Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA89841
`ESTTA Tracking number:
`07/13/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92045316
`Defendant
`TAPOUT, INC.
`TAPOUT, INC.
`21800 BARTON ROAD SUITE
`GRAND TERRACE, CA 92313
`
`Correspondence
`Address
`
`JOHN P. RINKIEWICZ, ESQ
`KAYE SCHOLER LLP
`901 FIFTEENTH STREET, N.W., SUITE 1100
`WASHINGTON, DC 20005
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Motion to Suspend for Civil Action
`John P. Rynkiewicz
`jrynkiewicz@kayescholer.com
`/john p rynkiewicz/
`07/13/2006
`TapoutComplaintTTAB.pdf ( 12 pages )(577366 bytes )
`TapoutCivilCvrLtrpdf.pdf ( 1 page )(84100 bytes )
`TapoutTTABMotionSusp.pdf ( 1 page )(11357 bytes )
`
`

`
`Summons in a Civil Action (Rev 11/97!
`
`\
`
`I
`
`United States District Court
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`TAPOUT. |NC., a California
`corporation
`
`vs
`TAPOUT HOLDINGS, lNC., a
`Califomia corporation; LARRY
`PALETZ, an individual; MAD
`ENGINE. lNC., a California
`corporation; CRYSTAL
`
`"
`
`SEUMMONS IN A CIVIL ACTION
`C356 N0-
`
`’06CV 0631JM
`
`LSP
`
`,~.-M
`
`unknown form
`
`ENTERPRISES, a business entity of
`
`TO: (Name and Address of Defendant)
`
`§
`
`‘
`
`INC, A CALIFORNIA CORPORATION
`TAPOUT HOLDINGS,
`13242 LARKFIELD COURT
`SAN DIEGO, CA 92130
`
`YOU ARE HEREBY SUMMONED and required to file with the Clerk of this Court and
`serve upon PLAINTIFF'S ATTORNEY
`
`Ronald Jason Palmieri, Esq./Robert P. Wargo, Esq.
`LAW OFFICES OF RONALD JASON PALMIERI, P.C.
`1644 North Orange Grove Avenue
`'
`Los Angeles. California 90046
`
`.
`.
`.
`.
`.
`.
`20
`days after
`An answer to the complaint which is herewith served upon you, within
`service of this summons upon you, exclusive ofthe day ofservice. Ifyou fail to do so, judgment
`by default will be taken against you for the relief demanded in the complaint.
`
`. MAR 2 2 2005
`w. Samuel Hamrick, Jr.
`_________________ ________________
`CLERK
`DATE
`
` Summons in a Civil Action
`
`::ODMA\PCDOCS\WORDPER.FECT\l4443\l May 5, 1999 (1 1:34am)
`
`Page 1 of 2
`
`ORIGINAL
`
`

`
`

`
`
`
`LAW OFFICES OF RONALD JASON PALMIERI
`Ronald Jason Palmieri, State Bar #96953
`Robert P. Wargo, State Bar #175177
`1644 North Orange Grove Avenue
`Los Angeles, California 90046
`Tel: (323) 882-8225
`Fax: (323) 882-8208
`
`Attorneys for Plaintiff Tapout, Inc.
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`TAPOUT, INC., a California corporation
`
`)
`
`CASENO.:
`
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`Plaintiff,
`
`vs.
`
`§/\J\J\2\J\)\/\J€§/\/\J€\./\é
`
`TAPOUT HOLDINGS, INC., a California
`corporation; LARRY PALETZ, an
`individual; MAD ENGINE, INC., a
`California corporation; CRYSTAL
`ENTERPRISES, a business entity of
`unknown form.
`
`Defendants
`
`COMPLAINT
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff, Tapout, Inc., alleges as follows:
`
`NATURE AND BASIS OF THE ACTION
`
`1.
`
`This action is brought by Plaintiff Tapout, Inc., under the Lanham Act, 15 U.S.C. §150l,
`
`et seq., against Defendants Tapout Holdings, Inc., Larry Paletz and Mad Engine, Inc.,
`
`seeking preliminary and permanent injunctive relief, and statutory and other damages,
`
`relating to Defendants’ unauthorized and bad faith registration and use of and trafficking
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`in the domain name www.tapout.com, and unauthorized use of the Mark and name
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`TAPOUT® and the TAPOUT Logo in connection with the promotion and sale of
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`clothing and related products. Plaintiff Tapout, Inc., owns the federa1ly—registered
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`Page 1
`COMPLAINT
`
`

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`trademark TAPOUT®, which is a well-known Mark that is distinctive and famous within
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`the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c). Plaintiff Tapout,
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`Inc., and Charles Lewis (the prior owner of the Mark) have used the Mark and the
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`TAPOUT Logo continuously since 1997 in connection with the sale of its goods.
