throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA483607
`ESTTA Tracking number:
`07/16/2012
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055728
`Defendant
`ANON ARTS LLC
`ANON ARTS LLC
`2145 DONALD DRIVE, APARTMENT 6
`MORAGA, CA 945561451
`UNITED STATES
`Motion to Suspend for Civil Action
`Paul W. Kruse
`trademarks@bonelaw.com
`/Paul W. Kruse/
`07/16/2012
`Motion to Suspend Action with Copy of Complaint (00776992).PDF ( 23 pages
`)(2044631 bytes )
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`Proceeding
`Party
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`Correspondence
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`Filer's e-mail
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`DigiCel, Inc.,
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`Petitioner,
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`Anon Arts, LLC,
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`Registrant.
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`Attorney Ref. No. 003892-60802
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`Cancellation No. 92055728
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`Reg. Nos. 3590670
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`MOTION TO SUSPEND ACTION PENDING DISPOSITION OF CIVIL ACTION
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`Box TTAB NO FEE
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
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`Sir:
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`Anon Arts, LLC, requests that the Board suspend action on this cancellation proceeding
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`pending the outcome of Civil Action No. 3:12-cv-00715.
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`As grounds for the motion, Registrant avers as follows:
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`2.
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`The Board is empowered to determine only the right to register a mark. See
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`Sections 17, 18, 20, and 24 of the Act of 1946, 15 U.S.C. §§ 1067, 1068, 1070, and 1092.
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`3.
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`The Board is not authorized to determine the right to use, nor may it decide
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`broader questions of infringement or unfair competition. See Enterprise Rent-A-Car Co. v.
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`Advantage Rent-A-Car Inc., 62 USPQ2d 1857, 1858 (TTAB 2002), aff’d, 300 F.3d 1333, 66
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`USPQ2d 1811 (Fed. Cir. 2003) (no jurisdiction to decide issues arising under state dilution
`{00776989.1 }
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`laws); Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1481 (Fed. Cir. 1990)
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`(cannot adjudicate unfair competition issues); Carano v. Vina Concha Y Toro S.A., 67 USPQ2d
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`1149 (TTAB 2003) (no jurisdiction to determine copyright infringement; opposer’s claim that
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`applicant neither owns nor is entitled to use mark was not separable from opposer’s copyright
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`claim); Ross v. Analytical Technology Inc., 51 USPQ2d 1269, 1270 n.2 (TTAB 1999) (no
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`jurisdiction over unfair competition claims); Paramount Pictures Corp. v. White, 31 USPQ2d
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`1768, 1771 n.5 (TTAB 1994) (no jurisdiction over claims of trademark infringement and unfair
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`competition) aff’d (unpub’d), 108 F.3d 1392 (Fed. Cir. 1997); Kelly Services Inc. v. Greene’s
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`Temporaries Inc., 25 USPQ2d 1460, 1464 (TTAB 1992) (not empowered to render declaratory
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`judgment); Andersen Corp. v. Therm-O-Shield Int’l, Inc., 226 USPQ 431, 432 n.5 (TTAB 1985)
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`(may not entertain any claim based on Section 43(a) of the Act, 15 U.S.C. 1125(a)); Electronic
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`Water Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162, 163-64 (TTAB 1984) (unfair
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`competition and Section 43(a) claims are outside the Board’s jurisdiction); Hershey Foods Corp.
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`v. Cerreta, 195 USPQ 246, 252 (TTAB 1977) (determination of whether opposer is guilty of
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`unfair business practices is not within the province of the Board); Yasutomo & Co. v.
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`Commercial Ball Pen Co., 184 USPQ 60, 61 (TTAB 1974) (no jurisdiction to address anti-trust
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`issues); and American-International Travel Service, Inc. v. AITS, Inc., 174 USPQ 175, 179
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`(TTAB 1972) (no jurisdiction to determine whether opposer violated criminal statute).
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`3.
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`In order to resolve the parties’ differences once and for all, the right to use
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`FLIPBOOK and/or similar variations thereof as well as questions of infringement and/or unfair
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`competition must be decided. Consequently, Registrant initiated a civil action in the United
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`2
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`{00776989.1 }
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`States District Court for the Middle District of Tennessee. A copy of Registrant’s complaint is
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`submitted herewith.
