Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA925213
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`Filing date:
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`09/28/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91242170
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`Party
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`Correspondence
`Address
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`Defendant
`Nashville Improv Company LLC
`
`JOSHUA HEFNER
`FARMER PURCELL WHITE & LASSITER PLLC
`150 4TH AVE N SUITE 1820
`NASHVILLE, TN 37219
`UNITED STATES
`jhefner@fpwlegal.com, tkappel@fpwlegal.com
`615-810-8777
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Motion to Suspend for Civil Action
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`Timothy Kappel
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`tkappel@fpwlegal.com
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`/timothy kappel/
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`09/28/2018
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`2018-09-28 Motion to Suspend.pdf(46289 bytes )
`2018-09-28 Motion to Suspend_Ex A.pdf(374730 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
`
`
`THIRD COAST COMEDY, LLC, LUCAS
`WATSON d/b/a NASHVILLE IMPROV
`FESTIVAL, and LUCAS WATSON d/b/a
`NASHVILLE IMPROVISERS GUILD
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`
`*
`*
`*
`*
`*
`*
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`*
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`Applicant
`*
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`* * * * * * * * * * * * * * * * * * * * * * * * *
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`Opposers
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`v.
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`NASHVILLE IMPROV COMPANY, LLC
`
`
`the Matter of: Trademark
`In
`Application Serial No. 87755309
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`Trademark: NASHVILLE IMPROV
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`Published: June 12, 2018
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`Opposition No. 91242170
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`
`
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`MOTION TO SUSPEND FOR CIVIL ACTION
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`
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`Nashville Improv Company, LLC (“Applicant”), by and through the undersigned
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`counsel, respectfully moves the Trademark Trial and Appeal Board (the “Board”) for an
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`order suspending this proceeding pending the outcome of a related federal civil action. In
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`support of this request, Applicant states as follows:
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`On September 24, 2018, Applicant filed Civil Action Number 3:18-cv-00907 in the
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`United States District Court for the Middle District of Tennessee (the “Civil Action”) against
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`the Opposers in this proceeding, Third Coast Comedy, LLC and Lucas Watson. A copy of
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`the Civil Action complaint is attached hereto as Exhibit “A”.
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`It is the policy of the Board to suspend proceedings when a party is involved in a
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`civil action which may be dispositive of or have a bearing on the Board case. See TBMP
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`510.02; General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933, 1937 (TTAB
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`1992). Here, the Civil Action involves inter alia the origin, strength, validity, and
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`-1-
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`infringement of the NASHVILLE IMPROV trademark. See generally Exhibit “A”. Many of
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`the same issues are presented in this Opposition. The resolution of such common issues
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`by the district court will necessarily bear on this Opposition and may, in fact, be binding
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`upon the Board. See New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550,
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`1552 (TTAB 2011) (noting that a decision by a federal district court may be binding on
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`the Board). As such, Applicant requests that this Opposition be suspended pending the
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`outcome of the Civil Action, and that discovery and trial dates be reset when the
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`Opposition is resumed.
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`Respectfully submitted,
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`
`
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`
`
`/s/ Timothy R.W. Kappel
`Timothy R.W. Kappel, Tenn. Bar No. 28174
`Joshua C. Hefner, Tenn. Bar No. 35618
`Curtis R. Harrington, Tenn. Bar No. 27284
`Farmer Purcell White & Lassiter, PLLC
`150 Fourth Avenue North, Suite 1820
`Nashville, Tennessee 37219
`Telephone: (615) 810-8749
`tkappel@fpwlegal.com
`jhefner@fpwlegal.com
`charrington@fpwlegal.com
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`-2-
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing document has been properly served on
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`September 28, 2018 by emailing the same to:
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`luke@thirdcoastcomedyclub.com
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`/s/ Timothy R.W. Kappel
`Timothy R.W. Kappel
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`Exhibit “A”
`Exhibit “A”
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF TENNESSEE
`NASHVILLE DIVISION
`
`*
`
`*
`NASHVILLE IMPROV COMPANY, LLC
`*
`
`*
`
`*
`v.
`*
`
`*
`THIRD COAST COMEDY, LLC and
`*
`LUCAS WATSON
`*
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`* * * * * * * * * * * * * * * * * * * * * * * * *
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`COMPLAINT
`
`
`Civil Action No.:
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`Judge:
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`Mag. Judge:
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`JURY DEMANDED
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`Nashville Improv Company, LLC (“NIC”), by and through the undersigned counsel,
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`
`
`
`
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`brings this action against Third Coast Comedy, LLC (“TCC”) and Lucas Watson (“Mr.
