Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA59550
`ESTTA Tracking number:
`12/28/2005
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92025669
`Defendant
`ACADEMY, LTD.,COVINGTON INDUSTRIES, INC.
`WILLIAM L. BARBER
`FULBRIGHT & JAWORSKI, LLP
`600 CONGRESS AVE., STE 2400
`AUSTIN, TX 78701
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Motion to Amend/Amended Answer or Counterclaim
`L. Alison Davis
`aotrademark@fulbright.com,ladavis@fulbright.com,eolson@fulbright.com
`/lalisondavis/
`12/28/2005
`amendanscc.pdf ( 51 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRLAL AND APPEAL BOARD
`
`Cancellation No. 92/025,669
`
`§
`
`§ §
`
`§ §
`
`§
`§
`§
`
`§ §
`
`§
`
`S INDUSTRIES, INC. and
`CENTRAL MFG. CO.,
`
`Petitioners,
`
`V.
`
`ACADEMY, LTD., by assignment from
`COVINGTON INDUSTRIES, INC.,
`
`Respondent.
`
`RESPONDENT’S CONSOLIDATED MOTION TO AMEND ITS ANSWER
`AND TO REOPEN DISCOVERY
`
`Academy, Ltd. (“Respondent”) hereby moves for leave to amend its answer pursuant to
`
`Federal Rule of Civil Procedure l5(a), Trademark Rules 2.114(b)(2)(i) and 2.115, and TBMP
`
`§§ 507.01 and 507.02. A signed copy of Respondent’s proposed Amended Answer and
`Counterclaim is attached hereto as Exhibit A.
`See TBMP 507.01.
`This amendment
`is
`
`appropriate in view of newly acquired information.
`
`In the event the motion to amend is granted,
`
`Respondent also moves to reopen discovery solely on the new issues raised in its amended
`
`answer and counterclaim. Because Respondent’s motion to reopen discovery is predicated on
`
`the ruling on its motion to amend, Respondent has consolidated these motions.
`
`1.
`
`Motion to Amend Answer
`
`Under Rule 15(a) and the seminal case interpreting it, Foman v. Davis, 371 U.S. 178
`
`(1962), leave to amend a pleading should be freely given when justice so requires. Respondent
`
`does not seek this amendment for purposes of delay or any other improper motive. Respondent
`
`has discovered new information that calls into question Petitioners’ standing and the merits of
`
`25607675.]
`
`- 1 -
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`

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`this proceeding. Justice would not be served if Respondent is denied leave to amend its motion.
`
`Petitioners will not be prejudiced by the amendment of Respondent’s answer. This motion is
`
`timely filed.
`
`a.
`
`Newly Discovered Information Suggests that Petitioners Abandoned their
`STEALTH Mark.
`
`Respondent recently learned that the Petitioners may not have any bona fide use of the
`
`STEALTH mark claimed to be owned by Petitioners and forming the basis of this proceeding.
`
`This information calls into question the validity of U.S. Registration Nos. 1,332,378 and
`
`1,434,642 and the existence of any prior common law rights in the mark STEALTH, thus casting
`
`doubt on Petitioners’ standing to bring the instant proceeding.
`
`On September 30, 2005, Judge David H. Coar issued the Memorandum Opinion and
`
`Order attached hereto as Exhibit B in the case of Central Manufacturing Co., Stealth Industries,
`
`Inc., and Leo Stoller v. George Brett & Brett Brothers Sports International in the U.S. District
`
`Court for the Northern District of Illinois.
`
`In the opinion, Judge Coar indicates that Plaintiffs
`
`(who are also the Petitioners in this cancellation proceeding) did not produce any evidence
`
`showing use of their STEALTH mark for any of the goods relevant to the action. One of the two
`
`registrations forming the basis of the referenced case was Registration No. 1,332,378, which is
`
`also one of the registrations asserted in the instant proceeding.1 The court specifically found that
`
`Plaintiffs did not produce any valid evidence of use of the mark for baseball items. (See Ex. B at
`
`10-12 and 18). The court went on to hold that Plaintiffs abandoned the STEALTH mark for
`
`baseballs because they utterly failed to show that they did not discontinue use of the mark for
`
`three or more consecutive years, and found that Plaintiffs’ actions and asserted evidence “amount
`
`1 Reg. No. 1,332,378 covers “sporting goods, specifically, tennis rackets, golf clubs, tennis balls, basketballs,
`baseballs, soccer balls, golf balls, cross bows, tennis racket strings and shuttlecocks.” The other registration involved
`in this cancellation proceeding, Reg. No. 1,434,642, covers “bicycles, motorcycles and boats.”
`
`25607675.1
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`- 2 -
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`

