Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA278792
`ESTTA Tracking number:
`04/17/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92050698
`Defendant
`Bauer Bros.
`Bauer Bros.
`2925 Oceanside Blvd., Suite A
`Oceanside, CA 92054
`UNITED STATES
`LBAUERCSUB@YAHOO.COM
`Motion to Suspend for Civil Action
`Alexander E. Papaefthimiou
`alex@dqlaw.com
`/s/ Alexander E. Papaefthimiou
`04/17/2009
`suspend.mot.pdf ( 30 pages )(1210525 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`Darren J. Quinn (149679)
`Alexander E. Papaefthimiou (236930)
`LAW OFFICES OF DARREN J. QUINN
`12702 Via Cortina, Suite 105
`Del Mar, CA 92014
`Tel: 858-509-9401
`
`Attorneys for Registrant BA UER BROS. LLC.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`) Cancellation No.: 92050698
`)
`
`NIKE, INC.,
`
`V.
`
`) )
`
`Petitioner,
`
`In the matter ofRegistration No. 3,] 71,585
`) Mark:
`DTOM
`) Date Registered:
`November 14, 2006
`) 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)]
`
`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 17(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
`
`v. Nike, Inc. , 09cv0500 W (JMA) (the “Federal Action”), which Federal Action may have a bearing
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`on these proceedings.
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`The Complaint in the Federal Action was filed on March 12, 2009. These proceedings were
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`not filed until March 19, 2009.
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`MOTION TO SUSPEND FOR A CIVIL ACTION
`
`9204-8590
`
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`The Federal Action involves issues in common with these proceedings because it is an
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`action by Registrant against petitioner NIKE, INC. (“Petitioner”) for, inter alia, infringement ofthe
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`trademark that is the subject of these proceedings, pursuant to 15 U.S.C. 1125(a) (Lanham Act
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`Section 43(a)).1 The validity of the mark at issue in these proceedings will be at issue in the
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`Federal Action.
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`In fact, Petitioner has filed Counterclaims in the Federal Action that assert the
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`invalidity of the mark at issue in these proceedings.
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`The District Court’s decision in the Action will likely be binding upon the Board, while the
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`decision of the Board is not binding upon the District Court. See T.M.E.P. 510.02(a).
`A file stamped copy of the Complaint in the Action is attached hereto as “Exhibit A.”
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`Petitoner’s Answer and Counterclaims for invalidity are attached hereto as “Exhibit B.”
`
`Dated: April 17, 2009
`
`Respectfully submitted by:
`
`LAW OFFICES or DARREN J. QUINN
`
`DARREN J. Q
`
`12702 Via Cortina, Suite 105
`Del Mar, California 92014
`Tel: (858) 509-9401
`
`Attorneysfor Respondent
`
`1 “Section 43 (a) protects qualifying registered trademarks.” SoftMan Prods. Co. v.
`Adobe Sys., 171 F. Supp. 2d 1075, 1092 fn 21 (C.D. Cal. 2001) citing Two Pesos, Inc. v. Taco
`Cabana, Inc., 505 U.S. 763, 768 (1992) (Emphasis added); See, e. g., JBJ Fabrics, Inc. v. Mark
`Industries, Inc., 5 U.S.P.Q.2D (BNA) 1414 at *34-*35 (C.D. Cal. 1987) (“Section 43(a) makes
`certain types of unfair competition federal statutory torts, whether or not they involve
`infringement of registered trademarks”) (Emphasis added) citing LeSportsac, Inc. v. K Mart
`Corp., 754 F.2d 71, 75 (2d Cir. 1985); Carol Cable Co. V. Grand Auto, Inc., 4 U.S.P.Q.2D
`(BNA) 1056 at *6 (N.D. Cal. 1987) (same).
`MOTION TO SUSPEND FOR A CIVIL ACTION
`
`-- 2 --
`
`92048590
`
`

`
`CERTIFICATE OF FILING
`
`I hereby certify that the foregoing MOTION TO SUSPEND FO
`filed with the TTAB using the ESTTA filing system on April 17, 2
`.
