Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1166334
`
`Filing date:
`
`10/15/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91271914
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Doskocil Manufacturing Company, Inc.
`
`MICHAEL T. MURPHY
`GLOBAL IP COUNSELORS, LLP
`1233 TWENTIETH STREET NW, SUITE 600
`WASHINGTON, DC 20036
`UNITED STATES
`Primary Email: mmurphy@giplaw.com
`Secondary Email(s): abaggett@giplaw.com, dhwang@giplaw.com, docket-
`dc@giplaw.com
`202-293-0585
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Motion to Suspend for Civil Action
`
`Daniel I. Hwang
`
`mmurphy@giplaw.com, dhwang@giplaw.com, abaggett@giplaw.com, docket-
`dc@giplaw.com
`
`/Daniel I. Hwang/
`
`10/15/2021
`
`Motion to Stay Pending District Court Case - 546.pdf(23703 bytes )
`Ex1 - Civil Action Complaint.pdf(289538 bytes )
`Ex2 - Civil Action Answer and Counterclaims.pdf(329709 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Make Ideas, LLC,
`
`
`Opposer,
`
`
`
`v.
`
`
`Doskocil Manufacturing Company, Inc.,
`
`
`Applicant
`
`
`
`
`
`Opposition No. 91271914
`
`App. Ser. No. 90327546 –
`BREATHE EASY
`
`
`
`
`
`
`
`MOTION TO STAY OPPOSITION AND
`SUSPEND PENDING OUTCOME OF CIVIL ACTION
`
`Applicant Doskocil Manufacturing Company, Inc. ("Applicant"), by its undersigned
`
`counsel, respectfully requests a stay of Opposition No. 91271914 (“Opposition”) prior to
`
`Applicant’s Answer. In support of its motion, Applicant states as follows:
`
`I.
`
`INTRODUCTION
`
`Make Ideas, LLC (“Opposer”) and Applicant are involved in a civil lawsuit involving the
`
`trademark at issue, among other things, filed on May 14, 2021, by Applicant in the United States
`
`District Court for the Northern District of Texas ("District Court") – Doskocil Manufacturing
`
`Company, Inc. d/b/a Petmate v. Make Ideas, LLC and Keith Mullin, Case No. 21-cv-01098-B
`
`(May 14, 2021 NDTX) (“Civil Action”). A copy of the complaint in the Civil Action is attached
`
`as Exhibit 1. The complaint describes a dispute regarding App. Ser. No. 90327546 (the “‘546
`
`Trademark Application”). See Ex. 1 at pp. 4, 6, 8 (highlighted in Exhibit 1).
`
`Opposer filed its Answer on September 28, 2021, attached as Exhibit 2, which alleges
`
`that Applicant’s filing of the ‘546 Trademark Application is a breach of the License Agreement
`
`and a “misappropriated trademark application”. See Ex. 2 at pp. 15, 16, 22 (e.g., “Examples of
`
`misappropriated trademark applications and a trademark registration include the ‘758
`
`
`
`1
`
`

`

`Trademark, the ‘385 Trademark Application, the ‘344 Trademark Application, the ‘551
`
`Trademark Application, the ‘546 Trademark Application and the ‘534 Trademark Application”)
`
`(highlighted in Exhibit 2).
`
`Opposer admits in its Answer that the ‘534 Application, the ‘551 Application, and the
`
`‘546 Application, among other trademark rights, are at issue in the Civil Action and that the Civil
`
`Action will have a bearing on this Opposition. See Ex. 2, pp. 15, 16, 22. Because the outcome of
`
`the Civil Action will necessarily have a bearing on the Opposition and involve issues that cannot
`
`be decided by the Board including whether Applicant’s Mark infringes Opposer’s alleged mark
`
`(misappropriation), whether damages will be awarded, and/or whether an injunction will be
`
`imposed, granting Applicant’s Motion to Stay the Opposition and suspension of the proceeding
`
`is appropriate. TBMP § 510.02(a).
`
`II.
`
`ARGUMENT
`
`If it comes to the attention of the Board that a party or parties to a case pending before the
`
`Board are involved in a civil action that may have bearing on the Board case, the Board has the
`
`authority to suspend the proceeding until the final determination of the civil action. 37 CFR §
`
`2.117; TMBP § 510.02(a). The rationale is that to the extent that a civil action in a Federal
`
`District Court involves issues in common with those in a proceeding before the Board, the
`
`decision of the Federal District Court is often binding on the Board, while the decision of the
`
`Board is not binding upon the court. Moreover, the Board cannot decide issues of infringement.
`
`TMBP § 510.02(a); see e.g., Goya Foods Inc. v. Tropicana Products, Inc., 846 F.2d 848, 6
`
`U.S.P.Q.2d 1950, 1954 (2d Cir. 1988).
`
`Applicant and Opposer are the identical parties to the Civil Action. The identical
`
`trademarks, applications, and/or registrations are at issue in the Civil Action and this Opposition.
`
`
`
`2
`
`

