H
`
`**
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Pabst Brewing Company,
`Petitioner
`
`v.
`D.B. Miller, Inc.,
`Registrant
`
`§
`E
`3
`3
`E
`
`Cancellation No. 92045119
`fl
`05602006
`
`U.S. Patent & TMOfc/TM Mail HOP! D1. #26
`
`PETITIONER’S MOTION TO SUSPEND FURTHER PROCEEDINGS
`
`Pabst Brewing Company, Petitioner in the above-styled and numbered proceeding,
`
`hereby moves that all further proceedings in this cancellation be stayed pending resolution of
`
`Civil Action No. SA06CA0444 now pending in the United States District Court for the Western
`
`District of Texas, San Antonio Division. A true and correct copy of the Complaint in that action
`
`is attached hereto as Exhibit “A”.
`
`It
`
`is proper for the Trademark Trial and Appeal Board (the “Board”) to suspend a
`
`pending cancellation once the Board is notified that the parties to the pending cancellation are
`
`involved in a civil action which may have a bearing on the Board case. See 37 CFR 2.117(a).
`
`Suspension of a cancellation proceeding based on a civil action brought in federal district court is
`
`especially appropriate based on the fact that a federal district court’s decision is binding upon the
`
`Board, but the Board’s decision is not binding upon a federal district court. TMBP 5l0.02(a);
`
`Goya Foods Inc. v. Tropicana Products, Inc., 845 F.2d 848 (2nd Cir. 1988).
`
`As indicated by the contents of the Complaint, the issues presented in Civil Action No.
`
`SA06CAO444 involve the Registrant’s right to use the LONE STAR SPRINGS mark that is at
`
`issue in the pending cancellation. Because the issues to be resolved by the federal district court
`
`-1-
`
`

`
`have a bearing on the issues before the Board in the instant cancellation, and because the federal
`
`district court’s decision will be binding on the Board, the Board should suspend the pending
`
`cancellation.
`
`WHEREFORE, Applicant respectfully requests that the Board grant
`
`this Motion to
`
`Suspend Further Proceedings in its entirety, suspend this cancellation pending the final
`
`disposition of Civil Action No. SA06CA0444 now pending in the United States District Court
`
`for the Western District of Texas, San Antonio Division, and award Petitioner all such other and
`
`further relief to which it may be justly entitled.
`
`RESPECTFULLY SUBMITTED,
`
`Jackson Walker, L.L.P.
`112 East Pecan St., Suite 2100
`San Antonio, Texas 78205
`(210) 978-7700
`(210) 978-7790 (Fax)
`
`William B. Nash, Reg. No. 33,743
`ATTORNEYS FOR PETITIONER,
`PABST BREWING COMPANY
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify by my signature below that the foregoing PETITIONER’S MOTION TO
`SUSPEND FURTHER PROCEEDINGS has been forw rded, via first class mail, in accordance
`with the Federal Rules of Civil Procedure on the 3 17% day of
`, 2006, upon
`the following:
`
`Trademark Trial and Appeal Board
`United States Patent and Trademark Office
`
`P. O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Sandeep Seth
`SETH & ASSOCIATES
`
`6750 West Loop South, Suite 920
`
`Houston, Texas 77401
`
`:
`
`E :
`
`William B. Nash
`
`42767l2v.l
`
`

