Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA273370
`ESTTA Tracking number:
`03/20/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92049420
`Defendant
`Bauer Bros LLC
`Alexander E. Papaefthimiou
`Law Office of Darren J. Quinn
`12702 Via Cortina, Suite 105
`Del Mar, CA 92014
`UNITED STATES
`Motion to Suspend for Civil Action
`Alexander E. Papaefthimiou
`alex@dqlaw.com
`/s/ Alexander E. Papaefthimiou
`03/20/2009
`suspend.mot.pdf.PDF ( 18 pages )(763882 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`Darren J. Quinn (149679)
`Alexander E. Papaefthimiou (236930)
`LAW OFFICES OF DARREN J. QUINN
`12702 Via Cortina, Suite 105
`Del Mar, CA 92014
`Tel: 858-509-9401
`
`Attorneysfor Registrant BAUER BROS. LLC.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`NIKE, INC.,
`
`) Cancellation No.: 92049420
`
`3 )
`
`In the matter ofRegistration No. 2,959,755
`) Mark:
`DON’T TREAD ON ME
`) Date Registered:
`June 7, 2005
`) Goods/Services:
`IC 025
`
`Petitioner,
`
`V.
`
`BAUER BROTHERS LLC,
`
`Registrant /Respondent. %
`
`) MOTION TO SUSPEND FOR CIVIL ACTION
`
`[T.M.E.P. 510.02; 37 C.F.R. §2.117(a)]
`
`,\l()'|'|(),\ ‘I'll Sl SPl<I,\l) H11!
`
`\ (1I\ ll. \(1'I‘l()\
`
`9204-8590
`
`1
`
`2
`
`3
`
`:
`
`6 7 8
`
`9
`
`10
`
`11
`
`12‘
`
`13
`
`14
`
`15
`
`:
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Registrant and respondent BAUER BROTHERS LLC (“Registrant”) respectfully requests,
`
`pursuant to T.M.E.P. 510.02 and 37 C.F.R. §2.l 17(a), that these proceedings be suspended in light
`
`of an action pending between the parties in the Southern District of California, Bauer Bros. LLC
`
`v. Nike, Inc., 09cv0500 W (JMA) (the “Action”), which Action may have a bearing on these
`
`proceedings.
`
`A file stamped copy of the Complaint in the Action is attached hereto.
`
`The Action involves issues in common with these proceedings because it is an action by
`
`Registrant against petitioner NIKE, INC. (“Petitioner”) for, inter alia, infringement ofthe trademark
`
`that is the subject of these proceedings. The validity of the mark at issue in these proceedings will
`be at issue in the Action and Petitioner may assert the invalidity thereofin the Action. The District
`
`Court’s decision in the Action will likely be binding upon the Board, while the decision of the
`
`Board is not binding upon the District Court. See T.M.E.P. 510.02(a).
`
`Dated: March 13, 2009
`
`Respectfully submitted by:
`
`LAW OFFICES OF DARREN J. QUINN
`DARREN J. QUINN
`.PA AEFTHIMIOU
`
`
`
`12702 Via Cortina, Suite 105
`Del Mar, California 92014
`Tel: (858) 509-9401
`
`Attorneysfor Respondent
`
`,\l()'l‘l(),\ '|‘() St Sl’]‘I\l) FOR \ (II\ II. \(Z'I‘l()\
`
`92048590
`
`-5
`
`O'\<J1
`
`10
`
`11
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`CERTIFICATE OF FILING
`
`I hereby certify that the foregoing MOTION TO SUSPEND FQR.QIVIL ACTION was
`9.
`filed with the TTAB using the ESTTA filing system on March 13,
`
`
`
`. Papaefthimiou
`
`
`
`PROOF OF SERVICE
`
`I am employed in the County of San Diego, State of California. I am over the age of 18 and
`
`am not a party to the within action; my business address is: 12702 Via Cortina Suite 105 Del Mar
`CA 92014.
`
`I served the foregoing documents described as:
`
`—
`
`MOTION TO SUSPEND FOR CIVIL ACTION
`
`upon the interested parties in this action by placing
`
`[x] copies enclosed in sealed envelopes to:
`
`Kevin C. Parks, Esq.
`Michelle L. Calkins, Esq.
`LEYDIG, VOIT & MAYER, LTD.
`Two Prudential Plaza, 180 N. Stetson Ave., Suite 4900
`Chicago, Illinois 60601-6731
`
`Attorneysfor Petitioner
`
`VIA REGULAR MAIL by depositing such envelope with United States Postal Service
`[x]
`facility in Del Mar, California with postage fully prepaid.
`
`I certify under penalty of perjury under the laws of the State of California and the laws of
`the United States that the foregoing is true and correct.
`
`Dated: March 13, 2009 at Del Mar, California.
`
`,.r""'”"'\/
`
`
`
`
`
`. Papaefthimiou
`
`\l(|'I‘l(),\ '11) S1 .H'|’I~Z,\l) POI! \(1l\ 1!.
`
`\(l’I‘JU,\'
`
`92048590
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`ATTACHMENT
`
`ATTACHMENT
`
`

`
`‘Case 3:09-cv—0O50w—JMA Document 1
`
`Filed O3/‘W009
`
`Page 1 of 14
`
`l
`
`Darren J. Quinn (149679)
`Alexander B. Papaefthimiou (236930)
`LAW OFFICES OF DARREN J. QUINN
`12702 Via Cortina, Suite 105
`Del Mar, CA 92014
`Tel: (858)509-9401
`Fax: (858) 509-941]
`A IIorney.s'_/or Plain/if/'BA UER BROS. LLC
`
`i E
`
`.
