Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1110581
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`Filing date:
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`01/27/2021
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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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`91250979
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`Party
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`Correspondence
`Address
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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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`Defendant
`Blitz NV, LLC
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`ELEANOR M YOST
`CARLTON FIELDS PA
`4221 W BOY SCOUT BLVD STE 1000
`TAMPA, FL 33607-5780
`UNITED STATES
`Primary Email: trademarks@carltonfields.com
`Secondary Email(s): eyost@carltonfields.com
`813-229-4395
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`Motion to Suspend for Civil Action
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`Jonathan Goodwill
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`WGiltinan@carltonfields.com, eyost@carltonfields.com, jogood-
`will@carltonfields.com, trademarks@carltonfields.com
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`/jga/
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`01/27/2021
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`Motion to Suspend - Proceeding No. 91250979.pdf(123881 bytes )
`Exhibit 1.pdf(589126 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`In the Matter of Trademark Application Serial Number: 88/125,045
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`September 20, 2018
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`May 21, 2019
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`Opposition No. 91250979
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`For the Mark:
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`Filed:
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`Published in the Trademark Official Gazette on:
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`All Saints Retail Limited,
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`Opposer,
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`v.
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`Blitz NV, LLC,
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`Applicant.
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`APPLICANT’S MOTION TO SUSPEND
`OPPOSITION PROCEEDING PENDING CIVIL ACTION
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`Applicant Blitz NV, LLC (“Applicant”) hereby moves for the suspension of this
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`proceeding pursuant to TBMP § 510.02(a) pending final disposition of federal district court case
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`No. 2:21-cv-00089, filed January 15, 2021, in the U.S. District Court for the District of Nevada
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`(the “Civil Action”). Copies of the complaint and civil cover sheet are attached as Exhibit 1.
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`All Saints Retail Limited (“Opposer”) filed a Notice of Opposition in this matter with the
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`Trademark Trial and Appeal Board (the “Board”) on September 17, 2019 contesting registration
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`of Appl. Serial No. 88/125,045, filed by Applicant, citing (i) an alleged likelihood of confusion,
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`pursuant to Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), between the mark that is the
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`subject of Serial No. 88/125,045 filed by Applicant, and certain design marks and a word mark
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`124741289.3
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`1
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`that are the subject of registrations owned by Opposer (U.S. Trademark Registration Nos.
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`3976276; 4995379; 3987543; and 4570963) (collectively, the “Pleaded Registrations”); and (ii) an
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`alleged likelihood of dilution of the marks in Opposer’s Pleaded Registrations by blurring and by
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`tarnishment pursuant to Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).1
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`The Board instituted the proceeding on September 17, 2019 under Proceeding No.
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`91250979. Applicant filed its answer, affirmative defenses, and counterclaims on October 25,
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`2019 including allegations that Opposer’s Pleaded Registrations are invalid or have been
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`abandoned in part, and Opposer filed its response to Applicant’s counterclaims along with its own
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`affirmative defenses on December 19, 2019. The parties have since been actively engaged in
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`negotiations for settlement and have filed multiple consented motions to suspend the subject
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`proceeding, each of which has been granted by the Board.2 However, it has recently become
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`evident that a settlement will not be reached.
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`On January 15, 2021, Applicant filed a Complaint in the Civil Action seeking, among other
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`things, a declaratory judgment: (1) that Applicant’s use of the mark that is the subject of the
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`opposed application in this proceeding does not infringe nor dilute the marks that are the subject
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`of the Pleaded Registrations, or violate state law unfair competition laws (see Exhibit 1 at ¶ 1, p.
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`28); and (2) certain of Opposer’s Pleaded Registrations (as contested by Applicant’s counterclaims
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`in this proceeding) be cancelled in part (id. at ¶ 2, p. 28).
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`When parties are involved in court proceedings concerning the same marks and related
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`issues, the “standard practice” of the Board is to suspend its administrative proceedings pending
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`outcome of the civil litigation. J.T. McCarthy, McCarthy on Trademarks and Unfair Competition
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`1 Another opposition proceeding involving these parties and the Pleaded Registrations is co-
`pending, No. 91252633.
