Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA346069
`ESTTA Tracking number:
`05/06/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92051978
`Defendant
`We Not Me, Ltd.
`Janet M. Garetto
`Noxon Peabody LLP
`300 S. Riverside Plaza, 16th Floor
`Chicago, IL 60606
`UNITED STATES
`jgaretto@nixonpeabody.com
`Motion to Suspend for Civil Action
`Janet M. Garetto
`jgaretto@nixonpeabody.com, chitm@nixonpeabody.com,
`mhalligan@nixonpeabody.com
`/Janet M. Garetto/
`05/06/2010
`Motion to Suspend Cancellation Proceeding Due to Pending Civil Litigation.pdf (
`3 pages )(11953 bytes )
`MemorandumofLawInSupportofMotiontoSuspend .pdf ( 108 pages )(12475035
`bytes )
`MemorandumofLawInSupportofMotiontoSuspend_Part1.pdf ( 45 pages
`)(5413541 bytes )
`MemorandumofLawInSupportofMotiontoSuspend_Part2.pdf ( 63 pages
`)(7038940 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of;
` U.S. Registration No. 3,118,177
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`adidas America, Inc.,
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`Petitioner,
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`v.
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`We Not Me, Ltd.
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`Registrant.
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`Cancellation No. 92051978
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`MOTION TO SUSPEND THE CANCELLATION
`PROCEEDING DUE TO PENDING CIVIL ACTION
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`Pursuant to Trademark Rule 2.117(a), Registrant We Not Me, Ltd. (“Registrant”)
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`respectfully requests the Trademark Trial and Appeal Board (the “Board”) to suspend the above-
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`captioned Cancellation Proceeding. In support of this motion and as stated in the accompanying
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`Memorandum of Law in Support of Registrant’s Motion to Suspend Cancellation Proceeding
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`(“Memorandum of Law”), Registrant states that on or about October 1, 2009, Registrant filed a
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`complaint for federal trademark infringement, federal copyright infringement, common law
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`unfair competition and unjust enrichment with respect to Registrant’s WE NOT ME mark (U.S.
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`Registration No. 3,118,177), against several defendants -- including adidas America, Inc. -- in
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`the U.S. District Court for the Eastern District of Texas, Marshall Division which may be
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`transferred to the U.S. District Court for the District of Oregon or the U.S. District Court for the
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`_____________________________________________________________________________________________
`MOTION TO SUSPEND THE CANCELLATION PROCEEDING DUE TO
`PENDING CIVIL ACTION – PAGE 1
`12893058.1
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`057455-000002
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`
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`Northern District of Illinois (collectively referred to as the “Civil Litigation”).1 In the Civil
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`Litigation, Registrant alleges that adidas is infringing Registrant’s WE NOT ME mark.
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`Although an answer has yet to be filed by adidas in the Civil Litigation, in view of the
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`allegations made in the Petition to Cancel, the validity and use of Registrant’s WE NOT ME
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`mark are sure to be central themes in the Civil Litigation. As such, the outcome of the Civil
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`Action will have a direct bearing on – and will likely be dispositive of – the Cancellation
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`Proceeding.
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`WHEREFORE, Registrant respectfully requests that the Board suspend the Cancellation
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`Proceeding pending a final decision in the Civil Litigation.
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`Respectfully submitted,
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`NIXON PEABODY LLP
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`
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`By: /s/ Janet M. Garetto
`
`Janet M. Garetto
` R. Mark Halligan
` Nixon Peabody, LLP
`300 South Riverside Plaza, 16th Floor
`Chicago, IL 60606
`Tel: (312) 425-3900
`Fax: (312) 425-3909
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`Dated: May 6, 2010
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`1 On April 30, 2010, Registrant filed a motion requesting reconsideration of the Texas District Court’s Order
`transferring the Civil Litigation to the U.S. District Court for the District of Oregon and requesting transfer of the
`Civil Litigation to the U.S. District Court for the Northern District of Illinois.
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`_____________________________________________________________________________________________
`MOTION TO SUSPEND THE CANCELLATION PROCEEDING DUE TO
`PENDING CIVIL ACTION – PAGE 2
`12893058.1
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`057455-000002
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`CERTIFICATE OF SERVICE PURSUANT TO 37 CFR § 2.119
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`I hereby certify that a true and accurate copy of the foregoing Motion To Suspend The
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`Cancellation Proceeding Due To Pending Civil Action was filed electronically with the United
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`States Patent and Trademark Office and has been served by first class mail on May 6, 2010 upon:
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`David K. Friedland
`Jaime Rich Vining
`Lott & Friedland, P.A.
