Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1181719
`
`Filing date:
`
`12/29/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91273569
`
`Party
`
`Correspondence
`address
`
`Defendant
`WRB, Inc.
`
`WRB, INC.
`5865 NEAL AVE N / #113
`STILLWATER, MN 55082
`UNITED STATES
`Primary email: trademark@hammerschlagen.com
`844-942-2548
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Motion to Suspend for Civil Action
`
`James Martin
`
`trademark@hammerschlagen.com
`
`/James Martin/
`
`12/29/2021
`
`Motion to Suspend.pdf(88017 bytes )
`Exhibits.pdf(2908492 bytes )
`
`

`

`UNITED STATES DISTRICT PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of:
`
`Application Serial No. 90453221
`For The Mark Hammer-Schlagen
`
`DAMM, LLC,
`
`Opposer,
`
`v.
`
`WRB, Inc.,
`
`Applicant.
`
`Opposition Number 91273569
`
`Petitioner’s Motion to Suspend
`Proceedings Pending Disposition Of
`Civil Action
`
`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Petitioner WRB, Inc.
`
`(“Petitioner”) hereby moves the Board to suspend the above-referenced proceeding (this
`
`“TTAB Proceeding”) pending final disposition of federal district court case WRB, Inc. V.
`
`Damm, LLC, et al., No. 0:21-CV-01899-NEB-TNL (the “Federal Proceeding”), filed
`
`August 23, 2021, in federal district court for the District of Minnesota (Third Division,
`
`Saint Paul). True and correct copies of the Complaint, civil cover sheet, and Answer from
`
`this action are attached hereto as Exhibit I.
`
`ARGUMENT AND CITATION TO AUTHORITY
`
`The counterclaims made in the Answer of the Federal Proceeding seeks, inter alia,
`
`the same substantive relief sought in this TTAB Proceeding, namely, a judgment that
`
`Applicant’s registration for the mark at issue (Application Serial No. 90453221) in this
`
`TTAB Proceeding be denied. Moreover, the Complaint and Answer both seek additional
`
`relief under the Lanham Act and other laws with respect to: Opposer’s trademark and
`
`trade dress infringement, unfair competition, false designation of origin, violations of the
`
`Anticybersquatting Consumer Protection Act, and related federal and state law claims
`
`- 1 -
`
`

`

`based on the Hammer-Schlagen family of intellectual property owned by Applicant to which
`
`the trademark at issue in this TTAB Proceeding belongs; and Opposer’s counterclaims
`
`alleging fraud and its desire for Applicant's trademark registrations to be canceled.
`
`Given that the parties were involved in the Federal Proceeding concerning the same
`
`marks and issues involved prior to the commencement of this TTAB Proceeding, the
`
`“standard procedure” of the Board is to suspend its administrative proceeding pending
`
`outcome of the civil litigation. New Orleans Louisiana Saints LLC et al. v. Who Dat? Inc.,
`
`99 U.S.P.Q.2d 1550, 1552 (T.T.A.B. 2011) (quoting 6 McCarthy on Trademarks and Unfair
`
`Competition § 32:47 (5th ed. updated September 2017)).
`
`Generally, a civil action need not even be dispositive of a Board proceeding to
`
`warrant suspension. Rather, it is sufficient that the civil action have bearing on the issues
`
`before the Board to justify a suspension. Id. Here, the Federal Proceeding would, in fact,
`
`be dispositive of the matter before the Board, and it involves the same parties and marks
`
`subject to this TTAB Proceeding, as well as the same nucleus of operative facts, as a plain
`
`reading of the Complaint and Answer demonstrates.
`
`Moreover, the pending Federal Proceeding involves other parties and matters
`
`outside Board jurisdiction (including related issues of damages and injunctive relief) and
`
`involves the consideration of broader issues beyond right to registration of the mark for
`
`which application was made. Therefore, pursuant to TBMP § 510.02(a), judicial economy is
`
`served by the requested suspension. Accord The Other Tel. Co. V. Connecticut Nat’l Tel.
`
`Co., 181 U.S.P.Q. (BNA) ¶ 125 (T.T.A.B. Feb. 11, 1974).
`
`Additionally, the parties are currently engaged in discovery both in this TTAB
`
`Proceeding as well as in the Federal Proceeding, but minimal written discovery has taken
`
`place as the parties were previously attempting to settle their dispute with some documents
`
`having already been produced by both parties in the Federal Proceeding. No depositions
`
`- 2 -
`
`