`
`VIL ACTION was
`
`
`
`apaefthimiou
`
`
`
`PROOF OF SERVICE
`
`I am employed in the County of San Diego, State of California. I am over the age of 18 and
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`am not a party to the within action; my business address is: 12702 Via Cortina Suite 105 Del Mar
`CA 920 l 4.
`
`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 depositing such envelope with United States Postal Service
`[X]
`facility in Del Mar, California with postage fully prepaid.
`
`I certify under penalty of perjury under the laws of the State of California and the laws of
`the United States that the foregoing is true and correct.
`
`Dated:
`
`April 17, 2009 at Del Mar, California.
`
`0/7
`
` apaefthimiou
`
`MOTION TO SUSPEND FOR A CIVIL ACTION
`
`92048590
`
`
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`

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`EXHIBIT A
`
`EXHIBIT A
`
`

`
`«Case 3:09-cv-0O50(w—JMA Document1
`
`Filed 03/18009
`
`Page1of14
`
`\
`
`Darren .l. Quinn (149679)
`Alexander E. Papaefthimiou (236930)
`LAW OFFICES OF DARREN J. QUINN
`12702 Via Cortina, Suite 105
`D l
`.
`92 14
`Teéli Ii/i1ia5r8)C5A(\)9-9(4)10l
`Fax: (858) 509-9411
`
`AIIOrney.s'_/br I’lainIi[i'BA UER BR()S. LLC
`
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`3~ilal‘i'JTY
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`i
`BAUER BROS. LLC, a California limited ) CASE NO.
`liability company,
`
`l.
`
`2.
`
`))
`
`Plaintiff,
`
`v.
`
`NIKE, INC., an Oregon corporation,
`.
`
`Defendant.
`
`/
`tigcv 0500 w JMA
`
`
`
`(.4.--~..
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`) COMPLAI
`)
`)
`)
`)
`)
`)
`)
`
`x
`
`I
`
`Lanham Act Unfair Competition
`[I5 U.S.C. §l l25(a)]
`'
`
`California Statutory Unfair Competition
`[Ca]. Bus. & Prof. Code §l7200 el seq]
`
`3.
`
`Common Law Unfair Competition
`
`DEMAND FOR A JURY TRIAL
`
`(.'().\II’l.:\I.\"I'
`
`

`
`Case 3:09—cv-0050()&I—JMA Document 1
`
`Filed 03/‘W009
`
`Page 2 of 14
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`._a.
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`2
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`Plaintiff makes the following allegations on information and belief.
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`JURISDICTION AND VENUE
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`1.
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`This action arises under the trademark and unfair competition laws of the United
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`States (1 5 U.S.C. §l05 I , cl seq), the unfair competition laws ofthe state ofCalifomia (Cal. Bus. &
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`Prof. Code §l 7200, et seq), and the common law of the state of California.
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`2.
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`This Court has jurisdiction of this action under l5 U.S.C. §l l2l (actions arising
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`under Lanham Act), 28 U.S.C. §l33l(federal question), and 28 U.S.C. §l338(a) (original
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`jurisdiction relating to copyrights and trademarks).
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`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. §l338(a) and 28 U.S.C. §l367(a).
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`4.
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`Venue is proper in this district under 28 U.S.C. §§l3.9l(b) and (c). This Court has
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`personal jurisdiction over defendant and venue is proper in this district because, inter alia, (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 plaintiifselaim 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.
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`THE PARTIES
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`5.
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`.
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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 ofCalifornia. Plaintiffcreates and sells apparel
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`including, but not limited to, t-shirts under the brand “DON’T TREAD ON ME.” Plaintiffs
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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, §l40l .0l(a). Plaintiff
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`began making use ofits “DON’T TREAD ON ME” brand and trademarks on goods in lntemational
`Class 25in early 2004.
