Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA606363
`ESTTA Tracking number:
`05/27/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92057116
`Defendant
`Darryl D. Agler
`Plaintiff
`Westheimer Corporation
`Yes
`
`Proceeding.
`Applicant
`
`Other Party
`
`Have the parties
`held their discov-
`ery conference
`as required under
`Trademark Rules
`2.120(a)(1) and
`(a)(2)?
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Darryl D.
`Agler hereby requests suspension of this proceeding pending a final determination of the civil action. Trade-
`mark Rule 2.117.
`Darryl D. Agler has secured the express consent of all other parties to this proceeding for the suspension and
`resetting of dates requested herein.
`Darryl D. Agler has provided an e-mail address herewith for itself and for the opposing party so that any order
`on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`Respectfully submitted,
`/Louis T. Perry/
`Louis T. Perry
`tmindy@faegrebd.com,louis.perry@faegrebd.com,amie.peelecarter@faegrebd.com
`ip@musicesq.com
`05/27/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re U.S. Trademark Registration No. 3,986,754
`For the Mark: STRATOTONE
`Registered on: June 28, 2011
`
`WESTHEIMER CORPORATION
`
`Petitioner,
`
`Cancellation No.: 92057116
`
`v.
`
`DARRYL D. AGLER
`
`Registrant.
`
`AGREED MOTION TO SUSPEND PROCEEDINGS FOR CIVIL ACTION
`
`Registrant, DARRY D. AGLER, by and through his undersigned counsel and pursuant to
`
`37 C.F.R. § 2.117 and TMBP 510.02(a), hereby requests that proceedings before this Board be
`
`suspended until final determination of a civil action now pending in the United States District
`
`Court for the Northern District of Indiana, and states:
`
`1.
`
`On March 27, 2014, Registrant filed a civil action in the United States District
`
`Court for the Northern District of Indiana, Darryl D. Agler v. Westheimer Corporation, Case No.
`
`1:14-cv-99 (the "Complaint"). See Complaint, attached hereto as Exhibit 1.
`
`2.
`
`On May 27, 2014, Petitioner, WESTHEIMER CORPORATION, filed its answer
`
`and counterclaims to the Complaint (the "Answer"). See Answer, attached hereto as Exhibit 2.
`
`3.
`
`The Answer contains counterclaims and affiimative defenses that rest upon the
`
`allegation that U.S. Reg. No. 3,986,754—the subject of this proceeding before the Board—was
`
`fraudulently obtained. Consequently, Petitioner has requested that the United States District
`
`Court for the North District of Indiana cancel U.S. Reg. No. 3,986,754.
`
`US.54247683.01
`
`

`
`4. (cid:9)
`
`The outcome of the federal court case, therefore, is likely to have a bearing on the
`
`case before the Board.
`
`5.
`
`Registrant has previously moved for the suspension of this proceeding, but such
`
`motion was denied by the Interlocutory Attorney because the allegations in the Complaint did
`
`not overlap with the allegations contained in Petitioner's Petition for Cancellation. The
`
`Interlocutory Attorney, however, indicated in his ruling that " . . . the civil action may ultimately
`
`be shown to have a bearing on this proceeding once the issues therein, including any
`
`counterclaims, have been joined ..."
`
`6.
`
`Registrant submits that the Answer contains allegations and requests for relief that
`
`will likely have a bearing on the case before the Board.
`
`7.
`
`On May 21, 2014, the undersigned spoke with counsel for Petitioner. In that
`
`conversation, counsel for Petitioner expressed his agreement to this Motion.
`
`Accordingly, Registrant respectfully requests that proceedings before this Board be
`
`suspended until final determination of the civil action.
`
`Dated: May 27, 2014
`
`Respectfully submitted,
`
`Faegre Baker Daniels LLP
`
`By: (cid:9)
`
`/Louis T. Perry/
`
`Louis T. Perry
`Arnie Peele Carter
`FAEGRE BAKER DANIELS LLP
`300 North Meridian Street
`Suite 2700
`Indianapolis, Indiana 46239
`Tel:
`(317) 237 1089
`Fax:
`(317) 237 1000
`Email: louis.perry@faegrebd.com
`
`US.54247683.01
`
`2
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing was sent via U.S. Mail on May 27, 2014
`
`to:
`
`Ronald S. Bienstock
`Brent Davis
`Bienstock & Michael P.C.
`411 Hackensack Avenue
`Continental Plaza
`7th Floor
`Hackensack, New Jersey 07601
`
`/Louis T. Perry/
`
`US.54247683,01
`
`3
`
`

