Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA402305
`ESTTA Tracking number:
`04/06/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053560
`Defendant
`Sabine Niederberghaus-Lesavoy
`GRANT T LANGTON
`CONNOLLY BOVE LODGE & HUTZ LLP
`333 SOUTH GRAND AVENUE, SUITE 2300
`LOS ANGELES, CA 90071
`UNITED STATES
`trademarks@cblh.com
`Motion to Suspend for Civil Action
`Victor K. Sapphire, Esq.
`vsapphire@cblh.com, nphillips@cblh.com, trademarks@cblh.com
`/victor sapphire/
`04/06/2011
`MO TO STAY.pdf ( 2 pages )(216768 bytes )
`Complaint CV11-02736-DDP(FFMx).pdf ( 35 pages )(9066537 bytes )
`AO-120 Report on the Filing of an Action CV11-02736-DDP(FFMx).pdf ( 1 page
`)(38376 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STA"l‘liS PA'l”E~lN'I” AND TRADEMARK OFFICE
`
`BEFFORH "I"!-Iii TRADEMARK TRIAL AND APPEAL BOARD
`
`Ncmsi Books.
`
`Petitioner,
`
`Cancellation No. 92053560
`
`Registration No. 3,801,207
`
`Sabine Niede1‘be1'ghaus~Lesavoy
`
`Registrant
`
`
`
`REG-iSTRANT'S MOTION TO STAY PROCEEDING
`
`Pursuant to Rule 2. 1 17 ofthe Trademark Rules of Practice ('3'? C.l-ZR. §2.l I T), and ’I‘.T.A.B.
`Manual of Procedure §5l0.02, Registrant Sabine Niederberghans-Lesavoy ("Registrant") hereby moves
`for stay ofthe captioned Cancellation proceeding pending disposition of the law suit filed on March 31,
`30] I
`in United States District Court for the Central District ofCalifornia by Registrant against Petitioner
`for declaratoryjudgment, trademark intringement, passing off, unfair competition. false designation of
`origin, cybersquatting, and violation of California Business and Professions Code Section 17200 et. seq.
`A copy ofthe filed-stamped Complaint. Case No. CV] 1—02736-DDP(FFMx) is attached to this Motion.
`
`The federal court litigation includes, among others, a claim for declaratory relief concerning the
`validity of Registration No. 3.801.207. which is the subject oi’ the instant Cancellation proceeding. For
`this reason, the federal court litigation will have a bearing on the issues before the Board, and it is
`therefore appropriate for the Board to stay the Cancellation proceeding on that basis.
`
`Accordingly, Registrant hereby requests that the instant Cancellation proceeding he stayed
`pending the outcome of civil action Case No. CV] 1-0 I 736~DDP(FFMx).
`
`Dated: April 6. EDI I
`
`By:
`
`ref”
`
`Victor K. Sapphire, Esq.
`Connolly Bove Lodge & Hutz LLP
`333 S. Grand Ave, Suite 2300
`
`Los Angeles-. California 900?]
`(213) 787-2523
`
`ATTORNEYS FOR RE(ilSTRAN'I'
`
`Victor K. Sapphin-. |:‘.sq.
`Connoily Hove l.odi;c & Hut: LLP
`333 S. Grand Avenue, Suite 23~IJll
`Les Angelcs. California 9I]fl'.I'l
`{Z13} 78'?-1523
`
`

`
` EE
`
`I cenity that a copy of the REGISTRANTS MOTION TO STAY PROCEEDING was
`
`sent via First Class Mail this 6th day of April, 2011 to:
`
`Nemsi Books
`
`307 West Third Street. PO Box 191
`
`Pierpont, South Dakota S?468—0l91
`
`l\J
`
`Via-tor K. Samahire. FM].
`Cuunully Brave l.odj,:I.* 8: Hutz LLP
`333 South Grand Me-nue. Suite 2311!!
`Las Angeies, (‘alifumia 9fl07I
`[1|3) 787-2523
`
`