`
`to, at best, an attempt ‘merely to reserve a right in the mark’ for baseless, harassing litigation
`
`such as this.” (Id. at 12-14).
`
`Though the case before Judge Coar centered on use of the STEALTH mark for baseballs
`
`and baseball bats, the court makes several comments suggesting that Petitioners may not have
`
`legitimate rights in the STEALTH mark for any goods at all. “Stoller appears to be running an
`
`industry that produces often spurious, vexatious, and harassing federal litigation.” (Id. at 1).
`
`“Plaintiffs have failed completely to support their claim that they actually used the ‘Stealth’ mark
`
`in connection with an established, presently existing, and ongoing business prior to
`
`1999.’-’
`
`(Id at 12). “Plaintiffs fail utterly to provide any evidence of sales of baseball bats or of any other
`
`product.”
`
`(Id. at 19).
`
`“Plaintiffs offered irrelevant, questionable, and seemingly fantastical
`
`documents; inconsistent, uncorroborated, or arguably false testimony from Leo Stoller; and a
`
`cascade of so-called license or settlement agreements for unrelated products and unrelated
`
`marks.
`
`Further, the enormous range in license fees listed in the alleged license agreements
`
`(from $10 to $25,000) strongly suggests what several courts in this district have suspected:
`
`that
`
`Plaintiffs engage in a pattern and practice of harassing legitimate actors for the purpose of
`
`extracting a settlement amount.”
`
`(Id. at 27).
`
`“Leo Stoller and his companies present
`
`paradigmatic examples of litigants in the business of bringing oppressive litigation designed to
`
`extract settlement.”
`
`(Id. at 28). At the very least,
`
`these findings cast doubt on whether
`
`Petitioners own any legitimate rights in the mark STEALTH that could be used as the basis for
`
`this proceeding.
`
`For the foregoing reasons, Respondent requests that the Board grant leave to amend its
`
`Answer, as attached, to add:
`
`(1) an affirmative defense asserting that Petitioners abandoned their
`
`256076751
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`- 3 -
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`

`
`STEALTH mark and registrations and challenging their standing in the instant proceeding, and
`
`(2) a counterclaim petitioning to cancel Petitioners’ Registration Nos. 1,332,378 and 1,434,642.
`
`b.
`
`Respondent’s Motion is Timely
`
`Respondent submits that its motion is timely under Fed. R. Civ. P. 15(a) and 37 C.F.R. §
`
`2.1l4(b)(2)(i). Respondent was not aware of the grounds for its counterclaim to cancel
`
`Petitioners’ pleaded registrations at the time it filed its Answer. Respondent did not become
`
`aware of the opinion in Central Manufacturing Co., Stealth Industries, Inc, and Leo Stoller v.
`
`George Brett & Brett Brothers Sports International until after it issued on September 30, 2005.
`
`However, on July 20, 2005 , the Board had issued an order suspending these proceedings pending
`
`disposition of Petitioners’ Motion to Compel. On December 8, 2005, the Board issued its ruling
`
`and resumed proceedings. Thus, between July 20, 2005, and December 8, 2005, it was not
`
`possible for Respondent to file this motion. Respondent has filed the motion promptly after the
`
`Board resumed the proceedings.
`
`c.
`
`Petitioners Will Not Be Prejudiced
`
`Petitioners will not be prejudiced by the amendment.
`
`Petitioner itself has caused
`
`significant delay in these proceedings. Through a series of suspension requests that ultimately
`
`culminated in sanctions for Petitioners’ failure to serve Registrant and misrepresentation of the
`
`status of settlement negotiations, Petitioners unduly delayed these proceeding for nearly four
`
`years.
`
`It would be disingenuous for Petitioners to claim even minimal prejudice in View of these
`
`facts. Further, any burden on Petitioners is far outweighed by the interests of justice and the
`
`need to determine Whether or not Petitioners even have standing to bring the instant action.
`
`25607675.1
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`- 4 -
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`