`

`have occurred or been noticed in the Federal Proceeding. And, fact discovery in the Federal
`
`Proceeding is set to close on September 1, 2022. Because the Federal Proceeding involves
`
`not only the issues currently before the Board, but also issues of trademark and trade dress
`
`infringement, unfair competition, false designation of origin, violations of the
`
`Anticybersquatting Consumer Protection Act, and related federal and state law claims,
`
`discovery in the Federal Proceeding will involve documents, depositions, and other
`
`information that is not being and will not be gathered or produced in this TTAB Proceeding.
`
`Thus, suspending the TTAB Proceeding, including as to all outstanding written discovery
`
`requests and deadlines would avoid wasted time and expenses for both parties and the
`
`Board. See, e.g, Softbelly’s Inc v. Ty, Inc., 2002 WL 1844210, *3 (T.T.A.B. Aug. 13, 2002)
`
`(citing The Other Tel., 181 U.S.P.Q. (BNA) ¶ 125) (“It would be a waste of the Board’s and
`
`the parties’ time and resources to proceed to litigate this case at the Board when the same
`
`issues” are pending in federal court.)
`
`CONCLUSION
`
`For these reasons, Petitioner submits that an order from the Board immediately
`
`suspending the TTAB Proceeding, including all outstanding answer, discovery requests,
`
`and scheduled deadlines, is warranted. Petitioner respectfully requests that its motion be
`
`duly granted.
`
` Dated: December 29, 2021
`
`Respectfully Submitted,
`
`WRB, INC.
`
` /s/ James Martin
`By its CEO, James Martin
`5865 Neal Ave N / #113
`Stillwater, MN 55082
`(844) WHACK-IT
`trademark@hammerschlagen.com
`
`Applicant
`
`- 3 -
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that, on December 29, 2021, a copy of the foregoing motion was sent
`
`via e-mail to Opposer’s counsel of record, as follows:
`
`Paul Dietz
`DIETZ LAW OFFICE LLC
`4975 Wilderness Lake Cir
`Elko New Market, MN 55020
`paul@dietzlawoffice.com
`
` /s/ James Martin
`
`WRB, Inc.
`By its CEO, James Martin
`
`
`
`
`
`
`
`- 4 -
`
`

