Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA935130
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`Filing date:
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`11/14/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91239795
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`Party
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`Correspondence
`Address
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`Defendant
`Eymun Talasazan
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`KIRK EDWARD SCHENCK
`KULIK GOTTESMAN SIEGEL & WARE LLP
`15303 VENTURA BOULEVARD 14TH FLOOR
`LOS ANGELES, CA 91403
`UNITED STATES
`p@moradianlaw.com, kirkschenck@gmail.com
`310-600-3800
`
`Submission
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`Filer's Name
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`Filer's email
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`Signature
`
`Date
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`Attachments
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`Motion to Suspend for Civil Action
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`Kirk Edward Schenck
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`kirkschenck@gmail.com
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`/Kirk Edward Schenck/
`
`11/14/2018
`
`Starboy Talasazan Motion to Suspend Opp No. 91239795FinalFiled.pdf(465465
`bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`XO TRADEMARKS, LLC
`
`Opposition No: 91239795
`
`Opposer,
`
`Application No: 87383555
`
`vs.
`
`EYMUN TALASAZAN,
`
`Applicant.
`
`Mark: STARBOY
`
`Published in the Official Gazette
` January 30, 2018
`
`App. Filing Date: March 23, 2017
`
`APPLICANT/RESPONDENT EYMUN TALASAZAN’S MOTION TO
`SUSPEND PROCEEDINGS PENDING DISPOSITION OF
` DISTRICT COURT ACTION
`
`TO:
`
`Peter E. Nussbaum
`Chiesa, Shahinian & Giantomasi, PC
`One Boland Drive
`West Orange, New Jersey 07052
`Attys for Opposing Party
`
`-! -1
`
`

`

`PLEASE TAKE NOTICE that Pursuant to 37 C.F.R. § 2.117(a) and TBMP §
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`510.02(a), Applicant/Respondent (“Respondent”) Eymun Talasazan, through its
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`counsel, Kirk Edward Schenck, hereby submits the following motion and hereby
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`does move to suspend the above-referenced proceedings (the “TTAB
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`Proceedings”) pending final disposition of federal district court case Respondent
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`filed on November 14, 2018 in the matter of Eymun Talasazan vs. XO Trademarks,
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`LLC, et al. (CASE NO: 2:18-cv-09611) in federal district court for the Central
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`District of California (the “District Court Action”).
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`Copies of the complaint and civil cover sheet in the District Court Action
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`are attached as Exhibit 1.
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`The District Court Action complaint seeks a judgment that Petitioner XO
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`Trademarks, LLC (“Petitioner”) is engaged in trademark infringement and false
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`endorsement, in violation of Section 43(a) of the Lanham Act, based on its use of
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`the trademark (Serial Number 87/649,533) that is at issue in this TTAB
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`Proceeding.
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`When the parties are involved in civil court proceedings concerning the
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`same marks and issues, the “standard procedure” of the Board is to suspend its
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`administrative proceedings pending outcome of the civil litigation. New Orleans
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`-! -2
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`

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`Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (quoting
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`6 McCarthy on Trademarks and Unfair Competition §32:47 (5th ed. updated
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`September 2017)). The District Court Action need not even be dispositive of the
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`Board proceeding to warrant suspension. Rather, it is sufficient that the District
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`Court Action have bearing on the issues before the Board to justify a suspension.
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`Id.
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`Here, the District Court Action involves the same parties, the same marks,
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`and the same services and activities as those at issue in the TTAB Proceedings.
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`Respondent filed the District Court Action against the Petitioner in this
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`TTAB Proceedings. Respondent contends he legitimately and exclusively owns
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`and controls the trademarks upon which Petitioners’ claims in the TTAB
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`Proceedings are based and the marks Petitioner contends are infringing upon its
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`rights in the District Court Action.
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`Respondent contends in the District Court Action that Petitioner, in
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`violation of Respondent’s rights, uses Respondent’s trademark (Serial Number
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`87/649,533). This is the very mark that Petitioner is opposing in the TTAB
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`Proceedings. Petitioner. The parties and marks in the TTAB Proceedings and the
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`District Court Action are the same or sufficiently related, such that the District
`
`-! -3
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`

