Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA817890
`
`Filing date:
`
`05/01/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91232366
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Menudo International, LLC
`
`RALPH H CATHCART
`LADAS & PARRY LLP
`1040 AVENUE OF THE AMERICAS
`NEW YORK, NY 10018-3738
`UNITED STATES
`rcathcart@ladas.com, dprahl@ladas.com, jkwon@ladas.com, rroa@ladas.com
`
`Motion to Suspend for Civil Action
`
`Ralph H. Cathcart
`
`rcathcart@ladas.com, dprahl@ladas.com, jkwon@ladas.com, rroa@ladas.com
`
`/Ralph H. Cathcart/
`
`05/01/2017
`
`Consented Motion to Suspend for Civil Action - Opposition IMP Hold-
`ings.pdf(1067543 bytes )
`Declaration of Ralph H. Cathcart - Opposition IMP Holdings.pdf(4233133 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`___________________________________________________________________ X
`
`IMP HOLDINGS LLC,
`
`Opposer,
`
`v.
`
`: Opposition No. 91/232,366
`Application No. 87/056,545
`
`MENUDO INTERNATIONAL, LLC,
`
`Applicant.
`
`___________________________________________________________________X
`
`APPLICANT’S CONSENTED MOTION TO SUSPEND FOR CIVIL ACTION
`
`Pursuant to 37 C.F.R. § 2.117, Applicant, Menudo International, LLC
`
`(“Menudo”), respectfully requests that the Trademark Trial and Appeal Board (“Board”)
`
`suspend this Opposition proceeding pending the final disposition of a trademark
`
`infringement action between the Parties filed by Menudo and titled Menudo
`
`International, LLC v. In Miami Production, LLC — Civil Action No. 1:17-cv-21559
`
`(KMW) in the United States District Court for the Southern District of Florida (“District
`
`Court Action”).
`
`BACKGROUND
`
`On January 19, 2017, Opposer filed a Notice of Opposition against Applicant’s
`
`MENUDO Application No. 87/056,545. The Board assigned proceeding no. 91/232,366
`
`(“Opposition Proceeding”).
`
`In Opposer’s Notice of Opposition, Opposer seeks to oppose Applicant’s
`
`MENUDO Application No. 87/056,545 on likelihood of confusion grounds based on
`
`supposed recently acquired common law rights. Menudo has filed an Answer (Dkt. 5)
`
`

`

`denying the salient allegations in Opposer’s Notice of Opposition and asserting several
`
`affirmative defenses. The parties have yet to take any discovery.
`
`Opposer has also recently filed a Cancellation Action No. 92/065,725, seeking to
`
`cancel Menudo’s subsisting MENUDO Registration No. 4,558,767, seemingly alleging
`
`abandonment and fraud in the prosecution. Menudo has yet to file its Answer and the
`
`parties have engaged in no discovery.
`
`On April 26, 2017, Applicant filed the District Court Action alleging prior and
`
`exclusive ownership rights to MENUDO and trademark infringement by Opposer of
`
`Applicant’s MENUDO trademarks, including MENUDO Registration No. 4,558,767 and
`
`unfair competition and related state claims.
`
`ARGUMENT
`
`It is well established that when a pending civil action between the Parties to a
`
`proceeding before the Board may be dispositive of the Board proceeding, the Board may
`
`suspend those proceedings until final disposition of the civil action. See, i,e., 37 CPR. §
`
`2.1 17(a); TBMP § 510.02(a). See also, General Motors Corp. v. Cadillac Club Fashions,
`
`Inc, 22 U.S.P.Q.2D 1933, 1936 (TTAB 1992); The Other Telephone Co. v. Connecticut
`
`National Telephone Co., Inc, 181 U.S.P.Q. 125, 127 (TTAB 1974); Tokaido v. Honda
`
`Associates, Inc, 179 U.S.P.Q. 861, 862 (TTAB 1973); Whopper Burger, Inc. v. Burger
`
`King Corp, 171 U.S.P.Q. 805, 807 (TTAB 1971).
`
`In fact, “it is deemed to be the better
`
`policy to suspend proceedings [before the Board] until the civil suit has been finally
`
`concluded”. Tokaia’o 179 U.S.P.Q. at 861,
`
`There are numerous reasons for this well settled policy. Indeed, “while a decision
`
`by the district court would be binding upon the Patent Office, a decision by the
`
`Trademark Trial and Appeal Board might only be advisory in respect to the disposition of
`
`-2-
`
`