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`4.
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`The final determination of the civil action will have a bearing on the issues before
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`the Board in this cancellation proceeding.
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`5.
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`Ordinarily, the Board will suspend proceedings in the case before it if the final
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`determination of the other proceeding will have a bearing on the issues before the Board. See 37
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`CFR § 2.117(a) and, for example, General Motors Corp v. Cadillac Club Fashions, Inc., 22
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`USPQ 1933 (TTAB 1992) (relief sought in Federal district court included an order directing
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`Office to cancel registration involved in cancellation proceeding); Other Telephone Co. v.
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`Connecticut National Telephone Co., 181 USPQ 125 (TTAB 1974) (decision in civil action for
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`infringement and unfair competition would have bearing on outcome of Section 2(d) claim
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`before Board), petition denied, 181 USPQ 779 (Comm’r 1974). See also Tokaido v. Honda
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`Associates Inc., 179 USPQ 861 (TTAB 1973); Whopper-Burger, Inc. v. Burger King Corp., 171
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`USPQ 805 (TTAB 1971); and Martin Beverage Co. v. Colita Beverage Corp., 169 USPQ 568
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`(TTAB 1971).
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`WHEREFORE, Registrant requests that action on this cancellation proceeding be
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`suspended pending the outcome of Civil Action No. 3:12-cv-00715.
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`3
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`{00776989.1 }
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`Please direct all communications to the undersigned at (615) 238-6300 or
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`trademarks@bonelaw.com.
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`Anon Arts, LLC
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`By:
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`____________________
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`Name: Paul W. Kruse
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`Title: Attorney
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`Date: July 12, 2012
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`Submitted by:
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`Bone McAllester Norton PLLC
`511 Union Street
`Suite 1600
`Nashville, Tennessee 37219
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`4
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`{00776989.1 }
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing “MOTION TO SUSPEND
`ACTION PENDING DISPOSITION OF CIVIL ACTION” was served on Petitioner’s attorney,
`Nicole M. Murray, of Quarles & Brady LLP, 300 North Lasalle Street, Suite 4000
`Chicago, Illinois 60654, via first class mail, postage prepaid, today July 12, 2012.
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`By:
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`________________________
`Paul W. Kruse
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`5
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`{00776989.1 }
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF TENNESSEE
`NASHVILLE DIVISION
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`ANON ARTS, LLC,
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`Plaintiff,
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`V.
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`DIGICEL, INC.,
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`Defendant.
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`J/$/E/%%%&/\i
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`COMPLAINT
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`Plaintiff Anon Arts, LLC, by and through undersigned counsel, files this Complaint
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`against Defendant DigiCel, Inc., seeking a Declaration that Plaintiff has senior rights in the Mark
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`FLIPBOOK (“FLlPBOOK” or the “Mark”) in the mobile app channel of trade, and that
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`Plaintiffs use of FLIPBOOK in connection with mobile apps is not likely to cause confusion
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`with Defendant’s use of FLIPBOOK in connection with traditional computer programs.
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`This case presents a question of first impression regarding new technology: whether
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`mobile apps (i.e., smart phones and tablets) and traditional computer programs (desktop and
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`laptop computers) occupy different channels of trade for purposes of examining likelihood of
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`confusion in a trademark dispute. The Sixth Circuit instructs courts to weigh eight factors in
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`determining whether a likelihood of confusion exists in a trademark dispute, one of which is the
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`marketing channels used by the parties.1 Here, although the parties are using identical Marks, an
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`1The other factors include: “(l) the strength of the plaintiffs mark, (2) the relatedness of the goods or services
`offered by the plaintiff and the defendant, (3) the similarity of the marks, (4) any evidence of actual confusion, .
`.
`.
`(6) the probable degree of purchaser care and sophistication, (7) the defendant's intent in selecting its mark, and (8)
`the likelihood of either party expanding its product line using the marks.” Therma—Scan. Inc. V. Thermoscan, Inc.,
`295 F.3d 623, 629-30 (6“‘ Cir. 2002).
`.
