Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA273090
`ESTTA Tracking number:
`03/19/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92049420
`Plaintiff
`Nike, Inc.
`Kevin C. Parks
`Leydig, Voit & Mayer, Ltd.
`Two Prudential Plaza, 180 N. Stetson Ave, Ste 4900
`Chicago, IL 60601-6731
`UNITED STATES
`trademark@leydig.com, kparks@leydig.com, mcalkins@leydig.com
`Other Motions/Papers
`Kevin Parks
`kparks@leydig.com
`/Kevin Parks/
`03/19/2009
`Petitioner's Response to Purported Motion to Suspend for Civil Action.pdf ( 24
`pages )(1012592 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NIKE, INC.,
`
`Petitioner,
`
`V.
`BAUERBROTHERS LLC,
`
`Registrant.
`
`Cancellation No. 92049420
`Registration No. 2,959,755
`
`)
`
`i
`3
`g
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`1
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`PETITIONER’S RESPONSE TO PURPORTED
`
`MOTION TO SUSPEND FOR CIVIL ACTION
`
`In reviewing other Board proceedings involving Registrant Bauer Brothers LLC, the
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`undersigned counsel for Petitioner herein discovered the “Motion to Suspend for Civil Action”
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`attached as Exhibit A hereto. As shown by the ESTTA receipt, the document was filed in the
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`wrong proceeding, Cancellation No. 92048590. Thus, the attempted filing is a nullity.
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`I
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`As it stands, Registrant has been in violation of the Board’s February 13 order for nearly
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`two weeks, and has not responded to Petitioner’s potentially dispositive Motion For Entry of
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`Judgment filed March 12. Accordingly, Petitioner requests entry ofjudgment forthwith pursuant
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`to its prior motion.
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`Even assuming proper filing, the Motion to Suspend would fail on the merits.
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`Accordingly, Petitioner also requests consideration of the following comments on the Motion to
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`Suspend, in the event it is refiled in the proper proceeding.
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`I.
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`Petitioner’s Potentially Dispositive Motion Should be Considered Prior to Any
`Suspension Reguest
`‘
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`Under TBMP § 5l0.02(a) and 37 C.F.R. 2.117(a), the Board has the sole discretion to
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`decide whether a proceeding should be suspended. Although the Board frequently suspends
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`cases where a pending civil action is likely to have a bearing on the outcome, “suspension is not
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`the necessary result in all cases.” Boyd ’s Collection, Ltd, v. Herringtorz & Co., 65 U.S.P.Q.2d
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`2017, 2018 (T.T.A.B. 2003). Moreover, the TBMP provides that “if there is pending, at the time
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`when the question of suspension of proceedings before the Board is raised, a motion which is
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`potentially dispositive of the case, the potentially dispositive motion may be decided before the
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`question of suspension is considered. The purpose ofthis rule is to prevent a party served with a
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`

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`potentially dispositive motion from escaping the motion byfiling a civil action and then moving
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`to suspend before the Board has decided the potentially dispositive motion.” TBMP § 5l0.02(a)
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`(emphasis added).
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`This is precisely the scenario presented in this matter. Registrant has failed to serve
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`initial disclosures in this proceeding, despite the Board’s order requiring that it do so no later
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`than March 5. On March 12, Petitioner filed its Motion for Entry of Judgment, a potentially
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`dispositive motion. Thereafter, Registrant purported to file a Motion to Suspend, clearly an
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`attempt to “cure” its continuing Violation of the Board’s order, and to escape the potentially
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`dispositive motion.
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`The Board has refused to suspend and entered judgment in similar circumstances. For
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`example, in Allegro High Fidelity, Inc., v. Zenith Radio Corp, 197 U.S.P.Q. 550 (T.T.A.B.
`
`1977), the Respondent moved for a default judgment due to Petitioner’s failure to elicit any
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`evidence during its trial period. The Petitioner’s only response was a showing that after its trial
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`period expired, it had filed a civil complaint against Respondent, and that accordingly the TTAB
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`proceeding should be suspended pending outcome of the civil action.