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`2.
`
`Motion to Reopen Discovery
`
`In the event the Board grants Respondent’s motion for leave to amend its Answer,
`
`Respondent also requests that discovery be re-opened to afford the parties the opportunity to take
`
`discovery on the new issues raised by the added affirmative defense and counterclaim. TBMP §
`
`507.02.
`
`Should any fee under 37 C.F.R. § 2.6 be deemed necessary for any reason relating to this
`
`document,
`
`the Commissioner for Trademarks is hereby authorized to deduct said fee from
`
`Fulbright & Jaworski L.L.P. Account No.: 50-1212/ACAD:218/10412380/WGB.
`
`Respectfully submitted,
`
` illiam G. Barber
`
`L. Alison Davis
`
`FULBRIGHT & JAWORSKI LLP
`
`600 Congress Ave. Suite 2400
`Austin, TX 78701
`(512) 474-5201
`
`Attorneys for Respondent
`
`Dated: December 28 2005
`
`256076751
`
`- 5 ~
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that at true and correct copy of the foregoing RESPONDENT’S
`CONSOLIDATED MOTION TO AMEND ITS ANSWER AND TO REOPEN DISCOVERY
`
`was served by first class mail and facsimile to:
`
`Leo Stoller
`
`S Industries, Inc. and Central Mfg. Co.
`P. O. Box 35189
`
`Chicago, Illinois 60707-0189
`
`on December 93>
`
`, 2005.
`
`L. Alison Davis
`
`256076751
`
`— 6 —
`
`

`
`EXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92/025,669
`
`§
`
`§ §
`
`§ §
`
`§
`§
`§
`
`§ §
`
`§
`
`S INDUSTRIES, INC. and
`CENTRAL MFG. CO.,
`
`Petitioners,
`
`V.
`
`ACADEMY, LTD., by assignment from
`COVINGTON INDUSTRIES, INC.,
`
`Respondent.
`
`RESPONDENT’S AMENDED ANSWER AND COUNTERCLAIM TO
`AMENDED PETITION TO CANCEL
`
`Pursuant to Federal Rule of Civil Procedure 8(b), Academy. Ltd. ("Respondent") hereby
`
`answers the Amended Petition to Cancel dated November 1, 2001 as follows. Respondent
`
`reserves the right to amend or supplement its Answer as appropriate. The numbered paragraphs
`
`below correspond to those appearing in the Amended Petition to Cancel.
`
`1.
`
`2.
`
`Admitted.
`
`Respondent admits that Petitioners request cancellation of the cited registration,
`
`but denies any implication that the request has merit.
`
`3.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 3 is precluded, thus no response is required. To the extent a response may be required,
`
`Respondent is without knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 3, and thus denies them.
`
`4.
`
`Respondent denies that Petitioners’ alleged mark STEALTH is “well-known.”
`
`Respondent is without knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 4, and thus denies them.
`
`256086591
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`- l -
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`5.
`
`To the extent the allegations contained in paragraph 5 contain legal conclusions, a
`
`response from Respondent is not required. To the extent that paragraph 5 contains factual
`
`averrnents, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 5, and thus denies them.
`
`6.
`
`Respondent is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations in paragraph 6, and thus denies them.
`
`7.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 7 is precluded, thus no response is required. To the extent a response may be required,
`
`Respondent is without knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 7, and thus denies them.
`
`8.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 8 is precluded, thus no response is required. To the extent a response may be required,
`
`Respondent is without knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 8, and thus denies them.
`
`9.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 9 is precluded, thus no response is required. To the extent a response may be required,
`
`Respondent is without knowledge or information sufficient to fonn a belief as to the truth of the
`
`allegations in paragraph 9, and thus denies them.
`
`10.
`
`Respondent is without knowledge or information sufficient to fonn a belief as to
`
`the truth of the allegations in paragraph 10, and thus denies them.
`
`11.
`
`Respondent is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations in paragraph 11, and thus denies them.
`
`25608659.1
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`— 2 -
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`