`

`The Civil Action will determine whether Applicant’s Mark infringes Opposer’s alleged mark
`
`(misappropriation), whether damages will be awarded, and/or if an injunction will be imposed.
`
`Accordingly, the rulings and findings in the Civil Action will have a bearing on, if not be
`
`dispositive of, the principal issues involved in this Board proceeding.
`
`III. CONCLUSION
`
`Applicant seeks to suspend this proceeding to avoid the unnecessary burden on the Board
`
`and upon the parties by litigating in parallel proceedings. As such, Applicant urges the Board to
`
`suspend this proceeding until the final determination of the Civil Action.
`
`
`
`By: /s/ Michael T. Murphy
`
`Michael T. Murphy
`Daniel Hwang
`Global IP Counselors, LLP
`1233 20th St. NW
`Suite 600
`Washington, DC 20036
`Phone: (202) 293-0444
`FAX: (202) 293-0445
`MMURPHY@GIPLAW.COM
`
`ATTORNEYS FOR APPLICANT
`
`Dated: October 15, 2021
`
`
`
`
`
`
`
`3
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the attached was served
`
`on the representative of Opposer via electronic mail:
`
`
`
`
`
`
`
`____/s/ Daniel Hwang____
`
`Daniel Hwang
`
`ANDREW D. SKALE
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`3580 CARMEL MOUNTAIN ROAD, SUITE 300
`SAN DIEGO, CA 92130
`UNITED STATES
`
`adskale@mintz.com
`jddib@mintz.com
`acromanini@mintz.com
`IPDocketingBOS@mintz.com
`Mintzdocketing@cpaglobal.com
`
`
`
`Dated: October 15, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`

`

`Exhibit 1
`Exhibit |
`
`

`

`
`
`Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 1 of 12 PageID 1Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 1 of 12 PageID 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`
`
`§ § § § § § § § § § §
`
`
`
`
`
`Civil Action No. ___________________
`
`
`
`
`
`DOSKOCIL MANUFACTURING
`COMPANY, INC. d/b/a PETMATE,
`
`Plaintiff,
`
`v.
`
`MAKE IDEAS, LLC and
`KEITH MULLIN,
`
`
`Defendants.
`
`
`
`
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT AND JURY DEMAND
`
`
`
`Plaintiff Doskocil Manufacturing Company, Inc. d/b/a Petmate (“Petmate”) brings this
`
`action against Defendants Make Ideas, LLC (“Make Ideas”) and Keith Mullin (“Mullin”)
`
`(collectively “Defendants”) and seeks relief as follows:
`
`PARTIES
`
`1.
`
`Plaintiff Petmate is a Delaware corporation with its principal place of business at
`
`2300 East Randol Mill Road, Arlington, Texas 76011.
`
`2.
`
`Defendant Make Ideas is a California limited liability corporation with its principal
`
`place of business at 7421 Eads Avenue, La Jolla, California 92037. Upon information and belief,
`
`Mullin is the sole member of Make Ideas and is a citizen of California.
`
`3.
`
`Defendant Mullin is an individual residing at 7421 Eads Avenue, La Jolla,
`
`California 92037. Mullin, the founder and president of Make Ideas, personally directed and
`
`committed the acts complained of herein. Mr. Mullin has treated his company as his alter ego to
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`
`
`1
`
`