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`Court Action will be dispositive of, or at least have a meaningful bearing upon,
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`the issues before this Board.
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`In addition, the issues before this Board are also at issue in the District
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`Court Action. Respondent’s infringement claims involve the same issues the
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`Board will be deciding in these TTAB Proceedings. But, the District Court Action
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`will also involve other matters and broader issues, such as Petitioners’
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`unauthorized use of other elements of Respondent’s intellectual property
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`without permission.
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`In the District Court Action, Respondent is seeking, among other remedies,
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`damages and injunctive relief, which are not available to either party in the TTAB
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`Proceedings. Because the parties, marks, and issues in the District Court Action
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`are the same and because the outcome will be dispositive or at least impact the
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`claims before the Board, suspension of the TTAB Proceedings pending the
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`outcome of the District Court Action between the parties is warranted.
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`Moreover, judicial economy is served by immediately suspending all
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`activity in the TTAB Proceedings including, without, all pending discovery and
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`motions to compel discovery. See Other Telephone Co. v. Connecticut National
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`Telephone Co., 181 USPQ 125 (1974). The parties are currently engaged in
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`-! -4
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`

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`discovery with outstanding discovery requests and depositions scheduled on
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`both sides. The discovery period is not scheduled to close until November 3,
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`2017. Because the District Court Action involves not only the issues currently
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`before the Board, but also issues of false endorsement and unfair competition,
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`discovery in the District Court Action will involve documents, depositions, and
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`other information that is not being and will not be gathered or produced in the
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`TTAB Proceedings. Thus, suspending the TTAB Proceedings as to all
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`outstanding requests would avoid wasted time and expenses for both parties and
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`the Board. See, e.g, Softbelly’s Inc v. Ty, Inc., 2002 WL 1844210, *3 (citing Other
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`Telephone, 181 USPQ 126-27) (“It would be a waste of the Board’s and the parties’
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`time and resources to proceed to litigate this case at the Board when the same
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`issues” are pending in court.)
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`Given the foregoing, an immediate suspension of the proceedings,
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`including all outstanding and pending discovery, is appropriate.
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`Finally, the Board has reached this conclusion in similar circumstances. In
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`Other Telephone, the Board stated that “it is clear” that a District Court Action
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`alleging infringement would “directly affect the resolution” of a proceeding
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`-! -5
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`

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`before it involving the same trademark claims, which is the very defense
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`Respondent has offered in its responsive pleadings in this TTAB Proceedings.
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`In that proceeding, the moving party filed a motion to suspend with only 8
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`days left in its testimony period. Because suspension is standard practice when a
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`District Court Action is pending, it did not take any testimony on reliance upon
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`the Board’s eventual suspension of the proceeding. In granting the motion, over
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`objection, the Board reasoned that judicial economy was served by avoiding the
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`time and expense of testimony in a Board proceeding when a pending District
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`Court Action would impact, or even be dispositive of, the issues before the
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`Board. Id. Moreover, the Board did not fault the moving party for not taking
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`testimony while awaiting the Board’s suspension of the proceedings. Rather, it
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`held that if the proceedings were resumed, the moving party would not be in
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`default, but would have additional time for the taking of testimony. Id. The same
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`reasoning applies here.
`
`//
`
`//
`
`//
`
`-! -6
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`

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`For these reasons, Respondent submits that an order from the Board
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`immediately suspending all activity related to the TTAB Proceedings, including
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`all outstanding discovery requests and scheduled depositions, is warranted. The
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`same is respectfully requested.
`
`Dated: November 14, 2018
`
`Law Offices of Kirk Edward Schenck, PC
`15303 Ventura Boulevard, 14th Floor
`Los Angeles, CA 91403
`
`By: __________________________________
`Kirk Edward Schenck (Calif. SBN: 173963)
`kschenck@kgwslaw.com Direct: 310.600.3800
`
`-! -7
`
`

`

`

`CERTIFICATE OF SERVICE
`
`I, Kirk Edward Schenck, hereby certify that on November 14, 2018, I served a true
`
`and correct copy of the foregoing APPLICANT/RESPONDENT EYMUN
`
`TALASAZAN’S MOTION TO SUSPEND PROCEEDINGS PENDING
`
`DISPOSITION OF DISTRICT COURT ACTION by electronic mail upon:
`
`PETER NUSSBAUM
`Chiesa, Shahinian & Giantomasi, PC
`One Boland Drive
`West Orange, New Jersey 07052
`pnussbaum@csglaw.com
`
`Dated: November 14, 2018
`
`Law Offices of Kirk Edward Schenck, PC
`15303 Ventura Boulevard, 14th Floor
`Los Angeles, CA 91403
`
`By: __________________________________
`Kirk Edward Schenck (Calif. SBN: 173963)
`kschenck@kgwslaw.com Direct: 310.600.3800
`
`
`
`-! -8
`
`