`
`12.
`
`Respondent is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations in paragraph 12, and thus denies them.
`
`13.
`
`Respondent is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations in paragraph 13, and thus denies them.
`
`14.
`
`To the extent the allegations contained in paragraph 14 contain legal conclusions,
`
`a response from Respondent is not required. To the extent that paragraph 14 contains factual
`
`averments, they are denied.
`
`15.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 15 is precluded, thus no response is required. To the extent that paragraph 15 contains
`
`factual averments and a response may be required, they are denied.
`
`16.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 16 is precluded, thus no response is required. To the extent that paragraph 16 contains
`
`factual averments and a response may be required, they are denied.
`
`17.
`
`Pursuant to the Board’s order of November 21, 2002, Petitioners’ claims in
`
`paragraph 17 are precluded, thus no response is required. To the extent that paragraph 17
`
`contains factual averments and a response may be required, they are denied.
`
`18.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 18 is precluded, thus no response is required. To the extent that paragraph 18 contains
`
`factual averments and a response may be required, they are denied.
`
`19.
`
`Pursuant
`
`to the Board’s’ order of November 21, 2002, Petitioners’ claim in
`
`paragraph 19 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 19, and thus denies them.
`
`25608659.1
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`20.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 20 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 20, and thus denies them.
`
`21.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 21 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 21, and thus denies them.
`
`22.
`
`Respondent is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations in paragraph 22.
`
`23.
`
`Respondent is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations in paragraph 23.
`
`24.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 24 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 24, and thus denies them.
`
`25.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 25 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 25, and thus denies them.
`
`26.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 26 is precluded, thus no response is required. To the extent a response may be
`
`25608659.l
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`- 4 -
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`

`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 26, and thus denies them.
`
`27.
`
`Respondent is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations in paragraph 27, and thus denies them.
`
`28.
`
`Respondent is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations in paragraph 28, and thus denies them.
`
`29.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 29 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 29, and thus denies them.
`
`30.
`
`Respondent is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations in paragraph 30, and thus denies them.
`
`31.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 31 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 31, and thus denies them.
`
`32.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 32 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 32, and thus denies them.
`
`33.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 33 is precluded, thus no response is required. To the extent a response may be
`
`256086591
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`- 5 —
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`

`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 33, and thus denies them.
`
`34.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 34 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 34, and thus denies them.
`
`35.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 35 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 35, and thus denies them.
`
`36.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 36 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 36, and thus denies them.
`
`37.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 37 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 37, and thus denies them.
`
`38.
`
`Pursuant
`
`to the Board’s order of November 21, 2002, Petitioners’ claim in
`
`paragraph 38 is precluded, thus no response is required. To the extent a response may be
`
`required, Respondent is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 38, and thus denies them.
`
`256086591
`
`- 6 -
`
`

`
`AFFIRMATIVE DEFENSES
`
`1. Petitioners’ claims are barred, in whole or in part, by the doctrines of res judicata,
`
`claim preclusion, and unclean hands.
`
`2. Petitioners lack standing to bring this action. The U.S. Registrations asserted in
`
`Petitioners’ Amended Petition to Cancel are invalid due to abandonment. Petitioners have no
`
`other valid rights to the mark STEALTH that can be relied upon in this proceeding.
`
`Wherefore, Respondent requests that the Amended Petition to Cancel be dismissed and
`
`that judgment be entered in Respondent’s favor.
`
`COUNTERCLAIM
`
`Respondent/Counterclaimant, Academy, Ltd.,
`
`(“Respondent”), alleges based upon
`
`information and belief as follows:
`
`1.
`
`Petitioners are the owners of the following registrations of the mark STEALTH:
`
`U.S. Registration No. 1,332,378 dated April 23, 1985 for “sporting goods, specifically, tennis
`
`rackets, golf clubs, tennis balls, basketballs, baseballs, soccer balls, golf balls, cross bows, tennis
`
`racket strings and shutt1ecocks,” and U.S. Registration No. 1,434,642 dated March 31, 1987 for
`
`“bicycles, motorcycles and boats” (collectively, “Petitioners’ Registrations”).
`
`2.
`
`Upon information and belief, Petitioners do not make bona fide use of the mark
`
`STEALTH in the ordinary course of trade in connection with the goods listed for Petitioners’
`
`Registrations, and do not intend to resume use.
`
`25608659.1
`
`— 7 -
`
`