`

`
`
`Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 2 of 12 PageID 2Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 2 of 12 PageID 2
`
`make threats in bad faith and has assumed a unity of interest and control between himself and his
`
`company.
`
`JURISDICTION AND VENUE
`
`4.
`
`This court has subject matter jurisdiction under 28 U.S.C. § 1332(a)(1) because the
`
`Plaintiff and the Defendants are citizens of different states and the amount in controversy exceeds
`
`$75,000, exclusive of interest and costs. This court also has subject matter jurisdiction under 28
`
`U.S.C. §§ 1331, 1338 and 1367 because this action involves claims relating to patents and
`
`registered trademarks.
`
`5.
`
`This court has personal jurisdiction over Defendants because they have made
`
`threats intended to harm Petmate in this district. Further, the Parties voluntarily submitted to the
`
`jurisdiction of this court by virtue of the dispute resolution provision in Section 12.2 of the
`
`Intellectual Property License and Product Agreement upon which this action is based.
`
`6.
`
`Venue is proper in this district under 28 U.S.C. § 1391(b)(2) because a substantial
`
`part of the events or omissions giving rise to this action occurred in this district, and a substantial
`
`part of the property that is the subject of this action is situated in this district. Further, the Parties
`
`voluntarily selected this venue in Section 12.2 of the Intellectual Property License and Product
`
`Agreement.
`
`FACTS
`
`7.
`
`On January 1, 2016, the Parties entered into an Intellectual Property License and
`
`Product Agreement (“the License Agreement”). Pursuant to Section 9.1, the License Agreement
`
`was effective for a five-year term expiring on December 31, 2020 (“the Term”). The License
`
`Agreement at Section 9.1 further permitted two year renewal terms upon mutual agreement of the
`
`Parties.
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`
`
`2
`
`

`

`
`
`Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 3 of 12 PageID 3Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 3 of 12 PageID 3
`
`8.
`
`The License Agreement at Section 2.1 granted Petmate an exclusive license to use
`
`Make Ideas’ intellectual property (“Make Ideas’ Intellectual Property”), which included U.S.
`
`Trademark Serial No. 86420950 for “Breathe Right Ball” (“the Breathe Right Trademark”), U.S.
`
`Provisional Patent Application No. 62/280,810 (“the Make Ideas Patent Application”), and a
`
`prototype ball provided by Make Ideas (“the Make Ideas Prototype Ball”) which allegedly
`
`embodied the concept described in the Make Ideas Patent Application. However, the License
`
`Agreement did not require Petmate to use the Make Ideas’ Intellectual Property. As noted at
`
`Section 3.3 of the License Agreement, the Parties acknowledged that Petmate already owned
`
`several patents which covered a design which could be sold using the Breathe Right Trademark in
`
`accordance with the rights granted under the License Agreement.
`
`9.
`
`Since Petmate already owned patents and technology which it intended to use to
`
`create products sold under the License Agreement, the main purpose of the License Agreement
`
`was for Petmate to license the Breathe Right Trademark. The License Agreement also gave
`
`Petmate the right to manufacture the Make Ideas Prototype Ball and/or practice the Make Ideas
`
`Patent Application if Petmate chose to do so during the Term. To account for these additional
`
`options, the License Agreement provided a tiered payment structure (the “Royalty”) depending
`
`upon which of Make Ideas’ Intellectual Property Petmate chose to use. The License Agreement
`
`at Section 6.1 provided a base Royalty if Petmate used its own technology to produce a licensed
`
`product branded with the Breathe Right Trademark. The License Agreement at Section 6.1 further
`
`provided for the Royalty to increase if Petmate did not use its own technology to produce a licensed
`
`product.
`
`10.
`
`During the Term, Petmate used its own preexisting technology to produce products
`
`branded with the Breathe Right Trademark. Petmate did not use the Make Ideas Prototype Ball,
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`
`
`3
`
`