`
`Exhibit “A”
`
`

`
`J /
`
`:':
`.—.a
`
`‘J
`
`REQENEU
`we am we»
`CIVIL COVER SHEET
`The IS44 civil coversheetand i,il- orrgtiéi czriq.-linedherei _ - 'therre lacenorsugplementthe filingandserviceofpleadings orotherpapersas re uired by law, exceptasprovided
`‘
`fl VI‘
`.
`by local rules ofcourt. This fo , aprove b‘$5 -
`cg? ‘o
`v
`- n r o the United tates in September 1974, is required for the use oft e Clerk of ourt for the purpose ofInitiating
`the civil docket sheet.
`(SEE 1 STR
`‘ Ii;
`:-t ; :.'-' I-IE FORM.)
`Mic
`in?
`V
`‘to
`" WT‘
`I. (a)
`PLAINO .
`,.
`.v
`I
`K
`DEFENDANTS
`
`BY
`
`.—»—
`
`D E
`
`’
`
`Bexar
`(b) County of Residence of First 4. ted Plaintiff
`(EXCEPT IN US. PLAINTIFF CASES)
`
`(C) AttomCY'S(FirmName,Address,andTelephoneNumber)
`
`William B. Nash, Jackson Walker, L.L.P.
`l 12 E. Pecan St., Suite 2400, San Antonio, Tx 78205 (210)978-7700
`
`II. BASIS OF JURISDICTION (Place an "X" in One Box Only)
`
`U l
`
`U.S. Government
`Plaintiff
`
`I 3 Federal Question
`(U.S. Government Not a Party)
`
`Travis
`County of Residence of First Listed Defgndam
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE .
`LAND INVOLVED.
`
`NOTE:
`
` f)6 A '04
`
`.
`
`'
`
`‘_
`
`.
`
`
`:
`
`‘
`
`v
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES(Place an “X" in One Box for Plaintifi'
`(For Diversity Cases Only)
`and One Box for Defendant)
`PTF
`pm:
`on
`Cl
`1
`Cl 4
`Cl 4
`
`DEF
`U l
`
`Incorporated ar Principal Place
`of Business In This State
`
`Citizen of This State
`
`U 2
`
`U.S. Government
`Defendant
`
`0 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`—
`Citizen orsubjectofa
`Forei Coun
`
`U 2
`
`Cl
`
`2
`
`Incorporated and Principal Place
`of Business In Another State
`
`Cl
`
`5
`
`U 5
`
`U 3
`
`D 3
`
`Foreign Nation
`
`CI 6
`
`Cl 6
`
`IV
`
`
`
`
`
`
`
`
`
`
`
`{PR I PERTYRIGHTS
`820 Copyrights
`Cl 830 Patent
`I 840 Trademark
`
`T Pl
`an“X" in One Box Onl
`ATURE OF SUI
`~TORTS‘I"= '
`roassrruaa/raNiti~.1~v'.;-:.. =
`
`
`
`U 110 Insurance
`PERSONAL INJURY
`PERSONAL INJURY
`Cl 422 Appeal 28 USC 158
`D 610 Agriculture
`Cl 400 State Reapportionment
`
`Cl 120 Marine
`U 310 Airplane
`U 362 Personal Injury -
`U 423 Withdrawal
`Cl 620 Other Food & Drug
`D 410 Antitrust
`Cl I30'Miller Act
`0 315 Airplane Product
`Med. Malpractice
`CI 625 Drug Related Seizure
`28 USC 157
`D 430 Banks and Banking
`Cl 140 Negotiable Instrument
`Liability
`Cl 365 Personal Injury -
`of Property 2l USC 881
`U 450 Commerce
`U I50 Recovery of Overpayment
`Cl 320 Assault, Libel &
`Product Liability
`U 630 Liquor Laws
`CI 460 Deportation
`& Enforcement of Judgment
`Slander
`Cl 368 Asbestos Personal
`0 640 R.R. & Tmck
`Cl 470 Racketeer Influenced and
`I3 I51 Medicare Act
`D 330 Federal Employers‘
`Injury Product
`Cl 650 Airline Regs.
`Corrupt Organizations
`I3 I52 Recovery of Defaulted
`Liability
`Liability
`U 660 Occupational
`CI 480 Consumer Credit
`Student Loans
`0 340 Marine
`PERSONAL PROPERTY
`Safetylflealth
`D 490 Cable/Sat TV
`(Excl. Veterans)
`CI 345 Marine Product
`0 370 Other Fraud
`Cl 690 0th
`0 810 Selective Service
`I3 I53 Recovery of Overpayment
`Liability
`Cl 371 Truth in Lending
`::‘.3-.
`'E'—LABOR‘*-i1I-. 1"
`Cl 850 Securitieslcommoditiesl
`
`of Veteran's Benefits
`Cl 350 Motor Vehicle
`Cl 380 Other Personal
`Cl 710 Fair Labor Standards
`Exchange
`Cl 861 HIA (I 395ff)
`
`
`C] 160 Stockholders‘ Suits
`CI 355 Motor Vehicle
`Property Damage
`Act
`CI 875 Customer Challenge
`Cl 862 Black Lung (923)
`0 190 Other Contract
`Product Liability
`Cl 385 Property Damage
`Cl 720 Labor/Mgmt. Relations
`I2 USC 3410
`CI 863 DIWC/DIWW (405(g))
`
`Cl 195 Contract Product Liability D 360 Other Personal
`Product Liability
`Cl 730 Labor/Mgmt.Reporting U 864 SSID Title XVI
`C] 890 Other Statutory Actions
`Cl 196 Franchise
`Cl 865 RSI 405 1
`In'u
`& Disclosure Act
`D 891 Agricultural Acts
`
`
`-'-.»:‘./.l7EDER'AL =TAX-SUITS ’
`-. U 892 Economic Stabilization Act
`' 1‘ 1' REAL PROPERTYI.-'
`U 740 Railway Labor Act
`D 210 Land Condemnation
`I3 790 Other Labor Litigation
`Cl 870 Taxes (U.S. Plaintiff
`Cl 893 Environmental Matters
`
`Cl 220 Foreclosure
`Cl 791 Empl. Ret. Inc.
`or Defendant)
`Cl 894 Energy Allocation Act
`Security Act
`CI 87] IRS—Third Party
`0 230 Rent Lease & Ejectment
`Cl 895 Freedom of Information
`
`
`
`26 USC 7609
`Cl 240 Torts to Land
`Act
`[3 245 Tort Product Liability
`Cl 900Appeal of Fee Detennination
`Cl 290 All Other Real Property
`Under Equal Access
`to Justice
`Cl 950 Constitutionality of
`State Statutes
`
`
`
`'
`
`
`
`
`
`
`
`
`
`- "
`Cl 510 Motions to Vacate
`U
`Sentence
`D
`Habeas Corpus:
`Cl 443 Housing/
`
`Accommodations
`Cl 530 General
`U 535 Death Penalty
`CI 444 Welfare
`
`Cl 445 Amer. w/Disabilities - Cl 540 Mandamus & Other
`
`Cl 550 Civil Rights
`Employment
`
`555 Prison Condition
`I3 446 Amer. w/Disabilities -
`
`Other
`
`D 440 Other Civil Rights
`
`
`
`
`
`V. ORIGIN
`. 1
`Original
`Proceedin
`
`I
`
`fl 05 5'
`M5‘,
`
`fill’ g°e3¥rt(‘)’mDi5u'l°t
`Transferred from
`(Place an "X" in One Box Only)
`D 6 Nlultidistrict D 7 Magistrate
`another district
`D 4 Reinstated or D 5
`D 2 Removed from
`D 3 Remanded from
`Jud ent
`Lm ation
`s eci
`Reoened
`State Court
`A ellate Court
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`VI CAUSE OF ACTION 15 U.S.C. ~ 1051 et se.
`.
`'
`T ‘
`DI.)
`I
`CH5 fl‘ U \('5
`‘
`riefdescription ofcausezbgf-e\n¢,lan‘\'S MR ‘I09 , $e\\\Oj .00
`_
`‘{ +7” i«u-
`(U4!
`‘\|'\
`' _:
`a,
`'3
`—
`‘
`'
`a
`‘GI’; Q
`_
`LONE _
`I c1-ugcx 11-‘ THIS is A c Ass ACTION
`
`_DMAN S CHECK YES only ifdemanded in complaint:
`
`VIII. REQUESTED IN
`
`
`UNDER F.R.C.P. 23
`site as
`COMPLAINT;
`0G
`0 Yes
`I No
`VIII. RELATED CASE(S)
`_
`_
`.
`IF ANY
`‘S‘° ‘“"“’°"°“"'
`
`JUDGE
`
`DOCKET NUMBER
`
`CE USE ONLY
`
`2006
`
`FOR 0
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING II-‘P
`
`JUDGE
`
`MAG. JUDGE _:
`
`
`
`

