Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1296620
`
`Filing date:
`
`07/11/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91275760
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`USFL Enterprises, LLC
`
`ERIC LAMB
`FROST BROWN TODD LLP
`111 MONUMENT CIRCLE, SUITE 4500
`INDIANAPOLIS, IN 46204
`UNITED STATES
`Primary email: trademarks@fbtlaw.com
`Secondary email(s): elamb@fbtlaw.com, mclark@fbtlaw.com
`317-237-3800
`
`Motion to Suspend for Civil Action
`
`Matthew J. Clark
`
`mclark@fbtlaw.com, elamb@fbtlaw.com, fbtiplitigation@fbtlaw.com
`
`/Matthew J. Clark/
`
`07/11/2023
`
`2023-07-11_Opp_91275760_Motion_Suspend.pdf(36601 bytes )
`2023-07-11_Motion_Suspend_Exhibit_A.pdf(3965512 bytes )
`2023-07-11_Motion_Suspend_Exhibit_B.pdf(782886 bytes )
`2023-07-11_Motion_Suspend_Exhibit_C.pdf(244128 bytes )
`2023-07-11_Motion_Suspend_Exhibit_D.pdf(251442 bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 90/480,906
`Mark: HOUSTON GAMBLERS
`
`
`CIP FAMILY, LLC,
`
`
`
`Opposer,
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`USFL ENTERPRISES, LLC
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposition No. 91275760
`
`
`
`MOTION TO SUSPEND FOR CIVIL ACTION
`
`Pursuant to 37 C.F.R. § 2.117(a), Applicant USFL Enterprises, LLC (“Applicant”) hereby
`
`
`
`moves to suspend the above-referenced proceeding pending the outcome of civil action no. 2:23-
`
`cv-02189-SHL-cgc, CIP FAMILY, LLC v. THE SPRING LEAGUE, LLC, USFL ENTERPRISES, LLC and
`
`FOX SPORTS, INC., pending in the United States District Court for the Western District of Tennessee
`
`(the “Civil Action”). Under the aforementioned regulation, “[w]henever it . . . come[s] to the
`
`attention of the Trademark Trial and Appeal Board that a civil action . . . may have a bearing on a
`
`pending case, proceedings before the Board may be suspended until termination of the civil action.”
`
`As noted in TBMP § 510.02, it is the “Board’s policy to suspend in favor of a civil action.”
`
`Opposer CIP Family, LLC (“Opposer”) sued Applicant, along with others, in the Civil Action
`
`for trademark infringement under 15 U.S.C. §§ 1114–1117 and unfair competition and false
`
`designation of origin under 15 U.S.C. § 1125 based on its use of the HOUSTON GAMBLERS trademark
`
`and service mark—the applied-for mark in Applicant’s application that is the subject of this
`
`opposition proceeding—on grounds that such trademark and service mark creates a likelihood of
`
`confusion with its registered GAMBLERS trademark (reg. no. 6,381,024) used in connection with
`
`
`Motion to Suspend for Civil Action
`Opposition No. 91275760
`Page 1 of 4
`
`

`

`
`
`various clothing and its registered GAMBLERS JIU JITSU AND KICKBOXING service mark (reg. no.
`
`6,110,946) used in connection with personal fitness training services. See Exhibit A. In Opposer’s
`
`Civil Action complaint, Opposer seeks judgment from the court for an order, inter alia, that Applicant
`
`be enjoined from using the HOUSTON GAMBLERS trademark and service mark, an order requiring
`
`Applicant to transfer the HOUSTON GAMBLERS trademark and service mark to Opposer, and any
`
`other relief the Court may deem proper. See Id. In turn, in the same Civil Action, Applicant filed
`
`counterclaims against Opposer seeking cancellation of Opposer’s registrations that are the subject
`
`of this opposition proceeding, i.e., registration no. 6,381,024 for GAMBLERS and registration no.
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`6,110,946 for GAMBLERS JIU JITSU AND KICKBOXING, based on several grounds. See Exhibit B.
