`ESTTA674244
`ESTTA Tracking number:
`05/26/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92060319
`Defendant
`Mojo Sportswear Company Inc.
`MICHAEL K LEACHMAN
`JONES WALKER LLP
`8555 UNITED PLAZA BLVD, STE 500
`BATON ROUGE, LA 70809
`UNITED STATES
`jwtrademarks@joneswalker.com, mleachman@joneswalker.com,
`cgrand@joneswalker.com
`Motion to Suspend for Civil Action
`Michael K. Leachman
`jwtrademarks@joneswalker.com, mleachman@joneswalker.com
`/michael k. leachman/
`05/26/2015
`Motion to Suspend.pdf(1751069 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No.: 92060319
`
`In the Matter of Trademark
`Registration No.: 3,974,652
`
`For the Mark:
`Date of Registration: June 7, 2011
`
`g
`
`)
`)
`)
`)
`
`3
`§
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`) )
`
`OluKai’ LLC
`
`VS_
`
`Petitioner
`
`Mojo Sportswear Company
`Registrant
`
`MOTION TO SUSPEND
`
`WITH INCORPORATED MEMORANDUM IN SUPPORT
`
`Mojo Sportswear Company (“Mojo”), defendant herein, moves for the suspension
`
`of these proceedings before the Board pending the final determination of a civil action
`
`between the parties pending in the United States District Court for the Western District of
`
`Louisiana, Case No. 6:14-cV—03458.
`
`In support of its Motion to Suspend, Mojo
`
`represents the following:
`
`1.
`
`On November 5, 2014, OluKai filed its Petition to Cancel (the “Cancellation
`
`Proceeding”) on the basis that the mark identified in Registration No. 3,974,652 (the
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`“Mojo Hook”) allegedly creates a likelihood of confusion among the consuming public
`
`with OluKai’s marks. Mojo has denied the allegations in OluKai’s Petition to Cancel.
`
`2.
`
`On December 16, 2014, Mojo filed a Complaint for Declaratory Judgment in the
`
`United States District Court for the Western District of Louisiana (the “District Court
`
`{BI0211883}
`
`
`
`Proceeding”). Specifically, Mojo has filed for declaratory relief pursuant to 28 U.S.C. §§
`
`2201 and 2202 seeking: (1) a judgment of non-infringement with respect to its use of the
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`Mojo Hook, and (2) attorney’s fees and costs incurred in the action. A copy of Mojo’s
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`Complaint for Declaratory Judgment is attached as Exhibit A.
`
`3.
`
`OluKai was served with a certified copy of the Summons and the Complaint for
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`Declaratory Judgment on April 3, 2015 pursuant to Rule 4(h)( 1 )(A) of the Federal Rules
`
`of Civil Procedure and La. R.S.
`
`l3:3204(A). Mojo subsequently filed the Notice of
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`Service with the Western District of Louisiana on April 8, 2015. A copy of the Notice is
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`attached as Exhibit B.
`
`4.
`
`The original deadline for OluKai to file its answer in the district court litigation
`
`was April 24, 2015. However, so that the parties could explore the viability of an early
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`settlement to the dispute, Mojo consented to OluKai receiving a sixty (60) day extension
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`in which to file a responsive pleading. Thus, the answer deadline in the District Court
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`Proceeding is now June 23, 2015. See Exhibit C.
`
`5.
`
`On May 18, 2015, Mojo inquired if OluKai would consent to a Motion to Suspend
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`the Cancellation Proceeding (Cancellation No.: 92060319). As of May 18, 2015—four
`
`months after the opening of discovery~—neither party had conducted discovery beyond
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`exchanging initial disclosures as required by the TTAB’s scheduling order.
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`6.
`
`{B10211883}
`
`
`
`On May 22, 2015, OluKai
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`indicated that it would oppose Mojo’s Motion to
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`Suspend and also served a first set of written discovery requests for the cancellation.
`
`7.
`
`The Trademark Trial and Appeal Board may suspend a Board proceeding pending
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`the outcome of a civil action vvhere the final determination of the district court will have a
`
`bearing on the issues before the Board. Trademark Rule 2.117 provides in pertinent part:
`
`(a) Whenever it shall come to the attention of the Trademark Trial
`and Appeal Board that a party or parties to a pending case are
`engaged in a civil action or another Board proceeding which may
`have a bearing on the case, proceedings before the Board may be
`suspended until termination of the civil action or the other Board
`proceeding.
`
`See 37 CFR §2.ll7.
`
`8.
`
`Defendant Mojo submits that suspension of these proceedings before the
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`Trademark Trial and Appeal Board is warranted since a decision by the district court in
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`the Louisiana action will be dispositive of the issue before the Board——namely whether
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`the mark in question is likely to create confusion among the consuming public with
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`OluKai’s marks.