`2 See TTABVUE, Proceeding No. 91250979, Nos. 11-20.
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`124741289.3
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`2
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`§ 32:47 (5th ed.) (“It is standard practice for the Trademark Board to stay administrative
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`proceedings pending the outcome of court litigation between the same parties involving related
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`issues”). The civil action need not even be dispositive of the Board proceeding to warrant
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`suspension. Rather, it is sufficient that the civil action have bearing on the issues before the Board
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`to justify a suspension. See 37 C.F.R. § 2.117(a); see also New Orleans Louisiana Saints LLC v.
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`Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (granting suspension, noting that a District
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`Court decision regarding infringement of the mark subject of the Board proceeding would have a
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`bearing on the Board proceeding).
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`The outcome of the Civil Action initiated by Applicant will have a bearing on this
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`opposition proceeding. The Civil Action involves the same parties, the same marks, and the same
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`or substantially similar goods and services and activities as those at issue in this proceeding. (See
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`Exhibit 1 at ¶¶ 1-2, p. 28.) Applicant filed the Civil Action against Opposer. (Id. at ¶¶ 4 and 7.)
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`Opposer owns the Pleaded Registrations upon which Opposer’s claims in this opposition
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`proceeding are based, which are the same marks Applicant contends are not infringed or diluted
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`in the Civil Action. (Id. at ¶¶ 1-2, p. 28.) Accordingly, the parties and marks in this opposition
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`proceeding and the Civil Action are sufficiently related such that the Civil Action will have a
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`meaningful bearing upon the issues before the Board here.
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`In addition, issues before the Board here are also at issue in the Civil Action. Applicant’s
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`declaratory judgment claims of non-infringement and non-dilution involve similar issues to the
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`ones the Board will be deciding in this proceeding. But, the Civil Action will also involve other
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`matters and broader issues, such as unfair competition. Because the parties, marks, and issues in
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`the Civil Action are similar and because the outcome will have an impact on the claims before the
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`124741289.3
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`Board, suspension of this opposition proceeding pending the outcome of the Civil Action between
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`the parties is warranted.
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`Moreover, judicial economy is served by immediately suspending all activity in this
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`proceeding. See Townley Clothes, Inc. v. Goldring, Inc., 100 USPQ 57 (Comr. 1953). This
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`opposition proceeding is still in its infancy, and no discovery has yet been served. Because the
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`Civil Action involves not only similar issues to those currently before the Board, but also issues
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`concerning use of the applied-for mark and unfair competition, discovery in the Civil Action will
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`involve documents, depositions, and other information that is not being and will not be gathered
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`or produced in this proceeding. Thus, suspending this proceeding would avoid duplicative effort,
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`wasted time, and unnecessary expenses for both the parties and the Board.
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`For all these reasons, Applicant respectfully requests that the Board suspend Proceeding
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`No. 91250979 until a final decision in the Civil Action has been issued. Applicant will notify the
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`Board once a final decision in the Civil Action has been issued, and Applicant will provide the
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`Board with a copy of the decision in the Civil Action in accordance with TBMP § 510.02(b) so
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`that Proceeding No. 91250979 may be dismissed or resumed by the Board as appropriate.
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`January 27, 2021
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`Respectfully submitted,
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`/Eleanor M. Yost/
`Eleanor M. Yost
`William G. Giltinan
`Carlton Fields, PA
`4221 W. Boy Scout Blvd., Ste. 1000
`Tampa, Florida 33607-5780
`(813) 229-4395
`eyost@carltonfields.com
`wgiltinan@carltonfields.com
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`Attorneys for Applicant Blitz NV, LLC
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`124741289.3
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on January 27, 2021 a true and complete copy of the
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`foregoing Motion to Suspend Opposition Proceeding Pending Civil Action was served on
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`Opposer via e-mail to:
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`Linda M. Dougherty, Esq. (ldougherty@kanekessler.com)
`Adam M. Cohen, Esq. (acohen@kanekessler.com)
`KaneKessler, P.C.
