throbber
TTAB
`
`Suite 2800 1100 Peachtree St.
`Atlanta GA 30309-4530
`t404 815 6500 f404 815 6555
`www.KilpatrickStockton.com
`
`direct dial 404 815 6164
`direct fax 404 541 3292
`
`AlJones@1(i|patrickStockton.com
`
`K
`
`KILPATRICK
`
`STOCKTON LLP
`
`Attorneys at Law
`
`September 27, 2005
`
`VIA FIRST CLASS MAIL
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`Re:
`
`L
`
`'
`
`John Spiegelberg, d/b/a Red Raider Outfitter v. Texas Tech University
`R.egistrant’s Motion to Suspend Proceedings and Brief in Support
`Cancellation No.2 92,044,727; Registration No.: 2,433,675
`Our Ref. No.: 49304/319796
`M
`.
`/.;', !_,
`_’,-‘ 4'.»
`
`,
`'7
`
`‘
`
`Dear Sir/Madam:
`
`Enclosed please find an original and one copy of Registrant’s Motion to Suspend
`Proceedings Pursuant to 37 C.F.R. § 2.117(a) and Brief in Support in connection with the
`above-referenced cancellation proceeding.
`
`Please date and initial the attached postcard to confirm receipt of the Motion to
`Suspend Proceedings and Brief in Support and then return the postcard to my attention.
`
`Please contact me if you have any questions or concerns.
`
`Sincerely,
`
`MM
`
`Alicia Grahn Jones
`
`AGJ/feg
`Enclosures
`
`I|||||||l|||||||l|||||||||||l||||||||||||||l||||||
`
`10-03-2005
`US. Patent & TMOR:/TM Mail ficpt Dt. #72
`
`ATLANTA AUGUSTA CHARLOTTE LONDON NEW YORK RALEIGH STOCKHOLM WASHINGTON WINSTON-SALEM
`
`

`
`
`
`F’
`
`ORIGINAL
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`
`) )
`
`) )
`
`) Cancellation No. 92044727_
`) Reg. No. 2,433,675
`
`) )
`
`) )
`
`JOHN SPIEGIELBERG, d/b/a RED
`
`RAIDER OUTFITTER,
`
`Petitioner,
`
`v.
`
`TEXAS TECH UNIVERSITY,
`
`Registrant.
`
`REGISTRANT’S MOTION TO SUSPEND PROCEEDINGS
`
`PURSUANT TO 37 C.F.R. § 2.11713}
`
`Registrant, Texas Tech University respectfully requests that the Board suspend
`
`proceedings in this Petition for Cancellation pursuant to 37 C.F.R. §2.ll7(a). As
`
`discussed in further detail in Registrant’s Brief in Support, Registrant has filed a civil
`
`action in the United States District Court for the Northern District of Texas which will
`
`dispose of the issues raised in this cancellation proceeding. Therefore, Registrant
`
`respectfully submits that
`
`this cancellation proceeding should be suspended pending
`
`disposition of that civil action.
`
`Dated: September 27, 2005 Christoph r J. Kellne
`
`Ga. Bar #412343
`
`Alicia Grahn Jones
`
`Ga. Bar #141415
`
`KILPATRICK STOCKTON LLP
`
`1100 Peachtree Street, Suite 2800
`Atlanta, Georgia 30309-4530
`Tel: (404) 815-6500
`Fax: (404) 815-6555
`alj ones@ki1patrickstockton.com
`
`

`
`
`
`CERTIFICATE OF MAILING
`
`I hereby certify that the foregoing is being deposited with the United States Postal
`
`Service as First Class Mail, postage prepaid, in an envelope addressed to: Commissioner
`
`for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513 on September 27,
`
`2005.
`
`Alicia Grahn Jones
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing has been served on Petitioner’s counsel by
`
`depositing a true and correct copy thereof with the United States Postal Service as First
`
`Class Mail, postage prepaid, in an envelope addressed to: Erik J. Osterrieder, Schubert
`
`Osterrieder 8: Nickelson PLLC, 6013 Cannon Mtn. Dr., S14, Austin, Texas 78749.
`
`
`
`