`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`
`SANONIO DIVISION
`
`"
`
`§
`
`
`
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`COMES NOW PABST BREWING COMPANY, Plaintiff, and files this its Original Complaint
`
`against D.B. MILLER, INC., Defendant, and shows:
`
`I.
`
`PARTIES
`
`1.
`
`Plaintiff is a corporation, duly formed and existing under the laws of the State of Delaware,
`
`having its principal place of business in Bexar County, Texas.
`
`2.
`
`Defendant D.B. MILLER, INC., is a Texas corporation in the business of distributing goods to
`
`retail locations including beverages. Defendant’s principal place of business at 9333 B. Brown
`
`Lane, Austin in Travis County Texas. Defendant may be served by and through its registered
`
`agent: Sheridan C. Emstmeyer, 101 Westlake Drive, Austin, Texas 78746.
`
`II.
`
`VENUE AND JURISDICTION
`
`3.
`
`Jurisdiction is proper pursuant to 28 U.S.C. §§ 1331 and 1338. Venue is properly placed under
`
`28 U.S.C. § 1391 in the Western District of Texas, San Antonio Division,
`
`in that all or a
`
`substantial part of the events giving rise to this claim occurred in the Western District of Texas
`
`and in the San Antonio Division of the Western District of Texas. Defendant sells and distributes
`
`its bottled water in Western District of Texas and in the San Antonio Division of the Western
`
`District of Texas, and the acts of infringement occurred and continue to occur in Western District
`
`of Texas and in the San Antonio Division of the Western District of Texas.
`
`4222305v.2 304191/P3831]
`
`

