IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`..................................................._-x
`
`REEBOK INTERNATIONAL LTD.,
`Petitioner,
`
`v.
`
`DERRICK E. VAUGHAN,
`
`I
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`'
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`Registrant,
`___________________________________________________-4;
`
`Cancellation no. 92043428
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`REGISTRANT’S MOTION TO SUSPEND CANCELLATION PROCEEDINGS
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`COMES NOW the Registrant, Derrick E. Vaughan, by and through his attorneys,
`
`1
`A
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`'
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`‘Iz
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`I
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`McCarthy Wilson, Richard W. Evans and Michael B. De Troia, pursuant to 37 CFR. §§ 2.127
`
`and 2.117(3) and TBMP § 510.02 and hereby moves to suspend the cancellation proceedings
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`initiated by Petitioner, Reebok International, LTD., and in support thereof, states as follows:
`
`1.
`
`Registrant Derrick E. Vaughan is the owner and registrant of the mark i
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`“DUNKADELIC”, which was applied for in May of 1997 and registered on the supplemental
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`register on June 29, 1999 (Reg. No. 2,258,190). Mr. Vaughan is also the owner and registrant of i
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`the DUNKADELIC logo, which was registered on the principal register on December 5, 2000 A
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`(Reg. No. 2,410,840).
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`i I
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`2.
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`Beginning
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`in
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`1997,
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`the Registrant
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`created
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`and aggressively marketed
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`DUNKADELIC to various sports clothiers, sports organizations, and other companies in an
`
`effort to license DUNKADELIC and the athletic apparel line developed by Registrant.
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`3.
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`Such marketing included the use of products bearing the DUNKADELIC mark at 1
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`various athletic exhibitions.
`
`LAW OFVICE5
`MCCARTHY Wusou
`I00 SOUTH WASHINGTON 51'.
`ROCKVOLLE. MD 20550
`(30!) 762-7770
`
`llllllllllllllmlllllllllllllllllllllllllllllllll
`
`09-09-2004
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`U-5‘ Pltlfll It TMOfc.'TM Mail Flcpt Dr. #22
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`

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`I I
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`Petitioner was one ofthe companies solicited by Mr. Vaughan.
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`Petitioner rejected Mr. Vaughan’s business proposal on February 12, 1998.
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`Despite Mr. Vaughan’s registration of DUNKADELIC on the Supplemental I
`I
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`4.
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`5.
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`6.
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`Register and despite having actual knowledge of Mr. Vaughan’s use of the DUNKADELIC l
`mark, Petitioner introduced into commerce its line of basketball shoes, the Reebok “Dunkadelic” !
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`sneaker in the winter of 2002.
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`7.
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`Petitioner's use of the “Dunkadelic” mark clearly violated state and federal and
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`trademark laws and unfair competition laws.
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`I
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`8.
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`Undersigned counsel promptly sent several cease and desist letters to Petitioner =|
`upon learning of Reebok’s “Dunkadelic” products, which prompted settlement negotiations.
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`il
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`9.
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`On June 12, 2003, Petitioner filed a declaratory judgment action in the Superior J
`r
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`Court of Massachusetts while settlement negotiations were ongoing, asking the Court
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`to r
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`I ! |
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`determine that Petitioner did not infringe Mr. Vaughan’s and Dunkadelic, Inc.’s rights, and, that
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`Petition did not engage in any unfair competition. See Complaint for Declaratory Judgment,
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`attached hereto and incorporated herein as Exhibit A.
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`Mr. Vaughan promptly filed a complaint (which had already been prepared) in the :
`10.
`United States District Court for the Northern District of Maryland, alleging Federal Trademark :
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`l
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`l E
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`Infringement, Federal Unfair Competition, Common Law Unfair Competition, Misappropriation
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`of Advertising Idea, Intentional Interference with Prospective Advantage, Unjust Enrichment,
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`and for Declaratory Judgment.
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`Sic Complaint, attached hereto and incorporated herein as |
`
`Exhibit B.
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`LAW OFFICES
`MCCARTHY WILSON
`I00 sourn WASHINGTON sr.
`RCICKVILLE. MD 20350
`(son 72-7179
`
`
`
`11.
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`Mr. Vaughan removed the Massachusetts action to the U.S. District Court for the
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`District of Massachusetts. See Notice of Removal, attached hereto and incorporated herein as
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`