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`Id. at 551. Noting the
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`Board’s policy to determine potentially dispositive motions prior to the question of suspension,
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`the Board held that “[t]he mere fact that Petitioner was planning to file a civil suit against
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`Respondent does not constitute good cause for its failure to present any evidence in support of its
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`action in this proceeding.” Id. at 552. Accordingly, Respondent’s motion was granted and a
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`default judgment entered against the Petitioner. Id.
`
`The same result should follow in the analogous situation presented here. The Board’s
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`order required Registrant to serve disclosures no later than March 5, “failing which Petitioner
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`may move for discovery sanctions, including judgment, pursuant to Trademark Rule
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`2.120(g)(l).” See Board Order Feb. 13, 2009. Petitioner filed its Motion for Entry of Judgment
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`on March 12. Registrant chose to ignore the Board’s order, apparently because it was planning
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`to file a civil action. As in Allegro, this does not constitute good cause for failing to comply with
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`Board requirements. Indeed, Registrant’s actions here are more egregious; as opposed to merely
`failing to produce evidence at trial, Registrant is in violation of a Board order.
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`For this reason alone, Petitioner’s Motion for Entry of Judgment should be considered,
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`and granted, making any consideration of the Motion to Suspend unnecessary.
`
`

`
`II.
`
`The Corn laint Does Not Alle e Infrin ement of the Re istered Mark Under
`
`1114
`
`A copy of the complaint in the civil action is attached as part of Exhibit A. The three
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`counts are for Lanham Act unfair competition under 15 U.S.C. § 1l25(a), and for statutory unfair
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`competition and common law trademark infringement under California state law. Notably
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`absent is any cause of action under § 1114 of the Lanham Act for infringement of a registered
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`trademark.
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`In filing its complaint in this fashion, Registrant appears to recognize that Registration
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`No. 2,959,755 is invalid for fraud, as alleged in the petition herein. There can be no other logical
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`explanation for the decision not to sue under § 1114 based on the registration.
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`Since the complaint does not invoke the registration, the civil action may not be
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`dispositive of the issue herein, namely, whether the registration should be cancelled on grounds
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`of fraud. That question, as well as the more immediate issue of Registrant’s violation of the
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`Board’s order, remain with the Board for determination. It is not enough for Registrant to
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`speculate on the possibility that Petitioner may file a counterclaim for cancellation in the civil
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`action. The pleading does not assert a cause of action for infringement of the registration, and
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`therefore does not constitute a legitimate basis for a suspension request.
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`For the above reasons, and reserving its right to supplement this response in the event
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`Registrant attempts to refile its motion in the correct proceeding, Petitioner respectfully requests
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`that its Motion for Entry of Judgment herein be granted forthwith.
`
`Respectfully submitted,
`
`Date: March 19, 2009
`
`By:
`
`Kevin C. Parks
`
`Michelle L. Calkins
`
`LEYDIG, VOIT & MAYER, LTD.
`Two Prudential Plaza, 180 N. Stetson Ave.
`Suite 4900
`
`Chicago, Illinois 60601-6731
`(312) 616-5600
`Attorneys for Petitioner
`
`

`
`CERTIFICATE OF FILING
`
`I hereby certify that the foregoing Petitioner’s Response to Purported Motion to Suspend
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of this Petitioner’s Response to Purported Motion to Suspend
`for Civil Action was served by first class mail to the following address on March 19, 2009.
`
`Darren J. Quinn
`Alexander E Papaefthimiou
`Law Offices of Darren J. Quinn
`12702 Via Cortina, Suite 105
`
`Del Mar, CA 92014
`
`
`
`

`
`EXHIBIT A
`
`

`
`Trademark Trial and Appeal Board Electronic Filing System.
