TTAB
`
`Docket No. 12838-156
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Registration No. 2,637,124 of Jada
`Toys, Inc.
`
`Cancellation No. 92-042756
`
`P TO SUSPEND
`
`THE CANCELLATION
`
`Registrant.
`
`Petitioner,
`
`v.
`
`Jada Toys, lnc.,
`
`TO: Commissioner for Trademarks
`
`ATTN: Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3514
`Pursuant to 37 C.F.R. § 2.‘r17(aj,
`
`(
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`moves to suspend the Cancellation proceeding listed above (the ‘‘Cancellation’’) on the
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`grounds that Petitioner and Registrant Jada Toys, Inc. (“Registrant”) are engaged in a
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`civil case that will be dispositive of these proceedings. This motion is supported by the
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`accompanying Memorandum in Support of the Motion to Suspend (“Memorandum”) and
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`such other papers and arguments as may be presented to the Board.
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`Respectfully submitted,
`
`MANATT, PHELPS & PHILLIPS, LLP
`
` Date: July 23, 2004
` . Pietrini
`
`By:
`
`55 West Olympic Boulevard
`L Angeles, California 90064
`Phone:
`(310) 312-4000
`Facsimile: (310) 312-4224
`
`1
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`llllllllllllIlllllllllllllllllllllllllllllllllllll
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`07-26-2004
`U.S. Patent 8: TMOfcITM Mail Rcpt Dt. #72
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`

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`MEMORANDUM IN SUPPORT OF MOTION TO SUSPEND
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`Petitioner submits the following Memorandum in support of its motion to suspend
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`the proceedings.
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`1.
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`INTRODUCTION
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`Petitioner is owner of multiple registrations for the mark HOT WHEELS for toys,
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`especially toy vehicles, in Class 28, and has used the mark since July 20, 1967.
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`Petitioner also uses the mark HOT RODS for activity toys, namely, snap together
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`construction toys.
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`Petitioner filed _its Notice of Cancellation against U.S. Registration No. 2,637,124
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`for HOT RIGZ in Class 28 on December 11, 2003.
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`On April 14, 2004, Registrant filed a federal court infringement action against
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`Petitioner alleging trademark infringement of U.S. Registration No. 2,740,026 for
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`OLDSKOOL in Class 28, as well as for false designation of origin and unfair competition
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`in the United States District Court for the Central District of California (the “Civil Action”).
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`Petitioner then filed an answer and counterclaims for cancellation of U.S. Registration
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`No. 2,740,026, and of U.S. Registration No. 2,637,124, the subject of the Cancellation,
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`as well as federal and state trademark infringement, false designation of origin, dilution,
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`injury to business reputation, passing off and copyright infringement on June 2, 2004.
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`The Civil Action is designated as Case No. CV04-2755 RGK (FMOX), and a true and
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`correct copy of the Answer and Counterclaim in the Civil Action is attached hereto as
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`Exhibit A. Because the Civil Action will be dispositive of the Cancellation, Petitioner
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`respectfully requests that the Cancellation be suspended pending resolution of the Civil
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`Action.
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`

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`II.
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`THE MOTION TO SUSPEND SHOULD BE GRANTED
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`Under 37 C.F.R. § 2.117(a), “[w]henever it shall come to the attention of the
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`Board that parties to a pending case are engaged in a civil action which may be
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`dispositive of the case, proceedings before the Board may be suspended until
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`termination of the civil action.” Here, the Civil Action is clearly dispositive of these
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`proceedings, as all of the issues to be determined by the Board here are identical to
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`those the U.S. District Court will decide in the Civil Action, although the remedies
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`available to Petitioner in the Civil Action are broader than in the Cancellation.
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`Specifically, the two elements Petitioner must show in these proceedings are: (1)
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`priority of use; and (2) Registrants mark is likely to be confused with Petitioner’s HOT
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`WHEELS marks. TBMP 309.03(c)(A); 15 U.S.C. § 1052(d).
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`In the relevant counts of
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`the Civil Action, Petitioner must show, first, that it used its HOT WHEELS marks first
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`and, second, that Registrants use of HOT RIGZ is likely to cause confusion. Universal
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`Sewing Machine Co., Inc. v. Standard Sewing Equipment Corporation, 185 F. Supp.