`

`

`Exhibit 1
`
`Kirk Edward Schenck, Esq. (SB# 173963)
`LAW OFFICES OF KIRK EDWARD SCHENCK, PC
`15303 Ventura Boulevard, 14th Floor
`Los Angeles, California 91403
`t: 310-600-3800 e: kirkschenck@gmail.com
`
`Attorneys for Plaintiff:
`EYMUN TALASAZAN
`
`UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`EYMUN TALASAZAN, an Individual,
`
`CASE NO: 2:18-cv-09611
`
`
`
`
`
`
`
`Plaintiff,
`
`vs.
`
`XO TRADEMARKS, LLC, a Delaware
`Limited Liability Company; ABEL
`MAKKONEN TESFAYE, professionally
`known as “THE WEEKND,” an Individual;
`and DOES 1-10, Inclusive,
`
` Defendant
`
`
`
`
`
`
`COMPLAINT FOR:
`
`(1) FEDERAL TRADEMARK
`INFRINGEMENT [15 U.S.C.
`§1114/LANHAM ACT §43(a)]
`(Serial Number 87/383,555)
`
`(2) FEDERAL TRADEMARK
`INFRINGEMENT [15 U.S.C.
`§1114/LANHAM ACT §43(a)]
`(Serial Number 87/649,533)
`
`DEMAND FOR JURY TRIAL
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`COMPLAINT FOR DAMAGES
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`COMES NOW, Plaintiff EYMUN TALASAZAN, who files this Complaint
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`against Defendants XO TRADEMARKS, LLC, a Delaware Limited Liability Company
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`(“XO”); ABEL MAKKONEN TESFAYE, professionally known as “The Weeknd” (the
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`“Weeknd”), an Individual; and DOES 1-10 (collectively, “Defendants”).
`
`
`
` JURISDICTIONAL ALLEGATIONS
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`1. This Court has subject matter jurisdiction under §39 of the Lanham Act 15 U.S.C.
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`§1121, under 28 U.S.C. §§ 1331 and 1338(a) and (b), and under 15 U.S.C. §1051 et seq.,
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`in that the case arises out of §43(a) of the Lanham Act for trademark infringement.
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`2. Venue is proper, inter alia, under 28 U.S.C. 1391(b) because, on information and
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`belief, a substantial part of the events, acts or omissions giving rise to the claim occurred
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`in this judicial district.
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`3. Personal jurisdiction exists over Defendants because, on information and belief,
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`Defendants each separately conduct business in California and in this judicial district,
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`and/or otherwise avail themselves of the privileges and protections of the laws of the
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`State of California, such that this Court’s assertion of jurisdiction over Defendants does
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`not offend traditional notions of fair play and due process.
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`
`
`
`
`
`
` THE PARTIES
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`4. Plaintiff EYMUN TALASAZAN (“Plaintiff”) is now, and all times relevant hereto,
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`an individual residing, and conducting business, in the State of California, County of Los
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`Angeles.
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`5. Plaintiff is informed and believes that Defendant XO TRADEMARKS, LLC (“XO”)
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`is, and all all times relevant hereto was, a Delaware Limited Liability Company,
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`conducting business in the County of Los Angeles, State of California.
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`6. Plaintiff is informed and believes that Defendant ABEL MAKKONEN TESFAYE,
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`pka “The Weeknd” (“The Weeknd”), is an individual whose primary residence is, and
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`who currently conducts business, in the County of Los Angeles, State of California.
`
`-! - 2
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`COMPLAINT FOR DAMAGES
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`7. Plaintiff is ignorant of the true names and capacities of the defendants sued in this
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`Complaint as Does 1 through 10, inclusive, and therefore sues these defendants by such
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`fictitious names. Plaintiff will amend this Complaint to allege the true names and
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`capacities of the Doe defendants when ascertained. Each of the fictitiously named
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`defendants is responsible in some manner for the conduct alleged in this Complaint, and
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`Plaintiff’s damages are actually and proximately caused by the conduct of such
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`defendants.
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`8. Plaintiff further alleges on information and belief that each Defendant including
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`those designated as a DOE is, or in some manner or degree was, responsible for
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`Plaintiff’s damages. On information and belief, Plaintiff alleges that each Defendant is
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`responsible in some manner for the acts and/or occurrences alleged herein. Plaintiff also
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`alleges that his damages were proximately caused by the conduct of all, and/or each, of
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`the Defendants. Unless otherwise specified, all defendants in this action shall be
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`collectively referred to as “Defendants.”
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`9. Plaintiff alleges on information and belief that each Defendant in this action,
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`including those fictitiously named, was the agent, servant, employee, partner, joint
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`venturer, or surety of each and all of the other Defendants. Each Defendant, including
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`those fictitiously named, was acting within the scope of this agency, employment,
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`partnership, joint venture, or suretyship and with the knowledge, consent or ratification of
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`each of the other Defendants in taking the acts or omissions alleged herein.
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`
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` GENERAL ALLEGATIONS
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`10. For over 10 years, Plaintiff has been in the business of creating and
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`commercializing film, television and social media projects, and developing, creating and
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`publishing comic book characters and concepts.
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`11. An avid comic book reader and a lifelong so-called “Rap/R&B” music fan, Plaintiff
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`conceived of an original idea to use the vast popularity of Rap/R&B music to launch and
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`promote a new breed of comic book superhero characters centered on the Rap/R&B
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`music industry.
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`-! - 3
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`COMPLAINT FOR DAMAGES
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`12. To this end, in or about 2014, Plaintiff created an original concept, a format and
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`various character arcs and outlines for a series of comic books and/or film and television
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`projects (Plaintiff’s “Original Concepts”) featuring various superhero characters each (a)
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`with distinct personality traits and unique powers, and (b) related in various manners to
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`real-life musicians and “Rap/R&B” stars (collectively, the “Musicians”) and/or elements
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`of their work. Plaintiff set out to build a team of writers and musicians who would work
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`together with graphic artists to bring Plaintiff’s creation to life.
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`13. Commencing in 2014 and continuing to the date this Complaint was filed, Plaintiff
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`painstakingly developed, and began commercially exploiting and marketing to consumers
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`in the business of financing, producing and/or publishing such ventures, a so-called
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`comic book “universe” featuring Plaintiff’s Original Concepts outlining how various
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`comic-book character Musicians and other fictitious characters interacted in an urban
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`setting where they were charged with overcoming evil and otherwise challenging each
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`other and a long list of villains for power in order to implement their own personal
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`variant of justice (Plaintiff’s “Comic Book Universe”).
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`14. Commencing in 2014, Plaintiff began approaching individual Musicians personally,
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`or by and through their agents or representatives, and pitched each of them a potential
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`creative role in Plaintiff’s Comic Book Universe. Plaintiff worked with various
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`established writers and graphic artists in the continued development of his Comic Book
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`Universe, and sought to populate it with real life Musicians, and other fictional characters
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`inspired by the Rap/R&B music industry generally.
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`15. Commencing in or or about late 2015, Plaintiff began developing his Comic Book
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`Universe with several well known Musicians.
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`16. In or about early 2016, Plaintiff began further developing Plaintiff’s Comic Book
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`Universe with several writers, including Tyger Williams, who had previously written the
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`cult classic film“Menace II Society.” In or about late 2016, also Plaintiff began
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`collaborating with world-famous comic book creator Stan Lee (“Lee”) concerning the
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`story arc structure and characters in Plaintiff’s Comic Book Universe.
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`-! - 4
`
`COMPLAINT FOR DAMAGES
`
`

