Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA665165
`ESTTA Tracking number:
`04/06/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92060579
`Plaintiff
`adidas America, Inc.
`R CHARLES HENN JR
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 PEACHTREE STREET, STE 2800
`ATLANTA, GA 30309
`UNITED STATES
`chenn@ktslaw.com, chooker@ktslaw.com, nchollet@ktslaw.com, lcrumb-
`ley@ktslaw.com, tmadmin@ktslaw.com
`Motion to Suspend for Civil Action
`R. Charles Henn Jr.
`chenn@ktslaw.com, chooker@ktslaw.com, nchollet@ktslaw.com, lcrumb-
`ley@ktslaw.com, tmadmin@ktslaw.com
`/R. Charles Henn Jr./
`04/06/2015
`Motion to Suspend Proceedings w Exhibits.pdf(3571392 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Cancellation No. 92060579
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`Supplemental Reg. Nos.:
`3,629,011 and 3,633,365
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`adidas AMERICA, INC.,
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`Petitioner,
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`ROBERT M. LYDEN,
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`Respondent.
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`PETITIONER’S MOTION TO SUSPEND
`PROCEEDINGS PURSUANT TO 37 C.F.R. § 2.117(a)
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`Petitioner adidas America, Inc. (“adidas”) respectfully requests that the Board suspend
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`this proceeding pursuant to 37 C.F.R. § 2.117(a). Respondent Robert M. Lyden (“Respondent”)
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`initiated a civil action against adidas in the United States District Court for the District of Oregon
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`(the “Civil Action”).1 adidas recently asserted a Counterclaim in the Civil Action that
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`Supplemental Registration Nos. 3,629,011 and 3,633,365 owned by Respondent should be
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`cancelled.2 Thus, in addition to the Civil Action involving the same parties, it involves the same
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`issues that are before the Board in this Cancellation proceeding. As such, the Civil Action will
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`have a bearing on the case, and the Board should suspend proceedings in this proceeding until
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`termination of the Civil Action.
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`1 A copy of Respondent’s Amended Complaint in the Civil Action, filed on February 27,
`2015, is attached as Exhibit 1.
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` 2
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` A copy of adidas’s Answer, Affirmative Defenses, and Counterclaims in the Civil
`Action is attached as Exhibit 2.
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`

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`I.
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`BACKGROUND
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`Respondent initiated the Civil Action against adidas and several of adidas’s retail
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`distributors on October 8, 2014. In addition to various patent-related claims, Respondent’s
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`original complaint asserted six trademark-related claims, including claims for: (1) federal
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`trademark infringement, (2) federal unfair competition, (3) unfair and deceptive trade practices,
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`(4) common law trademark infringement and unfair competition, (5) federal trademark dilution,
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`and (6) state trademark dilution and injury to business reputation. Each of these six trademark-
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`related claims are premised, inter alia, on Respondent’s assertion that he owns protectable
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`trademark rights in the designs depicted in Registration Nos. 3,629,011 and 3,633,365 on the
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`Supplemental Register (the “Designs”), depicted below:
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`Supp. Reg. No. 3,629,011
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`Supp. Reg. No. 3,633,365
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`On December 22, 2015, adidas filed the present Petition to Cancel Registration Nos.
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`3,629,011 and 3,633,365 because Respondent has not made bona fide use of the Designs or has
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`abandoned any trademark rights ever possessed in the Designs, and because certain material
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`misrepresentations made in the course of obtaining the these Registrations constitute fraud.
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`That same day, adidas and its co-defendants moved to dismiss the six trademark claims in
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`the Civil Action. On February 10, 2015, the District Court granted that motion, dismissing
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`Respondent’s federal and state trademark dilution claims with prejudice, and dismissing the
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`2
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`remaining four trademark-related claims without prejudice.3 On February 27, 2015, Respondent
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`filed an Amended Complaint, reasserting the four trademark-related claims that had been
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`dismissed without prejudice. On March 17, 2015, adidas and its co-defendants filed their
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`Answer, Affirmative Defenses, and Counterclaims in the Civil Action. Among other things, the
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`Counterclaims seek cancellation of Registration Nos. 3,629,011 and 3,633,365 on the very same
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`grounds asserted in the present Cancellation proceeding. See Ex. 2 at 37-42 ¶¶ 30-42, 49-54.