`

`the case pending in the District Court”. Id.; See also, Whopper Burger, 171 U.S.P.Q. at
`
`807.
`
`Further, a final judgment in the district court would necessarily obviate the need
`
`for further litigation before the Board. Thus, suspension of the instant proceeding would
`
`be in the interest ofjudicial economy and avoiding the possibility of duplicative litigation
`
`or conflicting judgments being issued by the Board or the district court.
`
`Here, Opposer’s Notice of Opposition alleges, among other things, that
`
`Applicant’s MENUDO Application should be denied registration based on Opposer’s
`
`alleged prior common law rights in MENUDO.
`
`In the District Court Action appended to the Cathcart Declaration as Exhibit A,
`
`Applicant alleges, inter alia, that it owns the exclusive rights to MENUDO, that such
`
`rights are prior to any common law rights Opposer claims to own and that Opposer is
`
`infringing Applicant’s rights in MENUDO.
`
`Further, Applicant’s unfair competition and other state law claims plead in the
`
`District Court Action could not be raised in this Opposition Proceeding. As such, a final
`
`judgment in the District Court Action will require resolution of additional issues not
`
`presently before the Board. Conversely, a final judgment in the Opposition Proceeding
`
`would not eliminate the need for continued litigation in the District Court Action.
`
`In light of the above, suspension of these proceedings is in the interest of the
`
`Parties and judicial economy, comports with the practice and precedent of this Board and
`
`will avoid inconsistent judicial determinations of the matters before the Board and the
`
`District Court.
`
`Accordingly, Applicant respectfully requests suspension of all further proceedings
`
`in this Opposition proceeding until final disposition of the District Court Action.
`
`-3-
`
`

`

`Opposer’s counsel, Johanna R. Hyman, Esq. has consented to this request.
`
`Menudo is also simultaneously filing a consented motion for suspension of
`
`Cancellation No. 92/065,725 between the parties, which action has yet to be consolidated
`
`with this Opposition proceeding.
`
`Respectfully submitted,
`LADAS & PARRY LLP
`
`Attorneys for Applicant
`
`Dated: May 1, 2017
`
`
`
`By: Wvgflflé’
`
`Ralth athcart
`Jennifer Kwon
`
`1040 Avenue of the Americas
`
`New York, NY 10018-3738
`
`Tel: (212) 708-1920
`E-mail: rcathcart@ladas.com
`(Our Ref: C117689487)
`
`

`

`CERTIFICATE OF TRANSMISSION
`
`I, Reinaldo M. Roa, hereby certify that a copy of the foregoing APPLICANT’S
`CONSENTED MOTION TO SUSPEND FOR CIVIL ACTION is being
`electronically transmitted to the United States Patent and Trademark Office on the date
`indicated.
`
`Dated: May 1, 2017 M
`
`Reinaldo M. Roa
`
`CERTIFICATE OF SERVICE
`
`I, Reinaldo M. Roa, hereby certify that a copy of the foregoing APPLICANT’S
`CONSENTED MOTION TO SUSPEND FOR CIVIL ACTION was served on the
`
`person(s) listed below by email on the date indicated:
`
`Vivek Jayaram, Esq.
`
`Jayaram Law Group, Ltd.
`125 S. Clark Street, 17th Floor
`
`Chicago, IL 60603
`
`Email: Vivek@jayaramlaw.com, johanna@jayaramlaw.com,
`doni
`'a aramlawcom
`
`-
`
`Dated: May 1, 2017
`
`Phone: 312 212 8676
`
`:
`/ [@Z
`
`Reinaldo M. Roa
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`___________________________________________________________________X
`
`IMP HOLDINGS LLC,
`
`Opposer,
`
`v.
`
`: Opposition No. 91/232,366
`Application No. 87/056,545
`
`MENUDO INTERNATIONAL, LLC,
`
`Applicant.
`
`___________________________________________________________________X
`
`DECLARATION OF RALPH H. CATHCART, ES! 2.
`
`1, Ralph H. Cathcart, declare that the following is true and correct pursuant to 28
`
`U.S.C. § 1746:
`
`l.
`
`I am a partner at Ladas & Parry LLP, attorneys for Applicant Menudo
`
`International, LLC (“Applicant”) in this proceeding and submit this declaration in support
`
`of Applicant’s Motion to Suspend for Civil Action.
`
`2.
`
`On January 19, 2017, Opposer filed Opposition No. 91/232,366 against
`
`Applicant and Applicant timely filed its Answer (Dkt. 5) on February 27, 2017.
`
`3.
`
`The Parties have engaged in no discovery and this proceeding is in its
`
`infancy
`
`4.
`
`On or about April 26, 2017, Applicant filed a Complaint against Opposer
`
`in the United States District Court for the Southern District of Florida in an action styled
`
`Menudo International, LLC V. In Miami Production, LLC — Civil Action No. 1:17-cv-
`
`21559 (KMW) (“District Court Action”) alleging prior and exclusive ownership rights
`
`to MENUDO, trademark infringement by Opposer of Applicant’s MENUDO trademarks,
`
`including MENUDO Registration No. 4,558,767 and unfair competition and related state
`
`