`

`17. In the process of developing the Universe, Plaintiff concluded some Musicians
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`might not want to use their actual and/or stage names in referencing their own superhero,
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`so Plaintiff occasionally created original fictional characters whose names and attributes
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`related tangentially to some unique element of the Musician’s music/lyrics and/or their
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`personal or professional lives.
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`18. In or about March of 2017, Plaintiff had multiple confidential conversations and in
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`person meetings with Defendant XO, and/or one or more representatives and agents of
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`Defendant XO and The Weeknd including, without limitation, Tony W. Sal (“Sal”).
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`Plaintiff submitted to Defendants his concept for his Rap/R&B-centric Comic Book
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`Universe and proposed that Defendant The Weeknd join other Musicians on Plaintiff’s
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`creative team.
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`19. Plaintiff confidentially proposed to Defendants, by and through their authorized
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`representatives including, without limitation, Sal, that Defendant The Weeknd’s character
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`in Plaintiff’s Comic Book Universe take the name “Starboy” … a fictional character
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`featured in one of The Weeknd’s songs, but which has no relationship to comic books,
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`super powers, super heros, or any other film or television projects. The “Starboy”
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`referenced in The Weeknd song has no connection to any superhero or comic book
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`character. 1
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`20. Despite Plaintiff’s pitching to Defendants the confidential and proprietary details of
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`his proposed Comic Book Universe and various storylines related to the proposed
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`“Starboy” fictional superhero character, Defendants did not respond to Plaintiff’s
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`multiple followup calls.
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`21. In early 2017, despite receiving no response from Defendants, Plaintiff continued to
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`develop the “Starboy” character without any reference to (a) Defendant Weeknd or (b)
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`the lyrical context of this word in Defendant Weeknd’s music, and included it as an
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`integral part in his various third party marketing pitches and development meetings for
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` According to the Urban Dictionary at www.urbandictionary.com: a “Starboy” is defined as: noun. (slang) a womanizer, a
`hilanderer, a man who has sex with many women.
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`-! - 5
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`COMPLAINT FOR DAMAGES
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`comic book, film and television series pitches of his Comic Book Universe. Plaintiff
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`intended to use the “Starboy” character in his Comic Book Universe even if Defendant
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`The Weeknd chose not to work with Plaintiff and his currently assembled team of writers,
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`graphic artists and Musicians, as the character was never based on Defendant The
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`Weeknd himself or the fictional “Starboy” character in The Weeknd’s song.
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`22. On or about March 23, 2017, Plaintiff filed a trademark application for use of the
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`word “Starboy” (Serial Number 87/383,555) in International Class 41 for entertainment
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`services namely production and distribution of television programs in the field of drama
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`(the “Class 41 Trademark”).
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`23. On or about October 18, 2017, Plaintiff filed a trademark application for use of the
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`word “Starboy” (Serial Number 87/649,533) in International Class 16 for comic books
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`(the “Class 16 Trademark”). Unless otherwise specified, Plaintiff’s Class 41 and Class 16
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`Trademarks shall be collectively referred to herein as “Plaintiff’s Trademarks."
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`24. Plaintiff’s extensive use of the Trademarks in, and in connection with, his
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`commercial efforts to develop, market, finance and/or sell his own Comic Book Universe
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`and his own comic books, scripts, treatments, formats, superhero character(s) and/or film
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`and television works has created and built up significant good will in the film, television
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`and comic book production industries, and in the general stream of commerce for comic
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`book-related intellectual property.
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`25. Upon information and belief, Plaintiff alleges that at no point in time has any
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`Defendant, or any other person or entity associated with them, ever filed a trademark
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`application to use the word “Starboy” in the stream of commerce in any trademark
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`category.
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`26. In or about June of 2018, Defendants published, and/or authorized, encouraged,
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`and/or enabled, various third parties to publish, a comic book series entitled
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`“Starboy” (“Defendants' Starboy Comic Book”) featuring the near identical premise
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`Plaintiff had pitched to Defendants the prior year. Since June of 2018, Defendants and
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`their affiliated parties (a) have sold and continue to sell their Starboy Comic Book and
`
`-! - 6
`
`COMPLAINT FOR DAMAGES
`
`