`
`WHEREFORE, Mojo prays that these proceedings before the Board be suspended
`
`pending the final determination of the civil action between the parties pending in the
`
`United States District Court for the Western District of Louisiana, Case No. 6:l4—cv-
`
`03458.
`
`{B10211883}
`
`
`
`s/Michael K. Leachman/
`Michael K. Leachman
`LA Bar Roll No. 30158
`Jones Walker L.L.P.
`
`8555 United Plaza Boulevard, Suite 500
`
`Baton Rouge, Louisiana 70809
`(225) 248-2420
`inleachman@joneswalker.com
`
`ATTORNEYS FOR MOJO SPORTSWEAR
`COMPANY
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Motion to Suspend
`with Incorporated Memorandum in Support has been served on O1uKai, LLC through its
`counsel of record by sending said copy on May 26, 2015 via First Class Mail, postage
`prepaid and by e—mail to:
`
`Christopher S. Tuttle
`B. Anna McCoy
`Alleman Hall McCoy Russell & Tuttle LLP
`806 SW Broadway Suite 600
`Portland, OR 97205
`UNITED STATES
`
`tuttle@ahmrt.com
`Anna@ahmrt.com
`
`s/Michael K. Leachman/
`Michael K. Leachman
`
`{B10211883}
`
`
`
`EXHIBIT A
`
`Copy of M0jo’s Complaint for Declaratory Judgment
`
`
`
`Case 6:14-cv—O3458 Document 1 Filed 12/16/14 Page 1 of 9 PagelD #: 1
`
`UNITED STATES DISTRICT COURT
`
`WESTERN DISTRICT OF LOUISIANA
`
`MOJO SPORTSWEAR
`
`COMPANY; TIMOTHY
`MOSSBERG; and RODGER
`BAGWELL
`
`Plaintiff
`
`VERSUS
`
`.
`
`OLUKAI, LLC
`Defendant
`
`*
`
`*
`*
`*
`*
`
`7’:
`
`7"
`*
`
`CIVIL ACTION NO.:
`
`JUDGE:
`
`MAG. JUDGE:
`
`>l<>l<>l<>l<>l<>l<>l<>l<>l<***>l<*>l<*>l<>l<>l<>l<*>l<>l<*>I<>l<*>l<>l<>l<>l<>l<*****>l<*>l<*>l<>l<*>l=>l<>l<>l<*>l<****>l<>l<>l<>l<>l<>l<>l<>l<>l<>l<*>l<>l<>l<>l<>l<>l<>l<
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`Plaintiffs, Mojo Sportswear Company, Timothy Mossberg, and Rodger Bagwell
`
`(collectively, “MSC”),
`following:
`
`\
`
`for their complaint against defendant, OluKai, LLC, represent
`
`the
`
`Nature of Action
`
`1.
`
`This is an action for declaratory judgment under 28 U.S.C.A. §§ 2201, 2202, seeking a
`
`judgment of non—infringement of trademarks purportedly owned by defendant O1uKai, LLC.
`
`Parties
`
`2.
`
`Mojo Sportswear Company (“Mojo Sportswear”) is a limited liability company organized
`
`under the laws of Florida with its principal place of business located at 644-C Anchors Street,
`
`Fort Walton Beach, Florida, 32548.
`
`{Bo99o5so.2}
`
`
`
`Case 6:14—cv-03458 Document 1 Filed 12/16/14 Page 2 of 9 Page|D #: 2
`
`Timothy Mossberg is an individual residing in and domiciled in Okaloosa County,
`
`Florida, and is a director of Mojo Sportswear Company.
`
`4.
`
`Rodger Bagwell is an individual residing in and domiciled in Lafayette Parish, Louisiana,
`
`and is a director of Mojo Sportswear Company.
`
`5.
`
`Upon information and belief, OluKai, LLC is a limited liability company organized under
`
`the laws of Oregon with its principal place of business at 8955 Research Drive, Irvine, California
`
`92618.
`
`Factual Background
`
`6.
`
`Avid offshore fishermen and friends Timothy Mossberg and Rodger Bagwell formed
`
`Mojo Sportswear Company in early 2010 with the desire to create a new line of apparel
`
`specifically designed for the sportfishing, watersports, and beach lifestyle markets. Mr.
`
`Bagwell’s fishing vessel—-named “Mojo”——was the inspiration for the company’s name. To
`
`reflect its sportfishing origins, the company developed the following unique logo (hereinafter the
`
`“Mojo Hook” mark) which features a fish in the shape of a hook:
`
`{"
`
`
`
`{B09905502}
`
`- 2 —
`
`
`
`Case 6:14—cv-03458 Document 1 Filed 12/16/14 Page 3 of 9 PagelD #: 3
`
`7.