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`257, 262 (S.D.N.Y. 1960).
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`In other words, in the Civil Action Petitioner will have to
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`establish: (1) priority of use; and (2) Registrants HOT RIGZ mark is likely to be
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`confused with Petitioner’s HOT WHEELS marks. Therefore, the issues here are
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`identical to those to be litigated in the Civil Action.
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`While the Board is just as capable of deciding the priority of Petitioner’s HOT
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`WHEELS marks, and whether there is a likelihood of confusion between Petitioner’s
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`and Registrants marks as the U.S. District Court that will decide the Civil Action, it
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`should not do so here for three reasons.
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`

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`First, and most importantly, if the Board were to suspend this Cancellation and
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`allow the U.S. District Court to rule first, the U.S. District Court’s decision would be
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`binding on the Board under the doctrines of res judicata and collateral estoppel.
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`Mother's Restaurant Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 1569-73 (Fed. Cir.
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`1983) (collateral estoppel); Midland Cooperatives, Inc. v. Midland International Corp.,
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`421 F.2d 754, 758-59 (C.C.P.A. 1970) (res judicata).
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`By contrast, if the Board were to decide any of these proceedings before the U.S.
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`District Court decides the Civil Action, the Board’s findings could be challenged in the
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`Civil Action, or in another civil action in another federal district court. 15 U.S.C. §
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`1071 (b). Similarly, whereas the Board may only decide issues relating to the
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`registration of trademarks, as opposed to the use of trademarks, federal district courts
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`may rule on both use and registration. 15 U.S.C. § 1119; PHC, Inc. v. Pioneer
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`Healthcare, Inc., 75 F.3d 75, 79 (1st Cir. 1996). Therefore, in the interest of judicial
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`economy, the Board should suspend the Cancellation. A ruling by the U.S. District
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`Court in the Civil Action will control the outcome of the Cancellation, but not vice versa.
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`Second, allowing this matter to be resolved by the Civil Action promotes not only
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`judicial efficiency, but also allows the parties themselves to resolve this dispute in the
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`most efficient matter possible. The fundamental issues in the Cancellation are identical
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`to many of the issues in the Civil Action, as described above.
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`If the Cancellation is
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`suspended pending the disposition of the Civil Action, the parties will not need to
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`unnecessarily expend resources, as they will be able to resolve this matter by fighting
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`the proverbial “battle” on one front instead of two. Thus, suspending the Cancellation
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`

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`will not prejudice either party, as it will allow the parties to resolve this dispute while
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`expending the least amount of resources.
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`Third, this case should be suspended to avoid inconsistent rulings between the
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`Board and the U.S. District Court — especially since the U.S. District Court’s decision
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`will ultimately be binding on the Board.
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`III. CONCLUSION
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`For the reasons stated herein, the Board should suspend the Cancellation
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`pending the outcome of the Civil Action. Should the Board deny Petitioner’s motion to
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`suspend, Petitioner respectfully requests the Board to reset the discovery and testimony
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`periods. 37 C.F.R. § 2.121 (a)(1).
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`Respectfully submitted,
`
`MANATT, PHELPS & PHILLIPS, LLP
`
`
`
` . Pietrini
`55 West Olympic Boulevard
`Angeles, California 90064
`(310) 312-4000
`Attorney for Petitioner
`MATTEL, INC.
`
`Date: July
`
`2004
`
`

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`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United
`States Postal Service as Express Mail, Label No. EL 841940424US, in an envelope
`addressed to: Commissioner of Patents and Trademarks, Trademark Trial and Appeal
`Board, 2900 Crystal Drive, Arlington, Virginia 222
`-3513 on this 23'“ day of July, 2004.
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that this Petitioner’s Motion To Suspend Proceedings is being
`deposited as first-class mail in an envelope addressed to: Mitchell N. Ranis, Buchalter,
`Namer, Fields & Younger, 601 South Figueroa Street, Suite 2400, Los Angeles,
`California 90017-5704 on this 23”’ day of July,
`04.
