throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA714317
`ESTTA Tracking number:
`12/14/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92061879
`Plaintiff
`Sturgis Motorcycle Rally Inc.
`SARAH C HSIA
`SNEED PLLC
`610 JETTON ST, STE 120-107
`DAVIDSON, NC 28036
`UNITED STATES
`sarah@sneedlegal.com, jsneed@sneedlegal.com, nhayes@sneedlegal.com
`Response to Board Order/Inquiry
`Sarah C. Hsia
`sarah@sneedlegal.com, nhayes@sneedlegal.com
`/sch/
`12/14/2015
`2015-12-14 SMRI v. Herron RE Response to Board's November Or-
`der.pdf(81430 bytes )
`Exhibit A.pdf(3342229 bytes )
`Exhibit B.pdf(51640 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
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Sturgis Motorcycle Rally, Inc.,
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`Petitioner,
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`v.
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`Scott Herron,
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`Respondent.
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`
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`Cancellation No. 92061879
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`PETITIONER’S RESPONSE TO BOARD’S ORDER
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`Petitioner Sturgis Motorcycle Rally, Inc. (“SMRI” or “Petitioner”) hereby responds to the
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`
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`Board’s Order of November 9, 2015, by filing as Exhibit A hereto the operative pleadings in
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`Sturgis Motorcycle Rally, Inc. v. Kenton D. Mortimer, et al., Case No. 2:14-cv-175-WCO, which
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`is currently pending in the United States District Court for the Northern District of Georgia.
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`Three pleadings are included: 1) Plaintiff’s Complaint (Docket No. 1); 2) Defendant Kenton D.
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`Mortimer’s Verified Answer, Defenses and Counterclaims (Docket No. 27); and 3) Defendants
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`Troy D. Rowsey, Rowsey Investments, LLC, Robert Johnson, and Sandra White-Johnson’s First
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`Amended Answer to the Complaint (Docket No. 62).
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`Petitioner further responds to the Board’s Order by filing as Exhibit B hereto the final
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`judgment in Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc. et al., Case No. 5-
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`11-cv-05052-JLV, and acknowledging that Cancellation No. 92054714 has not reached final
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`determination. Petitioner will notify the Board accordingly after final disposition of these
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`proceedings.
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`1
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`

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`Dated: December 14, 2015
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`Respectfully Submitted,
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`
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`/Sarah C. Hsia/
`Sarah C. Hsia, Esq.
`Of counsel
`SNEED PLLC
`610 Jetton St., Suite 120-107
`Davidson, North Carolina 28036
`Tel: 844-763-3347
`Sarah@SneedLegal.com
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`Attorney for Petitioner
`Sturgis Motorcycle Rally, Inc.
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`2
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`Certificate of Filing
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`The undersigned hereby certifies that the foregoing Petitioner’s Response to Board’s
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`
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`Order was filed on this day, December 14, 2015, through electronic means via the ESTTA
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`website.
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`/Sarah C. Hsia/
`An Attorney for Petitioner
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`Certificate of Service
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`The undersigned counsel of record hereby certifies that copies of the foregoing
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`Petitioner’s Response to Board’s Order and the pleadings and judgment referenced therein were
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`served by email, this day, December 14, 2015, to the following:
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`Chris Civil
`Christopher@legalforcelaw.com
`Disputes@legalforcelaw.com
`Attorney for Respondent
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`
`
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`
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`/Sarah C. Hsia/
`An Attorney for Petitioner
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`

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`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 1 of 35
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF GEORGIA
`GAINESVILLE DIVISION
`
`
`Case No. 2:14-cv-175-WCO
`
`STURGIS MOTORCYCLE
`
`RALLY, INC.,
`
`Plaintiff,
`
`V.
`
`KENTON D. MORTIMER,
`MORTIMER ENTERPRISES, a
`California corporation,
`TROY D. ROWSEY,
`ROWSEY INVESTMENTS LLC d/b/a
`
`RENEGADE CLASSICS,
`ROBERT JOHNSON d/b/a
`
`RENEGADE CLASSICS
`
`BUFORD, and
`SANDRA WHITE-JOHNSON d/b/a
`
`RENEGADE CLASSICS
`
`BUFORD,
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`Defendants.
`
`%l\&%/%/%%%\/$/§/&/$/$/%%&\—/\é%/%/\i\/\J
`
`COMPLAINT
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`Plaintiff Sturgis Motorcycle Rally, Inc., for its Complaint against
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`Defendants Kenton D. Mortimer, Mortimer Enterprises (a California corporation),
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`Sturgis Rally Week, Inc. (a South Dakota corporation), Troy D. Rowsey, Rowsey
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`Investments LLC d/b/a Renegade Classics, Robert Johnson d/b/a Renegade
`
`1
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`