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`Watson”) (collectively, the “Defendants”).
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`NATURE OF THE ACTION
`
`1.
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`This is an action for trademark infringement, cybersquatting, unfair
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`competition, and false designation of origin arising under Section 43 of the Lanham Act,
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`15 U.S.C. § 1125; the Tennessee Trademark Act, Tenn. Code Ann. § 47-25-512; the
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`Tennessee Consumer Protection Act, Tenn. Code Ann. § 47-18-101 et seq.; and Tennessee
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`common law. Additionally, this action seeks cancellation of the Defendants’ Tennessee
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`trademark registration in accordance with Tenn. Code Ann. § 47-25-509.
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`PARTIES
`
`2.
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`NIC is a limited liability company formed and existing under the laws of
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`Tennessee with a principal place of business in this judicial district. NIC is the owner of
`
`the NASHVILLE IMPROV trademark in connection with various goods and services,
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`1
`Case 3:18-cv-00907 Document 1 Filed 09/24/18 Page 1 of 11 PageID #: 1
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`

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`including entertainment services in the nature of live visual and audio performances,
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`namely, musical, variety, news and comedy shows.
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`3.
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`TCC is a limited liability company formed and existing under the laws of
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`Tennessee with a principal place of business in this judicial district.
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`4.
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`Mr. Watson is a citizen of Tennessee who resides in this judicial district.
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`Upon information and belief, Mr. Watson is an owner of TCC and personally directs and
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`controls the branding, advertisement, and promotion of TCC’s goods and services.
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`5.
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`Upon information and belief, the Defendants do business in this judicial
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`district under the trade names and/or trademarks “Nashville Improv”, “Nashville Improv
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`Festival”, and/or “Nashville Improvisers Guild” (the “Infringing Marks”).
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`JURISDICTION & VENUE
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`6.
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`Subject matter jurisdiction with respect to NIC’s claims is proper in this Court
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`pursuant to 15 U.S.C. § 1121, 28 U.S.C. § 1331, 28 U.S.C. § 1338, and 28 U.S.C. § 1367.
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`7.
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`Personal jurisdiction over the Defendants is proper in this Court because the
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`Defendants are organized, domiciled, and/or conduct business in Tennessee.
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`8.
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`Venue is proper in this judicial district, pursuant to 28 U.S.C §§ 1391(b) and
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`(c), as the Defendants reside or have their principal place of business in this judicial
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`district, and a substantial portion of the events giving rise to the claim occurred in this
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`judicial district.
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`FACTS COMMON TO ALL CLAIMS
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`9.
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`NIC owns and operates the Nashville Improv Company through which NIC
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`provides entertainment and educational services in the field of improvisational comedy.
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`2
`Case 3:18-cv-00907 Document 1 Filed 09/24/18 Page 2 of 11 PageID #: 2
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`10.
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`Since at least as early as 2012, NIC has used the NASHVILLE IMPROV
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`trademark in connection with these services. NIC’s use of the NASHVILLE IMPROV
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`trademark has been continuous and substantially exclusive since its adoption.
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`11. NIC’s adoption and use of the NASHVILLE IMPROV trademark predates any
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`adoption and use of the Infringing Marks by the Defendants.
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`12.
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`The NASHVILLE IMPROV trademark is distinctive in the minds of consumers
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`and serves to identify NIC’s goods and services, and distinguish them from goods and
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`services of others.
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`13.
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`In early 2013, Mr. Watson briefly performed with NIC’s Nashville Improv
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`Company. After his brief stint with the Nashville Improv Company, Mr. Watson created
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`his own performing group called the “Nashville Improv Comedy” group. Mr. Watson also
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`developed a website for the group which was highly similar to NIC’s.
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`14. Upon learning of these activities, NIC contacted Mr. Watson regarding the
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`potential for consumer confusion between NIC’s services and his own.
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`15. Mr. Watson acknowledged that the “Nashville Improv Comedy” name was
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`confusingly similar to the NASHVILLE IMPROV mark and agreed to rebrand as “LOL
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`Nashville”.
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`16.