`
`EXHIBIT 1
`EXHIBIT 1
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 1 of 14
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF INDIANA
`FORT WAYNE DIVISION
`
`DARRYL D. AGLER,
`
`Plaintiff,
`
`v.
`
`WES THEIMER CORPORATION,
`
`Defendant.
`
`Case No. 1:14-cv-99
`
`COMPLAINT
`
`Plaintiff Darryl D. Agler ("Agler"), through his undersigned counsel, and for his
`
`Complaint against Defendant Westheimer Corporation ("Westheimer"), alleges as follows:
`
`Nature of the Action
`
`1.
`
`This is an action for trademark infringement, counterfeiting, unfair competition,
`
`and false designation of origin arising under the Lanham Act, 15 U.S.C. § 1051 et seq., and the
`
`statutes and common law of the State of Indiana.
`
`Jurisdiction and Venue
`
`2.
`
`Jurisdiction over the parties and subject matter of this action is proper in this
`
`Court pursuant to 15 U.S.C. § 1121 (actions arising under the Lanham Act), 28 U.S.C. § 1331
`
`(actions under the laws of the United States), 28 U.S.C. § 1332(a) (diversity of citizenship
`
`between the parties), and 28 U.S.C. § 1338(a) (actions arising under an Act of Congress relating
`
`to, among other things, trademarks). This Court has supplemental jurisdiction over the claims in
`
`this Complaint that arise under state statutory and common law pursuant to 28 U.S.C. § 1367(a).
`
`3.
`
`This Court has personal jurisdiction over Westheimer because Westheimer does
`
`business in the State of Indiana.
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 2 of 14
`
`4.
`
`Venue is properly founded in this judicial district pursuant to 28 U.S.C. §§
`
`1391(b) and (c) because Agler resides in this District, may be found in this District, and a
`
`substantial part of the events giving rise to the claims in this action occurred within this District.
`
`Parties
`
`5.
`
`Agler is an individual residing at 5506 Quail Canyon Circle, Fort Wayne, Indiana
`
`46835 and does business as The Stratotone Guitar Co.
`
`6.
`
`Upon information and belief, Westheimer is an entity organized and existing
`
`under the laws of the State of Illinois, with its principal place of business located at 3451 West
`
`Commercial Avenue, Northbrook, Illinois 60062.
`
`Allegations Applicable to All Counts
`
`7.
`
`The following factual allegations are set forth for purposes of all legal counts
`
`alleged in this Complaint, infra.
`
`8.
`
`Agler custom-manufactures high-quality guitars and sells them across the United
`
`States of America. Each of Agler's guitars is painstakingly hand-crafted from the wood of a
`
`customer's choosing and features vintage hardware and pick-ups.
`
`9.
`
`Agler currently accepts orders for his guitars on his website at
`
`<stratotoneguitar.com> (the "Site"). A printout of the Site is attached hereto as Exhibit A.
`
`10.
`
`Agler also regularly showcases and sells his guitars at vintage guitar shows across
`
`the nation.
`
`11.
`
`Agler's guitars generally retail from $1250 and upward.
`
`12. On March 7, 2006, Agler filed Application Ser. No. 78/831,179 (the '179
`
`Application") with the United States Patent and Trademark Office (the "PTO") for the mark
`
`STRATOTONE (the "STRATOTONE Mark") pursuant to 15 U.S.C. §1051(b). The
`
`2
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 3 of 14
`
`STRATOTONE Mark was identified in association with "musical instruments, namely, guitars"
`
`in International Class 15. A copy of the '179 Application is attached hereto as Exhibit B.
`
`13.
`
`The '179 Application matured into U.S. Reg. No. 3,986 754 ("754 Registration")
`
`on June 28, 2011. A copy of the '754 Registration is attached hereto as Exhibit C.
`
`14.
`
`Since at least as early as January of 2007, Agler's marketing and promotions in
`
`connection with his guitars have included the STRATOTONE Mark.
`
`15.
`
`As pictured below, the STRATOTONE Mark also appears on what is commonly
`
`referred to as the "head" of Agler's guitars.
`
`16. At the National Association of Music Merchants ("NAMM") show in 2010, Agler
`
`noticed Westheimer selling a mass -produced cheaper version of the same style of guitar under
`
`the STRATOTONE Mark at a much lower price point than Agler's custom STRATOTONE
`
`3
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 4 of 14
`
`guitars, notwithstanding Agler's prior exclusive rights in the STRATOTONE Mark. Agler spoke
`
`to Westheimer personnel twice at the NAMM show, notifying them that Westheimer's products
`
`were infringing the STRATOTONE Mark. Agler was unable to sell any of his guitars at the
`
`2010 NAMM show.
`
`17.
`
`Since that time, Westheimer has flooded the market with lower quality, cheaper
`
`guitars that bear the STRATOTONE Mark. These inferior products retail between $199.00 and
`
`$399.00, and have destroyed the market for Agler's high-end STRATOTONE guitars.
`
`18.
`
`On December 4, 2012 Westheimer filed Application Ser. No. 85/794,320 (the
`
`"320 Application") for the STRATOTONE Mark for use in association with "guitars" in
`