`ESTTA Tracking number:
`ESTTA272089
`
`FIIIHQ datei
`
`03/13/2009
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Party
`
`92048590
`Defendant
`Bauer Bros. LLC
`
`Correspondence
`Address
`
`
`
`Alexander E. Papaefthimiou
`Law Offices of Darren J. Quinn
`12702 Via Cortina, Suite 105
`Del Mar, CA 92014
`UNITED STATES
`
`
`
`
`
`
`
`
`
`
`
`
`
`dq@dq|aw.com, aIex@dq|aw.com
`
`
`
`
`
`
`Attachments
`
`suspend.mot.pdf.PDF ( 18 pages )(763882 bytes )
`
`
`
`
`
`

`
`Darren J. Quinn (149679)
`Alexander E. Papaefthimiou (236930)
`LAW OFFICES OF DARREN I. QUINN
`12702 Via Cortina, Suite 105
`Del Mar, CA 92014
`Tel: 858-509-9401
`
`Attomeysfor Registrant BA UER BROS. LLC.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`) Cancellation No.: 92049420
`)
`
`NIKE, INC.,
`
`v.
`
`))
`
`Petitioner,
`
`In the matter ofRegistration No. 2,959, 755
`) Mark:
`DON’T TREAD ON ME
`) Date Registered:
`June 7, 2005
`) Goods/Services:
`IC 025
`)
`Registrant /Respondent. )
`) MOTION TO SUSPEND FOR CIVIL ACTION
`
`BAUER BROTHERS LLC,
`
`[T.M.E.P. 510.02; 37 C.F.R. §2.117(a)]
`
`)I()’|'I().\ 'l'() Sl $l’J'I.\l) FUN .\ (Zl\ II.
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`Registrant and respondent BAUER BROTHERS LLC (“Registrant”) respectfully requests,
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`pursuant to T.M.E.P. 510.02 and 37 C.F.R. §2.1 l7(a), that these proceedings be suspended in light
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`of an action pending between the parties in the Southern District of California, Bauer Bros. LLC
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`v. Nike, Inc., O9cv0500 W (JMA) (the “Action”), which Action may have a bearing on these
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`proceedings.
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`A file stamped copy of the Complaint in the Action is attached hereto.
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`The Action involves issues in common with these proceedings because it is an action by
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`Registrant against petitioner NIKE, INC. (“Petitioner”) for, inter alia, infringement ofthe trademark
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`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 thereof in the Action. The District
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`Court’s decision in the Action will likely be binding upon the Board, while the decision of the
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`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(l.\ 'I'()Sl S|’I'I\l) I-‘UH -\ (Il\)[. .\(Z‘I'l()\
`
`92048590
`
`

`
`CERTIFICATE OF FILING
`
`I hereby certify that the foregoing MOTION TO SUSPEND FQR_QIVIL ACTION was
`'
`filed with the TTAB using the ESTTA filing system on March 13,
`6 9.
`
`
`
`PROOF OF SERVICE
`
`I am over the age of 18 and
`I am employed in the County of San Diego, State of California.
`
`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
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`[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 depositingisuch 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.
`
`
`
`
`. Papaefthimiou
`
`Dated: March 13, 2009 at Del Mar, California.
`
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`A ATTACHMENT
`
`ATTACHMENT
`
`

`
`_Case 3:09-cv-00500‘/—JMA Document1
`
`Filed O3/W009
`
`Page 1 of 14
`
`.____,T___._:
`
`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) 509-9411
`
`Almrneysfbr I’lainI('[i'BA UER BROS. LLC
`
`W. E E3
`
`zsaamia I2 Fri 11:03
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`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT or CALIFORNIA
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`I
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`a
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`
`BAUER BROS. LLC, a California limited
`I b 1
`ia i ity company,
`
`Plaintiff,
`
`v.
`
`NIKE, INC., an Oregon corporation,
`.
`
`Defendant.
`
`/
`‘gov 0500 w IMA
`
`'
`
`. . .. «swam.
