Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA900021
`05/31/2018
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding.
`
`91240730
`
`Defendant
`Hyperion Entertainment C.V.B.A.
`
`Plaintiff
`Itec, LLC
`
`No
`
`Applicant
`
`Other Party
`
`Have the parties
`held their discov-
`ery conference
`as required under
`Trademark Rules
`2.120(a)(1) and
`(a)(2)?
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Hyperion
`Entertainment C.V.B.A. hereby requests suspension of this proceeding pending a final determination of the
`civil action. Trademark Rule 2.117.
`Hyperion Entertainment C.V.B.A. has secured the express consent of all other parties to this proceeding for
`the suspension and resetting of dates requested herein.
`Hyperion Entertainment C.V.B.A. 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.
`
`Certificate of Service
`
`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,
`/rexadonnelly/
`Rex A. Donnelly
`radonnelly@ratnerprestia.com
`tmde@ratnerprestia.com, jfrankland@ratnerprestia.com
`05/31/2018
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of:
`Application Serial No. 87/329,469
`Published in the Official Gazette
`On December 26, 2017
`
`
`ITEC, LLC,
`
`
`
`
`
`HYPERION ENTERTAINMENT C.V.B.A.,
`
`
`
`Applicant.
`
`
`
`
`Opposer,
`
`v.
`
`
`
`
`
`Mark: Boing Ball Logo
`
`Opposition No.: 91240730
`
`
`
`
`
`
`
`
`
`JOINT STIPULATION TO SUSPEND PROCEEDINGS
`Pursuant to Rule 37 C.F.R. § 2.117(a) and TBMP § 510.02, Opposer Itec, LLC (“Itec”)
`
`and Applicant Hyperion Entertainment C.V.B.A. (“Hyperion”) stipulate that this opposition
`
`proceeding be suspended pending the final determination of a pending civil action involving both
`
`parties which will have a direct bearing on this proceeding.
`
`
`
`The parties state the following:
`
`1.
`
`On March 13, 2018, Hyperion commenced a civil action, captioned “Hyperion
`
`Entertainment C.V.B.A. v. Itec LLC, Amiga, Inc., Amino Development Corporation [(collectively,
`
`the “Amiga Parties)] and Cloanto Corporation,” in the United States District Court for the
`
`Western District of Washington (WDWA18-cv-00381-RSM) (the “Civil Action”). A copy of
`
`the Complaint from the Civil Action is attached as Exhibit 1.
`
`2.
`
`The Complaint alleges, among other things, issues in common with those in the
`
`present proceeding. In the Civil Action, Hyperion seeks, among other relief, (a) judgment that
`
`Applicant is the rightful owner of the Boing Ball logo mark pursuant to a settlement agreement
`
`

`

`with the Amiga Parties and (b) judgment as to whether the Amiga Parties, or which among them,
`
`owns any portion of the Boing Ball logo mark.
`
`3.
`
`It is the policy of the Board to suspend proceedings when the parties are involved
`
`in a civil action that may have a bearing on the Board case. 37 C.F.R. § 2.117(a). Because the
`
`District Court’s determination as to ownership of the Boing Ball logo mark will be binding upon
`
`the Board, the parties respectfully request that the TTAB exercise its discretion to suspend the
`
`instant proceeding pending final determination of the Civil Action.
`
`4.
`
`Moreover, suspending this proceeding pending the final determination of the Civil
`
`Action will promote judicial economy.
`
`
`
`
`/James T. Hultquist/
`James T. Hultquist, Esq.
`Clark W. Lackert, Esq.
`Jillian L. Burstein, Esq.
`REED SMITH LLP
`10 South Wacker Drive, Suite 4000
`Chicago, IL 60606
`(312) 207-1000 (phone)
`(312) 207-6400 (fax)
`jhulquist@reedsmith.com
`clackert@reedsmith.com
`jburstein@reedsmith.com
`
`Attorneys for Opposer, Itec, LLC
`
`
`
`
`
`
`
`
`
`
`
`/Rex A. Donnelly/
`Rex A. Donnelly, Esq. (#3492)
`RatnerPrestia
`1007 Orange Street, Suite 205
`Wilmington, DE 19801
`(302) 778-2500 (phone)
`(302) 778-2600 (fax)
`radonnelly@ratnerprestia.com
`
`Attorney for Applicant,
`Hyperion Entertainment C.V.B.A.
`
`
`2
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the document identified below has been served via
`
`the method stated below:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date of Service:
`
`May 31, 2018
`
`Title of Document:
`
`Party Served:
`
`Joint Stipulation to Suspend Proceedings
`
`James T. Hultquist, Esq.
`Clark W. Lackert, Esq.
`Jillian L. Burstein, Esq.
`REED SMITH LLP
`10 South Wacker Drive, Suite 4000
`Chicago, IL 60606
`jhulquist@reedsmith.com
`clackert@reedsmith.com
`jburstein@reedsmith.com
`
`Attorneys for Opposer, Itec, LLC
`
`Type of Service:
`
`Via Electronic Mail
`
`
`/Rex A. Donnelly/
`Rex A. Donnelly
`
`
`
`
`
`
`
`
`
`3
`
`