`

`
`
`Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 4 of 12 PageID 4Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 4 of 12 PageID 4
`
`practice the concept described in the Make Ideas Patent Application, or use any other of Make
`
`Ideas’ Intellectual Property. In accordance with Section 6.1 of the License Agreement, Petmate
`
`paid Make Ideas a base Royalty on the net sales for all products sold using the Breathe Right
`
`Trademark.
`
`11.
`
`Petmate obtained various patents during the Term of the License Agreement. All
`
`patents were independently invented by Petmate and did not use any Make Ideas Intellectual
`
`Property. The patents obtained during the Term include (i) U.S. Patent No. 9,962,864, entitled
`
`“Method of Molding Product Having Hollow Interior Region” (“the ‘864 Patent”), (ii) U.S. Design
`
`Patent No. D870,986, entitled “Pet Toy” (“the D’986 Patent”), and (iii) U.S. Design Patent No.
`
`D869,105, entitled “Pet Toy” (“the D’105 Patent”).
`
`12.
`
`Petmate also filed for and/or obtained various trademarks during the Term of the
`
`License Agreement. Pursuant to Section 4.1 of the License Agreement, Petmate owns any brands
`
`it selects to identify products sold under the License Agreement, other than marks with the words
`
`“Breathe” and “Right.” Petmate’s trademarks and/or trademark applications filed and/or obtained
`
`during the Term include (i) U.S. Trademark Registration No. 5,351,758 for “Run Farther, Fetch
`
`Longer” (“the ‘758 Trademark”), (ii) U.S. Trademark Serial No. 90521385 for “Fetch Hard,
`
`Breathe Easy” (“the ‘385 Trademark Application”), (iii) U.S. Trademark Serial No. 90521344 for
`
`“Chuckit! Air” (“the ‘344 Trademark Application”), (iv) U.S. Trademark Serial No. 90327551 for
`
`“Breathe It” (“the ‘551 Trademark Application”), (v) U.S. Trademark Serial No. 90327546 for
`
`“Breathe Easy” (“the ‘546 Trademark Application”), and (vi) U.S. Trademark Serial No.
`
`90327534 for “Chuckit! Breathe” (“the ‘534 Trademark Application”).
`
`13.
`
`In the fourth quarter of 2020 as the Term neared expiration, the Parties attempted
`
`to negotiate an extension in accordance with Section 9.1 of the License Agreement. Make Ideas
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`
`
`4
`
`

`

`
`
`Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 5 of 12 PageID 5Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 5 of 12 PageID 5
`
`demanded an increased Royalty and assignment of certain intellectual property owned by Petmate
`
`to Make Ideas. Petmate offered to extend the License Agreement under the same base Royalty.
`
`The Parties did not reach an agreement, so the Parties executed a temporary extension to continue
`
`negotiations.
`
`14.
`
`On December 28, 2020, Make Ideas and Mullin sent to Petmate in Arlington Texas
`
`a threatening letter (“the First Threat Letter”). The First Threat Letter asserted that Petmate had
`
`breached the License Agreement by selling products that had not been authorized by Make Ideas.
`
`The First Threat Letter also asserted that Make Ideas is the rightful owner of the ‘758 Trademark
`
`and the ‘864 Patent. The First Threat Letter demanded that Petmate assign the ‘758 Trademark
`
`and the ‘864 Patent to Make Ideas, that Petmate cease and desist all use, manufacturing, marketing,
`
`distribution and sales of all products which Make Ideas’ asserted were “not licensed”, and that
`
`Petmate infringed its own ‘864 Patent and therefore must cease and desist all manufacturing,
`
`marketing, distribution and sales of any products that utilize the ‘864 Patent.
`
`15.
`
`On January 27, 2021, Petmate replied to the First Threat Letter. In response to
`
`Make Ideas’ and Mullin’s demands, Petmate explained that the ‘758 Trademark is owned by
`
`Petmate under the License Agreement because it does not use the words “Breathe” and “Right,”
`
`that the ‘864 Patent is owned by Petmate because the concept described therein was developed
`
`independently of any of Make Ideas’ Intellectual Property, and that Petmate had not breached the
`
`License Agreement by selling unauthorized products.
`
`16.
`
`On February 28, 2021, Make Ideas and Mullin sent to Petmate in Arlington Texas
`
`a second threatening letter (“the Second Threat Letter”). The Second Threat Letter repeated the
`
`demands in the First Threat Letter. In addition, the Second Threat Letter threatened several actions
`
`if the demands were not met, including, that Make Ideas intends to (i) send cease and desist orders
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`
`
`5
`
`