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`
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`Exhibit C. Mr. Vaughan then moved to transfer the Massachusetts action to the U.S. District ,
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`Court for the District of Maryland. The Court denied Mr. Vaughan’s motion to transfer venue to l
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`Maryland and the U.S. District Court for the District of Massachusetts retained jurisdiction over
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`I
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`this action and all claims and issues to be resolved between the parties. See Opinion and Order,
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`l
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`attached hereto as Exhibit D. As a result, Mr. Vaughan then filed a counterclaim identical to the ;
`t
`complaint previously filed in Federal court in Maryland, asserting claims of Federal Trademark |
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`|
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`[
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`I
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`Infi-ingement, Federal Unfair Competition, Common Law Unfair Competition, Misappropriation '
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`ofAdvertisingIdea,IntentionalInterferencewithProspectiveAdvantage,UnjustEnrichment,
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`I
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`l
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`and for Declaratory Judgment against the Petitioner in this action, Reebok. See Answer and I
`I
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`Counterclaim, attached hereto as Exhibit E.
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`12.
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`l
`.
`.
`.
`.
`.
`.
`On June 1, 2004, Petitioner filed the instant cancellation proceeding seeking to I
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`cancel Mr. Vaughan’s trademark on the gmunds that the mark was fraudulently obtained.
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`l l l l
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`13.
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`The issue before the Board, the validity of Mr. Vaughan’s marks, is identical to .
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`the issues presented by Petitioner’s Declaratory Judgment Complaint and Petitioner’s anticipated II
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`defenses to Mr. Vaughan’s counterclaims in the action currently pending before the U.S. District 1
`I
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`Court for the District of Massachusetts, styled Reebok International, Ltd. V. Dunkadelic, Inc. and I
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`Derrick E. Vaughan, Civil Action No. 03-CV11471-GAO.
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`14.
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`15.
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`In addition to the trademark validity issue, the U.S. District Court will also decide
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`Inlightofthecommonalityofissues,undersignedcounselrequestedconsentfrom
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`'
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`Mr. Vaughan’s various other causes of action as set forth in his Counterclaim.
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`Petitioner to suspend these proceedings pending the outcome of the civil action, but Petitioner
`.
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`has refused to consent to such a suspension.
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`LAW DFYICES
`
`,,._cc,,,,,,,, w,L_,_oN
`IOU SOUTH‘ WASHINGTON ST.
`HOCKVILLE. MD 20850
`(30!) 762-7770
`
`

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`
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`16.
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`Despite Petitioner’s objection, suspension of this proceeding is warranted because |
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`the civil action and this cancellation proceeding involve common legal and factual issues.
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`1
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`17.
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`Moreover, suspension would avoid the undesirable result of the parties litigating I
`
`the same issue in two forums, with potentially inconsistent results, and would minimize waste of
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`both the parties’ and the Board’s resources.
`
`18.
`
`As set forth more fully in the accompanying Brief in Support of Registrant's 1
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`J
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`Motion to Suspend, the Board should suspend this action pending the outcome of the civil action T
`l
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`involving the identical issues currently pending in the U.S. District Court for the District of
`
`Massachusetts, styled Reebok International, Ltd. V. Dunkadelic, Inc. and Derrick E. Vaughan,
`
`Civil Action No. 03-CV11471-GAO.
`
`1 5
`
`Respectfully submitted,
`
`MCCARTHY WILSON
`
`WK
`
`Richard W. Evans
`
`Michael B. De Troia
`
`100 South Washington Street
`Rockville, Maryland 20850
`(301) 762-7770
`Attorneys for Registrant
`
`LAW OFFICES
`MCCARTHY Wu.so~
`I00 SOUTH WASHINGTON 51’.
`aoc»wn.:.:, no eoaso
`i3OIJ 762-7770
`
`

`
`
`
`CERTIFICATE OF MAILING
`
`il l
`
`i l
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`2004, a copy of the *
`I HEREBY CERTIFY that on this Ewday of
`foregoing Motion to Suspend was mailed via first class, postage prepaid to:
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`ATTN: TTAB/No Fee
`
`t/9tt/~
`
`Richard W. Evans
`
`CERTIFICATE OF SERVICE
`~
`
`‘L
`\
`I HEREBY CERTIFY that on this _$r day of S3: 8,2004, a copy ofthe
`foregoing Motion to Suspend was mailed first class, postage prepaid to:
`
`|
`
`Larry C. Jones
`Alston & Bird LLP
`
`101 S. Tryon St., Suite 4000
`Charlotte, NC 28280-4000
`
`Richard W. Evans
`
`l l
`
`H I
`
`I
`
`LAW orrtczs
`MCCARTHY WILSON
`IOO EDUTH WASHINGTON ST,
`ROCKVILLE. MD EDSD
`530” 762-7770
`
`

