Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA883889
`03/16/2018
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding.
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`91239437
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`Applicant
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`Other Party
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`Defendant
`VIACOM INTERNATIONAL INC.
`
`Plaintiff
`IJR Capital Investments LLC
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`No
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`Have the parties
`held their discov-
`ery conference
`as required under
`Trademark Rules
`2.120(a)(1) and
`(a)(2)?
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`Motion for Suspension in View of Civil Proceeding With Consent
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`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, VIACOM
`INTERNATIONAL INC. hereby requests suspension of this proceeding pending a final determination of the
`civil action. Trademark Rule 2.117.
`VIACOM INTERNATIONAL INC. has secured the express consent of all other parties to this proceeding for
`the suspension and resetting of dates requested herein.
`VIACOM INTERNATIONAL INC. has provided an email address herewith for itself and for the opposing party
`so that any order on this motion may be issued electronically by the Board.
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`Certificate of Service
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`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`of record by Email on this date.
`Respectfully submitted,
`/klo/
`Kaydi Osowski
`trademarks@mtvn.com, kaydi.osowski@viacom.com
`tripp.karen@gmail.com
`03/16/2018
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`KRUSTY KRAB
`Viacom International Inc.
`87/305,436
`January 18, 2017
`
`
`IN THE MATTER OF APPLICATION
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`Mark:
`Applicant:
`Serial No.:
`Filed:
`Published in
`the Official Gazette: December 12, 2017
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`
`IJR CAPITAL INVESTMENTS LLC,
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`VIACOM INTERNATIONAL INC.,
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`Opposer,
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`v.
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`Opposition No. 91239437
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`Applicant.
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`MOTION FOR SUSPENSION WITH CONSENT
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`Pursuant to 37 CFR § 2.117(a) and TBMP § 510.02(a), Applicant, Viacom International
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`Inc. (“Applicant”), with the consent of Opposer, IJR Capital Investments LLC (“Opposer”),
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`requests suspension of the captioned opposition proceeding (the “Opposition”).
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`On January 29, 2016, Applicant filed a complaint in the United States District Court for
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`the Southern District of Texas against Opposer regarding Opposer’s application to register the
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`mark THE KRUSTY KRAB (Ser. No. 86470477) and asserting several causes of action against
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`Opposer, including federal law unfair competition and state law trademark infringement claims
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`(the “Litigation”). The District Court granted, in part, Applicant’s motion for summary
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`judgment, finding, inter alia, that Applicant’s KRUSTY KRAB mark was valid, that Opposer’s
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`mark THE KRUSTY KRAB infringed Applicant’s KRUSTY KRAB mark, and that Opposer’s
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`1
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`proposed use of THE KRUSTY KRAB constituted unfair competition under the Lanham Act.
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`Viacom International Inc. v. IJR Capital Investments, LLC, 242 F. Supp. 3d 563 (S.D. Tex.
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`2017). Opposer appealed the District Court’s decision to the United States Court of Appeals for
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`the Fifth Circuit, asserting, inter alia, that the District Court erred in finding that Applicant’s
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`KRUSTY KRAB mark was valid because, Opposer contends, Applicant never used the mere
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`words “Krusty Krab” to identify the source of products or services (the “Appeal”). The Appeal
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`is fully briefed and oral argument was held on February 5, 2018. See id., No. 17-20334 (5th Cir.
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`argued Feb. 5, 2018). The Fifth Circuit Court of Appeals has not yet issued a decision on the
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`Appeal. Pursuant to TBMP § 510.02(a), Applicant attaches hereto a copy of Applicant’s
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`Complaint, Opposer’s Answer, the District Court’s Opinion, Opposer’s Notice of Appeal,
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`Opposer’s Appeal Brief, and Applicant’s Appeal Brief as Exhibits A–F.
`
`The Litigation will have a bearing on one or more of the issues before the Board in this
`
`Opposition. Therefore, Applicant and Opposer request suspension of the Opposition until a final
`
`determination of the Litigation.
`
`
`
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`Dated: March 16, 2018
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`By:
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`Respectfully submitted,
`
`Viacom International Inc.