`

`EXHIBIT I
`EXHIBIT I
`
`

`

`JS 44 (Rev. 10/20)
`
`CASE 0:21-cv-01899 Doc. 1-2 Filed 08/23/21 Page 1 of 2
`CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`I. (a) PLAINTIFFS
`DEFENDANTS
`
`WRB, Inc.
`
`(b) County of Residence of First Listed Plaintiff
`Washington
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`DAMM, LLC, Michael Nicholas, Danielle Nicholas, Matthew
`Reck, and Allison Reck
`Hennepin
`County of Residence of First Listed Defendant
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`NOTE:
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`
`Attorneys (If Known)
`
`Michael Frasier, Rubric Legal LLC, 111 Third Ave S, Ste
`110, Minneapolis MN 55401 (612) 465-0074
`
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`1 U.S. Government
`Plaintiff
`
`3 Federal Question
`(U.S. Government Not a Party)
`
`Citizen of This State
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`and One Box for Defendant)
`(For Diversity Cases Only)
`PTF
`PTF
`1
`
`DEF
`1
`
`Incorporated or Principal Place
`of Business In This State
`
`DEF
`4
`
`4
`
`2 U.S. Government
`Defendant
`
`4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`✖ ✖✖
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
`CONTRACT
`TORTS
`
`110 Insurance
`120 Marine
`130 Miller Act
`140 Negotiable Instrument
`150 Recovery of Overpayment
`& Enforcement of Judgment
`151 Medicare Act
`152 Recovery of Defaulted
`Student Loans
`(Excludes Veterans)
`153 Recovery of Overpayment
`of Veteran’s Benefits
`160 Stockholders’ Suits
`190 Other Contract
`195 Contract Product Liability
`196 Franchise
`
`REAL PROPERTY
`210 Land Condemnation
`220 Foreclosure
`230 Rent Lease & Ejectment
`240 Torts to Land
`245 Tort Product Liability
`290 All Other Real Property
`
`PERSONAL INJURY
`310 Airplane
`315 Airplane Product
`Liability
`320 Assault, Libel &
`Slander
`330 Federal Employers’
`Liability
`340 Marine
`345 Marine Product
`Liability
`350 Motor Vehicle
`355 Motor Vehicle
`Product Liability
`360 Other Personal
`Injury
`362 Personal Injury -
`Medical Malpractice
`CIVIL RIGHTS
`440 Other Civil Rights
`441 Voting
`442 Employment
`443 Housing/
`Accommodations
`445 Amer. w/Disabilities -
`Employment
`446 Amer. w/Disabilities -
`Other
`448 Education
`
`PERSONAL INJURY
`365 Personal Injury -
`Product Liability
`367 Health Care/
`Pharmaceutical
`Personal Injury
`Product Liability
`368 Asbestos Personal
`Injury Product
`Liability
`PERSONAL PROPERTY
`370 Other Fraud
`371 Truth in Lending
`380 Other Personal
`Property Damage
`385 Property Damage
`Product Liability
`
`PRISONER PETITIONS
`Habeas Corpus:
`463 Alien Detainee
`510 Motions to Vacate
`Sentence
`530 General
`535 Death Penalty
`Other:
`540 Mandamus & Other
`550 Civil Rights
`555 Prison Condition
`560 Civil Detainee -
`Conditions of
`Confinement
`
`Citizen or Subject of a
`Foreign Country
`
`FORFEITURE/PENALTY
`
`625 Drug Related Seizure
`of Property 21 USC 881
`690 Other
`
`LABOR
`710 Fair Labor Standards
`Act
`720 Labor/Management
`Relations
`740 Railway Labor Act
`751 Family and Medical
`Leave Act
`790 Other Labor Litigation
`791 Employee Retirement
`Income Security Act
`
`IMMIGRATION
`462 Naturalization Application
`465 Other Immigration
`Actions
`
`2
`
`3
`
`2
`
`Incorporated and Principal Place
`of Business In Another State
`
`3
`
`Foreign Nation
`
`5
`
`6
`
`5
`
`6
`
`Click here for: Nature of Suit Code Descriptions.
`BANKRUPTCY
`OTHER STATUTES
`
`422 Appeal 28 USC 158
`423 Withdrawal
`28 USC 157
`
`PROPERTY RIGHTS
`820 Copyrights
`830 Patent
`835 Patent - Abbreviated
`New Drug Application
`840 Trademark
`880 Defend Trade Secrets
`Act of 2016
`
`SOCIAL SECURITY
`861 HIA (1395ff)
`862 Black Lung (923)
`863 DIWC/DIWW (405(g))
`864 SSID Title XVI
`865 RSI (405(g))
`
`FEDERAL TAX SUITS
`870 Taxes (U.S. Plaintiff
`or Defendant)
`871 IRS—Third Party
`26 USC 7609
`
`375 False Claims Act
`376 Qui Tam (31 USC
`3729(a))
`400 State Reapportionment
`410 Antitrust
`430 Banks and Banking
`450 Commerce
`460 Deportation
`470 Racketeer Influenced and
`Corrupt Organizations
`480 Consumer Credit
`(15 USC 1681 or 1692)
`485 Telephone Consumer
`Protection Act
`490 Cable/Sat TV
`850 Securities/Commodities/
`Exchange
`890 Other Statutory Actions
`891 Agricultural Acts
`893 Environmental Matters
`895 Freedom of Information
`Act
`896 Arbitration
`899 Administrative Procedure
`Act/Review or Appeal of
`Agency Decision
`950 Constitutionality of
`State Statutes
`
`V. ORIGIN (Place an “X” in One Box Only)
`1 Original
`2 Removed from
`Proceeding
`State Court
`
`3 Remanded from
`Appellate Court
`
`4 Reinstated or
`Reopened
`
`5 Transferred from
`Another District
`(specify)
`
`6 Multidistrict
`Litigation -
`Transfer
`
`8 Multidistrict
`Litigation -
`Direct File
`
`VI. CAUSE OF ACTION
`
`VII. REQUESTED IN
`COMPLAINT:
`
`VIII. RELATED CASE(S)
`IF ANY
`
`DATE
`
`07/23/2021
`
`FOR OFFICE USE ONLY
`
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`15 USC 1114
`
`Brief description of cause:
`Trademark and trade dress infringement
`
`CHECK IF THIS IS A CLASS ACTION
`UNDER RULE 23, F.R.Cv.P.
`
`DEMAND $
`
`500,000
`
`CHECK YES only if demanded in complaint:
`
`JURY DEMAND:
`
`Yes
`
`No
`
`(See instructions):
`
`JUDGE
`
`DOCKET NUMBER
`
`SIGNATURE OF ATTORNEY OF RECORD
`Michael Frasier
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`✖
`