`
`) COMPLAI
`)
`)
`)
`)
`)
`)
`)
`
`I.
`
`2.
`
`3.
`
`~
`
`Lanham Act Unfair Competition
`[15 u.s.c. §1I25(a)]
`~
`
`-
`
`California Statutory Unfair Competition
`[Cal. Bus. & Prof. Code §l7200 el seq]
`.
`Common Law Unfair Competition
`
`DEMAND FOR A JURY IBJAL
`
`
`(.'0.\ll'l.;\l.\"l'
`
`
`
`

`
`Case 3:09-cv-OO50(3/—JMA Document 1
`
`Filed 03/W009
`
`Page 2 of 14
`
`.—.
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`5.\DOO\lO\UI-hb-)6)
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`15
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`I8
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`19
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`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. §l 051, el seq), the unfair competition laws of the state of California (Cal. Bus. &
`
`Prof. Code §i 7200, el seq), and the common law of the state of California.
`2.
`This Court has jurisdiction of this action under I5 U.S.C. §I I21 (actions arising
`
`under Lanham Act), 28 U.S.C. §l33i(federal question), and 28 U.S.C. §l338(a) (original
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`jurisdiction relating to copyrights and trademarks).
`
`I
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`3.
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`This Court has jurisdiction over the supplemental claims arising under state law
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`pursuant to 28 U.S.C. §1338(a) and 28 U.S.C. §i 367(a).
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`4.
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`Venue is proper in this district under 28 U.S.C. §§l39l(b) and (c). This Court has
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`personal jurisdiction over defendant and venue is proper in this district because, inter cilia, (a)
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`defendant or its agents are doing business in this district, (b) a substantial part of defendant’s
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`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
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`said harm would occur in this district.
`
`THE PARTIES
`
`5.
`
`,
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`Plaintiff BAUER BROS. LLC is a California limited liability company with its
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`principal place ofbusiness in the Southern District of California. Plaintiffcreates and sells apparel
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`20
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`including, but not limited to, t-shirts under the brand “DON’T TREAD ON ME.” Plaintiffs
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`2]
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`22
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`23
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`24
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`25
`26
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`27
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`28
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`‘‘DON’T TREAD ON ME” brand includes the “DON'T TREAD ON ME,” “DTOM” and snake
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`image trademarks. Plaintiffowns Federal Trademark Registration No. 2,959,755 for the word mark
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`“D'ON’T TREAD ON ME” in International Class 25.
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`International Class 25 includes clothing,
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`footwear, and headgear. See Trademark Manual of Examining Procedure, §i40i .0l(a). Plaintiff
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`began making use ofits “DON’T TREAD ON ME” brand and trademarks on goods in lntemational
`Class 25 in 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-
`
`
`(.‘().\Il'|..\ I.\"I'
`
`

`
`Case 3:09—cv—0O50fl/-JMA_ Document 1
`
`Filed 03/82009
`
`Page 3 of 14
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`—.a
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`Eooeqmmauw
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`(0 ‘ON
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`27
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`28
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`apparel under plaintiffs “DON’T TREAD ON ME” brand and trademarks without plaintiffs
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`authorization.
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`Defendanfs infringing conduct persists despite having actual knowledge of
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`plaintiffs rights and having unsuccessfully attempted to both purchase plaintiffs trademark and
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`obtain its own trademark registration.
`FACTUAL BACKGRQUm)
`
`Plain iffs “Don’t Tread On Me" Brand A d TRADEMA KS
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`7.
`
`_
`
`Starting in early 2004, plaintiff began screen printing and selling shirts andother
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`~ 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
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`“TRADEMARKS”). Since that time, plaintiff has continually used its “DON’T TREAD ONME”
`brand and TRADEMARKS in interstate commerce on its products and advertisements. Plaintiff
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`owns all right, title and interest in and to the “DON’T TREAD ON ME” brand and TRADEMARKS.
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`Plaintiff uses its TRADEMARKS as source identifiers of its goods.
