applied
`
`a reproduction, counterfeit, copy, or colorable imitation of the Plaintiffs’
`
`PRODRIVERS mark onto packaging materials, labels, signs, prints, and used the
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`reproduction, counterfeit, copy, or colorable
`
`imitation of
`
`the mark
`
`in
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`advertisements in commerce and in connection with the sale, offering for sale,
`
`-8-
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`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 9 of 19
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`distribution, and advertising of services for which Plaintiffs hold a federal
`
`trademark registration. Such conduct is likely to cause confusion, or to cause
`
`mistake, or to deceive, and will cause current and prospective purchasers and
`
`drivers to falsely believe that Defendants’ services are sponsored by, approved by,
`
`or affiliated with Plaintiffs, and will result in Defendants unfairly and illegally
`
`benefitting from Plaintiffs’ goodwill.
`
`38. Defendants’ acts constitute trademark counterfeiting in violation of
`
`15 U.S.C. § 1114 and have caused, are causing, and will continue to cause
`
`confusion and other irreparable injury to Plaintiffs unless such acts are enjoined by
`
`this Court, Plaintiffs’ having no adequate remedy at law.
`
`39. Pursuant to 15 U.S.C. § 1117, Plaintiffs are entitled to recover from
`
`Defendants: (1) Defendants’ profits and any actual damages sustained by Plaintiffs,
`
`or statutory damages of not more than $200,000 per mark per type of good sold for
`
`Defendants’ use of a counterfeit mark, and (2) the costs of the instant action.
`
`40. Defendants’ have used the PRODRIVER mark knowing such mark is
`
`a counterfeit mark in connection with the sale, offering for sale, or distribution of
`
`its services. Therefore, Plaintiffs are entitled to recover three times their actual
`
`damages or Defendants’ profits, whichever amount is greater, or may elect to
`
`recover statutory damages of not more than $2,000,000 per counterfeit mark per
`
`type of service sold pursuant to 15 U.S.C. § 1117.
`
`-9-
`
`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 10 of 19
`
`COUNT II
`FEDERAL TRADEMARK INFRINGEMENT
`(15 U.S.C. § 1114)
`
`41. The allegations of the preceding paragraphs are incorporated herein
`
`by reference as if fully set forth.
`
`42. Defendants’ unauthorized use of PRODRIVER and PDL DRIVERS
`
`constitutes a use in commerce of a reproduction, counterfeit, copy, or colorable
`
`imitation of the Plaintiffs’ ProDrivers Marks in connection with the sale, offering
`
`for sale, distribution, and/or advertising of services that are identical to the services
`
`provided under Plaintiffs’ registered trademarks. Defendants’ use of PRODRIVER
`
`and PDL DRIVERS is likely to cause confusion, to cause mistake, or to deceive,
`
`and has caused and will cause actual and prospective purchasers and drivers to
`
`falsely believe that Defendants’ services are sponsored by, approved by, or
`
`affiliated with Plaintiffs.
`
`43. Defendants’ use of PRODRIVER and PDL DRIVERS has caused, is
`
`causing, and will continue to cause confusion and other irreparable injury to
`
`Plaintiffs unless such use is immediately and permanently enjoined by this Court.
`
`44. On information and belief, Defendants’ aforementioned acts have
`
`been and are being committed with the knowledge of Plaintiffs’ trademarks and
`
`Federal registrations, and with knowledge that such acts are causing confusion, or
`
`are likely to cause confusion, to cause mistake, or to deceive.
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`-10-
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`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 11 of 19
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`45. Defendants’ acts are intentional, willful, and maliciously calculated to
`
`cause confusion, to cause mistake, or to deceive.
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`46. Defendants’ use in commerce of marks confusingly similar to
`
`Plaintiffs’ ProDrivers Marks is an infringement of Plaintiffs’ rights in and to its
`
`federally registered trademarks in violation of 15 U.S.C. § 1114.
`
`47. Pursuant to 15 U.S.C. § 1117, Plaintiffs are entitled to recover:
`
`(1) Defendants’ profits, (2) any damages sustained by Plaintiffs, and (3) the costs
`
`of the instant action. Further, based on the willful nature of Defendants’ violations
`
`of Plaintiffs’ trademark rights, this is an exceptional case, and Plaintiffs are entitled
`
`to their reasonable attorney fees.
`
`COUNT III
`FEDERAL UNFAIR COMPETITION
`(15 U.S.C. § 1125(a))
`
`48. The allegations of the preceding paragraphs are incorporated herein
`
`by reference as if fully set forth.