`
`F—‘®\D00\]O‘\LI‘I-hUJl\)'—‘
`
`I-I+—t
`
`Glenn W. Trost (SBN 116203)
`trost
`cb1h.com
`ictor
`. Sa phire (SBN 218634)
`vsa hire
`c 1h.com
`CO
`OL Y BOVE LODGE & HUTZ LLP
`333 South Grand Avenue, Suite 2300
`Los Angeles, CA 90071
`Telephone: 5213 787-2500
`
`213 687-0498
`
`Facsimile:
`
`Attorne S for Plaintiffs
`KARL
`Y USA, INC. and
`SABINE NIEDERBERGHAUS-LESAVOY
`
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`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`KARL MAY USA, INC., 21 California
`co oration, and SABINE
`NI DERBERGHAUS-LESAVOY, a
`United States and German citizen,
`
`Plaintiffs,
`
`V.
`
`NEMSI BOOKS; NEMSI BOOKS, LLC;
`WINNETOU PRODUCTIONS LLC;
`MORPHTEK.COM, INC.; and DOES 1
`through 10,
`
`Defendants.
`
`
`
`CV11 02736 DDP
`(II
`
`Case No.
`
`10
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT,
`TRADEMARK
`INFRINGEMENT, PASSING
`OFF, UNFAIR COMPETITION,
`FALSE DESIGNATION OF
`ORIGIN, CYBERS UATTING,
`AND VIOLATION F CAL.
`BUS. & PROF. CODE §§ 17200
`ET SEQ.
`
`COMPLAINT FOR DECLARATORY JUDGMENT, TRADEMARK INFRINGEIVIENT, ETC.
`
`4263482-1
`
`

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`For their Complaint, Plaintiffs allege that:
`
`Introduction
`
`1.
`
`This is an action for a declaration of rights under the Trademark Act of
`
`1946, as amended (the “Lanham Act”), 15 U.S.C. §§ 1051 et seq. Specifically,
`
`Plaintiff Sabine Niederberghaus-Lesavoy seeks a declaration from this Court that
`
`her federal registration of the mark WINNETOU, U.S. Reg. No. 3,801,207, is valid
`
`. and subsisting, and enforceable against third parties that infringe upon the rights
`
`granted therein.
`
`2.
`This action also includes claims for infringement and interference
`arising out of Defendants’ willful, bad faith activities in violation of Plaintiffs’
`
`rights inuring in the foregoing federal registration and common law.
`
`3.
`
`A case or actual controversy within this Court’s jurisdiction exists
`
`between the parties concerning their respective trademark and related rights as set
`
`forth below. This Court is authorized to declare the rights of the parties in this case
`
`pursuant to the Federal Declaratory Judgment Act 28 U.S.C. §§ 2201-2202.
`
`The Parties
`
`4.
`
`Plaintiff Sabine Niederberghaus-Lesavoy (“Niederberghaus-Lesavoy")
`
`is a California resident and citizen of the United States and Germany with her
`
`principal place of residence at 2535 Hawks Nest Trail, Topanga, California.
`
`5.
`
`Plaintiff Karl May USA, Inc. is a California corporation having its
`
`principalplace of business at 16311 Ventura Boulevard, Suite 555, Encino,
`
`California, and is owned by Plaintiff Niederberghaus-Lesavoy.
`
`6.
`
`For the past several years, Plaintiffs have been in the business of
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`developing and producing films and audiovisual entertainment, and developing and
`
`selling ancillary goods related thereto. Since at least as early as February 2010,
`
`Plaintiffs have been in the business of developing and producing motion picture
`
`films in the nature of action adventure and family films, theatrical productions,
`
`television programs and other performances, as well as the production and
`
`COMPLAINT FOR DECLARATORY JUDGMENT, TRADEMARK INFRINGEMENT, ETC.
`
`4263482-1
`
`2
`
`