`
`It is self-evident that judgment in the Civil Action may have a bearing on this opposition
`
`proceeding. The Civil Action involves the same parties, the same marks, registrations and
`
`applications, the same claim of likelihood of confusion, and the same request to cancel Opposer’s
`
`registrations. Given the Board’s policy to suspend in favor of a civil action, and the clear effect
`
`judgments in the Civil Action could have on this pending opposition, Applicant’s counsel has
`
`requested several times from Opposer’s counsel consent to the suspension of the opposition
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`proceeding pending the outcome of the Civil Action. Opposer’s counsel, however, will not give
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`consent to the suspension and to date has not identified a reason for the denial.
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`Therefore, Applicant moves to suspend the above-referenced proceeding pending the
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`outcome of the Civil Action for the reasons noted above. A copy of the Complaint, Defendants’
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`Answer and Counterclaims, Notice of Scheduling Conference, and Plaintiff’s Answer to Defendants’
`
`Counterclaims are attached as Exhibits A, B, C and D, respectively.
`
`
`
`
`
`/Matthew J. Clark/
`Matthew J. Clark
`Eric Lamb
`
`
`Motion to Suspend for Civil Action
`Opposition No. 91275760
`Page 2 of 4
`
`

`

`
`
`
`
`
`
`FROST BROWN TODD LLP
`mclark@fbtlaw.com; elamb@fbtlaw.com;
`fbtiplitigation@fbtlaw.com
`
`
`
`
`Motion to Suspend for Civil Action
`Opposition No. 91275760
`Page 3 of 4
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on July 11, 2023, I caused a true and correct copy of Applicant’s Motion
`to Suspend for Civil Action to be served by email upon the following attorney of record for Opposer:
`
`at
`Lyusi
`Viktor
`allen@lomnitzerlaw.com,
`Viktor@Lomnitzerlaw.com,
`assistant@lomnitzerlaw.com, lorri@lomnitzerlaw.com, and Maggie@Lomnitzerlaw.com.
`
`
`
`
`
`0145603.0738115 4890-1112-2282v3
`
`
`/Matthew J. Clark/
`Matthew J. Clark
`
`
`Motion to Suspend for Civil Action
`Opposition No. 91275760
`Page 4 of 4
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 1 of 13 PageID 1
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`
`CASE NO.:
`
`
`CIP FAMILY, LLC,
`a Florida Limited Liability Company,
`
`Plaintiff,
`
`v.
`
`THE SPRING LEAGUE, LLC,
`a Delaware Limited Liability Company,
`USFL ENTERPRISES, LLC,
`a Delaware Limited Liability Company, and
`Fox Sports, Inc., a Delaware Corporation.
`
`
`Defendants.
`________________________________________/
`
`COMPLAINT
`
`
`
`
`Plaintiff CIP FAMILY, LLC, (hereinafter referred to as “CIP FAMILY” or “Plaintiff”), by
`
`and through its undersigned attorneys, hereby sues Defendants THE SPRING LEAGUE, LLC
`
`(“Spring League”), USFL ENTERPRISES, LLC (“USFL ENTERPRISE”), and FOX SPORTS,
`
`INC. (“FOX) (Spring League, USFL, and FOX are hereinafter collectively referred to as
`
`“Defendants”), and alleges as follows:
`
`INTRODUCTION
`
`1.
`
`Plaintiff brings this action against Defendants under the Trademark Act of 1946
`
`(the Lanham Act) arising out of Defendants’ infringement of Plaintiff’s federally registered
`
`trademarks, “GAMBLERS” and “GAMBLERS JIU-JITSU AND KICKBOXING.”
`
`2.
`
`Plaintiff CIP FAMILY, LLC, is a Florida Limited Liability Company having a
`
`PARTIES
`
`Page 1 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 2 of 13 PageID 2
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`principal address at 10415 Riverside Drive, Ste 105, Palm Beach Gardens, Florida 33410.
`
`3.