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`In short, the Civil Action involves the same parties and the identical issues currently
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`before the Board in this Cancellation proceeding.
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`II.
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`ARGUMENT
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`The Board should grant this motion to suspend because the Civil Action has a clear
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`bearing on the issues in the present proceeding, namely, whether Registration Nos. 3,629,011
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`and 3,633,365 are valid. The Board has the power to suspend proceedings in favor of a pending
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`civil action pursuant to 37 C.F.R. § 2.117(a), which provides:
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`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.
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`The Board regularly exercises this power in the interests of promoting judicial economy and
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`conserving resources. See Vining Indus., Inc. v. Libman Co., No. 23,546, 1996 TTAB LEXIS
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`455, at *6 (T.T.A.B. July 16, 1996) (suspending Board proceedings “in the interest of judicial
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`economy and consistent with [the Board’s] inherent authority to regulate [its] proceedings to
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`avoid duplicating the effort of the court and the possibility of reaching an inconsistent
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`conclusion”); Tokaido v. Honda Assocs., Inc., 179 U.S.P.Q. 861, 862 (T.T.A.B. 1973)
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`3 A copy of the February 10, 2015 Order is attached as Exhibit 3.
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`3
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`(“[N]otwithstanding the fact that the Patent Office proceeding was the first to be filed, it is
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`deemed to be the better policy to suspend proceedings herein until the civil suit has been finally
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`concluded.”); Townley Clothes, Inc. v. Goldring, Inc., 100 U.S.P.Q. 57, 58 (Comm’r Pat. &
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`Trademarks 1953) (“[I]t would not seem to be in the interests of ‘judicial economy’ for the
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`parties to proceed in two forums . . . .”).
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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 may have a bearing on the issues before the Board.”
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`Trademark Trial and Appeal Board Manual of Procedure § 510.02(a) (3d ed. 2011). Here, the
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`outcome of the cancellation counterclaims in the Civil Action will have a direct bearing on the
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`outcome of this proceeding because the pending civil action involves the very same issues,
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`namely the validity Respondent’s supplemental registrations. The District Court’s determination
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`of the issues relating to cancellation certainly will “have a bearing on the issues before the
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`Board.” See Tokaido, 179 U.S.P.Q. at 862 (“[W]hile a decision by the District Court would be
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`binding upon the Patent Office, a decision by the Trademark Trial and Appeal Board would only
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`be advisory in respect to the disposition of the case pending in the District Court.”); see also Sam
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`S. Goldstein Indus., Inc. v. Botany Indus., Inc., 301 F. Supp. 728, 731, 163 U.S.P.Q. 442, 443
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`(S.D.N.Y. 1969) (noting that PTO “findings would not be res judicata in this [civil action]” and
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`denying motion to stay district court proceedings); New Orleans Louisiana Saints LLC v. Who
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`Dat? Inc., 99 U.S.P.Q.2d 1550, 1552 (T.T.A.B. 2011) (“A decision by the district court may be
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`binding on the Board whereas a determination by the Board as to a defendant's right to obtain or
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`4
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`retain a registration would not be binding or res judicata in respect to the proceeding pending
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`before the court.”).4
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` “It is standard procedure for the Trademark Board to stay administrative proceedings
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`pending the outcome of court litigation between the same parties involving related issues.” 6 J.
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`Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:47 (4th ed. 2008); see
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`also Trademark Rule 2.117(a); TBMP § 510.02(a) (3d ed. rev. 2011). The present civil court
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`litigation involves the same parties and issues, and as such, adidas asks the Board to follow that
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`“standard procedure.”
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`III. CONCLUSION
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`For the foregoing reasons, adidas respectfully submits that this proceeding should be
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`suspended pending disposition of the Civil Action.