`
`40774609. 1
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`aria Me
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`

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`I\_/Ianatt, 1f‘he_1ps & Phillips LLP
`J1IlM.P1etr1n1 (Bar No. (is. 138335)
`Shar_1 Mulrooney Wollman Bar No. CA 11’I[1l4\21);3 ,
`Jessxca J. S1usser(Bar No. A 217307)
`11355 West 01 In ic Boulevard
`Los Angeles, A 0064-1614
`Telephone:
`310 312-4000
`Facs1m11e:
`310 312-4224
`
`2 Pf‘! 1,.-0241
`CI.Em:.' us W-
`CE?‘-’7'F: rulj ;');:2'T'
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`
`53 3“:..,,___
`
`Attorne s for Defendant and Counterclaimant
`MA
`L, INC.
`’
`
`UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
`
`No. cx/04-2755 RGK (FMOX)
`
`ANSWER AND COUNTERCLAIM
`
`DEMAND FOR JURY TRIAL
`
`
`
`JADA 'I‘_OYS, INC., a Cahfomia
`corporanon,
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`Plaintiff,
`
`VS.
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`MATTEL, INC., a Delaware
`corporation,
`
`
`
`
`
`Defendant.
`
`J
`
`MATTEL, INC., 21 Delaware
`corporatxon,
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`Counterclajmant,
`
`vs.
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`JADA T_OYS, INC.,aCa1ifomia I
`corporauon,
`~
`Counterdefendant.
`
`
`
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`Defendant/Counterclaimant Mattel, Inc. (“Mattel”), in response to the
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`Complaint filed by Plaintiff/Ciounterdefendant Jada Toys, Inc. (“Jada”), hereby
`admits, denies, alleges and counterclaims as follows:
`
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`28
`MANATT, PHELPS 4;
`PHILLIPS, LLP
`Anolulvs A1 Law
`ms ANGELIM
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`

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`FIRST CLAIM
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`(Trademark Infringement)
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`1.
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`Mattel admits that Jada is a California corporation, but is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining
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`allegations of paragraph 1 of the Complaint, and therefore denies the same.
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`2.
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`3.
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`Mattel admits the allegations of paragraph 2 of the Complaint.
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`In response to paragraph 3 of the Complaint, Mattel admits that Jada
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`has filed an action for trademark infringement and asserts jurisdiction based on a
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`federal question and diversity. Mattel denies the remaining allegations in
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`Paragraph 3.
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`rise to J ada’s claims.
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`5.
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`Mattel is without knowledge or information sufficient to form a belief
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`as to the truth of the allegations contained in paragraph 5 of the Complaint, and
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`therefore denies the same.
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`6.
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`Mattel admits that Jada is listed as the registered owner of U.S.
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`Registration No. 2,740,026, but is without knowledge or information sufficient to
`form a belief as to the truth of the remaining allegations of paragraph 6 of the
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`Complaint, and therefore denies the same.
`7.
`Mattel is without knowledge or information sufficient to form a belief
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`as to the truth of the allegations contained in paragraph 7 of the Complaint, and
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`therefore denies the same.
`8.
`Mattel is without knowledge or information sufficient to form a belief
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`as to the truth of the allegations contained in paragraph 8 of the Complaint, and
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`therefore denies the same.
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`9.
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`Mattel denies the allegations contained in paragraph 9 of the
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`Complaint.
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`ll
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`MANATT, PHELPS 5:
`PHILLIPS, LLP
`ATTORNEYS AT LAW
`Los ANGEL!-:5
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`

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`10. Mattel is without knowledge or information sufficient to form a belief
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`as to the truth of the allegations contained in paragraph 10 of the Complaint, and,
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`therefore, denies the same.
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`11. Mattel admits the allegations of paragraph 11 of the Complaint.
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`12. Mattel admits that it offers toy vehicles under its HOT WHEELS
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`trademarks, the packaging for which bear the terms “old school” or “new school,”
`and that it advertises its HOT WHEELS line on its hotwheels.com and mattel.com
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`websites. Mattel denies the characterization of the packaging and size of its toy
`Vehicles as indicated in paragraph 12 of the Complaint and denies the remaining
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`allegations in Paragraph 12.
`13. Mattel denies the allegations contained in paragraph 13 of the
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`Complaint.
`14. Mattel admits that Mattel and Jada are competitors with respect to die
`cast toy vehicles. Mattel admits that Jada attached documents as Exhibits 2 and 3
`to the Complaint. As to the remaining allegations in paragraph 14, Mattel is
`without knowledge or information sufficient to form a belief as to the truth of such
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`allegations and, therefore, denies the same.