`

`claims. A copy is attached as Exhibit A.
`
`5.
`
`In light of the above, Applicant respectfully requests that the Board
`
`suspend proceedings pending the final disposition of the District Court Action.
`
`I declare that the foregoing is true and correct under penalties of perjury.
`
`Executed on May 1, 2017 in New York, New York.
`
`gégéW
`
`Ralph H. Cathcart
`
`

`

`CERTIFICATE OF TRANSMISSION
`
`I, Reinaldo M. Roa, hereby certify that a copy of the foregoing DECLARATION
`OF RALPH H. CATHCART, ESQ. is being electronically transmitted to the United
`States Patent and Trademark Office on the date indicated:
`
`Dated: May 1, 2017
`
`/z/Z~:///7/Z
`
`
`
`Reinaldo M. Roa
`
`CERTIFICATE OF SERVICE
`
`I, Reinaldo M. Roa, hereby certify that a copy of the foregoing DECLARATION
`OF RALPH H. CATHCART, ESQ. was served on the persons listed below by e-mail,
`on the date indicated below:
`
`Vivek Jayaram, Esq.
`Jayaram Law Group, Ltd.
`125 S. Clark Street, 17th Floor
`
`Chicago, IL 60603
`
`Email: Vivek@jayaramlaw.com, johanna@jayaramlaw.com,
`doni
`'a aramlawcom
`
`Phone: 312 212 8676
`
`/ /;I_Z%Z
`
`Reinaldo M. Roa
`
`Dated: May 1, 2017
`
`

`

`EXHIBIT A
`
`

`

`Case 1:17—cv-21559—XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 1 of 9
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`CASE:
`
`MENUDO INTERNATIONAL, LLC
`A Florida LLC
`
`Plaintiff,
`
`v.
`
`IN MIAMI PRODUCTION. LLC.
`
`A Florida LLC.,
`Maria Cristina Braun, an individual, and
`Charlie Masso, an individual
`
`Defendants.
`
`/
`
`VERIFIED COMPLAINT AND DEMAND FOR JURY TRIAL
`
`Plaintiff, MENUDO INTERNATIONAL, LLC., a Florida limited liability company
`
`(“Plaintiff") by and through its undersigned counsel and for its Complaint against Defendants, IN
`
`MIAMI PRODUCTION, LLC.
`
`(“IMP”), MARIA CRISTINA BRAUN AND CHARLIE
`
`MASSO (collectively “Defendants”), allege as follows:
`
`JURISDICTION AND VENUE
`
`This
`
`is a complaint
`
`for Trademark Infringement, Unfair Competition and False
`
`Description arising under §§ 31 and 43 of the Lanham Act, 15 U.S.C. §§ 1114(1) (Trademark
`
`Infringement) and §1125 (a) (Unfair Competition and False Description), for Unfair Business
`
`Practices arising under Florida Statutes §§ 495.131, 495.151 and for injury to business reputation
`
`under common law.
`
`I.
`
`This Court has original subject matter jurisdiction over this action pursuant to 28
`
`U.S.C. § 1338(a) and 15 U.S.C. § 1121. This Court has related claim jurisdiction over the
`
`