`
`49.
`
`In marketing their services under PRODRIVER and PDL DRIVERS,
`
`Defendants have affixed, applied, annexed, or used in connection with their
`
`services a false designation of origin or a false or misleading description or
`
`representation of fact that is likely to cause confusion, to cause mistake, or to
`
`deceive others to believe that Defendants’ services are made by, sponsored by,
`
`approved by, originate with, or are affiliated with Plaintiffs. Defendants have
`
`-11-
`
`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 12 of 19
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`caused such services to be offered for sale or use in interstate commerce with
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`knowledge of such false designation of origin or description or representation.
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`50. Defendants have willfully promoted in interstate commerce the sale of
`
`their services in a manner so as to designate falsely an origin or association with
`
`Plaintiffs, with the Plaintiffs’ ProDrivers Marks, and with Plaintiffs’ services, so as
`
`to cause confusion or mistake among current and prospective purchasers and
`
`drivers as to the true origin, source, sponsorship, or affiliation of Defendants’
`
`services, all to Defendants’ profit and Plaintiffs’ damage.
`
`51. Plaintiffs have been irreparably damaged by Defendants’ use of such
`
`false designations and/or representations, and will continue to be irreparably
`
`damaged unless Defendants’ acts are enjoined by this Court, Plaintiffs having no
`
`adequate remedy at law.
`
`52. Defendants have intentionally traded on the goodwill established by
`
`Plaintiffs in the ProDrivers Marks, through Defendants’ advertising and sales of
`
`identical services under virtually identical marks, and by marketing their services
`
`under virtually identical marks in interstate commerce.
`
`53. Defendants’ acts, as set forth above, constitute unfair competition,
`
`false designation of origin,
`
`and
`
`false description
`
`in violation of
`
`15 U.S.C. § 1125(a).
`
`-12-
`
`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 13 of 19
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`54. Pursuant to 15 U.S.C. § 1117, Plaintiffs are entitled to recover:
`
`(1) Defendants’ profits, (2) any damages sustained by Plaintiffs, and (3) the costs
`
`of the instant action. Further, based on the willful nature of Defendants’ violation
`
`of Plaintiffs’ trademark rights, this is an exceptional case and Plaintiffs’ are
`
`entitled to recover their reasonable attorneys’ fees.
`
`COUNT IV
`COMMON LAW TRADEMARK INFRINGEMENT
`
`55. The allegations of the preceding paragraphs are incorporated herein
`
`by reference as if fully set forth.
`
`56. As a result of the public’s association of the ProDrivers Marks with
`
`Plaintiffs, Defendants’ use of deceptively similar marks in connection with their
`
`services, which are the same as or substantially the same as Plaintiffs’ services, has
`
`caused and is likely to continue to cause confusion, to cause mistake, or to deceive.
`
`57. On information and belief, Defendants have offered for sale and sold
`
`their services with prior knowledge of the Plaintiffs’ Marks, and Defendants’ sale
`
`of such services was and is for the willful and calculated purpose of trading on
`
`Plaintiffs’ goodwill and business reputation as embodied in and symbolized by the
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`ProDrivers Marks.
`
`58. Defendants’ conduct, as set forth above, constitutes infringement of
`
`Plaintiffs’ Texas common law rights in and to the ProDrivers Marks, which has
`
`-13-
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`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 14 of 19
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`irreparably damaged and will continue to irreparably damage Plaintiffs, together
`
`with its goodwill and reputation, unless Defendants are enjoined and restrained by
`
`this Court, Plaintiffs having no adequate remedy at law.
`
`COUNT V
`COMMON LAW UNFAIR COMPETITION
`
`59. The allegations of the preceding paragraphs are incorporated herein
`
`by reference as if fully set forth.
`
`60. Defendant’s services and Plaintiffs’ services are offered throughout
`
`the United States (including Texas), placing the parties in the same geographical
`
`areas and market. Plaintiff ProDriver has continuously and consistently used the
`
`ProDrivers Marks in the U.S. and market, in general. As a consequence,
`
`Defendants’ unauthorized use of “ProDriver” and “PDL Drivers” as trademarks
`
`and trade names is likely to and has actually caused consumer confusion
`
`61. On information and belief, Defendants have developed, promoted, and
`
`sold their services in such a manner as to inevitably suggest an association or
`
`affiliation with or sponsorship or approval by Plaintiffs, so as to cause, or likely
`
`cause, confusion or mistake among current and prospective customers and drivers
`
`as to the origin or sponsorship of Defendants’ services, all to Defendants’ profit
`
`and Plaintiffs’ damage.