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`For a number of years thereafter, Mr. Watson ostensibly honored his
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`commitment to cease using a confusingly similar variation of the NASHVILLE IMPROV
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`trademark in connection with his services.
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`17. On or about January 15, 2018, NIC filed Application Serial No. 87755309
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`(the “Application”) with the United States Patent and Trademark Office (the “USPTO”) to
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`3
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`register the NASHVILLE IMPROV trademark on the USPTO’s Principal Register in
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`connection with “entertainment services in the nature of live visual and audio
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`performances, namely, musical, variety, news and comedy shows.”
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`18.
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`The Application was examined and approved for publication by the USPTO.
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`19. On July 2, 2018, the Defendants filed an opposition (the “Opposition”) to
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`the Application with the Trademark Trial and Appeals Board.
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`20.
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`In the Opposition, the Defendants allege, inter alia, current use in commerce
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`of the Infringing Marks as grounds to oppose NIC’s registration of the NASHVILLE IMPROV
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`trademark.
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`21.
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`Based on information and belief, the Defendants are using the Infringing
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`Marks in commerce in connection with goods and services identical or nearly identical to
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`NIC’s goods and services.
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`22. NIC is the senior user of the NASHVILLE IMPROV trademark and has priority
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`of adoption rights against the Defendants.
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`23. Neither of the Defendants is a licensee of NIC and neither has any
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`commercial or contractual affiliation with NIC or the NASHVILLE IMPROV trademark.
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`24.
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`Accordingly, any use of the Infringing Marks by the Defendants has been and
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`is unauthorized.
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`COUNT ONE
`Unfair Competition and False Designation of Origin (15 U.S.C. 1125)
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`25. NIC repeats and re-alleges all of the allegations contained in the preceding
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`paragraphs of the Complaint as though the same were fully written herein.
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`4
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`26.
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`The Defendants’ direct use and threatened continued use of the Infringing
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`Marks as a trademark or trade name constitutes unfair competition and false designation
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`of origin as to the goods and services sold by and on behalf of the Defendants.
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`27.
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`The Defendants’ acts of unfair competition and false designation of origin
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`have been willful, deliberate, and intended to benefit the Defendants at NIC’s expense.
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`28.
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`As a direct and proximate result of the Defendants’ false designation of origin
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`and unfair competition, NIC has been damaged in the form of lost sales and goodwill.
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`29. Unless the Defendants are restrained by this Court, NIC will continue to
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`suffer serious, irreparable injury. Accordingly, NIC is entitled to an order preliminarily
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`and permanently enjoining the Defendants from further acts of unfair competition and
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`false designations of origin.
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`30. NIC is additionally entitled to compensation consisting of the Defendants’
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`profits (as may be increased pursuant to 15 U.S.C. § 1117) plus the costs of this action.
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`31.
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`The intentional nature of the Defendants’ acts of unfair competition and false
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`designation of origin makes this an exceptional case under 15 U.S.C. §1117 warranting an
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`award of NIC’s attorneys’ fees and costs.
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`COUNT TWO
`Cybersquatting (15 U.S.C. 1125)
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`32. NIC repeats and re-alleges all of the allegations contained in the preceding
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`paragraphs of the Complaint as though the same were fully written herein.
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`33.
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`The Defendants have registered multiple domain names which are identical
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`or
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`confusingly
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`similar
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`to
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`the NASHVILLE
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`IMPROV
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`trademark,
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`including
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`5
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`www.nashvilleimprovcompany.org,
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`www.nashvilleimprov.company,
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`and
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`www.nashvilleimprov.club.
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`34.
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`The Defendants have registered and used these domain names with a bad
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`faith intent to profit from the goodwill of NIC and the NASHVILLE IMPROV trademark.
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`35.
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`Accordingly, the Defendants’ acts as alleged herein constitute cybersquatting
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`under the Lanham Act.
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`36.
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` NIC is entitled to an order of forfeiture, cancellation, or transfer of such
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`domain names.
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`COUNT THREE
`Tennessee Registered Trademark Infringement (T.C.A. § 47-25-512)
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`37. NIC repeats and re-alleges all of the allegations contained in the preceding
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`paragraphs of the Complaint as though the same were fully written herein.
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`38. NIC maintains Registration No. 44770 (“NIC’s Registration”) for the
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`NASHVILLE IMPROV trademark with the state of Tennessee in connection with “live
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`improv shows, education, and clothing”. A copy of this certificate of registration is
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`attached as Exhibit “A”.