`

`JS 44 Reverse (Rev. 10/20)
`
`CASE 0:21-cv-01899 Doc. 1-2 Filed 08/23/21 Page 2 of 2
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`
`Authority For Civil Cover Sheet
`
`The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
`required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
`required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
`Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
`
`I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
`only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and then
`the official, giving both name and title.
`(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
`time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
`condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)
`(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
`in this section "(see attachment)".
`
`II.
`
`III.
`
`IV.
`
`V.
`
`Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
`in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
`United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
`United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
`Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment
`to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes
`precedence, and box 1 or 2 should be marked.
`Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
`citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
`cases.)
`
`Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
`section for each principal party.
`
`Nature of Suit. Place an "X" in the appropriate box. If there are multiple nature of suit codes associated with the case, pick the nature of suit code
`that is most applicable. Click here for: Nature of Suit Code Descriptions.
`
`Origin. Place an "X" in one of the seven boxes.
`Original Proceedings. (1) Cases which originate in the United States district courts.
`Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.
`Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
`date.
`Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
`Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or
`multidistrict litigation transfers.
`Multidistrict Litigation – Transfer. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C.
`Section 1407.
`Multidistrict Litigation – Direct File. (8) Check this box when a multidistrict case is filed in the same district as the Master MDL docket. PLEASE
`NOTE THAT THERE IS NOT AN ORIGIN CODE 7. Origin Code 7 was used for historical records and is no longer relevant due to changes in
`statute.
`
`VI.
`
`Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
`statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service.
`
`VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.
`Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
`Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
`
`VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
`numbers and the corresponding judge names for such cases.
`
`Date and Attorney Signature. Date and sign the civil cover sheet.
`
`

`

`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 1 of 21
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MINNESOTA
`
`
`
`WRB, Inc. d/b/a Hammer-Schlagen,
`
`
`
`Plaintiff,
`
`Court File No. 21-1899
`
`v.
`
`
`
`DAMM, LLC, (d/b/a Minneschlagen)
`Michael Nicholas, Danielle Nicholas,
`Matthew Reck, and Allison Reck
`Defendants.
`
`Complaint for Trademark, Trade
`Dress Infringement, Unfair
`Competition, and Cybersquatting
`
`Jury Trial Demanded
`
`Plaintiff WRB, Inc. d/b/a Hammer-Schlagen for its complaint against
`
`defendants DAMM, LLC, Michael Nicholas, Danielle Nicholas, Matthew Reck,
`
`and Allison Reck, states and alleges as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action that seeks a permanent injunction and an award of
`
`actual or statutory damages for defendants’ intentional counterfeiting of the
`
`Hammer-Schlagen brand comprised of distinctive trademarks and trade dress.
`
`2. WRB and its predecessors have been the exclusive source of a
`
`particular nail-driving competition offered under the brand Hammer-Schlagen
`
`since at least the late 1980s. WRB’s trademarks, including Hammer-Schlagen, its
`
`logo, and slogans such as Let’s Play Hammer-Schlagen, Got Wood, Get
`
`
`
`1
`
`

`

`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 2 of 21
`
`Hammered, Get Nailed, Get Bent, and Whack It, have become immensely
`
`popular throughout the United States, particularly at beer festivals, bars, and
`
`Octoberfests.
`
`3. WRB’s design and layout of its nail-driving game are also unique
`
`and were granted trade dress protection by the U.S. Patent and Trademark
`
`Office.
`
`4.
`
`DAMM – a limited liability company in Plymouth, MN – sells a
`
`game indistinguishable from WRB’s Hammerschlagen Stump under the trade
`
`name Minneschlagen and offers the game as a service at events around
`
`Minnesota.
`
`5.
`
`This action is to protect WRB’s goodwill and intellectual property by
`
`enforcing WRB’s rights under the Lanham Act.
`
`PARTIES
`
`6. WRB, Inc. d/b/a Hammer-Schlagen is a Minnesota corporation with
`
`its registered office at 5865 Neal Ave N, #113 in Stillwater, Minnesota.
`
`7.
`
`Defendant DAMM, LLC is a Minnesota limited liability company
`
`with its registered office at 3940 Niagara Lane North in Plymouth, Minnesota.
`
`8.
`
`Defendants Michael and Danielle Nicholas are natural persons and a
`
`married couple residing in Minnesota. Defendants Matthew and Allison Reck are
`
`
`
`2
`
`

