IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`L.S.V. WORLDWIDE, LTD.,
`
`Petitioner,
`
`V.
`
`T-SHIRT INTERNATIONAL, INC.
`
`Registrant.
`
`%\_/\/%/\/\/E/%/\./M
`
`Assistant Commissioner for Trademarks
`2900 Crystal Drive,
`Arlington, VA 22202-3513
`
`Cancellation No. 92042255
`
`Reg. No. 2,696,715
`
`Mark: O.V.B.
`
`‘°'24'2°°3 4
`u.s. Patent & TMOfcITM Man ficptD1.
`
`#7
`
`8
`
`MOTION TO SUSPEND
`
`Pursuant to 37 CFR §2.1 17 and TBMP §5 10.02, Registrant, T-Shirt International, Inc.
`
`(“TSI”), through its undersigned counsel, respectfully moves to suspend the above-captioned
`
`cancellation proceeding pending the outcome of an existing civil action between the parties in
`
`Federal district court.
`
`TSI filed a Complaint for Declaratory Judgment (copy attached as Exhibit A), in the
`
`United States District Court for the Southern District of West Virginia on or about September 10,
`
`2002, Civil Action No. 3102-1130. On or about December 19, 2002, TSI filed an Amended
`
`Complaint for Declaratory Judgment (copy attached as Exhibit B) in the above-mentioned civil
`
`CL888054.l
`
`

`
`
`
`7
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`action. On or about January 15 , 2003, Petitioner, L.S.V. Worldwide, LTD. (“LSV”) filed its Answer,
`
`Counterclaims and Third-Party Complaint (copy attached as Exhibit C). On or about February 6,
`
`2003, TSI filed its Answer ofT-Shirt International, Inc. To Counterclaims (copy attached as Exhibit
`
`D), and Sam’s Club filed its Answer Of Sam’s Club To Third-Party Claims (copy attached as Exhibit
`
`E).
`
`In its Amended Complaint for Declaratory Judgment, TSI alleges that TSI’s Marks
`
`do not infringe LSV’s Marks (Am. Compl. 11 14), and seeks a judgment declaring that TSI has not
`
`infringed LSV’s Marks (Am. Compl. 1[ 15, and at 5 1] 1). TSI’s Marks include:
`
`1.
`
`2.
`
`and
`
`OLD VARSITY BRAND (word mark), serial no. 78/069,711;
`
`O.V.B. (word mark), serial no. 78/069,732, now registration no. 2,696,715;
`
`3.
`
`OLD VARSITY BRAND O.V.B. (stylized mark), serial no. 78/196,233.
`
`(Am. Compl. 1[ 7). LSV’s Marks include ONE TOUGH BRAND OTB (stylized mark), registration
`
`no. 2,452,866, and OTB (word mark), registration no. 2,490,664. (Am. Compl. 1] 6).
`
`TSI also alleges that TSI’s Marks do not cause confusion, or cause mistake, or
`
`deceive, nor is it likely to cause confusion, or cause mistake, or deceive, consumers when viewed
`
`in light ofLSV’s Marks. (Am. Compl. 11 17). Accordingly, TSI is seeking ajudgment declaring that
`
`TSI has not engaged, nor is it continuing to engage, in federal unfair competition by using its TSI
`
`Marks in connection with unisex casual clothing when the TSI Marks are viewed in light of LSV’s
`
`Marks. (Am. Compl. 11 18, and at 5 1] 2).
`
`CL888054.l
`
`

`
`TSI further alleges that TSI’s use of the TSI Marks does not dilute or cause dilution
`
`of LSV’s Marks (Am. Compl. 1] 21). Therefore, TSI is seeking a judgment declaring that TSI and
`
`its use of TSI Marks does not dilute or cause the dilution of LSV’s Marks. (Am. Compl. 1] 22, and
`
`at 5 11 3).
`
`LSV filed a Petition for Cancellation of TSI’s registration number 2,696,715, for the
`
`mark O.V.B., on or about July 9, 2003, thus instituting the above-captioned proceeding with the
`
`Trademark Trial and Appeal Board (“TTAB”). LSV alleges that TSI’s O.V.B. mark so resembles
`
`LSV’s OTB Marks as to be likely to cause confusion, to cause mistake, or to deceive.
`
`(Pet. For
`
`Cancellation 11 27). LSV also alleges that TSI’s O.V.B. mark consists of and comprises matter that
`
`may disparage and falsely suggest a connection with LSV or one of its licensees.
`
`(Pet. For
`
`Cancellation 11 30). Furthermore, LSV alleges that TSI’s use of its O.V.B. mark dilutes the
`
`distinctive quality of LSV’s OTB Marks.
`
`(Pet. For Cancellation 1] 34). As a result of these
`
`allegations, LSV is seeking cancellation of TSI’s registration no. 2,696,715 for the O.V.B. mark.
`
`(Pet. For Cancellation at 12).
`
`The civil action instituted by TSI over one year ago will therefore have a bearing on
`
`the cancellation proceeding instituted by LSV.‘
`
`Specifically, both proceedings involve
`
`determinations on whether TSl’s use of its O.V.B. mark infringes, constitutes unfair competition
`
`with, or dilutes LSV’ s O.T.B. Marks. A regulation promulgated by the Patent and Trademark Office
`
`provides that
`
`‘The status of the civil action in West Virginia is much farther along than that of the
`instant cancellation proceeding. That is, discovery is scheduled to be completed on October
`31, 2003, with trial set for January 2004.
`
`CL888054.l
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`3
`
`