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`distribution of compact discs and digital versatile discs (“DVDS”) featuring sound
`
`recordings and motion picture films. Karl May USA, Inc. is an entity owned and
`
`controlled by Ms. Niederberghaus-Lesavoy. Each Plaintiff owns a trademark
`
`registration for the WINNETOU mark, in connection with entertainment goods and
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`services, and ancillary apparel and accessories merchandise, respectively, which are
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`attached as Exhibits A and B hereto. These marks are collectively referred to herein
`
`as “Plaintiffs’ Registered Marks.” The registrations have been in continuing
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`uninterrupted use as of the dates alleged in the Statements of Use submitted in
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`support thereof, and remain in full force.
`
`7.
`
`On information and belief, Defendants are doing business under the
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`names “Nemsi Books” and “Winnetou Productions.” Although Defendants claim
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`that Nemsi Books and Winnetou Productions are South Dakota limited liability
`
`companies, Plaintiffs have conducted searches of the South Dakota Secretary of
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`State’s Office business entities database in which the “Nemsi” and “Winnetou”
`
`names were not found. Defendant Morphtek.com, Inc. has identified itself as “a/k/a
`
`Nemsi Books” in United States federal trademark Registration No. 3,782,123. A
`,6‘
`copy of the “whois” record for Defendants winnetouproductions.com” domain
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`name registration is attached hereto as Exhibit C. The identities of the Does are
`
`_ unknown at this time; however, on information and belief, they are participating in
`
`the conduct described herein.
`
`8.
`
`On information and belief, Nemsi Books purports to be a publisher of
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`printed books, including translations of the German author Karl May’s works
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`featuring a character named Winnetou and having the name “WINNETOU” in
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`certain of the books’ titles.
`
`Jurisdiction and Venue
`
`9.
`
`This is an action for declaratory relief, trademark infringement, passing
`
`off, unfair competition, false designation of origin, and cybersquatting arising under
`
`Title 15 of the United States Code as hereinafter more fully appears. This Court has
`
`COMPLAINT FOR DECLARATORY JUDGMENT, TRADEMARK INFRINGEMENT, ETC.
`
`4263482-1
`
`3
`
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`jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338 and as a declaratory judgment
`
`action under 28 U.S.C. §§ 2201 and 2202. This is also an action for a related
`
`Violation of California Business and Professions Code §§ 17200 et seq. This Court
`
`has supplemental jurisdiction thereover.
`10.
`This action for declaratory judgment is timely and proper.
`
`11. An actual case or controversy exists between the parties. The
`
`Defendants, acting in the name of Nemsi Books, have filed a Petition to Cancel, No.
`
`92053560, against Plaintiffs ‘207 Registration, and the cancellation proceeding is
`
`currently pending before the Trademark Trial and Appeal Board of the United States
`
`Patent and Trademark Office. The accusations and statements in the Petition
`
`threaten injury to Ms. Niederberghaus-Lesavoy and Karl May USA, Inc., and
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`compound the ongoing injury of Defendants’ conduct in infringing Plaintiffs’ marks
`
`and interfering with Plaintiffs’ business. As a result, a declaratory judgment is
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`necessary to Validate Plaintiffs’ federal registration of WINNETOU and Plaintiffs’
`
`enforceable rights therein.
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`12. Upon information and belief, Defendants have committed acts of
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`trademark infringement, unfair competition, false designation of origin and
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`cybersquatting in this district, and have expressly aimed their conduct at this forum.
`
`Venue is proper under 15 U.S.C. § 1121 and 28 U.S.C. § 1391.
`
`Factual Background
`13. Original literary Works by the late nineteenth century author Karl May,
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`including his fictitious novels featuring the character “Winnetou,” are all in the
`
`public domain.
`
`14.
`
`Plaintiff Niederberghaus-Lesavoy has certain rights pursuant to an
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`agreement with Karl May Verwaltungs-und-Vertriebs GmbH, as Well as the Karl
`
`May Verlag, which is the publishing company in Germany that has published the
`
`novels of Karl May for over 100 years. She and her company, Plaintiff Karl May
`
`USA, Inc., have been granted the rights to exploit the Karl May Works, develop
`COMPLAINT FOR DECLARATORY JUDGMENT, TRADEMARK INFRINGENEENT, ETC.
`
`4263482-1
`
`4
`
`