`
`6.
`
`Defendant NIKE, INC. is an Oregon corporation doing business in the Southern
`
`District of California. Defendant sells products including, but not limited to, t-shirts and other
`
`(.'O.\lI’l.:\l.\"I‘
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`-1-
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`

`
`Case 3:09-cv—0050w/—JMA. Document 1
`
`Filed 0332009
`
`Page 3 of 14
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`apparel under plaintiffs “DON’T TREAD ON ME” brand and trademarks without plaintiff’s
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`authorization.
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`Defendant’s infringing conduct persists despite having actual knowledge of
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`plaintiff’ s rights and having unsuccessfully attempted to both purchase plaintiff’ s trademark and
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`obtain its own trademark registration.
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`FACTUALBACKGROUND
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`Plaintiffs “Don’t Tread On Me” Brand And TRADEMARKS
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`7.
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`_
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`Starting in early 2004, plaintiff began screen printing and selling shirts andgother
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`articles of apparel under the brand “DON’T TREAD ON ME.” Plaintiffs “DON’T TREAD ON
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`'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”
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`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.
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`8.
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`On March I 5, 2005, plaintiffobtained Federal Trademark Registration No. 2,959,755
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`for the word mark “DON’T TREAD ON ME” in International Class 25.
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`9.
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`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
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`the “DON’T TREAD ON ME” brand as a contemporary American lifestyle brand that celebrates the
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`The DTOM Website also contains links for the purchase of various “DON’T TREAD ON ME”
`brand products.
`5
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`10.
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`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
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`Awards, Oprah, MTV’s Total Request Live, the Ellen Show, the CBS Early Show, Regis & Kelly,
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`and Katie Couric’s All Access Grammy Special.
`
`//
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`

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`Case 3:09-cv-OOSOCW-JMA Document 1
`
`Filed O3/W009
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`Page 4 of 14
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`ll.
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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 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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`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 plaintiff
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`as the source of products and advertisements.
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`.
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`13.
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`Due to the continuous advertisement, promotion, distribution and sale of plaintiff‘ s
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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.
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`Defendant Attempts To Purchase Plaintiff's Brand And TRADEMARKS
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`l4.
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`On information and belief," prior to committing the wrongful acts complained of
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`herein, defendant made an offer to purchase plaintiff‘ s “DON’T TREAD ON ME” brand and
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`TRADEMARKS. As the success and popularity ofplaintif’s “DON’T TREAD ON ME” brand and
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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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`.
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`Defendant Unsuccessfully Attempts To Register A Trademark Similar To Plaintiff" s
`l5.
`On March l6, 2006, though fully aware ofplaintifi"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 (the “USPTO”) for the word mark
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`“DON’T TREAD ON THIS” for use on, inter 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
`THlS” in connection with any of its products prior to March I6, 2006.
`
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`Case 3:09-cv-0050“!-JMA Document 1
`
`Filed O3/wOO9
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`Page 5 of 14
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`I7.
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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 plaintiffs registered trademark in “DON’T TREAD ON ME.”
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`« l 8.
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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,.defenda_nt’s trademark application was deemed abandoned on
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`March 19, 2007.
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`Defendant Willfuily infringes Upon Plaintiffs Rights
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`Despite having unsuccessfully attempted to purchase plaintiff’s “DON ’_T TREAD ON
`19.
`ME” brand and TRADEMARKS and having failed to register its own trademark due to a likelihood
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`ofconfusion with plaintiff’ s registered trademark, defendant has used the “DON’T TREAD ON ME”
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`brand and TRADEMARKS on and in connection with defendant’s goods, including clothing apparel
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`and footwear. On infomiation 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 plaintiff‘ s “DON’T
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`TREAD ON ME” brand and TRADEMARKS and misappropriating plaintiffs valuable goodwill
`therein. After correspondence between the parties, defendant has refused to cease and desist its
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`unlawful and wrongful conduct.