`

`Case 1:17—cv-21559—XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 2 of 9
`
`pendant state law claims pursuant to 28 U.S.C. §l338(b) and 28 U.S.C. §l367. The Court has in
`
`personam jurisdiction over each of the Defendants, who each conducts business in this judicial
`
`district, and because each of the Defendants directed its wrongfiil actions and has caused damage
`
`to Plaintiff here in the State of Florida.
`
`2.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §139l inasmuch as a
`
`substantial part of the events or omissions giving rise to the claims for relief occurred in this
`
`judicial district.
`
`PARTIES
`
`3.
`
`Plaintiff is and at all time mentioned herein was, a limited liability company
`
`organized and existing under the law of the State of Florida, having a principal place of business
`
`in Monroe County Florida. At all times herein, Plaintiff has been engaged in the business of
`
`developing, marketing, distributing and selling goods and services under
`
`the trademark
`
`“MENUDO” .
`
`4.
`
`Plaintiff was established as the exclusive entity to license the mark MENUDO
`
`along with trademarks created and closely associated therewith, including, inter alia, MENUDO
`
`Registration No. 4,558,767.
`
`5.
`
`Defendant,
`
`IN MIAMI PRODUCTION, LLC (“IMP") is a company that
`
`is
`
`believed to produce live entertainment and musical events and sells related MENUDO
`
`merchandise.
`
`IMP is a Florida LLC with its principle place of business in Miami Dade County,
`
`Florida.
`
`6.
`
`Defendant, MARIA CRISTINA BRAUN (“BRAUN”) is an individual who is a
`
`resident of Miami Dade County, Florida who controls the infringing activities of IMP.
`
`

`

`Case 1:17-cv—21559-XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 3 of 9
`
`7.
`
`Defendant, CHARLIE MASSO (“MASSO") is an individual who is a resident of
`
`Miami Dade County, Florida who controls the infringing activities of IMF.
`
`FACTUAL BACKGROUND
`
`8.
`
`Formed in 2015, Plaintiff is an entity which exclusively owns the common law
`
`rights and a federal
`
`trademark registration for use of the popular and well-known mark
`
`“MENUDO” (hereinafier referenced as “the Mark”) in commerce. A copy of the MENUDO
`
`trademark registration is attached hereto as Exhibit A.
`
`9.
`
`Since 2015 and continuing to present, Plaintiff has marketed, distributed, and/or
`
`sold its goods and services bearing the Mark or similar variations thereof in relation to the
`
`internationally known MENUDO band. Plaintiff has expended significant time, energy and
`
`money to obtain, preserve and develop the goodwill associated with the Mark and the MENUDO
`
`brand.
`
`10.
`
`Plaintiff is the assignee of all intellectual property rights, including common law,
`
`trademark rights and registrations for the Mark, from predecessors-in-interest who previously
`
`owned and used the Mark since 1995,
`
`including Big Bar Entertainment, LLC, Menudo
`
`Entertainment, LLC, Global Entertainment LLC., New Global Entertainment LLC., and Oscar
`
`Llord.
`
`ll.
`
`Without permission from Plaintiff, in or about 2016, Defendants began to market
`
`and promote live performances by entertainers using the Mark, notwithstanding that such
`
`entertainers or performers were not associated or Sponsored by Plaintiff, have marketed and
`
`distributed t-shirts and possibly other merchandise containing an obvious reference to the Mark
`
`and have falsely and imperrnissibly attempted to register a claim to the Mark in countries other
`
`than the United States.
`
`