`

`EXHIBIT 1
`
`EXHIBIT 1
`
`

`

`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 1 of 26
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
`
`
`
`No. 2:18-cv-00381
`
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT AND BREACH OF
`CONTRACT
`
`
`
`
`HYPERION ENTERTAINMENT C.V.B.A.,
`
`
`
`
`
`ITEC, LLC, a New York limited liability
`company; AMIGA, INC., a Delaware
`corporation; AMINO DEVELOPMENT
`CORPORATION, a Washington corporation;
`and CLOANTO CORPORATION, a Nevada
`Corporation
`
`
`
`
`Plaintiff,
`
`vs.
`
`Defendants.
`
`
`
`
`
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
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`10
`11
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`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`AND BREACH OF CONTRACT
`CASE No. 2:18-cv-00381
`
`LEE & HAYES, PLLC
`601 West Riverside Ave., Suite 1400
`Spokane, Washington 99201
`Telephone: (509) 324-9256 Fax: (509) 323-8979
`
`
`

`

`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 2 of 26
`
`
`
`Plaintiff Hyperion Entertainment C.V.B.A. (“Hyperion” or “Plaintiff”), by and through its
`attorneys, and for its Complaint against Defendants Itec, LLC (“Itec”), Amiga, Inc. (“Amiga”),
`Amino Development Corporation (“Amino”) (Itec, Amiga, and Amino collectively referred to as
`“the Amiga Parties”) and Cloanto Corporation (“Cloanto”) (all of the foregoing collectively referred
`to as “Defendants”), states and alleges the following:
`NATURE OF THE ACTION
`This is an action for (i) breach of contract, (ii) a declaratory judgment that Hyperion
`1.
`is the owner of all right, title and interest in certain intellectual property rights as detailed further
`herein; (iii) declaratory judgment that Hyperion does not infringe U.S. Copyright TX0003282574;
`(iv) declaratory judgment of no trademark infringement and no unfair competition by Hyperion (v)
`declaratory judgment that Hyperion has a non-exclusive license in the AMIGA trademark, (vi) an
`order directing the U.S. Patent and Trademark Office (USPTO) to uphold Hyperion’s Opposition
`No. 91237628 filed against Cloanto’s U.S. Trademark Application Ser. No. 91237628 for AMIGA,
`and (vii) intentional interference with contract or business expectancy for which Hyperion seeks
`equitable relief.
`All of the issues in this case arise from a Settlement Agreement entered via Stipulated
`2.
`Judgment by the Honorable Ricardo S. Martinez of this Court on December 14, 2009, in the matter
`of Amiga, Inc. v. Hyperion VOF, 2:07-cv-00631-RSM (“the Prior Washington Action”). A copy of
`the Stipulated Judgment including the Settlement Agreement is attached as Exhibit 1.
`The Settlement Agreement states in Paragraph 16: “The Parties agree that any
`3.
`dispute arising from the interpretation or enforcement of this Agreement shall be resolved solely
`through litigation in the U.S. District Court for the Western District of Washington.” Ex. 1 at p. 36.
`On information and belief, the Amiga Parties are in material breach and/or default
`4.
`of the Settlement Agreement. Further, certain actions or inactions by the Amiga Parties and by
`Cloanto require the Court’s interpretation and enforcement of the Agreement. Still further, actions
`
`1 2 3 4 5 6 7 8 9
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`26
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`AND BREACH OF CONTRACT - 1
`CASE NO. 2:18-CV-00381
`
`LEE & HAYES, PLLC
`601 West Riverside Ave., Suite 1400
`Spokane, Washington 99201
`Telephone: (509) 324-9256 Fax: (509) 323-8979
`
`
`