`
`Defendant THE SPRING LEAGUE, LLC, is a Delaware Limited Liability
`
`Company with a principal place of business at 3524 Silverside Rd, Ste 35B, Wilmington, DE
`
`19810.
`
`4.
`
`Defendant USFL ENTERPRISES, LLC, is a Delaware Limited Liability Company
`
`with a principal place of business at 10201 West Pico Boulevard Los Angeles, CA 90064
`
`5.
`
`Defendant FOX SPORTS, INC., is a Delaware corporation with a principal place
`
`of business at 10201 West Pico Boulevard Los Angeles, CA 90064. Upon information and belief,
`
`Defendant USFL ENTERPRISE is a wholly owned subsidiary of Defendant FOX.
`
`JURISDICTION AND VENUE
`
`6.
`
`This Court has jurisdiction over the subject matter of this suit because it arises under
`
`federal law, namely the Trademark Act of 1946 (the Lanham Act), 28 U.S.C. § 1331 (federal
`
`question), and 28 U.S.C. § 1338 (designs, copyrights, trademarks and unfair competition).
`
`7.
`
`This Court has diversity jurisdiction over this matter in accordance with 28 U.S.C.
`
`§ 1332. The parties are citizens of different states and the matter in controversy exceeds the value
`
`of $75,000.00.
`
`8.
`
`Each Defendant is subject to personal jurisdiction in this Court based on their
`
`business dealings within this judicial district. In a January 26, 2023, official press release on
`
`theusfl.com, Defendants announced that the Houston Gamblers, one of the United States Football
`
`League’s teams, will play its home games during the 2023 United States Football League season
`
`in Memphis, Tennessee.
`
`9.
`
`Venue is proper in this judicial district under 28 U.S.C. § 1391 because the events
`
`giving rise to this claim are expected to occur in Memphis, Tennessee, and the injunctive relief
`
`Page 2 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 3 of 13 PageID 3
`
`sought in this action will be applied in Memphis, Tennessee.
`
`FACTUAL BACKGROUND
`
`10.
`
`Plaintiff CIP FAMILY is the owner of U.S. Trademark Registration No. 6,381,024
`
`for “GAMBLERS in connection with “Athletic apparel, namely, shirts, pants, jackets, footwear,
`
`hats and caps, athletic uniforms; Belts; Leggings; Shoes; T-shirts; Tank tops” in International Class
`
`25, registered on June 8, 2021, with a date of first use of January 10, 2014. See Attached Exhibit
`
`A.
`
`11.
`
`Plaintiff CIP FAMILY also owns U.S. Trademark Registration No. 6,110,946 for
`
`“GAMBLERS JIU JITSU AND KICKBOXING” in connection with “Personal training provided
`
`in connection with weight loss and exercise programs; Personal fitness training services; Personal
`
`fitness training services and consultancy; Providing fitness training services in the field of
`
`JIUJITSU; Providing fitness training services in the field of KICKBOXING; Providing fitness
`
`training services in the field of SELF DEFENSE; Providing fitness training services in the field of
`
`WRESTLING; Providing general fitness and mixed martial arts facilities that require memberships
`
`and are focused in the fields of general fitness, exercise, and mixed martial arts; Sports training
`
`services” in International Class 41, registered on July 28, 2020, with a date of first use of
`
`September 3, 2017 (U.S. Trademark Registration Nos. 6,110,946 and 6,381,024 shall be
`
`collectively referred to as the “CIP Marks” or “CIP’s Marks”). See Attached Exhibit B.
`
`12.
`
`The CIP Marks were assigned to CIP FAMILY by Michael Ciprianni, owner and
`
`manager of CIP FAMILY, via an assignment dated April 21, 2022. See attached Exhibit C. This
`
`assignment has been recorded with the United States Patent and Trademark Office.
`
`13.