`

`Case 1:17-cv-21559—XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 4 of 9
`
`COUNT I — TRADEMARK INFRINGEMENT UNDER THE LANHAM ACT
`AGAINST ALL DEFENDANTS
`
`12.
`
`Plaintiff repeats and hereby incorporates by reference as though specifically
`
`pleaded herein, the allegations of paragraphs 1 — l 1.
`
`13.
`
`The aforesaid acts of Defendants constitutes infringement of the Mark,
`
`in
`
`violation of Section 32(1) of the Lanham Act of 1947, as amended, 15 U.S.C §1 114(1).
`
`14.
`
`Defendants’ unauthorized use of the Mark is an infringement of Plaintiff‘s
`
`exclusive rights to MENUDO, including its registered and validly subsisting trademark, is likely
`
`to cause confusion, mistake and deception amongst the public as to the identity, origin and
`
`source of Defendants’ goods and services, thereby causing damage and irreparable harm to
`
`Plaintiff for which there is no adequate remedy at law. Unless Defendants is restrained and
`
`enjoined from continuing its wrongfial acts, the damage to Plaintiff will increase.
`
`15.
`
`Plaintiff is informed and believes that each Defendant has unlawfully and
`
`willfiilly obtained profits from its wrongfiil use of the Mark in concerts, performances and sales
`
`of related merchandise. The amount of money earned by each Defendant is unknown and can
`
`only be ascertained by an accounting of Defendants’ files, books and records.
`
`16.
`
`An accounting is necessary to determine the true status of Defendants’ accounts
`
`and the amounts owed to Plaintiff.
`
`17.
`
`By reason of the foregoing acts, each Defendant is liable to Plaintiff for trademark
`
`infringement under 15 U.S.C §1 114.
`
`
`COUNT II - UNFAIR COMPETITION FALSE DESIGNATION
`
`OR ORIGIN AND FALSE ENDORSEMENT — 15 U.S.C §1125§al
`
`18.
`
`Plaintiff repeats and hereby incorporates by reference as though specifically
`
`pleaded herein, the allegations of paragraphs 1 — 11 and 13 - 17.
`
`

`

`Case 1:17-cv-21559-XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 5 of 9
`
`l9.
`
`Defendants’ use of the Mark to promote, market or sell its products and services
`
`as described above, are in direct competition with Plaintiff‘s products and services and
`
`constitutes unfair competition, false designation of origin and false endorsement in violation of
`
`15 U.S.C §1125(a). Defendants’ use of the Mark on these goods is likely to cause confusion,
`
`mistake, and deception amongst consumers
`
`as
`
`to source, association,
`
`sponsorship or
`
`endorsement.
`
`20.
`
`Defendants’ wrongful acts have permitted or will permit it to unfairly capitalize
`
`on the success, goodwill and reputation of Plaintiff and the strength of Plaintiff’s Mark in
`
`promoting its own goods and services.
`
`21.
`
`As a direct and proximate result of Defendants’ wrongful conduct, Plaintiff has
`
`been and will be deprived of the value of its Mark and its related assets.
`
`22.
`
`As a direct and proximate result of Defendants’ wrongful conduct, Plaintiff has
`
`been damaged and such damage will continue unless the Court enjoins Defendants’ acts.
`
`Plaintiff has no adequate remedy at law for Defendants’ continuing violation of their rights.
`
`COUNT III — UNFAIR COMPETITION UNDER FLORIDA STATUTES §§g95.131, 151
`
`23.
`
`Plaintiff repeats and hereby incorporates by reference as though specifically
`
`pleaded herein, the allegations of paragraphs 1 - l 1.
`
`24.
`
`Defendants’ actions discussed herein constitute unfair competition within the
`
`meaning of sections 495.131 and 151, Florida Statutes.
`
`25.
`
`Plaintiff‘s is entitled to preliminary and permanent injunctive relief ordering each
`
`Defendant to cease this unfair competition, as well as a disgorgement of all of each Defendants’
`
`profits associated with this unfair competition.
`
`COUNT IV — DECEPTIVE, FALSE AND MISLEADING ADVERTISING-
`FLORIDA STATUTE §495.151
`
`-5-
`
`

`

`Case 1:17-cv—21559-XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 6 of 9
`
`26.
`
`Plaintiff repeats and hereby incorporates by reference as though specifically
`
`pleaded herein, the allegations of paragraphs 1 —» ll.
`
`27.
`
`The acts of each Defendant described above constitute untrue and misleading
`
`advertising by Florida Statute 495, et seq.
`
`28.
`
`Defendants’ use of the Mark as well as the false and infringing use of the Mark in
`
`the same market is likely to create confusion, or to cause mistake or to deceive consumers as to
`
`the affiliation, connection or association of Plaintiff’s products and services, or deceive
`
`consumers as to the origin, sponsorship or approval by Plaintiff of Defendants’ products and
`
`services.
`
`29.
`
`Defendants’ wrongful acts have permitted or will permit them to capitalize on the
`
`success, goodwill and reputation of Plaintiff and the strength of Plaintiff’s Mark in promoting his
`
`own goods and services.
`
`30.
`
`As a direct and proximate result of Defendants’ wrongfiJl conduct, Plaintiff has
`
`been damaged and such damage will continue unless the Court enjoins Defendants’ acts.
`
`Plaintiff has no adequate remedy at law for Defendants' continuing violation of Plaintiffs rights.
`
`COUNT V — TRADEMARK INFRINGEMENT — COMMON LAW
`
`31.
`
`Plaintiff repeats and hereby incorporates by reference as though specifically
`
`pleaded herein, the allegations of paragraphs 1 — I I.
`
`32.
`
`The acts of each Defendant described above constitute trademark infiingement of
`
`Plaintiff‘s common law rights in its uses of the Mark.
`
`33.
`
`Defendants’
`
`improper and unauthorized use of the Mark is likely to cause
`
`confusion, mistake and deception of the public as to the identity and origin of Plaintiff‘s good
`
`