`
`
`
`,
`
`|
`I
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`‘u
`
`E
`1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_____________________________________________________x
`
`REEBOK INTERNATIONAL LTD.,
`
`'
`
`Petitioner,
`
`v.
`
`DERRICK E. VAUGHAN,
`Registrant,
`___________________________________________________-3}
`
`Cancellation no. 92043428
`
`BRIEFIN SUPPORT OFREGISTRANT’S MOTIONTO SUSPEND
`COMES NOW the Registrant, Derrick E. Vaughan, by and through his attorneys,
`
`McCarthy Wilson, Richard W. Evans and Michael B. De Troia, and files this Brief in Support of
`
`Registrant’s Motion to Suspend.
`
`I.
`
`FACTUAL BACKGROUND
`
`The Registrant, Derrick E. Vaughan (hereinafter “Mr. Vaughan”),
`
`is the owner and
`
`registrant of the mark “DUNKADELIC”, which was applied for in May 1997 and registered on
`
`the supplemental register on June 29, 1999 (Reg. No. 2,258,190). Mr. Vaughan is also the owner
`
`and registrant of the DUNKADELIC logo, which was registered on the principal register on I
`1
`the Registrant created and‘
`
`December 5, 2000 (Reg. No. 2,410,840).
`
`Beginning in 1997,
`
`aggressively marketed DUNKADELIC to various sports clothiers, sports organizations, and
`
`other companies in an effort to license DUNKADELIC and the athletic apparel line developed
`
`I
`by Registrant. Such marketing included the use of prototypes bearing the DUNKADELIC mark I
`
`LAW OFFICES
`MCCARTHY WILSON
`IDO EDUYH WASHINGTON ET.
`ROCKVILLE. MD E0355
`{SCI} ‘#623770
`
`

`
`
`
`I R iI
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`at trade shows and various athletic exhibitions. Petitioner was one of the companies solicited by
`
`Mr. Vaughan. Petitioner rejected Mr. Vaughan’s business proposal on February 12, 1998.
`
`Despite Mr. Vaughan’s registration of DUNKADELIC on the Supplemental Register and
`
`despite having actual knowledge of Mr. Vaughan’s use of the DUNKADELIC mark, having i
`
`rejected Mr. Vaughan’s business proposal, Petitioner introduced into commerce its line of
`
`basketball shoes, the Reebok “Dunkadelic” sneaker, in the winter of 2002. Petitioner’s use of the 1
`
`“Dunkadelic” mark clearly violates state and federal and trademark laws and unfair competition :
`laws.
`I
`
`Undersigned counsel promptly sent several cease and desist letters to Petitioner upon
`
`learning of Reebok’s use of Mr. Vaughan’s “Dunkadelic” mark, which prompted subsequent
`
`settlement negotiations. On June 12, 2003, Petitioner filed a declaratory judgment action in the
`
`Superior Court of Massachusetts while settlement negotiations were ongoing, asking the Court to
`
`determine the legitimacy of Mr. Vaughan’s marks. See generally Exhibit A. Mr. Vaughan
`
`promptly filed a complaint (which had already been prepared) in the United States District Court *
`
`for the Northern District of Maryland, alleging Federal Trademark Infringement, Federal Unfair
`
`I
`Competition, Common Law Unfair Competition, Misappropriation of Advertising Idea,|
`.
`.
`.
`.
`.
`I
`Intentional Interference with Prospective Advantage, Unjust Enrichment, and for Declaratory I
`I
`
`Judgment. See generally Exhibit B.
`
`Mr. Vaughan removed the Massachusetts action to the U.S. District Court for the District E
`
`I I
`
`of Massachusetts. See Exhibit C. Mr. Vaughan then moved to transfer the Massachusetts action
`
`LAW ornczs
`MCCARYHY WILSON
`loo souru WASHINGTON 51.
`FIOCKVILLE. no 20850
`l30l I 762-7770
`
`to the US. District Court for the Northern District of Maryland to consolidate the two pending 1
`
`Federal actions. The Court denied Mr. Vaughan’s motion to transfer venue to Maryland and il
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`retained jurisdiction in the U.S. District Court for the District of Massachusetts. See Exhibit D. I
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`

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`
`
`As a result, Mr. Vaughan filed a counterclaim identical to the complaint filed in Maryland
`
`alleging Federal Trademark Infringement, Federal Unfair Competition, Common Law Unfair {
`Competition, Misappropriation of Advertising Idea, Intentional Interference with Prospective !
`Advantage, Unjust Enrichment, and for Declaratory Judgment. See Exhibit E.
`‘
`On June 1, 2004, Petitioner filed the instant cancellation proceeding seeking to cancel I
`
`Mr. Vaughan’s trademark on the grounds that the mark was fraudulently obtained. Mr. Vaughan 1
`has answered the Petition and denies all allegations that his registrations were fraudulently l
`obtained. The issue before the Board, the validity of Mr. Vaughan’s marks, is identical to the R
`
`issues presented by Petitioner’s Complaint for Declaratory Judgment and Petitioner’s anticipated ‘
`l
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`defenses to Mr. Vaughan’s counterclaims. The U.S. District Court is also faced with deciding
`
`the various other causes of actions set forth in Mr. Vaughan’s counterclaims. Because of the |
`l
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`commonality of the issues and the U.S. District Court’s jurisdiction over all of the various causes t
`l
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`of action set forth in Petitioner’s Complaint and Registrant’s Counterclaim, Registrant now i
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`I i
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`: I
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`moves for this proceeding to be suspended.
`
`ll.
`
`APPLICABLE RULES
`
`Section 2.117 of the Rules of Practice in Trademark Cases governs the suspension of
`
`proceedings in the Trademark Trial and Appeal Board. 37 C.F.R. § 2.117. The Rule provides l
`I
`that the Board may suspend proceedings when it comes to the attention of the Board that there is i
`l
`a civil action that may have bearing on the Board proceedings. 37 C.F.R. § 2.117(3). The Rule l
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`further provides that the Board may suspend the proceedings sua sponte or upon motion or
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`stipulation by the parties. 37 C.F.R. § 2.1 17(a) and (c).
`
`LAW OFFICES
`MCCARTHY WILSON
`100 SOUTH wnsumarcm sr.
`ROCKVILLE. MD 20550
`l3OI| TEE-7770
`
`Section 510.02 of the Trademark Trial and Appeal Board Manual of Procedure provides 1
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`that “[o]rdinarily the Board will suspend proceedings in the case before it
`
`if the final;
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`