`
`ORIGINAL
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`
`) )
`
`) )
`
`) Cancellation No. 92044727
`) Reg. No. 2,433,675
`
`) )
`
`) )
`
`JOHN SPIEGELBERG, d/b/a RED
`RAIDER OUTFITTER,
`
`Petitioner,
`
`v.
`
`TEXAS TECH UNIVERSITY,
`
`Registrant.
`
`REGISTRANT’S BRIEF IN SUPPORT OF ITS MOTION TO SUSPEND
`
`Registrant, Texas Tech University (“Texas Tech” or “Registrant”), respectfully
`
`requests that the Board suspend proceedings in this Petition for Cancellation pursuant to
`
`37 C.F.R. § 2.1 l7(a).
`
`I.
`
`BACKGROUND
`
`On April 14, 2005, Petitioner, John Spiegelberg d/b/a Red Raider Outfitter (“Red
`
`Raider Outfitter” or “Petitioner”), filed a Petition for Cancellation of Registration No.
`
`2,433,675. Texas Tech is the owner of Registration No. 2,433,675 for the Raider Red
`
`Design mark, which is the subject of this cancellation proceeding]
`
`On August 24, 2005, Texas Tech filed a civil action against Red Raider Outfitter
`
`alleging trademark infringement and dilution, unfair competition, breach of contract, and
`
`related causes of action under state law (the “Civil Action”).2 The Civil Action will
`
`address several issues including Texas Tech’s rights in the Raider Red Design mark. The
`
`Civil Action was filed in the United States District Court for the Northern District of
`
`' No discovery has been conducted in this cancellation proceeding.
`2 Texas Tech’s complaint against Red Raider Outfitter is attached as Exhibit A.
`
`

`
`Texas where Petitioner resides. Thus, Petitioner can claim no prejudice or burden
`
`stemming from litigation in this forum. The Civil Action will dispose of the issues raised
`
`in this cancellation, and Texas Tech therefore seeks suspension of these proceedings.
`
`II.
`
`ARGUMENT
`
`The Board has the power to suspend proceedings in favor of a pending civil action
`
`pursuant to 37 C.F. R. § 2.1l7(a), which provides:
`
`When-ever 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.
`
`This Board regularly has exercised this power in the interests of promoting judicial
`
`economy and conserving resources. gee Vining Indus., Inc. v. Libman Co., 1996
`
`TTAB LEXIS 455, at *6 (T.T.A.B. July 16, 1996) (suspending Board proceedings “in
`
`the interest of judicial economy and consistent with [the Board’s] inherent authority
`
`to regulate [its] proceedings to avoid duplicating the effort of the court and the
`
`
`
`possibility of reaching an inconsistent conclusion”); Tokaido v. Honda Assocs. Inc.,
`
`179 U.S.P.Q. 861, 862 (T.T.A.B. 1973) (“[N]otwithstanding the fact that the Patent
`
`Office proceeding was the first to be filed, it is deemed to be the better policy to
`
`suspend proceedings herein until the civil suit has been finally concluded.”); Townley
`
`Clothes, Inc. v. Goldring, Inc., 100 U.S.P.Q. 57, 58 (Comm’r Pat. 1953) (“[I]t would
`
`not seem to be in the interests of ‘judicial economy’ for the parties to proceed in two
`
`forums. .
`
`. .”).
`
`The cancellation should be suspended because proceedings in the Civil Action
`
`will conclusively determine Texas Tech’s rights in the Raider Red Design mark, and
`
`

`
`therefore: will be dispositive of all issues raised in this proceeding.
`
`_S_e_e Tokaido v.
`
`Honda Assocs., Inc., 179 U.S.P.Q. at 862 (“[W]hile a decision of the District Court
`
`would be binding upon the Patent Office, a decision by the Trademark Trial and
`
`Appeal Board would only be advisory in respect to the disposition of the case pending
`
`in the District Court”); see also Sam S. Goldstein Indus., Inc. V. Botany Indus., Inc.,
`
`301 F. Supp. 728, 731, 163 U.S.P.Q. 442, 443 (S.D.N.Y. 1969) (noting that PTO
`
`“findings would not be res judicata in this [civil action]” and denying motion to stay
`
`district court proceedings).
`
`III.
`
`CONCLUSION
`
`For the foregoing reasons, Texas Tech respectfully submits that this cancellation
`
`proceeding should be suspended pending disposition of the Civil Action.
`
`Dated: September 27, 2005
`
`ellner
`Christopher J.
`Ga. Bar #412343
`
`Alicia Grahn Jones
`
`Ga. Bar #141415
`
`KILPATRICK STOCKTON LLP
`
`1100 Peachtree Street, Suite 2800
`Atlanta, Georgia 30309-4530
`Tel: (404) 815-6500
`Fax: (404) 815-6555
`alj ones@kilpatrickstockton.com
`
`