`International Class 15 pursuant to 15 U.S.C. §1051(a). In the '320 Application, Westheimer
`
`represented to the PTO that it had been using the STRATOTONE Mark in commerce since
`
`"00/00/2009" and that the STRATOTONE Mark was currently in use. A copy of the '320
`
`Application is attached hereto as Exhibit D.
`
`19.
`
`On March 26, 2013, the PTO refused to register the '320 Application unless
`
`Westheimer submitted a claim of ownership with respect to Agler's '754 Registration. A copy
`
`of this refusal is attached hereto Exhibit E.
`
`20. Westheimer could not provide the PTO with a claim of ownership for the '754
`
`Registration because it did not own the '754 Registration.
`
`21.
`
`On April 25, 2013, Westheimer filed a petition to cancel the '754 Registration
`
`(the "Cancellation Petition") with the Trademark Trial and Appeal Board. The Cancellation
`
`Petition is currently pending under cancellation proceeding no. 92057116.
`
`4
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 5 of 14
`
`22. Westheimer is currently using the STRATOTONE Mark in commerce in
`
`association with guitars. A copy of a brochure featuring Westheimer's unauthorized use of the
`
`STRATOTONE Mark in association with guitars is attached as Exhibit F.
`
`COUNT I: FEDERAL UNFAIR COMPETITION AND FALSE DESIGNATION OF
`ORIGIN
`
`(15 U.S.C. § 1125(a))
`
`23.
`
`Agler reincorporates and realleges paragraphs 1 through 22 as though fully set
`
`forth herein.
`
`24. Westheimer's use in commerce of the STRATOTONE Mark has caused and will
`
`continue to cause consumers to believe, contrary to fact, that the guitars it provides are
`
`sponsored, licensed and/or otherwise approved by, or are in some way connected to or affiliated
`
`with Agler.
`
`25. Westheimer's use in commerce of the STRATOTONE Mark already has and
`
`continues to cause mistake, deception, and consumer confusion.
`
`26. Westheimer's use of the STRATOTONE Mark is likely to cause initial interest
`
`confusion among the general public.
`
`27. Westheimer had actual and constructive knowledge of Agler's prior rights in the
`
`STRATOTONE Mark when it began using the STRATOTONE Mark in commerce.
`
`28. Westheimer had actual and constructive knowledge of the previously-existing
`
``179 Application for the STRATOTONE Mark when it began using the STRATOTONE Mark in
`
`commerce.
`
`29.
`
`The foregoing actions of Westheimer constitute unfair competition and false
`
`designation of origin in violation of 15 U.S.C. § 1125(a), and, on information and belief, have
`
`been knowing, intentional, deliberate, willful, malicious, and in disregard of Agler's rights.
`
`5
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 6 of 14
`
`30. Westheimer has unfairly profited from the actions alleged.
`
`31.
`
`By reason of foregoing knowing, intentional, deliberate, willful, and malicious
`
`actions, Agler has suffered damages in an amount as yet to be ascertained but which continues to
`
`accrue and accumulate.
`
`32. Westheimer's activities have irreparably harmed and, if not enjoined, will
`
`continue to irreparably harm, the general public who has an interest in being free from confusion,
`
`mistake and deception.
`
`33.
`
`By reason of Westheimer's acts, Agler's remedy at law is not adequate to
`
`compensate it for injuries inflicted by Westheimer. Accordingly, Agler is entitled to permanent
`
`injunctive relief pursuant to 15 U.S.C. § 1116.
`
`34.
`
`By reason of Westheimer's knowing, intentional, deliberate, willful, and
`
`malicious acts and pursuant to 15 U.S.C. § 1117, Agler is entitled to (i) Westheimer's profits; (ii)
`
`damages (and to have those damages trebled); and (iii) the costs of this action.
`
`35.
`
`This is an exceptional case making Agler eligible for an award of attorneys' fees
`
`under 15 U.S.C. § 1117.
`
`COUNT II: FEDERAL TRADEMARK INFRINGEMENT
`
`(15 U.S.C. § 1114)
`
`36.
`
`Agler reincorporates and realleges paragraphs 1 through 35 as though fully set
`
`forth herein.
`
`37. Westheimer's use in commerce of the STRATOTONE Mark already has and
`
`continues to cause mistake, deception, consumer confusion.
`
`38. Westheimer's use of the STRATOTONE Mark is likely to cause initial interest
`
`confusion among the general public.
`
`6
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 7 of 14
`
`39.
`
`The above-described acts of Westheimer constitute trademark infringement in
`
`violation of 15 U.S.C. § 1114(1), and, on information and belief, have been knowing, intentional,
`
`deliberate, willful, malicious, and intended to cause confusion or mistake, or to deceive, and in
`
`disregard of Agler's rights.
`
`40. Westheimer has unfairly profited from the infringing actions alleged.
`
`41.
`
`By reason of Westheimer's knowing, intentional, deliberate, willful, and
`
`malicious acts, Agler has suffered damages in an amount as yet to be ascertained but which
`
`continues to accrue and accumulate.
`
`42. Westheimer's willful and intentional activities have irreparably harmed and, if not