`

`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 3 of 26
`
`
`
`of all Defendants have caused injury to Plaintiff for which Plaintiff has no adequate remedy at law,
`thereby compelling Plaintiff to bring this action.
`Hyperion’s rights under the Settlement Agreement are material to resolution of
`5.
`claims alleged by Cloanto in the matter of Cloanto Corporation v. Hyperion Entertainment
`C.V.B.A. (Civil Action No. 5:17-cv-1353 (LEK/ATB), brought by Cloanto in the United States
`District Court for the Northern District of New York (“the New York Action”), and for that reason,
`Hyperion has requested that the New York Action be transferred to this Court for consolidation with
`this Action.
`
`PARTIES
`Plaintiff Hyperion is a Belgian limited liability company having a principal place
`6.
`of business at Avenue de Tervueren 34, Brussels, BELGIUM 1040.
`On information and belief, Defendant Itec is a New York limited liability company
`7.
`having a business address C/O Reed Smith LLP, 599 Lexington Avenue, 29th Floor, New York,
`NY 10022.
`On information and belief, Defendant Amiga is or was a Delaware corporation
`8.
`having as its registered agent the Corporation Service Company, of 251 Little Falls Drive,
`Wilmington, DE 19808, and has or had its administrative seat at 34935 SE Douglas Street,
`Snoqualmie, WA 98065, UBI 602621140.
`On information and belief, Defendant Amino is an inactive Washington
`9.
`corporation having as its registered agent the Corporation Service Company, having an address of
`300 Deschutes Way SW, Ste. 304, Tumwater, WA 98501, UBI 601983734.
`On information and belief, Defendant Cloanto is a Nevada corporation having an
`10.
`address of 5940 S. Rainbow Blvd, Suite 400 #67834, Las Vegas, NV 891187-2507.
`JURISDICTION AND VENUE
`This Court has jurisdiction over the subject matter of this action pursuant to the
`11.
`provisions of 28 U.S.C. §§ 1331, 1338, and 2201; 17 U.S.C. § 501; and 15 U.S.C. §§ 1121 and 1125,
`
`1 2 3 4 5 6 7 8 9
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`13
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`16
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`18
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`20
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`22
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`
`COMPLAINT FOR DECLARATORY JUDGMENT
`AND BREACH OF CONTRACT - 2
`CASE NO. 2:18-CV-00381
`
`LEE & HAYES, PLLC
`601 West Riverside Ave., Suite 1400
`Spokane, Washington 99201
`Telephone: (509) 324-9256 Fax: (509) 323-8979
`
`
`