`355 Alhambra Circle, Suite 1100
`Coral Gables, FL 33134
`Telephone: (305) 448-7089
`Facsimile: (305) 446-6191
`dkfriedland@lfiplaw.com
`jrvining@lfiplaw.com
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` /s/ Janet M. Garetto
` Janet M. Garetto
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`_____________________________________________________________________________________________
`MOTION TO SUSPEND THE CANCELLATION PROCEEDING DUE TO
`PENDING CIVIL ACTION – PAGE 3
`12893058.1
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`057455-000002
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`IN THE UNITED STATES PATENT AND TRADEMARK
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of;
` U.S. Registration No. 3,118,177
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`adidas America, Inc.,
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`Petitioner,
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`v.
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`We Not Me, Ltd.
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`Registrant.
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`Cancellation No. 92051978
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`MEMORANDUM OF LAW IN SUPPORT OF
`REGISTRANT’S MOTION TO SUSPEND CANCELLATION PROCEEDING
`
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`Registrant, We Not Me, Ltd. (“Registrant”), hereby moves the Trademark Trial and
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`Appeal Board (the “Board”), pursuant to Trademark Rule 2.117(a) (37 C.F.R. § 2.117(a)) and
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`Trademark Board Manual of Procedure (“TBMP”) § 510.02(a), to suspend proceedings in the
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`above-captioned Cancellation Proceeding pending the disposition of a civil action which raises
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`issues of fact and law that will have a bearing on the issues in this Cancellation Proceeding. As
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`grounds for this Motion, Registrant states the following:
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`I.
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`INTRODUCTION
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`The mark at issue in adidas America, Inc.’s (“Petitioner” or “adidas”) Petition to Cancel –
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`WE NOT ME – is being litigated in the U.S. District Court for the Eastern District of Texas,
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`Marshall Division (Civil Action No. 2:09-00302) (“the Texas Civil Action”) and may be
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`transferred to the U.S. District Court for the District of Oregon (“the Oregon Civil Action”) or
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`_____________________________________________________________________________________________
`MEMORANDUM OF LAW IN SUPPORT OF REGISTRANT’S MOTION TO SUSPEND
`CANCELLATION PROCEEDING – PAGE 1
`12978226.1
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`057455-000002
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`the U.S. District Court for the Northern District of Illinois (collectively referred to as the “Civil
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`Litigation”).1,2 The Texas Civil Action was filed by Registrant against adidas (and other parties
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`including parent of Petitioner) and involves, but is not limited to, federal claims of trademark and
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`copyright infringement by adidas pertaining to a national adidas advertising campaign using the
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`slogan “WE NOT ME.” Because the mark at issue is currently involved in a Civil Litigation in
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`Federal district court, Registrant respectfully requests that the Cancellation Proceeding be
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`suspended until the Civil Litigation has concluded.
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`II.
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`PROCEDURAL BACKGROUND
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`1.
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`On October 1, 2009 (more than three months prior to commencement of the
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`Cancellation Proceeding), Registrant, along with W. Brand Bobosky (hereinafter, “Bobosky”),
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`filed the Texas Civil Action alleging federal trademark infringement, federal copyright
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`infringement, common law unfair competition and unjust enrichment with respect to Registrant’s
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`WE NOT ME mark and federal trademark Registration No. 3,118,177 by the following parties in
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`connection with an adidas national advertising campaign using the slogan “WE NOT ME”:
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`adidas AG d/b/a The Adidas Group, adidas America, Inc., NBA Properties, Inc., NBA Store,
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`Inc., NBA Store, LLC, NBA Services, Inc., Boston Celtics, L.P. and Kevin Garnett. A true and
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`correct copy of the Original Complaint with attachments is included herein as Exhibit “1.”
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`1 The U.S. District Court for the Eastern District of Texas, Marshall Division entered an Order on April 12, 2010
`transferring the case to the U.S. District Court for the District of Oregon. A true and correct copy of the Order is
`attached as Exhibit “3.”