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`motion picture films, television programs and series, and merchandising and
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`ancillary rights related to the works, and Plaintiffs have spent the past several years
`
`working on the development and production of such projects under the
`
`WINNETOU mark.
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`15.
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`Plaintiff Niederberghaus-Lesavoy owns U.S. Reg. No. 3,801,207
`
`(“’207 Registration”) for the mark WINNETOU in connection with “motion picture
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`films in the nature of action adventure and family films; compact discs and digital
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`Video discs featuring sound recordings and motion picture films” in International
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`Class 9, and “production of motion picture films, television programs, theatrical
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`productions and other live show performances” in International Class 41. The
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`underlying application was filed on November 14, 2005, and the registration was
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`granted on June 8, 2010.
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`16.
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`Plaintiffs supported the Allegation of Use in Commerce filed in Class 9
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`of the ‘207 Registration with specimens consistent with the requirements of the
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`Trademark Office, as set forth in the Trademark Manual of Examining Procedure §§
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`904.03(g) and 904.03(i), namely an electronic point—of-sale display comprising a
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`web site screen shot bearing the mark prominently across the top and bottom
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`“banners” of the page and featuring the subject goods, namely, prerecorded
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`videodiscs and audio discs in the nature of action adventure and family films.
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`17.
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`Plaintiffs supported the Allegation of Use in Commerce in Class 41 of
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`the ‘207 Registration with specimens showing the ongoing development activity and
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`production services conducted by Plaintiffs under the WINNETOU mark in
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`connection with motion pictures and television programs.
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`18.
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`The specimens were accepted by the Trademark Office after review,
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`and the registration was granted and issued.
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`19.
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`On information and belief, Defendants filed an ineffectual Letter of
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`Protest in the Trademark Office against the application that later matured into the
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`‘207 Registration, citing the identical bases that were raised again in the cancellation
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`COMPLAINT FOR DECLARATORY JUDGMENT, TRADEMARK INFRINGEMENT, ETC.
`
`4263482-l
`
`5
`
`

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`petition they subsequently filed against the registration. Pursuant to Trademark
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`Manual of Examining Procedure § 1715, the claims in the Letter of Protest were
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`considered and dismissed by the Trademark Office as insufficient to disqualify the
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`application, since none of said claims were raised by the Trademark Office as the
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`basis for refusal of registration in Plaintiffs’ then-application; and the mark was
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`granted registration.
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`20.
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`Plaintiffs have no claims to exclusive rights to the literary works by
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`Karl May whose titles and/or main character’s name contain the WINNETOU name
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`that is also the subject of Plaintiffs’ trademark.
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`21.
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`Pursuant to the ‘207 Registration, Plaintiffs have the conclusive
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`nationwide right to use the WINNETOU mark and to prevent others from using
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`confusingly similar marks in connection with motion picture production services.
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`22.
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`Plaintiffs, through their counsel, have written letters objecting to '
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`Defendants’ use of the WINNETOU mark in connection with efforts to raise funds
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`for, develop and promote a feature film, also objecting to Defendants’
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`disparagement of Plaintiffs on Defendants’ web site, including letters from
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`Plaintiffs’ counsel dated October 21, 2009 and January 8, 2010 and January 20,
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`201 1.
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`23. Defendants did not respond to the January 8, 2010 letter. Instead, on or
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`about February 23, 2010, Defendants registered and commenced use of the domain
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`name winnetouproductions.com (the “Domain Name”). Defendants launched an
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`interactive web site at the Domain Name promoting the site as “Home of the
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`Winnetou Movie.” Defendants also began selling apparel and accessory
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`merchandise bearing the slogans “Official Sponsor of the WINNETOU Movie” and
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`“Proud Sponsor of the WINNETOU Movie” on the web site. A copy of the home
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`page at wvvw.winnetouproductions.com is attached as Exhibit D hereto.
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`24. On information and belief, Defendants are trying to develop their own
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`feature project using Plaintiffs’ WINNETOU mark in direct competition with
`
`COMPLAINT FOR DECLARATORY JUDGIVIENT, TRADEMARK INFRINGEIVIENT, ETC.
`
`4263482-1
`
`6
`
`