`
`-14-
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`
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`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 15 of 19
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`62. The unauthorized use of “ProDriver” and “PDL Drivers” as
`
`trademarks and trade names was done with wanton disregard of the established
`
`goodwill of Plaintiff, causing damage to Plaintiff.
`
`63. Defendants’ conduct, as set forth above, constitutes common law
`
`unfair competition under Texas law, which has irreparably damaged and will
`
`continue to irreparably damage Plaintiffs, together with their goodwill and
`
`reputation, unless Defendants are enjoined and restrained by this Court, Plaintiffs
`
`having no adequate remedy at law.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiffs are entitled to and pray for relief as follows:
`
`(i)
`
`That Defendants, their officers, agents, servants, employees and
`
`attorneys, and all persons acting under their permission and authority, be
`
`preliminarily and permanently enjoined and restrained from offering for sale,
`
`selling and/or authorizing the offering for sale and sale of any goods or services
`
`under or in connection with PRODRIVER or PDL DRIVERS, from advertising
`
`and promoting and/or authorizing others to advertise and promote the sale of any
`
`goods or services under PRODRIVER or PDL DRIVERS, or from using
`
`PRODRIVER or PDL DRIVERS or any other designation, trademark, or service
`
`mark in any other manner that is likely to cause confusion, mistake, or deception as
`
`-15-
`
`
`
`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 16 of 19
`
`to the source or sponsorship of Defendants’ goods and services or from otherwise
`
`infringing Plaintiffs’ ProDrivers Marks.
`
`(ii)
`
`That this Court order Defendants to deliver up for destruction all
`
`marketing, advertising, documents, signs, packages, forms, advertisements,
`
`letterheads, and/or other representations and means for reproducing the same, or
`
`any printed or recorded material that makes references to or depicts PRODRIVER
`
`or PDL DRIVERS, or any designation or mark similar to Plaintiffs’ ProDrivers
`
`Marks, and to destroy or remove all other uses of marks similar to Plaintiffs’
`
`ProDrivers Marks.
`
`(iii)
`
`That Defendants be directed to file with this Court and serve upon
`
`Plaintiffs, no later than thirty days after the issuance of an injunction, a report in
`
`writing and under oath, setting forth in detail the manner and form in which
`
`Defendants have complied with the injunctions of the immediately preceding
`
`paragraphs and any other provision of this Court’s Order.
`
`(iv)
`
`That an accounting be conducted and judgment rendered against
`
`Defendants for:
`
`a.
`
`all profits received by Defendants from the sale of goods and
`
`services under PRODRIVER, PDL DRIVERS, and any other
`
`trademark, service mark, or other designation confusingly similar to
`
`the Plaintiffs’ ProDrivers Marks;
`
`-16-
`
`
`
`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 17 of 19
`
`b.
`
`all damages in an amount proven at trial resulting from, inter
`
`alia, Defendants’ trademark infringement, unfair competition, false
`
`designation of origin, and false description or representation of
`
`Plaintiffs’ ProDrivers Marks, pursuant to 15 U.S.C. § 1051 et seq.;
`
`c.
`
`a trebling of any such damages or profits awarded, whichever is
`
`greater, for Defendants’ intentional use of a counterfeit mark,
`
`pursuant to 15 U.S.C. § 1117(b); and/or
`
`d.
`
`alternatively, and at Plaintiffs’ election, an award of statutory
`
`damages of not more than $2,000,000 per mark per type of good or
`
`service sold for Defendants’ willful use of a counterfeit mark pursuant
`
`to 15 U.S.C. § 1117(c).
`
`(v)
`
`That Defendants be required to pay to Plaintiffs’ monetary damages to
`
`be used for corrective advertising to be conducted by Plaintiffs.
`
`(vi)
`
`That Plaintiffs have and recover their expenses in this suit, including
`
`but not limited to their reasonable attorneys’ fees and expenses, recoverable not
`
`only under 15 U.S.C. § 1117(a) but also under state law.
`
`(vii)
`
`That Plaintiffs have and recover damages for their loss of business
`
`and goodwill suffered.
`
`(viii)
`
`That Plaintiffs have such other and further relief as this Court may
`
`deem just and proper.
`
`-17-
`
`
`
`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 18 of 19
`
`JURY DEMAND
`
`
`
`Plaintiffs demand a trial by jury of all issues so triable.