`
`Mojo Sportswear filed three separate federal trademark applications in 2010 to protect its
`
`brands. Each of these applications were approved for registration by the United States Patent
`
`and Trademark Office (USPTO):
`
`Filin Date
`Goods/Services
`(025) Hats; Headwear; Dec. 15,2010
`Jackets;
`Shirts;
`Shorts;
`Tops
`
`June5,20l2
`
`Oct. 26, 2010
`
`June 7, 2011
`
`
`(025) Hats; Headwear;
`Jackets;
`Shirts;
`Shorts;
`Tops
`
`
`
`
`(025) Hats; Headwear; Dec. 15, 2010 May 31, 2011
`Jackets;
`Shirts;
`Shorts;
`To s
`
`
`
`
`
`3970788
`
`GET YOUR MOJO ON!
`
`Since 2010, Mojo Sportswear has sold a variety of clothing products and associated
`
`promotional items under the MOJO brand and the “Mojo Hook” mark including: shirts; shorts;
`
`headwear and faceguards; shoes; and outerwear. These products are sold through the company’s
`
`showroom in Destin, FL,- through select retail partners, Via telephone orders, and online at
`
`www.nio'o—gear.com.
`
`9.
`
`OluKai, LLC (“OluKai”) is a manufacturer of men’s and women’s footwear, including
`
`shoes, sandals, and boots. OluKai’s products are sold through retail partners and online at
`
`https://www.olukai.com/.
`
`1 0.
`
`Many of OluKai’s footwear products feature the following logo (hereinafter the “OluKai
`
`Hook” mark):
`
`{B0990550.2}
`
`‘
`
`~ 3 -
`
`
`
`
`
`
`
`4152588
`
`3974652
`
`
`
`Case 6:14-cv—O3458 Document 1 Filed 12/16/14 Page 4 of 9 PagelD #: 4
`
`
`
`The “OluKai Hook” mark is a variation of the ubiquitous Hawaiian makau fish hook.
`
`11.
`
`Upon information and belief, OluKai
`
`is the owner of the following United States
`
`trademark registrations for the “OluKai Hook” mark, either alone or in combination with the
`
`word mark OLUKAI:
`
`Reg. No. 3,163,969: Footwear; clothing, namely, surfwear, t-shirts, shirts, hats,
`headbands, caps, rash guards
`
`Reg. No. 3,626,900: All purpose sport bags; All-purpose carrying bags; Carry—all
`bags; Duffel bags for travel; Garment bags for travel; Leather key chains;
`Overnight bags; Roll bags; Sports bags; Travel bags; Wheeled bags
`
`Reg. No. 3,441,978: garment bags for travel; leather key chains; sports bags
`
`Reg. No. 3544582: catalogs featuring clothing, footwear and headwear; cardboard
`shipping boxes; decals; paper and cardboard banners; mounted photographs;
`unmounted photographs; posters; printed signs made of paper and cardboard;
`stationery; stickers
`
`Reg. No. 4,002,659: Cellphone cases; prerecorded compact discs featuring music;
`prerecorded video discs featuring information on fashion, lifestyle, music, sports
`and travel; protective gear, namely, protective clothing; sunglasses
`
`Reg. No. 3,422,573: Clothing, namely,
`namely, headwear
`
`t-shirts,
`
`shirts;
`
`footwear; headgear,
`
`Reg. No. 3,426,168: Clothing, namely,
`namely, headwear
`
`t—shirts, shirts;
`
`footwear; headgear,
`
`{B0990550.2}
`
`
`
`Case 6:14—cv—O3458 Document 1 Filed 12/16/14 Page 5 of 9 PagelD #: 5
`
`12.
`
`In addition to the aforementioned federal
`
`trademark registrations owned by Mojo
`
`Sportswear and OluKai for their respective hook designs, there are numerous third party uses,
`
`trademark applications, and trademark registrations of other hook marks that are used in
`
`connection with apparel products, including but not limited to the following federal registrations:
`7?»4
`
`
`
`Reg. No. 4,463,067
`
`Reg. No. 4,311,936
`
`Reg. No. 3,799,272
`
`Reg. NO. 4,560,822
`
`\.
`‘ V
`
`V ’}
`
`Reg. No. 4,509,723
`
`Reg. No. 4,446,185
`
`/.
`
`-6V=~"A".)-
`‘E-.
`‘Re,
`
`:7
`
`
`
`‘iQ‘.
`
`
`4*4°‘
`"5\.1.I)'—~'5"
`Reg No. 4,211,057
`
`Reg. No. 4,028,929
`
`13.
`
`Despite the numerous third party uses of hook marks and the conspicuous differences
`
`between the “Mojo Hook” mark and the “OluKai Hook” mark, OluKai’s counsel, Mr. Mark
`
`James, sent a cease and desist letter to Mojo Sportswear on July 22, 2014, asserting that Mojo
`
`Sportswear’s use of its “Mojo Hook” infringes OluKai’s trademark rights in the “O1uKai Hook.”
`
`A copy of the July 22 letter is attached as Exhibit A.