`
`CERTIFICATE OF MAILING
`
`I hereby certify that the foregoing is being deposited with the United States Postal
`
`Service as First Class Mail, postage prepaid, in an envelope addressed to: Commissioner
`
`for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513 on September 27,
`
`2005.
`
`
` Alicia Grahn J0 es
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing has been served on Petitioner’s counsel by
`
`depositing a true and correct copy thereof with the United States Postal Service as First
`
`Class Mail, postage prepaid, in an envelope addressed to: Erik J. Osterrieder, Schubert
`
`Osterrieder & Nickelson PLLC, 6013 Cannon Mtn. Dr., S14, Austin, Texas 78749.
`
`
` Alicia Grahn J
`es
`
`

`
`
`
`EXHIBIT AEXHIBIT A
`
`

`
`Case 5:05-cv-00192 Document1
`
`Filed 08/24/2005
`
`Page1of41
`
`
`
`u.s. DISTRICT coma‘
`'
`NORTHERN DISTRICT OF TEXAS
`
`
`
`
`CLERR, us. 1:Eo';(XCLC’f coum"
`
`By
`
`Der my
`Civil Action 15 '
`
`
`E"
`——-—" J-’-———
`
`v
`
`l
`.
`
`__.__,
`
`ALB 2 4 2115
`
`‘i
`
`........-... -4
`
`T
`
`s
`
`
`
`
`
`IN THE UNITED STATES DISTRICT co
`
`FOR THE NORTHERN DISTRICT OF TE
`LUBBOCKDIVISION
`
`)
`)
`)
`)
`
`) )
`
`)
`
`) )
`
`)
`
`TEMS TECH UNIVERSITY,
`
`Plaintiff,
`
`v.
`
`JOHN SPIEGELBERG, individually, and
`d/b/a REID RAIDER OUTFITTER,
`
`Defendants.
`
`COMPLAINT
`
`Plaintiff, Texas Tech University (“Plaintiff’ or “Texas Tech”) states the following for its
`
`Complaint against Mr. John Spiegelberg, individually, and d/b/a Red Raider Outfitter.
`
`SUBSTANCE OF THE ACTION
`
`1.
`
`This is an action for trademark infringement and dilution, unfair competition, and
`
`breach of contract, arising under the Federal Trademark Act of 1946, 15 U.S.C. § 1051 et_seg,
`
`(“Lanharn Act”); the Texas Trademark Act, Tex. Bus. & Comm. Code Ann. §§ 16:01 isgb
`
`including the Texas Anti-Dilution Statute, Tex. Bus. & Comm. Code Ann. § 16:29, as well as
`
`the trademark and anti-dilution laws of the several states; and the common law.
`
`2.
`
`Defendant Spiegelberg is the sole proprietor of a retail store operating adjacent to
`
`the Texas Tech campus in Lubbock, Texas. Spiegelberg and his Red Raider Outfitter retail store
`
`also
`
`sell merchandise
`
`through websites
`
`operating
`
`under
`
`domain
`
`names
`
`such
`
`as
`
`www.redraideroutfitter.com and www.texastechoutfitter.com.
`
`Some of this merchandise is
`
`produced by third parties and officially licensed by the University. Defendants also, however,
`
`produce or arrange for the production of merchandise that is unlicensed and not otherwise
`
`

`
`Case 5:05-cv-00192 Document1
`
`Filed 08/24/2005
`
`Page'_2_of41
`
`approved by Texas Tech. Defendants have sold and are selling unlicensed merchandise that
`
`incorporates word marks, design marks, color schemes and other source-identifying indicia
`
`associated with the University.
`
`Spiegelberg is using this source-identifying indicia in
`
`combination with other phrases, designs, terminology, and information in a way calculated to
`
`create the misimpression that his merchandise is licensed or sponsored by or otherwise affiliated
`
`with the University. Plaintiff brings this action to stop Defendants from continuing to pass off
`
`their unlicensed merchandise as that of Plaintiff and to prevent Defendants from trading on the
`
`enormous goodwill associated with Texas Tech University. Defendants’ misconduct is likely to
`
`cause confusion and to deceive consumers and the public and will continue to do so absent relief
`
`from this Court.
`
`JURISDICTION AND VENUE
`
`3.
`
`This Court has subject matter jurisdiction under section 39 of the Lanham Act, 15
`
`U.S.C. § 1121, and under 28 U.S.C. §§ 1331 and 1338. This Court has jurisdiction over
`
`Plaintiffs related state and common law claims pursuant to 28 U.S.C. §§ 1338 and 1367.
`
`4.
`
`This Court has personal jurisdiction over Defendants because Defendants reside in
`
`this state, do business in this state, have committed tortious acts in this state, and have otherwise
`
`established contacts with this state making the exercise of personal jurisdiction proper.
`
`5.
`
`Venue is proper in this District pursuant to 28 U.S.C. § 139l(b)(l) & (2) because
`
`Defendants reside in this District and a substantial part of the events or omissions giving rise to
`
`the action occurred in this District.
`
`