`
`
`
`
`
`
`/klo/
`
`Kaydi Osowski
`Emily Stubbs
`1515 Broadway, 34th Floor
`New York, New York 10036
`(212) 846-8594
`
`Attorneys for Applicant
`
`2
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on March 16, 2018, the foregoing MOTION FOR SUSPENSION
`
`WITH CONSENT is being served on Opposer’s attorney of record by email to:
`
`
`Karen P. Tripp
`tripp.karen@gmail.com
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`/klo/
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`Kaydi Osowski
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`3
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`EXHIBIT A
`EXHIBIT A
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`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 1 of 13
`
`v.
`
`
`
`Case No.
`
`
`COMPLAINT
`
`Jury Trial Demanded
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - X
`:
`
`:
`VIACOM INTERNATIONAL INC.,
`:
`
`:
`Plaintiff,
`:
`
`:
`:
`:
`:
`:
`:
`
`
`:
` Defendant.
`- - - - - - - - - - - - - - - - - - - - - - - -- - - - - - - - - - - - X
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`IJR CAPITAL INVESTMENTS, LLC
`
`
`Plaintiff, Viacom International Inc., files this Complaint against Defendant, IJR Capital
`
`Investments, LLC, and alleges the following:
`
`I.
`Parties
`
`1.
`
`Plaintiff, Viacom International Inc. (“Viacom”), is a corporation organized and doing
`
`business under the laws of the State of Delaware. Viacom’s principal place of business is 1515
`
`Broadway, New York, NY 10036.
`
`2.
`
`Defendant, IJR Capital Investments, LLC (“IJR” or “Defendant”), is a limited liability
`
`company organized and doing business under the laws of the State of Texas. Upon information
`
`and belief, IJR’s principal place of business is 5555 West Loop South, Bellaire, Texas 77401.
`
`II.
`Jurisdiction and Venue
`
`3.
`
`This is a civil action for false designation of origin, dilution, unfair competition, and refusal
`
`of registration under the Lanham Act, including 15 U.S.C. § 1125 (a) and (c)(1), dilution under
`
` 
`
`1
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` 
`
`

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`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 2 of 13
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`the Tex. Bus. & Comm. Code § 16.103, and common law trademark infringement, unfair
`
`competition, false designation of origin and unjust enrichment.
`
`4.
`
`This Court has subject matter jurisdiction over Viacom’s claims pursuant to 15 U.S.C. §
`
`1121 and 28 U.S.C. §§ 1331 and 1338, and supplemental jurisdiction over Viacom’s claims under
`
`state law pursuant to 28 U.S.C. § 1367(a).
`
`5.
`
`Venue is proper in this District pursuant to 28 U.S.C. § 1391 (b)(1) and (b)(2) because
`
`Defendant is a resident of Harris County, Texas and upon information and belief, all or most of
`
`the events giving rise to this action took place in Harris County, Texas.
`
`III.
`Factual Background
`
`Viacom’s SpongeBob SquarePants Trademarks
`
`6.
`
`Viacom, through its division Viacom Media Networks, owns and operates the Nickelodeon
`
`television programming services.
`
`7.
`
`“SpongeBob SquarePants” is a popular Nickelodeon television show that premiered in
`
`1999. “SpongeBob SquarePants” has become an extremely valuable media franchise, which
`
`includes two feature films, a comic book series, original music, video games, significant related
`
`merchandise and theme park rides.
`
`8.
`
`Viacom owns a family of trademarks relating to the “SpongeBob SquarePants” franchise
`
`(the “SpongeBob Marks”), and has devoted tremendous resources to the creation, development
`
`and marketing of these marks.
`
`9.
`
`As a result of Viacom’s efforts, the SpongeBob Marks have acquired distinction,
`
`recognition and substantial goodwill in the United States and throughout the world.
`
`10.
`
`The “Krusty Krab” is a well-known fictional fast food restaurant in the “SpongeBob
`
`SquarePants” franchise. It has appeared in 249 episodes of the television series, beginning with
`
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`2
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`

`

`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 3 of 13
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`the pilot episode, and also appeared in both “SpongeBob SquarePants” feature films. The “Krusty
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`Krab” will also be featured in the upcoming Broadway play “The SpongeBob Musical.”  A
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`representative depiction of the “Krusty Krab” restaurant appears immediately below.