`666 Third Avenue
`New York, New York 10017
`trademark@kanekessler.com
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`/Jonathan Goodwill/
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`Jonathan Goodwill
`Carlton Fields, PA
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`124741289.3
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`5
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`EXHIBIT 1
`EXHIBIT 1
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`KIMBERLY P. STEIN, ESQ.
`Nevada Bar No. 8675
`Email: kps@fdlawlv.com
`FLANGAS LAW GROUP
`3275 South Jones Boulevard, Suite 105
`Las Vegas, NV 89146
`Telephone: (702) 307-9500
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`WILLIAM GILTINAN, ESQ., FL Bar No. 27810
`Pro Hac to be Submitted
`Email: WGiltinan@carltonfields.com
`CARLTON FIELDS
`4221 W. Boy Scout Blvd., Ste. 1000
`Tampa, Florida 33607-5780
`Telephone: (813) 229-4241
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`Attorneys for Plaintiff
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`UNITED STATES DISTRICT COURT
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`DISTRICT OF NEVADA
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`BLITZ NV, LLC,
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`ALL SAINTS RETAIL LIMITED,
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`v.
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`Plaintiff,
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`Defendant.
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`Case No:
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`COMPLAINT
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`Plaintiff, Blitz NV, LLC (“Blitz” or “Plaintiff”), by and through its attorneys, for
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`its complaint against All Saints Retail Limited (“All Saints” or “Defendant”), alleges as
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`follows:
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`I.
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`NATURE OF ACTION AND RELIEF SOUGHT
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`1.
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`This is an action under the Declaratory Judgment Act, 28 U.S.C. § 2201,
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`et seq., seeking a declaration that Blitz’s use of its goat skull logo
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` (Blitz’s “Goat
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`Skull Logo”), in connection with the marketing and sale of its clothing, accessories, and
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`personal care goods and related retail and wholesale sales services, does not infringe or
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`dilute, or compete unfairly with, All Saints’ so-called RAMSKULL trademarks, namely,
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`U.S. Trademark Registration Nos. 4,570,963 for the word RAMSKULL, 3,976,276 and
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`3,987,543 for the
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`logo, and 4,995,379 for the
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`logo (collectively, the “All
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`Saints Registrations”) and any common law rights therein (collectively, the “All Saints
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`RAMSKULL Marks”).
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`2.
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`This is also an action seeking an order to cancel, in whole or in part, All
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`Saints’ U.S. Trademark Registration Nos. 3,976,276 and 4,995,379 under Section 37 of the
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`Lanham Act, 15 U.S.C. § 1119.
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`II.
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`PARTIES
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`3.
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`4.
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`Blitz incorporates by reference paragraphs 1 to 2 as if fully set forth herein.
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`Upon information and belief, All Saints is a limited company formed under
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`the laws of the United Kingdom and having an address at Jack’s Place, Units C15-C17, 6
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`Corbet Place, London, E1 6NN United Kingdom.
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`5.
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`Upon information and belief, All Saints’ agent and operating company for
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`retail sales in the United States is AllSaints USA Limited, a limited company formed under
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`the laws of the United Kingdom and having an address at Jack’s Place, Units C15-C17, 6
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`Corbet Place, London, E1 6NN United Kingdom.
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`6.
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`Upon information and belief, AllSaints USA Limited is a wholly owned
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`subsidiary of All Saints and All Saints’ alter ego in the United States.
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`7.
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`Blitz NV, LLC is a limited liability company formed under the laws of
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`Nevada and having an address at 6005 Las Vegas Boulevard South, Las Vegas, Nevada
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`89119.
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`/ / /
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`/ / /
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`-2-
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`8.
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`9.
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`III.
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`JURISDICTION AND VENUE
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`Blitz incorporates by reference paragraphs 1 to 7 as if fully set forth herein.
