Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA275141
`ESTTA Tracking number:
`03/30/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92050603
`Defendant
`KIM, PHILIP
`KIM, PHILIP
`2871 DUSTY STONE CT.
`SANTA ROSA, CA 95405
`UNITED STATES
`Motion to Dismiss - Rule 12(b)
`Valerie Ann Nemeth
`VANemeth@cs.com
`/ss/
`03/30/2009
`TTAB Motion to Dismiss Cancellation Ferry-Kim.tif ( 13 pages )(540564 bytes )
`KIMvFERRY Order 3-25-09 EX A.pdf ( 12 pages )(96026 bytes )
`FerryC&D10-07ExhibitB.pdf ( 2 pages )(1376650 bytes )
`FerryKimExhibitC.tif ( 1 page )(178880 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`In the United States Patent and Trademark Office
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`Before the Trademark Trial and Appeal Board
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`Ray Ferry,
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`Philip Kim,
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`Petitioner,
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`V.
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`Registrant.
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`Cancellation No. 92050603
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`Registrant's Motion to Dismiss Petition for Cancellation
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`And Memorandum of Law in Support Thereof
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`The Registrant, Philip Kim, owner of Trademark Registration No. 2519146, pursuant to Rule l2(b)(6)
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`of the Federal Rules of Civil Procedure, through his undersigned attorney, hereby moves before this
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`Board for an order dismissing the Petition for Cancellation filed by Ray Ferry for failure to state a claim
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`upon which relief can be granted.
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`Introduction
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`Petitioner Ray Ferry comes to this Board seeking Cancellation of an over five-year old
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`Registration for the mark FAMOUS MONSTERS OF FILMLAND, appearing to allege fraud as a basis
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`therefore. The averments in the Petition are not set forth numerically or otherwise in accordance with the
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`Federal Rules of Civil Procedure l0(b), 37 CFR §2.l26 et. al., however, while reserving all rights to
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`object to the same, Registrant will attempt to summarize as best as Registrant can decipher,
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`the
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`allegations as follows,
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`1.
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`That the Registrant Philip Kim, with the aid of his attorney of Record, filed specimens in support
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`of the Sections 8 and 15 which Petitioner claims “they did not publish or create or use” (Petition
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`for Cancellation, First Page, 2nd Paragraph,
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`hereafter referred to as “Paragraph 2”).
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`l
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`That the reason for such allegedly false submissions is to establish a use which Petitioner alleges to
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`have been using in interstate commerce since 2004 (Petition for Cancellation, First Page, 3rd
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`Paragraph, hereafter referred to as “Paragraph 3”).
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`That the while mark [allegedly used by Petitioner] is not registered with the USPTO, Petitioner’s
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`“property and identity” were used to defraud the USPTO (Petition for Cancellation, First Page, 4”‘
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`Paragraph, hereafter referred to as “Paragraph 4”).
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`That Registrant purchased certain items from Petitioner’s bankruptcy estate in October of 2007 but
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`the status of the intellectual property remains allegedly unresolved, and therefore no use in
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`commerce could have commenced prior to said date (Petition for Cancellation, First Page, 5”‘
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`Paragraph, hereafter referred to as “Paragraph 5”).
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`That the mark had been abandoned by the bankruptcy estate trustee from whom the Registrant
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`purchased the estate property since July of 2001, and “[N]o party claiming interest by transfer or
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`assignment anywhere had used the trademark FAMOUS MONSTERS OF FILMLAND in
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`interstate commerce or in any manner whatsoever” from July 2001 until October of 2007 (Petition
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`for Cancellation, First through Second Page, 6th Paragraph, hereafter referred to as “Paragraph 6”).
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`Only Petitioner had used the mark in commerce commencing in January of 2004 (Petition for
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`Cancellation, Second Page, 1“ Paragraph, hereafter referred to as “Paragraph 7”).
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`That Petitioner’s motivation for the alleged fraudulent filing is to “advance a Lanham Act
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`complaint in California Federal District Court” and as a basis to prosecute a pending application by
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`Petitioner for “FAMOUS MONSTERS”, which is allegedly “being opposed by at least two
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`parties”, and filI'[l’lC1‘ allegedly to obtain a prior cancellation of Registration No. 2666798 (Petition
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`for Cancellation, Second Page, 2nd Paragraph, hereafter referred to as “Paragraph 8”).