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`{00771569.7 }
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`examination of the eight factors reveals that no likelihood of confusion exists. Specifically, as
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`alleged below, mobile apps did not even exist as a marketing channel until July 2008, when
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`Apple, Inc. launched its App Store through iTunes. Plaintiffs sole member launched a mobile
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`app in the same month, making him a pioneer in this channel of trade. Even though Defendant
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`claims to have begun using the Mark in 2000 in connection with traditional computer programs,
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`Defendant has never marketed or offered goods bearing the Mark in the mobile app channel of
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`trade. Here, the parties’ respective FLIPBOOK goods operate on different operating systems,
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`provide different levels of products, and are marketed and sold in completely different, non-
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`intersecting channels of trade. Plaintiff is entitled to a declaration that no likelihood of confusion
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`exists, because all of the factors weigh in Plaintiff’ s favor except for the similarity of the Marks.
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`PARTIES
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`1.
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`Plaintiff Anon Arts, LLC (“Plaintiff”) is a limited liability company organized
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`and existing under the laws of the State of Tennessee. The intellectual property at issue in this
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`lawsuit belongs to Plaintiff a Tennessee company. As explained below, Plaintiff sells mobile
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`apps to consumers around the world under the Mark FLIPBOOK through Apple, Inc.’s iTunes
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`App Store. Plaintiffs low-cost FlipBool<® mobile apps provide entertainment by allowing users
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`to create animation via a mobile touch screen. Plaintiffs sole member and president is Josh
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`Anon, who assigned all of his intellectual property in FlipBook® to Plaintiff in April 2012.
`
`2.
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`Defendant DigiCel, Inc. (“Defendant”) is a corporation organized and existing
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`under the laws of the State of Arizona, but doing business world-wide and in all 50 states,
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`{0077l569.7 }
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`including Tennessee. As explained further below, Defendant sells traditional computer programs
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`under the Mark FLIPBOOK. Defendant does not market its FlipBook programs in the mobile
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`app channel, nor are its FlipBook programs operational on mobile devices. Defendant’s
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`FlipBook programs cost between $78 and $798, and they are targeted to professional animators
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`Who use the programs primarily for professional animation endeavors.
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`JURISDICTION AND VENUE
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`3.
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`The Court has jurisdiction over the subject matter of this action, pursuant to 28
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`U.S.C. '§ 1331, as it presents federal questions under the Lanham Act, 15 U.S.C. § 1501 er seq.,
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`and more specifically under 15 U.S.C. § 1119, as it involves a determination of the right to
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`continued registration of a trademark; and under 28 U.S.C. §§ 133 8(a), as it arises under an Act
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`of Congress relating to trademarks.
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`4.
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`The Court has both general and specific personal jurisdiction over Defendant, as
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`Defendant conducts business in all 50 states, including Tennessee, where it has purposefully l
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`availed itself of the privilege of acting in this State, thus invoking the benefits and protections of
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`its laws, by selling its goods to customers in Tennessee.
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`5.
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`Venue is proper in this district pursuant to 28 U.S.C. § 1391(b)(1), because
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`Defendant resides in this judicial district, as residency is defined in 28 U.S.C. § 1391(c)(2); and
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`pursuant to 28 U.S.C. § 1391(b)(2), because a substantial part of the property that is the subject
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`of this action is situated in this district. Without obtaining the Declaratory Judgment sought
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`herein, Plaintiff will sustain economic loss in this district as a result of Defendant’s efforts to
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`cancel Plaintiffs federal registration in the Mark FLIPBOOK.
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`{0077l569.7}
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`Mobile Apps
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`6.
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`On approximately July 10, 2008, Apple, Inc. (“Apple”) launched what it refers to
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`as the “App Store” via iTunes. One day later, Apple began offering the iPhone 3G, which came
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`pre-loaded with both an operating system (“OS”) known as iOS 2.0.1, and the App Store
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`marketplace that offered mobile applications for the iPhone.
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`9
`Mobile applications are commonly referred to as “apps.’ They are typically
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`7.
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`specialized programs downloaded onto mobile devices, such as smart phones or tablets,
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`optimized for a touch interface on a small screen.
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`8.
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`Mobile apps and traditional computer programs are different in a number of
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`ways. For example, mobile apps are designed to Work on devices with very small screens (under
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`10 inches), have limited processing power in comparison to traditional computers, offer a touch
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`input device instead of a traditional mouse and keyboard, are focused on conservation of battery
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`power, and offer more limited functionality. Mobile apps also have a very different price point,
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`with most mobile apps selling for under $5, whereas traditional computer programs commonly
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`sell for $50, $100, or more.