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`i 1 4 I | || 3u |
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`determination of the other proceeding will have a bearing on the issues before the Board.” This
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`course of action is usually taken because,
`
`to the extent that Federal court action involves
`
`common issues, “the decision of the Federal district court is binding upon the Board, while the
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`decision of the Board is not binding upon the court.” TBMP, § 510.02.
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`III.
`
`ARGUMENT
`
`ll
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`The issues involved in this case warrant suspension because the civil action that
`
`precipitated this cancellation proceeding is currently pending in Federal district court and the
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`issues involved in both cases are identical. Additionally, the civil action also involves numerous
`
`causes of action beyond the jurisdiction of the Board. For these reasons and the reasons stated ‘
`below, the Board should suspend the instant cancellation proceeding indefinitely.
`i
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`As the Patent and Trademark Office Commissioner and numerous courts have noted, ,
`
`questions involving the validity of trademarks are within the competence of both the Board and
`
`r
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`the district courts. Accordingly, and as stated in 37 C.F.R § 2.117, it is usually proper to suspend E
`proceedings in the Trademark Trial and Appeal Board when a parallel case is pending before a |
`
`United States district court. The reasons for this practice were best stated by the USPTO
`
`‘
`Commissioner in The Other Telephone Company v. Connecticut National Telephone Company,
`Inc., 181 U.S.P.Q. (BNA) 779 (1974), which involved similar circumstances, wherein the !
`
`Commissioner stated the following:
`
`I I 1
`
`“SincetheTrademarkTrialandAppealBoardisanadministrationtribunalvested
`
`with authority to hear and decide only those controversies specifically defined in
`the Trademark Act of 1946 its jurisdiction could not extend to all of the
`controversies in issue in the Federal District Court. Consequently,
`judicial
`economy warrants a consolidation of issues,
`including those which may be
`presented for determination by the Board or which may have a bearing on an issue
`before the Board, into one forum vested with the authority to hear all
`issues
`presented. It is not unreasonable, in such a case, that proceedings be stayed in the
`administrative tribunal pending the final disposition of issues by the other forum.”
`
`i
`
`i,
`
`I.A\V OFFICES
`McC.AR'rHv WILSON
`100 SOUTH WASHINGTON ST.
`ROCKVILLE. MD 20850
`13DIl 762-7770
`
`

`
`
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`at 782.
`
`E
`In this case, there can be no dispute that both the District Court and the Board are faced l
`l
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`with deciding the validity of Mr. Vaughan’s marks. This issue is clearly before both the District
`
`l
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`Court and the Board. Additionally, the District Court is also faced with deciding additional
`claims raised by the Petitioner’s Complaint and Mr. Vaughan’s counterclaims. Thus, it is proper |
`
`for the Board to suspend these proceedings for the very reasons set forth in The Other Telephone I
`Company holding.
`On a similar note, federal courts have addressed the inverse issue when they are faced :
`with a motion to stay their own proceedings when there is parallel litigation in the TTAB. For
`
`example, in American Bakeries Co. v. Pan—0-Gold Baking Co., 650 F.Supp. 563 (1986), the
`United States District Court for the District of Minnesota was faced with deciding whether to i
`stay litigation regarding violations of federal trademark law, state deceptive trade practices law,
`common law trademark and unfair competition law when there were cancellation proceedings E
`pending before the TTAB. The party moving to stay the federal action argued that the doctrine
`of primary jurisdiction required the court to stay the civil action pending the outcome of the C
`
`TTABproceedings.
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`The court held that a stay was improper and that it would retain jurisdiction over the
`various causes of actions, including the alleged trademark violations. In reaching its decision the i
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`I I
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`court considered three factors. First, the court considered the importance of the proceedings and
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`determinations of the TTAB in the federal court proceeding. The court concluded that because
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`i
`the cancellation decision would essentially be heard de novo in the federal action, the TTAB l
`l
`determinations were of little importance. American Bakeries C0,, at 566. Second, the court ,
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`r I ‘
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`.
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`considered the appropriateness of deference to the TTAB’s specialized expertise. The court
`
`LAW DFVICES
`MCCARTHY WILSON
`I00 SOUTH WASHINGTON 5T.
`ROCKVILLE. MD 20850
`(30!) 762-7770
`
`