`

`Case 1:17-cv—21559-XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 7 of 9
`
`and services and is likely to cause others to believe that
`
`there is a relationship between
`
`Defendants and Plaintiff.
`
`34.
`
`Defendants’ wrongfiil acts have permitted or will permit them to capitalize on the
`
`success, goodwill and reputation of Plaintiff and the strength of Plaintiff‘s Mark in promoting
`
`their own goods and services.
`
`35.
`
`As a direct and proximate result of Defendants’ wrongful conduct, Plaintiff has
`
`been and will be deprived of the value of their Mark and related assets.
`
`36.
`
`As a direct and proximate result of Defendants’ wrongful conduct, Plaintiff has
`
`been damaged and such damage will continue unless the Court enjoins Defendants’ continuing
`
`violation of Plaintiff’s trademark rights.
`
`COUNT VI — COMMON LAW INJURY TO BUSINESS REPUTATION
`
`37.
`
`Plaintiff repeats and hereby incorporates by reference as though specifically
`
`pleaded herein, the allegations of paragraphs 1 — l l.
`
`38.
`
`Plaintiff alleges that Defendants’ use of the infringing Mark injures and creates a
`
`likelihood of injury to Plaintiff 5 business reputation because persons encountering Plaintiff and
`
`its products and services will believe that Defendants are affiliated with or related to or have the
`
`approval of Plaintiff and any adverse reaction by the public to Defendants and the quality of its
`
`products and the nature of its business will injure the business reputation of Plaintiff and the
`
`goodwill that they enjoy in connection with their Mark.
`
`WHEREFORE, Plaintiff prays:
`
`I.
`
`That pursuant to 15 U.S.C. §1 1 l6, Fla Stat. §§465.14l and 540.080) each of the
`
`Defendants and their agents, officers, employees, representatives, successors, assigns, attorneys,
`
`and all other persons acting for, with, by, through or under authority from each Defendants and
`
`

`

`Case 1:17-cv-21559—XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 8 of 9
`
`each of them, be preliminary and permanently enjoined from (a) using the Mark or any colorable
`
`imitation thereof; (b) using any trademark that imitates or is confiisingly similar to or in anyways
`
`similar to Plaintiff‘s Mark, or that is likely to cause confiision, mistake, deception, or public
`
`misunderstanding as to the origin of Plaintiff‘s products and services or their connectedness to
`
`Defendants; (c) using the name, image and likeness of MENUDO for commercial or advertising
`
`purposes, anywhere on the website or in commerce; and (d) using any Mark that is confusingly
`
`similar to the Plaintiff‘s Marks;
`
`2.
`
`That Defendants be required to file with the Court and serve on Plaintiff within
`
`thirty (30) days after entry of the injunction, a report in writing under oath setting forth in detail
`
`the manner and form in which each Defendants has complied with the injunction;
`
`3.
`
`That pursuant to 15 U.S.C. §lll7, Defendants be held liable for all damages
`
`suffered by Plaintiff resulting from the willful acts alleged herein;
`
`4.
`
`That pursuant to 15 U.S.C. §ll17, each Defendant be compelled to account to
`
`Plaintiff for any and all profits derived by it from its illegal acts complained of herein;
`
`5.
`
`That each Defendant be ordered pursuant
`
`to 15 U.S.C. §1118 and Fla. Stat.
`
`§495.l41 to deliver up for destruction all clothing, containers, labels, signs, prints, packages,
`
`wrappers, receptacles, advertising, promotional material or the like in possession, custody or
`
`under the control of Defendants bearing a trademark found to infringe Plaintiff‘s trademark
`
`rights, as well as all plates, materials, and other means of making the same;
`
`6.
`
`That the Court declare this to be an exceptional case and award Plaintiff its full
`
`costs and reasonable attorneys’ fees pursuant to 15 U.S.C. §1117;
`
`7.
`
`That Defendants be ordered, pursuant to Fla. Stat. 495.141, to pay Plaintiff treble
`
`damages;
`
`