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`9.
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`Apple provided an entirely new marketing channel beginning on July 10, 2008
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`with the launch of its App Store. Prior to that date, the marketing channel of mobile apps did not
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`exist.
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`{00771569.7 }
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`10.
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`The popularity of mobile apps has soared from the birth of the Apple App Store
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`in July 2008 to the present day.
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`In July 2011, Apple announced that over 200 million users had
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`A downloaded over 15 billion apps from the Apple App Store.2
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`11.
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`After the success of Apple’s App Store, Apple’s competitors (such as Google and
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`RIM) launched similar services.
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`12.
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`Mobile apps are programmed to run on proprietary operating systems for a
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`specific device. For example, mobile apps sold through Apple’s App Store are programmed to
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`Work only on Apple devices featuring an operating system (“OS”) known as “iOS”; mobile apps
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`sold through Amazon are programmed to work only on Android devices featuring Google’s
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`Android OS; and mobile apps sold through BlackBerry App World are programmed to work
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`only on RIM’s BlackBerry devices that feature BlackBerry OS.
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`13.
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`Because mobile apps run on proprietary operating systems, they are not cross-
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`compatible with traditional computer operating systems, such as Mac OS or Windows.
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`14.
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`When technology companies such as Apple report earnings, they report sales of
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`mobile apps and traditional computers in separate categories.
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`15.
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`When companies such as Gartner Inc., which describes itself as the “world’s
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`leading information technology research and advisory company,” cover those earnings reports in
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`press releases, they similarly treat mobile apps and traditional computer programs as occupying
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`separate channels of trade.
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`2 http://www.apple.c0m/pr/libraw/20l 1/07/07Apples-App-Store-Downloads—T0p-15-Billion.html
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`{0077l569.7}
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`Plaintiffs Mobile App “FlipBook”
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`16.
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`Mr. Anon was one of the first individuals to create and offer a mobile app in
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`Apple’s App Store.
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`17.
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`Mr. Anon first offered his mobile app, called “FlipBook,” for sale in Apple’s
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`App Store on approximately July 29, 2008 for the Apple iPhone. This was also the first date on
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`which the mark FLIPBOOK was used in commerce in connection with a mobile app.
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`18.
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`Plaintiffs FlipBook® is a program designed for Apple’s mobile devices
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`(smartphones and tablets) that lets users animate with drawings and photographs. A series of
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`short videos found at http://www.flipbook.tV/tour/ demonstrates how FlipBook® works.
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`19.
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`On approximately August 10, 2008, Mr. Anon began offering a mobile app
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`called “FlipBook Lite,” a free Version of FlipBook®, in the Apple App Store.
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`20.
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`On approximately May 1, 2012, Plaintiff began offering a mobile app for
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`Apple’s iPad called “FlipBook HD.” A three-minute video demonstrating F1ipBook® HD can be
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`found at l’1ttQZ//WWW.flipbOOk.tV/.
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`21.
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`Plaintiff’ s FlipBook® mobile apps are programmed to operate only on mobile
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`products and, more specifically, Apple mobile products. Plaintiffs FlipBook® mobile apps do
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`not function on any proprietary OS other than Apple’s iOS, nor do they function outside the
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`mobile arena.
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`22.
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`Plaintiff’ s FlipBool<® mobile apps are available for sale only through the Apple
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`iTunes App Store.
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`23.
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`Customers browsing the iTunes App Store have a clear expectation that the apps
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`available in this store will only work on an Apple iOS device, such as an Apple iPhone or iPad.
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`{00771569.7}
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`24.
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`In fact, software for traditional computers (desktop and laptop computers) are not
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`even available in the iTunes App Store.
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`25.
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`Thus, even though Plaintiffs FlipBook® mobile apps are advertised in the Apple
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`App Store, and viewable through traditional desktop or laptop Mac or PC, they only appear in a
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`list of apps one can sync to one’s iOS device the next time one connects it — there is no Way to
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`run the mobile apps on a traditional desktop or laptop Mac or PC.
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`26.
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`27.
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`Plaintiffs FlipBook® mobile apps have achieved world-Wide recognition.