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`DATED: April 6, 2015
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`4 Accord Kearns-Tribune, LLC v. Salt Lake Tribute Publ’g Co., No. 151,843, 2003 WL
`22134916, at *3 (T.T.A.B. Sept. 11, 2003) (suspending Board proceeding and noting that
`“[s]uspension of a Board case is appropriate even if the civil case may not be dispositive of the
`Board case, so long as the ruling will have a bearing on the rights of the parties in the Board
`case.”); Farah v. Topiclear Beauty Prods., Inc., No. 151,334, 2003 WL 22022077, at * 5
`(T.T.A.B. Aug. 21, 2003) (granting suspension where civil action and Board action would
`“involve common legal and factual issues” and noting that “[s]uspension would avoid the
`undesirable result of the parties litigating the same issue in two forums, with potentially
`inconsistent results . . . .”); SoftBelly’s, Inc. v. Ty, Inc., No. 150,771, 2002 WL 1844210, at *2
`(T.T.A.B. Aug. 13, 2002) (“[w]henever 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 . . . which
`may have a bearing on the case, proceedings before the Board may be suspended until
`termination of the civil action . . . .”). Although these cases are not precedential, they are
`persuasive examples of the circumstances similar to those in this case in which the Board
`appropriately suspended its proceedings pending the outcome of separate civil actions.
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`5
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`

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`Respectfully submitted,
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`KILPATRICK TOWNSEND & STOCKTON LLP
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`By: /s/ R. Charles Henn Jr.
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`R. Charles Henn Jr.
`Charles H. Hooker III
`1100 Peachtree Street NE, Suite 2800
`Atlanta, Georgia 30309
`Telephone: (404) 815-6500
`Facsimile: (404) 815-6555
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`Attorneys for Petitioner
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`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing MOTION has been served
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`on Respondent Robert M. Lyden by e-mailing a true and accurate copy to
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`robertlyden@comcast.net and by mailing a true and correct copy by First Class U.S. Mail,
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`postage prepaid, and addressed as follows:
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`Robert M. Lyden
`18261 Fallatin Loop
`Aloha, Oregon 97007
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`Dated: April 6, 2015
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`/s/ Charles H. Hooker III
`KILPATRICK TOWNSEND & STOCKTON LLP
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`Charles H. Hooker III
`1100 Peachtree Street NE, Suite 2800
`Atlanta, Georgia 30309
`Telephone: (404) 815-6500
`Facsimile: (404) 815-6555
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`Attorney for Petitioner
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`7
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`EXHIBIT 1
`EXHIBIT 1
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`

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`Case 3:14-cv-01586-MO Document 89 Filed 02/27/15 Page 1 of 77
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`Robert M. LydenzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`ProSe
`18261 S.W. Fallatin Loop
`Aloha, OR 97007
`E-mail: robertlyden@comcast.net
`Phone: (971) 219-1200
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`UNITED STATES DISTRICT COURT
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`DISTRICT OF OREGON
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`Portland Division
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`Robert M. Lyden,
`an individual,
`Plaintiff,
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`v.
`
`No. 3:14-CV-1586 MO
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`AMENDED COMPLAINT
`FOR TRADEMARK
`AND PATENT INFRINGEMENT
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`DEMAND FOR JURY TRIAL
`
`adidas America, Inc., a Delaware corporation,
`adidas AG, a German entity,
`adidas International Marketing B.V., a Dutch entity,
`The Finish Line, Inc., an Indiana corporation,
`Foot Locker, Inc., a New York corporation, and,
`Dick's Sporting Goods, Inc., a Delaware corporation,
`Defendants.
`
`1
`AMENDED COMPLAINT FOR TRADEMARK AND PATENT INFRINGEMENTzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`

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`Case 3:14-cv-01586-MO Document 89 Filed 02/27/15 Page 2 of 77
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`For his Amended Complaint against adidas America, Inc., adidas AG, and adidas
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`International Marketing B.V. (hereinafter the adidas entities collectively "adidas" or
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`"adidas Defendants"), and also The Finish Line, Inc., Foot Locker, Inc., and Dick's
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`Sporting Goods, Inc. (hereinafter "Retailer Defendants," and in combination with the
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`adidas Defendants collectively the "Defendants"),
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`the Plaintiff Robert M. Lyden
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`("Lyden") alleges as follows:
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`NATURE OF THE CASE
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`1.