`
`
`
`[w]henever it shall come to the attention of the Trademark Trial and Appeal
`Board that a party or parties to a pending case are engaged in a civil action or another
`Board proceeding which may have a bearing on the case, proceedings before the
`Board may be suspended until termination of the civil action or the other Board
`proceeding.
`
`37 CFR §2.117(a). The Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)
`
`provides that “[o]rdinarily, the Board will suspend proceedings in the case before it if the final
`
`determination of the other proceeding will have a bearing on the issues before the Board.” TBMP
`
`§510.02(a) (2d ed. June 2003). Since the final determination of the civil action will have a bearing
`
`on the issues before the TTAB in the above—captioned proceeding, TSI respectfully requests that the
`
`TTAB suspend proceedings involving Cancellation No. 92042255 pending the outcome of Civil
`
`Action No. 3202-1130.
`
`Dated this 5; LI
`
`47.
`
`day of October, 2003.
`
`Respectfully submitted,
`
`
` Meg D Dortenzo
`
`
`
`Michae
`
`. Smith
`
`STEPTOE & JOHNSON PLLC
`
`P.O. Box 2190
`
`Clarksburg, WV 26302-2190
`(304) 624-8000
`
`Counselfor T-Shirt International, Inc.
`
`CL888054.l
`
`4
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this the
`
`“U,
`day of October, 2003, I served the foregoing
`
`“Motion to Suspend,” upon the counsel for Petitioner by depositing true copies thereof in the United
`
`States mail, postage prepaid, in an envelope addressed as follows:
`
`Susan B. Larrabee, Esq.
`Koo, LARRABEE, LAU-KEE & LANE LLP
`106 Corporate Park Drive
`White Plains, NY 10604
`
`CL888054.l
`
`

`
`
`IN THE UNITED STATES? i, STlgH;T_fg9IIRT
`,
`FOR THE SOUTHERN DISTRIC mums;
`'
`[won on
`
`T-SI-IIRT INTERNATIONAL, INC.,
`
`
`a West Virginia non-profit corporation,
`
`
`SAMIJEL L. KAY. CLERK
`U. S. District & Bankruptcy Com-gs
`
`Southern District of West Virginia
`
`Plaintiff,
`
`v‘.
`
`CIVIL ACTION No.;3 5 0g?’ 1 I 0
`
`L.S.V. WORLDWIDE LTD.,
`a Delaware corporation,
`
`Defendant.
`
`COMPLAINT FOR DECLARATORY JUDGMENT _
`
`Jurisdiction and Venue
`
`1.
`
`The plaintiff T-Shirt International, Inc. (“TSI”), is a West Virginia
`
`corporation, having its principal place of business in Culloden, West Virginia.
`
`2.
`
`The defendant, L.S.V. Worldwide Ltd.
`
`(“LSV”),
`
`is a Delaware
`
`corporation, having its principal place of business in New York City, New York.
`
`3.
`
`This Complaint arises under the trademark and unfair competition laws
`
`ofthe United States, title 15 U.S.C. §§1051 et seq. , the Lanham Act §§l, et seq. Therefore, this
`
`Court has subject matter jurisdiction pursuant to 28 U.S.C. §§l33l, 1338, 2201, and 2202.
`
`Venue is proper in this judicial district pursuantto-28 U.S.C. §l39l.
`
`Exhibit A
`
`

`
`4.
`
`This Court has supplemental subject matterjurisdiction under 28 U.S.C.
`
`§ 1 367.
`
`COMMON ALLEGATIONS
`
`5.
`
`TSI hereby incorporates by this reference the allegations ofparagraphs
`
`1 through 4 as if set forth fully herein.
`
`6.
`
`LSV is the owner of the federally registered trademarks (collectively,
`
`“LSV Marks”):
`
`a.
`
`TOUGH BRAND OTB (stylized mark), having federal
`
`regis1:ration number 2,452,866; and
`
`b.
`
`OTB (word mark), having federal registration number 2,490,664.
`
`A copy of the federal registrations are attached hereto as Exhibits A and B
`
`respectively.
`
`7.
`
`TSI is the owner of the pending, federal trademark applications
`
`(collectively, “TSI Marks”):
`
`.
`
`a.
`
`OLD VARSITY BRAND (word mark), having federal umber
`
`78/069,71 1; and
`
`b.
`
`OVB (word mark), having federal serial number 78/069,732.
`
`A copy ofthe pending, federal applications are attached hereto as Exhibits C and
`
`D respectively.
`
`8.
`
`On August 21,2002, LSV, sent a cease and desist letter to TSI in which
`
`LSV asserted its objections to the pending applications ofthe TSI Marks. A copy ofthe August
`
`