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`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 2 of 35
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`Classics Buford and Sandra White-Johnson d/b/a Renegade Classics Buford,
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`alleges:
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`Jurisdiction and Venue
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`1.
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`This Complaint is an action for trademark infringement and unfair
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`competition under the Lanham Act, 15 U.S.C. §§ 1114 and 1125, for false
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`advertising under The Lanham Act, 15 U.S.C. § 1125(a)(1)(B), for trademark
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`dilution under the Federal Trademark Dilution Revision Act, 15 U.S.C. § 1125(c),
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`for violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C.
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`§ 1125(d), and for unfair competition, trademark infringement, and deceptive trade
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`practices under the common law and statutes of Georgia.
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`2.
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`This Court has subject matter jurisdiction over this action upon the
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`following grounds:
`
`a.
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`28 U.S.C. § 1331, this being a civil action arising under the
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`laws of the United States;
`
`b.
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`28 U.S.C. § l337(a), this being a civil action arising under an
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`Act of Congress regulating commerce;
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`c.
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`28 U.S.C. § 1338(a), this being a civil action arising under the
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`trademark laws of the United States, namely, the Lanham Act, 15 U.S.C.
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`§1051etseq.;
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`

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`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 3 of 35
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`d.
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`28 U.S.C. § 1338(b), this being a civil action asserting a claim
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`of unfair competition joined with a substantial and related claim under the
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`trademark laws; and
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`e.
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`28 U.S.C. § l367(a), this being a civil action including claims
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`that are so related to claims that are within the original jurisdiction of this
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`Court that they form part of the same case or controversy under Article III of
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`the United States Constitution.
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`3.
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`Venue is proper in this Court under the provisions of 28 U.S.C.
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`§ l391(b) and (c).
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`The Parties
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`4.
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`Plaintiff Sturgis Motorcycle Rally, Inc. is a South Dakota not-for-
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`profit corporation with a principal place of business at 1612 Junction Avenue,
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`Suite 4, Sturgis, SD 57785.
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`5.
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`Upon information and belief, Defendant Kenton D. Mortimer is an
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`individual and resident of California with an address of 1140 North Homsy Ave,
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`Clovis, CA 93611-7116.
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`6.
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`Upon information and belief, Defendant Mortimer Enterprises is a
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`California corporation having a principal place of business at 3140 North Argyle
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`Ave Suite 104, Fresno, CA 93727-1323. Mortimer Enterprises may be served
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`

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`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 4 of 35
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`through its registered agent, Kenton D. Mortimer, at 3140 North Argyle Ave Suite
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`104, Fresno, CA 93727-1323.
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`7.
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`Upon infonnation and belief, Defendant Troy D. Rowsey is an
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`individual and resident of California with an address of 1545 Mission Ave,
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`Carmichael, CA 95608-5863.
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`8.
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`Upon information and belief, Defendant Rowsey Investments LLC
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`d/b/a Renegade Classics (“Renegade Classics”) is a California limited-liability
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`corporation having a principal place of business at 6758 Folsom Blvd.,
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`Sacramento, CA 95819-4626. Renegade Classics may be served through its
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`registered agent, Troy D. Rowsey, 6758 Folsom Blvd., Sacramento, CA 95819-
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`4626.
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`9.
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`Upon information and belief, Defendant Robert Johnson d/b/a
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`Renegade Classics Buford is an individual and resident of Georgia, with an address
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`of 4965 Lanier Islands Pkwy, Buford, GA 30518.
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`10. Upon information and belief, Defendant Sandra White-Johnson d/b/a
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`Renegade Classics Buford is an individual and resident of Georgia, with an address
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`of 4965 Lanier Islands Pkwy, Buford, GA 30518.
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`