`2 On April 30, 2010, Registrant timely filed a motion requesting reconsideration of the Texas District Court’s Order
`transferring the Civil Litigation to the Oregon District Court and requesting transfer of the Civil Litigation to the
`Northern District of Illinois. A true and correct copy of Plaintiffs’ Opposed Motion for Reconsideration Granting
`Defendant adidas America, Inc’s Motion to Transfer Venue and Plaintiffs’ Motion to Transfer Venue to the
`Northern District of Illinois is attached as Exhibit “4.”
`_____________________________________________________________________________________________
`MEMORANDUM OF LAW IN SUPPORT OF REGISTRANT’S MOTION TO SUSPEND
`CANCELLATION PROCEEDING – PAGE 2
`12978226.1
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`057455-000002
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`2.
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`On November 2, 2009, Registrant and Bobosky filed an Amended Complaint
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`(“Amended Complaint”) aligning the Defendants as follows: adidas AG d/b/a The Adidas
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`Group, adidas America, Inc., 180LA LLC, NBA Properties, Inc., NBA Media Ventures, LLC,
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`Banner Seventeen, LLC d/b/a The Boston Celtics, and Kevin Garnett. A true and correct copy of
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`the Amended Complaint with attachments is included herein as Exhibit “2.”3
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`3.
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`Since the filing of the Amended Complaint, Defendants have filed several
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`pleadings that include, but are not limited to, the following: (a) Motion to Dismiss For Lack of
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`Subject Matter Jurisdiction and Failure to State a Claim by Defendant adidas (and other
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`Defendants) and (b) Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a) by Defendant
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`adidas.
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`4.
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`On January 20, 2010, Petitioner filed its Petition to Cancel with respect to
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`Registration No. 3,118,177 for the WE NOT ME mark. Petitioner failed to notify the Board of
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`the Civil Action, which was being actively litigated, at the time of the filing of the Petition to
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`Cancel.
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`5.
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`In the Petition to Cancel, Petitioner has called into question the continuing
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`validity of Registrant’s WE NOT ME federal trademark Registration No. 3,118,177. More
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`specifically, Petitioner has alleged that Registrant committed fraud during the prosecution of
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`Registration No. 3,118,177, that the WE NOT ME mark is merely ornamental and that the WE
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`NOT ME mark was abandoned -- allegations which Registrant strongly disputes and will refute
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`in the Civil Litigation.
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`3 On April 30, 2010, Registrant filed a motion for leave to file a second amended complaint seeking to add various
`causes of action under Illinois law in view of its motion to transfer the Civil Litigation to the Northern District of
`Illinois. A true and correct copy of Plaintiffs’ Opposed Motion for Leave to File Plaintiffs’ Second Amended
`Complaint is attached as Exhibit “5.”
`_____________________________________________________________________________________________
`MEMORANDUM OF LAW IN SUPPORT OF REGISTRANT’S MOTION TO SUSPEND
`CANCELLATION PROCEEDING – PAGE 3
`12978226.1
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`057455-000002
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`6.
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`The ongoing Civil Litigation will no doubt have a bearing on the issues raised in
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`this Cancellation Proceeding. Registrant’s Amended Complaint details Registrant’s rights in the
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`WE NOT ME mark and its continuing unique source identifying qualities. See Ex. 2 ¶¶ 19-33.
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`adidas has yet to file an answer in the Civil Litigation pending the disposition of the outstanding
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`motions to transfer venue. However, in light of its filing of the instant Cancellation Proceeding,
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`adidas will no doubt deny the facts alleged in Registrant’s Amended Complaint, and the
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`continuing validity of the WE NOT ME mark will be put squarely at issue. As a result, the Civil
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`Litigation will directly address the legal and factual questions that the Board is being asked to
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`consider herein, and this Cancellation Proceeding should be suspended, pending the outcome of
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`the Civil Litigation.
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`III.