`
`Case5:05-cv-00192 Document1
`
`Filed 08/24/2005
`
`Page3of41
`
`THE PARTIES
`
`6.
`
`Plaintiff Texas Tech University is a general academic teaching institution of the
`
`State of Texas, having its principal location at 2500 Broadway, Lubbock, Texas 79409.
`
`7.
`
`On information and belief, Defendant Spiegelberg is an individual of the full age
`
`of majority and resides in and is a citizen of the State of Texas. On information and belief,
`
`Spiegelberg is, and at all times relevant to this Complaint was, the sole proprietor of Red Raider
`
`Outfitter, a retail store and apparel producer with its principal place of business at 2416
`
`Broadway, Lubbock, Texas 79401, and is subject to service at
`
`that address.
`
`Further on
`
`information and belief, Spiegelberg directed, controlled, participated in, engaged in, performed,
`
`authorized, approved, ratified, actively and knowingly caused, and was the moving, active,
`
`conscious force behind the acts of Red Raider Outfitter forming the basis of this Complaint.
`
`FACTS COMMON TO ALL CLAIMS FOR RELIEF
`
`Plaintiff [eggs Tech University and Its Trademark Rights
`
`8.
`
`Plaintiff Texas Tech University was founded in 1923, and its academic and
`
`athletic programs are well known and respected throughout the region and beyond. Plaintiff is
`
`located in Lubbock, Texas, which was selected by a legislative committee to be the site for the
`
`university now known as Texas Tech University.
`
`Plaintiffs academic and athletic programs
`
`have long been a centerpiece of Lubbock city life, and,
`
`in the appropriate context and
`
`circumstances, references to “Lubbock” will be understood by the relevant consuming public as
`
`references to Plaintiff.
`
`9.
`
`Plaintiff has extensively used and promoted “Texas Tech University” and “Texas
`
`Tech” as its name, as well as a trademark and a service mark. Plaintiff developed trademark
`
`rights in its name long before the activities at issue in this Complaint, and the TEXAS TECH
`
`

`
`case5:05—cv-00192 Documentt Filed 08/24/2005
`
`Page4of41
`
`name and mark, of course, serves as a powerful indicator of the source of goods and services
`
`provided by or otherwise affiliated with Plaintiff. Plaintiff is the owner of U.S. Trademark
`
`Registration No. 2,511,970 for its TEXAS TECH UNIVERSITY name and mark, which
`
`registration issued on November 27, 2001. On-line records from the United States Patent and
`
`Trademark Office (“PTO”) for this mark are attached as Exhibit 1. Plaintiff is also the owner of
`
`a variety of Texas State registrations consisting of or incorporating the TEXAS TECH name and
`
`mark, including Texas State Registrations Nos. 59,823, 59,822, 49,935, 49,912, and 49,910.
`
`1().
`
`A very common shorthand for referring to Plaintiff is “Tech.” In the appropriate
`
`context and circumstances, use of the term “Tech” will be perceived by the relevant consuming
`
`public as a reference to Plaintiff. Plaintiff’ s licensees have often used the moniker “Tech” as a
`
`means of referring to Plaintiff.
`
`Plaintiff is the owner of trademark rights in the term “Tech,”
`
`when said term is used in the appropriate context or circumstances, such as merchandise that
`
`makes reference to Plaintiff, Plaintiffs accomplishments, or events in which Plaintiff will be
`
`participating.
`
`11.
`
`Plaintiff’ s athletic identity is the “Red Raider.” Plaintiff has regularly used the
`
`mark and name RED RAIDERS in connection with its athletic programs since at least as early as
`
`1936. Plaintiff, through its licensees, has also used the RED RAIDER mark in connection with a
`
`wide variety of apparel and other merchandise. Plaintiff is the owner of Texas State Registration
`
`Nos. 49,917 and 49,912 for, respectively, RED RAIDERS and TE)QXS TECH UNIVERSITY
`
`RED RAIDERS for apparel items. Plaintiff is the owner of valuable trademark rights in its RED
`
`RAIDERS mark.
`
`12.
`
`Plaintiff has adopted, used and promoted a design mark known as “Raider Red,”
`
`which is based in imagery drawn and developed from Plaintiffs’ RED RAIDERS athletic
`
`