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`For example, Apple, itself, has used Plaintiffs FlipBook® logo in Apple’s own
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`in-store advertising.
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`28.
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`On August 19, 2008, the App Store’s top free apps page ranked FlipBook® Lite
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`as the 8”‘ most popular mobile app in the i'l‘unes store — more popular than either Pandora® or
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`Facebook®, at that point in time.
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`Case 3:12-cv-00715
`Document 1
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`Filed 07/13/12 Page 7 of 14 Page|D #: 7
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`29.
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`Plaintiffs FlipBook® mobile apps have been reviewed by a number of
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`magazines, including Macworld, and a number of blogs.
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`30.
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`31.
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`In January 2009, Plaintiffs FlipBook® passed the one million download mark.
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`In January 2012, Plaintiff’s FlipBook® was featured in a magazine that Audi of
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`America, Inc. distributed to owners of its automobiles, in which Audi highlighted what it called
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`“Cult Apps,” and referred to Plaintiff’s FlipBo0k® as the “number one animation app.”
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`32.
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`Plaintiffs FlipBook® mobile apps have achieved approximately 2.5 million
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`page—vieWs to date.
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`33.
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`On March 17, 2009, Mr. Anon obtained from the United States Patent and
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`Trademark Office (“USPTO”) a federal registration on the Principal Register for the mark
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`FLIPBOOK in connection with downloadable computer software for making movies for use in
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`touch screen mobile applications, bearing Registration Number 3,590,670 in International Class
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`9 (the “Federal Registration”).
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`34.
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`On June 26, 2012, Plaintiff amended its Federal Registration to describe its
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`goods more precisely as focused on mobile apps. As amended, Plaintiffs Federal Registration
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`on the Principal Register gives Plaintiff the exclusive right to use the mark FLIPBOOK in
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`connection with “downloadable computer software for making movies for use in touch screen
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`mobile applications.” (A copy of Plaintiffs Federal Registration, as amended, is attached hereto
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`as Exhibit A.)
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`35.
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`On April 25, 2012, Mr. Anon assigned all rights in FlipBook®, including the
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`intellectual property and entire interest and goodwill of FLIPBOOK, to Anon Arts LLC, the
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`Plaintiff in this action. The assignment was recorded with the USPTO on April 26, 2012.
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`{007715697}
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`Case 3:12-cv-00715 Document 1
`Filed 07/13/12 Page 8 of 14 Page|D #: 8
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`36.
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`Since approximately July 29, 2008, Plaintiff, as assignee of Mr. Anon’s interests,
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`has continuously used the Mark FLIPBOOK in connection witl1 mobile apps.
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`Defendanfs Petition to Cancel
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`37.
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`On June 7, 2012, Defendant filed with the USPTO’s Trademark Trial and Appeal
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`Board a Petition to Cancel Plaintiff s Federal Registration in the Mark FLIPBOOK.
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`38.
`
`In its Petition to Cancel, Defendant claims that its use of the Mark FLIPBOOK
`
`since 2000 in the traditional computer program channel of trade precludes Plaintiff from using
`
`the Mark in the mobile apps channel of trade because it is likely to cause confusion in the minds
`
`of the purchasing public.
`
`39.
`
`If Defendant’s Petition to Cancel were to be granted, it would cause Plaintiff to
`
`suffer significant economic harm.
`
`No Likelihood of Confusion Exists
`
`40.
`
`No evidence of actual confusion exists between Plaintiffs FlipBook® mobile
`
`apps and Defendant’s FlipBook traditional computer programs.
`
`41.
`
`Plaintiffs FlipBook® mobile apps and Defendanfs FlipBook traditional
`
`computer programs have coexisted in their respective channels since July 2008.
`
`42.
`
`Plaintiffs FlipBook® mobile apps and Defendanfs FlipBook programs operate
`
`in different channels of trade.
`
`43.
`
`Plaintiffs FlipBook® apps operate only in the specialized field of mobile apps.
`
`{0O77l569.7}
`
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`Filed 07/13/12 Page 9 of 14 Page|D #: 9
`
`

`
`44.
`
`Defendant’s FlipBook programs, on the other hand, operate only through a
`
`traditional computer program on a desktop or laptop computer.
`
`45.