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`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 5 of 35
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`A..History of the Sturgis Motorcycle Rally and Plaintiff’s and
`its Predecessors’ Promotion and Management of the Event
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`11.
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`Since 193 8, Plaintiff and its predecessors-in-interest have organized,
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`sponsored, marketed and promoted an annual motorcycle rally known in recent
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`decades as the “Sturgis Motorcycle Rally” which takes place annually in and near
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`the city of Sturgis, South Dakota and the Black Hills area of South Dakota and
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`Wyoming and is attended by approximately half a million people each year.
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`12.
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`Plaintiff, together with its licensee, the City ofSt11rgis, South Dakota,
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`have been the official organizers and sponsors of the Sturgis Motorcycle Rally”
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`event for many years. A principal purpose of this annual event is to promote
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`economic development in the City of Sturgis and the surrounding Black Hills area
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`of South Dakota and Wyoming.
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`13.
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`The Sturgis Motorcycle Rally” event, which officially begins on the
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`first Monday following the first full weekend each August, is the premier
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`motorcycle-related event in the world, being the most famous and the most
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`attended.
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`14. As a result of the fame of the Sturgis Motorcycle RallyTM event and
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`the hundreds of thousands of visitors who attend the event each year, the event has
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`become a destination for some of the country's best-known musical groups and
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`entertainers, celebrities and even Presidential candidates.
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`5
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`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 6 of 35
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`15.
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`The Sturgis Motorcycle Rally”! event has had several names over the
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`years, including “Black Hills Motor Classic” from about 1938, to the “Sturgis
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`Rally & Races” in or about 1992, and currently it is most commonly referred to as
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`the “Sturgis Motorcycle Rally”, “Sturgis Bike Week”, and the nickname,
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`“Sturgis.”
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`B. Plaintiff’s Valuable Trademarks and Service Marks
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`16.
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`In promoting and otherwise supporting the Sturgis Motorcycle
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`Ra1lyTM event, Plaintiff and its predecessors-in-interest have used, and permitted
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`others to use, certain proprietary trademarks and service marks to identify the
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`activities comprising this annual event and the goods sold in conjunction therewith.
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`Those proprietary designations have included, among others, the trademarks and
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`service marks STURGIS BIKE WEEK®, STURGISTM, STURGIS
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`MOTORCYCLE RALLYTM, STURGIS RALLY & RACESTM, TAKE THE RIDE
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`TO STURGIS®, and a composite design mark which includes at its center and as
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`the largest and most prominent textual component thereof the term STURGIS (the
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`“STURGIS Composite Design Mark”) (collectively, the foregoing shall be referred
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`to herein as the “STURGIS Marks”).
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`17.
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`The success of the Sturgis Motorcycle Rally” event is due in large
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`part to the longstanding, continuous and extensive sponsorship, promotion and
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`

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`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 7 of 35
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`support by Plaintiff and its predecessors-in-interest, including the Sturgis Area
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`Chamber of Commerce (“Sturgis Chamber”), with respect to the offering, sale and
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`distribution of goods and services related to the Sturgis Motorcycle Rally” event
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`and sold under and in conjunction with the STURGIS Marks, and due to the related
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`activities of Plaintiff, its predecessors and their licensee, the City of Sturgis, in
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`related sponsorship activities under the STURGIS Marks and pertaining to the
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`Sturgis Motorcycle RallyTM event, which benefits are returned to the local
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`community through charitable donations.
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`18. As the exclusive licensee of Plaintiff for sponsorship and related
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`services, the City of Sturgis not only sells sponsorship for the Sturgis Motorcycle
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`Rally”, but it also expends a great deal of its own resources supporting the Sturgis
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`Motorcycle Rally“ each year in the form of sanitation and security services at the
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`Sturgis Motorcycle Rally“, and in the advertisement and promotion of the Sturgis
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`Motorcycle Rally” each year through the City’s “Rally Department”.
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`19.
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`The fiill-time “Rally Department” plans for and obtains sponsorships
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`for the annual rally and expends nearly $50,000 annually for publishing and city
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`promotion related to the Sturgis Motorcycle Ra11yTM event.
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`20.
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`The City of Sturgis utilizes revenues from the sale of sponsorships to
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`underwrite the tremendous costs associated with organizing and managing the
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`7
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`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 8 of 35
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`Sturgis Motorcycle Rally” event and the hundreds of thousands of bikers and
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`tourists who populate the 6,000-resident city each Summer. Such costs include
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`those pertaining to police protection, traffic control, sanitation, code enforcement,
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`and hospitality.
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`21.
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`By virtue of the City of Sturgis being the exclusive sponsorship
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`licensee and agent of Plaintiff and the City’s endorsement of Plaintiff’s ownership,
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`protection, and enforcement of the STURGIS Marks, the City of Sturgis wholly
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`supports and enhances the distinctiveness of the STURGIS Marks with Plaintiff.
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`22.
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`The Sturgis City Council in 2013 passed a resolution affirming
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`Plaintiff’ s rightful place as the exclusive owner of the STURGIS Marks and
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`promoter of the rally, a copy of which is attached hereto at Exhibit A.
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`C. Plaintiff’s Goods and Services and Extensive Use
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`23.
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`Plaintiff and its licensees have marketed, advertised, and promoted
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`extensively the Sturgis Motorcycle Rallym event and their goods and services
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`nationwide for many years using the STURGIS Marks, including by producing the
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`Official Rally Guide, managing the official Sturgis Motorcycle Rally” event
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`website at <www.sturgismotorcyclerally.com>, maintaining the official presence
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`on social networks such as Facebo0k®, exhibiting at other major motorcycling
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`events throughout the country to promote the Sturgis Motorcycle Rally” event
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`