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`GROUNDS FOR THE MOTION TO SUSPEND
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`Whenever it comes to the attention of the Board that a party or the parties to a case
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`pending before it are involved in a civil action, proceedings before the Board may be suspended
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`until final determination of the civil action. See TRADEMARK RULE 2.117(a); see also General
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`Motors Corp. v. Cadillac Club Fashions, Inc., 22 U.S.P.Q.2d 1933 (T.T.A.B. 1992). Suspension
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`of a Board case is appropriate even if the civil action may not be dispositive of the Board case, so
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`long as “a final determination of the other proceeding will have a bearing on the issues before the
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`Board.” See TBMP § 510.02(a); see also Toro Co. v. Hardigg Indus., Inc., 187 U.S.P.Q. 689
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`(T.T.A.B. 1975); see also Martin Beverage Co. Inc. v. Colita Beverage Co., 169 U.S.P.Q. 568,
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`570 (T.T.A.B. 1971). The rationale for suspension is that a court’s determination is binding on
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`the Board, whereas the Board’s decision is not binding on the court. Id. (citations omitted); see
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`also TRADEMARK TRIAL & APP. BOARD PRAC. & PROC. § 325. It is, thus, in the interests of
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`_____________________________________________________________________________________________
`MEMORANDUM OF LAW IN SUPPORT OF REGISTRANT’S MOTION TO SUSPEND
`CANCELLATION PROCEEDING – PAGE 4
`12978226.1
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`judicial economy to resolve the ongoing dispute between the parties in the Civil Action rather
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`than in multiple, parallel proceedings.
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`This Cancellation Proceeding should be suspended pending the outcome of the Civil
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`Litigation between these parties involving the same disputed issues in the Civil Litigation. As
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`set forth above, the issue of the validity of the WE NOT ME mark will be in dispute in the Civil
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`Litigation. The question of whether the WE NOT ME mark continues to have unique source
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`identifying qualities and remains a valid and enforceable mark will surely inform the question of
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`whether Registrant’s WE NOT ME mark was obtained through non-fraudulent means, is not
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`merely ornamental, and was not abandoned. These issues will, in turn, have an impact on the
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`issues in the Civil Litigation that Judge Ward’s Order transferring the dispute over the WE NOT
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`ME mark identifies are at issue:
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`This dispute involves claims of copyright infringement, trademark infringement,
`and false designation of origin against Defendants [adidas AG et al.] in
`connection with a national advertising campaign using the “We Note Me” slogan.
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`See Ex. 3. Thus, the rulings and findings in the Civil Litigation will at least inform – if not be
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`dispositive of – the principal issues involved in this Cancellation Proceeding.
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`In view of the foregoing, suspension of this Cancellation Proceeding pending outcome of
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`the Civil Litigation is proper because the District Court’s decision in the ongoing civil litigation
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`“will have a bearing on the issues before the Board.” See TBMP § 510.02(a). Both proceedings
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`involve overlapping factual and legal issues concerning the same WE NOT ME mark. Where
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`the decision by the District Court may be dispositive of the issues before the Board, a “motion to
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`suspend is well taken.” See General Motors Corp. v. Cadillac Club Fashions Inc., 22
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`U.S.P.Q.2d 1933 (T.T.A.B. 1992), abrogation on other grounds recognized by Gaylord Enter.
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`Co. v. Calvin Gilmore Prod., Inc., 59 U.S.P.Q.2d 1369 (T.T.A.B. 2000); see also Kearns-
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`_____________________________________________________________________________________________
`MEMORANDUM OF LAW IN SUPPORT OF REGISTRANT’S MOTION TO SUSPEND
`CANCELLATION PROCEEDING – PAGE 5
`12978226.1
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`Tribune, LLC v. Salt Lake Tribune Publ’g Co., LLC, Opp. No. 151,843, 2003 WL 221324916, at
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`*3 (T.T.A.B. Sept. 11, 2003) (citing General Motors and suspending proceeding where outcome
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`of civil action “may have a bearing on the issues before the Board”); Society of Mexican Am.
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`Engineers and Scientists, Inc. v. GVR Public Relations Agency, Inc., Opp. No. 121,723, 2002
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`WL 31488947, at *4 (T.T.A.B. Nov. 6, 2002) (same).
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`IV.
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`CONCLUSION AND PRAYER
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`
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`In view of the foregoing, and in the interest of judicial economy and consistent with the
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`Board’s inherent interest in regulating its own proceedings to avoid duplicating the effort of the
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`courts and the possibility of reaching an inconsistent conclusion, Registrant respectfully requests
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`that the Board suspend proceedings until the Civil Litigation has concluded.
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`WHEREFORE, for the foregoing reasons, Registrant We Not Me, Ltd. respectfully
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`requests that the Board suspend the captioned Cancellation Proceeding pending the previously
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`filed Civil Litigation in the United States District Court.