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`Plaintiffs, and by using phrases like “Home of the Winnetou Movie” and “Official
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`Sponsor of the Winnetou Movie” seek willfully and deliberately to sow confusion in
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`the marketplace to the detriment of Plaintiffs.
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`25. Defendants launched their www.winnetouproductions.com web site
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`with a feature essay impugning the character and reputation of Plaintiff
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`Niederberghaus-Lesavoy, using false and reckless statements to sully her reputation
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`and damage her business relationships she was developing in pursuit of the goal of
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`producing motion pictures and television programs under the WINNETOU banner.
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`26.
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`In response to Plaintiffs’ objection, Defendants removed certain of the
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`false and reckless statements from the web site at the Domain Name.
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`27. However, Plaintiffs nonetheless suffered damage therefrom, and
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`continue to suffer harm due to the continuing presence of cached copies of the
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`Defendants’ web site containing the offensive statements on the Internet, and
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`Defendants’ apparent use of search-engine—optimizing techniques for top-lining their
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`web sites in search results for WINNETOU and other Karl May-related terms.
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`Because of Defendants’ reckless conduct, Plaintiffs’ existing and prospective
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`business relationships in connection with the WINNETOU mark have been
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`damaged, as Internet searches for Plaintiff Niederberghaus-Lesavoy’s name
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`inevitably reveal Defendants’ baseless statements about her and her rights to the
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`WINNETOU mark, which are presented authoritatively as facts notwithstanding
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`their falsity.
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`28. On information and belief, Defendants have contacted business
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`associates of Plaintiffs with whom Plaintiffs were in serious discussions, or with
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`whom Plaintiffs had already obtained a commitment to work on, motion picture
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`projects, and Defendants repeated the falsehoods and reckless statements about
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`Plaintiffs for the purpose of dissuading these associates from working with Plaintiffs
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`on film projects, and on information and belief, Defendants succeeded in dissuading
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`at least one associate from continuing his relationship with Plaintiffs.
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`COMPLAINT FOR DECLARATORY JUDGMENT, TRADEMARK INFRINGEMENT, ETC.
`
`4263482-1
`
`7
`
`

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`29. Defendants do not own and have not registered or applied to register
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`any trademark or service mark at the U.S. Patent and Trademark Office for any
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`trademark rights in the word “WINNETOU” or any word marks similar thereto.
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`30.
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`On May 3, 2010, Defendants forwarded to a representative of Plaintiffs
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`a written notice of intent to file a petition to cancel Plaintiffs’ WINNETOU
`
`trademark.
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`31.
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`On January 26, 201 l, Defendants filed a Petition for Cancellation of the
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`‘207 Registration, followed by an Amended Petition which was filed on January 31,
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`2011, claiming Plaintiffs acted fraudulently in procuring the registration, and that
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`the WINNETOU mark is generic in connection with the goods and services
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`identified in the trademark registration. The Trademark Trial and Appeal Board
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`initiated the proceedings as Cancellation No. 92053560 before the Board.
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`32.
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`The ‘207 Registration was not fraudulently obtained, in light of the use
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`in commerce alleged and demonstrated in the Declaration of Use and supported by
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`the specimens submitted therewith, in satisfaction of the Trademark Office
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`requirements for registration.
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`33.
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`The mark WINNETOU is not generic for “motion picture films in the
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`2 nature of action adventure and family films; compact discs and digital video discs
`
`featuring sound recordings and motion picture films,” and “production of motion
`
`picture films, television programs, theatrical productions and other live show
`
`performances.”
`
`34. Defendants’ claims that they would be damaged by Plaintiffs’
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`continued registration and use of the WINNETOU mark pursuant to the ‘207
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`Registration are without basis, given Defendants’ junior position with regard to use
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`of the mark in connection with the goods and services identified in Plaintiffs’ ‘207
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`Registration.
`
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`COMPLAINT FOR DECLARATORY IUDGMENT, TRADEMARK INFRINGEMENT, ETC.
`
`4263482-l
`
`8
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`28
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`Count I — Trademark Infringement
`
`35.
`
`The allegations in paragraphs 1-34 above are incorporated by reference,
`
`as if fully set forth herein.
`
`36.
`
`Plaintiffs own the rights to the WINNETOU mark in connection with
`
`the goods and services set forth in the ‘207 Registration, and said ‘207 Registration
`
`is valid and in good standing.
`
`37. Defendants’ use of the name WINNETOU in connection with motion
`
`picture production company services creates a likelihood of confusion as to the
`
`origin of Defendants’ products.
`
`38.
`
`The aforesaid acts of Defendants constitute infringement of Plaintiffs’
`
`Registered Mark, in violation of 15 U.S.C. § 1114.
`
`39.
`
`By reason of the acts of Defendants alleged herein, Plaintiffs have
`
`suffered, are suffering and will continue to suffer irreparable damage, unless
`
`Defendants are restrained from continuing their wrongful acts.
`
`40. Asia result of the foregoing, Plaintiffs have been injured and
`
`Defendants have received illicit profits and wrongful gains.
`
`Count H — Unfair Competition
`
`41.
`
`The allegations in paragraphs 1-40 above are incorporated by reference,
`
`as if fully set forth herein.
`
`42.
`
`The aforesaid acts of Defendants constitute unfair competition, in
`
`violation of 15 U.S.C § 1125(a).
`
`43.
`
`By reason of the acts of Defendants alleged herein, Plaintiffs have
`
`suffered, are suffering and will continue to suffer irreparable damage, unless
`
`Defendants are restrained from continuing their wrongful acts.
`
`44. As a result of the foregoing, Plaintiffs have been injured and
`
`Defendants have received illicit profits and wrongful gains.
`
`COMPLAINT FOR DECLARATORY JUDGMENT, TRADEMARK INFRINGEMENT, ETC.
`
`4263482-1
`
`9
`
`