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`Case 2:14—cv-00175-WCO Document 1 Filed 08/05/14 Page 9 of 35
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`and tourism in South Dakota and the Black Hills area, and by serving as a conduit
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`for the State of South Dakota Department of Tourism pertaining to the event.
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`24.
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`Plaintiff and its predecessors have advertised Plaintiff's and its
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`predecessors’ exclusive sponsorship and promotion of the Sturgis Motorcycle
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`Rally” event since at least 1986. Sponsors of the Sturgis Motorcycle Rally”
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`event have included Harley-Davidson, Ford Motor Co., Dodge, GEICO, and Jack
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`Daniel’s.
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`25.
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`Such use has occurred not only through use of Plaintiff’ s registered
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`marks STURGIS BIKE WEEK®, TAKE THE RIDE TO STURGIS®, and the
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`STURGIS Composite Design Mark, of which the most prominent feature is the
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`word STURGIS, but also by using and permitting others to use the STURGIS
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`Marks on or in connection with Sturgis Motorcycle Rally” event-related goods
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`and services.
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`26.
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`Plaintiff vigorously protects the STURGIS Marks by monitoring the
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`marketplace for infringing goods and vigorously enforces its rights against those
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`infringing the STURGIS Marks. As a result of this monitoring, Plaintiff has
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`enhanced the goodwill and strength in the STURGIS Marks.
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`27.
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`Plaintiff and its licensees have sold a tremendous amount of goods
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`and services under the STURGIS Marks: over $70 million since 1993 covering a
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`9
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`