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`related intellectual property and merchandising, and (b) are otherwise using the word and
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`Plaintiff’s trade name “Starboy” in the stream of commerce to identify, sell, market,
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`publicize and/or commercially exploit their Starboy Comic Book. In doing so, as alleged
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`herein, Defendants infringed on Plaintiff’s Trademarks and at trial after discovery
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`Plaintiff expects to prove this damages sustained by virtue of Defendants’ various acts or
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`omissions related to such infringement.
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`27. Upon information and belief, Plaintiff alleges that Defendants have been using, and
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`continue to use, both of Plaintiff’s Trademarks in connection with the sale, marketing and
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`commercial exploitation of (a) Defendant’s comic books, and (b) film and television
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`content and intellectual property derivative of and related to Defendant’s comic books.
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`28. Plaintiff has suffered, and continues to suffer, financial injury and damage as a
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`result of the acts alleged herein including, without limitation, the use of the word
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`“Starboy” in, and in connection with, Defendants’ marketing, advertising, and general
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`identification of Defendants’ Starboy Comic Book and other derivative commercial
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`endeavors.
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`29. Upon information and belief, Plaintiff alleges that Defendants’ use of Plaintiff’s
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`Trademarks in, and in connection with, Defendants' Starboy Comic Book and related
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`commercial items was willful: it having been adopted with knowledge of Plaintiff’s prior
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`rights in, and to, the Trademarks, and with the specific intent to trade on, and benefit
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`from, the goodwill established by Plaintiff in his pre-existing registered Trademarks.
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`30. Since in or about June of 2018, Defendants have used in commerce a reproduction,
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`counterfeit, copy, or colorable imitation of Plaintiff’s registered Trademarks in
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`connection with the sale, offering for sale, distribution, or advertising of goods or
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`services on, or in connection with which, such use is likely to cause confusion, or to
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`cause mistake, or to deceive.
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`COMPLAINT FOR DAMAGES
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`FIRST CAUSE OF ACTION
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`Federal Trademark Infringement Against Defendants
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`Relating To Plaintiff’s Class 16 Trademark
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`15 U.S.C. 1114/Lanham Act §43(a)
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`31. Plaintiff re-alleges and incorporates all prior paragraphs in this Complaint as
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`though fully set forth herein.
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`32. As alleged herein, Plaintiff has been, and is currently, utilizing his “Starboy” Class
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`16 Trademark in the stream of commerce in connection with the sale, advertising,
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`marketing, and the seeking of publishers and financing for comic books. Defendants are
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`actually aware that Plaintiff had applied for the “Starboy” Class 16 Trademark. Further,
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`Plaintiff’s registration of the Class 16 Trademark on the Principal Register gave
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`constructive notice to Defendants of Plaintiff’s ownership rights in and to the Class 16
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`Trademark.
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`33. Defendants did not at any time seek or obtain written, verbal or implied consent or
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`authorization from Plaintiff as the registered owner of the Class 16 Trademark to
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`commercially distribute and market a comic book bearing Plaintiff’s Class 16 Trademark
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`into the stream of commerce.
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`34. As alleged herein, Defendants intentionally and knowingly used in the stream of
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`commerce Plaintiff’s Class 16 Trademark in connection with the sale, offering for sale,
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`distribution, marketing, promotion, publicity, and/or advertising of Defendants’ Starboy
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`Comic Book and related intellectual property.
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`35. Defendants’ egregious and intentional use, and sale, of their own Starboy Comic
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`Book bearing Plaintiff’s Class 16 Trademark is likely to cause confusion, mistake, or
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`deception as to the origin of Defendants’ comic book and its affiliation with Plaintiff’s
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`own original version of the Starboy superhero character and related comic book
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`intellectual property.
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`36. Defendants’ continued and knowing use of Plaintiff’s Class 16 Trademark in the
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`stream of commerce in the United States and internationally without Plaintiff’s consent or
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`-! - 8
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`COMPLAINT FOR DAMAGES