`
`enjoined, will continue to irreparably harm, Agler.
`
`43. Westheimer's willful and intentional activities have irreparably harmed and, if not
`
`enjoined, will continue to irreparably harm, the general public who has an interest in being free
`
`from confusion, mistake and deception.
`
`44.
`
`By reason of Westheimer's knowing, intentional, deliberate, willful, and
`
`malicious acts, Agler's remedy at law is not adequate to compensate him for the injuries inflicted
`
`by Westheimer. Accordingly, Agler is entitled to injunctive relief pursuant to 15 U.S.C. § 1116.
`
`45.
`
`By reason of Westheimer's knowing, intentional, deliberate, willful, and
`
`malicious acts and pursuant to 15 U.S.C. § 1117, Agler is entitled to (i) Westheimer's profits; (ii)
`
`damages (and to have those damages trebled); and (iii) the costs of this action.
`
`46.
`
`This is an exceptional case making Agler eligible for an award of attorneys' fees
`
`under 15 U.S.C. § 1117.
`
`7
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 8 of 14
`
`COUNT III: FEDERAL TRADEMARK COUNTERFEITTING
`
`(15 U.S.C. § 1114)
`
`47.
`
`Agler reincorporates and realleges paragraphs 1 through 46 as though fully set
`
`forth herein.
`
`48. Without authorization, Westheimer used and uses in commerce a spurious
`
`designation identical to the federally registered STRATOTONE Mark in connection with the
`
`sale, offering for sale, distribution, and advertising of guitars, which goods are covered by the
`
``754 Registration.
`
`49. Westheimer's unauthorized use of the federally registered STRATOTONE Mark
`
`in connection with guitars has and will continue to cause consumers to believe that Westheimer's
`
`guitars originate from or are otherwise controlled by Agler and/or that Westheimer has Agler's
`
`authorization to use the federally registered STRATOTONE Mark in connection with guitars.
`
`50. Westheimer's unauthorized use of the federally registered STRATOTONE Mark
`
`in connection with guitars is likely to cause and has caused confusion, mistake, or deception,
`
`including as to the origin, connection or association of Agler with Westheimer's guitars.
`
`51. Westheimer's use of the federally registered STRATOTONE Mark in connection
`
`with guitars as described in this Complaint constitutes counterfeiting within the meaning of
`
`Section 32 of the Lanham Act, 15 U.S.C. § 1114.
`
`52. Westheimer's acts are knowing, intentional, deliberate, willful, and malicious.
`
`53.
`
`By reason of the foregoing, Westheimer is liable to Agler for (a) statutory
`
`damages in an amount of up to $2,000,000 for each counterfeited mark, as provided by 15 U.S.C.
`
`§ 1117(c) of the Lanham Act, or, at Agler's election, an amount representing three (3) times
`
`Westheimer's illicit profits; and (b) reasonable attorneys' fees and pre-judgment interest
`
`pursuant to 15 U.S.C. § 1117(b).
`
`8
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 9 of 14
`
`COUNT IV: COMMON LAW UNFAIR COMPETITION
`AND TRADEMARK INFRINGEMENT
`
`54.
`
`Agler reincorporates and realleges paragraphs 1 through 53 as though fully set
`
`forth herein.
`
`55. Westheimer's use in commerce of the STRATOTONE Mark in connection with
`
`guitars is likely to cause consumer confusion or mistake to deceive as to the source of
`
`Westheimer's goods.
`
`56. Westheimer's conduct constitutes trademark infringement and unfair competition
`
`under the common law of the State of Indiana, entitling Agler to relief.
`
`57. Westheimer has unfairly profited from the actions alleged herein.
`
`58.
`
`By reason of Westheimer's knowing, intentional, deliberate, willful, and
`
`malicious actions described above, Agler has suffered damages in an amount as yet to be
`
`ascertained but which continues to accrue and accumulate and has suffered irreparable harm.
`
`59.
`
`By reason of Westheimer's knowing, intentional, deliberate, willful, and
`
`malicious acts, Agler's remedy at law is not adequate to compensate him for the injuries inflicted
`
`by Westheimer. Accordingly, Agler is entitled to permanent injunctive relief.
`
`COUNT V: UNJUST ENRICHMENT
`
`60.
`
`Agler reincorporates and realleges paragraphs 1 through 59 as though fully set
`
`forth herein.
`
`61.
`
`At the expense of and detriment to and without the prior express or implied
`
`authorization of Agler, Westheimer has been unjustly enriched through Westheimer's knowing,
`
`intentional, deliberate, willful, and malicious use of the STRATOTONE Mark.
`
`9
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 10 of 14
`
`62.
`
`By reason of Westheimer's actions described above, Agler has suffered damages
`
`in an amount as yet to be ascertained but which continues to accrue and accumulate and has
`
`suffered irreparable harm.
`
`63.
`
`By reason of Westheimer's acts, Agler's remedy at law is not adequate to
`
`compensate him for the injuries inflicted by Westheimer. Accordingly, Agler is entitled to
`
`permanent injunctive relief
`
`COUNT VI: CONVERSION
`
`(Ind. Code § 35-43-4-3)