`
`8.
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`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
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`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
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`' “rough and rugged American spirit” upon which our country was founded and for which it is known.
`
`The DTOM Website also contains links for the purchase of various “DON’T TREAD ON ME”
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`brand products.
`
`10.
`
`Plaintiff has extensively advertised and marketed its “DON’T TREAD ON ME”
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`brand and TRADEMARKS.
`Plaintifi"'s “DON’T TREAD ON ME” brand apparel and
`TRADEMARKS have adorned numerous pop culture celebrities appearing in such forums as
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`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.
`
`//
`
`(Z().\lI'I.A|.\"l‘
`
`-2-
`
`'
`
`

`
`Case 3:O9—cv—0O5OO
`
`-JMA Document1
`
`Filed 03/1e009
`
`Page4of14
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`-4
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`11.
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`As a result of the continuous advertisement, promotion, distribution and sale of
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`plaintiff’ s “DON’T TREAD ON ME” brand products, the “DON’T TREAD ON ME” brand and
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`TRADEMARKS have acquired a secondary meaning in the mind of the public to identify a single
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`source of products and advertisements.
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`12.,
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`As a result of the continuous advertisement, promotion, distribution and sale of
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`plaintiffs “DON’T TREAD ON ME” brand products, the “‘DON’T TREAD ON ME” brand and
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`TRADEMARKS have acquired a secondary meaning in the mind of the public to identify plaintiff
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`as the source of products and advertisements.
`
`-
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`13.
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`Due to the continuous advertisement, promotion, distribution and sale of plaintiffs
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`“DON’T TREAD ON ME” branded products and TRADEMAJRKS, the “DON’T TREAD ON ME”
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`brand and TRADEMARKS have accumulated significant goodwill and wide public recognition,
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`including but not limited to recognition by which plaintiff is known to the public. As a result, the
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`“DON’T TREAD ON ME” brand and TRADEMARKS have become, and are, valuable and
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`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 plaintiffs “DON’T TREAD ON ME” brand and
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`TRADEMARKS. As the success and popularity ofplaintiff‘ s “DON’T TREAD ON ME” brand and
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`. 19
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`TRADEMARKS were growing and had become valuable assets to plaintiff, plaintiffflatly rejected
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`defendant’s offer.
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`I
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`_ Defendant Unsuccessfull Attem Is To Re ister A Trademark Si
`i
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`— 15.
`On March 16, 2006, though fully aware ol’plaintift‘s rights in its “DON’T TREAD
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`ON ME” brand and TRADEMARKS, and plaintiff’s use ‘thereof, defendant filed a trademark
`application with the United States Patent and Trademark Office tthe “USPTO”) for the word mark
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`“DON’T TREAD ON THIS” for use on, inler cilia, t-shirts, sweatshirts, headwear and footwear.
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`I6.
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`Defendant’s trademark application for “DON’T TREAD ON THIS” was an intent to
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`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.
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`(I().\lI’l.:\ |.\"|‘
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`-3.
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`Case 3:09-cv-0050w—JMA Document 1
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`Filed O3/‘Z009
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`Page 5 of 14
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`17.
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`On September 15, 2006, the USPTO rejected defendant’s trademark application for
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`“DON’T TREAD ON THIS” on the basis that defendant’s use of its claimed trademark would cause
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`confusion with plaintiff’s registered trademark in “DON'T TREAD ON ME.”
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`. l8.
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`Defendant failed to respond the USPTO’s rejection of its word mark “DON’T
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`TREAD ON THIS?‘ Accordingly, defendant’s trademark application was deemed abandoned on
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`March 19, 2007.
`Defendant Willfully infringes Upon Plaintiffs Rights
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`Despite having unsuccessfully attempted to purchase plaintiff’ 5 ‘‘DON’T TREAD ON
`l .9.