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`This Court has jurisdiction over the subject matter of this action pursuant
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`to the Trademark Laws of the United States, 15 U.S.C § 1051, et seq. (the “Trademark
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`Act”); 15 U.S.C. § 1125, et seq. (the “Lanham Act”); and 28 U.S.C. §§ 2201 and 2202 (the
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`“Declaratory Judgment Act”). Thus, this Court has original jurisdiction over the subject
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`matter of this action pursuant to 28 U.S.C. §§ 1331 and 1338. This Court further has
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`supplemental jurisdiction over claims relating to state law pursuant to 28 U.S.C. § 1367.
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`10.
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`This Court has personal jurisdiction over All Saints because, upon
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`information and belief, All Saints has established minimum contacts with this forum and
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`further, All Saints has substantial, continuous, and systemic contacts with the State of
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`Nevada.
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`11.
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`AllSaints USA Limited is a foreign corporation registered to do business
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`in Nevada.
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`12.
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`Upon information and belief, AllSaints USA Limited serves as All Saints’
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`operating company, agent, and alter ego in the United States.
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`13.
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`Upon information and belief, AllSaints USA Limited operates retail stores
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`in Nevada, at which the All Saints RAMSKULL Marks are used (the “All Saints Nevada
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`Stores”).
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`14.
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`Upon information and belief, the All Saints Nevada Stores include retail
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`stores at 3500 S Las Vegas Blvd, Las Vegas, NV 89109, 3708 S Las Vegas Blvd, Las
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`Vegas, NV 89109, and 505 S Grand Central Pkwy, #3245, Las Vegas, NV 89106.
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`15.
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`Upon information and belief, All Saints is the owner of All Saints’
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`RAMSKULL Marks and the All Saints Registrations.
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`16.
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`Upon information and belief, All Saints markets, sells, offers for sale,
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`licenses, and distributes clothing and other goods and services bearing the All Saints
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`RAMSKULL Marks in this District via its website at www.allsaints.com (“All Saints’
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`Website”) and through its licensees (including, but not limited to, AllSaints USA Limited,
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`which operates a website in this District at us.allsaints.com) and others.
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`17.
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`Upon information and belief, AllSaints USA Limited is the only party
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`authorized by All Saints to use the All Saints RAMSKULL Marks as a trademark for retail
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`clothing store services in International Class 35 in the United States.
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`18.
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`Upon information and belief, AllSaints USA Limited serves as All Saints’
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`distributor, representative, and agent in the United States.
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`Upon information and belief, All Saints’ clothing products are also sold
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`through third-party retail stores in this District, including Bloomingdale’s stores.
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`20.
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`Upon information and belief, at least some All Saints’ goods and services
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`bearing the All Saints RAMSKULL Marks are marketed and sold to customers in this
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`District through All Saints’ Website, which indicates that such goods and services are
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`available at retail locations in Nevada through the website’s “Store Locator” feature,
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`available at:
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`https://www.us.allsaints.com/store-locator/search/position/38.8026097/-
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`116.419389/
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`21.
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`All Saints purposefully availed themselves of the privilege of conducting
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`business in this State and in this District. All Saints regularly maintains stores in this State
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`and, therefore, is continuously present in this State.
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`22.
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`In addition, All Saints’ false assertions of infringement and likelihood of
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`confusion of its alleged trademarks were directed to Blitz in this District.
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`23.
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`Thus, this Court has both general and specific personal jurisdiction over
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`All Saints.
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`24.
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`Venue is proper in this District under 28 U.S.C. § 1391(b) and (c) because,
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`upon information and belief, a substantial part of the events giving rise to Blitz’s claims
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`occurred in this District and because All Saints is subject to personal jurisdiction in this
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`District.
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`/ / /
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`-4-
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`25.
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`26.
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`An actual case or controversy exists between the parties.
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`All Saints has repeatedly asserted that a likelihood of confusion and a
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`likelihood of dilution exist between the Blitz Goat Skull Logo and the All Saints
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`RAMSKULL Marks.