`
`
`
`I
`concluded that because the standards to be applied in a trademark validity dispute are within the i
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`conventional competence of the courts,
`
`then the doctrine of primary jurisdiction was
`
`inappropriate.
`
`Id. at 567. Finally, the court considered the question of judicial economy. The II
`
`court noted that “interests of judicial economy are best served by eschewing the primary i
`
`jurisdiction objection in cases .
`
`.
`
`. where facts concerning the disputed registration are going to
`
`be litigated in connection with other claims properly with this court’s jurisdiction.”’ Id. at 568
`
`citing Continental Connector Corp. v. Continental Specialties Corp., 413 F.Supp. 1347, 1350
`(D.Conn. 1976).
`In conclusion the court held that:
`
`“The Court of Appeals has cautioned trial courts to ‘be reluctant to invoke the
`doctrine of primary jurisdiction, which often, but not always, results in added
`expense and delay to litigants where the nature of the action deems the application
`of the doctrine inappropriate.’
`In the instant case, a stay is more likely to prolong
`this dispute than lead to its economical disposition.
`.
`.
`. The instant litigation
`includes state claims not before the TTAB and even the federal claims involve
`issues — such as the existence or absence of any intent to infringe — which cannot
`be raised before the TTAB. .
`.
`.
`. A stay would result in a long delay of this action
`and there would be uncertain benefit to these proceedings from the delay.”
`
`I
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`Id.
`
`In essence, the American Bakeries court reasoned that because the court could conclusively '
`
`decide the trademark issues that were also before the TTAB, it was more appropriate to stay the
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`TTAB proceedings rather than staying the civil action.
`
`iF
`In this case, the federal civil action involves not only the validity of Mr. Vaughan’s !
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`marks, but also several other causes of action, including state and federal unfair competition
`
`claims. The Petitioner will likely assert the exact same legal arguments regarding the validity of ‘
`
`the registration of Mr. Vaughan’s marks that it will assert in this proceeding. There is certainly
`
`no point in going forward with these proceedings, when the U.S. District Court for the District of
`
`Massachusetts has already retained jurisdiction to consider and decide the trademark issues and
`
`the other claims. Similarly, the parties and the Board will benefit by forgoing the necessary costs
`
`LAW OFFICES
`MCCARTHY Wuson
`IDO BOLITH WASHINGTON ST.
`ROCKVILLE. HD 20350
`13DI176Z—?77O
`
`

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`I I
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`I I Ii I I II II
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`and expended resources associated with the cancellation proceeding. Moreover, it would be in
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`the interests ofjustice to avoid the possibility of inconsistent findings.
`
`IV.
`
`CONCLUSION
`
`Suspension in this case is warranted because this cancellation proceeding and the US.
`
`District Court case involve common legal and factual issues. This cancellation proceeding was ‘
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`I
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`I I
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`II I
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`II I I
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`instituted well after Petitioner filed its Declaratory Judgment Complaint in the U.S. District
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`Court
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`for
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`the District of Massachusetts, and, after Mr. Vaughan filed his subsequent
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`counterclaims. Section 510.02 of the Trademark Trial and Appeal Board Manual of Procedure
`
`provides that it is customary to suspend Board proceedings when there is another proceeding
`
`pending elsewhere that could have bearing on the issues before the Board. Moreover, the
`
`Commissioner of Trademarks and Patents has held that it is preferable for the Board to stay its
`
`own proceedings where parallel litigation occurs in Federal district courts. Suspension would
`
`avoid duplicitous litigation of the same issues in two forums. Suspension would also avoid the
`
`potential for inconsistent results and would minimize waste of both the parties’ and the Board’s 1
`resources. Moreover, because the U.S. District Court can consider and decide all of the issues in I
`one fell swoop, suspension would serve the interests ofjudicial economy.
`For the aforementioned reasons, Registrant Derrick E. Vaughan respectfully requests that I
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`this Board suspend the cancellation proceedings instituted by Petitioner Reebok pending the
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`outcome of Reebok International, Ltd. V. Dunkadelic, Inc. and Derrick E. Vaughan, Civil Action
`
`No. 03-CV1147l—GAO.
`
`LAW OFFICES
`MCCAFHHY Wu.so~
`I00 SOUTH WASHINGTON 5T.
`nec:wu.:.:. me aoeso
`I30“ 762-7770
`
`