`ME.” brand and TRADEMARKS and having failed to register its own trademark due to a likelihood
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`S ofconfusion with plaintiffs registered trademark, defendant has used the “DON'T TREAD ON ME”
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`brand and TRADEMARKS on and in connection with defendanfs goods, including clothing apparel
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`and footwear. On infomtation and belief, defendant has also used the "'DON’T TREAD ON ME”
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`brand and TRADEMARKS in connection with defendant’s advertisements.
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`20.
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`By way of a letter sent via overnight delivery on May 7, 2008, plaintiff contacted
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`defendant and informed defendant that it was infringing upon plaintiffs rights in plaintiffs “DON’T
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`TREAD ON ME” brand and TRADEMARKS and misappropriating plaintiffs valuable goodwill
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`therein. After correspondence between the parties, defendant has refused to cease and desist its
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`unlawful and wrongful conduct.
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`A
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`21.
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`On infonnation and belief, defendant is continuing to use plaintifl“s “DON’TTREAD
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`ON ME” brand and TRADEMARKS in connection with defendanfs products and advertisements.
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`22.
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`On infonnation and belief, defendant is willfully and in bad faith attempting to exploit
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`the good will, secondary meaning and public recognition plaintiff has built in its “DON’T TREAD
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`ON ME” brand and TRADEMARKS by using them in connection with defendant’s products and
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`advertisements.
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`23.
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`Defendant's unauthorized use ofplaintiff"s “DON’T TREAD ON ME” brand and
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`TRADEMARKS on or in connection with its products is likely to cause confusion or mistake as to
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`the sponsorship, affiliation and origin of products. Defendant’s use of plaintiffs “DON’T TREAD
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`ON ME” brand and TRADEMARKS is likely to confuse consumers into believing that plaintiffis
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`(30 .\|l'l.r\lI\"|'
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`Case 3:09—cv-0050“-JMA Document 1
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`Filed 03/W009
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`Page 6 of 14
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`.—4
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`the source of defendants’ unauthorized merchandise. Such use is also likely to confuse consumers
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`, 2
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`into believing that plaintiff is affiliated with defendant. Such use further is likely to confuse
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`consumers into believing that defendant’s products are sponsored, endorsed or approved by plaintiff.
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`Additionally, such use is likely to confuse consumers into believing that defendant’s unauthorized
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`merchandise and plaintiffs merchandise are the same and/or come from the same source.
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`24.
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`As a result of defendant’s unauthorized use of plaintiff” s“DON’T TREAD_,ON ME”
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`brand and TRADEMARKS, members of the public cannot distinguish between the source of
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`plaintiffs products and del’endant’s products.
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`9 C
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`'
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`FIRST CAU E or ACT N
`(Lanham Act Unfair Competition)
`(15 U.S.C. §l l25(a))
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`25.
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`Plaintiff hereby incorporates by reference the allegations contained in paragraphs 1
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`through 24 of this Complaint as though fully set forth herein.
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`26.
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`As a result of plaintiffs Federal Trademark Registration for “DON’T TREAD ON
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`ME,” pl—aintift’s “DON’T TREAD ON ME” trademark is presumed to be valid and distinctive, and
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`to have acquired secondary meaning.
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`27.
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`The TRADEMARKS are inherently distinctive when used on the goods included in
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`lntemational Class 25.
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`28.
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`The “DON’T TREAD ON ME” brand and TRADEMARKS have acquired a
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`secondary meaning in the mind ofthe public to identify plaintiffas the source ofproducts, including,
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`but not limited to, shirts, hats, caps, belts, bandanas, coats, jeans, shorts, and sweatshirts.
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`29.
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`Defendant has used plaintiffs
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`“DON’T TREAD ON ME” brand and
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`TRADEMARKS in commerce,
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`including in connection with the advertisement, promotion,
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`distribution, offering for sale, and sale ofdefendant’s products, including but not limited to footwear
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`and apparel.
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`30.