`
`21, 2002 letter is attached hereto as Exhibit E. LSV further asserted in the letter that due to the
`
`similarity of the TSI Marks and the LSV Marks, there is a substantial likelihood of consumer
`
`confusion giving rise to both federal trademark infringement and dilution, and entitling LSV
`
`to injunctive relieve and monetary damages against TSI.
`
`9.
`
`Prior to being made aware of any objections by LSV, TSI had invested
`
`considerable time, effort, and resources in determining that it could use its TSI Marks in
`
`connection with unisex casual clothing. TSI has incurred substantial expenses in connection
`
`therewith, including, but not limited to, costs associated with manufacturing, marketing, and
`
`contracts for advertising.
`
`10.
`
`In a letter dated September 6, 2002, TSI responded to the cease and desist
`
`letter stating its position that there is no, nor is there a likelihood of, confusion between the use
`
`of the TSI Marks and the LSV Marks due to the differences in the marks and the purchase
`
`habits of fashion-conscious consumers. A copy of the September 6, 2002 letter is attached
`
`hereto‘ as Exhibit F.
`
`1 1.
`
`TSI’s use ofthe TSI Marks does not infringe the registered LSV Marks,
`
`nor does such use dilute the LSV Marks. As evidenced by the cease and desist letter sewed on
`
`TSI and the threats and demands made therein, there is an actual controversy within the
`
`meaning of 28 U.S.C. §2201 for purposes of this declaratory judgment action. TSI will be
`
`harmed if it is forced to proceed with its business without a clear declaration of its non-
`
`infiingement.
`
`12.
`
`As TSI is anxious to resolve this dispute, it is filing this current action.
`
`3
`
`

`
`FIRST CAUSE OF ACTION
`(Declaratory Judgment of No Federal Trademark Infringement)
`
`_TSI hereby incorporates by this reference the allegations ofparagraphs
`13.
`1 through 12 as ifsetvforth fully herein.
`
`14.
`
`TSI’s Marks do not infiinge LSV’s federally registered trademarks:
`
`ONE TOUGH BRAND
`
`(stylized mark), having federal registration number 2,452,866,
`
`and OTB (word mark), having federal registration number 2,490,664.
`
`15.
`
`TSI is entitled to a judgment declaringthat TSI has not infringed the
`
`LSV’s Marks.
`
`SECOND CAUSE OF ACTION
`(Declaratory Judgment of No Federal Unfair Competition)
`
`16.
`
`TSI hereby incorporates by this reference the allegations ofparagraphs
`
`1 through 15 as if set forth fully herein.
`
`17.
`
`TSI’s Marks do not cause confusion, or cause mistake, or deceive, nor
`
`is it likely to cause confusion, or cause mistake, or deceive, consumers when viewed in light
`
`of LSV’s Marks.
`
`18.
`
`TSI is entitled to ajudgment declaring that TSI has not engaged, nor is
`
`it continuing to engage, in federal unfair competition by using its TSI Marks in connection with
`
`unisex casual clothing when the TSI Marks are viewed in light of LSV’s Marks.
`
`

`
`THIRD CAUSE OF ACTION
`
`(Declaratory Judgment of"No Federal Dilution)
`
`19.
`
`TSI hereby incorporates by this reference the allegationsofparagraphs -
`
`1 through l8 as if set forth fiilly herein.
`
`20.
`
`LSV’s Marks are not famous, and TSI is entitled to ajudgment declaring
`
`that LSV’s Marks are not famous.
`
`21.
`
`TSI’s use of the TSI Marks does not dilute or cause dilution of LSV’s
`
`Marks.
`
`22.
`
`TSI is entitled to ajudgment declaring that TSI and its use ofTSI Marks
`
`does not dilute or cause the dilution of LSV’s Marks.
`
`WHEREFORE, TSI prays that this Court enter judgment as follows:
`
`1.
`
`V Declare that TSI, by operating under the TSI Marks, has not infiinged,
`
`nor continues to infiinge, the federally registered LSV Marks.
`
`2.
`
`Declare that TSI, by operating under the TSI Marks, has not engaged in,
`
`nor continues to engage in, federal unfair competition when the TSI Marks are viewed in light
`
`ofthe LSV Marks.
`
`3.
`
`Declare that TSI, by operating under the TSI Marks,
`
`not engaged in,
`
`nor continues to engage in, federal dilution, and that TSI’s use ofthe TSI Marks does not dilute,
`
`or cause the dilution of, the LSV Marks.
`
`4.
`
`Award TSI its reasonable attorneys fees; and
`
`