`ZGH9 HAR 12 PM ‘I: 03
`W
`_
`if]-'-.‘:*"=__:.,r'~.-i;-'«’.4' am-:'1.:
`.:,;',3,§1“f,i5“""-
`~-
`I Wt M-Aw».
`tr.» s£i«L:H'u'.l‘I2'."».
`M
`t
`“mm
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`BAUER BROS. LLC, a California limited ) CASE NO.
`liability company,
`)
`_
`>
`
`Plaintiff,
`
`/
`’$GV 0500 W MA
`
`‘
`
`'
`
`) COMPLAI
`)
`)
`)
`)
`)
`)
`Defendant.
`_______________________.._ )
`'
`
`1.
`
`2.
`
`3.
`
`-
`
`-
`
`-
`
`Lanham Act Unfair Competition
`[I5 U.S.C. §l l25('a)]
`'
`
`A
`
`California Statutory Unfair Competition
`[Cal. Bus. & Prof. Code §l7200 el seq]
`
`Common Law Unfair Competition
`
`DEMAND FOR A JURY TRIAL
`
`-
`
`V.
`
`_
`NIKE, lNC., an Oregon corporation,
`.
`
`1
`
`2
`
`3
`
`5
`
`6 7
`
`_ 8
`
`9
`IO
`
`1 l
`
`12
`
`I3
`
`.
`
`'14
`
`15
`
`I6
`
`17
`
`18
`
`I9
`
`20
`
`21
`
`22
`
`23
`
`24 '
`
`25
`
`26
`
`27
`
`28
`
`
`
`(.'0.\II’I..«\I.\"I'
`
`

`
`Case 3:09-cv-0050C)‘/—JMA Document 1
`
`Filed 03/W009
`
`Page 2 of 14
`
`1
`
`.t>wN
`
`©\DOO\lO\UI
`
`l I
`
`12
`
`I3
`
`1.4
`15
`
`l6
`
`17
`
`18
`
`19
`
`20
`
`2]
`
`22
`
`23
`
`24
`
`25
`26
`
`27
`
`28
`
`Plaintiff makes the following allegations on information and belief.
`
`JURISDICTION AND VENUE
`
`1.
`
`This action arises under the trademark and unfair competition laws of the United
`
`States (i 5 U.S.C. §l05 l , el seq), the unfair competition laws ofthe state ofCalifomia (Cal. Bus. &
`
`Prof. Code §l7200, et seq), and the common law of the state of California.
`2.
`This Court has jurisdiction ofthis action under I5 U.S.C. §l l2l (actions arising
`
`under Lanham Act), 28 U.S.C. §l 33l(federal question), and 28 U.S.C. §l 338(a) (original
`
`jurisdiction relating to copyrights and trademarks).
`
`3.
`
`This Court has jurisdiction over the supplemental claims arising under state law
`
`. pursuant to 28 U.S.C. §l338(a) and 28 U.S.C. §l367(a).
`
`4.
`
`Venue is proper in this district under 28 U.S.C. §§l39l(b) and (c). This Court has
`
`personal jurisdiction over defendant and venue is proper in this district because, imer cilia, (a)
`
`defendant or its agents are doing business in this district, (b) a substantial part of defendant’s
`
`wrongful acts or omissions giving rise to plaintiff's claim occurred in this district, and (c) the harm
`caused by defendant’s wrongful acts or omissions occurred in this district and defendant knew that
`
`said harm would occur in this district.
`
`THE PARTIES
`
`5.
`
`.
`
`Plaintiff BAUER BROS. LLC is a California limited liability company with its
`
`principal place ofbusiness in the Southern District of California. Plaintiffcreates and sells apparel
`
`including, but not limited to, t-shirts under the brand “DON’T TREAD ON ME.” Plaintiffs
`
`‘‘DON’T TREAD ON ME” brand includes the “DON’T TREAD ON ME,” “DTOM” and snake
`
`image trademarks. Plaintiffowns Federal Trademark Registration No. 2,959,755 for the word mark
`
`“D'ON’T TREAD ON ME” in International Class 25.
`
`International Class 25 includes clothing,
`
`footwear, and headgear. See Trademark Manual of Examining Procedure, §l40i .0l(a). Plaintiff
`
`began making use ofits “DON’T TREAD ON ME” brand and trademarks on goods in lntemational
`Class 25in early 2004.
`
`6.
`
`Defendant NIKE, INC. is an Oregon corporation doing business in the Southern
`
`District of California. Defendant sells products including, but not limited to, t-shirts and other
`
`-1-
`
`(I().\II’l.;\ I.\"I'
`
`

`
`Case 3:09-cv—O050w/-JMA Document 1
`
`Filed 03/32009
`
`Page 3 of 14
`
`l
`
`«kl»-ll\)
`
`O\DOO\lO\U\
`
`l 1
`
`I2
`
`I3
`
`14
`
`15
`
`I6‘
`
`l7
`
`18
`
`apparel under plaintiff’s “DON’T TREAD ON ME” brand and trademarks without plaintiffs
`
`authorization.
`
`Defendant’s infringing conduct persists despite having actual knowledge of
`
`plaintiff’ s rights and having unsuccessfully attempted to both purchase plaintiff‘ s trademark and
`
`obtain its own trademark registration.