`
`CIP FAMILY has made and continues to make extensive use of the CIP Marks in
`
`commerce as a trademark for goods and services in International Classes 25 and 41 as described
`
`Page 3 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 4 of 13 PageID 4
`
`above and in its Registration Certificates. CIP FAMILY and its predecessor in interest have used
`
`its marks exclusively, extensively, and continuously since at least 2014 through various channels
`
`of trade. As a result, CIP FAMILY’s customers, potential customers, and the public have come to
`
`know and recognize the CIP Marks and to associate them with CIP FAMILY’s high-quality goods
`
`and services.
`
`14.
`
`CIP FAMILY currently enjoys extensive and invaluable goodwill in the CIP Marks
`
`and in connection with the sales of goods and services sold under the CIP Marks.
`
`15.
`
`Notwithstanding CIP FAMILY’s exclusive and long-standing rights in and to the
`
`CIP Marks, on January 17, 2021, Defendant Spring League filed an Intent-to-Use U.S. Trademark
`
`Application (Serial No. 90470669) for “Houston Gamblers” in:
`
`a. International Class 9 in connection with “Audio and video recordings featuring
`
`football; Digital media, namely, pre-recorded video cassettes, digital video
`
`discs, digital versatile discs, downloadable audio and video recordings, DVDs,
`
`and high definition digital discs featuring football; Downloadable computer
`
`programs for pre-recording sports games; Downloadable computer programs
`
`for video and computer games; Downloadable databases in the field of football
`
`player, football team and football game statistics; Downloadable mobile
`
`applications for streaming football games and for providing information in the
`
`field of football games; Downloadable software in the nature of a mobile
`
`application for streaming football games and for providing information in the
`
`field of football games”;
`
`b. International Class 16 in connection with “Stickers; Bumper stickers;
`
`Collectable printed trading cards; Decorative stickers for helmets; Printed
`
`Page 4 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 5 of 13 PageID 5
`
`calendars; Printed magazines featuring football; Printed newsletters about
`
`football; Printed notepads; Printed posters; Printed souvenir programs
`
`concerning football; Printed greeting cards; Printed post cards; Printed sports
`
`trading cards”;
`
`c. International Class 25 in connection with “Beanies; Footwear; Gloves; Hats;
`
`Headwear; Jackets; Jerseys; Knitted caps; Pants; Scarves; Shirts and short-
`
`sleeved shirts; Shorts; Sleeping garments; Socks; Sweaters; Sweatshirts; Ties
`
`as clothing; Underwear; Warm up suits; Wrist bands as clothing; Athletic
`
`apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic
`
`uniforms; Baseball caps and hats; Hooded sweat shirts; Long-sleeved shirts;
`
`Polo shirts; Sports caps and hats; T-shirts”;
`
`d. International Class 28 in connection with “Board games; Bobble head dolls;
`
`Football gloves; Footballs; Golf bags; Golf balls; Golf gloves; Playing cards;
`
`Stuffed and plush toys; Action figures; Bags adapted for holding or carrying
`
`sport balls for football; Covers for golf clubs; Miniature toy helmets; Play
`
`figures”;
`
`e. International Class 38 in connection with “Internet broadcasting services;
`
`Internet radio services, namely, transmission of audio material via the internet;
`
`Mobile media services in the nature of electronic transmission of entertainment
`
`media content; Television and radio broadcasting services; Broadcasting
`
`programs via a global computer network; Cable television broadcasting
`
`services; Electronic transmission and streaming of digital media content for
`
`others via global and local computer networks; Internet protocol television
`
`Page 5 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 6 of 13 PageID 6
`
`(IPTV) transmission services; Streaming of audio material on the Internet;
`
`Streaming of video material on the Internet; Transmission of podcasts;
`
`Transmission of radio and television programmes by satellite”; and
`
`f. International Class 41 in connection with “Coaching in the field of football;
`
`Educational services, namely, conducting programs in the field of football;
`
`Entertainment services in the nature of fantasy football leagues; Entertainment
`
`services in the nature of professional athletes competing in football;
`
`Organisation of games; Production of television and radio programmes;