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`21.
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`On information and belief, defendant is continuing to use plaintifi’s “DON’T TREAD
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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 information 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 of plaintiff’ 5 ‘‘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 ofplaintiffs “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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`_
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`-4-
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`

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`Case 3:09-cv—0O50w-JMA Document 1
`
`Filed O3/W009
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`Page 6 of 14
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`the source of defendants’ unauthorized merchandise. Such use is also likely to confuse consumers
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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 believingthat 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 defendanfs products.
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`'
`
`FIRST CAUSE or ACTION
`(Lanham Act Unfair Competition)
`(15 U.S.C. §l l25(a))
`
`25.
`
`Plaintiff hereby incorporates by reference the allegations contained in paragraphs 1
`
`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
`
`ME,” plaintiffs “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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`lnternational 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 of the 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”
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`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 ofdefendanfs 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 of the 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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`Case 3:09-cv-0050“/-JMA Document 1
`
`‘Filed 03/62009
`
`Page 7 of 14
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`28
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`approved by plaintiff, that defendant’s products and plaintiffs products are the same and/or come
`
`from thesame source, and/or that defendant is the source of plaintiffs products.
`
`31.
`
`Defendant’s use in commerce of plaintiffs “DON’T TREAD ON ME” brand and
`
`TRADEMARKS as described above, constitutes a false designation of origin.
`
`32.
`
`Defendant’s use in commerce of plaintiffs “DON’T TREAD ON ME” brand and
`
`TRADEMARKS as described above, constitutes a false or misleading description of fact, or false
`
`or misleading representation of fact.
`33.
`Defendant’s use in commercial advertising and/or promotion ofplaintift“s “DON’T
`
`TREAD ON ME” brand and TRADEMARKS misrepresents the nature, characteristics, qualities,
`
`or geographic origin of defendant’s and/or plaintiffs goods, services, or commercial activities.
`
`34.
`
`Defendant, in connection with its goods or services, has used and continues to use
`
`a false or misleading description of fact or a falseor misleading representation of fact which:
`
`a.
`
`is likely to cause confusion, or to cause mistake, or to deceive as to the
`
`commercial activities by another person, or
`
`b.
`
`' misrepresents the nature, characteristics or qualities of defendant’s or
`
`plaintiff" s goods, services, or commercial activities.
`
`35.
`
`Defendant, by its acts complained of herein, has infringed and is continuing to
`
`infringe plaintiffs rights in plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS and
`
`has/competed unfairly with plaintiff.
`
`36.
`
`On information and belief, defendant’s conduct, as described above, has been, and
`
`is, being committed willfully with the intention of deceiving the public and misappropriating and
`
`diverting to defendant the valuable goodwill and reputation associated with plaintiffs “DON’T
`
`TREAD ON ME” brand and TRADEMARKS. Defendant knew that it was not entitled to use
`
`plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS in connection with the
`
`advertising, promotion, offering for sale, or sale of its products, and that to do so would confuse,
`
`mislead and deceive the public, but did so anyway.
`
`37.
`
`On information and belief, defendant’s conduct, as described above, has been, and
`
`is, being committed willfully and with recklessidisregard and indifference as to plaintiff's rights in
`
`(.'().\ll’l.AI.\"l‘
`
`-5-
`
`

`
`Case 3:09-cv-0O50w—JMA Document 1
`
`Filed 03/W009
`
`Page 8 of 14
`
`S\DOO\lO\U1-hbilxl
`
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`plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS. Defendant knew that plaintiff
`
`was the sole owner of the “DON’T TREAD ON ME” brand and TRADEMARKS, and that the
`
`public associated the same with plaintiff, yet used them in connection with the advertising,
`
`promotion, offering for sale, or sale of defendant’s products.
`
`38.
`
`irreparable injury to plaintiff from defendant’s infringing conduct is actual and/or
`
`presumed, and will continue unless defendant is enjoined and restrained by the Court.