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`authorization constitutes an intentional infringement of Plaintiff’s federally registered
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`Class 16 Trademark in violation of Section 32 of the Lanham Act, 15 U.S.C. §1114.
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`Plaintiff has suffered, and continues to suffer, monetary and other damages as a result,
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`subject to proof at trial.
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`SECOND CAUSE OF ACTION
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`Federal Trademark Infringement Against Defendants
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`Relating To Plaintiff’s Class 41 Trademark
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`15 U.S.C. 1114/Lanham Act §43(a)
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`37. Plaintiff re-alleges and incorporates all prior paragraphs in this Complaint as
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`though fully set forth herein.
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`38. As alleged herein, Plaintiff has been, and is currently, utilizing his “Starboy” Class
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`16 Trademark in the stream of commerce in connection with the sale, advertising,
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`marketing, and the seeking of financing for various film and television projects utilizing
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`his “Starboy” Class 16 Trademark. Defendants are actually aware that Plaintiff had
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`applied for the “Starboy” Class 41 Trademark. Further, Plaintiff’s registration of the Class
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`41 Trademark on the Principal Register gave constructive notice to Defendants of
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`Plaintiff’s ownership rights in and to the Class 41 Trademark.
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`39. Defendants did not at any time seek or obtain written, verbal or implied consent or
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`authorization from Plaintiff as the registered owner of the Class 41 Trademark to
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`commercially distribute and market a comic book bearing Plaintiff’s Class 41 Trademark
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`into the stream of commerce.
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`40. As alleged herein, Defendants intentionally and knowingly used in the stream of
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`commerce Plaintiff’s Class 41 Trademark in connection with the sale, offering for sale,
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`distribution, marketing, promotion, publicity, and/or advertising of Defendants’ Starboy
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`Comic Book and related intellectual property as a television and/or film derivative project
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`based on the underlying intellectual property contained in Defendants’ Starboy Comic
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`Book.
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`-! - 9
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`COMPLAINT FOR DAMAGES
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`41. Defendants’ egregious and intentional use, and sale, of their own Starboy Comic
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`Book and derivative film and television intellectual property bearing Plaintiff’s Class 41
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`Trademark is likely to cause confusion, mistake, or deception as to the origin of
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`Defendants’ derivative film and television projects and its affiliation with Plaintiff’s own
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`original version of the Starboy superhero character and related comic book and film and
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`television-based intellectual property.
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`42. Defendants’ continued and knowing use of Plaintiff’s Class 41 Trademark in the
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`stream of commerce in the United States and internationally without Plaintiff’s consent or
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`authorization constitutes an intentional infringement of Plaintiff’s federally registered
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`Class 41 Trademark in violation of Section 32 of the Lanham Act, 15 U.S.C. §1114.
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`Plaintiff has suffered, and continues to suffer, monetary and other damages as a result,
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`subject to proof at trial.
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` PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays that:
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`1. Defendants, and all of their agents, officers, employees, representatives,
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`successors, assigns, attorneys, and all other persons acting for, with, by, through or under
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`authority from Defendants, or in concert or participation with Defendants, and each of
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`them, be enjoined from:
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`a. advertising, marketing, promoting, offering for sale, distributing, or
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`selling Defendants' Starboy Comic Book and any derivative commercial goods or
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`services based thereon;
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`b. using the Trademarks on or in connection with any of Defendants' or any
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`other entity’s goods or services;
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`c. using the Trademarks or any other copy, reproduction, colorable
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`imitation, or simulation of the Trademarks on, or in connection with, Defendants' goods;
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`and
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`d. using any trademark, name, logo, design, or source designation of any
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`kind on or in connection with Defendants' goods or services that is a copy, reproduction,
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`-!
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`- 10
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`COMPLAINT FOR DAMAGES
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`