`
`Providing a website featuring information relating to the sport of football;
`
`Virtual reality game services provided on-line from a computer network;
`
`Arranging and conducting e-sports competitions; Electronic games services
`
`provided by means of the internet; Electronic publishing services, namely,
`
`publication of text and graphic works of others on the internet featuring
`
`football; Entertainment in the nature of competitions in the field of football;
`
`Entertainment in the nature of competitions in the field of esports;
`
`Entertainment in the nature of competitions in the field of video games;
`
`Entertainment in the nature of e-sports competitions; Entertainment in the
`
`nature of esports tournaments; Entertainment in the nature of football games;
`
`Entertainment services, namely, an ongoing series featuring football provided
`
`through cable television, satellite television, television, internet and radio
`
`broadcasts; Entertainment services, namely, arranging and conducting of
`
`competitions in the field of football; Entertainment services, namely, providing
`
`ongoing television programs in the field of football via a global computer
`
`Page 6 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 7 of 13 PageID 7
`
`network; Entertainment services, namely, providing ongoing webisodes
`
`featuring football via a global computer network; Entertainment services,
`
`namely, providing online video games; Entertainment services, namely,
`
`providing radio programs in the field of football via a global computer network;
`
`Entertainment services, namely, providing temporary use of non-downloadable
`
`video games; Organization of e-sports competitions; Organizing and
`
`conducting athletic competitions and games in the field of football; Organizing,
`
`conducting and operating esports tournaments; Providing sports information via
`
`a website.”
`
`16.
`
`Additionally, on January 21, 2021, Defendant Spring League filed Intent-to-Use
`
`U.S. Trademark Applications (Serial Nos. 90480940 and 90480906) for “Houston Gamblers” in:
`
`a. International Class 25 in connection with “Headwear, Bottoms as clothing;
`
`Tops as clothing”; and
`
`b. International Class 41 in connection with “Entertainment in the nature of
`
`football games; Organization of sports events in the field of football;
`
`Organization of sports competitions; Organizing and arranging exhibitions for
`
`entertainment purposes.”
`
`17.
`
`Following the submission of Spring League’s Intent-to-Use Applications, on June
`
`3, 2021, Defendant FOX announced its plans to bring back the United States Football League
`
`(“USFL”), a professional American football league that had previously operated between 1983-
`
`1985.
`
`18.
`
`Defendant Spring League serves as a holding company for the USFL’s trademarks,
`
`such as the Houston Gamblers trademarks, and licenses the trademarks to Defendants FOX and
`
`Page 7 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 8 of 13 PageID 8
`
`USFL ENTERPRISE for use in the United States Football League.
`
`19.
`
`The currently active USFL is operated by FOX and its subsidiary, Defendant USFL
`
`ENTERPRISE. The 2022 USFL season consisted of forty-three (43) total games played by eight
`
`teams. On January 26, 2023, the USFL issued a press release stating that for the upcoming 2023
`
`USFL season, the Houston Gamblers team would be based out of Memphis, Tennessee and would
`
`also play their games in Detroit, Michigan, Birmingham, Alabama, and Canton. Ohio. The 2023
`
`USFL season is set to begin on or around April 15, 2023, and Defendants are actively selling
`
`related merchandise and tickets.
`
`20.
`
`The Houston Gamblers trademarks are confusingly similar to Plaintiff’s CIP
`
`Marks. See attached Composite Exhibit D.
`
`21.
`
`Defendants are not licensees of Plaintiff’s CIP Marks therefore Defendants’ use
`
`and promotion of the Houston Gamblers trademarks constitutes infringement and has caused, or
`
`will cause, confusion in the marketplace as to Plaintiff’s affiliation with Defendants, for which
`
`there is no adequate remedy at law.
`
`22.
`
`Defendants’ unauthorized use of the CIP Marks is intentional and willful, as
`
`Defendants are well aware of the Trademark Oppositions that Plaintiff filed with the United States
`
`Patent and Trademark Office’s Trademark Trial and Appeal Board on April 21, 2022, and May
`
`12, 2022, pertaining to Defendants’ three “Houston Gamblers” trademarks.