`15. Mattel denies the allegations contained in paragraph 15 of the
`
`Complaint.
`16. Mattel admits that it has the right to continue to use the terms “old
`school” and “new school” to identify and describe the age, time period, and style of
`its toy Vehicles. Mattel denies the remaining allegations contained in paragraph 16
`
`of the Complaint.
`17. Mattel admits that it has the right to continue its use of the terms “old
`school” and “new school” to identify and describe the age, time period, and style of
`its toy Vehicles. Mattel admits that Jada attached a copy of its demand letter to
`Mattel as Exhibit 4. Mattel denies the remaining allegations contained in paragraph
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`17 of the Complaint.
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`MANATT, PHELPS &
`PHILLIPS, LLP
`ATTORNEYS AT LAW
`Los ANCELE5
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`18. Mattel denies the allegations contained in paragraph 18 of the
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`Complaint.
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`SECOND CLAIM
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`(False Designation of Origin)
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`19.
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`Mattel restates and incorporates by reference its responses to the
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`allegations contained in paragraphs 1-18 of the Complaint.
`Mattel denies the allegations contained in paragraph 20 of the
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`20.
`
`Complaint.
`21. Mattel denies the allegations contained in paragraph 21 of the
`
`Complaint.
`22. Mattel denies the allegations contained in paragraph 22 of the
`
`Complaint.
`23. Mattel denies the allegations contained in paragraph 23 of the
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`Complaint.
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`THIRD CLAIM
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`(Common Law Unfair Competition)
`24. Mattel restates and incorporates by reference its responses to the
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`allegations contained in paragraphs 1-18 of the Complaint.
`Mattel admits that it has the right to continue its use of the terms “old
`25.
`school” and “new school” to identify and describe the age, time period, and style of
`its toy Vehicles, and that Jada also sells die cast toy vehicles. Mattel denies the
`remaining allegations contained in paragraph 25 of the Complaint.
`26. Mattel denies the allegations contained in paragraph 26 of the
`
`Complaint.
`27. Mattel denies the allegations contained in paragraph 27 of the
`
`Complaint.
`28. Mattel denies the allegations contained in paragraph 28 of the
`
`Complaint.
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`MANATT, PHELPS 8:
`PHILLIPS, LLP
`ATTORNEYS AT LAW
`L05 A NCELE5
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`,[ADA’S PRAYER FOR RELIEF
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`Mattel denies that Jada is entitled to any of the relief requested in its Prayer,
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`and demands: (a) judgment for Mattel and against Jada on all of Jada’s claims; (b)
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`dismissal with prejudice of all of Jada’s claims; (c) an award of Mattel’s costs
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`herein, and Mattel’s reasonable attorneys’ fees; and (d) such other relief as the
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`Court deems just and proper. In addition, Mattel prays for all of the relief requested
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`in its Prayer for Relief associated with Mattel’s Counterclaims, set forth herein.
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`FIRST AFFIRMATIVE DEFENSE
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`(Failure to State a Claim)
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`29.
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`The Complaint fails to state a claim upon which relief may be granted.
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`SECOND AFFIRMATIVE DEFENSE
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`(Unclean Hands)
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`30.
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`Jada may not enforce its alleged trademark rights, if any, because its
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`claims are barred by the doctrine of unclean hands.
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`THIRD AFFIRMATIVE DEFENSE
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`(Privileged Actions)
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`31.
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`All of Mattel’s actions were and are fair, privileged and justified.
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`FOURTH AFFIRMATIVE DEFENSE
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`(No Damage to Jada)
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`32.
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`Jada has not suffered any loss or damage of any kind or character as a
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`result of Mattel’ s conduct or any failure to act by Mattel.
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`FIFTH AFFIRMATIVE DEFENSE
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`(No Trademark Rights)
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`33.
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`Jada does not own any rights in or to the terms “old skool” or “old
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`school” as trademarks.
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`26
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`/ / /
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`27
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`/ / /
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`/ / /
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`28
`MANA'rr, PHELPS 8:
`PHILLIPS, LLP
`ATTORNEYS AT LAW
`Los ANGELE5
`
`5
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`

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`SIXTH AFFIRMATIVE DEFENSE
`
`(Fair Use)
`
`34.