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`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 10 of 35
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`wide variety of STURGIS-branded goods and services. Such sales have produced
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`in excess of $4 million in royalties to Plaintiff and its predecessors-in-interest.
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`28.
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`Further strengthening the STURGIS Marks to connote and promote
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`goods and services in conjunction with the Sturgis Motorcycle Rally“‘’‘ event,
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`Plaintiff and its predecessors have obtained and/or acquired, and Plaintiff owns, a
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`number of U.S. registrations for several of the STURGIS Marks. These
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`registrations provide nationwide notice to others of the rights of Plaintiff and
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`further strengthen the Sturgis Motorcycle Rally” event and the goodwill of
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`Plaintiff associated with the STURGIS Marks. Such registrations include:
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`° STURGIS BIKE WEEK®, U.S. Reg. Nos. 2,070,955, 3,818,703,
`3,825,398, 3,838,171, 3,911,270, and 3,923,236, for use in
`connection with a wide variety of merchandise, including clothing,
`namely, shirts, T-shirts, sweatshirts, bandanas and caps and
`including embroidered clothing, namely shirts and sweatshirts;
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`° TAKE THE RIDE TO STURGIS®, U.S. Reg. No. 2,698,677, for
`use in connection with clothing, namely, t-shirts and sweatshirts
`and caps; and,
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`° The STURGIS Composite Design Mark, U.S. Reg. No. 1,948,097,
`for use in connection with, inter alia, “promoting sports
`competitions and/or events of others, namely motorcycle rallies,
`exhibits and competitions” (shown below);
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`10
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`Case 2:14—cv-00175—WCO Document 1 Filed 08105/14 Page 11 of 35
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`
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`(The foregoing registrations shall be referred to hereinafter as the “STURGIS
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`Registrations").
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`29. Attached at Exhibit B hereto are true and correct copies of the U.S.
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`trademark registration certificates for the STURGIS Registrations, which
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`STURGIS Registrations are owned by Plaintiff, are live and subsisting, and
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`constitute evidence of the validity of each of the respective registered marks,
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`Plaintiffs ownership of each of the registered marks, and Plaintiff” s exclusive right
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`to use each of the registered marks in commerce on or in connection with the
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`goods and services set forth in each of the respective STURGIS Registrations.
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`Further, U.S. Reg. Nos. 2,070,955 for the STURGIS BIKE WEEK® mark, U.S.
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`Reg. No. 2,698,677 for the TAKE THE RIDE TO STURGIS® mark, and U.S.
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`Reg. No. 1,948,097 for the STURGIS Composite Design Mark, are incontestable
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`pursuant to 15 U.S.C. § 1065, having been registered for more than five years and
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`the owner having submitted the required Section 15 affrdavit of incontestability.
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`11
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`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 12 of 35
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`D. Plaintiff’s Charitable Activities and Valuable Goodwill
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`in the STURGIS Marks
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`30.
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`Plaintiff's stated mission is twofold: to promote and enhance
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`economic development in the City of Sturgis and surrounding Black Hills region of
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`South Dakota and eastern Wyoming, by, inter alia, protecting and enforcing the
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`valuable intellectual property rights pertaining to the Sturgis Motorcycle Rally”
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`event, and to provide a tangible and charitable return to the citizens of Sturgis and
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`the surrounding community.
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`31.
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`As to the latter goal, and as a result of royalties generated from the
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`sale of licensed goods and sponsorships of the STURGIS® Motorcycle Rally,
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`Plaintiff and its predecessors have made substantial contributions to the betterment
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`of the Sturgis community, including by making charitable contributions to over 90
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`different causes and organizations, out of revenues received from licensing and
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`sponsorship royalties.
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`32. Among the many groups that have received contributions from SMRi
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`are the Meade County summer school program, Salvation Army’s food cupboard,
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`Sturgis Arts Council, Sturgis Jaycees, Sturgis Little League, Sturgis Police
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`Department D.A.R.E. program, Sturgis Volunteer Fire Department, Black Hills
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`Area Habitat for Humanity, Crisis Intervention Shelter, special projects of the City
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`12
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`Case 2:14-cv~00175-WCO Document 1 Filed 08/05/14 Page 13 of 35
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`of Sturgis, and Girl Scouts of the USA. From 2010 through 2013 alone, the SMRi
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`licensing program contributed more than $250,000 to Sturgis—area charities.
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`33.
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`These activities have engendered a great deal of goodwill for Plaintiff,
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`its predecessors, their respective sponsorship and promotion of the Sturgis
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`Motorcycle Ra11yTM event and for the STURGIS Marks.
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`E. Defendants and Their Illegal Activities
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`34. Without authorization, license or consent from Plaintiff, the
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`Defendants have been using reproductions, copies, and colorable imitations of
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`Plaintiff’ s registered STURGIS Marks, including the infringing designation
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`STURGIS RALLY WEEK, in connection with the sale, offering for sale,
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`distribution and advertising of the Defendants’ goods, and in a manner which is
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`likely to cause confusion, to cause mistake and to deceive consumers and potential
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`consumers.
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`35. On June 20, 2000, Defendant Mortimer, doing business as Renegade
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`Classics, voluntarily executed a “Sturgis Motorcycle Rally License Application,”
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`attached hereto at Exhibit C, and paid an accompanying $50.00 fee, attached hereto
`
`at Exhibit D.
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`36.
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`The application contained the following acknowledgment of the rights
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`of Plaintiff’ s predecessor-in-interest, the Sturgis Chamber, with the “X”
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`13
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`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 14 of 35
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`handwritten by Defendant Mortimer to indicate for which of Plaintiff’s marks
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`Defendant Mortimer was applying for a license:
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`You are applyingfor a license to use the ()0 STURGIS, ( ) STURGIS
`RALLY & RACES. ( ) BLACK HILLS RALLY & RA CES, ( ) BLACK
`HILLS MOTOR CLASSIC LOG0® trademark(s) (hereinafter referred
`to as the “Marks ”). By submitting this application and in
`consideration of Champion Rally Productions’ ("CRP ”)
`consideration of the application, Applicant acknowledges that the
`Marks are exclusively owned by the Sturgis Area Chamber of
`Commerce when used on or in connection with the manufacture,
`marketing and/or distribution ofRally related merchandise and/or
`services.
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`Mortimer thus acknowledged the rights of Plaintiff’s predecessor-in-interest with
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`respect to Plaintiff’ s marks, specifically including the STURGISTM mark, the
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`STURGIS RALLY & RACESTM mark and the registered STURGIS Composite
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`Logo, in addition to other marks owned by Plaintiff.
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`37.
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`The Sturgis Chamber’s then-agent for licensing the STURGIS Marks,
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`Champion Rally Productions, evaluated Defendant Mortimer’s application.
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`However, Defendant Mortimer did not consummate a license with the Sturgis
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`Chamber.
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`38. At no time has Plaintiff or its predecessors-in-interest granted to
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`Defendants, or any of them, a license to use Plaintiff’ s STURGIS Marks.
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`3.9. On August 9, 2011, Plaintiff, through counsel, had delivered to
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`Defendants Mortimer and Mortimer Enterprises a letter demanding that Defendants
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`14
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`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 15 of 35
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`cease their offering for sale and sale of goods infringing Plaintiffs STURGIS
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`Marks and giving actual notice to Defendants Mortimer and Mortimer Enterprise
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`of Plaintiff’ s rights and Defendants’ wrongful conduct.
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`40. On information and belief, thereafter Defendants Mortimer and
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`Mortimer Enterprises purchased from Plaintiffs licensee licensed goods for resale
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`and ceased the sale of infringing goods.
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`41.
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`On information and belief, Defendants Mortimer and Mortimer
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`Enterprises subsequently have manufactured, sold, and distributed within the State
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`of Georgia and elsewhere products bearing infringing designations, including
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`“Sturgis”, “Sturgis Rally Week”, and “Sturgis Motorcycle Rally” (collectively,
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`Defendants’ Infringing Designations).
`
`42. On information and belief, Defendant Mortimer participated in and
`
`directed the decision to select Defendants’ Infringing Designations, in spite of
`
`Defendant Mortimer having actual and constructive notice of Plaintiffs rights.
`
`43. On information and belief, Defendants Mortimer and Mortimer
`
`Enterprises contracted with third parties in multiple states to own and operate
`
`“Renegade Classics”-branded stores, including Troy D. Rowsey and Rowsey
`
`Investments, LLC, through which stores such third parties were required and
`
`15
`
`