`
`39.
`
`On infomtation and belief, defendant’s unlawful and infringing conduct has resulted
`
`in substantial profits to defendant. The amount of defendant’s ill-gotten gains is currently
`
`unascertainable.
`
`40.
`
`Plaintiff has no adequate remedy at law because injury to the reputation and goodwill
`
`associated with plaintiff and plaintiffs “DON’T TREAD ON ME” brand and TRADEMARKS
`
`cannot be quantified, and such injury cannot be compensated by monetary amounts.
`
`4l.
`
`' Pursuant to 15 U.S.C. §l 116, plaintiff requests an injunction against defendant to
`
`prevent the further violation of I 5 U.S.C. §l l25(a) and directing defendant to tile with the Court and
`
`serve on plaintiffa report in writing under oath setting forth in detail the manner and form in which
`
`defendant has complied with the injunction.
`
`42.
`
`' Pursuant to 15 U.S.C §l 1 17, plaintiffis entitled and seeks to recover:
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`Defendant's profits;
`
`Any and all damages sustained by plaintiff;
`
`Treble damages or profits;
`
`Costs ofthe action; and
`
`Reasonable attorney fees per statute.
`
`SECOND CAUSE OF ACTION
`(Statutory Unfair Competition)
`(Cal. Bus. & Prof. Code §17200, et seq.)
`
`43.
`
`Plaintiff hereby incorporates by reference the allegations contained in paragraphs 1
`
`through 42 of this Complaint as though fully set forth herein.
`
`44.
`
`This cause of action is brought pursuant to Cal. Bus. & Prof. Code §17200, el seq.
`
`//
`
`
`(.‘0.\||‘l.,\|.\"l'
`
`-7-
`
`

`
`Case 3:09-cv-0050“/-JMA Document 1
`
`Filed 03/‘Z009 . Page 9 of 14
`
`C)\O00\l'O\U!-l>~U3I\)
`
`ll
`
`12
`
`‘I3
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`l4
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`l5
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`l6
`
`l7
`
`l8
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`19
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`20
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`21
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`23
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`-24
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`25
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`26
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`27'
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`28
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`Defendant has committed and continues to commit an unlawful, unfair or fraudulent
`, 45.
`business act or practice within the meaning of Cal. Bus.'& Prof. Code §l7200.
`
`46.
`Defendant engaged and continues to engage in unfair, deceptive, untrue or misleading
`advertising within the meaning of Cal. Bus. & Prof. Code §l 7200.
`
`-47.
`Defendant has committed and continues to commit an act prohibited by Cal. Bus. &
`Prof. Code §175oo.
`'
`
`48.
`
`Pursuant to Cal. Bus. & Prof. Code §l 7203, plaintiff seeks:
`a.
`Such orders orjudgments, including the appointment ofa receiver, as may be
`necessary to prevent the use or employment by defendant of any practice which
`
`constitutes unfair competition;
`
`i b.
`
`Restitution to plaintiffof any money or property, real or personal, which may
`
`have been acquired by means of defendant’s unfair competition.
`
`THIRD CAUSE OF ACTION
`
`(Common Law Trademark Infringement)
`
`49.
`
`Plaintiff hereby incorporates by reference the allegations contained in paragraphs l‘
`
`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 plaintiff's “DON’T TREAD ON ME” brand and TRADEMARKS.
`
`51.
`
`Plaintiff has built up valuable goodwill in plaintiffs “DON’T TREAD ON ME”
`
`brand and TRADEMARKS_.
`52.
`Plaintiffs “DON’T TREAD ON‘ ME” brand and TRADEMARKS have acquired
`
`secondary meaning such that consumers associate them with plaintiff.
`
`53.
`
`Defendant’s commercial use of plaintiff‘ s “DON’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 or affiliation of defendant’s goods.
`
`g
`
`54.