`
`Pursuant to 15 U.S.C. § ll15(b)(4), the terms “old school” and “new
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`school” are descriptive and used by Mattel fairly and in good faith only to describe
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`its goods.
`
`SEVENTH AFFIRMATIVE DEFENSE
`
`(Abuse of Process)
`
`35.
`
`Jada’s Complaint is a retaliatory act in response to cancellation
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`proceeding number 92—O42756 currently pending before the U.S. Patent and
`Trademark Office (“PTO”) Trademark Trial and Appeal Board (“TTAB”), wherein
`Mattel petitioned to cancel Jada’s registration of the infringing trademark HOT
`RIGZ in View of Mattel’s famous HOT WHEELS Marks and HOT WHEELS
`
`Flame Logos.
`
`EIGHTH AFFIRMATIVE DEFENSE
`
`(Descriptive Words)
`
`36.
`Jada’s alleged trademark OLD SKOOL is descriptive, without
`secondary meaning and therefore invalid, and its registration thereof should be
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`canceled on that basis.
`
`NINTH AFFIRMATIVE DEFENSE
`
`(Generic)
`
`37.
`The term “old skool” is generic to identify old items or ideas, and
`Jada’ s alleged trademark OLD SKOOL is invalid and its registration thereof should
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`be canceled on that basis.
`
`v-n>—ar—ar—->-A»-—x»—-n»—x»—s;...i
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`COUNTERCLAIMS
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`These counterclaims are brought by Defendant/Counterclaimant Mattel
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`against Plaintiff/Counterdefendant Jada, and allege as follows:
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`26
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`27
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`28
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`MANATT, PHELPS &
`PHILLIPS, LLP
`ATTORNEYS AT LAW
`LOS ANGELES
`
`

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`,! QRISDICTION AND VENUE
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`38.
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`This action arises under the laws of the United States. This Court has
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`federal question jurisdiction over this matter pursuant to 15 U.S.C. § 1121 and 28
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`U.S.C. §§ 1331 and 1338, and diversity jurisdiction under 28 U.S.C. § 1332(a) in
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`that the parties are citizens of different states and the amount in controversy
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`exceeds $75,000.
`
`39. Venue is proper in this Court pursuant to the allegations in Jada’s
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`Complaint and 28 U.S.C. § l391(a) in that according to the Complaint, a substantial
`part of the events giving rise to the claims occurred in this judicial district, and
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`because Jada claims to do business within this judicial district.
`
`PARTIES
`
`40. Defendant/Counterclaimant Mattel is a Delaware corporation having
`
`its principal place of business in El Segundo, California.
`41. Upon information and belief, and according to the allegations in the
`Complaint, Plaintiff/Counterdefendant Jada is a California corporation having its
`
`principal place of business in City of Industry, California.
`FACTS
`
`A.
`
`Background on Mattel
`
`42. Mattel is a manufacturer of consumer products and is a significant
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`independent manufacturer and marketer of toys, games, dolls, stuffed toys and
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`animals, and playthings in the United States and abroad.
`43. Mattel was founded in 1945 by Elliot and Ruth Handler and Harold
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`“Matt” Mattson. The name of the company was created by incorporating the names
`
`of two of its founders, “Matt”—son and “El”-liot. Originating from the Handler’s
`garage, the company greatly expanded its operation following World War II and
`soon began to thrive as its reputation for producing high—quality toys spread.
`During the next several decades, Mattel became world—famous for producing,
`and/or acquiring and then distributing, high—quality toys at reasonable prices.
`
`7
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`28
`MANATT, PHELPS &
`PHILLIPS, LLP
`ATTORNEYS AT LAW
`LOS ANGELES
`
`

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`B. Mattel’s Famous HOT WHEELS Brand
`
`44. Among Mattel’s most prominent brand is its HOT WHEELS
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`trademarks in various forms (collectively the “HOT WHEELS Marks”). Mattel
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`began marketing toy vehicles under the HOT WHEELS Marks in or around 1967.
`Since their creation and sale, the HOT WHEELS product line has been enormously
`
`successful.
`
`45.