`

`
`
`Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 6 of 12 PageID 6Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 6 of 12 PageID 6
`
`to Petmate’s physical retailers, demanding the immediate removal of Petmate’s products from
`
`market shelves, (ii) send cease and desist orders to Petmate’s online retailers, demanding that
`
`Petmate’s products be immediately delisted and removed from online display, (iii) notify the
`
`American Pet Products Association (“APPA”) regarding Petmate’s products and order for
`
`Petmate’s products to be delisted from the Global Pet Expo and not displayed, (iv) send orders to
`
`the U.S. Department of Customs and Border Protection that Petmate’s products should be seized
`
`and destroyed at U.S. ports of entry, (v) send orders to the U.S. Department of State, Office of
`
`Intellectual Property Enforcement and the U.S. Consulate General, China that any Chinese
`
`production facility producing Petmate’s products be cited in violation and any inventory be
`
`destroyed on-site, and (vi) any additional actions that Make Ideas decides to pursue.
`
`17.
`
`On March 15, 2021, Make Ideas and Mullin sent to Petmate in Arlington Texas a
`
`third threatening letter (“the Third Threat Letter”). In addition to the demands made in the First
`
`and Second Threat Letters, the Third Threat Letter asserted that Make Ideas is the rightful owner
`
`of various other intellectual property owned by Petmate, including (i) the ‘385 Trademark
`
`Application, (ii) the ‘344 Trademark Application, (iii) the ‘551 Trademark Application, (iv) the
`
`‘546 Trademark Application, (v) the ‘534 Trademark Application, (vi) the D’986 Patent, and (vii)
`
`the D’105 Patent. The Third Threat Letter also demanded that Mullin be added as an inventor of
`
`the D’986 Patent and the D’105 Patent. The Third Threat Letter further terminated the License
`
`Agreement and threatened a lawsuit against Petmate.
`
`18.
`
`On April 6, 2021, Make Ideas and Mullin sent to Petmate in Arlington Texas a
`
`fourth threatening letter (“the Fourth Threat Letter”). The Fourth Threat Letter accused Petmate
`
`of fraud for Petmate’s use of the phrase “Chuckit! Air”. The Fourth Threat Letter further stated
`
`that Make Ideas intends to contact Petmate’s retailers and the U.S. Patent and Trademark Office
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`
`
`6
`
`

`

`
`
`Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 7 of 12 PageID 7Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 7 of 12 PageID 7
`
`regarding the alleged fraud, contact the U.S. Securities and Exchange Commission to report that
`
`Petmate is fraudulently reporting assets and property on company financial statements, and contact
`
`the Federal Trade Commission, National Advertising Review Board to report that Petmate is
`
`advertising products and claiming trademarks which it does not own.
`
`19.
`
`Defendant Mullin personally directed and made the threats in bad faith in the First
`
`Threat Letter, the Second Threat Letter, the Third Threat Letter and the Fourth Threat Letter,
`
`knowing the License Agreement did not justify the threats.
`
`20.
`
`Due to the repeated threats made against Petmate by the Defendants, Petmate has
`
`been forced to file the present action. Defendants’ claims of ownership of Petmate’s patents and
`
`trademarks threatens Petmate’s ability to innovate and sell its products. Further, if Defendants act
`
`on their threats to contact Petmate’s business partners and various government organizations,
`
`Petmate will be irreparably harmed. Petmate’s suppliers will not know the truth of the accusations
`
`asserted by Defendants and will be placed in a difficult position. The same holds true for the
`
`American Pet Products Association, the U.S. Department of Customs and Border Protection, the
`
`U.S. Department of State, Office of Intellectual Property Enforcement, the U.S. Consulate General,
`
`China, the U.S. Patent and Trademark Office, the U.S. Securities and Exchange Commission and
`
`the Federal Trade Commission, National Advertising Review Board. Petmate will also be forced
`
`to spend considerable time, effort and money to defend itself against Defendants’ baseless
`
`accusations and rectify the resulting problems created by Defendants.
`
`Count 1: Declaratory Relief as to Breach of Contract
`
`CAUSES OF ACTION
`
`21.
`
`Petmate re-alleges and incorporates by reference the foregoing factual allegations
`
`of paragraphs 1-20 as if fully set forth herein.
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`
`
`7
`
`