`
`5.
`
`Grant -TSI such other and further equitable and legal relief as the facts
`
`may warrant under the circumstances of this case.
`
`TSI further requests this Honorable Court grant it a uial by jury.
`
`Dated this [ fl
`
`day ofSeptember, 2002.
`
`
`
`STEPTOE & JOHNSON PLLC
`Bank One Center
`
`P.O. Box 2190
`
`Clarksburg, WV 26302
`(304) 624-8000
`
`Counselfor Plaintzfi’
`
`CL.796877
`
`6
`
`

`
`Exhibit A
`
`

`
`
`
`CERTIFICATE OF REGISTRATION
`
`PRINCIPAL REGISTER
`
`The Mark shown in this certificate has been registered in the United States
`Patent and Irademark Ofiice to the named registrant.
`
`The records of the United States Patent and Ihzdemark Oflice show that
`an applicationfor registration ofthe Mark shown in this Certificate was filed in the
`Ofiice; that the application was examined and detennined to be in compliance with
`the requirements ofthe law and with the regulationsprescribed by the Director ofthe
`United States Patent and Yhademark Ofiice; and that the Applicant is entitled to
`registration ofthe Mark under the Itademarkztct of1946, asztmendetl.
`
`A copy of the Mark and pertinent data fivtn the application are part of
`this cerufcate
`
`This reg1'stration shall remain in force for YEN (10) years, unless
`terminated earlier as provided bylaw, and subject to compliance with the provisions
`ofSection 8 ofthe TtademarkAct of1946. asrlmended.
`
`Acting Director afthe United State: Patent and Trotiemcrk O_0'ir¢
`
`’-°°/9°05]
`
`LOSLSVLPOS
`
`iW:| 82391 2002/32/80
`
`

`
`
`
`Int. CL: 25
`
`-
`Prior U.S. C]s.: 22 and 39
`United. States Patent and Trademark Office
`
`Reg‘ No. 1452.866
`Registered May 22. 2001
`
`?.'~ TRADEMARK
`
`PRINCHPAL REGISTER
`
`ONE TWJIBLG ERNIE
`
`@fr®
`
`(DELAWARE _COR~-
`
`L.S.V. WORLDWIDE LTD.
`PORATION)
`gJogEST|J4T}l STREIET
`M 7 8
`NEW YORK. NY 10001
`FOR: CLOTHING, NAMELY. PANTS. SHIRTS.
`TOPS. JACKETS. SHORTS ANIJ T-SHIRTS.
`IN
`CLASS 25 (U.S. CLS. 22 AND 39).
`FIRST USE ll-J0-I998: IN COMMERCE 1I~30-I998.
`
`NO CLAIM IS MADE TO THE |'!X(‘l.USl\’l°I
`RIGHT TO USE "UNIS TOUGH BRAND". /\l"AR'|'
`FROM THE MARK AS SHOWN.
`
`Sl':R. NO.1S-90I.ll35.1~'lLI3D I-7-1000.
`
`GENE MACIOL. LEXAMINING A1'TORN|‘."Y
`
`1.00/SOOWI
`
`LOS.L8H.t08 X35 083111 Z003/Z3/B0
`
`

`
`Exhibit B
`
`

`
`wesee?’ ’%iii” "W22
`
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`
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`
`/4 910‘
`
`1
`
`CERTIFICATE OF REGISTRATION
`
`PRINCIPAL REGISTER
`
`'I71e Mark shown in this certificate has been registered in the United States
`Patent and Trademark Office to the named registrant
`
`The records of the United States Patent and Trademark Qflice show that
`an applicationjbr registration ofthe Mark shown in this Certificate was filed in the
`Ofiice; that the application was examined and determined to be in compliance with
`the requirements ofthe law and with the regulations prescribed by the Director ofthe
`United States Patent and Trademark Ofilce; and that the Applicant is entitled to
`registration ofthe Mark under the TrademarkAct of1946, asAmended.
`
`A copy of the Mark and pertinent data from the application are part of
`this certificate
`
`This registration shall remain in force for TEN (10) years, unless
`terminated earlier as provided by law, and subject to compliance with the provisions
`ofSection 3 ofthe 7rademarlrAct ofI946, as Amended.
`
`M"! “RR” we Una;-4sum nu.-mas ma.“ qma
`
`£00/9001?!
`
`LOSLBHDOB XH 08501 ZOOZIZZ/80
`
`