`
`{B09905502}
`
`14.
`
`— 5 -
`
`
`
`Case 6:14—cv-03458 Document 1 Filed 12/16/14 Page 6 of 9 PagelD #: 6
`
`On August 6, 2014, OluKai’s counsel, Mr. Mark James, sent a second cease and desist
`
`letter to Mojo Sportswear, again asserting that Mojo Sportswear’s use of its “Mojo Hook”
`
`infringes OluKai’s trademark rights in the “OluKai Hook.” A copy of the August 6 letter is
`
`attached as Exhibit B.
`
`15.
`
`On November 5, 2014, OluKai filed a Petition for Cancellation with the Trademark Trial
`
`and Appeal Board of the United States Patent and Trademark Office, seeking to cancel Mojo
`
`Sportswear’s U.S. Trademark Registration No. 3,974,652 (the ’652 Registration) for the “Mojo
`
`Hook” on the basis that the coexistence of the companies’ respective hook trademarks is likely to
`
`cause confusion, mistake and deception among consumers. A copy of the petition is attached as
`
`Exhibit C.
`
`16.
`
`As evidenced by the July 22, 2014, letter, the August 6, 2014, letter, and the November 5,
`
`2014, Petition for Cancellation, an actual case or controversy has arisen between the parties.
`
`Mojo Sportswear, and Timothy Mossberg and Rodger Bagwell as directors of Mojo Sportswear,
`
`have initiated this action for the purposes of seeking declaratory relief and resolution concerning
`
`their continued right to use the “Mojo Hook” mark.
`
`Jurisdiction and Venue
`
`17.
`
`This Court has subject matter jurisdiction under 28 U.S.C.A. §§ 1331 and 1338 because,
`
`among other things, the matter to be litigated raises one or more federal questions.
`
`18.
`
`- 6 -
`
`{BO990550.2}
`
`
`
`Case 6:14~cv~—O3458 Document 1 Filed 12/16/14 Page 7 of 9 PagelD #: 7
`
`This Court has personal jurisdiction over OluKai because: i) OluKai, upon information
`
`and belief, has sold and continues to sell OluKai-branded products in this State and" judicial
`
`district and therefore regularly and systematically transacts business in the State of Louisiana and
`
`this judicial district; and ii) a substantial part of the events or omissions giving rise to OluKai’s
`
`claims for trademark infringement occurred in the State of Louisiana since both companies’
`
`respective products are sold in this State.
`
`19.
`
`Venue is proper under 28 USCA. § l39l(b)(l) since OluKai is subject to personal
`
`jurisdiction in the Western District of Louisiana and therefore is deemed to reside in this judicial
`
`district. Venue is also proper under 28 U.S.C.A. § l39l(b)(2) since a substantial part of the
`
`events or omissions giving rise to OluKai’s claims for trademark infringement occurred in the
`
`Western District of Louisiana.
`
`COUNT I: Declaratory Judgment of Non-Infringement
`
`20.
`
`MSC incorporates by reference its allegations in paragraphs 1-19 above.
`
`21.
`
`Mojo Sportswear’s use of its “Mojo Hook” is not likely to cause confusion or mistake, or
`
`to deceive, as to the affiliation, connection, or association of Mojo Sportswear with OluKai, or as
`
`to the origin, sponsorship, or approval by OluKai of Mojo Sportswear’s products.
`
`JURY DEMAND
`
`22.
`
`MSC demands a trial by jury on all issues so triable in the Complaint.
`
`REMEDIES
`
`{B09905502}
`
`— 7 —
`
`
`
`Case 6:14-cv—O3458 Document 1 Filed 12/16/14 Page 8 of 9 PageID #: 8
`
`WHEREFORE,
`
`the plaintiffs Mojo Sportswear Company, Timothy Mossberg, and
`
`Rodger Bagwell seek a declaration that:
`
`A. The use of the “Mojo Hook” by Mojo Sportswear for its products does not infringe on
`
`any Valid rights that OluKai claims to have in the “OluKai Hook,” including any rights
`
`represented by U.S. Trademark Reg. Nos. 3,163,969, 3,626,900, 3,441,978, 3,544,852,
`
`4,002,659, 3,422,573, or 3,426,168, or any rights which may exist under the common
`
`law; and
`
`B. MSC recover from defendant its attorney's fees and costs incurred in this action; and
`
`C. The Court order all legal, equitable, general, and other relief to which MSC may be
`
`entitled.
`
`Respectfully Submitted,
`
`JONES WALKER LLP
`
`772,1/mm K..,1'2m/arm
`Donald W. Washington (#21402) (T.A.)