`
`Defendant continues to engage in its wrongful conduct, described above, with
`
`knowledge that its conduct is likely to cause confusion, mistake or deception.
`
`//
`
`
`(.'().\ll'I.Al.\"|‘
`
`-3-
`
`

`
`Case 3:09-cv-00500 —JMA Document1
`
`Filed (‘)3/13009
`
`Page10of14
`
`55.
`
`Defendant’s use ofplaintiffs “DON’T TREAD ON:ME” brand and TRADEMARKS
`
`has been in violation of plaintiffs common law trademark rights and has caused damage to plaintiff
`
`by, misappropriating, diluting and tarnishing the valuable reputation and image associated with
`
`plaintiff and its products.
`
`56.
`
`Members of the consuming public are likely to and do believe that defendant’s
`
`products emanate from or are associated or affiliated with plaintiff and plaintiffs products.
`
`57.
`
`As a direct and proximate result of defendant’s wrongful conduct, defendant has
`
`caused plaintiff irreparable ham and injury.
`
`58.
`
`Defendant acted with oppression, fraud or malice as a result of the above conduct
`
`allowing plaintiff to recover punitive damages for the sake of example and by way of punishing
`
`defendant.
`
`WHEREFORE, plaintiff prays for judgment and relief on all causes ‘of action against
`
`PRAYER FOR RELIEF
`
`defendant as follows:
`
`1.
`
`2.
`
`3.
`
`Plaintiff recover damages in an amount to-be proven at trial;
`
`Plaintiff recover defendant’s profits in an amount to be proven at trial;
`
`I Plaintiff recover up to treble damages and/or profits as allowed by statute in an
`
`amount to be proven at trial;
`
`4.
`
`Plaintiff recover punitive damages against defendant in an amount appropriate to
`
`punish or make an example of defendant;
`
`5.
`
`A constructive trust be placed over all monies paid to defendant (which monies are
`
`traceable to the defendant who is the current possessors and trustees of such funds) as a result of
`
`defendant’s wrongful conduct to prevent unjust enrichment by defendant and_to avoid dissipation
`
`and/or fraudulent transfers of such monies by the defendant;
`
`6.
`
`An injunction against defendant to prevent the violation of plaintiffs registered
`
`trademark rights;
`
`7.
`
`’ An injunction against defendant to prevent the violation of l 5 U.S.C. §l l25(a);
`
`//
`
`©\DO0\lO\lII-bbék)
`
`ll
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`l2
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`l3
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`l4
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`15
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`l6
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`I7
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`18
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`I9
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`20
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`.9-
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`

`
`Case 3:09-cv-00500
`
`-JMA Document1
`
`Filed O3/18009
`
`Page11of14
`
`8.
`
`An order enjoining defendant from continuing to engage, use, or employ any
`
`unlawful, unfair or fraudulent business act or practice and unfair, deceptive, untrue or misleading
`
`advertising and any act prohibited by Chapter 1 (commencing with Section 17500) of Part 3 of
`
`Division 7 of the Business and Professions Code;
`
`b
`
`9.
`
`Restitution to plaintiff of any money or property, real or personal, which may have
`
`been acquired by means of defendant’s unfair competition;
`
`10.
`
`Attorney fees to the extent authorized by statute, agreement or law, including, inter
`
`alia, 15 U.S.C. §1117;
`
`1 1._
`
`12.
`
`13.
`
`13.
`
`Costs ofthis suit;
`
`Pre-j udgment and post-judgment interest, as permitted by the Court or under statute;
`
`Ajury trial on all claims so triable; and
`
`Such other and further relief as the Court may deem necessary or appropriate.
`
`Dated: March 1 1, 2009
`
`Respectfully submitted,
`
`LAW OFFICES OF DARREN .1. QUINN
`DARREN .l. QUI
`ALEXANDE
`
`.,,PAPAEFTl-llMlOU
`
`
`
`E. Papaefthimiou
`
`
`
`12702 Via Cortina, Suite 105
`Del Mar, CA 92014
`Telephone: (858) 509-9401
`
`A Ilorneysfar P1aim('[f'BA UER BROS. LLC.