`
`This Court also has jurisdiction over the state law based claims under 28 U.S.C. § 1338(b) as the
`
`state law claims form part of the same case and controversy and arise out of the same nucleus of
`
`facts as the federal claims.
`
`Defendant has offered to sell and continues to offer to sell goods or services throughout the
`
`HISTORY OF LONE STAR BEER
`
`III.
`
`FACTS
`
`Lone Star Brewery was built in San Antonio in 1904 and sold beer until prohibition forced the
`
`closure of the business in 1918.
`
`At the end of prohibition in 1933, Lone Star Brewery was rebuilt in San Antonio and commenced
`
`selling beer.
`
`In 1940, Lone Star Brewery developed a new formula for its beer and started selling this beer
`
`under the LONE STAR trademark from its San Antonio location.
`
`In 1945, the LONE STAR marketing theme “Brewed with Pure Artesian Water” was adopted.
`
`The use of crystal clear water has been and still is part of what gives LONE STAR beer its
`
`smooth award winning taste.
`
`LONE STAR beer is the premier sponsor of Texas Music having sponsorships with Gary P.
`
`Nunn, Terri Hendrix, Two Tons of Steel, Jody Jenkins, Tracy Lynn, The Hollisters, 1100 Springs,
`
`CowJazz, and Charlie Robison.
`
`PLA]NTIFF’S STATE TRADEMARK RIGHTS
`
`Plaintiff owns the State of Texas registered service mark for LONE STAR, Reg. 934,717, which
`
`was registered in 1940, and Reg. 1,447,417, which was registered in 1949. Attached as Exhibits
`
`A and B are true and correct copies of the Texas registration certificates.
`
`10.
`
`11.
`
`12.
`
`4222305v.2 304191/P3831]
`
`

`
`13.
`
`14.
`
`The Texas registration of the LONE STAR mark was constructive notice at least as early as 1967
`
`throughout Texas of the registrant’s claim of ownership of the mark. Tex. Bus. & Com. Code
`
`§16.l5 (b).
`
`The Texas registration certificates for LONE STAR attached as Exhibits A and B are primafacie
`
`evidence of:
`
`a)
`
`b)
`
`c)
`
`the validity of the registered mark,
`
`the registrant’s ownership of the mark, and
`
`the registrant’s exclusive right
`
`to use the registered mark in commerce on or in
`
`connection with the goods or services specified in the certificate.
`
`Tex. Bus. & Corn. Code §16.15 (c).
`
`PLAINTIFF ’S FEDERAL TRADEMARK RIGHTS
`
`15.
`
`Plaintiff owns the following registered federal trademarks:
`
`( 1) Reg. No. 674,291 for the mark
`
`LONE STAR in Class 32 (light beverages) and which was registered on the Principal Register on
`
`February 17, 1959; (2) Reg. No. 2,487,305 for the mark LONE STAR LIGHT & Design in Class
`
`32 (light beverages) which was registered on the Principal Register on September 11, 2001; and
`
`other registrations. The registrations have a date of first use of at least as early as February 1,
`
`1940. The registrations are on the Principal Register under the Lanham Act. Attached as
`
`Exhibits C and D are true and correct copy of the registration certificates.
`
`The date of registration for Reg. No. 674,291 for LONE’ STAR was constructive use of the mark
`
`as of February 17, 1959, conferring a right of priority, nationwide in effect, on or in connection
`
`with the goods or services specified in the registration against any other person.
`
`15 U.S.C. §
`
`1057 (c).
`
`Plaintiffs right to use the mark has become incontestable under the Lanham Act Section 15, the
`
`registration certificate LONE STAR Reg. No. 674,291 attached as Exhibit C is conclusive
`
`16.
`
`17.
`
`evidence of:
`
`4222305v.2 304191/P3831 1
`
`

`
`d)
`
`e)
`
`f)
`
`g)
`
`the validity of the registered mark,
`
`the registration of the mark,
`
`the registrant’s ownership of the mark, and
`
`the registrant’s exclusive right
`
`to use the registered mark in commerce on or in
`
`connection with the goods or services specified in the certificate.
`
`15 U.S.C. § 1115 (b).
`
`18.
`
`All of the registrations in Exhibits A, B, C and D are in full force and effect, and the marks are
`
`still owned and used by Plaintiff. They are collectively referred to as the “LONE STAR Marks. “
`
`PLAINTIFF’S LEGENDARY LONE STAR MARK
`
`19.
`
`Plaintiff is a brewing company whose
`
`LONE STAR mark and trade name identify and
`
`distinguish Plaintiffs goods and business in San Antonio, Texas, and in the United States.
`
`20.
`
`As shown in the label below, Plaintiffs LONE STAR label prominently uses: blue, white and red
`
`color bands;
`
`the color blue being more prominent than the other colors; a star on a blue
`
`background; an outline of the State of Texas in the color blue; the word LONE on a white
`
`background; and the word STAR in white lettering.
`
`J
`
`
`
`1%
`E
`[55 umuu.
`g
`,!xnr.m£n
`.§5 59
`§ §
`
`
`1%? ":
`' E
`‘Sc,
`:_.
`._.
`..- g 3:
`3
`§lI'I
`E 2%
`E g
`to EE
`4'
`623986
`
`
`$''-'-;-'-
`c.>_-I2-I_
`
`_ P
`—""‘
`3 Am
`- 3;;
`
`M:--.....
`
`_"—
`
`3
`
`0avSV)Gl'HlHflM1J
`
`re
`
`4222305v.2 304191/P3 83 11
`
`
`
`ETlLIA!!lJll|IMI.l|l|'tmvmuerum.-runnnnuflll‘__._i
`
`
`
`
`
`
`
`CONSUMPTIONOFALCOHOHCBEVERAGESIMPAIBSYOUR‘
`
`BUNEIINHENTWARNING:(1)ACCORDINGTOTHESURGEONGENERALWOMEN‘:‘l i
`
`
`
`
`
`
`
`
`
`L)
`G
`§ E
`335
`gag
`5 Efii
`gag
`age
`=3;
`E32
`
`