`
`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 16 of 35
`
`expected to purchase for resale goods from Defendants Mortimer and Mortimer
`
`Enterprises, including goods infringing Plaintiffs STURGIS Marks.
`
`44. On information and belief, Defendant Mortimer assigned all right,
`
`title, and interest to “Renegade Classics” and the business and contractual
`
`relationships with the third—party store owners to Defendants Troy D. Rowsey and
`
`Rowsey Investments, LLC. Rowsey and Rowsey Investments, by taking ownership
`
`via assignment of the “Renegade Classics” brand, bound themselves to the
`acknowledgements made by Defendant Mortimer.
`F
`
`45. On information and belief, Defendants Rowsey and Rowsey
`
`Investments maintain an on-going contractual relationship with Defendants Robert
`
`Johnson and Sandra White-Johnson d/b/a Renegade Classics Buford to own and
`
`operate a “Renegade Classics”-branded store in Buford, Georgia.
`
`46. On information and belief, Defendants Rowsey and Rowsey
`
`Investments require Defendants Johnson and White-Johnson to purchase
`
`merchandise for resale from Defendants Mortimer and Mortimer Enterprises,
`
`including the aforementioned infringing goods.
`
`47.
`
`On information and belief, Defendants Johnson and White-Johnson
`
`purchased from Defendants Mortimer and Mortimer Enterprises, offers for sale,
`
`16
`
`

