Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA738246
`
`Filing date:
`
`04/06/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92063002
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Be Positive Works LLC
`
`CHARLES P GUARINO
`MOSER TABOADA
`1030 BROAD STREET, SUITE 203
`SHREWSBURY, NJ 07702
`UNITED STATES
`cguarino@mtiplaw.com, gsugg@mtiplaw.com, docketing@mtiplaw.com
`
`Motion to Suspend for Civil Action
`
`Charles P. Guarino
`
`cguarino@mtiplaw.com
`
`/Charles P. Guarino/
`
`04/06/2016
`
`Motion to Suspend Cancellation 92063002 - signed.pdf(96419 bytes )
`Exhibit A - Motion to Suspend.pdf(2716327 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`______________________________________________________________________——X
`
`JOSEPH G. MCDONOUGH,
`
`Cancellation No. 92063002
`
`Petitioner,
`
`V.
`
`.
`:
`
`Mark:
`B+
`
`BE POSITIVE WORKS LLC,
`
`_______________________________________________________________________..X
`
`Respondent,
`
`Registration No. 3,768,743
`
`RESPONDENT’S MOTION TO SUSPEND
`CANCELLATION PROCEEDING
`
`PENDING DISPOSITION OF CIVIL ACTION
`
`Pursuant to 37 C.F.R. § 2.1 l7(a) and TBMP Rule 5 l0.02(a), Respondent, Be Positive
`
`Works LLC, (“Respondent”), by and through its attorneys, Moser Taboada, hereby moves for
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`suspension of Cancellation No. 92063002 (the “Cancellation”) pending the disposition of a Federal
`
`civil action filed on March 30, 2016 in the United States District Court for the District of Delaware,
`
`McDonough v. Gorman, Be Positive Works, LLC, and B+ Foundation, Inc., Case No, l:16-cv-
`
`00203 (the “Civil Action”). In support ofthis motion, Respondent submits a copy ofthe Complaint
`
`filed by Petitioner Joseph G. McDonough (“Petitioner”) in the aforementioned Civil Action.
`
`Respondent believes that the Civil Action will be dispositive of the issues presented in the
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`Cancellation. Both actions present claims that require a determination of whether Petitioner has
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`superior trademark rights in the “B+” trademark, and if so, whether Respondent’s use of the mark
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`is likely to cause confusion among the relevant public. Furthermore, the Civil Action includes a
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`count requesting that the District Court order cancellation of Respondent’s B+ trademark under
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`US Trademark Registration No. 3,768,743, which is the identical registration at issue in the instant
`
`

`
`Cancellation proceeding (Exhibit A, Count 6 at p.9.).
`
`The Board may exercise its inherent authority to control the scheduling of cases on its
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`docket. Motions to suspend proceedings pending the outcome of a civil action are generally
`
`decided based upon a review ofthe relevant pleadings. See Trademark Rule 2.1 l7(a). The Board's
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`general practice is to suspend its inter partes proceedings under Trademark Rule 2.1l7(a)
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`whenever the Board is made aware that any party to a pending Board proceeding is involved in a
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`civil action which may have a bearing on the Board case.
`
`Although the United States Patent and Trademark Office and the Trademark Trial and
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`Appeal Board have expertise in determining trademark registrability, such determinations are not
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`within their exclusive jurisdiction. See American Bakeries Co. v. Pan—0—Gold Baking Co., 2
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`U.S.P.Q.2d 1208 (D.C. Minn. 1986). To the extent that a civil action in a Federal district court
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`involves issues in common with those within a Board proceeding, the district court's findings are
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`binding upon the Board, whereas the Board's findings are merely advisory to the district court.
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`See id.; TBMP Section 5l0.02(a) (2014); see also General Motors Corp. v. Cadillac Club
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`Fashions Inc., 22 U.S.P.Q.2d 1933, I937 (TTAB 1992).
`
`Here,
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`the district court's findings in the pending Federal matter,
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`including those on
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`trademark infringement, unfair competition, and cancellation, will indubitably dispose of the
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`claims currently before the Board. Applicant therefore respectfully requests suspension of these
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`proceedings pending determination of the civil action pursuant to Trademark Rule 2.1l7(a), 37
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`C.F.R. § 2.1l7(a).
`
`Dated: April 6, 2016
`Shrewsbury, New Jersey
`
`