`

`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 4 of 26
`
`
`
`in that this action arises under the copyright and trademark laws of the United States, and Plaintiffs
`seek Declaratory and injunctive relief, and equitable relief for breach of contract, and for intentional
`interference with contract or business expectancy, under the principles of supplemental jurisdiction
`pursuant to 28 U.S.C. § 1367.
`This Court has personal jurisdiction over the Amiga Parties because the Amiga Parties
`12.
`and Plaintiff are parties to the Settlement Agreement, which expressly provides in ¶ 16 that any
`disputes relating thereto shall be resolved “solely through litigation in the U.S. District Court for the
`Western District of Washington.”
`This Court has personal jurisdiction over Cloanto, because in the New York Action,
`13.
`Cloanto repeatedly asserts its own interpretation of the Settlement Agreement, thereby admitting that
`Cloanto’s claims rest on interpretation of the Settlement Agreement. Further, on information and
`belief, Cloanto conducts and has conducted business in the State of Washington, including but not
`limited to business transactions with the Amiga Parties, which transactions give rise to the dispute in
`this case. Additionally, on information and belief, Cloanto has advertised and sold and continues to
`advertise and sell products within this judicial district, including Cloanto’s “Amiga Forever” operating
`system emulator, which is offered through Cloanto’s “Online Store” at www.amigaforever.com. On
`information and belief, the “Amiga Forever” product and other Cloanto products incorporate Amiga
`IP that is the subject of the Settlement Agreement. On information and belief, the “Amiga Forever”
`product has been downloaded by purchasers in this district, and has been shipped by Cloanto on
`physical media to buyers in this district, in combination with DVD video content. Cloanto
`purposefully directs its advertising and promotional activities to buyers in this district.
`Venue is proper in this district under 28 U.S.C. § 1391.
`14.
`
`
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`
`COMPLAINT FOR DECLARATORY JUDGMENT
`AND BREACH OF CONTRACT - 3
`CASE NO. 2:18-CV-00381
`
`LEE & HAYES, PLLC
`601 West Riverside Ave., Suite 1400
`Spokane, Washington 99201
`Telephone: (509) 324-9256 Fax: (509) 323-8979
`
`
`

`

`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 5 of 26
`
`
`
`A.
`
`FACTUAL BACKGROUND
`History through the Settlement Agreement
`The Amiga operating system software, originally developed by Commodore for its
`15.
`line of Amiga computers, has been credited as having launched the multi-media computing
`revolution in 1987.
`Hyperion is the developer of an Amiga operating system known as AmigaOS 4.
`16.
`17.
`Through a chain of subsequent events, various intellectual property rights relating to
`Amiga software, including trademark and copyright rights, (“the Amiga IP”) became subject to a
`hotly contested dispute, the facts and allegations of which are of record in the Prior Washington
`Action, which allegations were resolved between Plaintiff and the Amiga Parties via the Settlement
`Agreement.
`18.
`
`The Amiga IP addressed in the Settlement Agreement includes:
`“Amiga Mark,” as defined in Definition c. of the Settlement
`a.
`Agreement to mean “any mark owned and/or registered or licensed
`by or to the Amiga Parties containing the word “Amiga” whether in
`stylized form (figurative mark) or otherwise.”
`“Exclusive Licensed Marks,” as defined in Definition g. of the
`Settlement Agreement to mean AmigaOS, Amiga OS, AmigaOne,
`and Amiga One.
`“Software,” as defined in Definition n. of the Settlement Agreement
`to mean “Amiga OS 3.1 Software, which is the Operating system
`(including without limitation its Software Architecture as described
`in the Documentation1) originally developed, owned and marketed
`by Commodore Business Machines (CMB) for their Amiga line of
`computers in 1994.”
`“Documentation,” as defined in Definition f. of the Settlement
`Agreement to mean “the publications listed on Exhibit 4 hereof [to
`the Settlement Agreement]”
`“Licensed Marks,” as defined in Definition i. of the Settlement
`Agreement to mean “the Exclusive Licensed Marks and the “Boing
`Ball” logo mark (i.e. the checkered ball)” (depicted infra).
`
`b.
`
`c.
`
`d.
`
`e.
`
`
`1 “Documentation” being further defined in Definition f. of the Settlement Agreement to mean “the publications listed
`in Exhibit 4 [of the Settlement Agreement],” which Exhibit lists five Manuals and their corresponding ISBN
`numbers.
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`AND BREACH OF CONTRACT - 4
`CASE NO. 2:18-CV-00381
`
`LEE & HAYES, PLLC
`601 West Riverside Ave., Suite 1400
`Spokane, Washington 99201
`Telephone: (509) 324-9256 Fax: (509) 323-8979
`
`
`1 2 3 4 5 6 7 8 9
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`