`Robert C. Tucker (2152)
`Chad A. Grand (29885)
`Michael K. Leachman (3 015 8)
`JONES WALKER LLP
`
`8555 United Plaza Boulevard, 5th Floor
`
`Baton Rouge, Louisiana 70809
`_ Telephone: (225) 248-2000
`Facsimile: (225) 248-2010
`
`ATTORNEYS FOR PLAINTIFFS, MOJO
`
`SPORTSWEAR COMPANY, TIMOTHY
`MOSSBERG, AND RODGER BAGWELL
`
`{B0990550.2}
`
`.
`
`— 8 —
`
`
`
`Case 6:14—cv-03458 Document 1 Filed 12/16/14 Page 9 of 9 Page|D #: 9
`
`{B0990550.2}
`
`~ 9 —
`
`
`
`Case 6:14—cv—O3458 Document 1-1 Filed 12/16/14 Page 1 of 4 Page|D #: 10
`
`EXHIBIT A
`
`
`
`Case 6:14—cv—O3458 Document 1-1 Filed 12/16/14 Page 2 of 4 PagelD #: 11
`
`.mm..a1nte;snm1.ur:rsgom
`
`Pacific Northwest Office
`805 SW Broadway, Suite 2440
`Portland, Oregon 97205
`Telephone: 503/419-3000 ~ Facsimile: 503/419-3001
`
`Wrlter’s Direct Dial: 503/419-3012
`
`July 22, 2014
`
`VIA UPS AND EMAIL
`
`Timothy L. Mossberg, President
`Mojo Sportswear Company-
`PO Box 400
`
`Mary Esther, FL 32569
`
`1nossherg@mojo—gear.com
`
`’ Re:
`
`Unapproved Use of OluKai Trademark
`
`Dear Mr. Mossberg:
`
`Our firm represents OluKai, LLC (“0luKaz'”). O1uKai is the owner of the famous
`O1uKai hook trademark shown below (the “0luKai.HooIc"’). The OluKai Hook is used
`throughout the world in connection with a wide variety of goods, with a focus on casual
`and outdoor footwear. The O1uKai Hook was registered with the United States Patent and
`Trademark Office in connection with footwear, clothing and headwear under Registration
`No. 3163969 on October 24, 2006 and Registration No. 3422573 on May 06, 2008. The
`mark is also registered in the US in connection with other goods,
`including bags,
`sunglasses, key chains, cell phone cases, catalogs, stickers and posters, under Registration
`Nos. 3626900, 3441978, 3544582, 4002659 and has been registered in a number of other
`countries throughout the world.
`«
`_
`
`
`
`OLUKAI HOOK DESIGN
`
`
`
`Case 6:14-cv-03458 Document 1-1 Filed 12/16/14 Page 3 of 4 Page|D #: 12
`
`Timothy L. Mossberg, President
`Mojo Sportswear Company
`Page 2
`
`We are writing in connection with Mojo Sportswear Company’s (“M919”)
`infringing use of a hook design which is confusingly similar to the OluKai Hook on
`various goods, including shoes (the “ ”). Below please see photos of O1uKai
`and Mojo footwear products for comparison:
`
`
`
`The Mojo Hook appears to be virtually identical to the O1uKai Hook. O1uKai, as
`the owner of the cited United States trademark registrations for the OluKai Hook, is
`entitled to solo and exclusive use of that mark in connection with footwear and other
`goods. The O1uKai Hook is among OluKai’s most valuable assets and OluKai
`is
`determined to protect its marks from infringing usage to the fullest extent of the law.
`
`OluKai has been using the O1uKai Hook in connection with footwear for over 9
`years, during which time the mark has acquired substantial good will among OluKai’s
`customers.
`It appears that Mojo was formed in 2009 and first registered in the State of
`Florida, long after O1uKai’s registration of its marks in the US.
`
`Your use of Mojo Hook‘ as shown in the photo above will create a likelihood of
`confusion, that is, consumers are likely to be misled into believing that Mojo goods
`bearing the Mojo Hook are in some manner authorized, licensed,‘ or otherwise associated
`with OluKai. Use of the Mojo Hook in this manner is an infringing use of O1uKai’s
`registered trademark and will dilute our client’s valuable trademark rights.
`
`is in violation of the Lanham Act prohibiting trademark
`Mojo’s conduct
`infiingement, and has likely caused, and is likely to continue to cause, our client to suffer
`substantial damages. We therefore demand that Mojo cease any and all use of the Mojo
`Hook or any confusingly similar variations thereof in connection with footwear and that it
`provide us with written assurances that it will not use such mark in connection with
`footwear in the future.
`
`
`
`Case 6:14-cv~O3458 Document 1-1 Filed 12/16/14 Page 4 of 4 Page|D #: 13
`
`Timothy L. Mossberg, President
`Mojo Sportswear Company
`Page 3
`
`Although we trust that you will respect the intellectual property rights of our client,
`and we look‘ forward to resolving this matter amicably, please be advised that O1uKai is
`prepared totake all appropriate legal steps to protect its rights.
`-
`
`OluKai requests that you respond to this letter within ten (10) business days of the
`above date.