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`Respectfully submitted,
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`NIXON PEABODY LLP
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`
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`By: /s/ Janet M. Garetto
`
`Janet M. Garetto
` R. Mark Halligan
` Nixon Peabody, LLP
`300 South Riverside Plaza, 16th Floor
`Chicago, IL 60606
`Tel: (312) 425-3900
`Fax: (312) 425-3909
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`Dated: May 6, 2010
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`_____________________________________________________________________________________________
`MEMORANDUM OF LAW IN SUPPORT OF REGISTRANT’S MOTION TO SUSPEND
`CANCELLATION PROCEEDING – PAGE 6
`12978226.1
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`057455-000002
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`

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`CERTIFICATE OF SERVICE PURSUANT TO 37 CFR § 2.119
`
`
`
`I hereby certify that a true and accurate copy of the foregoing Memorandum of Law in
`Support of Registrant’s Motion to Suspend Cancellation Proceeding was filed electronically with
`the United States Patent and Trademark Office and has been served by first class mail on May 6,
`2010 upon:
`
`
`David K. Friedland
`Jaime Rich Vining
`Lott & Friedland, P.A.
`355 Alhambra Circle, Suite 1100
`Coral Gables, FL 33134
`Telephone: (305) 448-7089
`Facsimile: (305) 446-6191
`dkfriedland@lfiplaw.com
`jrvining@lfiplaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Janet M. Garetto
` Janet M. Garetto
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`_____________________________________________________________________________________________
`MEMORANDUM OF LAW IN SUPPORT OF REGISTRANT’S MOTION TO SUSPEND
`CANCELLATION PROCEEDING – PAGE 7
`12978226.1
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`057455-000002
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`EXHIBIT 1
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`

`
`Case 2:09—cv—00302 Document1
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`Filed 10/01/2009
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`Page 1 of 14
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF TEXAS
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`MAR-SHALL DIVISION
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`CIVIL ACTION NO.
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`(DEMAND FOR JURY TRIAL)
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`W. BRAND BOBOSKY, and
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`I'VE NOT ME, LTD.
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`Plaintiffs,
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`ADIDAS AG d/b/a THE ADIDAS
`GROUP, ADIDAS AMERICA,
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`INC, NBA PROPERTIES, INC.
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`NBA STORE, INC., NBA STORE,
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`LLC, NBA SERVICES, INC.,
`BOSTON CELTICS, LP. and
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`KEVIN GARNETT,
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`Defendants.
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`PLAINTIFFS’ ORIGINAL COMPLAINT AND JURY DEMAND
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`Plaintiffs W. Brand Bobosky and We Not Me, Ltd. (hereinafter, "P1aintiffs” or
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`"Bobos1<y”) file their Original Complaint against Defendant adidas AG d/ b/ a The
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`adidas Group, Defendant adidas America, Inc, Defendant NBA Properties,
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`Inc.,
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`Defendant NBA Store, Inc., Defendant NBA Store, LLC, Defendant NBA Services, Inc.,
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`Defendant Boston Celtics, LP. and Defendant Kevin Garnett and state the foilowing:
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`.1.-
`NATURE or THE CASE
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`This
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`is an action for
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`federal
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`trademark infringement,
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`federal copyright
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`infringement, common law unfair competition and unjust enrichment, all arising from
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`Defendants’ unauthorized use of Plaintiffs’ ”WE NOT ME” trademark and copyright in
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`I’LAlNTIFFS' ORIGINAL COMPLAINT — PAGE 1
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`

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`Case 2:09—c\\/—00302 Document 1
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`Filed 10/01/2009
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`Page 2 of 14
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`connection with adidas’ and the Boston Celtics’ marketing campaign and also in
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`connection with apparel distributed and/ or sold by adidas and the NBA Store.
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`Plaintiffs are the owners of the following valid, subsisting, existing, and
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`exclusively held trademark and copyright:
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`c United States Trademark Registration ‘No. 3,118,117 (issued July 18, 2006);
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`Mark: WE NOT ME1 (Exhibit No. 1); and
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`- Copyright Registration No. TX 6—232~O73 (issued September 7, 2005); Title
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`of Work: WE NOT ME (Exhibit No. 2).
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`The Trademark Registration Certificate for the ”WE NOT ME” mark is prima facie
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`evidence of the validity of the registration, Plaintiffs’ ownership of the ”WE NOT ME”
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`mark and Plaintiffs’ exclusive right to use the ”WE NOT ME” mark in connection with
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`the sale of their products pursuant to 15 U.S.C. §1115(a), while providing constructive
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`notice of Plaintiffs’ claim of ownership of the ”WE NOT ME” mark pursuant to 15
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`U.S.C. § 1072.