`
`-18-
`
`
`
`Case 4:16-cv-01659 Document 1 Filed in TXSD on 06/10/16 Page 19 of 19
`
`Dated: June 10, 2016
`
`Respectfully submitted:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`OF COUNSEL:
`
`Jeffrey B. Sladkus
`(seeking admission pro hac vice)
`Georgia Bar No. 651220
`Email: jeff@sladlaw.com
`Mark L. Seigel
`(seeking admission pro hac vice)
`Georgia Bar No. 634617
`Email: mark@sladlaw.com
`Marcy L. Sperry
`(seeking admission pro hac vice)
`Georgia Bar No. 455561
`Email: marcy@sladlaw.com
`THE SLADKUS LAW GROUP
`1827 Powers Ferry Rd. SE, Blg. 6
`Suite 200
`Atlanta, Georgia 30339
`Phone: 404-252-0300
`
`
`/s/ Tammy J. Terry
`Tammy J. Terry
`Attorney-in-Charge
`TX State Bar No. 24045660
`SDTX No. 562006
`Email: Terry@oshaliang.com
`
`Keelin A. Hargadon
`TX State Bar No. 24087668
`SDTX No. 2708053
`Email: Hargadon@oshaliang.com
`OSHA LIANG LLP
`909 Fannin St., Suite 3500
`Houston, TX 77010
`Phone: (713) 228-8600
`Fax: (713) 228-8778
`
`
`
`
`
`
`
`
`
`
`
`-19-
`
`
`
`Case 4:16-cv-01659 Document 1-2 Filed in TXSD on 06/10/16 Page 1 of 5
`
`Exhibit A
`
`
`
`Status Search SN 2062248
`Page 1 of 4
`Case 4:16-cv-01659 Document 1-2 Filed in TXSD on 06/10/16 Page 2 of 5
`
`Some users are unable to retrieve data from TSDR using the Internet Explorer browser. The USPTO is
`working to resolve the system problem. As a workaround, please open TSDR in a different browser, such as
`Google Chrome, Safari, or Mozilla Firefox. For additional assistance, email TSDR@uspto.gov.
`
`STATUS
`
`DOCUMENTS
`
`Back to Search
`
`
`Generated on: This page was generated by TSDR on 2016-05-20 13:39:54 EDT
`
`Mark: PRODRIVERS
`
`No Image exists
`for this case.
`
`US Serial Number: 75015713
`
`US Registration Number: 2062248
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing Date: Nov. 07, 1
`
`Registration Date: May 13, 19
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered w
`
`Status: The registration has been renewed.
`
`Status Date: Feb. 22, 2007
`
`Publication Date: Jun. 25, 1996
`
`Mark Information
`
`Mark Literal Elements: PRODRIVERS
`
`Standard Character Claim: No
`
`Mark Drawing Type: 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Goods and Services
`
`Notice of Allowance Date: Sep. 17, 1
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`• Brackets [..] indicate deleted goods/services;
`• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`• Asterisks *..* identify additional (new) wording in the goods/services.
`For: providing temporary employment agency services, namely truck drivers, heavy equipment opera
`employees
`
`International Class(es): 035 - Primary Class
`
`U.S Class(es): 100, 101,
`
`Class Status: ACTIVE
`
`http://tsdr.uspto.gov/
`
`5/20/2016
`
`
`
`Status Search SN 2062248
`Page 2 of 4
`Case 4:16-cv-01659 Document 1-2 Filed in TXSD on 06/10/16 Page 3 of 5
`
`Basis: 1(a)
`
`First Use: Aug. 09, 1995
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Use in Commerce: Aug. 09, 1
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: EB IP HOLDINGS, LLC
`
`Owner Address: 1040 CROWN POINTE PARKWAY
`ATLANTA, GEORGIA UNITED STATES 30338
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Attorney/Correspondence Information
`
`Attorney of Record