`
`23.
`
`Unless Defendants are restrained by this Court, they will continue and/or expand
`
`their illegal activities and otherwise continue to cause great and irreparable damage and injury to
`
`Plaintiff by, among other things:
`
`a. Depriving Plaintiff of its statutory rights to use and control use of its trademarks
`
`and maintain its reputation with consumers and collaborators;
`
`Page 8 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 9 of 13 PageID 9
`
`b. Creating a likelihood of confusion, mistake, and deception among consumers
`
`and the trade as to the source of the infringing services and products;
`
`c. Causing the public falsely to associate Plaintiff with Defendants and/or their
`
`products, or services, or vice versa;
`
`d. Causing incalculable and irreparable damage to Plaintiff’s goodwill, reputation,
`
`standing, and relationships with consumers, and eroding the capacity of the CIP
`
`Marks to differentiate Plaintiff’s products and services from others and to
`
`control the quality thereof;
`
`e. Causing Plaintiff to lose revenue; and
`
`f. Causing Plaintiff to lose sales of its genuine products and services.
`
`24.
`
`As a direct and proximate result of Defendants’ trademark infringement, Plaintiff
`
`is entitled an award of actual damages or statutory damages, in amounts to be determined at trial,
`
`which will compensate Plaintiff for the injury caused by Defendants.
`
`25.
`
`Plaintiff is also entitled to recover its attorneys’ fees and full costs pursuant to 17
`
`U.S.C. §505.
`
`26.
`
`In addition, Plaintiff is entitled to permanent injunctive relief against Defendants,
`
`their affiliates, licensees, and subsidiaries, and all persons acting in concert with them.
`
`27.
`
`All conditions precedent to bringing this action, if any, have occurred or have been
`
`performed, waived and/or excused.
`
`COUNT I – FEDERAL TRADEMARK INRINGEMENT
`(15 U.S.C. §§ 1114-1117; Lanham Act § 32)
`(As to Defendants Spring League, LLC, USFL Enterprises, LLC, and FOX Sports, Inc.)
`
`Plaintiff re-alleges each and every allegation set forth above in paragraphs 1 – 27
`
`28.
`
`as fully and completely as if set forth herein.
`
`Page 9 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 10 of 13 PageID 10
`
`29.
`
`Defendants have used and continue to use Plaintiff’s CIP Marks, or confusingly
`
`similar marks, in connection with the advertisement and operation of the United States Football
`
`League and its Houston Gamblers team. Defendants’ use is without Plaintiff’s consent and
`
`therefore constitutes infringement.
`
`30.
`
` Defendants’ use of the Houston Gamblers trademarks, is likely to create
`
`confusion, cause mistake, or deceive consumers in relation to the CIP Marks.
`
`31.
`
`Defendants have acted intentionally and with actual knowledge that their conduct
`
`infringes upon Plaintiff’s rights.
`
`32.
`
`Defendants’ acts of infringement have and will cause actual damage and irreparable
`
`harm to Plaintiff, for which legal remedies are inadequate. Therefore, in addition to monetary
`
`remedies, Plaintiff seeks injunctive relief to permanently bar Defendants from use of the CIP
`
`Marks, or confusingly similar marks, in commerce.
`
`33.
`
`Defendants’ intentional actions render this an exceptional case, further entitling
`
`Plaintiff to recovery of its attorneys’ fees and costs of suit as detailed in 15 U.S.C. § 1117.
`
`COUNT II – FEDERAL UNFAR COMPETITON AND FALSE DESIGNATION OF
`ORIGIN
`(15 U.S.C. §§ 1125; Lanham Act § 43)
`(As to Defendants Spring League, LLC, USFL Enterprises, LLC, and FOX Sports, Inc.)
`.
`Plaintiff re-alleges each and every allegation set forth above in paragraphs 1 – 27
`
`34.
`
`as fully and completely as if set forth herein.
`
`35.