`
`Please feel free to contact me if you have any questions.
`
`Very truly yours,
`
`WHITE SUMMERS CAFFEE & JAMES LLP
`
`
`
`cc:
`
`Jim Harris, CEO, OluKai LLC
`Scott Davidson, White Summers Caffee & James
`
`
`
`Case 6:14—cv—O3458 Document 1-2 Filed 12/16/14 Page 1 of 5 Page|D #: 14
`
`EXHIBIT B
`
`
`
`Case 6:14-cv—O3458 Document 1-2 Filed 12/16/14 Page 2 of 5 PagelD #: 15
`
`www.white~summers.com
`
`805 SW Broadway, Suite 2440
`.
`Portland, Oregon 97205
`Telephone: 503/419-3000 ~ Facsimile: 503/419-3001
`
`Pacific Northwest Office
`
`Wrlter’s Direct Dial: 503/419-3012
`
`August 6, 2014
`
`VIA UPS AND EMAIL
`
`Timothy L. Mossberg
`Mojo Sportswear Company
`644C Anchors St.
`
`Fort Walton Beach, FL 32548
`
`Re:
`
`Unapproved Use of 0luKai Trademark
`
`Dear Mr. Mossberg:
`
`Thank you for your call on July 25 in response to our July 22 letter regarding Mojo
`Sportswear Company’s (“M_q1'g_”) use of the Mojo hook design (the “Main Hook”) on shoes
`and clothing.
`In your follow up email, you stated that Mojo does not plan to use a solitary
`hook design on top of shoes in its next season’s shoe line. We appreciate this. Attached to
`that email you included two photos of proposed shoe designs that featured the Mojo Hook
`adjacent to the phrase “Mojo”. The folks at O1uKai, LLC (“0luKai”) have had a chance to
`carefully consider the use of the Mojo Hook as shown in the photos have come to the
`following conclusion:
`
`The OluKai hook trademark (the “0luKai Hook”) is one of OluKai’s most valuable
`assets — for use with footwear, clothing and other products, as documented by its 6 registered
`US trademarks and multiple registered international trademarks. The Mojo Hook is virtually
`identical to the OluKai Hook and will create a likelihood of confusion among consumers,
`such that they will likely be misled into believing that Mojo goods bearing the Mojo Hook
`are in some manner authorized, licensed, or otherwise associated with O1uKai. Although
`OluKai has great respect for the Mojo brand and product line, it unfortunately must take the
`position that Mojo must phase out use of the Mojo Hook in connection with any of the goods
`identified in O1uKai’s 6 cited US registrations. OluKai acknowledges that its primary
`business is footwear, but it does produce clothing and other goods bearing the O1uKai Hook
`and the fact that its use of the OluKai Hook in connection with such non~footwear related
`goods is protected under Federal trademark law is a major factor driving 01uKai’s value for
`stockholders, investors and prospective business partners.
`
`
`
`Case 6:14-cv-03458 Document 1-2 Filed 12/16/14 Page 3 of 5 PagelD #: 16
`
`Timothy L. Mossberg, President
`Mojo Sportswear Company
`Page 2
`
`The folks at OluKai have asked me to convey that they really do respect the Mojo
`business. They understand that we are taking a tough position here and wish to make this as
`painless as possible for Mojo. At the end of the day, however, O1uKai needs to protect its
`trademarks and this means that the Mojo Hook cannot be used on any goods protected by
`OluKai’s trademarks.
`
`The goods protected by its registered marks include:
`
`sweatshirts,
`t~shirts, shirts,
`0 Reg. No. 3163969: Footwear; clothing, namely, surfwear,
`jackets, rain coats, rain trousers, rain suits, wind resistant jackets, parkas, vests, anoraks, ski
`bibs, gloves, mittens, underwear, socks, hats, headbands, caps, ski suits, gaiters, belts, skirts,
`shorts, pants, trousers, wetsuits, drysuits, wet suits for water~skiing, rash guards, swim
`trunks, swim caps, swim wear, and water socks
`
`0 Reg. No. 3626900: All puipose sport bags; All~pu1pose carrying bags; Carry~all bags; Duffel
`bags for travel; Garment bags for travel; Leather key chains; Overnight bags; Roll bags;
`.Sports bags; Travel bags; Wheeled bags
`
`0 Reg. No. 3441978: garment bags for travel; leather key chains; sports bags
`
`0 Reg. N0. 3544582: catalogs featuring clothing, footwear and headwear; cardboard shipping
`boxes; decals; paper and cardboard banners; mounted photographs; unmounted photographs;
`posters; printed signs made of paper and cardboard; stationery; stickers
`
`0 Reg. No. 4002659: Cellphone cases; prerecorded compact discs featuring music;
`prerecorded video discs featuring information on fashion, lifestyle, music, sports and travel;
`protective gear, namely, protective clothing; sunglasses
`
`0 Reg, No. 3422573: Clothing, namely, t-shirts, shirts; footwear; headgear, namely, headwear.