`

`
`
`Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 8 of 12 PageID 8Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 8 of 12 PageID 8
`
`22.
`
`The License Agreement is a valid and enforceable contract between Petmate and
`
`Make Ideas. There is an actual controversy within the meaning of 28 U.S.C. §§ 2201 and 2202 in
`
`that Make Ideas and Mullin allege that Petmate has breached the License Agreement and threaten
`
`to take various actions based on the alleged breach.
`
`23.
`
`Petmate has performed under the License Agreement.
`
`24.
`
`Petmate seeks a declaratory judgment that Petmate has not breached the License
`
`Agreement.
`
`Count 2: Declaratory Relief as to Ownership of Trademark Rights
`
`25.
`
`Petmate re-alleges and incorporates by reference the foregoing factual allegations
`
`of paragraphs 1-20 as if fully set forth herein.
`
`26.
`
`There is an actual controversy within the meaning of 28 U.S.C. §§ 2201 and 2202
`
`in that Make Ideas and Mullin allege that they are the true and correct owner of various Petmate
`
`trademarks and/or trademark applications and threaten to take various actions based on such
`
`ownership. These trademarks and/or trademark applications include (i) the ‘758 Trademark, (ii)
`
`the ‘385 Trademark Application, (iii) the ‘344 Trademark Application, (iv) the ‘551 Trademark
`
`Application, (v) the ‘546 Trademark Application, and (vi) the ‘534 Trademark Application.
`
`27.
`
`Petmate denies that Make Ideas or Mullin have any ownership rights in the
`
`aforementioned trademarks or trademark applications or any other trademarks or trademark
`
`applications applied for by Petmate. The License Agreement at Section 4.1 states that Petmate
`
`owns any brands it selects other than marks with the words “Breathe” and “Right.”
`
`28.
`
`Petmate seeks a declaratory judgment that neither Make Ideas nor Mullin have any
`
`rights in any of Petmate’s trademarks which do not use the words “Breathe” and “Right”.
`
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`
`
`8
`
`