`
`FACTUAL BACKGROUND
`
`Plaintiffs “Don’t Tread On Me" Brand And TRADEMARKS
`
`7.
`
`Starting in early 2004, plaintiff began screen printing and selling shirts and_other
`
`articles of apparel under the brand “DON’T TREAD ON ME.” Plaintiffs “DON’T TREAD ON
`
`'ME” brand includes the “DON’T TREAD ON ME," “DTOM” and snake image trademarks (the
`
`“TRADEMARKS”). Since that time, plaintiffhas continually used its “DON’T TREAD ONME”
`
`brand and TRADEMARKS in interstate commerce on its products and advertisements. Plaintiff
`
`owns all right, title and interest in and to the “DON’T TREAD ON ME” brand and TRADEMARKS.
`
`Plaintiffuses its TRADEMARKS as source identifiers of its goods.
`
`8.
`
`On March 15,2005, plaintiffobtained Federal Trademark Registration No. 2,959,755
`
`for the word mark “DON’T TREAD ON ME” in International Class 25'.
`
`9.
`
`Plaintiff publishes and maintains a website on the world wide web for its "'DON’T
`
`TREAD ON ME” brand at www.dtom.com (the “DTOM Website”). The DTOM Website identifies
`
`the “DON’T TREAD ON ME” brand as a contemporary American lifestyle brand that celebrates the
`
`19 .
`
`' “rough and rugged American spirit” upon which our country was founded and for which it is known.
`
`20
`21
`
`22
`
`23
`24
`
`25
`
`26,
`
`27
`
`28
`
`The DTOM Website also contains links for the purchase of various “DON’T TREAD ON ME”
`brand products.
`I
`
`10.
`
`Plaintiff has extensively advertised and marketed its “DON’T TREAD ON ME”
`
`brand and TRADEMARKS.
`Plaintiffs “DON’T TREAD ON ME” brand apparel and
`TRADEMARKS have adorned numerous pop culture celebrities appearing in such forums as
`
`Blender Magazine; Teen Vogue, Rolling Stone, the Teen Choice Awards, the American Music
`
`Awards, Oprah, MTV’s Total Request Live, the Ellen Show, the CBS Early Show, Regis & Kelly,
`
`and Katie Couric’s All Access Grammy Special.
`
`//
`
`(I().\l|'I.:\|.\"l‘
`
`-2-
`
`
`

`
`Case 3:09-cv—O0500‘-JMA Document 1
`
`Filed 0318009
`
`Page 4 of 14
`
`I
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`l0
`
`l 1
`
`12
`
`13
`
`14
`
`l-5
`
`16
`
`17
`
`18
`
`ll.
`
`As a result of the continuous advertisement, promotion, distribution and sale of
`
`plaintiff" s “DON’T TREAD ON ME” brand products, the “DON’T TREAD ON ME” brand and
`
`TRADEMARKS have acquired a secondary meaning in the mind of the public to identify a single
`
`source of products and advertisements.
`
`12.
`
`As a result of the continuous advertisement, promotion, distribution and sale of
`
`plaintiffs “DON’T TREAD ON ME” brand products, the “‘DON’T TREAD ON ME” brand and
`
`TRADEMARKS have acquired a secondary meaning in the mind of the public to identify plaintiff
`
`as the source of products and advertisements.
`
`0
`
`13.
`
`Due to the continuous advertisement, promotion, distribution and sale of plaintiffs
`
`“DON’T TREAD ON ME” branded products and TRADEMAJRKS, the “DON’T TREAD ON ME”
`
`brand and TRADEMARKS have accumulated significant goodwill and wide public recognition,
`
`including but not limited to recognition by which plaintiffis known to the public. As a result, the
`
`“DON’T TREAD ON ME” brand and TRADEMARKS have become, and are, valuable and
`
`irreplaceable assets of plaintiff.
`
`Defendant Attempts To Purchase Plaintiffs Brand And TRADEMARKS
`
`14.
`
`On information and belief," prior to committing the wrongful acts complained of
`
`herein, defendant made an offer to purchase plaintiff‘ s “DON’T TREAD ON ME” brand and
`
`TRADEMARKS. As the success and popularity ofplaintiff’s “DON’T TREAD ON ME” brand and
`
`. 19
`
`TRADEMARKS were growing and had become valuable assets to plaintiff, plaintiffflatly rejected
`
`20
`
`21
`
`22
`
`23
`24
`
`25
`
`26
`
`27
`
`28
`
`defendant’s offer.
`
`I
`
`Defendant Unsuccessfully Attempts To Register A Trademark Similar To Plaintiffs
`
`15.
`
`On March 16, 2006, though fully aware ofplaintiff"s rights in its “DON’T TREAD
`
`ON ME” brand and TRADEMARKS, and plaintiffs use ‘thereof, defendant filed a trademark
`application with the United States Patent and Trademark Office (the “USPTO”) for the word mark
`
`“DON’T TREAD ON THIS” for use on, inter cilia, t-shirts, sweatshirts, headwear and footwear.
`
`I6.
`
`Defendant’s trademark application for “DON’T TREAD ON THIS” was an intent to
`
`use application. On information and belief, defendant had not used the mark “DON’T TREAD ON
`
`THIS” in connection. with any of its products prior to March 16, 2006.