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`In summary, adidas, the NBA store, the Boston Celtics and Kevin Garnett
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`knowingiy stole one man's idea, which was rightfully protected, and have successfully
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`conveyed to the public through global advertising that it is collectively their idea, not
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`Bobosl<y’s, who now appears to be the copy cat
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`interloper. Bobosky’s lawsuit
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`represents the modern day story of David versus Goliath to protect the fruits of one’s
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`labors and one’s property. Defendants, collectively through their well-established trade
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`I Bobosky also has pending United States Trademark Application, Application Serial No. 77f42643 0, fited on March
`19, 2008 with the mark: WE NOT ME. See Exhibit 3.
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`PLAINTIFFS’ ORIGENAL COMPLAINT -— PAGE 2
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`

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`Case 2:09-cv-00302 Document 1
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`Filed 10/01/2009
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`Page 3 of 14
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`names and by virtue of their economic power, extensively advertised Bobosl<y’s ”WE
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`NOT ME" trademark and copyright. This joint effort ruined what Bobosky attempted
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`to do for years (while investing inestimable amounts of time, resources and money) —
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`offer licensing and use of his ”WE NOT ME” trademark and copyright to make it
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`globally known.
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`In essence, the basis of this lawsuit is a multi-level hijacking of one
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`man's exclusive rights to his own property.
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`LL.
`PARTIES
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`1.
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`PLAINTIFFS.
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`Plaintiff W. Brand Bobosky is an individual currently
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`residing in Naperville, DuPage County, Illinois; Plaintiff is the valid owner of all title,
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`rights and interest to each and every asset of We Not Me, Ltd., including but not
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`limited to the "WE NOT ME” federally registered trademark and copyright.
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`2.
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`Plaintiff We Not Me, Ltd. is a corporation in good standing existing under
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`the laws of the State of Illinois. Plaintiff is engaged in the business of selling and
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`distributing apparel conspicuously bearing the ”WE NOT ME” mark throughout the
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`United States, including the State of Texas and this District.
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`3.
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`ADIDAS. Upon information and belief, Defendant adidas AG d/ b/ a "fire.
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`adidas Group is a joint stock company organized and existing under the laws of the
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`"Federal Republic of Germany. Defendant adidas AG’s corporate headquarters and
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`principal place of business are located at Postfach 1120, D-91072, I-Ierzogenaurach,
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`Federal Republic of Germany.
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`PLAINTIFFS’ ORIGINAL COMPLAINT - PAGE 3
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`

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`Case 2:09-CV-00302 Document 1
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`Filed 10/01/2009
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`Page 4 of 14
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`4.
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`Service of process is proper upon Defendant adidas AG through the
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`means authorized by the Hague Convention on the Service Abroad of Judicial and
`Extrajudicial Documents, opened for signature Nov. 15, 1965, 20 U.S.T. 361, UNTG 163
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`(‘Hague Convention”). In accordance with Articles 3 and 5 of the Hague Convention,
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`Defendant adidas AG can be served by forwarding a properly ‘formatted request,
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`summons and complaint to the Central Authority of the For State of Bayern of the
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`Federal Republic of Germany, whose address is Das Bayerisches Staasrninisterium der
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`Iustiz, Iustizpaiast, Prielrnayerstrasse 7, 80335 Munchen. Pursuant to Article 5(a) of the
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`Hague‘ Convention, Defendant adidas AG can be served by the Central Authority for
`the State of Bayern in the method prescribed by the internal laws of the Federal
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`Republic of Germany for the service of documents in domestic actions upon persons‘
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`who are within its territory.
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`5.
`
`Upon information and belief, Defendant adidas America,
`
`Inc.
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`is a
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`corporation organized and existing under the laws of the State of Delaware. Defendant
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`adidas America,
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`lnc;’s corporate headquarters and principal place of business are
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`located at 5055 N. Greely Avenue, Portland, Oregon 97217.
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`6.
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`Upon information and belief, Defendant adidas America, Inc. is wholly
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`owned by adidas North America, Inc., which is a non-public Delaware corporation.
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`adidas North America, Inc. is wholly owned by Defendant adidas AG. Defendant
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`adidas AG has no parent corporation. Plaintiffs will refer to Defendant adidas AG
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`d/b/ a The adidas Group and Defendant adidas America, Inc. collectively as ”adidas”.