`
`Case 5:05-cv-0.01.92 I Document1
`
`F-i|_e_d_08/24/2005
`
`Page 5 of 41
`
`identity. One depiction of the Raider Red Design Mark is featured in U.S. Trademark
`
`Registration No. 2,433,675, which registration issued on March 6, 2001. The registration
`
`certificate for this mark is attached as Exhibit 2. Plaintiff is the owner of valuable trademark
`
`rights in its Raider Red Design Mark, as a result of its use and promotion, as well as the
`
`aforementioned registration. Plaintiff developed trademark rights in its Raider Red Design Mark
`
`long before the activities at issue in this Complaint, and the Raider Red Design Mark serves as a
`
`powerful indicator of the source of goods and services provided by or otherwise affiliated with
`
`Texas Tech.
`
`13.
`
`Plaintiff uses a scarlet and black color scheme in connection with its educational
`
`and entertainment services and its licensed apparel and other merchandise,
`
`including the
`
`uniforms of its athletic teams, souvenirs and memorabilia. The scarlet and black color scheme is
`
`used prominently and repeatedly in connection with Plaintiffs athletic teams and its many other
`
`organizations, activities and services, as well as with goods sold by Plaintiff or its licensees.
`
`Plaintiff uses the scarlet and black color scheme in connection with its name, the RED RAIDERS
`
`mark, the Raider Red Design Mark, as an element of its other logos and design marks, and in
`
`numerous additional contexts. Texas Tech extensively and continuously used and promoted its
`
`scarlet and black color scheme before the activities of Defendants outlined in this Complaint.
`
`Plaintiffs scarlet and black color scheme serves as a trademark in the appropriate context and
`
`circumstances,
`
`such
`
`as merchandise
`
`that makes
`
`reference
`
`to Plaintiff, Plaintiffs
`
`accomplishments, or events in which Plaintiff will be participating. Plaintiffs TEXAS TECH
`
`name and mark, RED RAIDERS word mark, Raider Red Design mark, and Scarlet and Black
`
`Color Scheme mark, are hereinafter collectively referred to as “Plaintiffs Marks.”
`
`

`
`Case 0:05-cv-00192 Document 1
`
`Filed 08/24/2005
`
`Page 6 of 41
`
`14.
`
`Plaintiffs Marks have been used in interstate commerce and have achieved
`
`significant fame and public recognition, especially when appearing in connection with collegiate
`
`athletic teams and events and related apparel
`
`items. Because of their widespread use in
`
`connection with Plaintiffs activities and licensed merchandise, Plaintiffs Marks have
`
`tremendous power as source identifiers.
`
`15.
`
`Plaintiff licenses Plaintiffs Marks through its licensing agent, The Collegiate
`
`Licensing Company (CLC), which is the nation’s leading collegiate licensing and marketing
`
`representative. CLC assists collegiate licensors in protecting and controlling the use of their
`
`logos through trademark licensing. CLC represents more than 190 universities, bowl games, and
`
`conferences, including Texas Tech University.
`
`Defendants’ Unlawful Activities
`
`16. In 1997, Defendants entered into a license agreement with Plaintiff via CLC. A copy
`
`of said license agreement is attached as Exhibit 3 (the “License Agreement”). The License
`
`Agreement contains a number of provisions protecting Plaintiffs Marks, including the following:
`
`After expiration or termination of this [License] Agreement for any reason,
`Licensee [Defendants] shall refrain from further use of any of the Licensed Indicia
`or any similar mark, including any geographic reference or depiction, directly or
`indirectly, or any derivation of the Licensed Indicia or a similar mark .
`.
`.
`.
`
`License Agreement, Exh. 3, at 1] 20(a). The term “Licensed Indicia” is defined as the “names,
`
`symbols, designs, and colors of the Member Universities [Plaintiff], including without limitation,
`
`the trademarks, service marks, designs, team names, nicknames, abbreviations, city/state names
`
`in the appropriate context, slogans, logographics, mascots, seals and other symbols associated
`
`with or referring to the respective Member Universities.” License Agreement, Exh. 3, at 1] 1(b).
`
`