`
`64.
`
`Agler reincorporates and realleges paragraphs 1 through 63 as though fully set
`
`forth herein.
`
`65.
`
`By engaging in the knowing, intentional, deliberate, willful, and malicious actions
`
`described above, Westheimer has exerted unauthorized control over the STRATOTONE Mark
`
`with the intent to deprive Agler of its benefit.
`
`66. Westheimer has therefore committed conversion as defined under Ind. Code § 35-
`
`43-4-3.
`
`67. Westheimer's conversion of the STRATOTONE Mark has proximately caused
`
`Agler to suffer damages in an amount as yet to be ascertained but which continues to accrue and
`
`accumulate and irreparable harm.
`
`68.
`
`By reason of Westheimer's acts, Agler's remedy at law is not adequate to
`
`compensate him for the injuries inflicted by Westheimer. Accordingly, Agler is entitled to
`
`permanent injunctive relief
`
`10
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 11 of 14
`
`COUNT VII: DECEPTION
`
`(Ind. Code § 35-43-5-3(a)(6))
`
`69.
`
`Agler reincorporates and realleges paragraphs 1 through 68 as though fully set
`
`forth herein.
`
`70.
`
`By engaging in the knowing, intentional, deliberate, willful, and malicious actions
`
`described above, Westheimer has disseminated to the public information that Westheimer knows
`
`is false, misleading, or deceptive, with the intent to promote Westheimer's business and/or
`
`commercial interests.
`
`71. Westheimer has therefore committed deception under I.C. § 35-43-5-3(a)(6).
`
`72. Westheimer's deception has proximately caused Agler to suffer damages in an
`
`amount as yet to be ascertained but which continues to accrue and accumulate and irreparable
`
`harm.
`
`73.
`
`By reason of Westheimer's acts, Agler's remedy at law is not adequate to
`
`compensate him for the injuries inflicted by Westheimer. Accordingly, Agler is entitled to
`
`permanent injunctive relief.
`
`COUNT VIII: INDIANA CRIME VICTIM'S RELIEF ACT
`
`74.
`
`Agler reincorporates and realleges paragraphs 1 through 73 as though fully set
`
`forth herein.
`
`75.
`
`Under the Indiana Crime Victims' Act (I.C. § 35-24-3-1), a person that suffers
`
`pecuniary loss as a result of the violation of I.C. § 35-43 et seq., may bring a civil action against
`
`the person who caused the loss for treble damages, costs of the action, and reasonable attorneys'
`
`fees.
`
`11
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 12 of 14
`
`76. Westheimer has violated Ind. Code. § 35-43 through knowing, intentional,
`
`deliberate, willful, and malicious commission of (i) conversion under Ind. Code § 35-43-4-3 and
`
`(ii) deception under Ind. Code. § 35-43-5-3.
`
`77.
`
`Agler is the victim of Westheimer's knowing, intentional, deliberate, willful, and
`
`malicious criminal actions, and, as a result, has suffered actual pecuniary damages in an amount
`
`as yet to be ascertained but which continue to accrue and accumulate.
`
`78.
`
`Agler is accordingly entitled to an award of those actual damages as well as
`
`statutory treble damages, corrective advertising damages, costs, and reasonable attorneys' fees.
`
`DEMAND FOR JURY TRIAL
`
`Agler hereby respectfully requests that all issues raised by this Complaint be tried by
`
`jury.
`
`order:
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Darryl D. Agler, by counsel, hereby requests that this Court enter an
`
`(a)
`
`enjoining Westheimer from (i) using the STRATOTONE Mark or any other
`
`name, word, mark, or designation confusingly similar to the STRATOTONE Mark in connection
`
`with guitars and similar products; (ii) applying for registration of the STRATOTONE Mark or
`
`any other name, word, mark, or designation confusingly similar to the STRATOTONE Mark in
`
`connection with guitars and similar products; and (iii) continuing to prosecute the '320
`
`Application.
`
`(b)
`
`requiring Westheimer to withdraw that Cancellation Petition with prejudice and
`
`allow the '320 Application to expire;
`
`12
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 13 of 14
`
`(c)
`
`requiring Westheimer to provide an accounting of all gains, profits, savings and
`
`advantages realized by it from the unauthorized use of the STRATOTONE Mark.
`
`(d)
`
`requiring Westheimer to surrender any and all merchandise, design, plans, and
`
`marketing materials featuring the STRATOTONE Mark;
`
`(e)
`
`awarding Agler all damages (including treble damages), costs, disbursements,
`
`expenses, and attorneys' fees owed to him pursuant to the Lanham Act and Indiana common and
`
`statutory law by reason of Westheimer's willful infringement, counterfeiting, and conversion of
`
`the STRATOTONE Mark in connection with guitars;
`
`(f)
`
`declaring that this is an exceptional case under 15 U.S.C. § 1117 due to
`
`Westheimer's knowing, intentional, deliberate, willful, and malicious acts of trademark
`
`infringement and counterfeiting and awarding Agler his reasonable attorneys' fees; and
`
`(g)
`
`all other just and proper relief to which Agler is entitled.
`
`13
`
`