`Attorney Name: DEBORAH L. LIVELY
`
`Correspondent
`Correspondent
`Name/Address:
`
`HEATHER C. BRUNELLI
`Thompson & Knight LLP
`1722 Routh Street
`Suite 1500
`Dallas, TEXAS UNITED STATES 75201-2533
`
`Phone:
`
`(214) 969-1700
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`State or Country Where
`Organized:
`
`DELAWAR
`
`Fax: (214) 969-
`
`Da t e
`
`Feb. 24, 2016
`
`Feb. 25, 2015
`
`Feb. 18, 2015
`
`De sc ript ion
`
`Proc e e ding N um be r
`
`AUTOMATIC UPDATE OF ASSIGNMENT
`OF OWNERSHIP
`
`ASSIGNMENT OF OWNERSHIP NOT
`UPDATED AUTOMATICALLY
`
`http://tsdr.uspto.gov/
`
`5/20/2016
`
`
`
`Status Search SN 2062248
`Page 3 of 4
`Case 4:16-cv-01659 Document 1-2 Filed in TXSD on 06/10/16 Page 4 of 5
`
`Feb. 18, 2009
`
`Dec. 03, 2008
`
`Aug. 27, 2008
`
`Feb. 22, 2007
`
`Feb. 22, 2007
`
`Feb. 20, 2007
`
`Dec. 18, 2006
`
`Dec. 18, 2006
`
`Dec. 07, 2006
`
`Aug. 06, 2003
`
`May 01, 2003
`
`May 01, 2003
`
`May 13, 1997
`
`Mar. 24, 1997
`
`Mar. 03, 1997
`
`Feb. 18, 1997
`
`Feb. 17, 1997
`
`Feb. 08, 1997
`
`Dec. 10, 1996
`
`Sep. 17, 1996
`
`Jun. 25, 1996
`
`May 24, 1996
`
`Mar. 27, 1996
`
`Mar. 14, 1996
`
`ASSIGNMENT OF OWNERSHIP NOT
`UPDATED AUTOMATICALLY
`
`ASSIGNMENT OF OWNERSHIP NOT
`UPDATED AUTOMATICALLY
`
`ASSIGNMENT OF OWNERSHIP NOT
`UPDATED AUTOMATICALLY
`
`TEAS CHANGE OF CORRESPONDENCE
`RECEIVED
`
`REGISTERED AND RENEWED (FIRST
`RENEWAL - 10 YRS)
`
`60132
`
`REGISTERED - SEC. 8 (10-YR)
`ACCEPTED/SEC. 9 GRANTED
`
`ASSIGNED TO PARALEGAL
`
`60132
`
`REGISTERED - COMBINED SECTION 8
`(10-YR) & SEC. 9 FILED
`
`PAPER RECEIVED
`
`CASE FILE IN TICRS
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED
`& SEC. 15 ACK.
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15
`FILED
`
`PAPER RECEIVED
`
`REGISTERED-PRINCIPAL REGISTER
`
`ALLOWED PRINCIPAL REGISTER - SOU
`ACCEPTED
`
`PREVIOUS ALLOWANCE COUNT
`WITHDRAWN
`
`PREVIOUS ALLOWANCE COUNT
`WITHDRAWN
`
`ALLOWED PRINCIPAL REGISTER - SOU
`ACCEPTED
`
`STATEMENT OF USE PROCESSING
`COMPLETE
`
`USE AMENDMENT FILED
`
`NOA MAILED - SOU REQUIRED FROM
`APPLICANT
`
`PUBLISHED FOR OPPOSITION
`
`NOTICE OF PUBLICATION
`
`APPROVED FOR PUB - PRINCIPAL
`REGISTER
`
`EXAMINER'S AMENDMENT MAILED
`
`http://tsdr.uspto.gov/
`
`5/20/2016
`
`
`
`Status Search SN 2062248
`Page 4 of 4
`Case 4:16-cv-01659 Document 1-2 Filed in TXSD on 06/10/16 Page 5 of 5
`
`Maintenance Filings or Post Registration Information
`
`Affidavit of Continued Use: Section 8 - Accepted
`
`Affidavit of Incontestability: Section 15 - Accepted
`
`Renewal Date: May 13, 2007
`
`TM Staff and Location Information
`
`TM Staff Information - None
`File Location
`Current Location: POST REGISTRATION
`
`Assignment Abstract Of Title Information - Click to Load
`
`Proceedings - Click to Load
`
`Date in Location: Feb. 22, 2
`
`http://tsdr.uspto.gov/
`
`5/20/2016
`
`
`
`Case 4:16-cv-01659 Document 1-3 Filed in TXSD on 06/10/16 Page 1 of 5
`
`Exhibit B
`
`
`
`Status Search SN 2821668
`Page 1 of 4
`Case 4:16-cv-01659 Document 1-3 Filed in TXSD on 06/10/16 Page 2 of 5
`
`Some users are unable to retrieve data from TSDR using the Internet Explorer browser. The USPTO is
`working to resolve the system problem. As a workaround, please open TSDR in a different browser, such
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