`
`Int. Cl.: 25
`
`Prior U.S. Cls.: 22 and 39
`
`Reg. No. 2,490,664
`Registered Sep. 18, 200!
`United States Patent and Trademark Office
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`OTB
`
`L.S.V. WORLDWIDE, LTD.
`PORATION)
`I9 WET 34TH STREET ROOM 7|B
`NEW YORK. NY IOODI
`
`(DELAWARE COR-
`
`FOR: YOUNG MEN ‘S. BOYS‘ AND GIRLS
`CLOTHING. NAMELY. PANTS. SHIRTS. TOPS.
`JACKETS. SHORTS AND T-SHIRTS. IN CLASS 25
`(us. CLS. 22 AND 39).
`
`FIRST USE ll-2-I998; IN COMMERCE H-2-I998.
`
`OWNER OF US. REG. NO. 2.32|.749.
`
`SER. NO. 76-|3|.0l3. FILED 9-I3-2000.
`
`MICHAEL ENGEL. EXAMINING ATTORNEY
`
`Loo/zoom
`
`LOBLEPUOB
`
`XVJ 383171 Z002/Z3/80
`
`

`
`Exhibit C
`
`

`
`V
`
`' TESS - Docmnent Display
`
`I
`
`Page 1 of2
`
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`
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`Typed Drawing
`"word Mark OLD VARSITY BRAND
`Goods and
`IC 025. US 022 039. G & S: Unisex casual clothing, namely, headwear, t-shirts,
`Services
`layered t-shirts, night shirts. fleece shirts, fleece pants, shorts, jackets, woven shirts,
`denim shirts, turtleneck shirts, placket-front shirts, wind shirts, wind shorts, polo
`shirts, mesh tank top, mesh shorts, dazzle tank tops, dazzle shorts, football shirts,
`hockey shirts, baseball shirts, soccer shirts, jogging suits, mesh crop tops, hats and
`caps
`
`Mark
`Drawing
`Code
`
`Serial
`Number
`Filing Date
`Filed ITU
`
`(1) TYPED DRAWING
`
`7806971 1
`June 18, 2001
`FILED AS ITU
`
`g‘l',‘;'f;'.:,§§lf°" June 4, 2002
`Owner
`(APPLICANT) T-Shirt International CORPORATION WEST VIRGINIA 2101
`Grace Street Culloden WEST VIRGINIA 25510
`
`Disclaimer N0 CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "BRAND" APART
`FROM THE MARK AS SHOWN
`
`TRADEMARK
`PRINCIPAL
`
`Type. of
`Mark
`Register
`Live/Dead
`
`Indicator LIVE
`
` FTC) HOME Tmhnwzx
`
` ,
`
`
`
`httpd/tess.us_pto.govlbin/showfield?f=doc&state=e2fdd4.4.3
`
`9/9/02
`
`

`
`‘ TESS - Document Display
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`
`http://tess.uspto.gov/bin/showfield?%doc&state=e2fdd4.4.3
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`9/9/02
`
`;
`
`

`
`Exhibit D
`
`

`
`.
`
`~ TESS - Document Display
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`Page 1 of 2
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`H‘.-I RR .'.'r)fit42if.l.s' cm. .
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`£.-'.<;c the "B:'u:'...-.
`
`Tzped Drawing
`‘Word Mark O.V.B.
`Goods and
`IC 025. US 022 039. G & S: UNISEX CASUAL CLOTHING, NAMELY,
`Services
`HEADWEAR, T-SHIRTS, LAYERED T-SHIRTS, NIGHT SHIRTS, FLEECE
`SHIRTS, FLEECE PANTS, SHORTS, JACKETS, WOVEN SHIRTS, DENIM-
`SHIRTS, TURTLENECK SHIRTS, PLACKET-FRONT SHIRTS, WIND SHIRTS,
`WIND SHORTS, POLO SHIRTS, MESH TANK TOP, MESH SHORTS, DAZZLE
`TANK TOPS, DAZZLE SHORTS, FOOTBALL SHIRTS, HOCKEY SHIRTS,
`BASEBALL SHIRTS, SOCCER SHIRTS, JOGGING SUITS, MESH CROP TOPS,
`HATS/CAPS. FIRST USE: 20010301. FIRST USE IN COMMERCE: 20010301
`
`Mark
`Drawing
`Code
`
`Serial
`Number
`
`(1) TYPED DRAWING
`
`78069732
`
`Filing Date
`Filed ITU
`
`June 18, 2001
`FILED AS ITU
`
`Published
`for
`
`Opposition
`Owner
`
`Type of
`Mark
`
`Register
`Live/Dead
`Indicator
`. '.s.u~x:uua.-.=v:-_r .
`
`January 8, 2002
`
`(APPLICANT) T-Shirt International CORPORATION WEST VIRGINIA 2101 Grace
`Street Culloden WEST VIRGINIA 25510
`
`TRADEMARK
`
`PRINCIPAL
`
`LIVE
` _¢__.;-...>u.. ..
`
`.
`
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`.._.-. ..
`
`-u.:...n-_-.=—-—-’..-_-..‘-...a...._.:-_.....‘——‘=.-..:......__..——-—-ram.-;...
`
`http://tess.uspto.gov/bin/showfield?f=doc&state=e2fdd4.4.5
`
`9/9/02
`
`