`
`case 1:14-cv-00099 document 1 filed 03/27/14 page 14 of 14
`
`Dated: March 27, 2014 (cid:9)
`
`Respectfully submitted,
`
`/Louis T Perry/
`Louis T. Perry (#25736-49)
`Arnie Peele Carter (#19523-29)
`FAEGRE BAKER DANIELS LLP
`300 North Meridian Street
`Suite 2700
`Indianapolis, IN 46204
`(317) 237-0300
`(317) 237-0000 (Fax)
`louis.perry@FaegreBD.com
`amie.peelecarter@FaegreBD.com
`
`

`
`case 1:14-cv-00099 document 1-1 filed 03/27/14 page 1 of 2
`
`Complaint
`
`EXHIBIT A
`
`

`
`Stratotorie GuitarPMA-44-cv-00099 document 1-1 filed 03/27/14 page 2 of 2
`
`Page 1 of 1
`
`neck-through construction
`The STRATOTONE Guitar Co. is offering "Old SChool, (cid:9)
`,'iardyiare. Our
`N)s and Virra9-:: Stracoto
`'Stratatone" guitars. Made with Vintage Liairmoad (cid:9)
`guitars are hand-built in the USA with a chunky 1960s neck profile and your choice of wood. We can
`Pphi ikarl original 1960s FtrItntnne, Mahociany, Curly Maple, or any wood of your choosing.
`
`for Pricing!
`
`http://www.stratotoneguitar.coml (cid:9)
`
`3/27/2014
`
`(cid:9)
`