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`39.
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`Pursuant to Tenn. Code Ann. § 47-25-505(b), NIC’s Registration is
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`“admissible in evidence as competent and sufficient proof of the registration of such mark
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`in any actions or judicial proceedings in any court of [Tennessee]”.
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`40.
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`The Infringing Marks are nearly identical to, or colorable imitations of, the
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`NASHVILLE IMPROV trademark as registered with the state of Tennessee.
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`6
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`41.
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`The Defendants’ use of the Infringing Marks is without the consent of NIC
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`and is likely to cause confusion, mistake, or deception as to the source of origin of the
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`Defendants’ goods and services.
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`42.
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`Accordingly, the Defendants’ use of the Infringing Marks constitutes a
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`violation of the Tennessee Trademark Act.
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`43. NIC has been, and will continue to be, irreparably harmed unless the
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`Defendants are enjoined from using the Infringing Marks.
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`44. NIC seeks and is entitled to recover damages from the Defendants in an
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`amount to be determined at trial, including statutory penalties under the provisions
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`of Tenn. Code Ann. § 47-25-514.
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`45. NIC seeks and is entitled to an injunction prohibiting the manufacture, use,
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`display or sale of any products or services bearing the NASHVILLE IMPROV trademark or
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`any colorable imitation thereof.
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`COUNT FOUR
`Tennessee Common Law Trademark Infringement
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`46. NIC repeats and re-alleges all of the allegations contained in the preceding
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`paragraphs of the Complaint as though the same were fully written herein.
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`47.
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`The Defendants’ use of the Infringing Marks is likely to cause consumer
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`confusion, deception, and mistake as to NIC’s affiliation, approval, sponsorship, or
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`association with the Defendants.
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`48.
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`Accordingly, the Defendants’ acts as alleged herein constitute trademark
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`infringement under Tennessee common law.
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`7
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`49. NIC has been, and will continue to be, irreparably harmed unless the
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`Defendants are ordered to cease and desist from any use of the Infringing Marks.
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`50.
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` NIC seeks and is entitled to recover damages from the Defendants in an
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`amount to be determined at trial.
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`COUNT FIVE
`Tennessee Common Law Unfair Competition
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`51. NIC repeats and re-alleges all of the allegations contained in the preceding
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`paragraphs of the Complaint as though the same were fully written herein.
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`52.
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`The Defendants’ use of the Infringing Marks without the consent of NIC is
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`tortious and has deprived NIC of customers and other prospective business.
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`53.
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`Accordingly, the Defendants’ acts as alleged herein constitute unfair
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`competition in violation of Tennessee law.
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`COUNT SIX
`Tennessee Consumer Protection Act Violations (T.C.A. § 47-18-101 et seq.)
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`54. NIC repeats and re-alleges all of the allegations contained in the preceding
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`paragraphs of the Complaint as though the same were fully written herein.
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`55.
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`The Defendants’ use of the Infringing Marks has been conducted with the
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`intent or purpose of selling or disposing goods or services, or to induce the public to enter
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`into obligations relating to such goods or services.
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`56.
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`The Defendants’ use of the Infringing Marks has been and is knowingly
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`deceptive and misleading to consumers.
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`57. NIC has suffered injury as a result of the Defendants’ unfair, deceptive, and
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`misleading acts.
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`58.
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`Accordingly, the Defendants’ use of the Infringing Marks constitutes unfair
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`methods of competition and unfair or deceptive acts or practices in violation of the
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`Tennessee Consumer Protection Act.
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`COUNT SEVEN
`Unjust Enrichment
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`59. NIC repeats and re-alleges all of the allegations contained in the preceding
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`paragraphs of the Complaint as though the same were fully written herein.
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`60.
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`The Defendants’ use of the Infringing Marks has permitted the Defendants
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`to procure customers that it otherwise would not have been able to obtain.
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`61.
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`The Defendants have received appreciable benefits from using the Infringing
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`Marks in commerce.
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`62.
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`It would be inequitable to allow the Defendants to retain the benefits of the
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`use of the Infringing Marks, including any monetary and reputational benefits.
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`63.
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`Accordingly, the Defendants have been unjustly enriched by virtue of their
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`use of the Infringing Marks to the detriment of NIC.