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`Plaintiff Tapout, Inc., Charles Lewis and Daniel Caldwell (Lewis’ partner in the
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`TAPOUT clothing line business before Tapout, Inc., was incorporated) have invested
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`substantial sums of money to advertise and publicize the TAPOUT® Mark and the
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`TAPOUT Logo.
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`The registration and use by Defendants of an internet domain name that is confusingly
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`similar to and dilutive of the TAPOUT® Mark and name, and the use by Defendants of
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`the TAPOUT® Mark and the TAPOUT Logo as trade and/or service marks, constitutes
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`cyberpiracy, trademark infringement, trade name infringement, trademark dilution and
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`unfair competition in violation of Plaintiff’ s rights under 15 U.S.C. §§ll14(a), 1125(a),
`
`1l25(c) and 1125(d) as well as California law. Defendants’ acts of cyberpiracy,
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`trademark infiingement, trade name infringement, trademark dilution and unfair
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`competition with respect to the TAPOUT® Mark, trade name and logo have caused and
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`are likely to cause Plaintiff Tapout, Inc., to suffer damages as well as irreparable injury
`
`for which there is no adequate remedy at law.
`
`THE PARTIES
`
`Plaintiff Tapout, Inc., is a California Corporation with its principal place of business in
`
`San Bemardino County, California.
`
`Defendant Tapout Holdings, Inc., is a California corporation with its principal place of
`
`business in San Diego County, California. Defendant Tapout Holdings, Inc., was known
`
`as GGW Holdings, Inc., from its incorporation in March 2005 through November 16,
`
`2005, when its name was changed.
`
`On information and belief, Defendant Larry Paletz is an individual residing in San Diego
`
`County, California, and is a shareholder and officer of Tapout Holdings, Inc.
`
`Page 2
`COMPLAINT
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`Plaintiff is informed and believes, and thereon alleges, that at all times herein mentioned,
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`there existed, and there continues to exist, a unity of interest and ownership between
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`Defendant Paletz, on the one hand, and Defendant Tapout Holdings, Inc., on the other
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`hand, such that any individuality and separateness between Paletz and Tapout Holdings,
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`Inc., has ceased to exist. Rather, Plaintiff is informed and believes, and thereon alleges,
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`that Tapout Holdings, Inc., is the alter ego of Paletz.
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`Tapout Holdings, Inc., is, and, at all times herein mentioned was, a mere shell,
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`instrumentality and conduit through which Paletz carries on his business, exercising
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`complete control and over Tapout Holdings, Inc., to such extent that Tapout Holdings,
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`Inc., did not and does not separately exist, including the interrningling of the assets of
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`Tapout Holdings, Inc., with the assets of Paletz, to suit his convenience. Plaintiff is also
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`informed and believes, and thereon alleges, that Paletz is the sole shareholder of Tapout
`
`Holdings, Inc.
`
`Accordingly, adherence to the fiction of the separate existence of Paletz as distinct from
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`Tapout Holdings, Inc., would permit abuse of the corporate privilege, would sanction the
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`fraudulent conduct of Paletz and Tapout Holdings, Inc., and would work to thwart the
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`rights of Plaintiff.
`
`Defendant Mad Engine, Inc., is a California corporation with its principal place of
`
`business in San Diego County, CA.
`
`w»'«\~‘et«s-,~‘m»:‘:“““‘
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`On information and belief, Defendant Crystal Enterprises is a business entity of unknown
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`form, with its principal place of business in West Hills, CA.
`
`JURISDICTION AND VENUE
`
`This Court has subject matter jurisdiction over Plaintiffs federal claims pursuant to the
`
`Lanham Act, 15 U.S.C. §l 121 and 28 U.S.C. §§l331 and 1338(a) and (b), and has
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`supplemental jurisdiction over Plaintiff’ s state law claims pursuant to 28 U.S.C.
`
`§1367(a).
`
`This Court has personal jurisdiction over Defendants Tapout Holdings, Inc., and Larry
`
`Page 3
`COMPLAINT
`
`

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`until approximately August 2005, further demonstrating the deceptive practices of
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`Defendants Tapout Holdings, Inc., and Larry Paletz.