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`It is clear from these allegations, both standing alone and when taken into context of the history
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`of the facts concerning the Registration at issue, much of which is of record with the USPTO, that the
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`Petition fails to state a claim against the Registrant for fraud and, in fact, brings light to a history of
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`fraudulent conduct by and on behalf of Petitioner.
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`Background of Facts
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`1. History of Mark and Chain of Ownership:
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`A.
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`Petitioner’s Registration and Bankruptcy Filing:
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`Prior to filing the Bankruptcy Action
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`Petition referred to hereinbelow, the Petitioner herein, Ray Ferry aka Raymond Ferry, had been the
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`registered owner of a “Famous Monsters of Filmland” trademark nos. 1759269 and 1864434, dated
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`April 20, 1992 and July 31, 1992 respectively, and had been publishing magazines and selling other
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`merchandise in connection therewith. As a result of an adverse judgment in a civil matter, (Ackerman
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`M, LASC Case No. LC 039960, Judgment entered May 10, 2000) Petitioner filed for Chapter 7
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`Federal Bankruptcy Protection on October 26, 2000 (In re Ray Ferry, US Bankruptcy Court, Central
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`District of California, San Fernando Valley Division, Case No. SV 01-019655-AG) (The “Bankruptcy
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`Action”). The history of these proceedings is long, protracted and voluminous, Registrant does not
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`wish to burden the Board with other than the most pertinent documents, and requests the Board to take
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`judicial notice of those public court records in accordance with 37 CFR §2. 122 and Fed. R. Evid. 201.
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`B.
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`Fraudulent Transfers by Petitioner:
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`Petitioner had been found to have secretively and
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`fraudulently transferred those trademarks and the assets connected therewith on or about May 15,
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`2000, and was ordered by the Bankruptcy Court to turn the same over to the Trustee. The list of assets
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`to be turned over included all items used for the production of the magazines, t-shirts, posters, and
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`assets evidencing the goodwill of the Magazine (In re Ray Ferry, supra, “Fraudulent Transfer
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`Summary Judgment” dated October 12, 2001, holding that Petitioner “owns no interest
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`in the
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`Magazine Assets and goodwill of the Magazine which constitute property of the estate”, and filI'[l’1C1‘
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`holding the Defendant/Petitioner herein, “a constructive trustee for the Plaintiff’ s benefit since May
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`15, 2000” and assigning the same to the Trustee (Summary Judgment, supra, Page 4).
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`C. Transfer of Assets to Trustee: As part of the scheme of avoiding the Bankruptcy rulings,
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`Petitioner transferred the then—registered trademarks as well as the pending application for the subject
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`Registered Trademark to Petitioner’s counsel-of-record, which then assigned the Registration to
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`Esketores Systems, LLC, an entity owned/controlled by Petitioner’s counsel. As a result thereof, an
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`adversarial proceeding was commenced by the Trustee to avoid said transfer, ultimately resulting in a
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`settlement resolving the dispute which was approved by the Bankruptcy Court on November 19, 2003,
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`and effectively and assigning the subject Trademark to the Trustee.
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`D. Assignment by Trustee to Registrant: Finally, pursuant to an Order re Motion for Authority
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`to Sell or Abandon Personal Property dated October 3, 2007, the subject Trademark, together with
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`those assets set forth in the Turnover Order, were ordered sold to the Registrant Philip Kim herein.
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`Registrant thereby acquired said Trademark, goodwill and assets by duly executed Assignment, (the
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`“Assignment”) which was recorded with the USPTO on October 10, 2007. A true and correct copy of
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`the Order re Motion for Authority to Sell as well as the duly acknowledged Assignment were recorded
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`with the Assignment Division of the USPTO, Reel/Frame No. 003637/0388, and Judicial Notice
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`therefore is respectfially requested. A complete history of the transfers and court decisions is included
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`in a Preliminary Injunction decided as of March 25, 2009, which is submitted herewith as Exhibit “A”
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`and incorporated by reference herein.