`
`
`
`(f().\ll’l.;\|.\"I‘
`
`-3-
`
`

`
`
`
`Case 3:09-cv-0050“!-JMA Document 1
`
`Filed 03/wO09
`
`Page 5 of 14
`
`17.
`
`On September 15, 2006, the USPTO rejected defendant’s trademark application for
`
`“DON’T TREAD ON THIS” on the basis that defendant’s use of its claimed trademark would cause
`
`confusion with plaintiffs registered trademark in “DON’T TREAD ON ME.”
`
`. 18.
`
`Defendant failed to respond the USPTO’s rejection of its word mark “DON’T
`
`TREAD ON THIS.”’ Accordingly, defendant’s trademark application was deemed abandoned on
`
`March 19, 2007.
`
`Defendant Willfully lnfringes Upon Plaintiff" s Rights
`
`Despite having unsuccessfully attempted to purchase plaintiff’ s “DON’T TREAD ON
`19.
`ME” brand and TRADEMARKS and having failed to register its own trademark due to a likelihood
`
`ofconfusion with plaintiff‘ 5 registered trademark, defendant has used the “DON’T TREAD ON ME”
`
`brand and TRADEMARKS on and in connection with defendanfs goods, including clothing apparel
`
`and footwear. On infomiation and belief, defendant has also used the “DON’T TREAD ON ME”
`
`brand and TRADEMARKS in connection with defendant’s advertisements.
`
`20.
`
`By way ofa letter sent via overnight delivery on May 7, 2008, plaintiff contacted
`
`defendant and informed defendant that it was infringing upon plaintiffs rights in plaintiffs “DON’T
`
`TREAD ON ME” brand and TRADEMARKS and misappropriating plaintiffs valuable goodwill
`therein. After correspondence between the parties, defendant has refused to cease and desist its
`
`unlawful and wrongful conduct.
`
`2].
`
`On infonnation and belief, defendant is continuing to use plaintiffs “DON’T TREAD
`
`ON ME” brand and TRADEMARKS in connection with defendant’s products and advertisements.
`
`22.
`
`On infonnation and belief, defendant is willfully and in bad faith attempting to exploit
`
`the good will, secondary meaning and public recognition plaintiff has built in its “DON’T TREAD
`
`ON ME” brand and TRADEMARKS by using them in connection with defendanfs products and
`
`advertisements.
`
`23.
`
`Defendant’s unauthorized use of plaintiff‘ s “DON’T TREAD ON ME” brand and
`
`TRADEMARKS on or in connection with its products is likely to cause confusion or mistake as to
`
`the sponsorship, affiliation and origin of products. Defendant’s use ofplaintiffs “DON’T TREAD
`
`ON ME" brand and TRADEMARKS is likely to confuse consumers into believing that plaintiffis
`
`(.'().\|l‘l.:\lI\"l‘
`
`-4.
`
`

`
`1
`
`—~————
`
`— -1
`
`Case 3:09—cv—0050(3/-JMA Document 1
`
`Filed 03/W009
`
`Page 6 of 14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`the source of defendants’ unauthorized merchandise. Such use is also likely to confuse consumers
`
`into believing that plaintiff is affiliated with defendant. Such use further is likely to confuse
`
`consumers into believing that defendant’s products are sponsored, endorsed or approved by plaintiff.
`
`Additionally, such use is likely to confuse consumers into believing that defendant’s unauthorized
`
`merchandise and plaintiff’s merchandise are the same and/or come from the same source.
`
`24.
`
`As a result of defendant’s unauthorized use ofplaintifl” s“DON’T TREAD ON ME”
`
`brand and TRADEMARKS, members of the public cannot distinguish between the source of
`
`plaintiffs products and defendant’s products.
`
`9 '
`
`'
`
`FIRST CAUSE or ACTION
`(Lanham Act Unfair Competition)
`(15 U.S.C. §l l25(a))
`
`»
`
`10
`
`l l
`
`12
`
`13
`
`l4
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`2l
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`25.
`
`Plaintiff hereby incorporates by reference the allegations contained in paragraphs 1
`
`through 24 of this Complaint as though fully set forth herein.
`
`26.
`
`As a result of plaintiffs Federal Trademark Registration for “DON’T TREAD ON
`
`ME,” plaintiffs “DON’T TREAD ON ME” trademark is presumed to be valid and distinctive, and
`
`to have acquired secondary meaning.
`
`27.
`
`The TRADEMARKS are inherently distinctive when used on the goods included in
`
`International Class 25.
`
`28.
`
`The “DON’T TREAD ON ME” brand and TRADEMARKS have acquired a
`
`secondary meaning in the mind of the public to identify plaintiffas the source ofproducts, including,
`
`but not limited to, ‘shirts, hats, caps, belts, bandanas, coats, jeans, shorts, and sweatshirts.
`
`29.
`
`Defendant has used plaintiffs
`
`“DON’T TREAD ON ME” brand and
`
`TRADEMARKS in commerce,
`
`including in connection with the advertisement, promotion,
`
`distribution, offering for sale, and sale ofdefendant"s products, including but not limited to footwear
`
`and apparel.
`
`30.
`
`Detendanfs advertisement, distribution, offering for sale and sale of products using
`
`plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS is likely to cause confusion,
`
`deception or mistake in the mind ofthe public that plaintiff is the source of defendant’s products,
`
`that plaintiff is affiliated with defendant, that defendant’s products are sponsored, endorsed or
`
`(I().\ll’l.:\l.V'|'
`
`-5-
`
`
`

`
`ll
`
`l
`
`I
`
`.