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`This is an action at law and in equity for trademark infringement, unfair
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`competition, and unfair business practices, arising under the Trademark Act of 1946, 15
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`U.S.c. §§ 1051 et seq. (2009) ("Lanham Act); the unfair business practices and unfair
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`and deceptive trade practices acts of several states; and the cornmon law.
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`2.
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`Further, this is also a patent infringement action brought under the patent
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`laws of the United States, including 35 U.S.c. §§ 271, 281, and 283-85.
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`PARTIES
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`3.
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`In connection with previous Case No. 3:10-cv-1249-BR filed on October
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`12,2010, some of the named adidas Defendants did not initially wish to accept service
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`and responsibility for the complaint, but Lyden and the adidas Defendants later reached
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`an agreement on the subject and caused to be filed "Stipulation re: Dismissal of
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`Defendant adidas International B.V. and Related Discovery Issues," as shown in attached
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`Exhibit 26, provided herewith.
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`AMENDED COMPLAlNT FOR TRADEMARK AND PATENT INFRINGEMENT
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`2
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`

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`Case 3:14-cv-01586-MO Document 89 Filed 02/27/15 Page 3 of 77
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`4.
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`Likewise,
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`the adidas Defendants adidas AG and adidas International
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`Marketing B.V. have not wished to accept service and responsibility as a party to the
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`present Compliant, and for this reason the information contained in Paragraphs 5-31
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`below is being provided to this Court.
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`5.
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`On information and belief, Defendant adidas AG is a joint stock company
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`organized and existing under the laws of the Federal Republic of Germany, having its
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`office and principal place of business at Postach 11230, D-91072 Herzogenaurach,
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`Federal Republic of Germany.
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`6.
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`On information and belief, Defendant adidas America, Inc. is a
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`corporation wholly owned by adidas North America, Inc., which is a non-public
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`Delaware corporation, and adidas North America, Inc. is wholly owned by adidas AG
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`which has no parent corporation, and no publicly held corporation owns 10% or more of
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`the stock of adidas AG, as shown in attached Exhibit 28, provided herewith.
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`7.
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`adidas America, Inc. has its principal place of business at 5055 N. Greeley
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`Avenue, Portland, Oregon 97217.
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`In this regard, according to the Defendants adidas
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`America, Inc. allegedly manages U.S.-based operations on behalf of adidas AG,
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`including sales, brand marketing, product marketing, product design, public relations,
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`distribution, enforcement, and licensing of and for adidas-branded merchandise.
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`8.
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`On information and belief, Defendant adidas International Marketing
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`B.V. is a limited liability company that operates as a subsidiary of adidas AG with a
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`principal place of business at Atlas Complex, Africa Building, Hoogoorddreef9a,
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`1101
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`BA Amsterdam Z-O, The Netherlands.
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`AMENDED COMPLAINT FOR TRADEMARK AND PATENT INFRINGEMENT
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`3
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`Case 3:14-cv-01586-MO Document 89 Filed 02/27/15 Page 4 of 77
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`9.
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`On information and belief, Defendant adidas AG is the parent company to
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`adidas America, Inc. and adidas International Marketing B.V. and substantially controls
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`the relevant acts of these and other adidas entities.
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`In particular, adidas AG provides
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`substantial guidance and direction regarding material decisions relating to research,
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`development, and introduction of product lines into the United States marketplace,
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`including decisions relating to making and selling the adidas Springblade, and also the
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`adizeo Primeknit Boost athletic shoes.
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`10.
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`On information and belief, during all relevant times, Defendant adidas AG
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`has had and continues to have substantial, systematic and continuing business operations
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`in the United States, and in particular, using as a place of business at least the
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`headquarters of adidas America, Inc. in Portland, Oregon.
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`11.
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`On information and belief, Defendants adidas AG and adidas International
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`Marketing B.V.'s officers, directors and executive management personnel have regularly
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`traveled to the United States and some have been stationed for extended periods of time
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`at the offices of adidas America, Inc. here in Portland, Oregon, during the period of
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`infringement complained of herein.
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`12.