`
`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 17 of 35
`
`and has sold the aforementioned infringing goods within the State of Georgia,
`
`including goods described as follows and depicted in Exhibit E hereto:
`
`° Example 1: T-shirt with the words “74”‘ Anniversary” above the words
`“STURGIS RALLY WEEK” depicted around an image of a skull
`wearing a motorcycle helmet and goggles in front of crossed pistons and
`above the date “20l4”;
`
`° Example 2: T—shirt with the words “STURGIS RALLY WEEK” depicted
`around an image of a skull with wings and the words “World Famous”
`and the date “2014” and above the words “South Dakota”;
`
`° Example 3: T-shirt with, on the obverse, the word “STURGIS” above the
`date 2014 depicted in front of a tire with wings and, on the reverse, the
`words “STURGIS MOTORCYCLE RALLY” depicted above a tire with
`wings between the digits “20” and “14”and above the words “74'h
`Anniversary South Dakota”;
`
`° Example 4: T-shirt with, on the obverse, the words “STURGIS RALLY
`WEEK” depicted around a skull with wings, the words “South Dakota”,
`“Ride It In” and “Party Hard”, the date 2014 and an image of crossed
`pistons, and above the words “Legendary Good Times” and, on the
`reverse, the words “STURGIS RALLY WEEK” depicted around a skull
`with wings and the words “World Famous” and “Biggest Biker Party in
`the World” and the date 2014 and above the words “South Dakota”; and,
`
`° Example 5: T-shirt with the word “STURGIS” and the date 2014
`depicted on the gas tank of a motorcycle.
`
`48.
`
`On information and belief, Defendant Mortimer offers for sale, and
`
`has sold the aforementioned infringing goods within the State of South Dakota,
`
`including goods described as follows and depicted in Exhibit F hereto:
`
`0 Example 6: T-shirt with, on the obverse, the word “STURGIS RALL ”
`above the date 2014 depicted around fanciful depiction of a motorcycle
`
`17
`
`

`
`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 18 of 35
`
`and rider and, on the reverse, the word “STURGIS” above the same
`depiction and the words “74th Annual”, “Black Hills Rally”, “South
`Dakota” and the date “20l4”; and,
`
`' Example 7: T-shirt with the same markings as Example 4 above, with
`additional design elements on the sleeves.
`
`49.
`
`The use by Defendants of each of Defendants’ Infringing
`
`Designations shows that Plaintiff’ s STURGIS Marks are distinctive and carry
`
`considerable goodwill that Defendants and third parties would like to appropriate
`
`for themselves.
`
`50. On information and belief, the activities of the Defendants described
`
`herein, which are in violation of Plaintiff’ s rights, have been directed, controlled,
`
`ratified, and participated in by Defendants Mortimer, Rowsey, Johnson, and
`
`White-Johnson, who are the moving forces behind the infringing conduct.
`
`51. Defendants Rowsey, Johnson and White—J_ohnson, despite having
`
`constructive notice—and on information and belief, actual notice—of Plaintiff's
`
`rights in and to the STURGIS Marks and STURGIS Registrations, continued to
`
`participate in and direct additional infringing conduct with respect to the
`
`Defendants’ Infringing Marks.
`
`52.
`
`By offering for sale, selling, distributing, marketing and advertising
`
`goods sold under the Defendants’ Infringing Designations, Defendants
`
`intentionally have violated Plaintiff's rights in and to the STURGIS Marks and the
`
`18
`
`

`
`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 19 of 35
`
`STURGIS Registrations, and with the knowledge and intention that the use in
`
`commerce of Defendants’ Infringing Designations were and are intended to cause
`
`confusion, to cause mistake, and to deceive consumers and potential consumers.
`
`53. Defendants also, in connection with the offering for sale, sale,
`
`distribution, advertising and promotion of goods bearing and in conjunction with
`
`Defendants’ Infringing Designations, have caused, are causing and are likely to
`
`cause confusion and mistake, and have deceived, are deceiving and are likely to
`
`deceive, as to the affiliation, connection, and association of Defendants with
`
`Plaintiff, and as to the origin, sponsorship, and approval of Defendants’ goods and
`
`commercial activities.
`
`54.
`
`Further, Defendants, by their offering for sale, distribution, marketing
`
`and advertising of goods bearing and in conjunction with Defendants’ Infringing
`
`Designations, in commercial advertising and promotion, including through
`
`websites and social media, have misrepresented the nature, characteristics,
`
`qualities, and origin of their goods and their commercial activities, to the ham of
`
`Plaintiff.
`
`55. Defendants’ acts complained of herein have been willfill, with the
`
`intent to harm the rights of Plaintiff, and has been injurious to Plaintiff and to
`
`consumers in this state and elsewhere.
`
`19
`
`