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`II. Acguisition by Registrant and Continuation of Business:
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`Following the Assignment, Registrant Philip Kim immediately commenced to take actions to
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`continue the business and goodwill associated with the subject Trademark and to protect the same,
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`4
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`namely;
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`Sent by certified mail, dated October 18, 2007 a notice to Cease and Desist all infringing
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`activities to the Petitioner herein, to which Petitioner never responded. A true and correct
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`copy is submitted herewith as Exhibit “B” and incorporated by reference herein.
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`Registered the Trademark with the United States Customs and Border Protection, Intellectual
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`Property Rights Section, Registration No. 07-01079, Filed ll/07/2007,
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`Filed a Complaint with the National Arbitration Forum under the Uniform Domain Name
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`Dispute Resolution Rules against a known cyber-squatter for the transfer of the domain name
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`“FAMOUSMONSTERSOFFILMLANDCOM”. Despite the domain registrant’s assertion
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`that, primarily due to the actions of Petitioner herein, the rights to the trademark were
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`unresolved, resulted in a favorable ruling by the Arbitrator, and the same was transferred to
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`Registrant herein.
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`(Philip Y. Kim v Texas
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`International Property Associates, No.
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`FA080200ll52004).
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`Specifically,
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`the Arbitrator
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`found that
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`“...the
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`evidence of
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`Complainant’s ownership is clear. Complainant has submitted all of the relevant bankruptcy
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`court order showing the adjudication and transfer of title to the mark in Mr. Ferry’s
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`bankruptcy to Complainant. Mr. Ferry, and any other party who claimed an interest in the
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`mark, were parties to the litigation in the bankruptcy court. Further, Complainant notes that
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`all of the alleged litigation, except for Mr. Ferry’s continued insistence on some form of
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`ownership, had been resolved long before the registration or re-registration of the domain
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`name by Respondent.” (Kim v. Texas, supra, Notice of Decision, April 17, 2008). The fisll
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`decision
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`is
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`posted
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`on
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`the
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`National
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`Arbitration
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`Board
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`website,
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`at
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`http://www.domains.adrforum.com/domains/decisions/ll52004.htm,
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`and Judicial Notice
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`therefore is respectfiilly requested.
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`4. Filed a Complaint with the Internet Crime Complaint Center (“IC3”) on October 16, 2007,
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`Complaint No. I07l0l6023 8480461, setting forth the continuous refilsal of Petitioner Ferry to
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`abide by the Court Orders and that the continued operation of the business was a violation
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`thereof. This matter is still pending.
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`5. Filed a Petition for Cancellation No. 92048534 regarding the mark “FAMOUS MONSTERS”
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`in International Class 28, which resulted in the Cancellation thereof by default judgment on
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`March 21, 2008. Petitioner Ferry herein filed a document on March 25, 2008, which was not
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`served on either party to said Cancellation, which may be viewed via TTABVue at
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`http://ttabvue.uspto.gov/ttabvue/v?pno=92048534&pty=CAN&eno=l0, (hereafter referred to
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`as “Petitioner Ferry USPTO Filings”), and Judicial Notice of the existence and contents
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`thereof is respectfillly requested.
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`In his Order of April 2, 2008, the Interlocutory Attorney, in
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`referring to the documents filed by Petitioner Ferry, states that “In any event, the nonparty
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`[Ferry] is not the record owner of the registration at issue. Furthermore, the fraud alleged in
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`the Correction to Records appears to be inextricably intertwined with a proceeding in the U.S.
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`Bankruptcy Court, and, accordingly, any arguments or requests should be brought to the
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`attention of the Bankruptcy Court. The Board may not overturn any rulings of the Bankrupt
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`Court”
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`(Board’s
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`Order
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`viewable
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`at
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`the
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`TTAB
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`website
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`at
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`http://ttabvue.uspto.gov/ttabvue/v?pno=92048534&ptv=CAN&eno=ll,
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`Judicial
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`Notice
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`thereof respectfillly requested).
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`6. Filed an intent-to-use application for “FAMOUS MONSTERS” with the USPTO, Serial No.
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`77442249, for goods in International Class 28 (the “New Application”). This application is
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`now pending, the publication period has passed, and no opposition has been filed.