`
`Defendant does not use, and has never used, the Mark FLIPBOOK in connection
`
`with a mobile app, whether on an Apple device, an Android or a BlackBerry.
`
`46.
`
`Plaintiffs FlipBook® mobile apps are designed to run on a 3.2 inch screen
`
`(iPhone) and a 10 inch screen (iPad). They require less than 15 MB (much smaller than even a
`
`single GB) to install and use, and there is no way to use them with a mouse; instead, they are
`
`touch—input only.
`
`47.
`
`For its FlipBook programs, on the other hand, Defendant requires at
`
`least
`
`Windows 95 or Mac OS X 10.5, a 40 GB hard drive, and a mouse. Defendant has recommended
`
`Windows XP, at least a 20 GB hard drive, a 17 inch monitor, and a mouse.
`
`§e_e Exhibit B,
`
`attached hereto. While Defendant’s FlipBook programs support a graphics tablet such as those
`
`made by Wacom, such pen input devices should not be confused with a touchscreen on a mobile
`
`device. Rather, they are more analogous to a traditional mouse.
`
`48.
`
`Unlike Plaintiffs FlipBook® mobile apps, Defendant’s FlipBook programs are
`
`available only by accessing Defendant’s website; they are not accessible via a mobile app store.
`
`In fact, there is no way to even load Defendant’s FlipBook programs onto a mobile device, in the
`
`event one accesses Defendant’s website from a mobile device. For example, it is impossible to
`
`download and/or run a binary file purchased through the web onto one’s smart phone.
`
`49.
`
`Defendant’s FlipBook programs are only accessible via download from
`
`Defendant’s website vWvw.digicel.net, or sent via mail in a hard copy format on a compact disc.
`
`{00771569.7}
`
`l0
`
` # #!!   
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∃ !
`Case 3:12-cv-00715 Document 1
`Filed 07/13/12 Page 10 of 14 Page|D #: 10
`
`

`
`50.
`
`Plaintiff primarily targets its FlipBook® mobile apps to casual and novice users
`
`interested in entertainment.
`
`51.
`
`Defendant, on the other hand, primarily targets its FlipBook programs to
`
`professional animators who use Defendant’s programs for professional endeavors.
`
`52.
`
`Defendant’s FlipBook programs help animators preview pencil drawings, sync
`
`with sound, compose characters on backgrounds and export animation into movies.
`
`53.
`
`None of Plaintiffs FlipBook® mobile apps cost more than $9.99. Plaintiff even
`
`offers one of its mobile apps — FlipBook® Lite — for free.
`
`54.
`
`Defendant, on the other hand, offers four FlipBook programs at prices ranging
`
`from $78 to $798.
`
`55.
`
`Plaintiff selected the Mark in good faith.
`
`56.
`
`Prior to selecting the Mark, Mr. Anon searched the USPTO records and found no
`
`registration of the Mark by Defendant. The reason he found no registration of the Mark by
`
`Defendant is because none existed.
`
`In fact, Defendant has never applied for registration of the
`
`Mark.
`
`5 7.
`
`In fact, Plaintiff was not even aware of Defendant’s use of the Mark FLIPBOOK
`
`until January 2011, when Defendant contacted Plaintiff.
`
`58.
`
`Although both parties’ goods rely on computer hardware capable of loading and
`
`running software, they are not so related that confusion is likely to occur.
`
`Instead, they are
`
`marketed to different segments of the population, for different purposes.
`
`59.
`
`The parties market through different channels — Plaintiff through the Apple App
`
`Store, and Defendant in other channels.
`
`{0077l569.7}
`
`ll
`
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`Filed 07/13/12 Page 11 of 14 Page|D #: 11
`
`

`
`60.
`
`Further, Defendant’s customers are sophisticated buyers, willing to spend
`
`between $78 and $798 on its FlipBook programs, diminishing the likelihood of confusion.
`
`61.
`
`Plaintiff has no plans to expand its use of the Mark FLIPBOOK beyond the
`
`specialized field of mobile apps.
`
`62.
`
`Plaintiff has developed significant goodwill
`
`in the Mark FLIPBOOK in
`
`connection with its mobile apps.
`
`63.