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`
`‘
`é
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`Respectfully submitted,
`
`MCCARTHYWILSON
`
`jzQ~é:
`
`Richard W. Evans
`
`Michael B. De Troia
`
`|l
`
`100 South Washington Street
`
`Rockville,Maryland20850
`
`(301) 762-7770
`Attorneys for Registrant
`
`CERTIFICATE OF MAILING
`
`_
`9-
`*3 day of 3\--3-<3 , 2004, a copy of the
`IHEREBY CERTIFY that on this
`foregoing Brief in Support of Registrant’s Motion to Suspend was mailed via first class,
`|
`I postage prepaid to:
`
`Commissioner for Trademarks
`
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`i I I In
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`{AW OFFICES
`MCCARTHY WILSON
`FOO SOUTH WASHINGTON 5T.
`ROCKVILLE. MD 20350
`IBDII 762-7770
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`\
`
`Richard W. Evans
`
`ATTN: TTAB/No Fee L
`CERTIFICATE OF SERVICE
`I HEREBY CERTIFY that on this __“\{1ay of 3
`
`2004, a copy ofthe
`
`foregoing Brief in Support of Registrant’s Motion to Suspend was mailed first class,
`postage prepaid to:
`
`Larry C. Jones
`Alston &BirdLLP
`
`101 S. Tryon St., Suite 4000
`Charlotte, NC 28280-4000
`
`Richard W. Evans
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`................................................... --x
`
`REEBOK INTERNATIONAL LTD.,
`
`.
`
`Petitioner,
`
`v.
`
`DERRICK E. VAUGHAN,
`Registrant,
`___________________________________________________-4;
`
`Cancellation no. 92043428
`
`ORDER
`
`UPON CONSIDERATION of Registrant Derrick E. Vaughan’s Motion to Suspend, any
`
`opposition thereto, the entire record, and for good cause having been shown, it is this
`
`day
`
`of
`
`, 2004, by the Trademark Trial and Appeal Board of the United States
`
`Patent and Trademark Office, hereby,
`
`ORDERED, that the Motion to Suspend, filed by Registrant Derrick E. Vaughan, be and
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`is hereby GRANTED; and it is further,
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`ORDERED, that the above-captioned matter is hereby SUSPENDED; and it is further,
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`ORDERED, that the Board must be notified in writing within twenty (20) days of the
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`final determination of Reebok International, Ltd. V. Dunkadelic, Inc. and Derrick E. Vaughan,
`
`Civil Action No. 03—CV11471—GAO.
`
`LAW OFFICES
`MCCARTHY WILSON
`loo scum wAsH1NG'I'0N sr.
`nocnvuue. no 20550
`(BOIJ 782-777D
`
`Judge, Trademark Trial and Appeal Board
`
`

`
`
`
`Copies to:
`
`Larry C. Jones, Esquire
`Alston & Bird LLP
`
`101 S. Tryon Street, Suite 4000
`Charlotte, NC 28280-4000
`
`Richard W. Evans, Esquire
`Michael B. De Troia, Esquire
`100 S. Washington Street
`Rockville, MD 20850
`
`LAW DFFICES
`MCCARTHY WILSON
`IOO SOUTH WASHINGTON BY.
`RDCKVILLE. MD 25550
`130“ 762-7770
`
`

`
`
`
`REEBOK INTERNATIONAL, LTD
`
`V.
`
`DERRICK E. VAUGHAN
`
`CANCELLATION NO. 92043428
`
`VAUGHAN EXHIBIT A
`
`

`
`
`
`07/17/03
`_._......_..._.._
`13:41 FAX 41053997?‘
` _. ____.......
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`PERFECT WORD
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`@003
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`I CQPY
`
`COMMONWEALTH OF MASSACHUSETTS
`
`NORI1 OLK, ss.
`
`SUPERIOR COURT DEPARTMENT
`CIVIL ACTION NO. __
`_
`
`
`
`03 01080
`
`——-—»~—«——~—~———-—-~,
`REEI‘. OK INTERNATIONAL LTD,
`
`))
`
`) )
`
`))
`
`)
`
`))
`
`)\
`
`Plaintiff,
`
`v.
`
`DUNKLADELIC, INC. and DERRICK
`E. VAUGHAN,
`
`Defendants.
`
`%:._
`
`COMPLAINT AND JURY DEMAND
`
`The plaintiff, REEBOK INTERNATIONAL LTD. (“Reebok" or “Plaintiff’), by
`its at’ orneys, Bums & Levinson LLP, complaining ofthe defendants, Dunkadelic, Inc.
`
`and ‘:’.'.)enicl< E. Vaughan (collectively, “Defendants“), alleges as follows:
`
`THE PARTIES
`
`1.
`
`Plaintiff Reebok is a corporation organized and existing under the laws of
`
`the Cornrnonwealth ofMassachusetts, having a principal place of business at 1895 J.W.
`
`Fostrsr Blvd, Canton, Massachusetts 02021.
`2.
`Upon information and belief, Defendant Dunkadelic, Inc. is a Maryland
`
`corporation which transacts business in Massachusetts.
`3.
`Upon information and belief, Defendant Derrick E. Vaughan (“Vaughan”)
`is a “esident of the State ofMaryland and an officer and shareholder of Dunkadelic, Inc.
`
`and, directly or through his agents, transacts business in Massachusetts.
`
`0076I:'1l6.DOC
`
`EXHIBIT
`
`tabbies‘
`
`H&:nn
`
`