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`7. Filed Sections 8 and 15 maintenance requirements for the subject Registration, which were
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`duly accepted on November 14, 2007.
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`8. Designed
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`and
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`launched the website www.famousmonstersoffilmland.com for
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`the
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`continuation of the business and goodwill of the Registered Trademark herein.
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`9. Despite all of the ongoing efforts by the Registrant to set up and run the business duly
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`acquired by the Bankruptcy Trustee, Petitioner Ferry’s continued refiasal to cooperate with
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`the assignments, turnover and subsequent contempt orders and ongoing interference with
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`Registrant’s efforts to operate his business, Registrant had no choice but to file a Civil
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`Complaint in the United States District Court, Central District of California, Case No. 2:08-
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`cv-05433-GAF-MANx, against Petitioner Ferry alleging, among other claims, Federal
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`Trademark Infringement, Violation of the Anti-Cybersquatting Act, et. al.
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`(the “Civil
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`Action”), upon which a ruling has issued concerning much of the above as contained in
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`Exhibit “A” hereof.
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`Nevertheless, despite all of Registrant’s efforts at considerable time and expense to Registrant to
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`operate the newly and legally acquired Trademark, goodwill and assets associated therewith, the above
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`referenced orders, as well as subsequent and contempt orders for failure to abide by the same, all of
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`which are of record in the Bankruptcy Action,
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`this Petitioner continued to publish the same
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`Magazines, sell items on Petitioner’s own website, post ownership of the trademark as “R. Ferry Ent”
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`on Petitioner’s websites www.famousmonsters.com et. al., and has continued to do so until the Civil
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`Action resulted in an order of preliminary injunction, referred to hereinbelow. A true and correct copy
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`of Petitioner Ferry’s website, posting “FAMOUS MONSTERS OF FILMLAND (words and
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`distinctive lettering) is a registered trademark of R. Ferry Ent.”, is submitted herewith as Exhibit “C”
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`and incorporated by reference herein.
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`Argument
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`1. Petitioner Has Failed to Sufficiently State a Claim of Fraud in the Pleadings.
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`7
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`The subject registration is now over five (5) years old and is only subject to cancellation under
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`very specific grounds in accordance with the Lanham Act §14(3). Petitioner Electronically Filed
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`Cover Sheet asserts all
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`three (3) of the Classifications for Goods and Services as subject
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`to
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`Cancellation, and asserts lists “Fraud” under Grounds for Cancellation.
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`When pleading such special and serious matters such as fraud,
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`the Federal Rules of Civil
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`Procedure shall be followed and the circumstances of fraud must be pleaded with particularity
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`(Trademark Rule 2.114(b)(1), 37 CRF §2.114(b)(1), pertaining to cancellation proceedings).
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`Moreover, “[b]ecause of the serious nature of allegations of fraud, it is necessary that the factual
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`circumstances be pleaded with particularity so that the party against which the fraud is alleged has a
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`filll opportunity to meet the charges” (Electronic Realty Associates, Inc. v. Extra Risk Associates, Inc.,
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`217 USPQ 810, 813 (TTAB 1982)). The failure to provide the factual bases for the invalidity claim
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`with sufficient specificity will result in the dismissal of the claim (King Automotive, Inc., v. Speedy
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`Mufller King, Inc., 667 F.2d 1008, USPQ 801, 1981).
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`In the instant case, a review of the pleadings set forth by the Petitioner demonstrate on its face the
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`inconsistencies in the allegations, namely, that the mark had been abandoned since July of 2001 on the
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`one hand, when there had been some transfer of assets to the Trustee, yet on the other hand Petitioner
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`had been using the mark in interstate commerce since January of 2004. The pleadings do not specify
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`that there was any intent to commit fraud by the Trustee in Bankruptcy, the predecessor in interest to
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`Registrant herein, or to establish how Petitioner’s alleged use of the mark in commerce is related to the
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`current allegation of fraud. Petitioner fails to “fill in the blanks” which would indicate any knowingly
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`false or fraudulent activity on the part of Registrant or anyone when Petitioner pleads a bankruptcy
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`estate which includes tangible assets, yet admits to continuing to be the “sole author, publisher and
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`manufacturer of said products.”