`
`,
`
`..
`
`... .
`
`..
`
`.
`
`._.
`
`.
`
`Case3:09-cv-0050“!-JMA Document1
`
`_Filed03/82009
`
`Page7of14
`
`«.4
`
`2
`3
`
`4
`
`5
`
`6
`
`7
`8
`
`9
`
`10
`
`1 l
`
`l2
`
`13
`
`14
`
`l5
`
`l6
`
`17
`
`I8
`
`19
`
`20
`
`2l
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`approved by plaintiff, that defendant’s products and plaintiffs products are the same and/or come
`
`from the'same source, and/or that defendant is the source of plaintiffs products.
`I
`31.
`Defendant’s use in commerce of plaintiffs “DON’T TREAD ON ME” brand and
`
`TRADEMARKS as described above, constitutes a false designation of origin.
`
`32.
`
`Defendant’s use in commerce of plaintiffs “DON’T TREAD ON ME” brand and
`
`TRADEMARKS as described above, constitutes a false or misleading description of fact, or false
`
`or misleading representation of fact.
`33.
`Defendant’s use in commercial advertising and/or promotion ofplaintiffs “DON’T
`
`TREAD ON ME” brand and TRADEMARKS misrepresents the nature, characteristics, qualities,
`
`or geographic originiof defendant’s and/or plaintiffs goods, services, or commercial activities.
`
`34.
`
`Defendant, in connection with its goods or services, has used and continues to use
`
`a false or misleading description of fact or a falseor misleading representation of fact which:
`
`a.
`
`is likely to cause confusion, or to cause mistake, or to deceive as to the
`
`commercial activities by another person, or
`
`b.
`
`' misrepresents the nature, characteristics or qualities of defendant’s or
`
`plaintiffs goods, services, or commercial activities.
`
`35.
`
`Defendant, by its acts complained of herein, has infringed and is continuing to
`
`infringe plaintiffs rights in plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS and
`
`has competed unfairly with plaintiff.
`
`36.
`
`On information and belief, defendant’s conduct, as described above, has been, and
`
`is, being committed willfully with the intention of deceiving the public and misappropriating and
`
`diverting to defendant the valuable goodwill and reputation associated with plaintiffs “DON’T
`
`TREAD ON ME” brand and TRADEMARKS. Defendant knew that it was not entitled to use
`
`plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS in connection with the
`
`advertising, promotion, offering for sale, or sale of its products, and that to do so would confuse,
`
`mislead and deceive the public, but did so anyway.
`
`37.
`
`On information and belief, defendanfs conduct, as described above, has been, and
`
`is, being committed willfully and with recklessidisregard and indifference as to plaintiff's rights in
`
`(.'O.\ll‘l.:\I.\"I'
`
`-5-
`
`
`
`

`
`Case 3:09-cv—OO50w—JMA Document 1
`
`Filed 03/W009
`
`Page 8 of 14
`
`u—.
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`l2
`
`13
`
`14
`
`15
`
`16
`
`l7
`
`18
`
`l9
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`'27
`
`28
`
`plaintiff‘ s “DON’T TREAD ON ME” brand and TRADEMARKS. Defendant knew that plaintiff
`
`was the sole owner of the “DON'T TREAD ON ME” brand and TRADEMARKS, and that the
`
`public associated the same with plaintiff, yet used them in connection with the advertising,
`
`promotion, offering for sale, or sale of defendant’s products.
`
`38.
`
`lrreparable injury to plaintiff from defendant’s infringing conduct is actual and/or
`
`presumed, and will continue unless defendant is enjoined and restrained by the Court.
`
`39.
`
`On infomtation and belief, defendant’s unlawful and infringing conduct has resulted
`
`in substantial profits to defendant. The amount of defendant’s ill-gotten gains is currently
`
`unascertainable.
`
`40.
`
`Plaintiff has no adequate remedy at law because injury to the reputation and goodwill
`
`associated with plaintiff and plaintifl"'s “DON’T TREAD ON ME” brand and TRADEMARKS
`
`cannot be quantified, and such injury cannot be compensated by monetary amounts.
`
`41.
`
`I Pursuant to 15 U.S.C. §l 1 l6, plaintiff requests an injunction against defendant to
`
`prevent the further violation of] 5 U.S.C. §l l25(a) and directing defendant to file with the Court and
`
`serve on plaintiffa report in writing under oath setting forth in detail the manner and form in which
`
`defendant has complied with the injunction.
`
`42.
`
`‘ Pursuant to 15 U.S.C §l l 17, plaintiffis entitled and seeks to recover:
`
`a.
`
`b.
`c.
`
`d
`
`e
`
`Defendant's profits;
`
`Any and all damages sustained by plaintiff;
`Treble damages or profits;
`
`Costs of the action; and
`
`Reasonable attorney fees per statute.
`
`SECOND CAUSE OF ACTION
`(Statutory Unfair Competition)
`(Cal. Bus. & Prof. Code §l7200, et seq.)
`
`43.
`
`Plaintiff hereby incorporates by reference the allegations contained in paragraphs 1
`
`through 42 of this Complaint as though fully set forth herein.
`
`44.
`
`This cause of action is brought pursuant to Cal. Bus. & Prof. Code §l 7200, el seq.