`
`
`
`11.
`
`The “Krusty Krab” is owned by Eugene H. Krabs, a prominent and recurring character in
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`the SpongeBob universe. SpongeBob SquarePants works at the “Krusty Krab” as a fry cook, but
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`he also performs a myriad of other duties, and once stated that his official title is “Vice Assistant
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`General Manager in charge of certain things.” The “Krusty Krab” is the scene of many comical
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`exchanges between SpongeBob and his co-worker, Squidward Tentacles. SpongeBob loves his
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`job and considers Squidward a close friend; Squiward hates his job and does not like SpongeBob.
`
`12.
`
` “Krusty Krab”’s chief competitor is the “Chum Bucket,” which is owned by Sheldon J.
`
`Plankton, Mr. Krabs’ worst enemy. “The “Krusty Krab” maintains an advantage over the “Chum
`
`Bucket” based upon the popularity of its “Krabby Patty” burger.
`
`13.
`
`Viacom has capitalized on the popularity of the “Krusty Krab” over the years. For
`
`example, Viacom has licensed for manufacture and sale toy “Krusty Krab” playsets; “Krusty
`
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`3
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`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 4 of 13
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`Krab” cake decorations; “Krusty Krab” aquarium ornaments; “Krusty Krab” magnet sets; “Krusty
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`Krab” costumes; and a video game called “SpongeBob SquarePants: Creature from the Krusty
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`Krab.” Viacom has also published books called “Jokes from the Krusty Krab” and “Trouble at the
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`Krusty Krab!” “Krusty Krab” apparel, including shirts and baseball hats, are sold at The
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`SpongeBob Store in Universal Studios, Orlando, Florida. Representative samples of these
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`products, including a Krusty Krab cake topper, the cover of the “Jokes from the Krusty Krab”
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`book, and a Lego® Krusty Krab playset are shown immediately below.
`
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`14.
`
`Viacom has also capitalized on the “Krabby Patties” name by, for example, obtaining an
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`incontestable federal registration for the KRABBY PATTIES mark in International Class 30, U.S.
`
`Registration Number 2900693. Viacom continues to license items for manufacture and sale under
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`the KRABBY PATTIES name, including gummy candy called “SpongeBob SquarePants Giant
`
`Krabby Patties.”
`
`15.
`
`Based upon Viacom’s many years of use, the public equates the “Krusty Krab” name with
`
`Viacom and the SpongeBob SquarePants franchise. Viacom’s “Krusty Krab” mark is referred to
`
`herein as the “Viacom Trademark.”
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`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 5 of 13
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`16.
`
`Given Viacom’s extensive use of the “Krusty Krab” mark in a wide variety of trade
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`channels -- and the fact that the “Krusty Krab” is a restaurant in the SpongeBob universe -- it is
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`within the zone of natural expansion of Viacom’s business to operate in restaurant services.
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`IJR’s Use of the KRUSTY KRAB Mark
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`17.
`
`On December 3, 2014, Defendant filed an application to register the trademark THE
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`KRUSTY KRAB in Class 43 (Restaurant Services), Serial Number 86470477 (the “Infringing
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`Mark”).
`
`18.
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`Upon information and belief, the Infringing Mark has not yet registered.
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`19.
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`Upon information and belief, Defendant is operating or preparing to operate a restaurant
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`called “The Krusty Krab” in Texas, and promoting that restaurant via social media.
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`20.
`
`On November 23, 2015, upon discovering Defendant’s trademark application and apparent
`
`use of the Infringing Mark, Viacom sent a cease and desist letter to Defendant, demanding that
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`Defendant withdraw its trademark application and agree not to use the “Krusty Krab” name or any
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`other SpongeBob Mark in connection with its restaurant services. (Viacom’s letter to Defendant
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`is attached hereto as Exhibit A.)
`
`21.
`
`By letter dated November 25, 2015, Defendant’s counsel rejected Viacom’s demands,
`
`arguing that “[Defendant’s] use of the [Infringing Mark] would not infringe any supposed right of
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`Viacom” and stating that it “declines to cease use.” (Defendant’s response letter is attached hereto
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`as Exhibit B.)
`
`Defendant is Attempting to Trade on the Goodwill of the SpongeBob Marks
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`22.