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`colorable imitation, or simulation of, or confusingly similar to any of Plaintiff’s various
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`trademarks, trade dresses, names, or logos.
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`2. Defendants be ordered to recall all of Defendants’ Starboy Comic Books, or
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`any other goods bearing Plaintiff’s Trademarks, or any other confusingly similar
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`imitation of Plaintiff’s Trademark that are in Defendants' possession or have been shipped
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`by Defendants or under its authority, to any customer, including, but not limited to, any
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`wholesaler, distributor, retailer, consignor, or marketer, and also to deliver to each such
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`store or customer a copy of this Court’s order as it relates to said injunctive relief against
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`Defendants;
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`3. Defendants be ordered to deliver up for impoundment and for destruction, all
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`comic books, bags, boxes, labels, tags, signs, packages, receptacles, advertising,
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`marketing materials, sample books, promotional materials, stationery, or other materials
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`in the possession, custody or under the control of Defendants that are found to adopt,
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`infringe, or dilute, or infringe on, any of Plaintiff’s trademarks;
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`4. Defendants be ordered to account to Plaintiff for any and all profits derived by
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`Defendants from the sale or distribution of their Star Boy Comic Book using Plaintiff’s
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`Class 16 Trademark;
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`5. Plaintiff be awarded all damages caused by the acts forming the basis of this
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`Complaint;
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`6. Based on Defendants' knowing and intentional use of an identical imitation or
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`copy of Plaintiff’s Class 16 Trademark, Defendants be ordered to pay treble damages
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`based on the award of Defendants' profits pursuant to 15 U.S.C. § 1117(a);
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`7. Defendants be required to pay to Plaintiff the costs and reasonable attorneys’
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`fees incurred by Plaintiff in this action pursuant to 15 U.S.C. § 1117(a);
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`8. Based on Defendants' willful and deliberate infringement and/or dilution of
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`Plaintiff’s Class 16 Trademark, and to deter such conduct in the future, Plaintiff be
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`awarded punitive damages;
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`-! - 11
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`COMPLAINT FOR DAMAGES
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`9. Plaintiff be awarded prejudgment and post-judgment interest on all monetary
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`awards; and
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`10. Plaintiff be granted such other and fu