`
`~ TESS - Document Display
`
`Page 2 of2
`
`http://tess.uspto.gov/bin/showfield?f=doc&state=e2fdd4.4.5
`
`9/9/02
`
`

`
`Exhibit E
`
`

`
`f K L KOO. LARRABEE & LAU-KEE, LLP
`Counsellors At Law
`
`Ri h d K
`gt-;53EI_;o;~f?m
`
`gllfltllllaurcn
`Susan B. Larrabee
`Mullledln Nv. CT
`sblfilllllawtan
`
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`
`,
`
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`
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`
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`
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`vii:
`’s'u‘i.i.77‘3.'.'i3°43
`Nonnan fifizz
`Itll@|I|!|:l:w.:om
`1': Owns!
`Paul M. Bochner
`pntboltlfltlcuv.aan
`
`August 21. 2002
`
`VIA UPS NEXT DAY AIR
`
`T-SHIRT TNTERNATTONAL
`2101 Grace Street
`‘
`
`Culloden. West Virginia 25510
`Attention: President
`
`Re:
`
`Trademark lnfl-ingementlI..S.V. Worldwide Ltd.
`
`Dear Sir or Madam:
`
`We are counsel for LSV Worldwide Ltd. (“LSV”). it has recently come to our attention
`that T-Shirt International and/or TSI Sportswear is producing and marketing shirts and possibly
`other apparel under the label “OVB" and “OLD VARSITY BRAND." We have also become
`aware that '1'-Shirt International has filed “intent to use“ applications with the U.S. Patent and
`Trademark Oiftcc with respect to these marks in connection with assorted apparel.
`
`As you may or may not be aware, LSV is the owner of the trademark “OTB." the
`distinctive OTB ONE TOUGH BRAND logo and several related marks (collectively. the “OTB
`Marks"). The OTB Marks have been in use commercially since at least 1998. and have been
`featured on an array of clothing for young rnen,juniors. girls, boys, infants and toddlers.
`Through its licensees. LSV has had extensive sales under the OTB Marks and has invested
`considerable time and money in advertising and promoting the brand. The OTB Marks are
`associated with our client in the minds of consumers and are a source oftremendous goodwill.
`Moreover, LSV has acquired multiple federal registrations for the OTB Marks with the U.S.
`Patent and Trademark Office. as well as numerous registrations in foreign countries. Copies of
`two relevant U.S. certificates of registration are attached for your reference.
`
`We believe the present use by T-Shirt International or its affiliates of the mark OVB
`constitutes an infringement of LSV's rights in the OTB Marks. The marks in question are
`substantially alike both to the ear and eye. are being used on identical goods, and are being
`marketed to the same consumers through similar channels of distribution. There is therefore a
`substantial likelihood of customer confusion as to the source of the apparel and/or the
`relationship between LSV and ‘F81 lntemational. Such confusion may give rise to claims for
`
`zoo/zoo [131
`
`LOSLSIDUOS
`
`XVJ 33‘-bl. ZOOZ/Z8/B0
`
`

`
`
`
`' trademark infringement and dilution that would entitle LSV to injunctive relief and monetary
`damages against TSI International.
`
`LSV is determined that this infi-ingement must cease immediately. Accordingly. we ask
`that you provide binding written assurances within ten (10) days of this letter that TSI
`International and its affiliates will (i) have no further participation or involvement in the
`manufacture, distribution or sale of any apparel that infringes the OTB Marks, and (ii) will
`withdraw its pending applications to register OVB with the U.S. Patent and Trademark Office.
`LSV reserves its right to seek further relief, including monetary damages, once it has evaluated
`the scope ofTSl international's infringement.
`
`We wish to emphasize the importance of this matter to LSV and look forward to your
`response by no later than September 6, 2002. Ifyou have any questions, please do not hesitate to
`COHIECI me me.
`
`Very truly yo urs.
`
`12...z.w¢.
`
`Susan Latrab ee
`
`Enclosures
`
`cc:
`
`LSV Worldwide, Ltd.
`
`Loo/zoom
`
`LOBLEDLWS Xifd BZIDL Z003/ZZ/80
`
`