`
`(f().\Il'I..-\I.\"I'
`
`-10-
`
`

`
`
`
`Case 3:09—cv—O0500w—JMA Document1
`
`Filed 03/18009
`
`Page12of14
`
`DEMAND FOR A JURY TRIAL
`
`Plaintiff demands a trial by jury on all causes of action so triable.
`
`Dated: March 1 1, 200.9
`
`Respectfully submitted,
`
`LAW OFFICES OF DARREN J. QUINN
`DARREN J. QUINN
`~
`ALEXANDE
`. AP EFTHlMlOU
`
`
`
`
`
`. Papaefthimiou
`
`12702 Via Cortina, Suite 105
`Del Mar, CA 92014
`Telephone: (858) 509-9401
`
`A II0rney.s'_/hr PIainI('[/"'BA UER BROS. LLC
`
`2-:::
`(IO.\ll'|.:\|.\"l'
`
`-11-
`
`1
`
`2 ‘
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`3
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`4
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`5
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`\ooo\),o~
`
`

`
`Filed 03/1“)09
`Case 3:09—cv-00500“-JMA Document 1
`«M we» won
`CIVIL co\iER SHEET
`.
`pers astre uired by law, except as provided
`TheJS 44 civil cover sheet and the information contained herein neither re lace norsu plement the filing and service ofpleadings onoth. rt
`by local rules ofcourt. This form, approved by theludicial Conference 0 the United gtates in September I974. is required fort e use 0
`Clerkof ourt for the purpose of initiating
`.,§ ....
`the civil docket sheet.
`(sea INSTRUCTIONS ON THE REVERSE or='rr-re FORM.)
`‘
`"
`
`Page 13 of 14
`
`I. (a) PLAINTIFFS
`I 2
`DEFENDANTS
`BAUER BROS. LLC, a California Corporation
`NIKE. |NC., an Oregon Corporation V
`_
`i.rr:»..,;‘:«lrttt~‘fi~*_.,‘t’t;'1-*.."r.‘=;’r;"-.-‘ .
`
`
`(b) County ofResidence of First Listed Plaintiff ‘ County of,‘ esidence dfI’iistIl;3l§iéiI Defendant
`(EXCEPT IN U.S. PLAINTIFF CASES)
`(IN US. PLAINTIFF CASES ONLY)
`NDI';‘_M_t;l_A_’ll0N 9
`""ii%°i‘:l\iloN or THE
`013750.
`
`I4: I I
`p w W 1
`_
`é lfttélsiletrt
`
`.
`
`_
`
`.
`
`'§
`
`NOTE:
`
`IN LAND‘:
`LANDI
`
`Attorneys (lfKnown) ’o9
`
`0 5 0 0 W
`
`(c) Attomey's(FirmName, Address,andTelephone Number)
`Darren J. Quinn, 12702 Via Cortina Suite 105. Del Mar. CA
`(858 509-9401
`‘
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`D I
`
`u.s. Government
`Plaintifi‘
`
`5 3 Federal Qtestion
`(US. Government Not a Party)
`
`'
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES(Plaoe an "x" in One Box for Plaintiff
`(For Diversity'Cases Only)
`and One Box for Defendant)
`34-
`rrra
`« P'l‘F
`DI-IF
`Citizen ofThis State’
`U I
`0 4
`CI 4
`
`DI-IF
`D I
`
`Incorporated or Principal Place
`of Business In This State
`
`U 2 us. Govemment
`Defendant
`
`Cl 4 Diversity
`(Indicate Citizenship ofParties in Item III)
`
`Citizen of Another State
`
`D 2
`
`D 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`Citizen orsirbjectofo
`Forci rt Count
`
`D 3
`
`C!