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`
`
`13:42 FAX 4105399 H
`07/17/03
`___________ _
`7
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`.
`_ PERFECT wont)
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`005
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`4.
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`Defendant Vaughan claims ownership of proprietary‘ rights in and to the
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`tet1nlIIIUNKADELIC as a trademark for use on sportswear. Upon information and belief,
`
`Defendant Dunkadelic, Inc. is a licensee of Vaughan with respect to said trademark
`
`rights if any such rights exist.
`
`5.
`
`Plaintiff Reebok is a well—known manufacturer of footwear and apparel
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`products. Among the footwear products made and sold by Reebok are men’s and
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`child':sn’s basketball shoes identified by the model name “ATR Dunkadelic.” As such,
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`the A l‘R Dunkadelic shoes are part of Reebok’s ATR (i.e., “Above The Rim") Collection
`
`of footwear products.
`
`6.
`
`Reebol-Cs ATR Collection products, including its ATR Dunkadelic shoes,
`
`are always sold under the famous REEBOK trademark and are clearly identified as
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`pI'0Cl.l(1lS of Reebok.
`
`7.
`
`Defendants Dunkadelic, Inc. and Vaughan have alleged that Reebok’s use
`
`of the model name “ATR Dunkadelic” is unlawful and constitutes, inter alia,
`
`infrixigement of Vaughan’s putative trademark rights and unfair competition. Further,
`
`Defendants Dunkadelic, Inc. and Vaughan have recently threatened to file a lawsuit
`
`agaizzist Reebok, charging Reebok therein with various violations of the law, including,
`
`without limitation, trademark infringement and unfair competition.
`
`8.
`
`An actual, justiciablc and immediate controversy Bl{lStS between Plaintiff
`
`and Defendants sufficient to warrant the rendering of a declaratoryjudgment by this
`
`Con“! pursuant to M.G.L. c. 231A.
`
`0076!-1‘l6.IJOC
`
`

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`
`
`07/17/03
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`13:42 FAX 41o539g7-'-
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`_
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`PERFECT worm
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`@006
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`COUNT]
`DECLARATORY JUDGMENT REGARDING
`15 U.S.C. § 1125(a)
`
`9.
`
`10.
`
`Plaintiff incorporates by reference Paragraphs 1-8 he-rein.
`
`A justiciable controversy exists between Plaintiff and Defendants
`
`conc€:I'nir1g Reebok’s alleged violation of Section 43(a) of the Lanltiam Act, 15 U.S.C.
`
`§ 112 5(a), pertaining to Reebok‘s use ofthe model name “ATR Dunkadelic” as part of its
`
`ATR.'Ab0Vl:! The Rim Collection ofmen’s and children’s basketbaiil shoes.
`
`1 1.
`
`Plaintiff Reebok seeks a declaratory judgment pursuant to M.G.L.
`
`c. 23. A, and it asks this Court to determine, that Reebok has not used in commerce any
`
`word. term, name, symbol or device, or any combination thereof, or any false designation
`
`of origin, false or misleading description of fact, or false or misleading representation of
`
`fact, which did or is likely to cause confusion, or to cause mistake, or to deceive as to the
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`affili rtion, connection or association of Reebok with Defendants or ofDefendants with
`
`Reebok, or as to the origin, sponsorship or approval of either Ree'ook’s goods, services or
`
`commercial activities by Defendants or Defendants’ goods, services or commercial
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`activ'.l:ies by Reebok, and/or otherwise violated 15 U.S.C. § 1l25(a) with respect to
`
`Defendants’ putative trademark DUNKADELIC.
`
`QOUNT II
`DECLARATORY JUDGMENT REGARDING UNFAIR
`COMPETITION AND RELATED CLAIMS
`
`12.
`
`13.
`
`Plaintiff incorporates by reference Paragraphs 1-11 herein.
`
`A justiciable controversy exists between Plaintiff and Defendants
`
`com eming Reebok’s alleged unfair competition and related claims.
`
`0(J'16lr1l 6.l)OC
`
`