`
`64.
`
`65.
`
`Records of Tapout Holdings, Inc.’s, three additional filings obtained from the United
`
`States Patent and Trademark Office’s Trademark Electronic Search System (TESS) are
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`attached hereto as Exhibits “E,” “F,” and “H,” and incorporated by reference.
`
`On or about January 4, 2006, Defendants Tapout Holdings, Inc., and Larry Paletz, filed
`
`with the United States Patent and Trademark Office, a Petition for Cancellation of
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`USPTO Registration number 2346533 for the tradename “TAPOUT,” currently owned
`
`by Tapout, Inc., falsely contending that Lewis fraudulently obtained the registration
`
`based on the following allegations:
`
`a.
`
`Defendant Tapout Holdings, Inc., is the “successor in title to the Tapout
`
`Productions Company,” and the TAPOUT® Mark was first used by the Tapout
`Productions Company in 1994 for goods and services in different classes.
`
`Tapout Productions Company used the Top Level Domain www.tapout.com for
`
`the purpose of advertising and selling goods and services.
`
`In 1997, Charles Lewis contacted the Tapout Productions Company in an attempt
`
`to purchase the Top Level Domain www.tapout.com, which offer was rejected by
`
`b.
`
`c.
`
`the Tapout Productions Company.
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`d.
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`Although Charles Lewis was fully aware that the Tapout Productions Company
`
`was using, and continued to use the Mark Tapout for various and goods and
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`services including, but not limited to, IC 025, Mr. Lewis applied for registration
`
`of the Mark, registration number 2346533.
`
`e.
`
`f.
`
`Mr. Lewis used the domain name www.inyaface.com, and since it did not indicate
`
`Tapout, Tapout Productions Company was not aware of Mr. Lewis’ activities.
`
`When Mr. Lewis applied for the trademark for Tapout, he knew that Tapout
`
`Productions Company had made prior use of the Mark and continued to use the
`
`TAPOUT® Mark.
`
`Pa e 13
` COMPLAINT
`
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`80.
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`81.
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`82.
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`83.
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`Defendants’ claim.
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`Unless restrained by this court, Defendants will continue to infringe upon Plaintiffs’
`
`TAPOUT® Mark and Logo and continue to unfairly compete with Plaintiff, thus
`
`engendering a multiplicity ofjudicial proceedings, and pecuniary compensation will not
`
`afford Plaintiff adequate relief for the damage to its registered trademark in the public
`perception.
`
`FIRST CAUSE OF ACTION
`(Trademark Infringement Under 15 U.S.C. §1114 Against All Defendants)
`Plaintiff refers to, realleges, and incorporates by reference as though set forth fully,
`
`paragraphs 1 through 78 herein.
`
`This is a claim for the infringement of a trademark registered in the United States Patent
`
`and Trademark Office, pursuant to Section 32(a) ofthe Lanham Act, 15 U.S.C. §1l14(a),
`as amended.
`
`Defendants have utilized on the website www.tapout.com and on the t-shirts which they
`have manufactured and are offering for sale on said website, a trademark and logo which
`
`are identical to Plaintiffs’ federally registered TAPOUT® Mark and Plaintiff’s TAPOUT
`
`logo.
`
`Defendants’ unauthorized uses of the TAPOUT® Mark and TAPOUT logo are likely to
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`cause confusion and mistake and to deceive the public as to the approval, sponsorship,
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`license, source or origin of Defendants’ website, goods and services.
`
`Defendants’ infringement of Plaintiffs federally registered TAPOUT® Mark and the
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`TAPOUT logo has been willful and deliberate, and designed to trade on Plaintiffs
`
`goodwill associated with the Mark, tradename and logo, and Defendants have profited
`
`and been unjustly enriched by sales or other benefits that Defendants would not
`
`otherwise have enjoyed but for their unlawful conduct.
`
`Defendants’ acts described above have caused injury and damages to Plaintiff, and have
`
`caused irreparable injury to Plaintiffs goodwill and reputation and, unless enjoined, will
`
`cause further irreparable injury, whereby Plaintiff has no adequate remedy at law.
`
`Page 17
`COMPLAINT
`
`. E
`
`

`
`SECOND CAUSE OF ACTION
`(Unfair Competition, False Designation or Origin and Trade Name Infringement Under 15
`U.S.C. §1125(a) Against All Defendants)
`
`85.