`
`In 1968, Mattel created the distinctive flame logo for its HOT
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`WHEELS goods and services. A few years later, Mattel created a flame logo with
`the MATTEL seal trademark in it. This HOT WHEELS flame logos (the “HOT
`
`WHEELS Flame Logos”) are shown below:
`
`
`
`rights in this mark. In addition, Mattel owns a U.S. federal trademark registration
`for this mark, Registration No. 884,563. U.S. Registration No. 884,563 is valid and
`subsisting, and is now incontestable for use with miniature toy cars. Mattel also
`owns trademark registrations of its flame logo with the Mattel seal, and those
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`registrations are also valid and subsisting.
`47.
`In addition to this registration, Mattel owns 25 federal trademark
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`registrations of its HOT WHEELS Marks in various forms and 18 applications to
`register its HOT WHEELS Marks in various forms. Several of Matte1’s HOT
`WHEELS trademark registrations are incontestable and all of them are valid and
`subsisting. Mattel also owns several international trademark registrations of its
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`ATTORNEYS AT LAW
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`HOT WHEELS Marks in various forms and owns several domain names containing
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`the HOT WHEELS Marks.
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`48.
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`Continuously and without interruption, since the first use of the HOT
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`WHEELS Marks and the HOT WHEELS Flame Logos, Mattel has expended a
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`great deal of time, effort, and money in the promotion of these marks. Through
`extensive advertising, both nationally and worldwide by Mattel, the HOT WHEELS
`Marks and Logos and associated products have become famous throughout the
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`United States and worldwide.
`49.
`Because of Mattel’s extensive promotional activities involving the sale
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`of the HOT WHEELS branded products bearing the HOT WHEELS Marks and the
`HOT WHEELS Flame Logos, the public has come to recognize products bearing
`the HOT WHEELS Marks and Logos as quality novelty items produced and
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`distributed by Mattel and its licensees.
`50.
`The HOT WHEELS Marks and the HOT WHEELS Flame Logos are
`distinctive to Mattel’s HOT WHEELS products and, over the years, have acquired a
`strong secondary meaning. The public recognizes the HOT WHEELS Marks and
`Logos as distinguishing Mattel’s products from the goods and services of others.
`As a further consequence of their advertising, marketing, and promotional efforts,
`and the high quality maintained for Mattel’ s products, the HOT WHEELS Marks
`and Logos have come to be, and are now, well—known amongst the public. As a
`result, Mattel has strong trademark rights in the HOT WHEELS Marks and the
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`HOT WHEELS Flame Logos.
`51. Mattel owns 59 federal copyright registrations of its packaging
`associated with its HOT WHEELS products, and such registrations are valid and
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`subsisting.
`
`C. Mattel’s Use Of Its Trademarks
`52. Mattel is constantly updating and re—creating its HOT WHEELS
`products. Mattel continuously chooses new trademarks and descriptive words to be
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`used in connection with new lines of toys. Some words are used as trademarks, if
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`they are distinctive and intended to indicate that the source of the goods is Mattel.
`Other words are simply used in their descriptive sense to suggest a quality or
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`feature of the product itself. On the HOT WHEELS products that incorporate a
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`descriptive term on thetpackaging to signify a certain quality or feature of the
`products, the trademarks that indicate to the public that the source of the goods is
`Mattel are the HOT WHEELS Marks, the HOT WHEELS Flame Logos, and often
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`the MATTEL trademark and/or the MATTEL seal trademark.
`
`53.
`
`Mattel adopted the terms “old school” and “new school” for one of its
`HOT WHEELS lines of toy vehicles as descriptive and/or generic terms to identify
`and describe certain qualities, such as the age, time period, and style of the vehicles.
`Mattel only uses the terms “old school” on late model cars, and often includes the
`year of the car on the package. On the other hand, Mattel only uses the term “new
`school” to identify and describe recent models of vehicles.
`
`E.
`
`54.
`
`Jada’ s Unlawful Conduct
`
`Jada has asserted trademark rights against Mattel for Mattel’s fair use
`
`55.
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`of the descriptive terms “old school” and “new school”.
`Jada’s acts have been committed maliciously, willfully and wantonly
`to deprive Mattel of its right to fair use of the terms “old school” and “new school”
`and the complained of acts were done with reckless disregard for the rights of
`Mattel, and Mattel was thereby damaged and continues to be damaged.