`

`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 3 of 21
`
`natural persons and a married couple residing in Minnesota. On information and
`
`belief, these four natural persons jointly own and operate DAMM and are
`
`responsible for the company's marketing and advertising.
`
`9.
`
`On information and belief, the individual Defendants oversee and
`
`are responsible for the actions of DAMM described below.
`
`JURISDICTION
`
`10.
`
`This Court has original subject matter jurisdiction over the trade
`
`dress infringement and trademark infringement claims pursuant to 15 U.S.C. §
`
`1121(a) and 28 U.S.C. §§ 1331 and 1338(a) because they arise under the Lanham
`
`Act, 15 U.S.C. § 1501 et seq.
`
`11.
`
`This Court has supplemental jurisdiction over Plaintiff’s claims
`
`arising under state law under 28 U.S.C. § 1367, as those claims form part of the
`
`same case or controversy.
`
`12. DAMM is a Minnesota limited liability company offering its
`
`products in Plymouth, Minnesota. WRB’s claims for relief arose in this district,
`
`making venue over the claims proper in this district pursuant to 28 U.S.C. § 1391.
`
`WHAT IS HAMMERSCHLAGEN?
`
`13.
`
`In 1957, a child named Carl Schoene immigrated with his family
`
`from Germany to St. Paul, Minnesota. He brought with him a game he played
`
`
`
`3
`
`

`

`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 4 of 21
`
`with his friends in Germany in which players took turns trying to drive a nail
`
`into something – a board, a tire, or the ground – with one swing of an axe.
`
`14.
`
`The variation Schoene played and taught his friends used a cross-
`
`peen hammer, and the nails were driven into the perimeter of a tree stump.
`
`Schoene called his version of the game Nagelspiel.
`
`15. When his family started a restaurant near Stillwater, Schoene’s game
`
`was played at the restaurant and at festivals as a marketing tool for the
`
`restaurant.
`
`16.
`
`In the late 1980s, Schoene’s father-in-law, Mike Wlaschin, took over
`
`the game. He standardized the use of cottonwood cross-sections and 16d
`
`common bright nails and rebranded the name as “Hammer-Schlagen.”
`
`17.
`
`From the late 1980s through 1999, Wlaschin promoted the service
`
`under the brand Hammer-Schlagen throughout Minnesota and Western
`
`Wisconsin. He was the only person using the name Hammer-Schlagen and the
`
`only person marketing the entertainment service using his particular design.
`
`18.
`
`In 1999, Wlaschin formed WRB, Inc. solely for the purpose of
`
`marketing and promoting Hammer-Schlagen. The company acquired a federal
`
`trademark registration for its logo in 2000:
`
`
`
`4
`
`