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`COUNT EIGHT
`Petition to Cancel Registration (T.C.A. § 47-25-509)
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`64. NIC repeats and re-alleges all of the allegations contained in the preceding
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`paragraphs of the Complaint as though the same were fully written herein.
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`65. On or about March 27, 2015, Mr. Watson registered “Nashville Improv
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`Festival” as a trademark with the state of Tennessee.
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`66.
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`The mark is currently registered as Registration No. 46211 with the state of
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`Tennessee. A copy of the registration is attached hereto as Exhibit “B”.
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`67.
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`This registration was obtained improperly and with the full knowledge of
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`NIC’s senior rights in and to the NASHVILLE IMPROV trademark.
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`68.
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`Further, at the time Mr. Watson registered the mark he knowingly made
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`false representations of fact in order to procure the registration.
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`69.
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`Among other false statements, Mr. Watson averred that the applicant is the
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`owner of the mark (he was not), that the mark is in use (it was not), and that no other
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`person has registered, either federally or in this state, or has the right to use such mark
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`either in the identical form thereof or in such near resemblance thereto as to be likely,
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`when applied to the goods or services of such other person, to cause confusion, or to cause
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`mistake, or to deceive (Mr. Watson had full knowledge of NIC’s Registration).
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`70.
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`Accordingly, Registration 46211 is subject to cancellation per Tenn. Code
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`Ann. § 47-25-509.
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`RELIEF REQUESTED
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`71.
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`Based on the foregoing, NIC asks the Court to enter judgment against the
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`Defendants awarding the following relief:
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`(a)
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`Enjoining the Defendants from using the NASHVILLE IMPROV
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`trademark or any colorable imitation thereof, including the Infringing
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`Marks, in connection with their goods or services.
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`(b)
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`Enjoining the Defendants from otherwise infringing on NIC’s rights in
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`the NASHVILLE IMPROV trademark.
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`10
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`(c) Ordering the Defendants to pay NIC all their profits made in
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`connection with the unauthorized and infringing use of the
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`NASHVILLE IMPROV trademark.
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`(d) Ordering the Defendants to pay NIC all costs necessary to remediate
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`the consumer confusion caused by their use of the Infringing Marks.
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`(e) Ordering the Defendants to pay NIC the costs incurred in bringing the
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`present action, enhanced damages per 15 U.S.C. §1117, and statutory
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`damages per Tenn. Code Ann. § 47-25-514.
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`(f)
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`Ordering the cancellation, forfeiture, or transfer of the Defendants’
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`domain names and social media handles which incorporate the
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`NASHVILLE IMPROV trademark.