`
`86.
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`87.
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`88.
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`89.
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`90.
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`91.
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`92.
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`Plaintiff refers to, realleges, and incorporates by reference as though set forth fully,
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`paragraphs 1 through 78 herein.
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`This claim is for false designation of origin, unfair competition and trade name
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`infringement in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §l l25(a), as
`
`amended.
`
`Defendants’ use of www.ta_r_>out.com, the TAPOUT® Mark and the TAPOUT logo, as
`
`described above, have falsely designated the origin of Defendants’ website, products and
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`services, and Defendants have thereby competed unfairly with Plaintiff and infringed
`
`Plaintiffs rights in the trademark and tradename TAPOUT, and the TAPOUT logo, in
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`violation of 15 U.S.C. §ll25(a).
`
`Defendants’ acts of false designation of origin, unfair competition and trade name
`
`infringement have been done willfully and deliberately and Defendants have profited and
`
`been unjustly enriched by sales and other benefits that Defendants would not otherwise
`
`have enjoyed but for their unlawful conduct.
`
`Defendants’ acts described above have caused injury and damages to Plaintiff, and have
`
`caused irreparable injury to Plaintiffs goodwill and reputation and, unless enjoined, will
`
`cause further irreparable injury, whereby Plaintiff has no adequate remedy at law.
`
`THIRD CAUSE OF ACTION
`(Trademark Dilution Under 15 U.S.C. §1125(c) Against All Defendants)
`
`Plaintiff refers to, realleges, and incorporates by reference as though set forth fully,
`
`paragraphs 1 through 77 herein.
`
`This claim is for trademark dilution pursuant to Section 43 (c) of the Lanham Act, 15
`
`U.S.C. §l 125(0) as amended.
`
`The TAPOUT® Mark and TAPOUT logo are distinctive and famous marks within the
`
`meaning of 15 U.S.C. §l 125(c)(1), and were so before Defendants adopted their
`
`Page 18
`COMPLAINT
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`infringing and dilutive TAPOUT Mark.
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`Defendants’ conduct, as described above, is diluting the distinctive quality of Plaintiff’s
`distinctive and famous TAPOUT® Mark and TAPOUT Logo, thereby lessening its
`capacity to identify and distinguish goods marketed and sold by Plaintiff.
`
`93.
`
`94.
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`cause fiirther irreparable injury, whereby Plaintiff has no adequate remedy at law.
`
`pout Holdings, Inc., and
`
`FOURTH CAUSE OF ACTION
`(Cyberpiracy under 15 U.S.C. §1125(d) Against Defendants Ta
`Larry Paletz)
`ncorporates by reference as though set forth fully,
`
`95.
`
`Plaintiff refers to, realleges, and i
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`paragraphs 1 through 78 herein.
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`96.
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`This claim is for domain name cyberpiracy pursuant to Section 43(d) ofthe Lanham Act,
`15 U.S.C. §1125(d).
`
`97.
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`Defendants have registered, trafficked in and used the intemet domain name
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`www.tapout.com.
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`98.
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`Plaintiffs TAPOUT® Mark is distinctive and was distinctive at the time of Defendants’
`registration of the domain name www.tapout.com.
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`99.
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`Plaintiff’s TAPOUT® Mark is famous and was famous at the time of Defendants’
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`registration of the domain name www.tapout.com.
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`100.
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`The domain name www.tapout.com is confiisingly similar to and dilutive of Plaintiffs
`TAPOUT® Mark.
`
`101. Defendants’ acts described above have caused injury and damages to Plaintiff, and have
`caused irreparable injury to Plaintiff’s goodwill and reputation and, unless enjoined, will
`cause further irreparable injury, whereby Plaintiff has no adequate remedy at law.
`Plaintiff is entitled to have Defendants’ rights to www.tapout.com immediately canceled,
`and the domain name transferred to Plaintiff immediately, along with monetary
`compensation and statutory penalties.
`
`102.
`
`Page 19
`COMPLAINT
`
`

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`FIFTH CAUSE OF ACTION
`(Violation of California Business & Professions Code § 17200 Against All Defendants)
`103.
`Plaintiffrefers to, realleges, and incorporates by reference as though set forth fully,
`Paragraphs 1 through 78 herein.