`
`
`
`Exhibit F
`
`

`
`
`
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`J
`
`S’ I ‘I
`
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`
`Ill.
`
`An-o RN sys AT LAW
`Chtbbuu Durban llupunn Marimba; Wheeling Fastening
`
`Bank One Center. Sixth Floor
`p_o_ 13°, 1190
`
`Clubbmglwv263024190
`
`(304) 5244133 Fax
`(304) 624-8000
`www.steptoelaw.com
`
`Writer’: Contact Information
`-‘ hn
`.
`304-624-8128
`dortenzo@steptoe)0
`soncom
`
`September 6, 2002
`
`Via Facsimile and Mail
`
`Susan B. Larrabee
`Koo, LARRABEE & LAU-KEE, LLP
`410 Saw Mill River Road
`Ardsley, New York 10502
`
`Re:
`
`.0VB mark, Serial No. 78/069,732
`
`Dear Ms. Larrabee:
`
`We represent T-Shirt International, Inc. (“TSI") and are in receipt ofyour letter dated
`August 21, 2002. In your letter you opined that TSI’s mark OVB, for which an application for
`federal registration is pending in the United States Patent and Trademark Office, having serial no.
`78/069,732, infringes your client’s (LSV) marks OTB (U.S. reg. no. 2,490,664) and OTB ONE
`TOUGH BRAND (U.S. reg. no. 2,452,866), (collectively “OTB Marks”). You also demanded that
`TSI cease and desist fi-om manufacturing, distributing and selling any apparel that infiinges LSV’s
`OTB Marks as well as withdraw its ‘732 application from the USPTO.
`
`In response, I first must request that youclarify what LSV is seeking in its demand
`that TSI have no further involvement or participation in apparel that infringes the OTB Marks. Your
`letter is not clear in that it mentions both ofTSI’s marks (OVB and OLD VARSITY BRAND) in the
`first paragraph but then later in the third paragraph, you only claim that the OVB mark constitutes
`an infringement ofyour LSV’s rights in the OTB Marks. Therefore, please provide us with more
`details about the specific reliefyou request including what TSI marks are your real concern.
`
`Afier carefiil review and consideration ofthe issues raised, we also are ofthe opinion
`that the TS] mark OVB does not infi-inge or otherwise interfere with LSV’s marks. In particular, the
`OTB ONE TOUGH BRAND design mark (the ‘ 866 Registration) is very stylized and contains a lot
`of detail, including the lettering ONE TOUGH BRAND with specialized highligh_ting of the first
`letters, the letters OTB with specialized shading, an oval shape, and a mixture offont sizes. In sharp
`. contrast, TSI’s mark OVB is merely three letters - none ofwhich appear in LSV’s ‘ 866 Registration.
`Also, TSI’s OVB mark does not contain any of the extensive stylization and detailing of the ‘866
`Registration, nor does TSI use any design that is even remotely similar to the design of the ‘866
`Registration. Therefore, due to the vast differences between the OVB mark and the ‘866
`Registration, we believe there is no confusion or likelihood of confusion among consumers with
`these two marks.
`
` Masheratthewndduuhlien-arknlIndependentInrims"
`
`TEIIALEX’
`
`

`
`
`
`Larrabee
`Susan
`September 6, 2002
`Page 2
`
`We also are of the opinion that TSl’s OVB mark does not infringe or otherwise
`- interfere with LSV‘s OTB mark (the ‘664 Registration). Alfliough both marks are word marks and
`are used in connection with class 25 goods (apparel), there is a significant difference in that the
`middle letter is different - a “V” verses a “T,” wherein these letters are visually very different. In
`a class where consumers are known to recognize any and all differences in manufactures, we believe
`that there also is no confusion or likelihood of confusion with these two word marks.
`
`Notwithstanding the above, TSI is not interested in entering into litigation with LSV
`.
`and would like to amicably settle this matter. Please contact me at your earliest convenience so that
`we may discuss this matter in greater detail and explore the available options for settlement.
`
`Thank you for your cooperation in this matter. I look forward to hearing from you.
`
`Very truly yours,
`
`
`
`Meg D Dortenzo
`
`MDD
`cc:
`
`T-Shirt International, Inc.
`
`886730/0000 I
`
`CL79S975. I
`
`

`
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`ATTORNEYS AT LAW
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`dortenmd@steptoe-johnson.eom
`
`December 19. 2002
`
`Via Hand Delivery
`
`Samuel L. Kay, Clerk
`US District Court for the
`
`Southern District of WV
`
`Room 2400, US. Courthouse
`Charleston, WV 25301
`
`Re:
`
`T—ShiIt Int'l v. LSV Worldwide Ltd
`Civil Action No.: 3-002-1 130
`
`
`U.S. DE‘‘ct Court for the Noflgg District gf West Egg‘' ‘Q
`
`Dear Mr. Kay:
`
`Please find enclosed for filing, an original and three copies of “Amended
`Complaint For Declaratory Judgment.” Please date stamp one copy and return to the courier.
`We will be forwarding a date stamped copy along with the original complaint and summons to
`defendant's counsel. who today agreed to accept service.
`
`Should you have any questions. please do not hesitate to contact me at the number
`
`listed above.
`
`Venj truly yours.
`
`pm? 27 49‘~e~4#
`
`Megan D. Dortenzo
`
`MDD
`
`Enclosure
`
`cc (w/encl.): T. Walroth. TSI
`Glenn F. Ostrager, Esquire
`
`886730/0000!
`
`cmosm
`
`Exhibit B
`
`