`

`Case 1:17-cv-21559-XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 9 of 9
`
`8.
`
`That the Court grant Plaintiff any other remedy to which they may be entitled as
`
`provided for in 15 U SC §l 116 and I 117 or under state law,
`
`9.
`
`For such and other further relief that the Court may deem just and proper,
`
`DEMAND FOR JURY TRIAL
`
`Plaintiffdemand Jury Trial of all issues.
`
`VERIFICATION
`
`I, Paul Tarnopol, as manager of Menudo International, LLC, do hereby verify under
`
`penalties or perjury the truth of the allegations set forth herein
`
`PAbgT-A‘gOPOL,Manager
`
`A“
`
`MENUDO INTERNATIONAL, LLC.
`
`Dated on this 23’ day of April, 2017.
`
`Respectfully submitted,
`WOLFE LAW MIAMI, P.A.
`Allomeysfor Plainly'f
`175 SW 7'11 Street, Suite 2410
`Miami, Florida 33130
`Phone: 305-384«7370
`
`RICHARD C. WOLFE
`
`FLORIDA BAR #355607
`
`N olfe gatolfelaw”11211111me
`
`

`

`T1395mfi$c5193§§§j2§£§rcbmt(1T-ESEntered on FLSD Docket 04/26/2017 Peeaé 9834
`
`United States Patent: and Trademark Office
`
`HomeISite Index I Search fFAQ IGIossary I Guides] Contacts IeBusiness IeBiz
`
` alerts I Newsl Heip
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Tue Apr 4 03:21:02 EDT 2017
`
`
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`for you.
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`
`Record 2 out of 18
`
`_ — ( Use the "Back" button of the Internet
`Browser to return to TESS)
`
`MENUDO
`
`Word Mark
`
`MENUDO
`
`Goods and Services IC 041. US 100 101 107. G & 8: live performances by a musical group
`Standard Characters
`Claimed
`
`Mark Drawing Code (4) STANDARD CHARACTER MARK
`Serial Number
`87193518
`
`Filing Date
`Current Basis
`
`October 5. 2016
`13
`
`Original Filing Basis 13
`Published for
`Opposition
`Owner
`
`March 7. 2017
`(APPLICANT) Menudo International, LLC LIMITED LIABILITY COMPANY
`FLORIDA 149 Giardino Drive lslamorada FLORIDA 33036
`
`Attorney of Record Dennis S. Prahl
`
`Type of Mark
`
`SERVICE MARK
`
`PRINCIPAL
`Register
`LivelDeadlndicator LIVE
`
`
`
`http:/Itmsearch.uspto.gov/bin/showfie1d?f=doc&state=4807:q l 4j mx.2 .2
`
`4/4/2017
`
`

`

`Baéémafiscfileigggixmrcbm(flfisfimtered on FLSD Docket 04/26/2017 Pfiaagyéfiz:
`
`
`
`
`l HOME l SiTElNDEXl SEARCH I eBUSINESS 1 HELP I PRIVACY POLICY
`
`
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4807:q14jmx.2.2
`
`4/4/2017
`
`