`
`
`
`07/17/03
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`13:43 FAX 4105399"
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`._.._._. . __....._.__._.
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`PERFECT WORD_-———
`_._.j.— _..—__-— —
`
`@1007
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`PlaintiffReebok seeks a declaratory judgment pursuant to M.G.L.
`14.
`c. 231 A and it asks this Court to determine, that Reebok has neither engaged in unfair
`competition with respect to Defendants nor otherwise violated any rights ofDefendants
`
`pertai uin
`
`g to the putative trademark DUNKADELIC.
`
`WI-IEREFORE, plaintiff Reebok Internatio
`
`nal Ltd. prays that this Court:
`
`21.
`
`Enter a judgment in its favor on all Counts of this Complaint;
`
`not used in commerce any designation such that any rights of Defendants
`relating to the putative trademark DUNKADELIC have been violated
`under 15 U.S.C. § 1125(3);
`
`c.
`
`(1.
`
`Declare pursuant to M.G.L. c. 23 l A, that Reebok International Ltd. has
`not (i) engaged in unfair competition, or (ii) otherwise violated any rights
`of Defendants pertaining to the putative trademark DUNKADELIC;
`
`Award Reebok International Ltd. all of its costs, expenses and reasonable
`attorneys’ fees it incurs in connection with proseculing this action; and
`
`Grant Reebok International Ltd. such other and further relief that this
`Court deems to be just and proper.
`
`PLAINTIFF HEREBY DEMANDS A TRIAL BY JURY ON ALL CLAIMS
`AND ISSUES SO TRIABLE.
`
`Respectfully submitted,
`REEBOK INTERNATIONAL LTD.
`
`By its attorneys
`
`. ‘’i’"
`
`"
`
`
`
`
`
`Shepard Davidson,
`f'.Sq. (BBO#557082)
`Victoria L. Schmidt, Esq. (BBO#650999)
`BURNS & LEVINSON LLP
`125 Summer Street
`Boston, MA 02110
`(617) 345-3000
`
`/
`
`Dated: June i-3_1_, 2003
`
`0fl'7( r‘iI fi.DOC
`
`

`
`
`
`REEBOK INTERNATIONAL, LTD
`
`V.
`
`DERRICK E. VAUGHAN
`
`CANCELLATION NO. 92043428
`
`VAUGHAN EXHIBIT B
`
`

`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF MARYLAND
`Civil Division
`
`Civil Action No.
`
`JURY TRIAL DEMANDED
`
`if
`
`it
`96
`1\'
`
`if
`it
`
`9(-
`1\‘
`
`it
`
`it
`
`* 1
`
`?
`
`“’
`it
`
`9(-
`
`III‘
`
`in‘
`
`*-
`if
`-3!‘
`
`-9?
`
`-34‘
`
`1‘!
`
`DERRICK E. VAUGHAN
`
`1634 Montpelier Street
`Baltimore, MD 21218
`
`and
`
`DUNKADELIC, INC.
`821 E. Baltimore Street
`
`Baltimore, MD 21202
`
`Plaintiffs,
`
`V.
`
`REEBOK INTERNATIONAL, LTD.
`1895 ].W. Foster Blvd.
`Canton, MA 02021
`
`Serve:
`
`The Corporation Trust, Inc.
`300 E. Lombard Street
`
`Baltimore, l\/ID 21202
`
`Registered Agent
`
`Defendant.
`
`COMPLAINT
`
`COME NOW, the Plaintiffs, Derrick E. Vaughan and Dunkadelic, Inc., by their
`
`attorneys, Evans Antonelli 6;: Cox, LLC, and sue the Defendant, Reebok International, Ltd.
`
`In support thereof, the Plaintiffs state as follows:
`
`PARTIES
`
`1.
`
`The Plaintiff, Derrick E. Vaughan, is an individual residing at 1634 i\/Iontpelier
`
`Street, Baltimore, Maryland 21218.
`
`EXHIBIT
`
`.§
`
`B.______________
`
`

`
`
`
`‘I
`
`2.
`
`The Plaintiff, Dunl<adelic, Inc., is a Maryland Corporation with its principal
`
`place of business located in Baltimore, Maryland.
`
`Plaintiffs Derrick E. Vaughan and
`
`Dunkadelic, Inc., will sometimes hereinafter be referred to as “Plaintiff."
`
`3.
`
`The Defendant, Reebok International, Ltd.
`
`(“Reebok"),
`
`is
`
`a
`
`foreign
`
`corporation having its principal corporate offices at 1895 j.W. Foster Boulevard, Canton,
`
`Massachusetts, 02021, which has and continues to transact business in this District, in this
`
`State and elsewhere.
`
`IURISDICTION AND VENUE
`
`4.
`
`This Court has subject matter jurisdiction over this Complaint under 15
`
`U.S.C. §1121, 28 U.S.C. §§l331, 1332 and 1338, and the doctrine of supplemental
`
`jurisdiction, and 28 U.S.C. § 2201 etseq.
`
`The amount in controversy exceeds the sum or value of $75,000.00, exclusive
`
`— 3
`
`.
`
`of interest, costs and attorneys’ fees.
`
`6.
`
`This Court has personal jurisdiction over the Defendant because it, directly or
`
`through an agent, transacts business in Maryland, and has engaged in conduct in Maryland
`
`out of which some or all of the claims asserted in this Complaint arise.
`
`7.
`
`Venu