`
`3.
`
`Upon information and belief, Petitioners have not used the mark STEALTH in
`
`connection with the goods covered by Petitioners’ Registrations for at least three consecutive
`
`years.
`
`4. Pursuant to 15 U.S.C. § 1127, non-use of a mark with intent not to resume use
`
`constitutes abandonment, and nonuse of a mark for three consecutive years constitutes prima
`
`facie evidence of abandonment. Petitioners have abandoned their rights to the mark STEALTH
`
`and Petitioners’ Registrations should be canceled pursuant to 15 U.S.C. §l064(3).
`
`5.
`
`Respondent is the owner of U.S. Registration No. 1,516,448 issued December 13,
`
`1988 for the mark STEALTH WEAR for “camouflage clothing, namely, trousers, suits, blouses,
`
`jackets and hats.”
`
`6.
`
`Petitioners have petitioned to cancel Registration No. 1,516,448 (Cancellation No.
`
`92025669). Petitioners’ alleged standing in this proceeding is based in Whole or in part on
`
`Petitioners’ Registrations.
`
`7.
`
`If Petitioners’ Registrations are allowed to be maintained, such continued
`
`registration would be a source of damage and injury to Respondent.
`
`256086591
`
`— 8 -
`
`

`
`Wherefore, Respondent requests that U.S. Registration Nos. 1,332,378 and 1,434,642 be
`
`cancelled.
`
`Should any fee under 37 C.F.R. § 2.6 be deemed necessary for any reason relating to this
`
`document,
`
`the Commissioner for Trademarks is hereby authorized to deduct said fee from
`
`Fulbright & Jaworski L.L.P. Account No.: 50~l2l2/ACAD:2l8/ 104123 80/WGB.
`
`Respectfially submitted,
`
`William G. Barber
`
`L. Alison Davis
`
`FULBRIGHT & JAWORSKI L.L.P.
`
`600 Congress Avenue, Suite 2400
`Austin, Texas 78701
`(512) 474-5201
`
`ATTORNEYS FOR RESPONDENT
`
`ACADEMY, LTD.
`
`Date: December 28 2005
`
`25608659.1
`
`- 9 —
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of Respondent’s Amended Answer and
`Counterclaim to Amended Petition to Cancel has been served Via First Class Mail, postage prepaid
`on Petitioners at the address below, on December Q3
`, 2005.
`
`Leo Stoller
`
`S Industries, Inc. and Central Mfg. Co.
`P.O. Box 35189
`
`Chicago, Illinois 60707-0189
`
`25608659.1
`
`- 10 -
`
`