`
`The public has come to recognize FLIPBOOK as identifying Plaintiff as the
`
`source of goods under that Mark in the mobile app space, based on the popularity and success of
`
`Plaintiffs FlipBo0k® mobile apps, as well as being prominently featured in blogs, magazines,
`
`and Apple’s own marketing materials for the App Store.
`
`64.
`
`Defendant has not marketed its FLIPBOOK goods in the mobile app channel of
`
`trade and has developed no goodwill or recognition inthat channel.
`
`65.
`
`Because the mobile app channel of trade did not even exist until July 2008, it was
`
`absolutely unforeseeable that anyone in the traditional computer channel of trade would have
`
`viewed the mobile app channel of trade as a natural zone of expansion.
`
`66 .
`
`On the scale of inherent distinctiveness, FLIPBOOK is suggestive.
`
`67.
`
`Defendant is an overreaching trademark owner who erroneously believes its
`
`alleged mark deserves a broader scope of protection than the law otherwise allows.
`
`{O0771569.7 }
`
`12
`
` # #!!   
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∃ 
`Case 3:12-cv-00715 Document 1
`Filed 07/13/12 Page 12 of 14 Page|D #: 12
`
`

`
`CAUSE OF ACTION:
`DECLARATORY J UDGMENT
`
`68.
`
`69.
`
`Plaintiff reasserts the allegations set forth in the preceding paragraphs.
`
`This claim arises from an actual and justiciable controversy between the parties
`
`regarding the Mark FLIPBOOK.
`
`70.
`
`71.
`
`A declaratory judgment would settle the entire controversy between the parties.
`
`A declaratory judgment would serve a useful purpose in clarifying the legal
`
`relations at issue.
`
`72.
`
`No alternative remedy is better or more effective than a declaratory judgment.
`
`73.
`
`Pursuant to 28 U.S.C. § 2201 et seq., and Fed. R. Civ. P. 57, Plaintiff has
`
`presented a case of actual controversy in this Court’s jurisdiction, and seeks a declaration that:
`
`a.
`
`Plaintiff has senior
`
`rights in the Mark FLIPBOOK in the mobile
`
`application channel of trade; and
`
`b.
`
`Plaintiffs use FLIPBOOK in connection with mobile apps is not likely to
`
`cause confusion with Defendant’s use of FLIPBOOK in connection with traditional
`
`computer pro grams.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff Anon Arts LLC prays for the following relief:
`
`That proper process issue and be served upon Defendant DigiCel, Inc. ;
`
`That Defendant be required to answer;
`
`That the Court declare that:
`
`1.
`
`2.
`
`3.
`
`{oo771s59.7 }
`
`13
`
` # #!!   
`!∀ ∀ 
   
∃ 
`Case 3:12-cv-00715 Doeument1
`Filed 07/13/12 Page 13 of 14 Page|D #: 13
`
`

`
`Plaintiff has
`
`senior
`
`rights in the Mark FLIPBOOK in the mobile
`
`application channel of trade;
`
`Plaintiffs use FLIPBOOK in connection with mobile apps is not likely to
`
`cause confusion with Defendant’s use of FLIPBOOK in connection with
`
`traditional computer programs; and
`
`4.
`
`That the Court grant Plaintiff such other and additional relief as it deems just and
`
`equitable.
`
`DATED: July ,5, 2012
`
`Respectfully submitted,
`
`BONE MCALLESTER NORTON PLLC
`
`;5.’§,w«\“
`Stephen J. Zralek, BPR #18971
`511 Union Street, Suite 1600
`Nashville, TN 37219
`615.238.6305 — telephone
`szralek@bonelaw.com
`Counsel for Plairttifi‘, Anon Arts LLC
`
`{0077l569.7}
`
`14
`
` # #!!   
`!∀ ∀ 
   
∃ 
`Case 3:12-cv-00715 Document 1
`Filed 07/13/12 Page 14 of 14 Page|D #: 14
`
`

`
`wfirmn Qtatnzz of Qmer’
`Zfintteh fitatefi ifiatent ant: flfiratnzmark Qfiffiua
`
`F1ipB0Ok
`
`Reg, No, 3,590,670
`
`ANON ARTS LLC (TENNESSEE LIMITED LIABILITY COMPANY)
`2145 I>ONAI.I> DRIVE
`
`Registered Mar. 17, 2009 APARTMENT 6
`MORAGA, CA 945561451
`Amended June 26, 2012 FOR: DOWNLOADABLE COMPUTER SOFTWARE FOR MAKING MOVIES FOR USE IN
`Int, C1,: 9
`TOUCH SCREEN * MOBILE * APPLICATIONS. IN CLASS 9 (US. CLS. 21. 23. 26, 36 AND
`38).