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`On information and belief, a significant number of employees working in
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`lor holding executive positions at adidas America,
`design, research and development, andzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
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`Inc. are employees of adidas AG as indicated by their contracts and/or the origination and
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`method of their receiving financial compensation, and despite the fact that many of these
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`employees are U.S. citizens who reside here in the greater metropolitan area of Portland,
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`Oregon.
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`AMENDED COMPLAINT FOR TRADEMARK AND PATENT INFRINGEMENT
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`4
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`Case 3:14-cv-01586-MO Document 89 Filed 02/27/15 Page 5 of 77
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`13.
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`On information and belief, Defendant adidas AG has used its and adidas
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`America, Inc.'s staff and facilities in Portland, Oregon, to design, develop, and test the
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`adidas Springblade and adizero Primeknit Boost athletic shoes.
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`14.
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`On information and belief, the adidas Defendants have all availed
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`themselves in this District Court venue and brought numerous legal actions relating to
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`intellectual property therein: As shown in Exhibit 36, which shows results from an
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`inquiry and search by Lyden within this Judicial District using PACER and the key word
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`search term "adidas"; Exhibit 37 which is an excerpt of the Complaint
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`in Case No. 3:12-
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`cv-00859 including paragraphs 8-9 therein, and showing both adidas AG and adidas
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`America, Inc. as being plaintiffs in this Court; Exhibit 38 which is a copy of a portion of
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`the complaint
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`in Case No. 00-cv-1392-AS in this Court, showing the parent adidas
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`entities adidas-Salomon AG, adidas International, B.V., and also adidas America, Inc. as
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`plaintiffs in this Court; Exhibit 39 which is a copy of a portion of the complaint and
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`exhibits in Case No.3: 12-cv -1779 in this Court, showing adidas America, Inc. and adidas
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`AG as plaintiffs, and numerous trademarks assigned to adidas AG, adidas-Salomon AG,
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`but also two trademarks Reg. No. 3,063,742 and Reg. No. 3,063,745 assigned to adidas
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`International Marketing, B.V., and all of these Exhibits 36-39 are attached and provided
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`herewith.
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`15.
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`Defendant adidas International Marketing B.V. holds intellectual property
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`rights in its own name, including the adidas patents identified below. On information and
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`belief, adidas International Marketing B.V. directly or indirectly licenses those rights,
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`including the rights to the adidas patents identified herein to other adidas AG group
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`companies,
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`including to adidas America, Inc.
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`AMENDED COMPLAINT FOR TRADEMARK AND PATENT INFRINGEMENT
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`5
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`Case 3:14-cv-01586-MO Document 89 Filed 02/27/15 Page 6 of 77
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`16.
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`Defendant adidas International Marketing B.V. has at relevant times
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`managed the procurement, maintenance,
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`licensing and/or enforcement of its intellectual
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`property rights via facilities and personnel
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`located in Portland, Oregon and such activities
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`have been directed at benefitting adidas America, Inc. and its market in Oregon and the
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`United States.
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`17.
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`On information and belief, Defendant adidas International B.V. has
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`continuous and systematic activities in the United States and particularly in Portland,
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`Oregon.
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`It regularly provides legal advice and assistance to adidas America, Inc.,
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`including advice relating to the relevant Plaintiff s footwear patents and trademarks
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`identified herein and before the present suit.
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`18.
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`On information and belief, Defendant adidas International B.V. controls
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`and directs the actions of certain adidas staff located at facilities in Portland, Oregon,
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`including Miss Sara Vanderhoff stationed at adidas America, Inc., who reports or had
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`previously reported to legal counsel for adidas International B.V. and adidas AG, and in
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`particular, Tim Behean.
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`19.
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`On information and belief, the former adidas Defendants'
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`in-house
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`counsel for adidas International B. V. and adidas AG, Tim Behean, is believed to have
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`worked for at least adidas International Marketing B. V., and have made repeated trips to
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`the United States, and particularly to Portland, Oregon, from at least year 2000 to the
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`present in order to attend to matters related to the acquisition, procurement,
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`licensing
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`and/or enforcement of intellectual property rights for adidas International Marketing
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`B.V., adidas America, Inc., and adidas AG.