`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF WEST VIRGINIA
`
`T-SHIRT INTERNATIONAL, INC.,
`a West Virginia non-profit corporation,
`
`Plaintiff,
`
`V.
`
`L.S.V. WORLDWIDE LTD.,
`
`a Delaware corporation,
`
`Defendant.
`
`CIVIL ACTION NO.: 3:02-1130
`
`AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
`
`Jurisdiction and Venue
`
`1.
`
`The plaintiff T-Shirt International, Inc. (“TSI”), is a West Virginia
`
`corporation, having its principal place of business in Culloden, West Virginia.
`
`2.
`
`The defendant, L.S.V. Worldwide Ltd.
`
`(“LSV”),
`
`is a Delaware
`
`corporation, having its principal place of business in New York City, New York.
`
`3.
`
`This Complaint arises under the trademark and unfair competition laws
`
`ofthe United States, title 15 U.S.C. §§105l et seq. , the Lanham Act §§l, et seq. Therefore, this
`
`Court has subject matter jurisdiction pursuant to 28 U.S.C. §§l331, 133 8, 2201, and 2202.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §139l.
`
`CL820667.l
`
`

`
`-u
`
`4.
`
`This Court has supplemental subj ect matterjurisdiction under 28 U.S.C.
`
`§1367.
`
`COMMON ALLEGATIONS
`
`5.
`
`TSI hereby incorporates by this reference the allegations of paragraphs
`
`1 through 4 as if set forth fully herein.
`
`6.
`
`LSV is the owner of the federally registered trademarks (collectively,
`
`“LSV Marks”):
`
`a.
`
`ONE TOUGH BRAND OTB (stylized mark), having federal
`
`registration number 2,452,866; and
`
`b.
`
`OTB (word mark), having federal registration number 2,490,664.
`
`A copy of the federal registrations are attached hereto as Exhibits A and B
`
`respectively.
`
`7.
`
`TSI is the owner of the pending, federal
`
`trademark applications
`
`(collectively, “TSI Marks”):
`
`a.
`
`OLD VARSITY BRAND (word mark), having federal serial
`
`number 78/069,711;
`
`b.
`
`c.
`
`OVB (word mark), having federal serial number 78/069,732; and
`
`OLD VARSITY BRAND O.V.B. mark (stylized mark), having
`
`federal serial number 78/196,233.
`
`A copy of the pending, federal applications are attached hereto as Exhibits C,
`
`D, and G respectively.
`
`CL820667. l
`
`

`
`8.
`
`On August 21,2002, LSV sent a cease and desist letter to TSI in which
`
`LSV asserted its objections to certain pending applications of the TSI Marks. A copy of the
`
`August 21, 2002 letter is attached hereto as Exhibit E. LSV further asserted in the letter that
`
`due to the similarity of the TSI Marks and the LSV Marks, there is a substantial likelihood of
`
`consumer confusion giving rise to both federal trademark infringement and dilution, and
`
`entitling LSV to injunctive relieve and monetary damages against TSI.
`
`9.
`
`Prior to being made aware of any objections by LSV, TSI had invested
`
`considerable time, effort, and resources in determining that it could use its TSI Marks in
`
`connection with unisex casual clothing. TSI has incurred substantial expenses in connection
`
`therewith, including, but not limited to, costs associated with manufacturing, marketing, and
`
`contracts for advertising.
`
`10.
`
`In a letter dated September 6, 2002, TSI responded to the cease and desist
`
`letter stating its position that there is no, nor is there a likelihood of, confusion between the use
`
`' of the TSI Marks and the LSV Marks due to the differences in the marks and the purchase
`
`habits of fashion-conscious consumers. A copy of the September 6, 2002 letter is attached
`
`hereto as Exhibit F.
`
`l 1.
`
`TSI’s use of the TSI Marks does not infringe the registered LSV Marks,
`
`nor does such use dilute the LSV Marks. As evidenced by the cease and desist letter served on
`
`TSI and the threats and demands made therein, there is an actual controversy within the
`
`meaning of 28 U.S.C. §2201 for purposes of this declaratory judgment action. TSI will be
`
`CL820667.l
`
`

`
`
`
`harmed ifit is forced to proceed with its business without a clear declaration ofits non-infringement.
`
`12.
`
`As TSI is anxious to resolve this dispute, it is filing this current action.
`
`FIRST CAUSE OF ACTION
`
`(Declaratory Judgment of No Federal Trademark Infringement)
`
`13.
`
`TSI hereby incorporates by this reference the allegations of paragraphs
`
`1 through 12 as if set forth fully herein.
`
`14.
`
`TSI’s Marks do not infringe LSV’s federally registered trademarks:
`
`ONE TOUGH BRAND OTB (stylized mark), having federal registration number 2,452,866,
`
`and OTB (word mark), having federal registration number 2,490,664.
`
`15.
`
`TSI is entitled to a judgment declaring that TSI has not infringed the
`
`LSV’s Marks.
`
`SECOND CAUSE OF ACTION
`
`(Declaratory Judgment of No Federal Unfair Co