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`Count III — False Designation of Origin
`
`45.
`The allegations in paragraphs 1-44 above are incorporated by reference,
`as if fully set forth herein.
`1
`
`46.
`
`The aforesaid acts of Defendants constitute false designation of origin
`
`which are likely to cause confusion, or to cause mistake, or to deceive as to the
`
`affiliation, connection, or association of Defendants with Plaintiffs, or as to the
`
`origin, sponsorship, or approval of Defendants’ goods, services and activities by
`
`Plaintiffs, in violation of 15 U.S.C. § 1125(a)(1)(A).
`
`47. Defendants’ acts as alleged above misrepresent the nature,
`
`characteristics, qualities, or geographic origin of Defendants’ goods, services and
`
`activities in violation of 15 U.S.C. § 1l25(a)(1)(B).
`
`48.
`
`By reason of the acts of Defendants alleged herein, Plaintiffs have
`
`suffered, are suffering and will continue to suffer irreparable damage, unless
`
`Defendants are restrained from continuing their wrongful acts.
`
`49. As a result of the foregoing, Plaintiffs have been injured and
`
`Defendants have received illicit profits and wrongful gains.
`
`Count IV — Passing Off
`
`50.
`
`The allegations in paragraphs 1-49 above are incorporated by reference,
`
`as if fully set forth herein.
`
`. 51.
`
`The aforesaid acts of Defendants constitute passing off which are likely
`
`to cause confusion, or to cause mistake, or to deceive as to the affiliation,
`
`connection, or association of Defendants with Plaintiffs, or as to the origin,
`
`sponsorship, or approval of Defendants’ goods, services and activities by Plaintiffs,
`
`in violation of 15 U.S.C. § 1125(a)(1)(A).
`
`52. Defendants’ acts as alleged above misrepresent the nature,
`
`characteristics, qualities, or geographic origin of Defendants’ goods, services and
`
`activities in violation of 15 U.S.C. § 1125(a)(l)(B).
`
`COMPLAINT FOR DECLARATORY JUDGMENT, TRADEMARK INFRINGEMENT, ETC.
`
`4263482-l
`
`1 0
`
`