`
`104. Defendants’ use ofthe TAPOUT® Mark and TAPOUT logo on their website and on the
`clothing items they are manufacturing and offering for sale is likely to cause confusion,
`mistake, or deception among consumers as to the source, quality and nature of
`Defendants’ goods and constitutes and “unlawful, unfair or fraudulent business act or
`
`106.
`
`TAPOUT logo constitutes an unlawful business practice that violates the Lanham Act.
`Plaintiffhas been directly injured, and will continue to be injured in the fiiture, by
`Defendants’ unfair and deceptive practices which significantly harmed competition.
`Defendants threaten to and unless restrained will continue to use the tradename and
`trademark TAPOUT, and the TAPOUT Logo, as a result ofwhich the public generally
`will be misled and deceived into believing that Defendants’ business is identical to or
`affiliated with that of Plaintiff.
`
`practice” as defined in California Business & Professions Code §l7200, et seq.
`Defendants’ use ofthe TAPOUT® Mark and TAPOUT Logo, and false and misleading
`statements on the www.tapout.com website, constitute Defendants’ willful effort to trade
`on Plaintiff’s reputation, goodwill, and business name and to infiinge upon and cause
`dilution of Plaintiff’s TAPOUT® Mark and TAPOUT Logo
`105. Defendants’ use ofthe TAPOUT® Mark and TAPOUT Logo creates a likelihood of
`confiision that Plaintiffs customers, potential customers, and the public generally will be
`confused or misled as to the source of goods in that Defendants’ offer clothing ofa
`similar nature. Defendants’ infringement and dilution ofthe TAPOUT® Mark and
`
` 107. Unless restrained by this Court, Defendants will continue to dilute and infringe upon
`
`Plaintiffs TAPOUT® Mark and TAPOUT Logo, thus engendering a multiplicity of
`judicial proceedings, and pecuniary compensation will not afford Plaintiff adequate relief
`
`Page 20
`COMPLAINT
`
`

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`108.
`
`109.
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`for the damage to its registered trademark in the public perception.
`Plaintiff seeks disgorgement ofall wrongfully obtained profits by Defendants as a result
`of its use of the TAPOUT® Mark and TAPOUT Logo.
`
`SIXTH CAUSE OF ACTION
`(Common Law Unfair Competition Against All Defendants)
`Plaintiffrefers to, realleges, and incorporates by reference as though set forth fully,
`Paragraphs 1 through 78 herein.
`
`110.
`
`lll.
`
`Plaintiff, Lewis and Caldwell adopted the trade name “Tapout,” the TAPOUT® Mark
`and the TAPOUT Logo and have used them continuously since 1997 to identify their
`business and goods and to distinguish them from the business of others.
`Plaintiff’s trade name “Tapout,” the TAPOUT® Mark and the TAPOUT Logo have
`acquired a secondary meaning because they have been used exclusively to identify their
`goods and business so as to indicate their goods and business and theirs alone.
`112. Defendants have infringed upon Plaintiffs tradename, trademark and logo by using them
`after Plaintiff, and after Plaintiffs tradename, trademark and logo had acquired a
`secondary meaning. Defendants’
`
`confusion, to cause mistake and to deceive.
`
`113. Defendants also have engaged in “palming off,” the simulation and imitation ofthe goods
`ofa rival or competitor with the purpose ofdeceiving the unwary public into buying the
`imitation goods under the impression that it is purchasing the goods of such competitor
`(in this case, Plaintiff).
`
`Defendants’ acts described above have caused injury and damages to Plaintiff and have
`9
`caused irreparable injury to Plaintiff’s goodwill and reputation and, unless enjoined, will
`cause fiarther irreparable injury, whereby Plaintiffhas no adequate remedy at law.
`
`Page 21
`COMPLAINT
`
`
`
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`
`
`
`
`
`
`
`

`
`
`
`‘T7
`
`Dated: March 4- , 2006
`
`LAW OFFICES OF RONALD JASON PALMIERI
`/A’
`I
`_I/' If
`I’,
`
`Robert P. Wargo
`Attorneys for Plaintiff T o ’t, Inc.
`
`Page 24
`COMPLAINT
`
`

`
`ISM
`
`Item III
`
`In This State
`
`CIVIL COVER SHEET
`(M 97/39)
`The JS-44 civil coversheetand the informationcontainedherein neitherreplacenorsupplementthe filingandservice ofpleadings orodierpapers asrequir_eclby law,except asprovided by local
`rulesofcoun. This form. approvedbytheJudicial ConferenceoftheUnitedStatesinSeptember1974, isrequiredfortheuseoftheClerkofCourtfortheoffiitfialipgthecivildocket
`sheet.