`
`PLAINTIFFS’ ORIGINAL COMPLAINT - PAGE 4
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`

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`Case 2:09-cv-00302 Document 1
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`Filed 10/01/2009
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`Page 5 of 14
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`7.
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`NBA. Upon information and belief, Defendant NBA Properties, inc. is a
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`corporation duly organized and existing under the laws of the State of New York with
`its corporate headquarters and principal piace of business ‘at 645 5”‘ Avenue, New
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`York, New York 10022.
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`8.
`
`Upon information and belief, Defendant NBA Store, Inc. is a corporation
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`duly organized and existing under the laws of the State of New York with its corporate
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`headquarters and principal place of business at 645 5”‘ Avenue, New York, New York
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`10022.
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`9.
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`Upon information and beiief, Defendant NBA Store, LLC, is a limited
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`liability corporation organized and existing under the laws of the State of New York
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`with its corporate headquarters and principal place of business at 645 5”“ Avenue, New
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`York, New York 10022.
`
`10.
`
`Upon information and beiief, Defendant NBA Services,
`
`Inc.
`
`is a
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`corporation duly organized and existing under the laws of the State of New York with
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`its corporate headquarters and principai place of business at 100 Plaza Drive, Secaucus,
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`New Jersey, 070943766. Service of process may be made upon its registered agent,
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`United Corporate Services, Inc, 815 Brazos Street, Suite 500, Austin, Texas 78701~2509.
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`11.
`
`Upon information and belief, Defendant NPA Properties, Inc. is the parent
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`corporation for Defendant NBA Store, inc, Defendant NBA Store, LLC, and Defendant
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`NBS Services, Inc. Defendant NBA Properties, Inc. does not have publicly help
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`corporate parents or subsidiaries. However, the shareholders of Defendant NBA
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`Properties,
`
`Inc. are the member
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`teams of
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`the National Basketbail Association.
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`PLAINTIFFS’ ORIGINAL COMPLAINT — PAGE 5
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`

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`Case 2:09-cv—0O302 Document 1
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`Filed 10/01/2009
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`Page 6 of 14
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`Hereinafter in the Complaint, Plaintiffs will refer to Defendant NBA Properties, Inc.,
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`Defendant NBA Store, Inc., Defendant NBA Store, LLC, and Defendant NBS Services,
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`Inc. as "the NBA”.
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`12.
`
`BOSTON CELTICS. Upon information and belief, Defendant Boston Celtics,
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`LP.
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`is a- corporation duly organized and existing under the laws of the State of
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`Massachusetts with its corporate headquarters and principal place of business at 151
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`Merrirnac Street, Boston, Massachusetts 02114.
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`13.
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`GARNETT; Upon Information and belief, Defendant Kevin Garnett is an
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`individual and is a resident of the state of Massachusetts. Defendant Kevin Garnett
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`may be served with process at his residence in Concord, Massachusetts.
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`14.
`
`In accordance with Federal Rule of Civil Procedure 4(d), Plaintiffs hereby
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`notify the above-mentioned Defendants that they hereby request Waiver of service of
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`process.
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`LIL
`IURISDICTION AND VENUE
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`15.
`
`SUBJECT MATTER JURISDICTION. The United States District Court for the
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`Eastern District of Texas has subject matter jurisdiction over this action pursuant to the
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`provisions of 28 U.S.C. §§ 1331 and 1338 in that this matter is a civil action arising
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`under the Constitution, laws, or treaties of the United States. This Court also has
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`subject matter jurisdiction in accordance with Section 39 of the Lanham Act, 15 U.S.C. §
`
`112. This Court also has jurisdiction pursuant to 28 U.S.C. § 1332 in that this matter is
`
`
`
`PLAINTIFFS’ ORIGINAL COMPLAINT —~ PAGE 6
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`

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`Case 2:O9—c\p/-00302 Document 1
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`Filed 10/01/2009
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`Page 7 of 14
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`a civil action between citizens of different states wherein the amount in controversy is
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`beiieved to exceed the sum of $75,000, exclusive of interest and costs.
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`16.
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`PERSONAL JURISDICTION.