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`AMENDED COMPLAINT FOR TRADEMARK AND PATENT INFRINGEMENT
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`6
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`Case 3:14-cv-01586-MO Document 89 Filed 02/27/15 Page 7 of 77
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`20.
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`In 2004, Lyden negotiated an out of court settlement from his home in
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`Portland, Oregon with adidas Defendants'
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`legal counsel Tim Behean in Europe regarding
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`adidas America, Inc.'s infringement of Lyden's U.S. 6,243,880 relating to athletic shorts,
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`as shown in the attached Exhibit 29, provided herewith.
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`21.
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`In 2010, adidas AG become unresponsive to Lyden's efforts to negotiate
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`and resolve a different patent infringement matter relating to the adidas Tunit soccer
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`shoe, and Lyden was forced to bring a patent suit regarding adidas Defendants'
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`infringement of four of his patents: U.S. 6,601,042, U.S. 7,016,86, U.S. 7,107,235, and
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`U.S. 7,752,775 in case no. 3:1O-cv-1249-BR filed on October 12,2010,
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`the Third
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`Amended Complaint of which legal action is attached as Exhibit 7, provided herewith.
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`22.
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`Lyden and adidas'
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`legal representatives were later able to negotiate a 2011
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`Settlement Agreement out of court in the State of Oregon, which has been provided to
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`this Court and is now sealed, and hereby incorporated by reference herein as Exhibit 30,
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`and the case was dismissed on October 19,2011.
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`23.
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`In 2012 and continuing to the present, Lyden has been defending in the
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`U.S. Patent and Trademark Office (hereinafter "USPTO") his U.S. 8,209,883 which has
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`claims for knitted shoe uppers because adidas AG wished to launch its Primeknit athletic
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`shoe in the United States to compete with Nike, Inc.' commercially successful Flyknit
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`athletic shoes.
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`In this regard, adidas AG and not adidas America, Inc. requested on
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`Inter-Partes
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`August 21,2012 and still continues to sponsor anzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBAreexamination of Lyden's
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`U.S. 8,209,883 which can be viewed by using the USPTO PAIR system, and searching
`
`Serial No. 95/002,094,
`
`as shown on page two of the attached Exhibit 35, provided
`
`herewith.
`
`7
`AMENDED COMPLAINT FOR TRADEMARK AND PATENT INFRINGEMENTzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`

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`Case 3:14-cv-01586-MO Document 89 Filed 02/27/15 Page 8 of 77
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`24.
`
`The adidas AG sponsored reexamination of Lyden's U.S. 8,209,883 is still
`
`pending in the USPTO and a copy of the "Patent Owner's Rebuttal Brief'
`
`is provided and
`
`attached hereto as Exhibit 27.
`
`25.
`
`Lyden's U.S. 8,209,883 is also presently being infringed by certain Nike,
`
`Inc. "Flyknit" athletic shoe products as disclosed in pending case no. 3:13-cv-00662-HZ
`
`in this Court, which has been stayed pending the conclusion of the on-going
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`reexamination sponsored by adidas AG.
`
`26.
`
`On information and belief, in various other matters,
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`in-house legal counsel
`
`working for adidas International Marketing B.V. and business persons working for adidas
`
`AG and adidas America, Inc. have negotiated intellectual property agreements in whole
`
`or part in Portland, Oregon, as shown in Exhibit 29 which is an e-mail communication
`
`between the adidas Defendants'
`
`former legal counsel Tim Behean and Lyden relating to
`
`their settlement of their patent infringement of U.S. 6,243,880 in 2004, and also Exhibit
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`30 which is a copy of the 2011 Settlement Agreement between the adidas Defendants and
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`the Plaintiff which has been provided to this Court and is now under seal, and is hereby
`
`incorporated by reference herein.
`
`27.
`
`On information and belief, the control over the relevant business affairs
`
`and operations of adidas AG andlor adidas International Marketing B.V., and adidas
`
`America, Inc., have been so blurred,
`
`intertwined, and indistinct
`
`that these entities may
`
`
`
`be regardedzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBAde facto as a single entity or actor largely under the control of adidas AG.