`
`Defendant’s use of the Infringing Mark -- which is identical in appearance and sound to
`
`the Viacom Trademark -- creates a high likelihood of confusion as to the source of the Infringing
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`Mark and Defendant’s corresponding services.
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`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 6 of 13
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`23.
`
`By using the Infringing Mark in commerce, Defendant is attempting to trade off of the
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`goodwill and reputation of the “SpongeBob SquarePants” media franchise and the strength of the
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`Viacom Trademark.
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`24.
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`Upon information and belief, at the time Defendant filed its application to register the
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`Infringing Mark and began using the Infringing Mark, it had actual knowledge, or should have
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`known, of Viacom’s longstanding use of the Viacom Trademark.
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`25.
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`Upon information and belief, Defendant has acted with the intent to cause dilution, blurring
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`and tarnishing of the Viacom Trademark.
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`26.
`
`Defendant’s conduct gives rise to the following causes of action.
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`VI.
`CAUSES OF ACTION
`
`COUNT ONE
`False Designation of Origin in Violation of the Federal Lanham Act
`
`27.
`
`Viacom realleges and incorporates by reference the allegations of the preceding Paragraphs
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`1–26 of this Complaint as if fully set forth herein.
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`28.
`
`Through Defendant’s use of the Infringing Mark in connection with restaurant services,
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`Defendant has falsely designated and misrepresented the origin, sponsorship, or approval of such
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`services.
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`29.
`
`Pursuant to 15 U.S.C. § 1125(a), such acts are likely to cause confusion or mistake and
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`likely have confused and deceived potential and actual customers into believing that the services
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`offered by Defendant are affiliated with, sponsored by, or connected with Viacom.
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`30.
`
`Defendant’s continued use of the Infringing Mark causes a high likelihood of deception
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`and confusion to actual and potential consumers in a material manner influential to customers’
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`purchasing decisions for restaurant services.
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`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 7 of 13
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`31.
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`As a direct and proximate result of Defendant’s actions, Viacom has suffered and will
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`continue to suffer damages, including damage to its goodwill and reputation.
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`COUNT TWO
`Unfair Competition in Violation of the Federal Lanham Act
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`32.
`
`Viacom realleges and incorporates by reference the allegations of the preceding Paragraphs
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`1–31 of this Complaint as if fully set forth herein.
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`33.
`
`Through Defendant’s use of the Infringing Mark in connection with its restaurant services,
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`Defendant is passing off its services as those of Viacom’s in a manner that is false, misleading,
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`and misrepresentative of the nature, characteristics, and quality of Viacom’s services.
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`34.
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`Defendant’s acts are likely to cause confusion or mistake, and likely have confused and
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`deceived potential and actual customers into believing that the services offered by Defendant are
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`affiliated with, sponsored by, or somehow connected with Viacom.
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`35.
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`As a direct and proximate result of Defendant’s actions, Viacom has suffered and will
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`continue to suffer damages, including damage to its goodwill and reputation.
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`36.
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`Under 15 U.S.C. § 1125(a), Defendant’s acts constitute unfair competition by passing off
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`its services for those of Viacom.
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`COUNT THREE
`Dilution in Violation of the Federal Lanham Act
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`Viacom realleges and incorporates by reference the allegations of the preceding Paragraphs
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`37.
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`1–36 of this Complaint as if fully set forth herein.
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`38.
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`Through Viacom’s long-standing and extensive use and consumer recognition, the
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`SpongeBob Marks including the Viacom Trademark are famous and have acquired distinctiveness.
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`39.
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`Defendant’s recent adoption and use of the trademark “The Krusty Krab” occurred after
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`the Viacom Trademark was famous.
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`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 8 of 13
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`40.
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`Under 15 U.S.C. § 1125(c)(1), Defendant’s use of “The Krusty Krab” has caused and is
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`likely to cause dilution by blurring and tarnishing the Viacom Trademark.
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`41.
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`Defendant’s willful intent to trade on the recognition of the famous Viacom Trademark in
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`restaurant services will harm the reputation of the famous Viacom Trademark.
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`42.
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`As a direct and proximate result of Defendant’s actions, Viacom has suffered and will
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`continue to suffer damages, including damage to its goodwill and reputation.