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`In other words, if the Trustee is to be held accountable for the
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`abandonment, then it is the Trustee who is admittedly the rights holder of the mark and the goods
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`during the timeline pleaded and hence Petitioner could not be the real party in interest with standing to
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`make such claims. Further, Petitioner fails to allege any facts whatsoever with regards to Class 25 of
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`the registration. Even if all factual allegations are presumed true, the Board need not accept factual
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`inferences drawn if they are unsupported by the facts alleged (e.g. Kowal v. MCI Communications
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`Corp, 16 F.3d, 1271, 1194). Petitioner's claims regarding and rights in the mark and the goods are so
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`lacking in alleged factual basis as to be both immaterial and irrelevant and unable to support the
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`serious claim of fraud, and therefore, it is respectfiilly submitted, should be dismissed in its entirety on
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`this basis alone.
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`II.
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`The Pleadings and the Records Fail to Support a Claim of Fraud.
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`When reviewing a motion to dismiss, the Board may look outside the pleadings to consider facts
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`not subject to proof to determine whether a party’s allegations are well-pleaded (Compagnie Gervais
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`Danone v. Precision Formulations, LLC, TTAB Proceeding No 91184174, 1/05/2009, citable as
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`precedent.)
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`In the present case, allegations set forth by the Petitioner on which the claim of fraud
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`appears to be based are not supported by the office records, and in fact contradict such allegations.
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`For example,
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`1. Paragraphs 3 and 4, Petitioner states that “Ferry has been using a similar mark in
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`commerce since 2004”, and that this mark is “not registered with the USPTO”. However,
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`as set forth in the factual background hereinabove, Registrant Kim acquired the subject
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`Registration by Assignment duly ordered and authorized by the Bankruptcy Court, and
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`which Registration was originally registered to the Petitioner herein, as is evident in the
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`original certificate and USPTO records of registration.
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`Indeed this is how the Registration
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`became a part of the Bankruptcy estate.
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`It is blatantly false to represent to this Board that
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`somehow the actions and goods of Petitioner are somehow separate from the Registration
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`at issue.
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`2. Further, Petitioner has filed documents with the Trademark Assignment Division, signed
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`under penalty of perjury, stating “I am the rightfill owner of the trademark known as
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`FAMOUS MONSTERS OF FILMLAND, Serial Number 75766091, Registration Number
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`2519146”, and “The trademark has been registered on the primary register with the PTO
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`in my name since December 18, 2001 and I have continuously used the mark in interstate
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`commerce since November, 1990.” (Declaration of Raymond Ferry dated November 16,
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`2007, viewable at http1//ttabvue.uspto.gov/ttabvue/v?pno=92048534&pty=CAN&eno=10
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`and previously referred to, supra,
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`regarding Petitioner’s attempt
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`to interfere with
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`Registrant’s cancellation proceeding. These statements directly contradict those in the
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`pleadings set forth in the Petition herein with regards to the ownership of the Registration,
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`as well as the alleged timeline of use in commerce, among others.
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`3. Paragraph 8 makes conclusive allegations about the motivation for the alleged false
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`filings, and specifically alleges that the New Application referred to hereinabove “is
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`currently being opposed by at least two parties.” A review of the Serial 77442249
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`proceedings will reveal that the publication period has passed for said application, and no
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`such oppositions are pending, and Judicial Notice is again hereby requested to affirm the
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`same. Petitioner has again, as is his pattern, made a blatantly false allegation to this
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`Board.
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`4. Registrant is the Assignee of the subject Registration herein as set forth in the Sale Order
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`authorized under 11 U.S.C. §§ 105(a) and 363 (b), (c), (f) and (m), and in the Trademark
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`Assignment, both of which are of record in the USPTO Assignment Division as set forth
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`hereinabove. As the Assignee and current owner of record since October of 2007,
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`Registrant may act in any action with respect to the registration which may or must be
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`taken by the registrant/assignor, as well as in any inter parties proceeding in place of the
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`10
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`assignor,
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`in this case the Bankruptcy Trustee of Petitioner’s estate (TBMP §5l2.0l).