`
`\OOO\lO'\U1-I>LrJl\))—4
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`53. By reason of the acts of Defendants alleged herein, Plaintiffs have
`
`suffered, are suffering and will continue to suffer irreparable damage, unless
`
`Defendants are restrained from continuing their wrongfiil acts.
`
`As a result of the foregoing, Plaintiffs have been injured and Defendants have
`
`received illicit profits and wrongful gains.
`
`Count V — Cybersguatting
`
`54.
`
`The allegations in paragraphs 1-53 above are incorporated by reference,
`
`as if fully set forth herein.
`
`55. Defendants’ registration and use of the Domain Name, commenced
`
`after they received letters setting forth Plaintiffs’ obj ection to Defendants’ flagrant
`
`infringement of Plaintiffs’ mark and Defendants’ recklessly false and disparaging
`
`statements about Plaintiff Niederberghaus—Lesavoy, constitutes bad faith intent to
`
`profit from the WINNETOU mark in connection with services for which Plaintiffs
`
`own conclusive nationwide rights pursuant to Plaintiffs’ ‘207 Registration.
`
`5 6. Defendants’ acts alleged herein do not constitute a bona fide
`
`noncommercial or fair use of the mark.
`
`57. Defendants’ acts alleged herein demonstrate Defendants’ intent to V
`
`divert consumers from Plaintiffs’ online location to Defendants’ site accessible
`
`under the Domain Name that undermine and harm the goodwill of Plaintiffs
`
`represented by the mark, for commercial gain and to disparage and tarnish
`
`Plaintiffs’ reputation, by creating a likelihood of confusion as to the source,
`
`sponsorship, affiliation, or endorsement of the site .
`
`. 58.
`
`The aforesaid acts of Defendants, including unauthorized use of the
`
`WINNETOU mark in connection with motion picture development and production
`
`services, constitute cyberpiracy of Plaintiffs’ mark, in violation of 15 U.S.C.
`
`§ 1125(d).
`
`COMPLAINT FOR DECLARATORY JUDGMENT, TRADEMARK INFRINGEMENT, ETC.
`
`4263482-l
`
`ll
`
`

`
`\OOO\]O\U1-[>9-)[\)*-‘
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`59.
`
`By reason of the acts of Defendants alleged herein, Plaintiffs have
`
`suffered, are suffering and will continue to suffer irreparable damage, unless
`
`Defendants are restrained from continuing their wrongful acts.
`
`60. As a result of the foregoing, Plaintiffs have been injured and
`
`Defendants have received illicit profits and wrongful gains.
`
`Count V — Violation of Cal. Bus. & Prof. Code §§ 17200 et seq.
`
`61.
`
`The allegations in paragraphs 1-60 above are incorporated by reference,
`
`as if fully set forth herein.
`
`62.
`
`The aforesaid acts of Defendants, including the use of the WINNETOU
`
`mark in connection with the Domain Name and motion picture production services,
`
`disparagement of Plaintiffs, and interference with Plaintiffs’ business relationships,
`
`constitute unlawful, unfair or fraudulent business acts or practices and unfair,
`
`deceptive or misleading advertising in Violation of California Business and
`
`Profession Code §§ 17200 et seq.
`
`WHEREFORE, Plaintiffs respectfully demand:
`
`Prayer for Relief
`
`a.
`
`that this Court enter a declaratory judgment against Defendants as
`
`follows:
`
`1.
`
`That the Court enter judgment declaring that Plaintiffs’ ‘207
`
`Registration is valid and in good standing and is not impaired by fraud,
`
`genericness or otherwise, and is therefore not subject to cancellation on those
`
`or other grounds raised by Defendants in the pending Cancellation No.
`
`92053560 before the Trademark Trial and Appeal Board;
`
`b.
`
`that Defendants (as well as those in active concert or participation with
`
`them) be preliminarily and permanently enjoined from further unlawful acts of
`
`trademark infringement, unfair competition, false designation of origin, passing off,
`
`COl\/[PLAINT FOR DECLARATORY JUDGMENT, TRADEMARK INFRINGEMENT, ETC.
`
`4263482-l
`
`1 2
`
`