`(SEE INSTRUCTIONS oN THE SECOND PAGE OF THIS FORM.)
`1
`i L
`l(a)PLAIN'I‘II-‘I-‘S
`DEFENDANTSTAPOUT HOLDINGS, rIlr‘.lI3;-4;;.313 al1% 1:1 .
`corporati
`TAPOUT,
`INC., a California
`LARRY PALETZ, an 1nd1vié%5iE~MM§gEN&r§§;%§Ic., a
`Corporation
`California corporations, CRXSTAL ENTERPRISES,
`~
`.
`
`
`(b) COUNTY OFRESIDENCE oF FIRsTLISTED San Bernaro ino COUN'I'YorRESIDENCE oFFIRsT LIsTED DEFENDANT
`San D1980 a CA
`(IN U.S. PLAINTIFF CASES ONL_VQ
`PLAINTIFF
`(EXCEPTIN u.s. PLAINTIFFCASES)
`CA
`t-‘~
`I’......_--.-......
`.-. ..
`,-__-:32 U7
`NOTE:INLI%~l'DCONDEMINATIONCASES, USETHELOCATIONOFTHETRACTOFLAND
`INVOLVED ;'
`_ ATTORNEYS (IF KNOWN)
`(c) A'ITORNEYSf(FIRM NAME, ADDRESS. AND TELEPHONE NUMBER)
`Law
`fices of Ronald Jason Palm1er1
`%.2:‘i£f::§:s‘?r2:EfS:::: 253228
`’06cV 0 631JH
`(323) 882-8225
`II. BASIS OFJURISDICTION (PLACEAN xIN ONE BOX ONLY)
`III. CITIZE SHIPOF PRINCIPAL PARTIES (PLACE ANXIN ONE BOX
`'
`(ForDiversifCuesOnly)
`FORPLAINTIFFANDONEBOXFORDEFENDAtT
`CllU.S. GovernmentPlninfifi
`.3FedernlQuestion
`_
`_
`.
`PT
`DEF
`_
`_
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`RE:
`
`Cancellation No. 92045316 (Reg. No. 2346533)
`
`Motion to Suspend Because of Pending Civil Action
`
`Registrant hereby requests that the Board suspend this proceeding in View of related
`federal court litigation affecting the very same rights and issues raised in Petitioner’ s filed
`cancellation action.
`
`In or about March of 2006, Registrant filed a Complaint in the United States District
`Court for the Southern District of California against Petitioner, among others, alleging Causes of
`Action for Trademark Infringement under 15 U.S.C. Section 1114; Unfair Competition, False
`Designation or Origin and Trade Name Infringement under 15 U.S.C. Section 1125 (a);
`Trademark Dilution Under 15 U.S.C. Section 1125(c); Cyberpiracy under 15 U.S.C. Section
`1125 (d); Violation of Business and Professions Code Section 17200; and Common Law Unfair
`
`Competition seeking preliminary and permanent injunctive relief, and statutory and other
`damages relating to what Registrant claimed were Petitioner’ s unauthorized and bad fath
`registration and use and trafficking in the domain name www.tapout.com, and unauthorized use
`of the Mark and name TAPOUT and the TAPOUT Logo in connection with the promotion and
`sale of clothing and related products.
`
`Simultaneously with filing the Complaint, Registrant made an EX Parte Application for a
`Temporary Restraining Order against Petitioner and others. The Court heard oral argument and
`on April 6, 2006 issued a detailed ruling in favor of Registrant granting the Temporary
`Restraining Order against Petitioner and others. The Court set a Scheduling Order for Discovery
`and an Order Setting Hearing for Registrant’ s Application for a Preliminary Injunction.
`
`Attached please find copies of the pertinent portions of the Complaint, as well as the
`Summons and Civil Cover Sheet.
`
`The case before the federal District Court involves and includes the very same issues
`raised in this cancellation action. Accordingly, it is appropriate that the Board suspend pending
`cancellation proceeding No. 92045316 While the lawsuit is ongoing.
`
`Respectfully submitted,
`
`KAYE SCHOLER LLP
`
`Date: July 13, 2006
`
`By: /john p rynkiewicz/
`
`John P. Rynkiewicz
`901 Fifteenth Street, N.W.
`
`Washington, D.C. 20005
`202.682.3671