`

`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 5 of 21
`
`
`
`19. WRB has continuously and exclusively promoted its services under
`
`the Hammer-Schlagen brand since it was formed.
`
`20.
`
`In addition to providing the service, WRB sold the HammerSchlagen
`
`Stump continuously since 1999. From its founding until 2020, it sold the Stump
`
`to its licensees who used the Stump to offer Hammer-Schlagen as a service. It
`
`also intermittently sold Stumps to consumers during the same time period.
`
`21.
`
`In April 2020, WRB began selling a “Hammer-Schlagen Kit” through
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`an exclusive licensor, Stump’d, LLC. The Hammer-Schlagen Kit contains nearly
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`everything one needs to play Hammer-Schlagen – a stand, the cross-section of a
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`stump, a hammer, and all the necessary nuts and bolts. Simply assemble it,
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`purchase nails, and one can play Hammer-Schlagen with the product.
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`22. WRB promoted and continues to promote its services through the
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`exclusive use of slogans including “Get Hammered, “Get Nailed,” and “Got
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`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 6 of 21
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`Wood” in a variety of media since 2000, including on its website, in fliers, and on
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`stickers used in marketing its service.
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`23. WRB uses its distinctive trade dress in combination with its name,
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`logo, and slogans to promote the service offered. The trade dress, commonly
`
`referred to as the “Hammerschlagen Stump,” is depicted below:
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`
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`
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`24. WRB has offered its services, either directly or through exclusive
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`licensing, throughout the United States, from Florida to Washington to Hawaii.
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`25. WRB has operated in Minnesota every year since its founding in
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`1999, offering the game at various private parties, beer festivals, Oktoberfest
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`branded events, and expos throughout the state.
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`26. WRB owns U.S. Registration No. 5,548,112 for its trade dress as
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`depicted above. It was registered on August 28, 2018. The registration describes
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`WRB’s trade dress as follows:
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`
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`6
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`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 7 of 21
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`three-dimensional configuration
`The mark consists of a
`constituting trade dress comprising of a cylindrical cross-section
`of a tree with nails positioned around the outer circumference of
`its upward facing flat circular surface, and a cross-peen hammer
`whose head is shaped in the manner depicted in the drawing.
`
`27. WRB’s trade dress registration also claims first use of the trade dress
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`in commerce as early as February 1999. A copy of the trade dress registration is
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`attached as Exhibit A.
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`28. WRB is the owner of U.S. Registration No. 4,804,117 for the service
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`mark Hammer-Schlagen. The service mark was registered on September 1, 2015,
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`claiming first use in commerce as early as February 1999 and is incontestable. A
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`copy of the registration is attached as Exhibit B.
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`THE INFRINGEMENT
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`29. DAMM’s four founders claim to have been looking for the “next BIG
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`idea.” They settled on manufacturing and selling a nail-driving game.
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`30. Of all the designs they could have chosen, the four chose one
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`indistinguishable from the Hammerschlagen Stump:
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`WRB’s Hammerschlagen Stump:
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`DAMM’s game:
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`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 8 of 21
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`
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`
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`31.
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`The four formed DAMM LLC on April 24, 2020 to sell the counterfeit
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`product.
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`32.
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`They could have chosen any brand to sell their counterfeit product.
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`But the four chose Minneschlagen – an obvious derivation of Hammer-Schlagen.
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`33.
`
` DAMM acquired the assumed name Minneschlagen on May 29,
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`2020.
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`34. DAMM obtained a trademark registration with the USPTO for the
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`mark “MINNESCHLAGEN” for “Equipment sold as a unit for playing action
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`skill games involving a stump, nail and hammer; Party games” having
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`registration number 6,230,202.
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`35.
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`The mark is confusingly similar to WRB's Hammer-Schlagen
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`trademark.
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`8
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`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 9 of 21
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`36. DAMM advertises its goods online at <minneschlagen.com> and by
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`way of third-party markets, such as on Etsy.com, for $125.00.
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`37. DAMM’s domain name is confusingly similar to WRB’s distinctive
`
`mark Hammer-Schlagen.
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`38. DAMM selected and registered the domain name with a bad faith
`
`intent to profit from WRB’s mark.
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`39. Almost immediately after DAMM began selling its Minneschlagen
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`product, consumers began exhibiting confusion between it and WRB’s product
`
`and service.
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`40.
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`In June 2020, Tyler Winkey promoted DAMM’s product on
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`Facebook, stating “My sister-in-law and her husband just started this company
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`called Minneschlagen – portable hammerschlagen set!”
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`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 10 of 21
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`41.
`
`In July 2020, Sunset Cove Resort posted a picture of DAMM’s
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`