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`This Court has personal
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`jurisdiction over
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`adidas, the NBA, and the Boston Celtics because upon information and belief, aclidas,
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`the NBA and the Boston Celtics:
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`solicit, transact and conduct business in the state of
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`Texas and in this District and are doing business or soliciting business or engaging in a
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`course of conduct in this State and in this District; (ii) receive revenue from the State of
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`Texas; and (iii) expect or reasonably should expect their conduct to have consequences
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`in the State of Texas. This Court has personal jurisdiction over Defendant Garnett in
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`that he has systematic and continuous contacts within the State of Texas.
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`17.
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`VENUE. Venue is proper in this District in accordance with 28 U.S.C. §
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`1391 because upon information and belief the infringement of Plaintiffs’ copyrights and
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`trademarks and the infringing conduct occurred in the State of Texas and Within this
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`District;
`
`E
`FACTUAL BACKGROUND
`
`A.
`
`BOBOSKY TRADEMARKS, COPYRIGHTS AND PROTECTS HIS "WE NOT ME” MARK
`WHILE PROMOTING AND CAMPAIGNING IT FOR THE PAST TEN YEARS.
`
`18. W. Brand Bobosky is an attorney who has practiced law for over forty
`
`years. Bobosky has earned the nickname and has been known as ” the idea man” in his
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`town of Napervifle, Illinois over the last two decades because many of his ideas have
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`left a mark on his community. Specifically, Bobosky has spearheaded many initiatives.
`
`Thirty—s0me years ago, he conceptuaiized ”the Little Friends Inc., Auction” which
`
`PLAINTIFFS’ ORIGINAL COMPLAINT - PAGE 7
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`

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`Case 2:09-cv-00302 Document 1
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`Filed 10/01/2009
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`Page 8 of 14
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`annually raises over $100,000 to support a Variety‘ of programs for individuals with
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`disabilities. As past president of the local Chamber of Commerce, and Rotary Club, he
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`spearheaded the annual holiday lighting displays on the buildings in downtown
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`Naperville. Bobosky also launched the ”Century Walk,” a public not-for-profit art
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`exhibit located in and around downtown Naperville that presently includes thirty-
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`three public art works.
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`19.
`
`In late 1999, Bobosky dreamed up the ”WE NOT ME” message when
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`serving as President—Elect of his local Rotary Club. Bobosky knew he had a Wonderful
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`message to convey with ”WE NOT ME,” however, he knew he had to start small and
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`think big in terms of marketing this message. As demonstrated in more detaii below,
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`Bobosky has expended considerable time, money and effort. in the marketing and
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`promotion of his "WE NOT ME" trademark and copyright.
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`20.
`
`In the spring of 2000, Bobosky placed an order for 200 two-inch diameter
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`symbol pins depicting the "1/VE NOT ME” symboi for distribution at his Rotary
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`induction as President in June, 2000.
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`In June of 2001, Bobosky ordered 125 two~sided
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`key chains with the ”WE NOT ME” symbol message. In 2002, Bobosky stepped up his
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`marketing and distributed the second edition key chain.
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`21.
`
`In 2004, Bobosky took further actions to establish himself publicly as the
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`creator and owner of the ”WE NOT ME” concept despite financial restraints. For
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`0 example, in February of 2004, he began advertising "WE NOT ME” in the monthly
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`”PositiVely Naperville” newspaper, with a circulation that reaches over forty~thousand
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`readers.
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`PLAINTIFFS' ORIGINAL COMPLAINT - PAGE 8
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`

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`Case 2:09-cv—00302 Document 1
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`Filed 10/01/2009
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`Page 9 of 14
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`22.
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`Not only did Bobosky work on additional promotion and advertising at
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`this time, but-he began to seek government protection.
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`In March of 2004, he retained
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`Welsh S: Katz, Ltd., a Chicago intellectual property law firm to obtain copyright and
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`trademark protection of the ”WE NOT ME” phrase and symbol. Welsh 8: Katz, Ltd.
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`proceeded to file Bobosky’s federal and Illinois trademark applications for his "WE
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`NOT ME” message.
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`In October of 2004, the ”WE NOT ME” mark and symbol were
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`placed on 10,000 souvenir cups at Napervilles Oktoberfest.
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`23.
`
`On November 8, 2004., Bobosky incorporated in the State of Illinois We
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`Not Me, Ltd. It was and is a business venture purposely established to further protect
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`the mark and continues to remain good standing today.
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`a
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`24.
`
`In November of 2004, Bobosky worked with Netso