`
`Case 2:14-CV-00175-WCO Document 1 Filed 08/05/14 Page 20 of 35
`
`56. Defendants’ acts have caused actual confusion among consumers who
`
`purchase and are likely to purchase goods bearing Plaintiffs STURGIS Marks.
`
`57. Defendants’ acts complained of herein are likely to confuse
`
`consumers within the meaning of the Lanham Act and Georgia statutory and
`
`common law prohibiting unfair competition and trademark infringement.
`
`58. Defendants’ acts complained of herein creates a likelihood of injury to
`
`Plaintiffs business reputation and of dilution of the distinctive quality of Plaintiffs
`
`STURGIS Marks within the meaning of OCGA § 10-1-45 l(b).
`
`59. Defendants’ act complained of herein constitute an attempt to
`
`encroach upon Plaintiffs business by the use of similar trademarks, with the
`
`intention of deceiving and misleading the public, within the meaning of OCGA
`
`§ 23-2-55.
`
`60.
`
`The acts of Defendants complained of herein constitute the knowing
`
`and intentional use and employment of deceptive acts, false pretenses, false
`
`promises and/or misrepresentations, and the concealment, suppression and
`
`omission of material facts in connection with the sale and advertisement of
`
`merchandise by Defendants.
`
`61.
`
`Plaintiff has been adversely affected by the acts of Defendants and has
`
`incurred damages and other harm as a result of Defendants’ acts.
`
`20
`
`

`
`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 21 of 35
`
`62.
`
`Still further, and in spite of Defendants Mortimer and Mortimer
`
`Enterprises having actual and constructive knowledge of, and having
`
`acknowledged in writing, Plaintiff’ s rights, Defendant Mortimer has taken
`
`numerous actions injurious to Plaintiff.
`
`63. Defendants Mortimer and Mortimer Enterprises have applied to
`
`register with the U.S. Patent & Trademark Office (“PTO”) at least two trademark
`
`applications in unfair competition with Plaintiff, and made unfair, deceptive and
`
`fraudulent representations to the PTO in the furtherance of those applications.
`
`64.
`
`Specifically, Defendants Mortimer and Mortimer Enterprises have
`
`applied to register the confusingly similar and deceptive designation “Sturgis Rally
`
`Week” with the PTO pursuant to U.S. Appl. Serial Nos. 85/152,541 (word mark)
`
`and 85/152,519 (design mark), for use in conjunction with “Baseball caps and hats;
`
`Hooded sweat shirts; Shirts and short-sleeved shirts; Short—sleeved or long-sleeved
`
`t-shirts; Sweat jackets; Sweat shirts; Tank tops” in International Class 25, which
`
`applications have not attained registration but which remain pending and
`
`suspended (the “Infringing Applications”) and against which Infringing
`
`Applications Plaintiff has instigated trademark opposition proceedings before the
`
`U.S. Trademark Trial and Appeal Board.
`
`21
`
`

`
`Case 2:14-cv-00175-WCO Document 1 Filed 08/05/14 Page 22 of 35
`
`65. Defendants Mortimer and Mortimer Enterprises represented falsely to
`
`the PTO that “Renegade Classics, a California corporation” was entitled to use
`
`such marks in commerce, despite the fact that no such entity existed at any time
`
`and in spite of the express acknowledgment by Defendants Mortimer and Mortimer
`
`Enterprises of Plaintiffs rights in the STURGIS Marks.
`
`66. Defendants Mortimer and Mortimer Enterprises further represented
`
`falsely to the PTO that “no other person, firm, corporation, or association 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,” in spite of the express acknowledgment by Defendants Mortimer and
`
`Mortimer Enterprises of Plaintiff’ s

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