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`IV.
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`FACTUAL BACKGROUND
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`BLITZ’S PRODUCTS AND BLITZ’S GOAT SKULL LOGO
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`27.
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`Blitz incorporates by reference paragraphs 1 to 26 as if fully set forth
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`herein.
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`28.
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`29.
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`Blitz is a Nevada company.
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`Among other things, Blitz, through its licensees, sells clothing,
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`accessories, and personal and body care products for men and women displaying Blitz’s
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`Goat Skull Logo, and provides retail and wholesale services featuring these products. See,
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`e.g., Exs. A, B, C, and D, collectively, the exemplary “Blitz Goods and Services.”
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`30.
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`Blitz and its licensees also distribute goods displaying the Blitz Goat Skull
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`Logo to members of the public as promotional products.
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`31.
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`In particular, Blitz sells its Blitz Goods and Services primarily through its
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`licensees, including Ignite International, Ltd. (“Ignite”).
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`32.
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`Ignite sells products displaying both the Blitz Goat Skull Logo and the
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`Blitz Goat Skull Logo with the word IGNITE superimposed upon it (the “Ignite Goat Skull
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`Logo”).
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`33.
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`Ignite also distributes goods displaying the Blitz Goat Skull Logo and
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`Ignite Goat Skull Logo as promotional goods.
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`34.
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`Ignite sells Blitz Goods and Services displaying the Blitz Goat Skull Logo
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`and the Ignite Goat Skull Logo primarily online through its website hosted at the domain
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`name Ignite.co.
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`35.
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`The Blitz Goods and Services sold at Ignite.co displays the Blitz Goat
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`Skull Logo and the Ignite Goat Skull Logo ornamentally.
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`36.
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`The Blitz Goods and Services sold at Ignite.co also use the Blitz Goat Skull
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`37.
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`Blitz is owned by Internet celebrity, Dan Bilzerian.
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`Mr. Bilzerian’s social media posts are followed by millions of people
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`around the world.
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`39.
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`Mr. Bilzerian’s Facebook Page regularly displays Blitz’s Goat Skull Logo
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`and has more than thirteen million followers.
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`40.
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`Mr. Bilzerian’s Instagram account prominently displays Blitz’s Goat Skull
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`Logo and has more than thirty million followers.
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`41.
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`“Blitz” is Mr. Bilzerian’s nickname and Mr. Bilzerian uses the Blitz Goat
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`Skull Logo as his personal symbol.
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`42.
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`Mr. Bilzerian regularly displays the Blitz Goat Skull Logo on his websites,
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`social media posts, and on clothing worn by himself and models and companions that
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`accompany him.
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`43.
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`Mr. Bilzerian has also displayed the Blitz Goat Skull Logo on his
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`residence, on yachts, and in other manners as his personal symbol.
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`44.
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`The Blitz Goat Skull Logo has become famous as a symbol of Mr.
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`Bilzerian and his companies.
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`45.
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`Consumers who see the Blitz Goat Skull Logo and Ignite Goat Skull Logo
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`associate those symbols with Mr. Bilzerian and his companies.
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`46.
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`Mr. Bilzerian first adopted a version of the Blitz Goat Skull Logo when
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`his brother presented him with a preserved animal skull as a gift.
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`47.
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`Since he began using the Blitz Goat Skull Logo as his personal symbol,
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`Mr. Bilzerian’s companies have been putting goods into the stream of commerce with the
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`symbol on them both through sales and as promotional items.
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`48.
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`Mr. Bilzerian has received substantial media attention for his companies
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`with which the Blitz Goat Skull Logo is featured.
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`49.