`
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`cyberpiracy and Violation of California Business and Professions Code §§ 17200
`
`et seq.;
`
`c.
`
`that Defendants be ordered to transfer to Plaintiffs the registration for
`
`the Domain Name;
`
`d.
`that Defendants be required to account for and pay to Plaintiffs all
`damages sustained by Plaintiffs and any and all profits realized by Defendants by
`
`reason of its unlawful acts alleged herein, and that amount be trebled, as provided by
`
`law;
`
`e.
`
`that Plaintiffs receive such equitable remedies as provided for by
`
`California Business and Professions Code §§ 17200 et seq., including disgorgement
`
`of Defendants profits;
`
`f.
`
`that Defendants be required to pay Plaintiffs all of their costs of suit,
`
`disbursements and attorneys’ fees for this action;
`
`g.
`
`h.
`
`proper.
`
`that Defendants be required to pay Plaintiffs prejudgment interest; and
`
`that Plaintiffs have such other and fiirther equitable relief as is just and
`
`DATED: March 31, 2011
`
`CONNOLLY BOVE LODGE & HUTZ LLP
`Glenn W. Trost
`Victor K. Sapphire
`
`By:
`
`ap hire
`.
`ictor
`Attorne s for
`laintiffs
`KARL
`Y USA, INC., and
`SABINE NIEDERBERGHAUS-
`LESAVOY
`
`I
`
`
`
`COMPLAINT FOR DECLARATORY IUDGMENT, TRADEMARK INFRINGEMENT, ETC.
`
`4263482-1
`
`13
`
`

`
`EXHIBIT A
`
`

`
`Qxgnitkfififinitett étatesi fiatent ant: fltrahemark Obfftnz
`
`WINNETOU
`
`Reg. No. 3,801,207
`
`NIEDERBERGHAUS-LESAVOY, SABINE (FED REP GERMANY INDIVIDUAL)
`2535 HAWKS NEST TRAIL
`
`Registered June 8, 2010
`
`TOPANGA, CA 90290
`
`Int. Cls.: 9 and 41
`
`TRADEMARK
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`FOR: MOTION PICTURE FILMS IN THE NATURE OF ACTION ADVENTURE AND FAMILY
`FILMS; COMPACT DISCS AND DIGITAL VIDEO DISCS FEATURING SOUND RECORDINGS
`AND MOTION PICTURE FILMS, IN CLASS 9 (US. CLS. 21, 23, 26, 36AND 38).
`
`FIRST USE 2-0-2010', IN COMMERCE 2-0-2010.
`
`FOR: PRODUCTION OF MOTION PICTURE FILMS , TELEVISIONPROGRAIVIS , THEATRICAL
`PRODUCTIONS AND OTHER LIVE SHOW PERFORMANCES, IN CLASS 41 (U.S. CLS. 100,
`10 1 AND 107).
`
`FIRST USE 2-O-2010', IN COMIVIERCE 2-0-2010.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`SN 78-753,269, FILED 11-14-2005.
`
`BARBARA BROWN, EXAMINING ATTORNEY
`
`
`
`Director 0f the United States Pautent and ‘1'1'ad::mark Office
`
`EXHIBIT A PAGE 14
`
`

`
`EXHIBIT B
`
`

`
`“([31] étatnzs [if @1112?
`flflniteh étatea fiatent anti flflrahemark QBffin:2
`
`WINNETOU
`
`ISCIAIIELE 1;/.g/:Y USA, INC. (CALIFORNIA CORPORATION)
`Reg, No_ 3,934,666
`Registered Mar. 22, 2011 16311 VENTURA BLVD.
`ENCINO, CA 91436
`
`Int. Cl.: 25
`
`TRADEMARK
`
`FOR: CLOTHING, NAMELY, TOPS, SHIRTS, T-SHIRTS, HATS, IN CLASS 25 (U.S. CLS. 22
`AND 39).
`
`PRINCIPAL REGISTER
`
`FIRST USE 2-6-2011; IN COMMERCE 2-6-2011.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`SN 77-029,226, FILED 10-25-2006.
`
`TINA BROWN, EXAMINING ATTORNEY
`
`
`
`Director of the United States Patent and 'l'I'u¢|emark Oifice
`
`EXHIBIT B PAGE 15
`
`

`
`EXHIBIT C
`
`

`
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