`
`21.
`
`22.
`
`23.
`
`Plaintiffs goods are widely and nationally known and favorably accepted by Plaintiffs
`
`customers.
`
`Plaintiff has developed widespread recognition and acclaim for its LONE STAR products, and
`
`Plaintiffs LONE STAR goods are known for their high quality by Plaintiff s customers.
`
`The commercial success of Petitioner’s LONE STAR beer and merchandise is apparent.
`
`Its
`
`products can be found throughout Texas, from restaurants to grocery and convenience stores.
`
`24.
`
`Because of the extensive use and promotion of LONE STAR beer and merchandise, most
`
`consumers of beverages in Texas associate beverages labeled as LONE STAR with Plaintiffs
`
`LONE STAR products.
`
`As a result of the unique and distinctive nature of Plaintiffs marks, the goods and services
`
`offered therewith, the advertising associated therewith, and widespread and favorable public
`
`acceptance and recognition, Plaintiffs LONE STAR mark has a become strong mark and asset of
`
`substantial and incalculable value as a symbol of Plaintiffs goods and products.
`
`Plaintiffs mark has become well-known and widely perceived by consumers as identifying
`
`Plaintiffs quality products.
`
`LONE STAR symbolizes the favorable goodwill consumers have toward Plaintiff and its goods
`
`and services.
`
`Plaintiff s LONE STAR beer is famous in Bexar County, Texas.
`
`Plaintiffs LONE STAR beer is famous throughout the state of Texas.
`
`Plaintiffs LONE STAR beer is famous throughout the United States.
`
`Plaintiff s LONE STAR Marks are famous in Bexar County, Texas.
`
`Plaintiffs LONE STAR Marks are famous throughout state of Texas.
`
`Plaintiffs LONE STAR Marks are famous throughout the United States.
`
`“Lone Star” is a protectable term for beverages.
`
`Plaintiffs use of the LONE STAR Marks in commerce have been open and notorious.
`
`25.
`
`26.
`
`27.
`
`28.
`
`29.
`
`30.
`
`31.
`
`32.
`
`33.
`
`34.
`
`35.
`
`4222305v.2 304191/P3831 l
`
`-5-
`
`

`
`E.
`
`DEFENDANT’S USE OF “LONE STAR”
`
`36.
`
`Defendant’s bottled water is manufactured, labeled, and distributed under the name LONE STAR
`
`SPRINGS.
`
`37.
`
`Defendant refers to its bottled water in labels and in other ways customary to trade as LONE
`
`STAR SPRINGS. On information and belief, Defendant has distributed other promotional items
`
`using the same name.
`
`38.
`
`As shown in the label below, Defendant’s LONE STAR SPRINGS label prominently uses: blue,
`
`white and red colors; the color blue being more prominent than the other colors; a star on a blue
`
`background; an outline of the State of Texas in the color blue; the words LONE STAR in white
`
`lettering. Attached hereto as Exhibit E, which is incorporated herein by reference, is a true and
`
`correct copy of the Defendant’s LONE STAR SPRINGS label.
`
`prii1gs...
`
` .. __ ._.;,_..u.g;.,.... .
`
`Natural Spring Water 16.9 02 (50? mt)
`5‘?."§“l“ F.."i'°
`
`39.
`
`On or about June 14, 2004, Defendant filed an intent-to-use application to register LONE STAR
`
`SPRINGS in Class 32 (light beverages).
`
`40.
`
`The Trademark Office initially rejected Defendant’s application.
`
`4222305v.2 304191/P3831]
`
`