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`Blitz is the owner of U.S. Trademark Appl. Serial Number: 88/125,045 for
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`the Goat Skull Logo for intended use with: Sun-tanning lotions and oils; non medicated
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`stimulating lotions for the skin; Bar soap; liquid bath soaps; skin soap; perfumed soap;
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`make up removing milk, gel, lotions and creams; make up primer; Facial make up, namely,
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`powder, foundation, primer, lipstick, lip gloss in International Class 3; clothing for
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`domestic pets; Collars for pets; Pet clothing; Backpacks in International Class 18; Clothing,
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`namely, belts, chaps, coats, dresses, footwear, foul weather gear, gloves, headwear, jackets,
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`pants, robes, scarves, shirts, t-shirts, tank-tops, shorts, skirts, sleepwear, socks, sweaters,
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`sweatshirts, swimwear, ties, undergarments, vests, hats, toques, lab coats, yoga pants and
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`tights, cargo pants; bandanas in International Class 25; and On-line retail store services
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`featuring clothing, snack foods, and smokers’ products; Retail store services featuring
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`clothing, snack foods, and smokers’ products in International Class 35.
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`50.
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`A copy of the U.S. Patent & Trademark Office’s TESS printouts of the
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`above-listed mark is attached hereto as Exhibit E.
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`51.
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`All Saints has opposed the registration of Blitz’s Mark in Opposition No.
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`91250979.
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`52.
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`A copy of the U.S. Patent & Trademark Office’s TTABVUE printouts of
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`the Notice of Opposition is attached hereto as Exhibit F.
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`53.
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`Blitz is also the owner of Trademark Appl. Serial Number: 88/333,668 for
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`the Goat Skull Logo for intended use with: Men's, women's or unisex personal care
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`grooming products, namely, shampoo, hair conditioner, body lotion, aftershave, deodorant,
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`antiperspirants, cologne, perfume, body spray, sun screen, after sun cream, self-tanning
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`cream, lip balm, hair gel, hair pomade in International Class 3.
`
`54.
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`A copy of the U.S. Patent & Trademark Office’s TESS printouts of the
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`above-listed mark is attached hereto as Exhibit G.
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`55.
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`All Saints has opposed the registration of Blitz’s Mark in Opposition No.
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`91252633.
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`56.
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`A copy of the U.S. Patent & Trademark Office’s TTABVUE printouts of
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`the Notice of Opposition is attached hereto as Exhibit H.
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`ALL SAINTS SENDS A CEASE AND DESIST LETTER TO BLITZ
`DEMANDING BLITZ STOP USING THE GOAT SKULL LOGO AND
`ABANDON ITS TRADEMARK APPLICATIONS AND REGISTRATIONS
`WORLDWIDE
`
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`57.
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`Blitz incorporates by reference paragraphs 1 to 56 as if fully set forth
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`herein.
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`58.
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`All Saints initiated this dispute by sending Blitz a cease and desist letter
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`dated April 9, 2019 (the “April 9 Letter”), attached hereto as Exhibit I.
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`59.
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`The April 9 Letter was titled “Your use and registration for the Skull logo
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`in the EU, US, Brazil, Chile and Canada, and opposition thereto by All Saints Retail
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`Limited...” Id. at 1.
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`60.
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`In the April 9 Letter, All Saints asserts that a likelihood of confusion exists
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`between Blitz’s Goat Skull Logo and All Saints’ RAMSKULL Marks when used in
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`connection with at least clothing products and retail services, which All Saints termed its
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`“core goods.” Id. at 2.
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`61.
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`In particular, the April 9 Letter states: “Your [Goat] Skull logo has a high
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`level of visual similarity with our client’s Ramskull logo, and use of the [Goat] Skull logo
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`in relation to our client’s core goods and services is likely to result in confusion…” Id.
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`at 2 (emphasis added).
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`62.
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`All Saints then demanded in the letter that Blitz, “[i]n order to avoid
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`lengthy legal proceedings,” must:
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`1. surrender [All Saints’] core classes from [Blitz’s] EUTM registration
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`[for the Goat Skull Logo trademark];
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`2. surrender [All Saints’] core classes from all pending applications [for
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`the Goat Skull logo] in Chile, Canada, Brazil and the United States;
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`3. refrain from using the [Goat] Skull logo in relation to [All Saints’]
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`core goods and services; and
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` 4. refrain from filing future trade mark applications for the [Goat] Skull
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`logo in relation to [All Saints’] core goods and services.