`

`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 6 of 26
`
`
`
`f.
`
`“AmigaOS 4,” as defined in Definition d. of the Settlement
`Agreement to mean “the Operating System developed by Hyperion
`and based in part on the Software, including without limitation the
`Software Architecture of the Software as described in the
`Documentation, in any version, (irrespective of version numbering,
`e.g., AmigaOS 5).
`See Exhibit 1 at pp. 29-30.
`
`Pursuant to the Grant clause in paragraph 1(b), the Settlement Agreement grants
`
`19.
`Plaintiff:
`. . . an exclusive, perpetual, worldwide and royalty-free, transferable right and Object
`Code and Source Code license to the Software in order to use, develop, modify,
`commercialize, distribute and market the Software in any form (including through
`sublicensing), on any medium (now known or otherwise), through any means
`(including but not limited to making AmigaOS 4 available to the public via the
`internet) and for any current or future hardware platform.
`
`Id.at p. 31.
`Pursuant to the Grant clause in paragraph 1(c), the Settlement Agreement grants
`20.
`Plaintiff “an exclusive, perpetual, worldwide and royalty-free, transferable right and license to use
`the Exclusive Licensed Marks and the Software.” Id. at p. 32.
`Paragraph 7 of the Settlement Agreement contains Plaintiff’s express reservation of
`21.
`independent rights to the Licensed marks, which states that nothing in the Settlement Agreement
`“shall be construed as a waiver or abandonment” thereof. Id. at p. 35.
`Paragraph 18 of the Settlement Agreement grants Plaintiff a Security Interest in
`22.
`“Collateral” -- defined as in Definition e. of the Settlement Agreement to mean “the Exclusive
`Licensed Marks, the Software, and the ‘Boing Ball’ logo mark.” Id. at pp. 37, 29.
`Paragraph 18(c) of the Settlement Agreement confers upon and entitles Plaintiff to
`23.
`foreclose on the Security Interest in the Collateral in the event of a default by the Amiga Parties and
`an acquirer . . . of . . . assets including the Collateral. Id. at p. 38.
`
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`COMPLAINT FOR DECLARATORY JUDGMENT
`AND BREACH OF CONTRACT - 5
`CASE NO. 2:18-CV-00381
`
`LEE & HAYES, PLLC
`601 West Riverside Ave., Suite 1400
`Spokane, Washington 99201
`Telephone: (509) 324-9256 Fax: (509) 323-8979
`
`
`