`
`OIuKai must demand that Mojo not use the Mojo Hook in any capacity on footwear,
`beginning with next season’s shoe line. This includes use of the Mojo Hook in connection
`with the phrase “Moj 0”.
`
`OluKai would like to negotiate a reasonable phase out schedule for use of the Mojo
`Hook in connection with clothing, caps, stickers and other products. We understand that this
`will be a major change for Mojo Sportswear and wish to come to an understanding that ends
`Mojo’s use of the Mojo Hook in a way that minimizes the financial impact on Mojo’s
`business.
`
`We are aware that the Mojo Hook is registered under US Trademark Registration
`No. 3974652. However, upon close examination of the trademark documents available on
`the USPTO’s TSDR database, it is clear that the examining attorney for the Mojo Hook
`trademark application perforrned an incomplete design code search which excluded the
`
`
`
`Case 6:14—cv~O3458 Document 1-2 Filed 12/16/14 Page 4 of 5 Page|D #: 1?
`
`Timothy L. Mossberg, President
`Mojo Sportswear Company
`Page 3
`
`OluKai registrations for footwear, clothing and headvs/ear, OluKai’s registrations were
`assigned the following design search codes:
`
`26.03.03 - Incomplete ovals; Ovals, incomplete
`26.03.21 - Ovals that are completely or partially shaded
`26.03.28 - Miscellaneous designs with overall oval shape, including amoeba—like
`shapes and irregular ovals; Oval shape (miscellaneous overall shape)
`14.03.25 — Brackets, fixture; Nozzles, hose; Magnets; Hooks, Utility (hardware)
`
`9
`0
`
`0
`
`The examining attorney for the Mojo Hook application, however, only searched
`within the following design codes:
`
`0
`0
`0
`
`21.03.08 ~ Fishing rods, tackle, nets, hooks and lures
`26.17.09 ~ Curved line(s), band(s) or bar(s)
`24.15 - Arrows
`
`As a result, the USPTO examining attorney did not see or consider the OluKai Hook
`registrations when making her determination that no conflicting prior marks existed that
`would bar registration of the Mojo Hook. As- the marks are virtually identical, we are
`confident that we can successfully petition the US Trademark Trial and Appeal board to
`cancel the Mojo Hook registration on the basis of priority and likelihood of confusion under
`Trademark Act section 2(d) if we determine it is necessary for purposes of ending Mojo’s
`use of the Mojo Hook.
`
`Although we trust that you will respect the intellectual property rights of our client,
`and we look forward to resolving this matter amicably, please be advised that OluKai is
`prepared to take all appropriate legal steps to protect its rights.
`
`O1uKai requests that you respond to this letter within ten (10) business days of the
`above date.
`
`
`
`Case 6:14—cv-03458 Document 1-2 Filed 12/16/14 Page 5 of 5 PageID #: 18
`
`Timothy L. Mossberg, President
`Mojo Sportswear Company
`Page 4
`
`Please feel free to contact me if you have any questions.
`
`Very truly yours,
`
`WHITE SUMMERS CAFFEE & JAMES LLP
`
`
`
`
` Mafk B. James
`
`cc:
`
`Jim Harris, CEO, O1uKai LLC
`Scott Davidson, White Summers Caffee & James
`
`
`
`Caee 6:'14—cv-03458 Document 1-3 Filed 12/16/14 Page 1 of 7 Page|D #: 19
`
`EXHIBIT C
`
`
`
`Case 6:14—cv-03458 Document 1-3 Filed 12/16/14 Page 2 of 7 PagelD #: 20
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Reg. No. 3,974,652
`
`Cancellation No.
`
`)
`)
`)
`)
`)
`
`) )
`
`)
`
`OluKai, LLC,
`
`«
`
`V.
`
`Petitioner,
`
`Mojo Sportswear Company Inc.
`
`.
`
`Registrant.
`
`Commissioner for Trademarks
`Trademark Trial and Appeal Board
`US. Patent and Trademark Office
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`PETITIONTO CANCEL
`
`Petitioner, OluKai, LLC (hereinafter “Petitioner”), an Oregon limited liability company
`
`with its principal place of business at 8955 Research Drive, Irvine, California 92618, believes
`».
`
`
`
`(“Registrant’s
`
`that it is and will be damaged by the continued registration of the mark
`
`Mark”), U.S. Registration No. 3,974,652 (“the Registration”), owned by Registrant, Mojo
`
`Sportswear Company Inc. (hereinafter “Registrant”), which on information and belief is a
`
`Florida corporation with a principal place of business at 644C Anchors Street, Fort Walton
`
`Beach, Florida 32548. Petitioner therefore petitions to cancel the Registration.