`
`'6;
`
`41.
`
`42.
`
`43.
`
`44.
`
`45.
`
`46.
`
`47.
`
`On January 15, 2005, Defendant was advised by Trademark Examiner Buongiomo, the examiner
`
`reviewing Defendant’s trademark application, of several LONE STAR trademark registrations
`
`owned by Plaintiff including, without limitation, Registration Nos. 674,291 and 2,487,305.
`
`On January 15, 2005, Trademark Examiner Buongiomo refused registration of Defendant’s
`
`application “under Trademark Act Section 2(d), 15 U.S.C. §l052(d), because the applicant's
`
`mark, when used on or in connection with the identified goods, so resembles the marks in U.S.
`
`Registration Nos. 0,674,291, 2,191,783, 2,487,305, 2,546,443 and 2,549,376 as to be likely to
`
`cause confusion, or to cause mistake, or to deceive.”
`
`On January 15, 2005, Trademark Examiner Buongiomo advised Defendant that “although the
`
`applicant’s mark contains the descriptive term “SPRINGS,” that term will not detract from the
`
`source identifying elements LONE STAR. Consequently, consumers are likely to confuse the
`
`applicant’s proposed mark with the marks of the registrant.”
`
`On January 15, 2005, Trademark Examiner Buongiomo advised Defendant that “[b]ecause the
`
`respective marks are similar,
`
`the only issue before the examining attorney is whether the
`
`applicant's goods are so related to the registrant's goods that confusion as to source of origin or
`
`sponsorship is likely to occur. The examining attorney must conclude that they are so related, for
`
`it is foreseeable that customers of the applicant might encounter the registrant's respective goods
`
`and mark in the marketplace given the similar channel of trade within which the identified goods
`
`travel.”
`
`On January 15, 2005, Trademark Examiner Buongiomo advised Defendant that “[c]onfusion as to
`
`source of origin or sponsorship is extremely likely if the applicant's proposed mark is allowed to
`
`register.”
`
`On July 28, 2005, Defendant amended its application to the Supplemental Register.
`
`On September 27, 2005, Defendant’s LONE STAR SPRINGS application was registered
`
`claiming a date of first use of October 14, 2004.
`
`4222305v.2 304191/P3831l
`
`

`
`48.
`
`49.
`
`50.
`
`51.
`
`52.
`
`53.
`
`54.
`
`55.
`
`56.
`
`57.
`
`58.
`
`Even though Defendant was advised by Trademark Examiner Buongiomo of the potential for
`
`confusion with Plaintiffs registrations, Defendant never contacted Plaintiff to see if Plaintiff
`
`would object or complain about Defendant’s use of LONE STAR SPRINGS for bottled water.
`
`Even though Defendant was advised by Trademark Examiner Buongiomo of the potential for
`
`confusion with Plaintiffs registrations, Defendant never asked Plaintiff for permission to use
`
`LONE STAR SPRINGS.
`
`Defendant’s use of LONE STAR has been without Plaintiffs permission.
`
`Defendant markets and sells its beverages to residents of Bexar County, Texas and elsewhere in
`
`Texas.
`
`Defendant sells its beverages to stores located in Bexar County, Texas and elsewhere in Texas.
`
`Defendant markets and sells its LONE STAR SPRINGS bottled water to residents of Bexar
`
`County, Texas and elsewhere in Texas.
`
`Defendant sells its LONE STAR SPRINGS bottled water to stores located in Bexar County,
`
`Texas and elsewhere in Texas.
`
`The Defendant’s use of LONE STAR SPRINGS is marketed to Plaintiffs consumers and
`
`prospective customers and is likely to cause confusion or to cause mistake or to deceive the
`
`consuming public into believing that Defendant’s goods and services are sponsored by or related
`
`to Plaintiff.
`
`On information and belief, Defendant’s bottled water is sold in many of the same locations as
`
`Plaintiffs beverages.
`
`On information and belief, a substantial number of customers and prospective customers who see
`
`the words LONE STAR on Defendant’s labels and packaging will be confused into believing that
`
`Plaintiff has sponsored or produced the product.
`
`Defendant had constructive notice of Plaintiffs ownership of the LONE STAR Marks at least as
`
`early as June 14, 2004 (the date Defendant filed its trademark application).
`
`4222305v.2 304191/P383 ll
`
`

`
`59.
`
`60.
`
`61.
`
`62.
`
`63.
`
`64.
`
`On information and belief, Defendant had actual notice of Plaintiffs ownership of the LONE
`
`STAR Marks prior to Defendant’s adoption and use of LONE STAR SPRINGS in 2004.
`
`On information and belief, Defendant had actual notice of Plaintiffs LONE STAR Marks before
`
`Defendant filed its application for registration of the LONE STAR SPRINGS mark on June 14,
`
`2004.
`
`On information and belief, Defendant had actual notice of Plaintiffs LONE STAR Marks before
`
`Defendant first used the words LONE STAR SPRINGS in commerce in October 2004.
`
`Defendant’s acts have injured and are likely to further injure the business reputation and to dilute
`
`the distinctive quality of Plaintiffs marks, and damage Plaintiffs good-will. Defendant’s acts
`
`have been committed maliciously, willfully, and wantonly to deprive Plaintiff of rights and
`
`property, and the complained-of acts are being done maliciously and willfully and with reckless
`
`disregard for Plaintiff s rights. Plaintiff has been and will continue to be damaged.
`
`Evidencing their willful infringement of Plaintiffs exclusive rights, Defendant has been aware of
`
`Plaintiffs intent to enforce its trademark rights since the Trademark Trial and Appeal Board
`
`issued its Notice of Cancellation on November 8, 2005. Attached as Exhibit F is a true and
`
`correct copy of the Petition for Cancellation.
`
`On information and belief, the Defendant has substantially less experience in manufacturing,
`
`marketing and distributing beverages and other goods than the Plaintiff.
`
`If the Defendant
`
`continues to distribute and sell goods with the words LONE STAR, Defendant will be learning
`
`this trade (for better or for worse) with customers who believe they are dealing with Plaintiff.
`
`Plaintiff has a superior reputation for beverages and other goods, and the value which Plaintiff
`
`has developed in the LONE STAR Marks hangs in the balance.
`
`65.
`
`Defendant, if it continues to operate and distribute products with the words LONE STAR will
`
`trade upon Plaintiffs registered marks, common law rights, and will cause confusion among
`
`COIISUIIIGFS.
`
`4222305v.2 304191/P3831 1
`
`