`

`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 7 of 26
`
`
`
`Specifically, Paragraph 18(c) of the Settlement Agreement states that “[i]f an
`24.
`acquirer or buyer of stock or assets including the Collateral (or part thereof) under §152 refuses to
`execute the appropriate form of Exhibit 33 hereto prior to or at the closing of the acquisition or
`purchase, then the Amiga Parties and the acquirer or buyer will be deemed to be in default under
`the terms of this Agreement. Hyperion is then authorized to foreclose on its Security Interest in the
`Collateral.” Id.
`Paragraph 13 of the Settlement Agreement confers upon Plaintiff a power to enforce
`25.
`its rights in the Exclusive Licensed Marks, the Software, and the Boing Ball Logo Mark in the event
`of the Amiga Parties elect not to, or do not, exercise such rights. Id. at p. 35.
`The rights granted to Plaintiff by the Settlement Agreement were, in accordance with
`26.
`Paragraph 1(b), “[w]ithout prejudice to any Existing License Agreement,” wherein the term Existing
`License Agreement is defined in Definition h. of the Settlement Agreement as having been provided
`in a “complete and exhaustive list attached to [the Settlement Agreement] as Exhibit 1.” Id. at pp.
`31.
`
`Exhibit 1 to the Settlement Agreement lists a license to “Cloanto Italia srl” for
`27.
`“various licenses commencing in 1994” for an “indefinite term,” listing a “worldwide” territory,
`and a scope of “[r]ights sufficient to support Amiga Forever, including emulation modules.” Id. at
`p. 44.
`
`On information and belief, Defendant Cloanto is a parent, subsidiary, controls, is
`28.
`controlled by, has common control with, and/or is otherwise an affiliate of Cloanto Italia srl.
`Pursuant to the “Non-Aggression” clause in Paragraph 2 of the Settlement
`29.
`Agreement, Hyperion is permitted to challenge “the use and/or ownership of any Amiga Mark (other
`than an Exclusive Licensed Mark) by any Amiga Party or any licensee or successor to any Amiga
`
`
`2 Section 15 states that any potential buyer of an asset subject to the agreement “must execute an agreement
`substantially in the form attached hereto as Exhibit 3 at or prior to the time it completes or closes that acquisition
`or purchase.” (emphasis in original)
`3 Exhibit 1 at p. 46.
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`AND BREACH OF CONTRACT - 6
`CASE NO. 2:18-CV-00381
`
`LEE & HAYES, PLLC
`601 West Riverside Ave., Suite 1400
`Spokane, Washington 99201
`Telephone: (509) 324-9256 Fax: (509) 323-8979
`
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`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 8 of 26
`
`
`
`Party” when “the challenged activity constitutes a material breach of [the Settlement Agreement],
`including but not limited to any material infringement by the Amiga Parties, by a successor to any
`Amiga Party, by a Purchaser or by a licensee of the licenses granted to Hyperion pursuant to this
`Agreement.” Id. at p. 33.
`Plaintiff’s business
`B.
`Plaintiff is a privately held Belgian company, founded on 25 February, 1999, and
`30.
`was previously known as Hyperion Entertainment VOF (the named Defendant in the Prior
`Washington Action).
`Plaintiff specializes inter alia in 3D graphics and 3D driver development, firmware
`31.
`development for embedded systems, IT consulting and the conversion of high quality entertainment
`software from Windows to niche platforms including Amiga, Linux and MacOS and thus develops
`entertainment software for the Linux, MacOS and AmigaOS operating systems.
`Since well before entering into the Settlement Agreement in 2009, Plaintiff has been
`32.
`actively developing AmigaOS 4.x, an almost complete rewrite for modern times of the legendary
`Amiga operating system which exhibits a nearly complete backward compatibility with the
`Software.
`AmigaOS 4.x runs on several PowerPC based hardware platforms including original
`33.
`Amigas with PowerPC accelerator cards and the stand-alone AmigaOne, SAM, Pegasos II
`platforms as well as the AmigaOne X5000.
`Lapse of the Amiga Registration and filing by Defendant Cloanto
`C.
`Of the original Amiga Parties, on information and belief, both Defendants Amiga
`34.
`and Amino have been administratively dissolved, terminated, or no longer have good standing in
`their respective jurisdictions of formation, but Itec remains in good standing.
`Plaintiff has no knowledge as to whether Defendants Amiga or Amino have the
`35.
`capacity to be reinstituted, or as to the disposition of any assets formerly owned by Defendants
`Amiga or Amino. Defendant Amiga was the listed owner of, inter alia, U.S. Trademark Registration
`
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`
`COMPLAINT FOR DECLARATORY JUDGMENT
`AND BREACH OF CONTRACT - 7
`CASE NO. 2:18-CV-00381
`
`LEE & HAYES, PLLC
`601 West Riverside Ave., Suite 1400
`Spokane, Washington 99201
`Telephone: (509) 324-9256 Fax: (509) 323-8979
`
`
`