`
`EXHIBIT B
`
`

`
`Case 1:O4—cv-03049 Document 96
`
`Filed 09/30/2005
`
`Page 1 of 33
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`CENTRAL MFG. CO., STEALTH
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`INDUSTRIES, INC., and LEO STOLLER
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`Plaintiffs,
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`v.
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`GEORGE BRETT & BRETT BROTHERS
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`SPORTS INTERNATIONAL, INC.
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`Defendants.
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`\é\c/&/\-/%\)\./%\)\J\J
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`N0. 04 C 3049
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`HONORABLE DAVID H. COAR
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`MEMORANDUM OPINION AND ORDER
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`Before this Court are the parties’ cross-motions for summary judgment on Plaintiffs’
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`claims of trademark violation, request for preliminary and permanent injunctions against
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`Defendant, 15 U.S.C. § 1116, Lanham Act violations, 15 U.S.C. § 1l25(a), and Illinois
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`Deceptive Trade Practices Act, 815 ILCS 510/1 et seq. For the reasons set forth below,
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`Plaintiffs’ motion for summary judgment is denied; and Defendant’s motion for summary
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`judgment is granted. This Court hereby cancels Plaintiffs’ ‘249 Registration.
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`1.
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`BACKGROUND
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`Plaintiff Leo Stoller and his stable of corporate entities are no strangers to the legal
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`system and are particularly familiar with the courts in this district. Indeed, as several judges
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`(including this one) have previously noted, Stoller appears to be running an industry that
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`produces often spurious, vexatious, and harassing federal litigation. See, e. g., S Indus, Inc. v.
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`Stone Age Equip, Inc., 49 U.S.P.Q. 2d 1071 (N.D. Ill. 1998) (Castillo, J.) (Stoller spawned
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`Case 1:04-cv—O3049 Document 96
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`Filed 09/30/2005
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`Page 2 of 33
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`“litigation lacking in merit and approaching harassment”); S Indus., Inc. v. Hobbico, 940 F.
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`Supp. 210, 211 (N.D. Ill. 1996) (Shadur, J.) (Stoller “appears to have entered into a new
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`industry—that of instituting federal litigation”). Unlike a public corporation, which would be
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`accountable to its shareholders, Stoller’s corporate entities appear impervious to Stoller’s
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`repeated losses in federal courts in this district and beyond. A search of the court filing system
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`discloses that Plaintiff and one or more of his corporate entities have been involved in at least 49
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`cases in this district alone.‘ Of these, at least 47 purport to involve trademark infringement. At
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`least 13 of these cases have been reported in online legal databases such as LEXIS and Westlaw.
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`No court has ever found infringement of any trademark allegedly held by Stoller or his related
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`companies in any reported opinion; In fact, courts in this district have ordered Stoller or his
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`corporate entities to pay defendants’ attorneys’ fees and costs in at least six reported cases. S
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`Indus., Inc. v. Ecolab Inc., 1999 WL 162785 (N.D. Ill. Mar. 16, 1999) (Gottschall, J.); S Indus.,
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`Inc. v. Stone Age Equip, Inc., 12 F. Supp. 2d 796, 798-99, 819-20 (N.D. Ill. 1998) (Castillo, J.);
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`SIndus., Inc. v. Centra 2000, Inc., 1998 WL 157067 (N.D. Ill. Mar. 31, 1998) (Lindberg, J.),
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`afi”d by 249 F.3d 625, 627-29 (7th Cir. 2001); S Indus., Inc. v. Diamond Multimedia Sys., Inc.,
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`991 F. Supp. 1012 (N.D. Ill. 1998) (Andersen, J.); S Indus., Inc. v. Diamond Multimedia Sys.,
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`Inc., 17 F. Supp. 2d 775 (N.D. Ill. 1998) (Andersen, I.); SIndus., Inc. v. Diamond Multimedia
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`Sys., Inc., 1998 U.S. Dist. LEXIS 14470 (N.D. Ill. Sept. 10, 1998) (Andersen, J.); S Indus., Inc.
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`v. Kimberly—Clark Corp., 1996 U.S. Dist. LEXIS 9567, at *3-*4 (N.D. Ill. July 1, 1996) (Shadur,
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`J.); SIndus., Inc. v. Hobbico, Inc., 940 F. Supp. 210, 212 (N.D. Ill. 1996) (Shadur, J.). The
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`present case bears all the hallmarks of a typical Leo Stoller trademark infringement suit.
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`1 See Appendix I at the end of this opinion.
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`-2-
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`Case 1:04-cv-03049 Document 96
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`Page 3 of 33
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`Stoller’s trademark infringement lawsuits typically arise in the following way. An entity
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`markets a product that bears some Version of the name “Stealth” or has a description pertaining
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`to “stealt ”-like qualities. Plaintiffs send what Stoller deems a cease—and-desist letter to the
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`alleged infringer, along with an offer to “license” the “Stealth” mark. If the alleged infringer
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`refuses to agree to Plaintiffs’ license demands or to cease using “Stealth,” then Plaintiffs bring a
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`trademark infringement suit.
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`The sheer number of cases Plaintiffs have filed in this district raise serious questions
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`about Plaintiffs’ and Plaintiffs’ counsel’s good faith. In fact, several courts in this district have
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`noted explicitly that Plaintiffs deal in meritless claims and bad faith litigation. See, e.g, Stone
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`Age Equip, 12 F. Supp. at 798.