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`(g) Ordering the cancellation of the Defendants’ Tennessee Trademark
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`Registration No. 46211.
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`(h)
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`Such further relief as the Court deems proper.
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`Respectfully submitted,
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`FARMER PURCELL
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`WHITE & LASSITER, PLLC
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`________
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`
`/s/ Timothy Kappel
`Timothy R.W. Kappel, Tennessee Bar No. 28174
`Curtis R. Harrington, II, Tennessee Bar No. 27284
`150 Fourth Avenue North, Suite 1820
`Nashville, Tennessee 37219
`Direct: (615) 810-8749
`Telephone: (615) 810-8777 / Fax: (615) 810-8770
`Email: tkappel@fpwlegal.com
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`charrington@fpwlegal.com
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`JS 44 (Rev. 07/16)
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`CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`
`I. (a) PLAINTIFFS
`Nashville Improv Company, LLC
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`DEFENDANTS
`Third Coast Comedy, LLC
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`(b) County of Residence of First Listed Plaintiff
`Davidson County
`(EXCEPT IN U.S. PLAINTIFF CASES)
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`(c) Attorneys (Firm Name, Address, and Telephone Number)
`Farmer Purcell White & Lassiter, PLLC
`150 Fourth Avenue North, Suite 1820
`Nashville, TN 37219; 615-810-8777
`
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`’ 1 U.S. Government
`Plaintiff
`
`’ 3 Federal Question
`(U.S. Government Not a Party)
`
`County of Residence of First Listed Defendant
`
`Davidson County
`(IN U.S. PLAINTIFF CASES ONLY)
`
`NOTE:
`
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
` Attorneys (If Known)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`(For Diversity Cases Only)
`and One Box for Defendant)
`PTF DEF
`PTF
` DEF
`’ 1
`’ 1
`’ 4
`’ 4
`
`Citizen of This State
`
`Incorporated or Principal Place
` of Business In This State
`
`’ 2 U.S. Government
`Defendant
`
`’ 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`’ 2
`
`’ 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`’ 5
`
`’ 5
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
`CONTRACT
`TORTS
`
`Citizen or Subject of a
` Foreign Country
`
`’ 3
`
`’ 3
`
`Foreign Nation
`
`’ 6
`
`’ 6
`
`FORFEITURE/PENALTY
`
`BANKRUPTCY
`
`OTHER STATUTES
`
`’ 422 Appeal 28 USC 158
`’ 625 Drug Related Seizure
` of Property 21 USC 881 ’ 423 Withdrawal
`’ 690 Other
` 28 USC 157
`
`PROPERTY RIGHTS
`’ 820 Copyrights
`’ 830 Patent
`’ 840 Trademark
`
`SOCIAL SECURITY
`’ 861 HIA (1395ff)
`’ 862 Black Lung (923)
`’ 863 DIWC/DIWW (405(g))
`’ 864 SSID Title XVI
`’ 865 RSI (405(g))
`
`FEDERAL TAX SUITS
`’ 870 Taxes (U.S. Plaintiff
` or Defendant)
`’ 871 IRS—Third Party
` 26 USC 7609
`
`’ 375 False Claims Act
`’ 376 Qui Tam (31 USC
` 3729(a))
`’ 400 State Reapportionment
`’ 410 Antitrust
`’ 430 Banks and Banking
`’ 450 Commerce
`’ 460 Deportation
`’ 470 Racketeer Influenced and
` Corrupt Organizations
`’ 480 Consumer Credit
`’ 490 Cable/Sat TV
`’ 850 Securities/Commodities/
` Exchange
`’ 890 Other Statutory Actions
`’ 891 Agricultural Acts
`’ 893 Environmental Matters
`’ 895 Freedom of Information
` Act
`’ 896 Arbitration
`’ 899 Administrative Procedure
` Act/Review or Appeal of
` Agency Decision
`’ 950 Constitutionality of
` State Statutes
`
`’ 110 Insurance
` PERSONAL INJURY
` PERSONAL INJURY
`’ 365 Personal Injury -
`’ 310 Airplane
`’ 120 Marine
`’ 315 Airplane Product
`’ 130 Miller Act
` Product Liability
`’ 367 Health Care/
`’ 140 Negotiable Instrument
` Liability
`’ 150 Recovery of Overpayment ’ 320 Assault, Libel &
` Pharmaceutical
` Personal Injury
` & Enforcement of Judgment
` Slander
`’ 151 Medicare Act
`’ 330 Federal Employers’
` Product Liability
`’ 368 Asbestos Personal
`’ 152 Recovery of Defaulted
` Liability
`’ 340 Marine
` Injury Product
` Student Loans
`’ 345 Marine Product
`LABOR
` Liability
` (Excludes Veterans)
` PERSONAL PROPERTY ’ 710 Fair Labor Standards
`’ 153 Recovery of Overpayment
` Liability
`’ 370 Other Fraud
`’ 350 Motor Vehicle
` Act
` of Veteran’s Benefits
`’ 371 Truth in Lending
`’ 720 Labor/Management
`’ 160 Stockholders’ Suits
`’ 355 Motor Vehicle
`’ 380 Other Personal
`’ 190 Other Contract
` Relations
` Product Liability
`’ 740 Railway Labor Act
`’ 195 Contract Product Liability ’ 360 Other Personal
` Property Damage
`’ 385 Property Damage
`’ 751 Family and Medical
`’ 196 Franchise
` Injury
`’ 362 Personal Injury -
` Product Liability
` Leave Act
`’ 790 Other Labor Litigation
` Medical Malpractice
` PRISONER PETITIONS ’ 791 Employee Retirement
` CIVIL RIGHTS
`’ 440 Other Civil Rights
`Habeas Corpus:
` Income Security Act
`’ 463 Alien Detainee
`’ 441 Voting
`’ 510 Motions to Vacate
`’ 442 Employment
`’ 443 Housing/
` Sentence