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`COUNT FOUR
`Trademark Infringement in Violation of Texas Common Law
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`43.
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`Viacom realleges and incorporates by reference the allegations in paragraphs 1-42 as if
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`fully set forth herein.
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`44.
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`Viacom has a valid, legally protectable interest in the trademark KRUSTY KRAB.
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`45.
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`Defendant used Viacom’s trademark in commerce to identify its own services.
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`46.
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`Defendant did not have Viacom’s consent, permission or license to use its KRUSTY
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`KRAB trademark.
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`47.
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`Defendant used the Viacom Trademark with the intent to confuse consumers regarding the
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`origins of Defendant’s services.
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`48.
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`Defendant’s use of the Viacom Trademark has caused consumer confusion, and will
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`continue to cause consumer confusion, regarding the origins of Defendant’s products and services
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`and has diminished Viacom’s goodwill and ability to control what is sold under its trademarks.
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`49.
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`Defendant’s conduct constitutes trademark infringement in violation of Texas common
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`law.
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`50.
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`Defendant’s acts have caused, and will continue to cause, Viacom to suffer damages.
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`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 9 of 13
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`COUNT FIVE
`Dilution under Tex. Bus. & Comm. Code § 16.103
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`51.
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`Viacom realleges and incorporates by reference the allegations of the preceding Paragraphs
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`1–50 of this Complaint as if fully set forth herein.
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`52.
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`Through Viacom’s long-standing and extensive use and the subsequent consumer
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`recognition, the Viacom Trademark is famous (as defined in Tex. Bus. & Comm. Code § 16.103)
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`and has acquired distinctiveness.
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`53.
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`Defendant’s adoption and use of the name “The Krusty Krab” has caused and is likely to
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`cause dilution by blurring and weakening the Viacom Trademark.
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`54.
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`Defendant’s willful intent to trade on the famous Viacom Trademark in restaurant services
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`threatens to harm the reputation of the famous Viacom Trademark.
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`55.
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`As a direct and proximate result of Defendant’s actions, Viacom has suffered and will
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`continue to suffer damages, including damage to its goodwill and reputation.
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`COUNT SIX
`Unjust Enrichment under Texas Common Law
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`56.
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`Viacom realleges and incorporates by reference the allegations of the preceding Paragraphs
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`1–55 of this Complaint as if fully set forth herein.
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`57.
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`Through Defendant’s use of the Infringing Mark, it has used the significant goodwill and
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`consumer recognition inherent in the Viacom Trademark as a stepping stone to launch its own
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`restaurant and gain business.
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`58.
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`Through Defendant’s use of the Infringing Mark, Defendant’s marketing efforts have
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`benefited and they have profited financially, and are likely to continue benefiting and profiting, by
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`leading customers to believe that Defendant’s “The Krusty Krab” restaurant is affiliated with
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`Viacom.
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`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 10 of 13
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`59.
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`As a direct and proximate result of Defendant’s actions, Viacom has suffered and will
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`continue to suffer damages, including damage to its goodwill and reputation.
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`COUNT SEVEN
`False Designation of Origin Under Texas Common Law
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`Viacom realleges and incorporates by reference the allegations of the preceding paragraphs
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`60.
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`1–59 of this Complaint as if fully set forth herein.
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`61.
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`Through Defendant’s use of the Infringing Mark in interstate commerce in connection with
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`Defendant’s restaurant services, Defendant has falsely designated those services as affiliated with
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`Viacom.
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`62.
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`Defendant’s use of the Viacom Trademark has the capacity to materially deceive potential
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`customers, and is likely to cause confusion, or to cause mistake, or to deceive as to the origin of
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`Defendant’s restaurant services.
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`63.
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`As a result of Defendant’s false designation of its restaurant services, Viacom has suffered,
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`and will continue to suffer, damages, including damage to its goodwill and reputation.
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`COUNT EIGHT
`Common Law Unfair Competition
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`Viacom realleges and incorporates by reference the allegations of the preceding Paragraphs
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`64.
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`1–63 of this Complaint, inclusive as if fully set forth herein.
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`65.
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`Defendant’s use of the trademark “The Krusty Krab” constitutes unfair competition under
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`the common law of the State of Texas.