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`Id. at 2 (emphasis added).
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`63.
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`On May 29, 2019, Blitz responded to All Saints’ April 9 Letter and
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`declined to acquiesce to All Saints’ demands “to surrender its registrations and applications
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`and limit its use.” Ex. J at 2.
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`ALL SAINTS LAUNCHES OPPOSITION PROCEEDINGS AGAINST
`BLITZ’S TRADEMARK APPLICATIONS AT THE USPTO AND
`AROUND THE WORLD
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`64.
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`Despite the fact that none of the All Saints Registrations nor any other
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`application or registration of All Saints was cited against Blitz’s U.S. trademark
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`application, on September 17, 2019, All Saints filed a notice opposing registration of
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`Blitz’s U.S. Application Serial No. 88/125,045 in part, alleging likelihood of confusion,
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`dilution by blurring, and dilution by tarnishment with the All Saints Registrations. See
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`Ex. F.
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`65.
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`Despite the fact that none of the All Saints Registrations nor any other
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`application or registration of All Saints was cited against Blitz’s U.S. trademark
`
`application, on December 4, 2019, All Saints filed a notice opposing registration of Blitz’s
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`U.S. Application Serial No. 88/333,668 in part, alleging likelihood of confusion, dilution
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`by blurring, and dilution by tarnishment with the All Saints Registrations. See Ex. H.
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`66.
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`All Saints has also opposed the Goat Skull Logo trademark applications
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`filed by Blitz in countries around the world, including, by way of example, in Australia
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`(Ex. K), Argentina, the United Kingdom (Ex. L), Mexico, India (Ex. M) and Norway.
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`67.
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`In each case, All Saints alleges that a likelihood of confusion exists
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`between Blitz’s Goat Skull Logo and the All Saints RAMSKULL Marks. See Exs. K – M.
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`68.
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`Blitz and its licensees, in turn, initiated non-use cancellation proceedings
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`against All Saints seeking to cancel All Saints’ registrations for non-use in several countries
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`around the world, including Argentina, Australia, and India.
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`69.
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`Shortly after the parties began litigating these proceedings around the
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`world, Blitz and All Saints attempted to settle the disputes between them, and spent much
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`of 2020 and the early weeks of 2021 in negotiations.
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`70.
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`During those settlement discussions, the U.S. opposition proceedings were
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`suspended or had deadlines extended, and they have not yet proceeded beyond the initial
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`pleadings.
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`71.
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`Likewise, most of the opposition and cancellation proceedings elsewhere
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`in the world were suspended or entered cooling-off periods so that the parties could attempt
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`to resolve the dispute.
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`72.
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`Sadly, Blitz’s and All Saints’ settlement discussions have now reached an
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`impasse.
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`73.
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`All Saints is unwilling to covenant not sue Blitz or its licensees for past,
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`current, or future infringement based on use of the Blitz Goat Skull Logo or Ignite Goat
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`Skull Logo as it is used in connection with Blitz’s Goods and Services.
`
`74.
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`All Saints’ April 9 Letter, its repeated assertions of a likelihood of
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`confusion and dilution, its initiation of multiple opposition proceedings in the U.S. and
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`elsewhere around the world, and its refusal to agree not to assert legal claims against Blitz
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`for its use of its Goat Skull Logo despite numerous requests, create an actual, imminent,
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`and substantial controversy between Blitz and All Saints.
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`75.
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`Blitz cannot move forward with its business and marketing plans with the
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`continued unresolved controversy.
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`76.
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`Even if Blitz were to prevail in the opposition proceedings, Blitz would
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`still be forced to live under a threat of trademark infringement and dilution litigation by All
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`Saints as Blitz’s business grows and its products evolve and change. This is because the
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`dispute (initiated by All Saints in its cease and desist letter) as to Blitz’s use of the Goat
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`Skull Logo cannot be resolved in the pending opposition proceedings at the U.S. Patent &
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`Trademark Office alone.