`
`
`
`Case 5:05-cv-00192 Document1
`
`Filed 08/24/2005
`
`Page 7 of41
`
`The License Agreement likewise prohibits Defendants from applying to register marks that
`
`consist of or incorporate the License Agreement. License Agreement, Exh. 3, at 1] 8(a), (b).
`
`17. The License Agreement was renewed and extended until 2003 and then allowed to
`
`expire by Plaintiff as a result of Defendants’ repeated failures to comply with its terms.
`
`Defendants are no longer licensed by Plaintiff but nevertheless continue to manufacture and sell
`
`unlicensed and unauthorized merchandise featuring the Plaintiffs Marks, or colorable imitations
`
`thereof, within this judicial district and elsewhere.
`
`18.
`
`Defendants have even gone so far as to seek federal trademark registrations for
`
`marks that incorporate Plaintiff’ s Marks or portions thereof, namely the following:
`
`
`
`
`
`Application
`Serial No.
`
`Filing
`Date
`
`Exhibit No.
`
`
`
`Defendants’ Texas Tech-
`Related Trademark
`WRECK ‘EM TECH
`
`
` RAIDERLAND
`
`2005
`
`2005
`
`The above-referenced marks are designed to trade upon the identity of Texas Tech and are in
`
`direct violation of the License Agreement. On-line records from the USPTO for these
`
`applications are attached at the exhibit numbers referenced in the chart above.
`
`19.
`
`On April 15, 2005, Defendants initiated a trademark cancellation proceeding
`
`before the Trademark Trial and Appeal Board of the USPTO, Cancellation Proceeding No.
`
`92/044,727, by which they seek to cancel the federal registration for Texas Tech’s Raider Red
`
`Design Mark. A true and correct copy of Defendants’ Petition for Cancellation is attached hereto
`
`as Exhibit 6. Defendants have also initiated a declaratory judgment action solely against
`
`Plaintiff’ s licensing agent, CLC, in the United States District Court for the Southern District of
`
`Texas (Houston Division), Civ. Action No. H-05-1264, despite the fact that both Defendants and
`
`-7-
`
`

`
`Case 5:05—cv-0082 Document 1
`
`Filed 08/24/20% Page 8 of 41
`
`Plaintiff reside in this District. True and correct copies of Defendants’ Complaint and CLC’s
`
`Answer in the above-referenced action are attached hereto as Exhibits 7 and 8, respectively.
`
`20.
`
`Defendants’ use of the name of its retail store, Red Raider Outfitter, and its related
`
`websites, operating under domain names including but not limited to www.redraideroutfitter.com
`
`and www.texastechoutfitter.com, are also calculated to conjure and trade upon the identity of
`
`Texas Tech. A true and correct copy of print-outs of a web page from Defendants’ website is
`
`attached hereto as Exhibit 9.
`
`21.
`
`Defendants’ unlicensed products are not manufactured by Plaintiff, nor were they
`
`licensed, authorized, sponsored, endorsed or approved by Plaintiff.
`
`22.
`
`Plaintiff’ s Marks were used extensively and continuously before Defendants
`
`manufactured, offered for sale, or sold Defendants’ products.
`
`23.
`
`Defendants’ products are similar to and compete with goods sold or licensed by
`
`Plaintiff, and are sold through the same channels of trade. Defendants sell their products at or
`
`near the University, and Defendants’ unlicensed and unauthorized products appeared directly
`
`alongside merchandise authorized by Plaintiff. Defendants do everything in their power to
`
`ensure that their proximity to Plaintiff will exacerbate and increase the confusion caused by their
`
`unlicensed and unauthorized merchandise.
`
`24.
`
`Defendants’ products are likely to deceive, confuse and mislead prospective
`
`purchasers and purchasers into believing that Defendants’ unlicensed and unauthorized products
`
`were produced or authorized by or in some manner associated with Plaintiff. The likelihood of
`
`confusion, mistake and deception engendered by Defendants’ unlicensed and unauthorized
`
`products is causing irreparable harm to Plaintiff.
`
`