`
`66.
`
`Defendant’s use of a mark which is identical or confusingly similar to Plaintiffs mark is knowing
`
`and willful and will continue unless enjoined by this Court. Actual consumer confiision will
`
`continue unless Defendant’s infringement is enjoined by this Court. Unless Defendant’s acts a.re
`
`enjoined, Plaintiff will suffer great, incalculable, and irreparable harm.
`
`IV.
`
`CAUSES OF ACTION
`
`COUNT I
`
`(State Dilution)
`
`67.
`
`The facts set forth above are incorporated herein by reference. The Texas Anti-Dilution Statute
`
`states:
`
`likely to injure a business
`A person may bring an action to enjoin an act
`reputation or to dilute the distinctive quality of a mark registered under this
`chapter or Title 15, U.S.C. or a mark or trade name at common law, regardless of
`whether there is competition between the parties or confusion as to the source of
`goods or services.
`
`Tex. Bus. & Com. Code § 16.29.
`
`68.
`
`Defendant’s acts complained of herein dilute the distinctive quality of Plaintiffs trademark in
`
`violation of Texas Business & Commerce Code § 16.29. The continued operation, sale and
`
`distribution of beverages and other products bearing the words LONE STAR is likely to blur and
`
`tarnish Plaintiffs LONE STAR trademark and substantially reduce its value to Plaintiff. Unless
`
`enjoined, Defendant will continue to violate the Texas Anti-Dilution Act, resulting in irreparable
`
`harm to Plaintiff for which Plaintiff has no adequate remedy at law.
`
`COUNT II
`
`(Federal Trademark Infringement)
`
`69.
`
`The facts set forth above are incorporated herein by reference. Defendant has, without the
`
`consent of Plaintiff, used in commerce a reproduction, counterfeit, copy, or colorable imitation of
`
`Plaintiffs registered mark in connection with the sale, offering for sale, distribution, or
`
`advertising of goods and services in connection with which such use is likely to cause confusion
`
`or to cause mistake or to deceive and has reproduced, counterfeited, copied or colorably imitated
`
`4222305v.2 304191/P383 ll
`
`-10-
`
`

`
`a registered mark and applied such reproduction, counterfeit, copy, or colorable imitation to signs
`
`or advertisements intended to be used in commerce upon or in connection with the sale, offering
`
`for sale, distribution, or advertising of goods or services on or in connection with which such use
`
`is likely to cause confusion, or to cause mistake or to deceive, all in violation of the Lanham Act,
`
`15 U.S.C. § 1051 et seq. Defendant’s actions, as described herein, were committed willfully and
`
`with reckless disregard for Plaintiffs rights. Plaintiff is entitled to recover exemplary, in addition
`
`to, actual damages.
`
`COUNT III
`
`(State Trademark Infringement)
`
`70.
`
`The facts set forth above are incorporated herein by reference. Defendant has, without the
`
`consent of Plaintiff, used in commerce a reproduction, counterfeit, copy, or colorable imitation of
`
`Plaintiff's registered mark in connection with selling, offering for sale, or advertising goods or
`
`services in connection with which such use is likely to deceive or cause confusion or mistake as
`
`to the source or origin of the goods or services all in violation of Tex. Bus. & Com. Code § 16.26
`
`(a).
`
`71.
`
`Defendant’s acts complained of herein violate Plaintiffs trademark rights. Unless enjoined,
`
`Defendant will continue to violate the Texas Trademark Act, resulting in irreparable harm to
`
`Plaintiff for which Plaintiff has no adequate remedy at law. Tex. Bus. & Com. Code § 16.26 (c).
`
`72.
`
`Defendant’s actions, as described herein, were committed willfully and with reckless disregard
`
`for Plaintiff” s rights. Plaintiff is entitled to recover exemplary, in addition to, actual damages.
`
`COUNT IV
`
`(Federal Unfair Competition)
`
`73.
`
`The facts set forth above are incorporated herein by reference. Defendant has been and is
`
`continuing to use a false description of origin, false or misleading description of fact, or false or
`
`misleading representation of fact which is likely to cause confusion, or to cause mistake, or to
`
`deceive as to the affiliation, connection, or association of such person with another person, or as
`
`4222305v.2 304191/P3831]
`
`-11-
`
`