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`66.
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`Through Defendant’s use of the Infringing Mark in connection with its restaurant services,
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`Defendant is passing off its services as those of Viacom’s in a manner that is false, misleading,
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`and misrepresentative of the nature, characteristics, and quality of Viacom’s services.
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`10
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`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 11 of 13
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`67.
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`As a direct and proximate result of Defendant’s actions, Viacom has suffered and will
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`continue to suffer damages, including damage to its goodwill and reputation.
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`COUNT NINE
`Refusal of Registration
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` Viacom realleges and incorporates by reference the allegations of the preceding
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`68.
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`Paragraphs 1–67 of this Complaint, inclusive as if fully set forth herein.
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`69.
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` This Court has the power under 15 U.S.C. § 1119 (Lanham Act § 37) and 28 U.S.C. §
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`2201 to determine Defendant’s right to registration of the trademark THE KRUSTY KRAB.
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`70.
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` Defendant’s Infringing Mark THE KRUSTY KRAB, the subject of Application Serial No.
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`86470477, so resembles the Viacom Trademark as to be likely to cause confusion, or to cause
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`mistake, or to deceive. Registration should therefore be refused under 15 U.S.C. § 1052(d).
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`71.
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` Defendant’s Infringing Mark THE KRUSTY KRAB is likely to cause dilution by blurring
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`or dilution by tarnishment of the famous Viacom Trademark, and registration should be refused
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`under 15 U.S.C. § 1125(c).
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`72.
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` Viacom petitions the Court to order the PTO to refuse registration of the applications for
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`Defendant’s Infringing Mark, Serial No. 86470477, pursuant to 15 U.S.C. § 1119 and 28 U.S.C. §
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`2201.
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`V.
`PRAYER FOR RELIEF
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`For all of the foregoing reasons, Viacom asks for judgment against Defendant in the
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`following form:
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`(a)
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`Permanent injunction under 15 U.S.C. §§ 1116 and 1125(a) and (c)(1), and Tex.
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`Bus. & Comm. Code § 16.103(c), barring Defendant, and its officers, agents, employees, and all
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`persons acting on Defendant’s behalf from: (i) using “The Krusty Krab,” or any other similar
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`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 12 of 13
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`variation or phonetic equivalent, in connection with its restaurant services; (ii) advertising or
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`marketing “The Krusty Krab,” or any other similar variation or phonetic equivalent, in signage,
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`menus, letterhead, business cards, marketing materials, websites or social media; and (iii) publicly
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`representing, or otherwise stating or implying, that Defendant or its services are in any way
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`affiliated with Viacom;
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`(b) An injunction ordering Defendant, pursuant to 15 U.S.C. §§ 1118 and 1125(c)(5), to
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`deliver for destruction all advertising materials or any other items bearing “The Krusty Krab” or
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`its equivalent;
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`(c) An award of Defendant’s profits, damages, and costs under 15 U.S.C. §§ 1117(a) and
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`1125(c)(5) and Tex. Bus. & Comm. Code § 16.103(c);
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`(d) Equitable relief including unjust enrichment, constructive trust, and disgorgement of
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`profits;
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`(e) That the Court determine that Defendant is not entitled to registration of the trademark
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`THE KRUSTY KRAB, and certify an order pursuant to 15 U.S.C. § 1119 refusing registration of
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`application Serial No. 86470477 to the PTO Director, who shall make appropriate entry upon the
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`records of the PTO and shall be controlled thereby;
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`(f) An award to Viacom of its reasonable attorneys’ fees and the costs of this action, under
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`15 U.S.C. §§ 1125(c)(5) and 1117(a) and Tex. Bus. & Comm. Code § 16.103(c); and
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`(g) All other relief the Court deems appropriate at law and in equity.
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`VI.
`JURY DEMAND
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`Viacom demands a trial by jury on all issues so triable.