`Upon information and belief, Jada is currently making, selling and
`advertising miniature toy cars (the “Infringing Goods”) bearing the trademark HOT
`RIGZ with a flame logo (the “HOT RIGZ Mar ”), which is confusingly similar to
`Mattel’s HOT WHEELS Marks and Flame Logos. The HOT RIGZ Mark is shown
`
`56.
`
`below:
`
`
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`MANATT, PHELPS &
`PHILLIPS, LLP
`ATTORNEYS AT LAW
`L05 A NGELES
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`57. Upon information and belief, the Infringing Goods are being sold by
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`the following distributors in the U.S.:
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`1 Stop Diecast, Torrance, CA; Adkins
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`Collectibles, Franklin, WI; Asheville Diecast, Asheville, NC; Collectable Diecast,
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`Alhambra, CA; Galaxy Distributors, Bohemia, NY; Great Planes, Champaign, IL;
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`Hobby Shack, Fountain Valley, CA; Hungates, Greenville, NC; IMEX,
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`Brooksville, FL; Marlin Dist., Kapolei, HI; Motorsport Marketing, lnc., Grandview,
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`MO; Stevens International, Magnolia, NJ; Talkin’ Sports, Anaheim, CA, Phoenix,
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`AZ, San Jose, CA, and Everett, WA.
`
`58. Upon information and belief, the Infringing Goods are being sold by
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`distributors in the following countries: Australia, Canada, Europe, New Zealand,
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`and Puerto Rico — all territories in which Mattel owns trademark rights for its HOT
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`WHEELS Marks and HOT WHEELS Flame Logos.
`
`59.
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`Jada is not authorized to use the HOT WHEELS Marks and Flame
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`Logos, any colorable imitations thereof, any marks substantially indistinguishable
`from those marks, or any marks confusingly or substantially thereto, to identify
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`Jada’s toy cars or any other goods or services.
`60. Upon information and belief, Mattel alleges that at all relevant times,
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`Jada was aware of Mattel’s proprietary interest in the distinctive and unique
`
`trademarks and copyrights associated with the HOT WHEELS Marks and Flame
`Logos, and willfully and intentionally copied Mattel’s trademarks and copyrights.
`61.
`Jada’s acts have injured and are likely to injure Mattel’s business and
`
`business reputation, because, among other things, there is a likelihood of confusion
`between the HOT RIGZ Mark and the HOT WHEELS Marks and the HOT
`
`WHEELS Flame Logos.
`
`[0 ON
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`///
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`///
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`///
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`MANATT, PHELPS &
`PHILLIPS, LLP
`ATTORNEYS AT LAW
`LOS ANGELES
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`FIRST COUNTERCLAIM
`(Cancellation of OLD SKOOL Registration Under 15 U.S.C. § 1064)
`
`62. Mattel hereby incorporates by reference the statements and allegations
`
`contained in paragraphs 1-61 as if fully stated herein.
`
`63. According to PTO records, Jada has received U.S. Registration No.
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`2,740,026 for the words OLD SKOOL, issued on July 22, 2003 for miniature die
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`cast toy cars, trucks and vehicles in Class 28.
`64. Mattel believe that it is being damaged by the continued registration of
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`U.S. Registration No. 2,740,026, and hereby petitions to cancel the same.
`65.
`Pursuant to 15 U.S.C. § 1052(e)(1), the alleged OLD SKOOL mark
`
`covered by U.S. Registration No. 2,740,026, when used on or in connection with
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`Jada’s goods, is merely descriptive of them and/or generic.
`66.
`The alleged OLD SKOOL mark covered by U.S. Registration No.
`
`2,740,026, as used on or in connection with Jada’s goods, has not become
`distinctive of Jada’s goods in commerce. Jada has not made substantially exclusive
`and continuous use of the alleged mark in commerce for five years from the date of
`this Counterclaim. The alleged mark covered by U.S. Registration No. 2,740,026
`has not otherwise gained secondary meaning pursuant to 15 U.S.C. § l052(f).
`67.
`Pursuant to 15 U.S.C. § 1064(3), the alleged OLD SKOOL mark
`covered by U.S. Registration No. 2,740,026 is generic for the goods for which it is
`
`registered.