`

`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 9 of 26
`
`
`
`No. 1,401,045 (“the ’045 Registration”), registered July 15, 1986, for the mark AMIGA in
`connection with: “Computers, computer disk drives, ram expansion cartridges, computer monitors,
`and computer modems” in class 9.
`The ’045 Registration was renewed for additional 10-year terms in 1996 and 2006,
`36.
`but it was not renewed in 2016, and the 6-month grace period for renewal expired on December 15,
`2016.
`
`Because the ’045 Registration was the sole remaining registration for an AMIGA-
`37.
`formative mark owned by Amiga in the United States, its lapse created a void that was quickly
`filled.
`
`On January 2, 2017, Defendant Cloanto filed U.S. Application Ser. No. 87/287,078
`38.
`(“the Cloanto Application”) for the mark AMIGA in connection with:
`Computer game programs; Computer game software downloadable from a global
`computer network; Computer hardware; Computer hardware and computer
`peripherals; Computer operating programs; Computer operating software;
`Computer operating systems; Computer programs for video and computer games;
`Computer software for emulating computer hardware, emulating computer
`operating systems on personal computers and mobile devices and instructional user
`guides sold as a unit; Computer software for emulating computer hardware,
`emulating computer operating systems on personal computers and mobile devices
`that may be downloaded from a global computer network; Computer software for
`emulating computer hardware, emulating computer operating systems on personal
`computers and mobile devices; Computer software platforms for emulating
`computer hardware and computer operating systems; Computer software, namely,
`game engine software for video game development and operation; Computer
`software for emulating computer hardware and computer operating systems that
`may be downloaded from a global computer network; Digital media, namely, pre-
`recorded video cassettes, digital video discs, digital versatile discs, downloadable
`audio and video recordings, DVDs, and high definition digital discs featuring
`software, games, music, videos, text, ebooks; Downloadable computer game
`software via a global computer network and wireless devices in Class 9.
`
`PLAINTIFF’S TRADEMARK FILINGS
`
`D.
`
`Recognizing that Plaintiff’s rights to the Exclusively Licensed Marks had been
`39.
`materially compromised by the lapse of the ’045 Registration and would be even further prejudiced
`by potential registration of the Cloanto Application unchallenged, Plaintiff made several trademark
`filings on February 8, 2017, to preserve its rights, including:
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`AND BREACH OF CONTRACT - 8
`CASE NO. 2:18-CV-00381
`
`LEE & HAYES, PLLC
`601 West Riverside Ave., Suite 1400
`Spokane, Washington 99201
`Telephone: (509) 324-9256 Fax: (509) 323-8979
`
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`

`

`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 10 of 26
`
`U.S. Trademark Application Ser. No. 87/329,448 for AmigaOne, in
`connection with:
`Computer hardware; computers; Central processing units (CPU);
`motherboards, in Class 9; and
`
`Promotion, advertising and marketing of on-line websites of others
`in the field of computer hardware and software; Providing on-line
`web directory services featuring hyperlinks to the websites of others,
`in Class 35.
`U.S. Trademark Application Ser. No. 87/329,431 for AmigaOS, in
`connection with:
`Computer operating programs and computer operating systems;
`Software development kits (SDK); Computer software development
`tools, in Class 9; and
`
`featuring computer software;
`On-line retail store services
`Promotion, advertising and marketing of on-line websites of others
`in the field of computer hardware and software; Providing on-line
`web directory services featuring hyperlinks to the websites of others,
`in Class 35.
`
`U.S. Trademark Application Ser. No. 87/329,469, for the “Boing
`Ball logo” (depicted below) in connection with:
`
`a.
`
`b.
`
`
`c.
`
`
`
`
`
`Computer operating programs and computer operating systems; Software
`development kits (SDK); Computer software development tools; Computer
`hardware; computers; Central processing units (CPU); motherboards, in
`Class 9; and
`On-line retail store services featuring computer software; Promotion,
`advertising and marketing of on-line websites of others in the field of
`computer hardware and software; Providing on-line web directory services
`featuring hyperlinks to the websites of others, in Class 35.
`
`
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`COMPLAINT FOR DECLARATORY JUDGMENT
`AND BREACH OF CONTRACT - 9
`CASE NO. 2:18-CV-00381
`
`LEE & HAYES, PLLC
`601 West Riverside Ave., Suite 1400
`Spokane, Washington 99201
`Telephone: (509) 324-9256 Fax: (509) 323-8979
`
`
`