`
`to the origin, sponsorship, or approval of its goods, services, or commercial activities by another
`
`person and, in commercial advertising or promotion, has misrepresented and is misrepresenting
`
`the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods,
`
`services, or commercial activities, all in violation of 15 U.S.C. § 1 125(a) (Lanham Act §43(a)).
`
`74.
`
`Defendant’s actions, as described herein, were committed willfully and with reckless disregard
`
`for Plaintiffs rights. The willful nature of Defendant’s infringement render this case exceptional
`
`within the meaning of 15 U.S.C. § 1 117, entitling Plaintiff to an award of its reasonable
`
`attorneys’ fees. Plaintiff is entitled to recover exemplary damages in addition to its actual
`
`damages.
`
`COUNT V
`
`(State Unfair Competition)
`
`75.
`
`The facts set forth are incorporated herein by reference. Defendant’s acts complained of herein
`
`comprise unfair competition against Plaintiff under the laws of the State of Texas.
`
`COUNT VI
`
`(Injunctive Relief)
`
`76.
`
`The facts set forth above are incorporated herein by reference. Plaintiff seeks a permanent
`
`injunction pursuant to 15 U.S.C. §§1 116 and 1125(c), and Texas Business & Commerce Code §
`
`16.29. Plaintiff has no adequate remedy at law or otherwise for the harm or damage done by
`
`Defendant because Plaintiffs business goodwill will be irreparably damaged, and such damage is
`
`difficult to quantify. Plaintiff will suffer irreparable harm, damage, and injury unless the acts and
`
`conduct of Defendant complained of above are enjoined because the use of Defendant’s mark is
`
`likely to cause confusion among customers and vendors which will result in a loss of customers,
`
`reputation, revenue, and profits, diminished marketing and advertising, and trademark dilution.
`
`It
`
`is essential that Defendant’s infringing acts be restrained. If Defendant is allowed to use LONE
`
`STAR SPRINGS, or any other name which includes LONE STAR, or other marks confusingly
`
`4222305v.2 304191/P3831!
`
`-12-
`
`

`
`similar to Plaintiff‘ s registered marks, Plaintiff will suffer a financial loss to its business which is
`
`difficult to determine and which may not be regained.
`
`COUNT VII
`
`(Attorneys ’ Fees)
`
`77.
`
`The facts set forth above are incorporated herein by reference. Plaintiff has incurred attorneys’
`
`fees and other costs associated with the filing of this suit. As a result of the conduct described
`
`above, Plaintiff is entitled to recover its attorneys’ fees.
`
`COUNT VIII
`
`(Exemplary Damages)
`
`78.
`
`Defendant’s actions, as described herein, were committed willfully and with reckless disregard
`
`for Plaintiff's rights. Plaintiff is entitled to recover exemplary damages in addition to its actual
`
`damages.
`
`V.
`
`PRAYER
`
`WHEREFORE, Plaintiff, Pabst Brewing Company, respectfully prays:
`
`79.
`
`At a final hearing, a permanent injunction be granted and a writ of injunction issue commanding
`
`Defendant, its agents, servants, employees, attorneys, and all parties in privity with them to be
`
`permanently enjoined from:
`
`a)
`
`b)
`
`c)
`
`d)
`
`e)
`
`manufacturing, selling, or distributing goods or products or any other items visible to the
`consuming public which bear the words LONE STAR SPRINGS or any other name
`which includes LONE STAR;
`
`undertaking or continuing any advertising or other promotion of any product or beverage
`in association with the name LONE STAR SPRINGS or any other name which includes
`LONE STAR;
`
`representing to anyone or committing any acts calculated to cause members of the public
`to believe that Defendant’s goods or services have any authority, sponsorship, affiliation,
`or any connection with Plaintiff or Plaintiffs goods and services;
`
`in any manner, the marks LONE STAR SPRINGS, or any other name which
`using,
`includes LONE STAR, or any other words or logos similar thereto that may cause, or
`may be likely to cause, confusion, mistake, or deception by the public, alone or in
`combination with any other word or words;
`
`competing unfairly with or engaging in any acts which would tend to dilute or diminish
`the distinctive qualities of Plaintiffs LONE STAR trademarks;
`
`4222305v.2 304191/P383 ll
`
`-13-
`
`

`
`f)
`
`g)
`
`continuing Defendant’s unlawful acts as complained of herein; and to
`
`destroy the infringing reproductions, counterfeits, copies, or colorable imitations in the
`possession or under the control of the infringer be destroyed.
`
`80.