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`These facts are a part of the USPTO records and not subject to proof, and may be
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`considered by the Board herein, including the “correction of records” filings by Petitioner
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`in an attempt to disrupt and interfere with Registrant’s rights hereunder. Therefore,
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`Registrant had stepped into the shoes of the Trustee/Assignor since at least as far back as
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`2001 when the Petitioner was deemed by the Bankruptcy Court to be the constructive
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`trustee of the assets on behalf of the Trustee. It was Registrant’s right, and indeed
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`obligation, to maintain the Registration and the assets acquired therein as part of the
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`ongoing business, which Petitioner continues to disingenuously protest belong to
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`Petitioner despite the numerous rulings, none of which have been overturned or reversed
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`since the first Bankruptcy Action filing.
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`Given the burden of proof required to support such a serious allegation of fraud, and that
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`any doubt must be resolved against the charging party (Citibank NA. v. Citibanc Group, Inc. et al., 215
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`USPQ 884, (N .D. Ala. 1982), that the Federal Rules require that “the pleadings contain explicit rather
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`than implied expression of the circumstances constituting the fraud” (King Automotive, Inc., supra), and
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`for all the foregoing reasons, it is respectfiilly submitted that the pleadings on their face, as well as when
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`taken into account with the records of the USPTO, as well as the Court’s ruling in the Civil Action
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`submitted herewith, fail to state a cause of action to support fraud and hence cancellation, provide clear
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`evidence that the Petitioner is highly unlikely to succeed in prevailing in this Petition for Cancellation
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`(Exhibit “A”, Page 5, Lines 6 through 24) and dismissal thereof is warranted.
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`Conclusion
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`As set forth in the Background of Facts hereinabove, the matter now before the Board comes
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`from a long and protracted series of adversarial proceedings which are of public record, some with the
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`USPTO and ascertainable through the same. Since the filing of the Bankruptcy Action, Petitioner, who is
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`11
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`the Debtor therein, has continued and continues to this day to take actions attempting to thwart the rulings
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`of the courts, the Trustee and now the Registrant, including accusations of fraud against the Trustee, the
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`Trustee’s counsel, the Debtor/Petitioner’s own counsel, and even the Bankruptcy Judge. Having failed to
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`succeed except to create disruption and untold expenses to the Trustee and now Registrant, and having
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`been held liable for fraudulent transfer as well as contempt himself, and now with a Civil Action of
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`Trademark Infringement, Cyber-squatting et. al. pending against him, Petitioner is now trying his luck
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`with the Trademark Trial and Appeal Board with a defectively pleaded Cancellation Petition for fraud,
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`and the apparent notion that perhaps the Board will miss or ignore Petitioner’s history on record with this
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`very same Board.
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`Registrant Philip Kim, therefore, respectfillly submits that, for all the foregoing reasons, the
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`Petition fails to state a cause of action both on its face and taken with the records of the USPTO, the
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`TTAB, and prior proceedings for which Judicial Notice has been requested, that Petitioner has failed to
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`state a claim upon which relief can be granted and cannot prevail in the instant action, and therefore the
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`same should be dismissed with prejudice.
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`Dated March 30, 2009
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`Respectfully submitted,
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`/ss/
`
`Valerie Ann Nemeth
`
`Attorney for Registrant, Philip Kim
`191 Calle Magdalena, Suite 270
`Encinitas, CA. 92024-3750
`Tel: 760-944-4130 Fax: 760-944-3325
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`Email: VANemeth@cs.com
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`12
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`Certificate of Service
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`I hereby certify that a true and complete copy of the foregoing Motion to Dismiss Petition for
`Cancellation and Memorandum of Law in Support Thereof has been served on the Petitioner herein by
`mailing said copy on March 30, 2009 Via First Class Mail, postage prepaid to Ray Ferry, 49 Boone
`Village, Ste. lll, Zionsville, IN 46077.
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`/ss/
`
`Valerie Ann Nemeth
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`Certificate of Electronic Filing
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`The undersigned hereby certifies that this Registrant’s Motion to Dismiss Petition for Cancellation and
`Memorandum of Law in Support Thereof is being filed with the Trademark Trial and Appeal Board
`through its website, locatedat http:estta.uspto. gov, on this 30th day of March, 2009.