`
`Case 5:05—cv—0()32 Document 1
`
`Filed 08/24/20% Page 9 of 41
`
`25.
`
`Purchasers and prospective purchasers viewing Defendants’ unlicensed and
`
`unauthorized products and perceiving a defect, lack of quality, or any impropriety are likely to
`
`mistakenly attribute them to Plaintiff. By causing such a likelihood of confusion, mistake and
`
`deception, Defendants are inflicting irreparable harm to Plaintiff's goodwill.
`
`26.
`
`Defendants’ unlicensed and unauthorized merchandise is calculated to trade on
`
`the valuable goodwill and commercial magnetism of Plaintiffs reputation and identity in
`
`Lubbock and elsewhere. Defendants are attempting to pass off their merchandise as that of
`
`Plaintiff.
`
`27.
`
`Defendants willfully,
`
`intentionally and maliciously used Plaintiffs Marks, or
`
`adopted imitations of Plaintiff’ s Marks and combined said imitations with other material likely to
`
`cause and enhance confusion, and have otherwise deliberately attempted to pass off their
`
`unlicensed and unauthorized products as those provided or licensed by Plaintiff.
`
`COUNT I
`
`FEDERAL TRADEMARK INFRINGEMENT
`
`28?.
`
`Plaintiff repeats and incorporates by reference the allegations in paragraphs l-..
`
`29'.
`
`Defendants are using confusingly similar imitations of the TEXAS TECH name
`
`and mark and the federally registered Raider Red Design Mark on unlicensed and unauthorized
`
`merchandise. This conduct is likely to cause confusion, deception, and mistake by creating the
`
`false and misleading impression that Defendants’ unlicensed and unauthorized goods are
`
`manufactured or distributed by Plaintiff or are associated or connected with Plaintiff, or have the
`
`sponsorship, endorsement or approval of Plaintiff.
`
`30..
`
`Defendants have used confusingly similar imitations of Plaintiff’s federally
`
`registered marks in violation of 15 U.S.C. § 1114, and Defendants’ activities have caused and,
`
`

`
`Case 5:05-cv-00192 Document1
`
`Filed 03/24/2005
`
`Page'10of£i1
`
`unless enjoined by this Court, will continue to cause a likelihood of confusion and deception of
`
`members of the trade and public and, additionally,
`
`injury to the Plaintiff’s goodwill and
`
`reputation as symbolized by Plaintiffs federally registered marks, for which Plaintiff has no
`
`adequate remedy at law.
`
`31.
`
`Defendants’ actions demonstrate an intentional, willful, and malicious intent to
`
`trade on the goodwill associated with Plaintiffs federally registered marks to Plaintiffs great and
`
`irreparable injury.
`
`32.
`
`Defendants have caused and are likely to continue causing substantial injury to the
`
`public and to Plaintiff, and Plaintiff is entitled to injunctive relief and impoundment and
`
`destruction of Defendants’ infringing products and to recover actual damages, Defendants’
`
`profits, enhanced profits and damages, costs and reasonable attorneys’ fees under 15 U.S.C. §§
`
`1114, 1116, 1117, 1118.
`
`COUNT H
`
`FEDERAL UNFAIR COMPETITION
`
`33.
`
`Plaintiff repeats and incorporates by reference the allegations in paragraphs 1-.
`
`as if fully set forth here.
`
`34.
`
`lDefendants’ unlicensed and unauthorized goods and services have caused and are
`
`likely to cause confusion, deception, and mistake by creating the false and misleading impression
`
`that Defendants’ goods and services are manufactured or distributed by Plaintiff or are associated
`
`or connected with Plaintiff, or have the sponsorship, endorsement or approval of Plaintiff.
`
`35.
`
`Defendants have made false representations,
`
`false descriptions, and false
`
`designations of origin in violation of 15 U.S.C. §1125(a),
`
`including, but not
`
`limited to,
`
`Defendants’ commercial and merchandising use of (i) confusingly similar imitations of the
`
`-10-
`
`

`
`Case 5:05-cv-00192 Document1m Filed 08/24/2005
`
`Page11of41'
`
`Raider Red Design Mark;
`
`(ii)
`
`the phrase WRECK ‘EM TECH,
`
`the domain name
`
`www.texastec:houtf1tter.com, and other imitations of the TEXAS TECH name and mark; and (iii)
`
`the temi RAIDERLAND,
`
`the business name and related domain name RED RAIDER
`
`OUTFITTER, and other imitations of the RED RAIDERS mark. Defendants’ activities have
`
`caused and, unless enjoined by this Court, will continue to cause a likelihood of confusion and
`
`deception of members of the trade and public and, additionally, injury to Plaintiffs goodwill and
`
`reputation, for which Plaintiff has no adequate remedy at law.
`
`36.
`
`Defendants’ actions demonstrate an intentional, willful, and malicious intent to
`
`trade on ‘the goodwill associated with Plaintiff to the great and irreparable injury of Plaintiff.
`
`3'7.
`
`Defendants’ conduct has caused, and is likely to continue causing, substantial
`
`injury to the public and to Plaintiff, and Plaintiff is entitled to injunctive relief and impoundment
`
`and destruction of Defendants’ infringing products and to recover actual damages, profits,
`
`enhanced profits and damages, costs, and reasonable attorneys’ fees under 15 U.S.C. §§ l125(a),
`
`ll16andl1l7.
`
`COUNT III
`
`BREACH OF CONTRACT
`
`38. Plaintiff repeats and incorporates by reference the allegations in paragraphs 1-. as if
`
`fully set forth here.
`
`39’. The License Agreement
`
`is a valid and binding contract, with provisions and
`
`obligations that survive the end of the tenn of the license. The License Agreement was entered
`
`into by CLC on behalf of Plaintiff, and Plaintiff has the right to enforce its provisions.
`
`40. Defendants have breached their obligation to refrain from using Plaintiffs “Licensed
`
`Indicia,” as that term is defined in the License Agreement.
`
`-11-
`
`