`

`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 11 of 26
`
`
`
`E.
`
`Plaintiff’s communications with the Amiga Parties
`On or about March 2, 2017, Plaintiff also contacted the last known officer of Amiga
`40.
`and Amino, former CEO Mr. Bill McEwen in hopes of resolving its concerns about the lapse of the
`’045 Registration and the filing of the Cloanto Application. Mr. McEwen represented that he was
`in contact with the shareholders of Amiga and would relay Plaintiff’s concerns and proposed
`resolution.
`On March 31, 2017, having not resolved its concerns, Plaintiff sent a letter to
`41.
`Defendant Itec.
`As part of an exchange of communications between Plaintiff and Itec that followed,
`42.
`Plaintiff expressly inquired in a letter dated April 17, 2017 (“the April 17 letter”), whether “the
`Amiga Parties has granted, under the terms of its license to Cloanto or otherwise, any rights or
`authorizations to Cloanto to file for a U.S. trademark application for AMIGA in Cloanto’s name.”
`The April 17 letter further advised that in the absence of such authority, Cloanto’s attempt to register
`was an infringement of the AMIGA mark, and that the April 17 letter served as notice of such
`infringement.
`As part of the exchange of communications between Plaintiff and Itec, Itec orally
`43.
`represented to Plaintiff that Amiga was still a going concern, which representation was documented
`in the April 17 letter and not subsequently contradicted by Itec.
`Despite Plaintiff’s express request in the April 17 letter that Itec provide a chain of
`44.
`title for the disposition of the Exclusive Licensed Marks and “[a] copy of Exhibit 3 as executed by
`each and every current owner of the Licensed Marks, the Amiga Mark, and/or the Collateral, if not
`one of the Amiga Parties already a signatory to the Settlement Agreement,” Plaintiff received no
`response from Defendant Itec to this request.
`Plaintiff also informed Itec via the April 17 letter that it considered the failure to
`45.
`renew the AMIGA registrations in the U.S. to be a material breach of the Settlement Agreement.
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`COMPLAINT FOR DECLARATORY JUDGMENT
`AND BREACH OF CONTRACT - 10
`CASE NO. 2:18-CV-00381
`
`LEE & HAYES, PLLC
`601 West Riverside Ave., Suite 1400
`Spokane, Washington 99201
`Telephone: (509) 324-9256 Fax: (509) 323-8979
`
`
`

`

`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 12 of 26
`
`
`
`F.
`
`Oppositions filed against the Cloanto Application
`The Cloanto Application was published for opposition on May 9, 2017.
`46.
`47.
`Having not received a response from Defendant Itec to its April 17 letter, Plaintiff
`sent Itec a communication on May 9, 2017, serving “notice to Itec and Amiga that Cloanto’s
`application to register AMIGA was published for opposition on May 11, 2017, and failure to file a
`Notice of Opposition or Extension of Time to file a Notice of Opposition before the end of the 30-
`day opposition period will only further prejudice Hyperion’s rights.”
`Itec and Plaintiff both timely filed for 90-day Extensions of Time to Oppose the
`48.
`Cloanto Application and subsequently filed for additional 60-day Extensions of Time to Oppose,
`with the consent of Cloanto.
`Itec commenced Opposition No. 91237599 (“the Itec Opposition”) with the United
`49.
`States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) on
`November 6, 2017, by filing a Notice of Opposition alleging as grounds for the opposition that Itec
`“is the majority shareholder in Amiga, Inc. (“Amiga”), the owner of the famous trademark AMIGA
`for computers, software, and related products” that as such, it is “directly affected by any actions
`which may adversely impact the business operations of Amiga and Amiga’s assets, including the
`famous trademark and trade name AMIGA.”
`Notably absent from Itec’s Notice of Opposition was any allegation that Itec is the
`50.
`owner of the AMIGA trademark and any explanation as to why Amiga, Inc. did not file for the
`extensions of time and the opposition in its own name.
`Having received no answers from Itec to Plaintiff’s inquiries regarding current
`51.
`ownership of the Amiga IP, and therefore not confident Itec would ultimately be able to demonstrate
`standing to oppose, Plaintiff Hyperion timely filed Opposition No. 91237628 (“Hyperion’s
`Opposition”) with the USPTO TTAB on November 6, 2017, to preserve rights.
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`COMPLAINT FOR DECLARATORY JUDGMENT
`AND BREACH OF CONTRACT - 11
`CASE NO. 2:18-CV-00381
`
`LEE & HAYES, PLLC
`601 West Riverside Ave., Suite 1400
`Spokane, Washington 99201
`Telephone: (509) 324-9256 Fax: (509) 323-8979
`
`
`

`

`Case 2:18-cv-00381-RSM Document 1 Filed 03/13/18 Page 13 of 26
`
`
`
`On Nov