`
`Defendants’ unauthorized use in commerce of words, terms, names, symbols, or
`
`products, or any combination thereof, consisting of or including the word “Gamblers” and/or
`
`derivatives thereof is likely to cause confusion, or to cause mistake, or to deceive as to the
`
`affiliation, connection, or association of each Defendant with Plaintiff.
`
`36.
`
`Defendants’ unauthorized use of the CIP Marks is likely to cause confusion, or to
`
`Page 10 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 11 of 13 PageID 11
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`cause mistake, or to deceive as to the affiliation, connection, or association of each Defendant with
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`Plaintiff, or as to the origin, sponsorship, or approval of Defendants’ products, or commercial
`
`activities, by Plaintiff.
`
`37.
`
`Defendants’ unauthorized use of the CIP Marks in commercial advertising or
`
`promotion, misrepresents the nature, characteristics, qualities, and/or geographic origin of
`
`Defendants’ products and is merely an attempt to capitalize on the goodwill established by
`
`Plaintiff.
`
`38.
`
`Defendants’ infringing actions are intentional and willful, as Defendants adopted
`
`the Houston Gamblers trademarks with notice and actual knowledge of Plaintiff’s rights, and
`
`Defendants’ refusal to cease their infringing activity notwithstanding Plaintiff’s assertion and
`
`notice of its rights.
`
`39.
`
`Defendants’ acts of infringement have and will cause actual damage and irreparable
`
`harm to Plaintiff, for which legal remedies are inadequate. Therefore, in addition to monetary
`
`remedies, Plaintiff seeks injunctive relief to permanently bar Defendants from use of the CIP
`
`Marks in commerce.
`
`40.
`
`Defendants’ intentional actions render this an exceptional case, further entitling
`
`Plaintiff to recovery of its attorneys’ fees and costs of suit as detailed in 15 U.S.C. § 1117.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff prays the Court enter judgment against Defendants as follows:
`
`
`a. For an award of actual damages in an amount to be determined at trial;
`
`b. For an accounting of Defendants’ profits pertaining to use of the Houston
`
`Gamblers trademarks;
`
`c. For a judgment that each Defendant’s infringement and unfair competition has
`
`Page 11 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 12 of 13 PageID 12
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`been willful;
`
`d. For reasonable attorney’s fees and costs of suit, including under 15 U.S.C. §
`
`1117;
`
`e. For pre-judgment interest on all amounts claimed as permitted by law;
`
`f. For an order enjoining Defendants from using in commerce the CIP Marks in
`
`connection with international classes 25 and 41;
`
`g. For an order impounding for destruction all marketing materials, and other
`
`articles bearing the Houston Gamblers trademarks;
`
`h. For an order requiring Defendants to transfer the Houston Gamblers trademarks
`
`to Plaintiff;
`
`i. For an order requiring Defendants to engage in corrective advertising to restore,
`
`to the fullest extent possible, the value of Plaintiff’s CIP Marks;
`
`j. For such other, further, and different relief as the Court may deem proper under
`
`the circumstances.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Page 12 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1 Filed 04/03/23 Page 13 of 13 PageID 13
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`DEMAND FOR JURY TRIAL
`
`Plaintiff hereby Demands a jury trial on issues raised in the Complaint.
`
`Dated: April 3, 2023
`
`
`
`Respectfully submitted,
`
`s/ Lorri Lomnitzer
`Lorri Lomnitzer, Esq.
`Florida Bar No. 37632
`Lorri@Lomnitzerlaw.com
`Viktor Lyusi, Esq.
`Florida Bar No. 1021454
`Viktor@Lomnitzerlaw.com
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Highway, Ste. 202
`Boca Raton, FL 33487
`Telephone: (561) 953-9300
`Fax: (561) 953-3455
`Attorney for the Defendants
`
`
`
`
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`
`
`
`
`Page 13 of 13
`THE LOMNITZER LAW FIRM, P.A.