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`Defendanfs advertisement, distribution, offering for sale and sale of products using
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`plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS is likely to cause confusion,
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`deception or mistake in the mind ofthe public that plaintiff is the source of defendant’s products,
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`that plaintiff is affiliated with defendant, that defendant’s products are sponsored, endorsed or
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`(I().\ll’l.:\|.\"|‘
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`Case3:09-CV-0050“/—JMA Document1
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`‘Filed03/‘Z009
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`Page7of14
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`..a.a
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`approved by plaintiff, that defendant’s products and plaintiffs products are the same and/or come
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`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
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`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
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`TRADEMARKS as described above, constitutes a false or misleading description of fact, or false
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`or misleading representation of fact.
`33.
`Defendant’s use in commercial advertising and/or promotion ofplaintiff‘s “DON’T
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`TREAD ON ME” brand and TRADEMARKS misrepresents the nature, characteristics, qualities,
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`or geographic origirihof defendant’s and/or plaintiffs goods, services, or commercial activities.
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`34.
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`Defendant, in connection with its goods or services, has used and continues to use
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`a false or misleading description of fact or a false.or misleading representation of fact which:
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`a.
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`is likely to cause confusion, or to cause mistake, or to deceive as to the
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`commercial activities by another person, or
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`b.
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`. misrepresents the nature, characteristics or qualities of defendant’s or
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`plaintiff" s goods, services, or commercial activities.
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`35.
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`Defendant, by its acts complained of herein, has infringed and is continuing to
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`infringe plaintiffs rights in plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS and
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`has competed unfairly with plaintiff.
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`36.
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`On information and belief, defendant’s conduct, as described above, has been, and
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`is, being committed willfully with the intention of deceiving the public and misappropriating and
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`diverting to defendant the valuable goodwill and reputation associated with plaintiffs “DON’T
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`TREAD ON ME” brand and TRADEMARKS. Defendant knew that it was not entitled to use
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`plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS in connection with the
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`advertising, promotion, offering for sale, or sale of its products, and that to do so would confuse,
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`mislead and deceive the public, but did so anyway.
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`37.
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`On information and belief, defendant’s conduct, as described above, has been, and
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`is, being committed willfully and with recklessdisregard and indifference as to plaintiff's rights in
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`-5-
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`(.'().\I|’l.:\l.\"I'
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`

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`Case 3:09—cv—0050w—JMA Document 1
`
`Filed O3/W009
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`Page 8 of 14
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`plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS. Defendant knew that plaintiff
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`was the sole owner of the “DON’T TREAD ON ME” brand and TRADEMARKS, and that the
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`public associated the same with plaintiff, yet used them in connection with the advertising,
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`promotion, offering for sale, or sale of defendant’s products.
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`38.
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`irreparable injury to plaintiff from defendant’s infringing conduct is actual and/or
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`presumed, and -will continue unless defendant is enjoined and restrained by the Court.
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`39.
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`On infomiation and belief, defendant’s unlawful and infringing conduct has resulted
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`in substantial profits to defendant. The amount of defendant’s ill-gotten gains is currently
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`unascertainable.
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`40.
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`Plaintiff has no adequate remedy at law because injury to the reputation and goodwill
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`associated with plaintiff and plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS
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`cannot be quantified, and such injury cannot be compensated by monetary amounts.
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`4l.
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`‘ Pursuant to 15 U.S.C. §1 l 16, plaintiff requests an injunction against defendant to
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`prevent the further violation ofl 5 U.S.C. §l l25(a) and directing defendant to tile with the Court and
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`serve on plaintiffa report in writing under oath setting forth in detail the manner and form in which
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`defendant has complied with the injunction.
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`42.
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`‘ Pursuant to 15 U.S.C §l 117, plaintiff is entitled and seeks to recover:
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`'
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`-
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`a.
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`b.
`c.
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`d.
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`e.
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`Defendant's profits;
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`R
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`‘Any and all damages sustained by plaintiff;
`Treble damages or profits;
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`Costs ofthe action; and
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`Reasonable attorney fees per statute.