`
`TRADEMARK
`
`FIRST USE 7-29-2008; IN COMMERCE 7-29-2008.
`
`PRINCIPAL REGISTER
`
`II II: MARK C()NSlS'l'S OI‘ S l'ANI)ARI) CI IARAC'I‘IaRs Wl'l I |()U'l‘ CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`SFLR. NO. 77-536,013, FILFD 7-31-2008.
`
`
`
`Dheclm nfllze UII:L:d 51211:: P.:*LL‘llL and lnadeurank 011'Iu::
`
` # #!!   # 
`!∀ ∀ 
   
∃ 
`Case 3:12-cv-00715 Document 1-1
`Filed 07/13/12 Page 1 of1 PagER|#|BE|' A
`
`

`
`7/11/12
`
`DigiCe| F|ipBook 2D Animation Software
`
`"“‘| ' ”'
`
`‘ " 3''
`
`*"
`
`http:lldigicel.netldownload/down|oads.htm
`3 captures
`
` AUG OCT N0
`17Jul O6 — 14 Oct 06
`
`(3051
`
`'114I=
`2005
`2006
`200
`
`Cystomecs
`
`Theatec
`
`Stage
`
`DigiCel FlipBook
`
`Request Download Page
`
`This is the latest release of DigiCe| FlipBook. It is the full working version but will run in demo mode with
`a watermark until it is registered.
`
`Click on one of the following links to launch an email requesting the download address. An automatic
`reply will send you the address in a minute or so.
`
`Request E|ipBook Download Address
`for windows
`
`Request E|ipBook Download Address
`mix
`
`Minimum Requirements
`Windows 95 or newer
`
`Pentium class computer
`256+ MB of RAM
`20 GB Hard Drive
`Color Monitor (1024 X 768)
`Mouse
`
`Minimum Requirements
`OS X 10.4 (Tiger)
`G3+ or Intel Processor
`256+ MB of RAM
`20 GB Hard Drive
`Color Monitor (1024 X 768)
`2—Button Mouse
`
`Recommended Configuration
`Windows XP
`P4 or Athlon Processor (2 GHz+)
`26 MB RAM
`100+ GB Hard Drive
`17" Color Monitor 1280 X 1024
`
`Recommended Configuration
`05 X 10.4 (Tiger)
`Core Duo-Intel-Based Mac
`26 MB RAM
`100+ GB Hard Drive
`17" Color Monitor 1280 X 1024
`
`Wacom Graphics Tablet
`
`Wacom Graphics Tablet
`
`More Downloads
`
`web.archive.org/web/20061014013448]http://digice|.net/download/down|oads.htm
`
`1/1
`
` # #!!   #
`!∀ ∀ 
   
∃ 
`Case 3:12-cv-00715 Document 1-2
`Filed 07/13/12 Page 1 of1 PagER|#|BBT B
`
`

`
`%IS 44 (Rev. 12/07)
`
`CIVIL COVER SHEET
`
`The JS 44 civil cover sheet and the information contained herein neither re lace not supplementthe filing and service ofpleadings or other papers as retéuired by law, except as provided
`by local rules ofcourt, This fonn, approved by the Judicial Conference 0 the United rates in September 1974, is required for the use oft e Clerk of ourt for the purpose of initiating
`the civil docket sheet.
`(SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`
`I. (a) PLAINTIFFS
`
`ANON ARTS, LLC
`
`(b) County of Residence of First Listed Plaintiff
`(EXCEPT IN U.s. PLAINTIFF CASES)
`
`DEFENDANTS
`
`DIGICEL, INC.
`
`County of Residence of First Listed Defendant
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE
`LAND INVOLVED.
`
`NOTE:
`
`(c) AttoIney’s (Firm Name, Address, and Telephone Number)
`
`Attorneys (IfKnown)
`
`Stephen J. Zral

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