`

`
`
`Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 9 of 12 PageID 9Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 9 of 12 PageID 9
`
`Count 3: Declaratory Relief as to Ownership of Patent Rights
`
`29.
`
`Petmate re-alleges and incorporates by reference the foregoing factual allegations
`
`of paragraphs 1-20 as if fully set forth herein.
`
`30.
`
`There is an actual controversy within the meaning of 28 U.S.C. §§ 2201 and 2202
`
`in that Make Ideas and Mullin allege that they are the true and correct owner of various Petmate
`
`patents and threaten to take various actions based on such ownership. These patents include the
`
`‘864 Patent, the D’986 Patent, and the D’105 Patent.
`
`31.
`
`Petmate denies that Make Ideas or Mullin has any ownership rights in the
`
`aforementioned patents or any other patents or patent applications applied for by Petmate. Petmate
`
`has not used any Make Ideas’ Intellectual Property to apply for any patent applications or obtain
`
`any patents.
`
`32.
`
`Petmate seeks a declaratory judgment that neither Make Ideas nor Mullin own any
`
`rights in any of Petmate’s patents and/or patent applications.
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`Count 4: Declaratory Relief as to Patent Infringement
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`33.
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`Petmate re-alleges and incorporates by reference the foregoing factual allegations
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`of paragraphs 1-20 as if fully set forth herein.
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`34.
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`There is an actual controversy within the meaning of 28 U.S.C. §§ 2201 and 2202
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`in that Make Ideas and Mullin allege that Petmate infringes the ‘864 Patent which Make Ideas
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`asserts that it owns. Make Ideas and Mullin have repeatedly demanded that Petmate cease and
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`desist any and all manufacturing, marketing, distribution and sales of any products which utilize
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`the ‘864 Patent. Make Ideas and Mullin have also repeatedly demanded a reconciliation report
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`detailing any and all Petmate products that practice the ‘864 Patent.
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`PLAINTIFF’S ORIGINAL COMPLAINT
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`9
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`Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 10 of 12 PageID 10Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 10 of 12 PageID 10
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`35.
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`Petmate denies that it can infringe its own ‘864 Patent and has refused Make Ideas’
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`and Mullin’s demands.
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`36.
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`Petmate seeks a declaratory judgment that it cannot infringe its own ‘864 Patent.
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`Count 5: Declaratory Relief as to Patent Inventorship
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`37.
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`Petmate re-alleges and incorporates by reference the foregoing factual allegations
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`of paragraphs 1-20 as if fully set forth herein.
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`38.
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`There is an actual controversy within the meaning of 28 U.S.C. §§ 2201 and 2202
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`in that Make Ideas and Mullin allege that Mullin should be a named inventor on the D’986 Patent
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`and the D’105 Patent. Make Ideas and Mullin have demanded that Petmate update the inventorship
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`of these patents.
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`39.
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`Petmate denies that Mullin should be named as an inventor on any of Petmate’s
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`patents or patent applications. Mullin is not an inventor for any of Petmate’s patents or patent
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`applications. Petmate has not used any Make Ideas’ Intellectual Property to apply for any patent
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`applications or obtain any patents.
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`40.
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`Petmate seeks a declaratory judgment that Mullin is not an inventor on any of
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`Petmate’s patents or patent applications.
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`Count 6: Breach of Contract
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`41.
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`Petmate re-alleges and incorporates by reference the foregoing factual allegations
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`of paragraphs 1-20 as if fully set forth herein.
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`42.
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`The License Agreement is a valid and enforceable contract between Petmate and
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`Make Ideas. According to Section 14.9 of the License Agreement, Make Ideas and Mullin were
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`not allowed to use the Petmate name in promotional materials without the written consent of
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`Petmate. Upon information and belief, Make Ideas and/or Mullin has breached the License
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`PLAINTIFF’S ORIGINAL COMPLAINT
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`
`
`10
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`Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 11 of 12 PageID 11Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 11 of 12 PageID 11
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`Agreement by using Petmate’s name in promotional materials without Petmate’s written consent.
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`Further, the claims and demands made by Make Ideas and Mullin in the First Threat Letter, the
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`Second Threat Letter, the Third Threat Letter and the Fourth Threat Letter violate the License
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`Agreement’s clear confirmation of Petmate’s intellectual property rights. Make Ideas and/or
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`Mullin has therefore also breached the License Agreement by refusing to follow the License
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`Agreement’s clear intellectual property ownership provisions.
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`43.
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`Petmate seeks a judgment that Make Ideas has breached the contract by violating
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`the License Agreement. As a result, Petmate has suffered damages in an amount to be determined
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`at trial.
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`ATTORNEY’ FEES AND COSTS
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`44.
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`Because of Make Ideas’ and Mullin’s conduct, Petmate has been required to file
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`suit to protect its rights and those of its customers. In the event that the court grants Petmate the
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`declaratory relief sought herein, Petmate respectfully requests that the court award costs and
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`attorneys’ fees as part of such relief pursuant to 28 U.S.C. § 2202. Alternatively or additionally,
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`Petmate is entitled to recover costs and attorneys’ fees pursuant to Section 12.3 of the License
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`Agreement as mutually agreed by the Parties and/or under Tex. Civ. Prac. & Rem. Code § 38.001.
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`PRAYER FOR RELIEF
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`WHEREFORE, Petmate respectfully requests that the court:
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`A.
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`B.
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`enter judgement according to the declaratory relief sought;
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`award Petmate damages adequate to compensate it for the above-described
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`declaratory relief and breach of contract;
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`C.
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`D.
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`award Petmate its costs in this action;
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`award Petmate its attorneys’ fees in this action; and
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`PLAINTIFF’S ORIGINAL COMPLAINT
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`
`
`11
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`Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 12 of 12 PageID 12Case 3:21-cv-01098-B Document 1 Filed 05/14/21 Page 12 of 12 PageID 12
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`E.
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`enter such other further relief to which Petmate may be entitled as a matter of law
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`or equity, or which the court determines to be just and proper.
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`DEMAND FOR JURY
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`Petmate demands a trial by jury on all issues so triable.
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`Respectfully submitted,
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`By:_/s/ Matthew C. Acosta
`Matthew C. Acosta
`Texas Bar No. 24066800
`macosta@pcrfirm.com
`PLATT CHEEMA RICHMOND PLLC
`1201 N. Riverfront Blvd., Suite 150
`Dallas, Texas 75207
`214.559.2700 Main
`214.559.4390 Fax
`
`
`OF COUNSEL:
`Joseph F. Arand
`(Pro have Vice To Be Filed)
`Illinois Bar No. 6294836
`jarand@giplaw.com
`Global IP Counselors, LLP
`1233 Twentieth Street, NW, Suite 600
`Washington, D.C. 20036 USA
`Phone: (786) 325-5359
`Email: jarand@giplaw.com
`
`COUNSEL FOR PLAINTIFF
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`PLAINTIFF’S ORIGINAL COMPLAINT
`
`
`
`12
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`