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`SEC N
`
`OF ACTION
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`_
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`(Statutory Unfair Competition)
`(Cal. Bus. & Prof. Code §l7200, et seq.)
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`43.
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`Plaintiff hereby incorporates by reference the allegations contained in paragraphs l
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`through 42 of this Complaint as though fully set forth herein;
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`44.
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`This cause of action is brought pursuant to Cal. Bus. & Prof. Code §l 7200, el seq.
`
`//
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`Case 3:O9—cv-0050“/-JMA Document1
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`Filed 03/62009 . Page 9 of 14
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`_ 45.
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`Defendant has committed and continues to commit an un_lawful, unfair or fraudulent
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`business act or practice within the meaning of Cal. Bus..& Prof. Code §l7200.
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`46.
`Defendant engaged and continues to engage in unfair, deceptive, untrue or misleading
`advertising within the meaning of Cal. Bus. & i’rof. Code §l 7200.
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`-47.
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`Defendant has committed and continues to commit an act prohibited by Cal. Bus. &
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`Prof. Code 4517500.
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`'
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`48.
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`Pursuant to Cal. Bus. & Prof. Code §l 7203, plaintiff seeks:
`' a.
`Such orders orjudgments, including the appointment ofa receiver, as may be
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`necessary to prevent the use or employment by defendant of any practice which
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`constitutes unfair competition;
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`I b.
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`Restitution to plaintiffof any money or property, real or personal, which may
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`have been acquired by means of defendant’s unfair competition.
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`THIRD CAUSE OF ACTION
`(Common Law Trademark infringement)
`
`Plaintiff hereby incorporates by reference the allegations contained in paragraphs 1'
`49.
`through 48 of this Complaint as though fully set forth herein.‘
`50.
`in addition to plaintiffs rights under federal law, plaintiffhas valid and existing state
`law rights with respect to plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS.
`5i.
`Plaintiff has built up valuable goodwill in plaintiffs “DON’T TREAD ON ME"
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`brand and TRADEMARKS.
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`52.
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`Plaintif"s “DON’T TREAD ON‘ ME” brand and TRADEMARKS have acquired
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`_
`secondary meaning such that consumers associate them with plaintiff.
`53.
`Defendanfs commercial use of plaintiffs “DON’T TREAD ON ME” brand and
`. TRADEMARKS is likely to cause confusion, mistake and deception in the public as to the source
`origin, sponsorship endorsement.oraffiliation ofdefendant’s goods.
`‘
`.
`54.
`Defendant continues to engage in its wrongful conduct, described above, with
`knowledge that its conduct is likely to cause confusion, mistake or deception.
`//
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`-3.
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`Case 3:09-cv~O050O -JMA Document1
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`Filed (‘)3/18009
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`Page10 of 14
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`55.
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`Defendant’s use ofplainti ffs “DON ’T TREAD ON"ME” brand and TRADEMARKS
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`has been in violation ofplaintiffs common law trademark rights and has caused damage to plaintiff
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`by, misappropriating, diluting and tarnishing the valuable reputation and image associated with
`plaintiff and its products.
`I
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`56.
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`Members of the consuming public are likely to and do believe that defendant’s
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`products emanate from or are associated or affiliated with plaintiff and plaintiff’ s products.
`57.
`As a direct and proximate result of defendant’s wrongful conduct, defendant has
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`caused plaintiffirreparable harm and injury.
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`58.
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`Defendant acted with oppression, fraud or malice as a result of the above conduct
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`allowing plaintiff to recover punitive damages for the sake of example and by way of punishing
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`defendant.
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`PRAYER FOR RELIEF
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`WHEREFORE, plaintiff prays for judgment and relief on all causes "of action against
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`defendant as follows:
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`1.
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`2.
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`3.
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`Plaintiff recover damages in an amount to-be proven at trial;
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`Plaintiff recover defendant’s profits in an