`
`3
`
`Foreign Nation
`
`E!
`
`Cl
`
`5
`
`6
`
`D 5
`
`El 6
`
`
`
`‘I
`
`CI 422 Appeal 28 USC I58
`CI 423 ‘Withdrawal
`28 USC I57
`
`
`
`
`
`
`‘.
`
`
`
`,
`
`IV. NATURE OF SUIT Plaocan “X” inOne Box Onl
`"
`'
`.'
`PERSONAL INJURY
`D tI0 Insurance
`D 3I0 Airplane
`Cl I20 Murine
`0 315 Airplane Product
`E! I30 Miller Act
`Liability
`0 I40 Negotiable Instrument
`CI I50 Recovery ofovcrpaymcnt D 320 Assault. Libel &.
`&.EnforcementoI'.ludgment
`Slander
`0 ISI Medicare Act
`0 330 Federal Employers‘
`0 I52 Recovery of Defaulted
`Liability
`-
`Student Loans
`0 340 Marine
`(ExcI. Veterans)
`CI 345 Marine Product
`D I53 Recovery ofOverpayment
`Liability
`of Vetcmn's Benefits
`C! 350 Motor Vehicle
`D I60 Stockholders‘ Suits
`D 355 Motor Vehicle
`Product Liability
`0 I90 Other Contract
`
`360 Other Personal
`In'u
`
`CI
`
`PERSONAL rruuav
`362 Personal Injury -
`Med. Malpractice
`D 365 Personal Injury -
`Product Liability
`D 368 Asbestos Personal
`Injury Product
`Liability
`PERSONAL PROPERTY
`0 370 Other Fraud
`0 37I Truth in Lending
`0 380 Other Personal
`Property Damage
`D 385 Property Damage
`Product Liability
`
`
`
`
`
`
`
`
`tt,J;.-
`cl sro Agriculture
`0 400 State Reapponionmcnt
`CI 4 I0 Antitrust
`Cl 620 Other Food & Dmg
`0 430 Banks and Banking
`El 625 Drug Related Seizure
`D 450 Commerce
`of Property 2i USC 88]
`Ili.lllIT'.T¢'I7.l'3'Ti'tI'd]°'.‘iTtTITtr'y.‘ilIiIIIlE§ D 460 Deportation
`0 630 Liquor Laws
`0 820 Copyrights
`Cl 470 Racketeer Influenced and
`CI 640 R.R. & Truck
`CI 830 Patent
`Corrupt Organizations
`0 650 Airline Regs.
`I 840 Trademark
`CI 480 Consumer Credit
`0 1560 Occupational
`CI 490 Cablclsat TV
`Safety/Health
`CI BIO Selective Service
`CI 690 Other
` WTWoI mHiWNm?fiWW Cl 850 Securitieslcommoditiesl
`D 710 Fair Labor Standards
`Cl 86! HIA (l395l‘I)
`Exchange
`Act
`Cl 862 Black Lung (923)
`CI 875 Customer Challenge
`0 720 Labor/Mgmt. Relations
`0 863 DIWC/DIWW 0105(3))
`I2 USC '.i4l0
`
`D 864 SSID Title XVI
`D 730 Labor/Mgmt.Reporting
`El 390 Other Statutory Actions
`0 865 RSI 405 )
`.& Disclosure Act
`D B9l Agricultural Acts
`III C! 740 Railway Labor Act
`El 892 Economic Stabilization Act
`0 870 Taxes (U.S. Plaintiff
`CI 790 Other Labor Litigation
`D 893 Environmental Matters
`or Defendant)
`0 79l Empl. Ret. Inc.
`El 894 Energy Allocation Act
`Security Act
`0 87! IRS—Third Party
`El 895 Freedom of lnfomtatiou
`
`26 USC 7609
`Act
`'
`is‘
`D 900Appeal of Fee Determination
`T
`i 462 Nani » rzatron - pp rcatrorl
`Unde