`

`Bagémfl$c§12fisegjfi>§tflrcbmt(1T—ESEktered on FLSD Docket 04/26/2017 Pesael 338124
`
`
`
`United States Patent and Trademark Office
`
`Home I Site Index I Search I FAQ I Glossary I Guides I Contacts I eBusiness I e851
`aéerts I News I Help
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Tue Apr 4 03:21:02 EDT 2017
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`for you.
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`Start IList At: I—_ OR Jump Ito record: I
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`Record 1 out Of 18
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`
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`1“u ( Use the "Back" button of the Internet
`Browser to return to TESS)
`
`MENUDO
`
`Word Mark
`
`MENUDO
`
`Goods and
`Services
`
`IC 009. US 021 023 026 036 038. G & 8: audio and video recordings featuring
`music and artistic performances; compact disks and cassettes featuring pre-
`recorded music; prerecorded dvds featuring music and musical performances
`
`IC 016. US 002 005 022 023 029 037 038 050. G & S: posters, stickers
`
`IC 025. US 022 039. G & S: t-shirts, sweatshirts, hats. caps
`
`Standard
`Characters
`Claimed
`
`Mark Drawing
`Code
`Serial Number
`
`(4) STANDARD CHARACTER MARK
`87056545
`
`Filing Date
`Current Basis
`
`June 1, 2016
`18
`
`Original Filing
`Basis
`
`18
`
`December 20, 2016
`
`http:fr'tmsearchuspto.gov/bin/showfield?f=doc&state=4807 :q 1 4j mx.2.1
`
`4/4/2017
`
`

`

`Eagmafiscfilfigmmwbflx‘iirém(iEESEDuered 0n FLSD Docket 04/26/2017 Pfifi§3z98f24
`
`Published for
`
`Opposition
`International
`
`Registration
`Number
`
`Owner
`
`1317587
`
`(APPLICANT) Menudo International, LLC LIMITED LIABILITY COMPANY
`FLORIDA 149 Giardino Drive Islamorada FLORIDA 33036
`
`$33ij °f
`Type of Mark
`
`Dennis s. Prahl
`TRADEMARK
`
`Register
`LivelDead
`
`Indicator LIVE
`
`PRINCIPAL
`
`
`
`
`
`
`I HOME l SITE INDEXI SEARCH I eBUSINESS l HELP | PRIVACY POLICY
`
`http://tmsearch.u5pto.gov/bin/showfield?f=doc&state=4807:q l 4j mx.2.l
`
`4/4/2017
`
`

`

`Case 1:17-cv-21559-XXXX Document 1-4 Entered on FLSD Docket 04/26/2017 Page 1 of 1
`
`‘15“ "m 208'
`
`CIVIL COVER SHEET
`
`lace nor sugplement the filing and service ofpleadrngs or other npers as mEuuired bylaw. except as provided
`The 15 44 civil cover sheet and the information contained herein neither
`by local rules ofcourt This form. approved by the Judicial Conferenceo the l.nited tales In September I974 is requtred for the meat eCIerI: ul' curt for the purpose of Initiating
`the civil docket sheer
`(SEE INSTRUCTIONS ON THE ravens: or Int saw I
`NOTICE: Attorneya MUST Indicate All Re-l'lled Cases Below.
`
`I. (a) PLAINTIFFS
`DEFENDANTS
`
`MENUDO INTERNATIONAL, LLC
`IN MIAMI PRODUCTION, LLC.
`A Florida LLC
`A Florida LLC,
`
`(It) County of Residence of First Listed Plaintiff Miami Dade Conny
`County of gamma, orpim Us.“ Defendant Miami Dade County
`
`(EXCEPT IN U S PLAINTIFF CASES)
`(IN U S PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES. USE THE LOCATION OFTIIE TRACT
`
` (C) Anomey’s lFirllt Name. Addreaa, and Telephone Number]
`LAND INVOLVED
`
`Wolfe Law Miami, PA.
`Attorneys (It Knuwn)
`Richard C. Wolfe, E5q.
`
`I75 SW 7th Street, #24 IO, Miami, Flonda 33130.7‘305-384-7370
`
`
`NOTE
`
`
`
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`HIGHLANDS
`
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`
`Cl 2
`
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`
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`(Indicate Citizenrltip ol'Partira in Item III)
`
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`Citizen oIArrotIIer State
`
`'I
`
`3
`
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`
`2
`
`J 2
`
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`
`
`
`3
`
`3
`
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`
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`
`
` III. CITIZENSHIP OF PRINCIPAL PARTIESm-c: an "X' in One Boa III-Plaintiff II. BASIS OF JURISDICTION (Place an 'X“ in One Box Only)
`
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`PERSONAL INJURY
`PERSONAL INJURY :I 6It) Agriculture
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`400 State Reapportionment
`
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`3 620 Other Food A Dre;
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`J 625 Drug Related Saunra
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`3 520 Copyriahta
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`3 640 It It a Truck
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`3 330 Federal Employera'
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