`
`/ss/
`
`Valerie Ann Nemeth
`
`13
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`

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`Case 2:08~cv—05433—GAF—MAN
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`Document 43
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`Filed G3/'25/'2009
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`Page 1 of 12
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`EXHIBITA
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`LINK: 34
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`UNITED STATES DISTRICT COURT
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`FOR THE CENTRAL DISTRICT OF CALIFORNIA
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`PHILIP KIM,
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`Plaintiff,
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`VS.
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`RAYMOND FERRY and CONNIE
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`BEAN,
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`Defendants.
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`\_/\/\/\/\/\/\/\/\/\/é
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`Case No. CV 08-05433 GAF (MANx)
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`MEMORANDUM & ORDER REGARDING
`RENEWED MOTION FOR PRELIMINARY
`INJUNCTION
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`I.
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`INTRODUCTION
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`Plaintiff Philip Kim initiated the present action against defendants Raymond
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`Ferry and Connie Bean in August 2008, alleging trademark violations under the
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`Lanham Act and state law based on Defendants’ use of the “Famous Monsters of
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`FiImIand” trademark. Presently before the Court is PIaintiff’s renewed motion for a
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`preliminary injunction, which Defendants have opposed. Because the Court has
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`already summarized the basic facts of the case in a previous order (fl 2/18/2009
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`Memorandum & Order (Docket No. 33) at 2-4), the Court proceeds to weigh the
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`merits of PIaintiff’s motion. For the reasons set forth below, the Court concludes that
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`Plaintiff has established a likelihood of prevailing on his claims, and that he will suffer
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`irreparable injury if his motion is denied. Accordingly, the motion is GRANTED.
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`Case 2:O8~cv—05433—GAF—i‘v’lAN
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`Document 43
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`Filed G3/'25/'2009
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`Page 2 of 12
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`EXHIBIT A
`ll. DISCUSSION
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`A. LEGAL STANDARD FOR PRELIMINARY INJUNCTIONS
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`The Lanham Act permits federal district courts to grant injunctions according to
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`principles of equity and upon reasonable terms to prevent the violation of any right of
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`the registrant of a registered trademark, including violations of subsections (a), (c), or
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`(d) of section 43 of the Act. 15 U.S.C. § 1116(a). “To obtain a preliminary injunction
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`in a trademark case, a plaintiff must demonstrate ‘either (1) a combination of
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`probable success on the merits and the possibility of irreparable injury or (2) the
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`existence of serious questions going to the merits and that the balance of hardships
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`tips sharply in his favor.”’ Abercrombie & Fitch Co. v. Moose Creek lnc., 486 F.3d
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`629, 633 (9th Cir. 2007) (quoting Brookfield Commc’ns Inc. v. W. Coast Entm’t
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`Corp., 174 F.3d 1036, 1046 (9th Cir. 1999)). “These two formulations represent two
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`points on a sliding scale in which the required degree of irreparable harm increases
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`as the probability of success decreases.” Arcamuzi v. Cont’l Air Lines lnc., 819 F.2d
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`935, 937 (9th Cir. 1987) (internal quotation marks omitted).
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`B. PLAINTIFF’s LIKELIHOOD OF SUCCEEDING ON THE MERITS OF HIS CLAIMS
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`As a threshold matter, the Court notes that Plaintiff’s motion for a preliminary
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`injunction is based partly on a purported copyright infringement claim; however, the
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`second amended complaint (“SAC”) contains no such claim. Accordingly, the Court
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`disregards any arguments relating to copyright infringement put forth by Plaintiff in
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`support of his motion.
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`1. TRADEMARK INFRINGEMENT UNDER THE LANHAM AOT
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`Plaintiff’s federal trademark infringement claim constitutes the crux of the
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`present lawsuit. To prevail on that claim, Plaintiff must establish (1) the existence of
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`a valid, protectable trademark, and (2) Defendants’ subsequent use of that mark in
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`connection with the sale, distribution, or advertisement of goods or services in a
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`manner that is likely to deceive or cause confusion or mistake. 15 U.S.C. §
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`Case 2:08~cv—05«=133—GAF—MAN
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`Document 43
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`Filed 03./'25/'2009
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`Page 3 of 12
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`EXHIBIT A
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`1114(1)(a); see also Surfvivor Media Inc. v. Survivor Prods., 406 F.3d 625, 630 (9th
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`Cir. 2005); 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
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`§§ 23:1, 23:76 (4th ed. 2008).
