Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1274320
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`Filing date:
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`03/24/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`91282975
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`Party
`
`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`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, eenglish@giplaw.com
`202-293-0585
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`Other Motions/Submissions
`
`Daniel I. Hwang
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`dhwang@giplaw.com, mmurphy@giplaw.com, docketdc@giplaw.com, eeng-
`lish@giplaw.com
`
`/Daniel I. Hwang/
`
`03/24/2023
`
`Response regarding Civil Action Information - Renewed Request for Con sent
`Suspension of Opposition.pdf(46725 bytes )
`Exhibit A - Civil Action - Complaint.pdf(200003 bytes )
`Exhibit B - Civil Action - Answer.pdf(238479 bytes )
`Exhibit C - ttabvue-91271913-OPP-4.pdf(376738 bytes )
`Exhibit D - ttabvue-91271913-OPP-7.pdf(134493 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`OPPOSITION NO. 91282975
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`APP. SER. NO. 97291245
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`
`MAKE IDEAS LLC,
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`OPPOSER,
`
`V.
`
`DOSKOCIL MANUFACTURING
`COMPANY, INC.,
`
`
`
`
`APPLICANT.
`
`RESPONSE TO ORDER AND
`RENEWED REQUEST FOR GRANT OF CONSENTED SUSPENSION PENDING
`DISPOSITION OF A CIVIL ACTION
`
`
`
`1. Applicant, Doskocil Manufacturing Company, Inc. (“Petmate”), by and through its counsel,
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`responds to the Board’s request for information and pursuant to TBMP 510, hereby renews its
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`motion to suspend the Opposition pending the Disposition of the Civil Action.
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`2. Attached as Exhibit A is the complaint in an action related to the ownership issues claimed
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`in the Opposition. See Doskocil Manufacturing Company, Inc. d/b/a Petmate v. Make Ideas, LLC
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`and Keith Mullin, Case No. 21-cv-01098-B (May 14, 2021 NDTX) (“Civil Action”).
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`3. Applicant also attaches the Answer in the Civil Action as Exhibit B.
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`4. Applicant and Opposer consent to the suspension.
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`5. The Civil Action is not yet resolved, and its disposition is likely to provide resolution of the
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`Opposition.
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`6. The Board has already suspended several of Opposer’s related Oppositions against Applicant
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`based on the requests from the Parties to await disposition of the Civil Action: Opposition Nos.
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`91275926, 91275247, 91271910, 91271913, and 91271914. See, e.g., Motion for Suspension
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`Pending Disposition of a Civil Action filed in Opp. No. 91271913 attached as Exhibit C, and the
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`
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`

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`Order Granting the Suspension (and consolidating Opposition Nos. 91271910, 91271913 and
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`91271914) attached as Exhibit D.
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`7. Accordingly, Applicant renews its request for suspension of the case prior to the Applicant
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`having to file an Answer or otherwise respond to the Opposition.
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`WHEREFORE, Applicant respectfully requests that the Board grant the previously filed Consent
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`Motion to Suspend.
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`Dated: March 24, 2023
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`
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`Respectfully,
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`
`
`
`
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`
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`/s/Michael T. Murphy__________________
`Michael T. Murphy
`Daniel Hwang
`Suzanne Konrad
`
`Global IP Counselors, LLP
`1233 Twentieth Street NW, Suite 600
`Washington, D.C. 20036
`(202) 293-0585
`Attorneys for Applicant
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`2
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`

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`CERTIFICATE OF SERVICE
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`It is hereby certified that a true and complete copy of the foregoing document has been
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`served on counsel for Opposer by forwarding said copy via email to counsel at the following
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`address:
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`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, ipdocketingbos@mintz.com,
`Mintzdocketing@cpaglobal.com, IPRecordsFile@mintz.com
`Phone: 858-314-1506
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`
`Dated: March 24, 2023
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`
`
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`/s/Daniel Hwang
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`
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`Michael T. Murphy
`Daniel Hwang
`Suzanne E. Konrad
`Global IP Counselors, LLP
`1233 Twentieth Street, NW
`Suite 600
`Washington, DC 20036
`Phone: 202-293-0585
`Email: mmurphy@giplaw.com
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`Attorneys for Applicant
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`3
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`Exhibit A
`Exhibit A
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`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
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
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`
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`§ § § § § § § § § § §
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`
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`
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`Civil Action No. ___________________
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`
`
`
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`DOSKOCIL MANUFACTURING
`COMPANY, INC. d/b/a PETMATE,
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`Plaintiff,
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`v.
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`MAKE IDEAS, LLC and
`KEITH MULLIN,
`
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`Defendants.
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`
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`
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`PLAINTIFF’S ORIGINAL COMPLAINT AND JURY DEMAND
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`
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`Plaintiff Doskocil Manufacturing Company, Inc. d/b/a Petmate (“Petmate”) brings this
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`action against Defendants Make Ideas, LLC (“Make Ideas”) and Keith Mullin (“Mullin”)
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`(collectively “Defendants”) and seeks relief as follows:
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`PARTIES
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`1.
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`Plaintiff Petmate is a Delaware corporation with its principal place of business at
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`2300 East Randol Mill Road, Arlington, Texas 76011.
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`2.
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`Defendant Make Ideas is a California limited liability corporation with its principal
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`place of business at 7421 Eads Avenue, La Jolla, California 92037. Upon information and belief,
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`Mullin is the sole member of Make Ideas and is a citizen of California.
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`3.
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`Defendant Mullin is an individual residing at 7421 Eads Avenue, La Jolla,
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`California 92037. Mullin, the founder and president of Make Ideas, personally directed and
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`committed the acts complained of herein. Mr. Mullin has treated his company as his alter ego to
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`PLAINTIFF’S ORIGINAL COMPLAINT
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`
`
`1
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`