`
`case 1:14-cv-00099 document 1-2 filed 03/27/14 page 1 of 6
`
`Complaint
`
`EXHIBIT B
`
`

`
`case 1:14-cv-00099 document 1-2 filed 03/27/14 page 2 of 6
`
`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 78831179
`Filing Date: 03/07/2006
`
`Tbi. table below presents the data as entered.
`
`MARK SECTION
`
`I MARK.
`
`STAN DARD CI RACTERS
`
`USPTO-GENERATED IMAGE
`
`LITERAL ELEMENT
`
`MARK STATEMENT
`
`OWNER SECTION
`
`NAME (cid:9)
`
`SIREEF (cid:9)
`
`CITY (cid:9)
`sTivi
`
`ZIP/POSTAL CODE (cid:9)
`
`icouNTRY (cid:9)
`• ••„„„,.„„„„,
`PHONE (cid:9)
`
`FAX (cid:9)
`
`• -
`
`EMAIL (cid:9)
`
`Stratotone
`
`[YES
`
`•
`
`YES
`
`! Stratotone
`
`The mark consists of standard characters,
`without claim to any particular font, style,
`size, or color.
`
`Agler, Darryl D.
`
`1910 Spy Run Avenue
`
`: Fort Wayne
`
`; Indiana
`
`1 46805
`
`!United States
`
`; 260/804-0424
`
`I 260/492-4446
`
`dagler2@comeast.net
`
`AUTHORIZED EN•I A IL COMMUNICATION
`
`LEGAL ENTITY SECTION
`
`. TYPE
`
`• COUNTRY OF CITIZENSIIIP (cid:9)
`
`United States
`
`GOODS AND/OR SERVICES SECTION .
`
`(cid:9)
`

`
`case 1:14-cv-00099 document 1-2 filed 03/27/14 page 3 of 6
`
`1
`
`-DESCRIPTION
`
`1 FILING BASIS
`
`SIGNATURE SECTION
`
`SIGNATURE
`
`SICINATORY•NAME •
`
`SIGNATORNi" DATE
`
`SIGNATORY POSITION
`
`!PAYMENT SECTION
`
`! NUMBER OF CLASSES
`
`NUMBER OF•CLASSES PAID
`
`• SUBTOTAL AMOUNT
`
`TOTAL AMOUNT
`
`PAYMENT METHOD
`
`COR.R ES PONDENCE .SECTION
`
`NAME
`
`STUD'
`
`CITY
`„•„•
`
`ZIP/POSTAL CODE
`
`•: COUNTRY
`
`MAIL
`
`! AUTHORIZEDEMAIL COMMUNICATION
`
`FILING INFORMATION
`
`SUBMIT DATE
`
`TEAS s-rAmP
`
`MusicalInstrumei
`
`guitar)
`
`Section 1(1))
`
`/daryl agleri
`
`i Darryl Agler
`
`103/07/2006
`
`I owner
`
`United States
`
`daglet2@comcast,net
`
`l'rue Mar 071/!$35 EST 2006
`
`9SPTO/BAS-71127842-200603
`; 07151935964648-78831179-2
`001aee6ca2!15c1bc0115e86a
`9872c8-CC-139-20060307150
`740730465
`
`

`
`case 1:14 - cv- 00099 document 1 - 2 filed 03/27/14 page 4 of 6
`
`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 78831179
`Filing Date: 03/07/2006
`issioner for Trademarks:
`
`To the Co
`
`MARK: (Standard Characters, see mark)
`
`The mark consists of standard characters, without claim to any particular font, style, size, or cOler.
`
`The literal element of
`
`(cid:9) mark consists.of Stratotone.
`
`The applicant, Darryl D. Agier, a citizen of United States,Tesiding at 1910 Spy Run Avenue, Fort Wayne,
`Indiana, United States, 46805, requests registration of the trademark/service mark identified above in the
`United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946
`(15 U.S.C. Section 1051 et seq.), as amended.
`
`Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company
`or licensee the mark in commerce on Or in connection with the identified goods and/or services. (15
`U.S.C. Section 1051(b)).
`
`International Class (cid:9)
`
` : Musical Instrument (guitar)
`
`The USPTO is authorized to communicate with the applicant or its representative at the following email
`address: dagler20)comeastnet.
`A fee pay (cid:9)
`class(es).
`
`t in the amount of $325 will be submitted with the application, representing payment for I
`
`Declaration
`
`The undersigned, being hereby warned that willful false statements and the like so made are punishable by
`fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and
`the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is
`properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to
`be the owner of the trademark/service mark sought to be registered, or, if the application is being filed
`under 15 U.S.C. Section 1051(0, hefshe believes applicant to be entitled to use such mark in commerce;
`to the best of his/her knowledge and belief no other person, firm, corporation, or tiSsociation has the right
`to use the mark in commerce., either in the identical form thereof or in such near resemblance thereto as to
`be likely, when used on or in connection with the goods/services of such other person, to cause confusion,
`or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and
`that all statements made on information and belief are believed to be true„
`
`(cid:9)
`