`
`In
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`order to provide further support: Attached as Exhibit 31 is copy of an article entitled
`
`"Patrick Nilsson to Leave Adidas for Job in Sweden" by Andy Giegerich, published in
`
`the Portland Business Journal on April 17, 2014; Attached as Exhibit 32 is a copy of the
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`AMENDED COMPLAINT FOR TRADEMARK AND PATENT INFRINGEMENT
`
`8
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`

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`Case 3:14-cv-01586-MO Document 89 Filed 02/27/15 Page 9 of 77
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`article downloaded from the Internet entitled "Here's Why Mark King is a Logical
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`Choice to Head Adidas America," by Matthew Kish, published in the Portland Business
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`Journal on April 17, 2014; Attached as Exhibit 33 is a copy of the article downloaded
`
`from the Internet entitled "Adidas Moves Head of Design from Germany to Portland," by
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`Matthew Kish, published in the Portland Business Journal on September 9, 2014;
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`Attached as Exhibit 34 is a copy of the article downloaded from the Internet entitled
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`"Adidas Makes Another Move to Strengthen U.S. Operations," by Matthew Kish,
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`published in the Portland Business Journal on September 9, 2014; Attached as Exhibit
`
`35 is a copy of the transmittal
`
`letter of David K.S. Cornwell of Sterne, Kessler, GoldsteinzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
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`& Fox, P.L.L.C. the attorney of record for adidas AG regarding the company's
`
`sponsorship of the pending Inter Partes Reexamination of my U.S. 8,209,883 in the U.S.
`
`Patent and Trademark Office showing on page 2 adidas AG as the real party in interest;
`
`Attached as Exhibit 40 is a copy of information downloaded from the Internet showing
`
`the United States for ordering adidas goods, and completing sales transactions; Attached
`
`as Exhibit 29 is an e-mail communication between former adidas Defendants'
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`legal
`
`counsel Tim Behean and Lyden relating to the negotiation and payment of an out of court
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`settlement regarding the adidas Defendants'
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`infringement of U.S. 6,243,880 relating to
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`athletic shorts; and, Exhibit 30 is a copy of the 2011 Settlement Agreement which is
`
`under seal relating to the dispute and Complaint
`
`in previous Case No.3: 10-cv-1249-BR
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`which shows the involvement and actions of adidas AG, adidas International Marketing,
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`B.V., and not simply adidas America, Inc., regarding the settlement of patent
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`AMENDED COMPLAINT FOR TRADEMARK AND PATENT INFRINGEMENT
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`9
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`

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`Case 3:14-cv-01586-MO Document 89 Filed 02/27/15 Page 10 of 77
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`infringements which took place here in the United States, and the attachments recited in
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`this paragraph all being provided herewith.
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`28.
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`As the result of the adidas Defendants' use of this District Court venue
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`and their repeated and willful
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`infringing actions therein, the adidas Defendants are
`
`believed to be subject to the State of Oregon's Long Arm Statute as disclosed in the
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`Oregon Rules of Civil Procedure, Rule 4, as shown in the attached Exhibit 41, provided
`
`herewith.
`
`29.
`
`On information and belief, Defendant The Finish Line, Inc. is a
`
`corporation organized and existing under the laws of the State of Indiana, having its
`
`principal place of business at 3308 N. Mitthoeffer Road, Indianapolis,
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`Indiana 46235.
`
`In
`
`this regard, The Finish Line, Inc. owns Finish Line, and also a Running Speciality Group
`
`of retail stores.
`
`30.
`
`On information and belief, Defendant Foot Locker, Inc. is a corporation
`
`organized and existing under the laws of the State of New York, having its principal
`
`place of business at 112 West 34th Street, New York, NY 10120.
`
`In this regard, Foot
`
`Locker, Inc owns not only various Foot Locker stores, but also subsidiaries including
`
`Champs Sports, Footaction, and Eastbay retailers andlor online stores.
`
`31.
`
`On information and belief, Defendant Dick's Sporting Goods, Inc. is a
`
`corporation organized and existing under the laws of the State of Delaware, having its
`
`principal place of business at 345 Court Street, Corapolis, PA 15108.