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`Exhibit 2
`Exhibit 2
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`

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`Case 3:21-cv-01098-B Document 20 Filed 09/28/21 Page 1 of 26 PageID 55Case 3:21-cv-01098-B Document 20 Filed 09/28/21 Page 1 of 26 PageID 55
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
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`DOSKOCIL MANUFACTURING
`COMPANY, INC. d/b/a PETMATE,
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`
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`Plaintiff,
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`MAKE IDEAS, LLC and
`KEITH MULLIN,
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`Defendants.
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`v.
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`Civil Action No. 3:21-cv-01098-B
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`JURY TRIAL DEMANDED
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`DEFENDANTS’ ANSWER TO PLAINTIFF’S ORIGINAL COMPLAINT AND
`COUNTERCLAIMS AND JURY DEMAND
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`Defendants Make Ideas, LLC (“Make Ideas”) and Keith Mullin (“Mullin”) (collectively
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`“Defendants”) answer Plaintiff Doskocil Manufacturing Company, Inc. d/b/a Petmate’s
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`(“Petmate”) Complaint in numbered paragraph order corresponding to the numbered paragraphs
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`of Plaintiff’s Complaint against Defendants as follows:
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`PARTIES
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`1.
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`Defendants lack sufficient information and belief to admit or deny the allegations
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`in Paragraph 1 of Plaintiff’s Complaint, and on that basis deny such allegations.
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`2.
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`3.
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`Admitted.
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`Defendants admit that Defendant Mullin is an individual residing at 7421 Eads
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`Avenue, La Jolla, California 92037 and is the founder and president of Make Ideas, and except as
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`so admitted, Defendants deny the remaining allegations in Paragraph 3 of the Complaint.
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`-1-
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`Case 3:21-cv-01098-B Document 20 Filed 09/28/21 Page 2 of 26 PageID 56Case 3:21-cv-01098-B Document 20 Filed 09/28/21 Page 2 of 26 PageID 56
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`
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`4.
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`5.
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`JURISDICTION AND VENUE
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`Admitted.
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`Defendants admit that the parties agreed to the jurisdiction of this Court by virtue
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`of the dispute resolution provision in Section 12.2 of the Intellectual Property License and
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`Product Agreement (the “License Agreement”), and except as so admitted, Defendants deny the
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`remaining allegations in Paragraph 5 of the Complaint.
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`6.
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`Admitted.
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`FACTS
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`7.
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` Defendants admit that the parties entered into the License Agreement with an
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`effective date of January 1, 2016, and that the Initial Term of the License Agreement was for a
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`five-year term expiring on December 31, 2020 (the “Term”). Defendants further admit that
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`Section 9.1 of the License Agreement allowed for two-year renewal terms upon mutual
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`agreement of the parties. Except as so admitted, Defendants deny the remaining allegations in
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`Paragraph 7 of the Complaint.
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`8.
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` Defendants admit that the parties entered into the License Agreement with an
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`effective date of January 1, 2016, and that Section 2.1 of that agreement provides “Make Ideas
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`grants to Petmate an exclusive license to use the Make Ideas Intellectual Property, during the
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`Term, in the Territory, in connection with Licensed Products,” and that Paragraph 8 identifies
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`some of the Make Ideas Intellectual Property. Except as so admitted, Defendants deny the
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`remaining allegations in Paragraph 8 of the Complaint.
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`9.
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`Defendants admit that the partie