`
`As grounds for this Petition, it is alleged that:
`
`1.
`
`Petitioner has been and continues to be engaged in the business of designing,
`
`marketing and selling footwear, apparel, surfwear, headgear, bags, eyewear, accessories, and
`
`related goods and services in the United States and abroad.
`
`2.
`
`Petitioner promotes and sells its goods through various channels and distribution
`
`networks, including retail stores, online stores, and other distribution networks.
`
`Page 1
`
`—
`
`PETITION TO CANCEL; Our Ref. OLUl4401OPP
`
`
`
`Case 6:14—cv—O3458 Document 1-3 Filed 12/16/14 Page 3 of 7 Page|D #: 21
`
`3.
`
`Since at least as early as December 15, 2005, Petitioner has used and continues to
`
`use in interstate commerce the mark wane “Hook Mark”), solely and in combination with
`
`the word OLUKAI,
`
`in connection with the sales and promotion of Petitioner’s goods and
`
`services. Petitioner owns and uses the Hook Mark to identify footwear, apparel, surfwear,
`
`headgear, bags, eyewear, accessories, and other related goods and services originating from the
`
`Petitioner in commerce.
`
`4.
`
`Petitioner owns several United States trademark registrations for the Hook Mark.
`
`A list of Petitioner’s United States trademark registrations for the Hook Mark, alone or in
`
`combination with the mark OLUKAI, is below.
`
`Registration
`Date
`
`Class
`‘
`
`Goods
`
`
`October 24’ 2006
`M21376, 2008
`
`V
`
`25
`
`25
`
`May13’2008
`June 3,2008
`
`Footwear; clothing, namely, surfwear,
`
`t—shirts,
`
`shirts, hats, headbands, cas,rash uards
`Clothing,
`namely,
`t-shirts,
`shirts;
`footwear;
`headgear, narnel
`, headwear
`Clothing,
`namely
`t~shirts,
`headgear, namel
`, headwear
`Garment bags for
`travel;
`
`shirts;
`footwear;
`leather key chains;
`
`
`
`
`
`
`
`
`Registration
`Number
`
`3’163’969
`3,422,573
`
`3,426,168
`3,441,978
`
`
`
`
`
`3’544’582
`
`3,626,900
`
`4,002,659
`
`sports bas
`and
`footwear
`clothing,
`featuring
`Catalogs
`cardboard shipping boxes; decals;
`headwear;
`
`V
`paper
`and
`cardboard
`banners; mounted
`
`
`
`December 9’ 2008
`photographs; unmounted photographs; posters;
`printed signs made of paper and cardboard;
`
`
`stationer ;stickers
`All purpose sport bags; A1l~purpose carrying
`
`bags; Carry~all bags; Duffel bags for
`travel;
`
`Garment bags for travel; Leather key chains;
` May 26, 2009
`Overnight bags; Roll bags; Sports bags; Travel
`
`bags; Wheeled bags
`Cellphone
`cases; prerecorded compact discs
`featuring music;
`prerecorded
`video
`discs
`featuring information on fashion, lifestyle, music,
`
`sports
`and travel; protective gear, namely,
`
`rotective clothing; sun lasses
`
`
`
`
`
`
`
`
`
`
`
`
` July 26, 2011
`
`
`Page2 ~
`
`PETITION TO CANCEL; Our Ref. OLUl440lOPP
`
`
`
`Case 6:14—cv—O3458 Document 1-3 Filed 12/16/14 Page 4 of 7 PagelD #: 22
`
`5.
`
`Petitioner also has common law rights in the Hook Mark for use in connection
`
`with footwear, apparel, surfwear, headgear, bags, eyewear, accessories, and related goods and
`
`services.
`
`6. '
`
`Petitioner has used and continues to use the Hook Mark and the goods in
`
`connection therewith have been popular and the subject of significant advertising and
`
`promotional activities.
`
`7.
`
`Petitioner’s use of the Hook Mark has been Valid and continuous since the dates
`
`of first use and Petitioner has not abandoned the Hook Mark. The Hook Mark is symbolic of
`
`extensive goodwill and consumer recognition built up by Petitioner through substantial amounts
`
`of time and effort in advertising and promotion. The Hook Mark identifies and distinguishes
`
`Petitioner’s goods and services from the goods and services of others, and identifies the source
`
`and origin thereof to both the trade and the public.
`
`8.
`
`Prior to Registrant’s adoption of its mark, Petitioner’s Hook Mark has been used
`
`and promoted in such a way as to create a public perception of the Hook Mark as an indication of
`
`source.
`
`9.
`
`Notwithstanding Petitioner’s rights in and to its Hook Mark, Registrant, on
`,«
`
`October 26, 2010, filed application Ser. No. 85/161,951 for registration of the mark
`
`
`
`Registrant’s application was registered on the Principal Register on June 7, 2011 as Reg. No.
`
`3,974,652 for the following