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`77.
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`There thus presently exists a justiciable controversy regarding Blitz’s right
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`to market and sell its clothing, accessories, and personal care products featuring Blitz’s
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`Goat Skull Logo free of any allegation by All Saints that such conduct constitutes an
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`infringement or dilution of any trademark allegedly owned by All Saints.
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`ALL SAINTS ASSERTED REGISTRATIONS IT KNEW TO BE INVALID
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`78.
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`Blitz incorporates by reference paragraphs 1 to 76 as if fully set forth
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`herein.
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`79.
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`On information and belief, All Saints sells certain men’s and women’s
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`clothing, accessories, and cologne online, through retail stores, and through third-party
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`retail distributors.
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`80.
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`On information and belief, only a subset of the goods and services
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`identified in the All Saints Registrations are actually sold by All Saints.
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`81.
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`At the time, All Saints first sent Blitz the April 9 Letter, and later when All
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`Saints initiated the opposition proceedings, the All Saints Registrations collectively recited
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`a large variety of goods and services in International Classes 3, 9, 14, 18, 25, and 35.
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`82.
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`For example, at the time All Saints’ sent its April 9 Letter and initiated its
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`opposition proceedings against Blitz, All Saints’ U.S. Registration No. 4570963 (Ex. P,
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`TESS records, Ex. Q Registration Certificate,) for the mark RAMSKULL recited “Articles
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`of soaps, namely, beauty soaps, bath soaps, and cream soaps, perfumery, essential oils,
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`cosmetics, non-medicated skin preparations, hair lotions, shampoos, conditioners, shaving
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`preparations and after-shave preparations, deodorants for personal use, dentifrices, lip
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`balm, eye creams and gels, sunscreen and sun-tanning preparations, cleaning preparations
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`and exfoliators, namely, exfoliating pad containing a glycolic ingredient not for medical
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`purposes, laundry preparations, namely, laundry detergents, bath and shower foams and
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`gels, bath and shower preparations, namely, gels and salts not for medical purposes and
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`depilatory preparations” in International Class 3; “Optical goods, namely, spectacles;
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`sunglasses; cases and carrying cases adapted for spectacles and sunglasses; containers for
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`spectacles and sunglasses; chains, cords and straps for spectacles and sunglasses; frames
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`for spectacles and sunglasses; lenses for spectacles and sunglasses; headphones; mouse
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`mats; bags adapted for carrying photographic apparatus, video apparatus, cameras; battery
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`holders; cassette tape holders; compact disc holders; MP3 holders; holders specially
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`adapted for use with mobile phones; holders adapted for the display and storage of audio
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`and video cassettes and discs; holders specially adapted for use with compact discs; holders
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`for the transport of cassettes and discs; downloadable music files; downloadable video files
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`featuring musical performances; music recordings; musical video recordings” in
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`International Class 9; “Jewellry, precious stones, horological and chronometric
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`instruments, clocks and watches, earrings, key fobs and key rings of precious metal, badges
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`of precious metal, buckles for watchstraps, jewellry chains, lapel pins” in International
`
`Class 14; “Bags, namely, travel bags, beach bags, luggage, rucksacks, bum bags, handbags,
`
`keycases, Tote bags, holdalls, shoulder bags, shoulder belts made of leather or imitation
`
`leather, wallets, umbrellas, satchels, suitcases, trunks, valises” in International Class 18;
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`“Articles of clothing, namely, shirts, pants, trousers, t-shirts, suits, blouses, dresses, skirts,
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`shorts, jeans, socks, coats, overcoats, jackets, wind-resistant jackets and shells, running
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`pants, athletic shorts, sweat suits, track suits, sweat pants, and sweat shirts; footwear; and
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`headgear, namely, hats and caps” in International Class 25; and “Retail store and wholesale
`
`store services featuring articles of soaps, perfumery, essential oils, cosmetics