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`product to its social media pages, calling it “Our custom hammerschlagen game
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`set!” Defendant Danielle Nicholas, on behalf of DAMM, responded to the post,
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`writing “we hope you (and everyone else) has a blast playing!”
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`10
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`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 11 of 21
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`42.
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`In August 2020, Facebook user campbell.party.of.five posted a
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`
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`picture of DAMM’s product while using the hashtag #hammerschlagen. DAMM
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`responded to the post, saying “Thank YOU! We hope it was a real HIT!”
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`11
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`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 12 of 21
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`43.
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`In December, lilmissmiles posted a picture of DAMM’s product,
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`tagging Minneschlagen, and using #hammershlagen.
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`44.
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`In January 2021, douglt1 posted a picture of DAMM’s product,
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`stating “If you know me, you know that Hammerschlagen is one of my favorite
`
`games.”
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`45.
`
`In February, Deanna Brown Olmstead posted a picture of DAMM’s
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`product, tagging Defendant Michael Nicholas in the post. She wrote “For those
`
`of you
`
`looking
`
`for a portable hammerschlanging
`
`[sic]..check out
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`Minneschlagen!!” Although Defendant Michael Nicholas responded, he did not
`
`correct the confusion.
`
`46.
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`In March, paulser99 posted a link to DAMM’s website, stating
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`“Minneschlagen Portable Hammer and Nail Game. #hammerschlagen.”
`
`47.
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`In April, alenachristensen27 – identified as a paid partner of DAMM
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`– posted a picture of Minneschlagen’s product with
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`the hashtag
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`#hammerschlagen.
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`12
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`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 13 of 21
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`48.
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` DAMM promotes its activities online in social media. It is aware the
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`public has expressed confusion that its product is a counterfeit:
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`
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`
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`49.
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`Springboarding off WRB’s goodwill, DAMM has been very
`
`successful. In a December 2020 article published by KROX AM, Defendant
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`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 14 of 21
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`Michael Nicholas claims to have sold 80 units in six days. He claims the second
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`relaunch in October sold out in December.
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`50. According to DAMM’s Facebook page, it has sold units in 32 states
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`as of June 2021.
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`51. When WRB discovered DAMM, it promptly sent a cease-and-desist
`
`letter on March 23, 2021. In the letter, WRB offered to allow DAMM the
`
`opportunity to operate legitimately as a licensee.
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`52. DAMM refused WRB’s demand and its offer. It claimed it was not
`
`infringing because it was merely selling a product and not offering a service.
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`That statement, while not legally significant, was also a lie.
`
`53. DAMM’s business competes directly with WRB as they both sell the
`
`nail-driving game as a product. DAMM also offers the nail-driving game as a
`
`service. DAMM is a sponsor of the Crookston Ox Cart Days, where it hosted
`
`“Minneschlagen Schlagfest” at the festival.
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`54.
`
`In addition, DAMM attempted to offer the nail-driving service at
`
`Utepils Brewing – one of WRB’s prospective customers.
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`55. Utepils Brewing contacted WRB on May 26, 2021 asking if it could
`
`have Hammer-Schlagen at an August 21 event. Initially, WRB had a conflict. But
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`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 15 of 21
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`on August 10, it notified Utepils Brewing of its availability, offering its service at
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`the August 21 event due to a cancellation.
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`56. Utepils Brewing did not respond; instead, it hired DAMM to offer
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`“Minneschlagen” as an event at Kramarczuk’s Kielbasa Fest 2021 on August 21.
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`Utepils cancelled the event only after WRB instructed them not to.
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`57. DAMM’s nail-driving product is laid out in a manner that is
`
`indistinguishable from WRB’s trade dress.
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`58. DAMM’s nail-driving product is a counterfeit of WRB’s trade dress,
`
`has caused actual confusion as to the source, sponsorship, or affiliation between
`
`its products and that of WRB’s brand of service, which is likely to continue.
`
`59. DAMM’s use of WRB’s distinctive design is even more deceptive
`
`because it markets and promotes its product using the name Minneschlagen - a
`
`mark that is confusingly similar to WRB’s Hammer-Schlagen trademark.
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`60. DAMM’s use of WRB’s trademark and trade dress is likely to cause
`
`confusion as to the source, sponsorship, or approval of its services.
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`61. DAMM’s conduct has caused actual confusion among consumers
`
`who use and are likely to use WRB’s services.
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`CASE 0:21-cv-01899 Doc. 1 Filed 08/23/21 Page 16 of 21
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`62. DAMM’s conduct has been willful and with the intent to confuse
`
`consumers and to harm WRB’s rights.
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`63. DAMM’s conduct has already caused WRB irreparable harm and,
`
`unless enjoined from continuing to infringe, is likely to continue causing
`
`irreparable harm to WRB.
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`64. DAMM has profited off its infringing conduct to the detriment of
`
`WRB and it would be unjust to permit DAMM to retain the profits it has made
`
`using WRB’s intellectual property.
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`COUNT I
`INFRINGEMENT OF REGISTERED MARKS
`15 U.S.C. § 1114
`
`65. WRB owns the trade dress rights to a configuration of a nail-driving
`
`game. The USPTO has granted registration to WRB’s trade dress.
`
`66. WRB owns the trademark Hammer-Schlagen, which has been
`
`registered and is incontestable.
`
`67. DAMM used WRB’s trademark and trade dress in a manner that is
`
`likely to cause confusion and in fact has caused confusion.
`
`68. DAMM’s use of