`’ 530 General
` Accommodations
`’ 445 Amer. w/Disabilities - ’ 535 Death Penalty
`Other:
` Employment
`’ 446 Amer. w/Disabilities - ’ 540 Mandamus & Other
`’ 550 Civil Rights
` Other
`’ 448 Education
`’ 555 Prison Condition
`’ 560 Civil Detainee -
` Conditions of
` Confinement
`
` REAL PROPERTY
`’ 210 Land Condemnation
`’ 220 Foreclosure
`’ 230 Rent Lease & Ejectment
`’ 240 Torts to Land
`’ 245 Tort Product Liability
`’ 290 All Other Real Property
`
`IMMIGRATION
`’ 462 Naturalization Application
`’ 465 Other Immigration
` Actions
`
`V. ORIGIN (Place an “X” in One Box Only)
`’ 1 Original
`’ 2 Removed from
`Proceeding
`State Court
`
`’ 3 Remanded from
`Appellate Court
`
`’ 4 Reinstated or
`Reopened
`
`’ 5 Transferred from
`Another District
`(specify)
`
`’ 6 Multidistrict
`Litigation -
`Transfer
`
`’ 8 Multidistrict
` Litigation -
` Direct File
`
`VI. CAUSE OF ACTION
`
`VII. REQUESTED IN
`COMPLAINT:
`VIII. RELATED CASE(S)
`IF ANY
`
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`15 U.S.C. 1125
`Brief description of cause:
`Trademark infringement, unfair competition, cybersquatting, and cancellation of state trademark registration
`’ CHECK IF THIS IS A CLASS ACTION
`DEMAND $
`UNDER RULE 23, F.R.Cv.P.
`
`CHECK YES only if demanded in complaint:
`’ Yes
`’ No
`
`JURY DEMAND:
`
`(See instructions):
`
`JUDGE
`
`DOCKET NUMBER
`
`DATE
`09/24/2018
`FOR OFFICE USE ONLY
`Case 3:18-cv-00907 Document 1-1 Filed 09/24/18 Page 1 of 2 PageID #: 12
`AMOUNT
`APPLYING IFP
`JUDGE
`MAG. JUDGE
`
`SIGNATURE OF ATTORNEY OF RECORD
`/s/ Timothy R.W. Kappel
`
`RECEIPT #
`
`Print
`
`Save As...
`
`Reset
`
`

`

`JS 44 Reverse (Rev. 07/16)
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`
`Authority For Civil Cover Sheet
`
`The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
`required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
`required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
`Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
`
`I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
`only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
`then the official, giving both name and title.
` (b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
`time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
`condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)
` (c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
`in this section "(see attachment)".
`
`II.
`
`III.
`
`IV.
`
`V.
`
`Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
`in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
`United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
`United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
`Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment
`to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes
`precedence, and box 1 or 2 should be marked.
`Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
`citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
`cases.)
`
`Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
`section for each principal party.
`
`Nature of Suit. Place an "X" in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below, is
`sufficient to enable the deputy clerk or the statistical clerk(s) in the Administrative Office to determine the nature of suit. If the cause fits more than
`one nature of suit, select the most definitive.
`
`Origin. Place an "X" in one of the seven boxes.
`Original Proceedings. (1) Cases which originate in the United States district courts.
`Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.
`When the petition for removal is granted, check this box.
`Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
`date.
`Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
`Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or
`multidistrict litigation transfers.
`Multidistrict Litigation – Transfer. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C.
`Section 1407.
`Multidistrict Litigation – Direct File. (8) Check this box when a multidistrict case is filed in the same district as the Master MDL docket.
`PLEASE NOTE THAT THERE IS NOT AN ORIGIN CODE 7. Origin Code 7 was used for historical records and is no longer relevant due to
`changes in statue.
`
`VI.
`
`Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
`statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service
`
`VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.
`Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
`Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
`
`VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
`numbers and the corresponding judge names for such cases.
`
`Date and Attorney Signature. Date and sign the civil cover sheet.
`
`Case 3:18-cv-00907 Document 1-1 Filed 09/24/18 Page 2 of 2 PageID #: 13
`
`

`

`Exhibit “A”
`
`Case 3:18-cv-00907 Document 1-2 Filed 09/24/18 Page 1 of 2 PageID #: 14
`
`

`

`Tre Hargett
`Secretary of State
`
`Division of Business Services
`Department of State
`State of Tennessee
`312 Rosa L. Parks AVE, 6th FL
`Nashville, TN 37243-1102
`
`Trademark/Servicemark Certificate of Registration
`
`This will ackno