`
`//
`
`
`(IO.\| l'l..-\l .\"l'
`
`-7-
`
`
`
`

`
`Case 3:09-cv-0050“!-JMA Document 1
`
`Filed 0382009
`
`Page 9 of 14
`
`—n
`
`2
`
`3
`4
`
`5
`
`6
`
`7
`8
`
`9
`
`10
`
`1 l
`
`12
`
`' 13
`
`14
`is
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27.
`28
`
`_ 45.
`
`Defendant has committed and continues to commit an unlawful, unfair or fraudulent
`
`business act or practice within the meaning of Cal. Bus..& Prof. Code §l7200.
`
`46.
`Defendant engaged and continues to engage in unfair, deceptive, untrue or misleading
`advertising within the meaning of Cal. Bus. & l’rof. Code §l72(l0.
`
`~47.
`
`Defendant has committed and continues to commit an act prohibited by Cal. Bus. &
`
`Prof. Code §175oo.
`
`'
`
`48.
`
`Pursuant to Cal. Bus. & Prof. Code §l 7203, plaintiff seeks:
`' a.
`Such orders orjudgments, including the appointment ofa receiver, as may be
`
`necessary to prevent the use or employment by defendant of any practice which
`
`constitutes unfair competition;
`
`I b.
`
`Restitution to plaintiffof any money or property, real or personal, which may
`
`have been acquired by means of defendant’s unfair competition.
`
`THIRD CAUSE OF ACTION
`
`(Common Law Trademark Infringement)
`
`Plaintiff hereby incorporates by reference the allegations contained in paragraphs 1
`49.
`through 48 ofthis Complaint as though fully set forth herein.’
`50.
`In addition to plaintiff's rights under federal law, plaintiffhas valid and existing state
`law rights with respect to plaintiff's “DON’T TREAD ON ME” brand and TRADEMARKS.
`Sl.
`Plaintiff has built up valuable goodwill in plaintiffs “DON’T TREAD ON ME”
`brand and TRADEMARKS_.
`52.
`Plaintifi"s “DON’T TREAD ON‘ ME” brand and TRADEMARKS have acquired
`secondary meaning such that consumers associate them with plaintiff.
`53.
`Defendant’s commercial use of plaintiff‘s “DON"_l' TREAD ON ME” brand and
`V TRADEMARKS is likely to cause confusion, mistake and deception in the public as to the source
`origin, sponsorship endorsement or affiliation ofdefendant’s goods.
`b
`54.
`Defendant continues to engage in its wrongful conduct, described above, with
`knowledge that its conduct is likely to cause confusion, mistake or deception.
`//
`
`-3-
`
`
`(.‘().\ll’l..\l.\"l‘
`
`

`
`Case 3:09-cv-00500
`
`-JMA Document 1
`
`Filed (‘J3/13009
`
`Page 10 of 14
`
`55.
`
`Defendant’s use ofplaintiffs “DON’T TREAD ONJME” brand and TRADEMARKS
`
`has been in violation of plaintiff’ s common law trademark rights and has caused damage to plaintiff
`
`by, misappropriating, diluting and tarnishing the valuable reputation and image associated with
`
`plaintiff and its products.
`
`56.
`
`Members of the consuming public are likely to and do believe that defendant’s
`
`products emanate from or are associated or affiliated with plaintiff and plaintiffs products.
`
`57.
`
`As a direct and proximate result of defendant’s wrongful conduct, defendant has
`
`caused plaintiffirreparable harm and injury.
`
`58.
`
`Defendant acted with oppression, fraud or malice as a result of the above conduct
`
`allowing plaintiff to recover punitive damages for the sake of example and by way of punishing
`
`defendant.
`
`WHEREFORE, plaintiff prays for judgment and relief on all causes "of action against
`
`PRAYER FOR R_ELIEF
`
`defendant as follows:
`
`1.
`
`2.
`
`3.
`
`Plaintiff recover damages in an amount tobe proven at trial;
`
`Plaintiff recover defendant’s profits in an amount to be proven at trial;
`
`A Plaintiff recover up to treble damages and/or profits as allowed by statute in an
`
`amount to be proven at trial;
`
`4.
`
`Plaintiff recover punitive damages against defendant in an amount appropriate to
`
`punish or make an example of defendant;
`
`5.
`
`A constructive trust be placed over all monies paid to defendant (which monies are
`
`traceable to the defendant who is the current possessors and trustees of such funds) as a result of
`
`defendant’s wrongful conduct to prevent unjust enrichment by defendant and ‘to avoid dissipation
`
`and/or fraudulent transfers of such monies by the defendant;
`
`6.
`
`An injunction against defendant to prevent the violation of plaintiffs registered
`
`trademark rights;
`
`7.
`
`' An injunction against defendant to prevent the violation of l 5 U.S.C. §l l25(a);
`
`—a
`
`.5\OOO\lO'\\JI-PbJt\J
`
`._.
`
`—n
`
`—a l\)
`
`._..
`
`ta)
`
`E _
`
`. U1
`
`ON
`
`a—n \l
`
`_. 00
`
`\D
`
`Ix) C
`
`l’\) ——n
`
`l\J l\.)
`
`I\) L»)
`
`Ix)J}
`
`l\) III
`
`I\) O'\
`
`B) \l
`
`l\) 00
`
`//
`
`I
`
`4 (
`
`-9-
`
`
`I().\ll’l,.-\|.\"l'
`
`

`
`Case 3:09-cv-00500$-JMA Document1
`
`Filed O3/@009
`
`Page11of14
`
`8.