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`Defendants
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`Plaintiffs’ present dispute is with Brett Bros. Sports International, Inc. and George Brett
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`(collectively “Brett Bros.”). Brett Bros. is a Washington corporation with its principal place of
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`business in Spokane, Washington. George Brett, a 1999 Baseball Hall of Fame inductee, has
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`been president of the corporation since June 2001. Since 1997, Brett Bros.’ has been
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`manufacturing and selling baseballs, baseball bats, baseball gloves, and other baseball related
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`2 Brett Bros. was started in April 1997 as Tridiamond Sports, Inc., by Joe Sample and
`several other individuals. Tridiamond began manufacturing and selling three models of wooden
`baseball bats, the Mirador, the Stealth, and the Bomber. Tridiamond formed a relationship with
`former Maj or League baseball player and Baseball Hall of Fame inductee George Brett, and his
`brothers Ken, John, and Robert Brett, all of whom have played baseball professionally. The Brett
`brothers purchased a 50% interest in Tridiamond, after which the company changed its name to
`Brett Brothers Bat Company. Subsequently, in recognition of the fact that company had
`expanded to a full line of baseball-related products and had customers around the world, the
`company changed its name again, to Brett Brothers Sports International, Inc. George Brett is
`currently the president of Brett Bros., and Joe Sample and Robert Brett are the vice-presidents.
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`-3-
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`Case 1:04—cv—O3049 Document 96
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`Filed 09/30/2005
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`Page 4 of 33
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`accessories throughout North America and overseas. Specifically, Brett Bros. manufactures and
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`sells eight different models of wooden baseball bats that are used from Little League Baseball to
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`Major League Baseball and at all levels in between. One of the Brett Bros. most popular bat
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`models is the Stealth baseball bat. Both the Little League Baseball Association and the National
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`Collegiate Athletic Association have recognized the Brett Bros.’ Stealth bat as approved
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`equipment. Brett Bros. currently sells its bats, including the Stealth model bat, through retail
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`outlets and directly to consumers over the internet. Brett Bros. registered the domain name
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`<http://www.brettbats.com> on May 14, 1999, and hosts a website at that domain to advertise
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`and sell its baseball related products, including the Stealth bat. (Def’s L.R. 56.l(a), Ex. D).
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`Brett Bros.’ first documented sale of its Stealth bat occurred on July 13, 1999, when it
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`sold twelve Stealth bats to Tim Nolan of Pro-Cut in Rockford, Illinois. (Def.’s L.R. 56. l (a), Ex.
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`D; Ex. H). Since 1999, Brett Bros. asserts that it has sold over 25,000 Stealth bats to vendors,
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`distributors, the NCAA, educational institutions, and private individuals through its website, and
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`phone, fax, tradeshow, and third-party sales. (Def.’s L.R. 56.1(a), Ex. D).
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`Plaintiffs
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`Plaintiff Central Manufacturing, Inc. (which also does business as Central Manufacturing
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`Co.) is a Delaware corporation with its principal place of business in Chicago, Illinois. Plaintiff
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`Stealth Industries, Inc. is also a Delaware corporation with its principal place of business in
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`Chicago. Plaintiff Leo D. Stoller is the president and sole shareholder of both Central
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`Manufacturing and Stealth Industries, in addition to several other corporate entities including S
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`Industries, Inc., and Sentra Manufacturing. Central is also the owner of Rentamark.com, a
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`service mark used as a licensing agency through which Plaintiffs enter licensing agreements with
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`Case 1:04-cv-03049 Document 96
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`Filed 09/30/2005
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`Page 5 of 33
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`third-party entities or corporations for use of their marks on a wide array of products. Plaintiffs
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`assert that Central Manufacturing Company has become the registrant and/or assignee of “33
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`federally registered Stealth or Stealth formative marks.” (Pls.’ Summ. J. Br., at 2.) In their
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`summary judgment brief, Plaintiffs contend that “Plaintiffs’ use of the mark STEALTH as a
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`trade name, ‘house’ mark, and service mark began in 1981 and has continued until the present.”
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`(Pls.’ Summ. J. Br., at 6.) In addition, they provide 51 alleged licensing or settlement agreements
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`between one of Leo Stoller’s companies and a third-party for use of the word “Stealth” on
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`products ranging from hand tools to make prosthetic limbs to construction consulting services to
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`track lighting.
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`Present Dispute
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`In their Amended Complaint, Plaintiffs assert that they are “engaged in the business of
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`marketing, promoting, licensing and selling in interstate commerce a broad range of goods...”
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`(Am. Compl., 11 7). In addition, Plaintiffs allege that they have been using the word “Stealth” as a
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`trade name and trademark to identify their products and businesses continuously since at least
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`1982. (Am. Compl. 1] 8). On October 5, 2004, pursuant to Rule 34 of the Federal Rules of Civil
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`Procedure,