`
`Case 5:05-cv-008 Document 1
`
`Filed 08/24/2006 Page 12 of 41
`
`41. Defendants have breached their obligation to refrain from applying to register marks
`
`that incorporate or consist of Plaintiff’ s Licensed Indicia.
`
`42.
`
`Defendants’ breach of their contractual obligations has damaged Plaintiff and is
`
`inflicting irreparable harm on Plaintiff, as a result of which Plaintiff is entitled to specific
`
`performance and money damages.
`
`COUNT IV
`
`STATE TRADEMARK INFRINGEMENT
`
`43.
`
`Plaintiff repeats and incorporates by reference the allegations in paragraphs 1-42
`
`as if fully set forth here.
`
`44.
`
`Plaintiff is the owner of valid and subsisting state registrations for the TEXAS
`
`TECH name a.nd mark, the RED RAIDERS mark, and combinations thereof, as identified above.
`
`45.
`
`Defendants’ unauthorized use in commerce of Plaintiffs state registered marks or
`
`reproductions,
`
`counterfeits,
`
`copies or colorable imitations
`
`thereof,
`
`in connection with
`
`Defendants’ unlicensed and unauthorized goods, or Defendants’ advertising thereof, is likely to
`
`deceive or cause confusion or mistake as to the source of the goods.
`
`46.
`
`Defendants’ unauthorized use in commerce of Plaintiff’ s state registered marks or
`
`reproductions, counterfeits, copies or colorable imitations thereof, and the application of those
`
`marks or imitations thereof to labels, packaging, prints, signs, or advertisements, with the intent
`
`of selling Defendants’ unlicensed and unauthorized goods in this State is likely to deceive or
`
`cause confusion or mistake as to the source of origin of the goods.
`
`47.
`
`Defendants are causing and will continue to cause irreparable injury to Plaintiff’ s
`
`business reputation and the good will represented by the state registered marks, in violation of
`
`-12-
`
`

`
`
`
`Case 5:05-cv-00192 Document1
`
`Filed 08/24/2005 ""P'5g'e'1eIof41
`
`Tex. Bus. & Comm. Code Ann. §§ l6:26(a) & (b), and Plaintiff therefore is entitled to
`
`injunctive relief and damages in an amount to be determined at trial.
`
`QQMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
`
`COUNT V
`
`48.
`
`Plaintiff repeats and incorporates by reference the allegations in paragraphs 1-47
`
`as if fully set forth here.
`
`49.
`
`Defendants’ acts referenced hereinabove constitute common law trademark
`
`infringement and unfair competition, and have created and will continue to create a likelihood of
`
`confusion, to the irreparable injury of Plaintiff unless restrained by this Court. Plaintiff has no
`
`adequate remedy at law for this injury.
`
`50.
`
`Defendants acted with full knowledge of Plaintiff, Plaintiffs Marks, and
`
`Plaintiffs: statutory and common law rights therein and without regard to the likelihood of
`
`confusion of the public created by Defendants’ activities.
`
`51.
`
`Defendants’ actions demonstrate an intentional, willful, and malicious intent to
`
`trade on the good will associated with the Plaintiff, and to pass off their goods as those of
`
`Plaintiff, to the great and irreparable injury of Plaintiff.
`
`52.
`
`As an initial matter, Plaintiff is entitled to permanent injunctive relief for the
`
`irreparable harm caused by Defendants. As a result of Defendants’ acts, Plaintiff has been
`
`damaged in an amount to be determined at trial.
`
`COUNT VI
`
`FEDERAL TRADEMARK DILUTION
`
`53.
`
`Plaintiff repeats and incorporates by reference the allegations in paragraphs 1-52
`
`as if fully set forth here.
`
`-13-
`
`

`
`Case 5:05-cv-008 Document 1
`
`Filed 08/24/2006 Page 14 of 41
`
`54.
`
`Plaintiff's Marks are distinctive, strong, and famous and became so before
`
`Defendants’ activities described in this Complaint.
`
`55.
`
`Defendants are making unlicensed and unauthorized commercial use in commerce
`
`of Plaintiffs Marks, and Defendants activities have caused and are causing dil

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