`
`An order enjoining defendant from continuing to engage, use, or employ any
`
`unlawful, unfair or fraudulent business act or practice and unfair, deceptive, untrue or misleading
`
`advertising and any act prohibited by Chapter 1 (commencing with Section 17500) of Part 3 of
`
`Division 7 of the Business and Professions Code;
`
`9.
`
`Restitution to plaintiff of any money or property, real or personal, which may have
`
`been acquired by means of defendant’s unfair competition;
`
`10.
`
`Attorney fees to the extent authorized by statute, agreement or law, including, inter
`
`alia, 15 U.S.C. §1117;
`
`11.,
`
`Costs ofthis suit;
`
`12.
`
`13.
`
`13.
`
`Pre-j udgment and post-judgment interest, as permitted by the Court or under statutegi
`
`Ajury trial on all claims so triable; and
`
`Such other and further relief as the Court may deem necessary or appropriate.
`
`Dated: March 1 1, 2009
`
`Respectfully submitted,
`
`LAW OFFICES OF DARREN .l. QUINN
`DARREN J . QUl
`ALEXANDE
`
`PAPAEFTHIMIOU
`
`
`
`
`E. Papaefthimiou
`
`12702 Via Cortina, Suite 105
`Del Mar, CA 92014
`Telephone: (858) 509-9401
`
`A II0rney.s'far P1aim('[fBA UER BROS. LLC.
`
`-4
`
`CD\OOO\IO\Lh-(>9-ll\)
`
`2|
`
`._.
`
`a—n
`
`IQ
`
`_. DJ
`
`E U
`
`: S \
`
`l
`
`_a 00
`
`E
`
`l\) O
`
`I\)
`
`I9 I\.)
`
`I\) DJ
`
`I\)-A
`
`I\) K)!
`
`I\) O\
`
`[Q \I
`
`IN) 00
`
`-10-
`
`
`C().\ll’|..-\l.\"I'
`
`

`
`
`
`Case 3:09-cv-00500“-JMA Document 1
`
`Filed 0318009
`
`Page 12 of 14
`
`DEMAND FOR A JU Y TRIAL
`
`Plaintiff demands a trial by jury on all causes of action so triable.
`
`Dated: March 1 l, 2009
`
`Respectfully submitted,
`LAW OFFICES OF DARREN J. QUINN
`DARREN J. QUINN
`'
`
`ALEXANDE
`
`. AP EFTHIMIOU
`
`
`
`. Papaefthimiou
`l2702 Via Cortina, Suite 105
`
`
`
`Del Mar, CA 92014
`Telephone: (858) 509-9401
`
`AItarney.s'_/br Plainlif/'BAUER BROS. LLC
`
`u_a
`
`2 1
`
`3
`
`4
`5
`
`6
`
`7
`
`8
`
`9
`
`1?
`
`12
`
`l3
`
`l4
`
`I5
`
`16
`
`17
`
`l8
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`l\) %
`
`
`(30.\ll'|..e\I.\"l'
`
`-11-
`
`
`

`
`§JS 44 (Rev. I2/07)
`
`E
`
`Filed 03/1 W09 Page 13 of 14
`Case 3:09-cv-O0500‘mJMA Document 1
`CIVIL COVER SHEET
`TheIS 44 civil cover sheetand the information contained herein neither replace nor su
`the United
`by local rules ofcoun. This fonn, approved by the Judicial Conference 0
`the civil docket sheet.
`(SEE INSTRUCTIONS ON THE REVERSE OFTHE FORM.)
`
`fill
`se o t e
`plement the filing and service ofpleading‘: or.oth$rlfiapers aslre uired by law, except as provided
`t
`v "-
`tales in September I974. is required for t
`(;_I_erkt'if oun for the purpose of initiating
`
`S
`
`I4:
`
`DEFENDANTS
`NIKE. INC., an Oregon Corporation_ _
`
`.
`_
`,. fiifiilfilginis mil:
`
`County oftyesldence ofFirst Eliié Defendant
`(IN US. PLAINTIFF CASES ONLY)
`'"'tT3EhiloN or THE
`NOTE:
`IN LAND‘: Noamnflong
`LAND!
`OIIVED.
`
`'.
`
`Attorneys (IfKnown) 909
`
`0 5
`
`(
`w thin
`
`I. (a) PLAINTIFFS
`
`BAUER BROS. Ll_.C, a California Corporation
`
`(b) County ofkcsidence of First Listed Plaintiff‘ San Diego County
`(EXCEPT IN US. PLAINTIFF CASES)
`
`((2) Attomey’s (Firm Name. Address, and Telephone Number)
`
`Darren J. Quinn. 12702 Via Cortina Suite 105. Del Mar, CA
`(858 509-9401
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`D I U.S. Govemment
`E 3 Federal Question
`Plaintitl‘
`(U.S. Govemment Not a Party)
`
`D 2 U.S. Government
`Defendant
`
`D 4 Diversity
`(Indicate Citizenship ofParties in Item Ill)
`
`III. TIZENSHIP OF PRINCIPAL PARTIES(l=lnce an “x" in One Box for PInintlIT
`(For Dlversnyicnses Only)
`and One Box for Defendant)
`I2‘
`nr
`»
`I"I‘F
`DEF
`Citizen ofThis State’
`U I
`El
`CI 4
`
`Incorporated or Principal Place
`of Business In This Slate
`
`4
`
`oar
`D I
`
`Citizen of Another State
`
`U 2
`
`D 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`E!