`7999 N. Federal Hwy, Suite 202, Boca Raton, FL 33487 ● Telephone (561)953-9300● Fax (561)953-3455
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1-7 Filed 04/03/23 Page 1 of 2 PageID 28
`
`AO 440 (Rev. 06/12) Summons in a Civil Action
`
`UNITED STATES DISTRICT COURT
`
`for the
`
` Southern District of Florida
`__________ District of __________
`
`Civil Action No.
`
`) ) ) ) ) ) ) ) ) ) ) )
`
`CIP FAMILY, LLC, a Florida Limited Liability
`Company
`
`Plaintiff(s)
`
`v.
`
`THE SPRING LEAGUE, LLC, a Delaware Limited
`Liability Company, USFL ENTERPRISES, LLC,
`a Delaware Limited Liability Company , and
`Fox Sports, Inc., a Delaware Corporation.
`
`Defendant(s)
`
`To: (Defendant’s name and address)
`
`SUMMONS IN A CIVIL ACTION
`
`THE SPRING LEAGE LLC
`REGISTERED AGENT: ADVANTAGE DELAWARE LLC
`3524 SILVERSIDE RD STE 35B
`WILMINGTON, DE 19810
`
`A lawsuit has been filed against you.
`
`Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
`are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
`P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
`the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
`whose name and address are:
`Lorri Lomnitzer, Esq.
`The Lomnitzer Law Firm, P.A.
`7999 N. Federal Highway Suite 202
`Boca Raton, FL 33487
`Phone: 561-953-9300
`Fax: 561-953-3455
`
`If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
`You also must file your answer or motion with the court.
`
`Date:
`
`CLERK OF COURT
`
`Signature of Clerk or Deputy Clerk
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1-7 Filed 04/03/23 Page 2 of 2 PageID 29
`
`AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)
`
`Civil Action No.
`
`(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
`
`PROOF OF SERVICE
`
`This summons for (name of individual and title, if any)
`
`was received by me on (date)
`
`.
`
`’ I personally served the summons on the individual at (place)
`
`’ I left the summons at the individual’s residence or usual place of abode with (name)
`
`on (date)
`
`, and mailed a copy to the individual’s last known address; or
`
`, a person of suitable age and discretion who resides there,
`
`on (date)
`
`; or
`
`’ I served the summons on (name of individual)
`
` designated by law to accept service of process on behalf of (name of organization)
`
`on (date)
`
`; or
`
`’ I returned the summons unexecuted because
`
`’ Other (specify):
`
`, who is
`
`; or
`
`My fees are $
`
`for travel and $
`
`for services, for a total of $
`
`0.00
`
`I declare under penalty of perjury that this information is true.
`
`.
`
`.
`
`Date:
`
`Server’s signature
`
`Printed name and title
`
`Server’s address
`
`Additional information regarding attempted service, etc:
`
`

`

`Case 2:23-cv-02189-SHL-cgc Document 1-8 Filed 04/03/23 Page 1 of 2 PageID 30
`
`AO 440 (Rev. 06/12) Summons in a Civil Action
`
`UNITED STATES DISTRICT COURT
`
`for the
`
` Southern District of Florida
`__________ District of __________
`
`Civil Action No.
`
`) ) ) ) ) ) ) ) ) ) ) )
`
`CIP FAMILY, LLC, a Florida Limited Liability
`Company
`
`Plaintiff(s)
`v.
`
`THE SPRING LEAGUE, LLC, a Delaware Limited
`Liability Company, USFL ENTERPRISES, LLC,
`a Delaware Limited Liability Company , and
`Fox Sports, Inc., a Delaware Corporation.
`
`Defendant(s)
`
`SUMMONS IN A CIVIL ACTION
`
`To: (Defendant’s name and address)
`
`USFL ENTERPRISES, LLC
`REGISTERED AGENT: THE CORPORATION TRUST COMPANY
`CORPORATION TRUST CENTER 1209 ORANGE ST
`WILMINGTON, DE 19801
`
`A lawsuit has been filed against you.
`
`Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
`are the United States or a United States agency, o