`

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

`

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

`

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

`

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

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

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

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`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
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`22.
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`The License Agreement is a valid and enforceable contract between Petmate and
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`Make Ideas. There is an actual controversy within the meaning of 28 U.S.C. §§ 2201 and 2202 in
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`that Make Ideas and Mullin allege that Petmate has breached the License Agreement and threaten
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`to take various actions based on the alleged breach.
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`23.
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`Petmate has performed under the License Agreement.
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`24.
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`Petmate seeks a declaratory judgment that Petmate has not breached the License
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`Agreement.
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`Count 2: Declaratory Relief as to Ownership of Trademark Rights
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`25.
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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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`26.
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`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
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`trademarks and/or trademark applications and threaten to take various actions based on such
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`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
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`Application, (v) the ‘546 Trademark Application, and (vi) the ‘534 Trademark Application.
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`27.
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`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.”
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`28.
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`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”.
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`
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`PLAINTIFF’S ORIGINAL COMPLAINT
`
`
`
`8
`
`

`

`
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`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
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`Count 3: Declaratory Relief as to Ownership of Patent Rights
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`29.
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`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.
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`Petmate denies that Make Ideas or Mullin has any ownership rights in the
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`aforementioned patents or any other patents or patent applications applied for by Petmate. Petmate
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`has not used any Make Ideas’ Intellectual Property to apply for any patent applications or obtain
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`any patents.
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`32.
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`Petmate seeks a declaratory judgment that neither Make Ideas nor Mullin own any
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`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
`
`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.
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`
`
`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
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`COUNSEL FOR PLAINTIFF
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`PLAINTIFF’S ORIGINAL COMPLAINT
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`
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`12
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`Exhibit B
`Exhibit B
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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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`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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`§
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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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`

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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 parties entered into the License Agreement with an
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`effective date of January 1, 2016, and that Section 6.1 of that agreement provides “In
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`consideration of the license grants and assignment of Make Ideas IP, Petmate will pay to Make
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`Ideas royalties equal to two (2) % of Net Sales of Licensed Products (the “Royalty”). In the event
`
`-2-
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`Case 3:21-cv-01098-B Document 20 Filed 09/28/21 Page 3 of 26 PageID 57Case 3:21-cv-01098-B Document 20 Filed 09/28/21 Page 3 of 26 PageID 57
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`
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`that Petmate produces a Licensed Product that is not covered by any claims of the JW Holee
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`Roller Patents, such as a ball with an inner core or a two-part ball formed by joining two halves
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`disclosed in USPTO doc# 62,280,810, the Royalty will be 4%. Petmate shall furnish to Make
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`Ideas, payments together with a statement (“Royalty Report”) to be accurate, reporting of the
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`number of units of Licensed Products sold, identifying such unit sales by each Article or SKU,
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`item number, item name, sales date, sales account name, net sales price, and applicable royalty
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`rate and deduction of Licensed Product. The Royalty Report shall be provided to Licensor via
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`email in Microsoft Excel digital format.” Except as so admitted, Defendants deny the remaining
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`allegations in Paragraph 9 of the Complaint.
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`10.
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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 6.1 of that agreement provides “In
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`consideration of the license grants and assignment of Make Ideas IP, Petmate will pay to Make
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`Ideas royalties equal to two (2) % of Net Sales of Licensed Products (the “Royalty”). In the event
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`that Petmate produces a Licensed Product that is not covered by any claims of the JW Holee
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`Roller