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`a. Validity of the Mark
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`The “Famous Monsters of Filmland” trademark currently appears on the
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`principal register of the United States Patent and Trademark Office (“USPTO”) under
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`Plaintiff’s name (Kim Decl. 1] 3, Ex. B), thus constituting prima facie evidence of the
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`validity of the mark and shifting the burden to Defendants to prove the registered
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`mark’s invalidity. E 15 U.S.C. § 1057(b); Tie Tech, Inc. v. Kinedyne Corp., 296
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`F.3d 778, 783 (9th Cir. 2002). Defendants contest validity on two primary grounds:
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`(1) Plaintiff fraudulently registered the mark with the USPTO by submitting false
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`documents in support of his application, and the USPTO’s Trademark Trial and
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`Appeal Board (“TTAB”) will likely cancel the registration; and (2) Ferry is the only
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`person who has been using the mark continuously in interstate commerce since
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`2004. After weighing the relevant evidence before it and the parties’ respective
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`arguments, the Court concludes that Defendants are not likely to meet their burden of
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`proving invalidity on either ground.
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`First, the mark’s chain of title, as established during Ferry’s bankruptcy
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`proceedings in the U.S. Bankruptcy Court for the Central District of California, fully
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`supports Plaintiff’s contention that he owns the mark. Ferry was the registered owner
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`of the mark until June 2000, when he assigned his ownership interest either to
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`Thomas Brackey, Ferry’s counsel at the time, or Esketores Systems LLC
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`(“Esketores”), a company owned by Brackey.
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`(10/31/2001 Order Re: Summary
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`Judgment (Gottlieb v. Reynolds et al., SV 01-01210 AG (Docket No. 17)) 1] 5;
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`10/31/01 Statement of Uncontroverted Facts (Docket No. 18) at 7.) After Ferry filed
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`for bankruptcy in October 2000, the bankruptcy court voided Ferry’s transfer of the
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`mark to Brackey/Esketores as fraudulent, and ordered that the mark be transferred to
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`David K. Gottlieb, the trustee of Ferry’s estate (“Trustee”). (E 10/31/2001 Order
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`

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`Case 2:08-cv-05433—GAF—M/KN
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`Document 43
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`Filed 03/'25./'2009
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`Page 4 of 12
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`EXHIBIT A
`(Reynolds, SV 01-01210 AG) at 4, Ex. 1; see also 12/17/2001 Order (In re Ferry, SV
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`00-19655 GM (Docket No. 113)).) The Trustee held the mark until October 2007, at
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`which time he sold the mark to Plaintiff for $25,000.
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`(10/3/2007 Order (In re Ferry,
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`SV 00-19655 GM (Docket No. 426)).) Thus, the chain of title fully supports Plaintiff’s
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`position that he owns the mark. Further, any attempt by Defendants to contest
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`Plaintiff’s ownership on the ground that the Trustee did not own the mark when
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`Plaintiff purchased it does not create a dispute regarding ownership that implicates
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`Ferry in any way. Ferry gave up his ownership of the mark when he filed for
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`bankruptcy. Any use by Ferry of the mark subsequent to the transfer thereof to the
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`Trustee was necessarily unauthorized.
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`The Court also rejects Defendants’ baseless and disingenuous contention that
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`the bankruptcy court somehow invalidated or disaffirmed the sale of the mark to
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`Plaintiff.
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`(Opp. at 29-31.) The bankruptcy court did no such thing, and in fact,
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`approved the sale in its October 3, 2007 order. (E 10/3/2007 Order (In re Ferry,
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`SV 00-19655 GM (Docket No. 426)).) The mere fact that the precise nature of the
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`Trustee’s interest in the mark was never resolved during the bankruptcy proceedings
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`does not support Defendants’ contenti