`
`S
`
`D 5
`
`Citizenorsilbject ofa
`Forci n Count
`
`D 3
`
`CI
`
`3
`
`Foreign Nation
`
`Cl 6
`
`Cl 6
`
`
`IV. NATURE OF SUIT Placean "x" in One BoxOn
`10111;
`It ilfi
`
`
` Cl I I0 Insurance
`
`PERSONAL INJURY
`D 6I0 Agriculture
`
`
`U I20 Marine
`310 Airplane
`D 362 Personal Injury -
`D 620 Other Food & Drug
`
`
`CI 130 Miller Act
`D 625 Drug Related Seizure
`315 Airplane Product
`Med. Malpractice
`0 I40 Negotiublelnstrument
`Liability
`0 365 Personal Injury -
`ofProperty ZI USC HI
`El I50 Recovery ofOverpayment
`320 Assault. Libel &
`Product Liability
`0 630 Liquor Laws
`D 640 R.R. Jr. Truck
`Slander
`Cl 368 Asbestos Personal
`& Enforcement ofJudgment
`0 ISI Medicare Act
`330 Federal Employers‘
`Injury Product
`I3 650 Airline Regs.
`0 I52 Recovery of Defaulted
`Liability
`~
`Liability
`D 660 Occupational
`Student Loans
`340 Marine
`PERSONAL PROPERTY
`Sufetyfrleulth
`D 690 Other
`345 Marine Product
`0 370 Other Fraud
`(Excl. Veterans)
` MTel Illllll.Ylil'»T1l’t5IIT9'lt‘n"
`0 I53 Recovery ofOverpayment
`Liability
`0 37] Truth in Lending
`ofVeteran‘: Benefits
`350 Motor Vehicle
`0 380 Other Personal
`CI 7l0 Fair Laborstttndards
`D 86I HIA (l395ll)
`
`CI I60 Stockholders‘ Suits
`355 Motor Vehicle
`Property Damage
`Act
`0 862 Black Lung (923)
`0 I90 Other Contract
`Product Liability
`Cl 385 Property Damage
`D 720 Labor/Mgmt. Relations
`Cl 863 DIWC/DIWW (40S(g))
`I3 730 LaborlMgmt.Reporting
`D 864 SSID Title XVI
`360 Other Personal
`Product Liability
`Inu
`.& Disclosure Act
`
`
`D 790 Other Labor Litigation
`El 870 Taxes (U.S. P
`D 220 Foreclosure
`0 791 Empl. Ret. Inc.
`Sentence
`442 Employment
`or Defendant)
`
`D 230 Rent Lease & Ejectlncnt
`I-Inbeaa Corpus:
`443 Housing!
`Security Act
`0 87l IRS—Third Party
`Cl 240 Torts to Land
`
`D 530 General
`Accommodations
`26 USC 7609
`O 245 Tort Product Liability
`444 Welfare
`Cl
`535 Death Penalty
`D 290 All Other Real Property
`5 462 Natu x lzatton - pp lcatlon
`445 Amer. w/Disabilities - I
`540 Mandamus &. Other
`C! 463 Habeas Corpus -
`Employment
`550 Civil Rights
`Alien Detainee
`446 Amer. w/Disabilities - CI
`555 Prison Condition
`CI
`D 465 Other Immigration
`Other
`440 Other Civil Rights Actions
`
`
`
`
`Cl 422 Appeal 28 use in
`CI 423'Withdrawal
`23 use 157
`
`
`I:IllIlI7JTCiliI3iTlitS'¢ll‘.ITt‘IIWs‘ilEI1IIE
`
`cl 820 Copyrights
`D 830 Patent
`3 840 Trademark
`
`
`
`
`
`
`
`
`
`
`
` 400 S_tate Reapportionment
`4 I0 Antitrust
`430 Banks and Banking
`450 Commerce
`460 Deportation
`470 Racketeer Influenced nnd
`Corrupt Organizations
`480 Consumer Credit
`490 Cab|elSat TV
`BIO Selective Service
`850 SecuritieslComlnoditiesl
`Exchange
`875 Customer Challenge
`I2 USC 34|0
`890 Other Statutory Actions
`B9I Agricultural Acts
`392 Economic Stabilization Act
`893 Environmental Matters
`894 Energy Allocation Act
`895 Freedom of Informatioll
`Act
`900Appenl of Fee Dctemtination
`Under Equal Access
`to Justice
`950 Constitutionality of
`State Stututcs
`
`
`
`
`
`
`
`
`
`
`
`0CI00DEIEI
`
`
`
`
`
`
`
`
`
`
`
`
`
` ClDEIDDCICIElEIUDDDDCICIEIEI
`
`Ap alto District
`(Placcatt“X" in One BoxOnIy)
`V. ORIGIN
`Jutigie from
`cl 5 Multidistrict
`cl 4§3telnsraled or g 5 T'°'[‘§f°'5¢" 31"“
`:1 2 Removed from
`C] 3 Remanded from
`all Original
`Magistrate
`
`
`J d ment
`Litigation
`‘Reopened
`““° 9'
`'S‘"°
`Proceeding
`State Court
`Appellate Court
`Cite the U.S. Civ