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`AMENDED COMPLAINT FOR TRADEMARK AND PATENT INFRINGEMENT
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`10
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`Case 3:14-cv-01586-MO Document 89 Filed 02/27/15 Page 11 of 77
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`JURISDICTION AND VENUEzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
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`32.
`
`Plaintiffrealleges
`
`and incorporates all of the factual allegations of the
`
`preceding paragraphs 1-31.
`
`33.
`
`This action arises in part under the trademark laws of the United States,
`
`and this Court has subject matter jurisdiction under section 39 of the Lanham Act, 15
`
`U.S.C. § 1121, and under 28 U.S.C. §§ 1331 and 1338. Subject matter jurisdiction over
`
`Lyden's related state and common law claims is proper pursuant
`
`to 28 U.S.C. §§ 1338
`
`and 1367.
`
`34.
`
`This action also arises in part under the patent laws of the United States,
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`Title 35 of the United States Code. Accordingly,
`
`this Court has subject matter
`
`jurisdiction pursuant
`
`to 28 U.S.C. §§ 1331, 1338 (a), 2201 and 2202. The District of
`
`Oregon is the proper venue pursuant
`
`to 28 U.S.C. §§ 1391(b), 1391(c) and 1400(b)
`
`because a substantial part of the acts or omissions giving rise to Lyden's claims occurred
`
`in this District.
`
`35.
`
`This Court has personal jurisdiction over Defendants because the
`
`Defendants have and continue to conduct substantial business in this forum including: (i)
`
`regularly doing or soliciting business, engaging in other persistent courses of conduct,
`
`
`
`andzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBAlor deriving substantial revenue from goods and services provided to individuals in
`
`the State of Oregon and in this Judicial District; and (ii) committing acts of trademark
`
`and patent infringement andlor contributing to or inducing acts of trademark and patent
`
`infringement by others in this Judicial District (and elsewhere in Oregon and the United
`
`States); or, have otherwise made or established contacts within the State of Oregon
`
`sufficient to permit the exercise of personal jurisdiction over Defendants.
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`AMENDED COMPLAINT FOR TRADEMARK AND PATENT INFRINGEMENTzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`1 1
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`

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`Case 3:14-cv-01586-MO Document 89 Filed 02/27/15 Page 12 of 77
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`BACKGROUND FACTSzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
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`36.
`
`Plaintiff realleges and incorporates all of the factual allegations of the
`
`preceding paragraphs 1-35.
`
`37.
`
`The Plaintiff, Robert M. Lyden ("Lyden") has a history as an athlete,
`
`coach, educator, and innovator. He was granted Masters' Degrees in History and Public
`
`Administration from the University of Minnesota in 1982 and 1988, and then wrote two
`
`papers of social significance: "Start I Towards A Build-Down Proposal And Negotiated
`
`Treaty Between The United States And Soviet Union" which was shared with
`
`Ambassador Max Karnpelman, and is attached as Exhibit 46, provided herewith; and,
`
`"Nine-Nine Questions A Dialogue On The Nature Of Just War With Francisco(s) De
`
`Vitoria And Suarez," attached as Exhibit 47, provided herewith, which was shared with
`
`Archbishop John Roach, Head of the U.S. Council of Bishops, and later in 2003 with
`
`Michael Novak who served as an ambassador
`
`for the Bush Administration with the
`
`Vatican and European Community prior to the Second Gulf War, and also his Excellency
`
`Archbishop Celestino Migliore, Permanent Observer of the Holy See to the United
`
`Nations.
`
`38.
`
`Lyden was certified as an educator to teach and coach K-12, and was
`
`associated as a coach with two Runners Up, and a State Championship Boy's H.S. Track
`
`Team, and several individual Minnesota State Champions and Record Holders, as shown
`
`in attached Exhibit 43, provided herewith. He also coached and advised a former college
`
`& Field, as
`teammate and member of the 1988 and 1992 U.S. Olympic teams in TrackzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`shown in the attached Exhibit 55, provided herewith.
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`AMENDED COMPLAINT