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`Case 4:16-cv-00257 Document 1 Filed in TXSD on 01/29/16 Page 13 of 13
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`Date: January 29, 2016
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`Respectfully submitted,
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`s/Stephen P. Meleen
`Stephen P. Meleen
`Attorney-in-Charge
`Texas Bar No. 00795776
`Southern District of Texas Bar No. 24154
`PIRKEY BARBER PLLC
`600 Congress Avenue, Suite 2120
`Austin, TX 78701
`Telephone: (512) 322-5200
`Facsimile: (512) 322-5201
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`ATTORNEY FOR PLAINTIFF
`VIACOM INTERNATIONAL INC.
`
`
`Of Counsel:
`Tyson D. Smith
`Texas Bar No. 24079362
`Federal Bar No. 2016979
`PIRKEY BARBER PLLC
`600 Congress Avenue, Suite 2120
`Telephone: (512) 322-5200
`Facsimile: (512) 322-5201
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` 
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`13
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`Case 4:16-cv-00257 Document 1-1 Filed in TXSD on 01/29/16 Page 1 of 2
`Case 4:16—cv—00257 Document 1-1 Filed in TXSD on 01/29/16 Page 1 of 2
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`EXHIBIT A
`EXHIBIT A
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`Case 4:16-cv-00257 Document 1-1 Filed in TXSD on 01/29/16 Page 2 of 2
`Case 4:16-cv-00257 Document 1—1 Filed in TXSD on 01/29/16 Page 2 of 2
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`ANDREW HUGHES. ESQ.
`COUNSEL
`LITIGATIONIINTELLECTUAL PROPERTY
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`1515 BROADWAY
`NEW YORK, NY 1003:.
`'1 21?. 81.6 7519 F 212 131.15 1771.
`ANDREW HUGHESQ‘VIACOMfiljh-t
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`
`
`Via Overnight Delivegy
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`IJR Capital Investments LLC
`5555 West Loop S, Ste. 395
`Bellaire, Texas 77401
`
`November 23, 2015
`
`Re:
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`Your Infringement of Viacom’s SgongeBob SguarePants Trademarks
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`Dear Sir or Madam:
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`I write on behalf of Viacom International Inc. (“Viacom"), which owns and operates the
`Nickelodeon programming services. As you may know, SpongeBob SquarePants is a popular
`Nickelodeon show that premiered in 1999. SpongeBob SquarePants has become an extremely
`valuable media franchise, which includes two feature films, a comic book series, original music,
`video games and theme park rides. Viacom owns a family of trademarks relating to SpongeBob
`SquarePants (the “SpongeBob Marks”), and has devoted tremendous resources to the creation,
`development and marketing of these Marks.
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`We recently learned that you are operating a restaurant called “Krusty Kra ” -- based on
`the fictional “Krusty Krab” restaurant featured in the SpongeBob SquarePants television show --
`and that you filed a trademark application for “The Krusty Krab” in Class 43 (Restaurant
`Services), Serial Number 86470477. Your use of the “Krusty Kra ” mark in connection with
`your restaurant violates federal law because it suggests an association with and/or endorsement
`by Viacom or Nickelodeon. Accordingly, we hereby require that you confirm, within ten days of
`the date of this letter, that you will promptly:
`(i) change the name of your restaurant; (ii) refrain
`from using any of the SpongeBob Marks in connection with your restaurant; and (iii) withdraw
`your pending trademark application, Serial Number 86470477.
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`We understand that it may take you some time to transition to new branding, and we are
`prepared to discuss a reasonable phase-out period. However, if you fail to comply with the
`foregoing requests, Viacom will be required to proceed in a manner appropriate to protect its
`valuable intellectual property rights. We thank you in advance for your cooperation.
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`Viacom expressly reserves all rights, remedies and defenses in connection with this
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`matter.