`68. According to the PTO records, no affidavit of continued use or nonuse
`under 15 U.S.C. § 1058 has been filed for U.S. Registration No. 2,740,026, and no
`affidavit of incontestability has been filed pursuant to 15 U.S.C. § 1065, as the
`
`registration was issued less than five years ago.
`
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`Based upon the above enumerated facts, Mattel is and will continue to
`69.
`be damaged by the continued registration of U.S. Registration No. 2,740,026 due to
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`the descriptive and/or generic nature of the alleged mark.
`70. Mattel therefore requests that, pursuant to 15 U.S.C. § 1064, U.S.
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`Registration No. 2,740,026 be canceled.
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`SECOND COUNTERCLAIM
`(Trademark Infringement Under the Lanham Act and Common Law)
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`71. Mattel hereby incorporates by reference the statements and allegations
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`contained in paragraphs 1-70 as if fully stated herein.
`72.
`Jada has used in commerce, without Mattel’s consent, the HOT RIGZ
`Mark, which so resembles Mattel’s HOT WHEELS Marks and Flame Logos that it
`is likely to cause confusion with respect to the source and origin of Jada’s products
`and business and is likely to cause confusion or mistake and to deceive purchasers
`as to the affiliation, connection, or association of Mattel with Jada and/or the sale of
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`its products.
`On information and belief, at the time that Jada began using the HOT
`73.
`RIGZ Mark, it knew of Mattel’s prior adoption, ownership, and widespread use and
`fame of the HOT WHEELS Marks and the HOT WHEELS Flame Logos and knew
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`of the Valuable goodwill and reputation acquired by such marks.
`74.
`Jada’s acts constitute infringement of the HOT WHEELS Marks and
`the HOT WHEELS Flame Logos in violation of the Lanham Act, 15 U.S.C. § 1114
`
`and the common law.
`75.
`As a direct and proximate result of Jada’s wrongful acts, Mattel has
`suffered and continues to suffer and/or is likely to suffer damage to its business
`reputation and goodwill. Jada will continue, unless restrained, to use a mark
`confusingly similar to the HOT WHEELS Marks and the HOT WHEELS Flame
`Logos, and will cause irreparable damage to Mattel. Mattel has no adequate
`
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`PHILLIPS, LLP
`ATTORNEYS AT LAW
`LOS ANGELES
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`remedy at law. Mattel is entitled to an injunction restraining Jada, its officers,
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`agents, directors, subsidiaries, partners, representatives, licensees, related
`companies, assigns, servants, attorneys, employees, and all persons acting in
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`concert with Jada, from engaging in further acts of trademark infringement.
`
`76.
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`Mattel is further entitled to recover from Jada the actual damages that
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`it sustained and/or is likely to sustain as a result of Jada’s wrongful acts. Mattel is
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`presently unable to ascertain the full extent of the monetary damages that it has
`suffered and/or is likely to suffer by reason of Jada’s acts of trademark
`infringement, but on information and belief, alleges that such damages exceed
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`$75,000.
`
`77.
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`Mattel is further entitled to recover from Jada the gains, profits, and
`
`advantages that Jada has obtained as a result of its wrongful acts. Mattel is
`presently unable to ascertain the full extent of the gains, profits, and advantages that
`Jada has realized by reason of its acts of trademark infringement, but on
`
`information and belief, alleges that such damages exceed $75,000.
`Because of the willful nature of Jada’s wrongful acts, Mattel is entitled
`
`78.
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`to an award of treble damages under 15 U.S.C. § 1117 and an award of punitive
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`damages under the common law.
`79. Mattel is also entitled to recover its attorneys’ fees and costs of suit
`
`pursuant to 15 U.S.C. § 1117.
`
`THIRD COUNTERCLAIM
`(False Designation of Origin Under the Lanham Act)
`
`80. Mattel hereby incorporates by reference the statements and allegations
`
`contained in paragraph 1-79 as if fully stated herein.
`81.
`Jada’s actions as alleged herein constitute a false designation of origin
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`in violation of 15 U.S.C. § 1125(a).
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`ATTORNEYS AT LAW
`Los ANGELES
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`82.
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`As a direct and proximate result of Jada’s wrongful acts, Matte