`
`case 1:14-cv-00099 document 1-2 filed 03/27/14 page 5 of 6
`
`Signature: /danyl agler/ Date: 03/07/2006
`Signatory's Name: Darryl Agler
`Signatory's Position: Owner
`
`Mailing Address:
`Agler, Darryl D.
`1910 Spy Run Avenue
`Fort Wayne, Indiana 46805
`
`RAM Sale Number: 139
`RAM Accounting Date: 03/08/2006
`
`Serial Number: 78831179
`Internet Transmission Date: Tue Mar 07 15:19:35 EST 2006
`TEAS Stamp; USPTO/BAS-71127842-20060307151935964648-
`78831179-2001aee6ca2f15clbc0f15e86a9872c
`8-CC-139-20060307150740730465
`
`

`
`case 1:14-cv-00099 document 1-2 filed 03/27/14 page 6 of 6
`
`Stra o one
`
`

`
`case 1:14-cv-00099 document 1-3 filed 03/27/14 page 1 of 2
`
`Complaint
`
`EXHIBIT C
`
`

`
`case 1:14-cv-00099 document 1-3 filed 03/27/14 page 2 of 2
`
`tate0 of a
`
`zuntteb 'taU Patent anti Trabemark
`
`Stratotone
`
`Reg. No. 3,986,754 (cid:9)
`AG LER, DARRYL 0. (I NITED STATES INDI V1DUAL)
`1910 SOY RUN AVENUE
`Registered June 28, 2011 FORT WAYNE, IN 46805
`Int. CI.: 15 (cid:9)
`
`FOR; MUSICAL INSTRUMENTS, NAMELY, GUITARS, IN CLASS IS (U.S. CES. 2, 21 AND
`36),
`
`TRADEMARK (cid:9)
`
`FIRST USE 1-0-2010; IN COMMERCE 1-0-2010,
`
`PRINCIPAL REGIS [ER (cid:9)
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAN TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`SN 78-831,179, FILED 3-7-2006.
`
`BILL ,DAWE, EXAMINING ATTORNEY
`
`DiaMor (cid:9)
`
`1.1m1m1Stmgm i'ACcro.kusg trxkrawit, 006a
`
`

`
`case 1:14-cv-00099 document 1-4 filed 03/27/14 page 1 of 9
`
`Complaint
`
`EXHIBIT D
`
`

`
`case 1:14-cv-00099 document 1-4 filed 03/27/14 page 2 of 9
`
`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 85794320
`Filing Date: 12/04/2012
`
`The table below presents the data as entered.
`
`Entered
`
`SERIAL NUMBER
`
`MARK INFORMATION
`
`*MARK
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`tsrettAt, ELEMENT
`
`'I-MARK STATEMENT
`
`REGISTER
`
`jAPPLICANT INFORMATION
`
`STRATOTONE
`
`YES
`
`YES
`
`STRATOTONE
`
`•.• (cid:9)
`The mark consists of standard characters,
`without claim to any particular font, style,.
`size, or color.
`
`••• (cid:9)
`
`• „„„, .
`
`*OWNER OF MARK
`
`Westheimer Corporation
`
`sTREE'r
`
`*CITY
`
`*S'I ATE
`(Required for U.S: applicants)
`
`*COUNTRY (cid:9)
`
`*zil'IPOSTAL CODE
`(Required for U.S. applicants only)
`
`LEGAL ENTITY INFORMATION
`
`TYPE
`
`;•, STATE/COUNTRY OF INCORPORATION
`
`13451 West Commercial Avenue
`
`Illinois:
`
`United States
`
`60062
`
`corporation
`
`Illinois
`
`GOODS AND/OR SERVICES AND BASIS INFORMATION
`
`I INTERNATION CLASS
`
`*IDENTIFICATION
`
`015
`
`Guitars
`
`

`
`case 1:14-cv-00099 document 1-4 filed 03/27/14 page 3 of 9
`
`FILING BASIS
`
`SECTION 40
`
`FIRST USE ANYWHERE •DATE.. (cid:9)
`
`FIRST .USE IN COMMERCE DATE (cid:9)
`
`„••••••• (cid:9)
`• ••,••• (cid:9)
`• •••
`SPECIMEN (cid:9)
`FILE NAME(S) (cid:9)
`
`SPECIMEN DESCRIPTION
`
`ATTORNEY INFORMATION
`
`N.AME. (cid:9)
`
`•
`
`STREET
`
`CITY
`
`Si Al
`
`COUNTRY
`
`ZIP/POSTA coBE
`
`OTHER APPOINTED ATTORNEY
`
`CORRESPONDENCE INFORMATION
`
`NAME
`
`sTREwr.
`
`CITY
`
`; STATE (cid:9)
`
`" • -
`
`COUNTRY
`[ZIP/POSTAI, CODE (cid:9)
`
`FEE INFORMATI