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`Very truly yours,
`
`were
`
`Andrew Hughes
`
`fish-v
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`CMMT
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`cousm©1vumaa Ml W 9mm Blah-E
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`[filond VH1
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`

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`Case 4:16-cv-00257 Document 1-2 Filed in TXSD on 01/29/16 Page 1 of 3
`Case 4:16—cv—00257 Document 1-2 Filed in TXSD on 01/29/16 Page 1 of 3
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`EXHIBIT B
`EXHIBIT B
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`Case 4:16-cv-00257 Document 1-2 Filed in TXSD on 01/29/16 Page 2 of 3
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`Law Offices Of
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`100 Wilshire Boulevard, Suite 940
`Santa Monica, California 90401
`Tel: (310) 656-3900
`Fax: (310) 656-3990
`www.mandourlaw.com
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`VIA EMAIL
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`
`
` Ben T. Lila
` blila@mandourlaw.com
`
`November 25, 2015
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`
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`
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`Andrew Hughes
`Counsel
`Viacom
`1515 Broadway
`New York, NY 10036
`Telephone: (212) 846-7619
`Email: andrew.hughes@viacom.com
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`
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`Re: KRUSTY KRAB Trademark
`Our File No.: IJR Capital/6001.02-004
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`
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`Dear Mr. Hughes:
`
`We represent IJR Capital Investments, LLC (“IJR”) and are responding to your letter dated
`November 23, 2015 regarding IJR’s trademark KRUSTY KRAB. Please direct all
`correspondence in this matter to the undersigned.
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`Please be advised that IJR respects the intellectual property rights of others and therefore takes
`the allegations contained in your letter very seriously. After due consideration, we disagree with
`your claim that any purported right of Viacom International Inc. (“Viacom”) has been infringed.
`IJR would in no way appear to be affiliated with Viacom.
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`As a threshold matter, we note your letter does not cite any actual use of the KRUSTY KRAB
`trademark by Viacom in commerce with any specific goods or services. Thus, we are not aware
`of any basis for Viacom’s purported rights. We further note no application or registration by
`Viacom exists.
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`
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`© 2015 Mandour & Associates, APC
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`

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`Case 4:16-cv-00257 Document 1-2 Filed in TXSD on 01/29/16 Page 3 of 3
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`Andrew Hughes
`Counsel
`Viacom
`November 25, 2015
`Page 2
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`
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`Notwithstanding the foregoing, IJR’s use of the trademark would not infringe any supposed right
`of Viacom. As you know, trademarks must be compared to determine if they are related or if the
`activities surrounding their marketing are such that consumer confusion as to origin is likely.
`See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). IJR was not aware of any
`trademark claim of rights by Viacom when it selected its trademark. Although you have not
`identified any goods and services associated with the KRUSTY KRAB, we note that IJR’s
`services, consumers, and channels of trade are distinguishable from Viacom’s and the
`SpongeBob Marks. Moreover, consumers are likely to have a high degree of care when
`purchasing IJR’s goods and services. IJR is further unaware of any actual consumer confusion.
`Finally, IJR has no intention of using any intellectual property similar to the SPONGEBOB
`trademark.
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`Based on the forgoing, our client rejects Viacom’s claim of a likelihood of consumer confusion
`and respectfully declines to cease use. Absent a further response we will consider the matter
`closed.
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`Please be advised that nothing herein shall constitute an admission of any kind, or a waiver or
`relinquishment of any rights, claims or defenses, which our client may have regarding this
`matter, all of which are expressly reserved.
`
`
`Respectfully,
`
`
`Ben T. Lila, Esq.
`Mandour & Associates, APC
`
`
`BTL/lan
`cc: IJR Capital Investments, LLC
`
`© 2015 Mandour & Associates, APC
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`

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`EXHIBIT B
`EXHIBIT B
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`Case 4:16-cv-00257 Document 9 Filed in TXSD on 03/03/16 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
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`
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`VIACOM INTERNATIONAL, INC.
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`
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`v.
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`IJR CAPITAL INVESTMENTS, LLC,
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`Plaintiff,
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`Defendant.
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`
`
`Case No. 4:16-cv-00257
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`DEFENDANT IJR CAPITAL INVESTMENTS,
`LLC’S ANSWER
`
`DEMAND FOR JURY TRIAL
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`Complaint Filed: January 29, 2016
`
`
`IJR CAPITAL INVESTMENTS, LLC by and through counsel hereby answers the
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`Complaint of plaintiff VIACOM INTERNATIONAL, INC., alleges affirmative defenses and
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`demands a jury trial as follows:
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`I.
`Parties
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`1.
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`Defendant lacks information sufficient to form a belief as to the truth or falsity of
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`the allegations contained in Paragraph 1 of the Complaint, and on that basis denies said
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`allegations.
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`2.
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`Admit.
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`II.
`Jurisdiction and Venue
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`3.
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`Defendant admits th