`
`
`
`MOSER TABOADA
`
`1030 Broad Street, Suite 203
`Shrewsbury, New Jersey 07702
`Telephone: 732-945-9498
`Email: cguarino@mtip1aw.com
`Attorneys for Respondent
`
`

`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that a true copy of the foregoing RESPONDENT’S MOTION
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`TO SUSPEND CANCELLATION PROCEEDING PENDING DISPOSITION OF CIVIL
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`ACTION was served upon counsel for Petitioner this 6”‘ day of April, 2016, by First-Class Mail,
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`postage prepaid, as follows:
`
`Holly M. Ford Lewis
`BUCHANAN INGERSOLL & ROONEY PC
`
`1737 King Street, Suite 500
`Alexandria, VA 22314
`
`Janet E. Reed, Ph.D.
`POTTER ANDERSON & CORROON LLP
`1313 North Market Street
`PO Box 951
`
`Wilmington, DE 19899
`
`
`
`Charle P. Guarino
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`

`
`Case 1:16-cv-00203-UNA Document 1 Filed 03/30/16 Page 1 of 11 PageID #: 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. _____________
`
`JURY TRIAL DEMANDED
`
`) ) ) ) ) ) ) ) ) )
`
`JOSEPH G. MCDONOUGH,
`
`Plaintiff,
`
`v.
`
`DEBORAH A. GORMAN, BE POSITIVE
`WORKS, LLC, and B+ FOUNDATION, INC.,
`
`Defendants.
`
`COMPLAINT
`
`This is an action for trademark infringement and unfair competition under the Lanham
`
`Act and Delaware statutory and common law against Defendants, Deborah A. Gorman, Be
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`Positive Works, LLC and B+ Foundation, Inc. (collectively, “Defendants”).
`
`Plaintiff Joseph G. McDonough (“Plaintiff”) is seeking a permanent injunction, damages,
`
`profits, treble damages or profits, attorneys’ fees, and costs. Plaintiff, appearing through his
`
`undersigned counsel, alleges as follows:
`
`PARTIES
`
`1.
`
`Plaintiff is a US Citizen with an address of 101 Rockland Circle, Wilmington, DE
`
`19803.
`
`2.
`
`Upon information and belief, Defendant, Be Positive Works LLC is a New York
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`Limited Liability Company with a place of business at 72 Hunt Farm Road, Waccabuc, New
`
`York 10597.
`
`3.
`
`Upon information and belief, Defendant Deborah Gorman is an individual
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`residing at 72 Hunt Farm Road, Waccabuc, NY 10597.
`
`

`
`Case 1:16-cv-00203-UNA Document 1 Filed 03/30/16 Page 2 of 11 PageID #: 2
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`4.
`
`Upon information and belief, Defendant B+ Foundation, Inc. is a 501(c)(3) non-
`
`profit corporation organized under the laws of the State of New York with an address at 72 Hunt
`
`Farm Road, Waccabuc, NY 10597.
`
`JURISDICTION AND VENUE
`
`5.
`
`This is a claim for damages and injunctive relief for trademark infringement and
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`unfair competition under the Lanham Act, 15 U.S.C. § 1051, et seq., including §§ 1114(1),
`
`1122(c) and 1127, and under Delaware Uniform and Deceptive Trade Practices Act, 6 Del. C.
`
`§§ 2531-36, and Delaware Common Law.
`
`6.
`
`This Court has subject matter jurisdiction over this action pursuant to the Lanham
`
`Act, 15 U.S.C. § 1121, and 28 U.S.C. §§ 1331 and 1338. The Court has pendant jurisdiction
`
`over Plaintiff's claims under Delaware law pursuant to 28 U.S.C. § 1338(b).
`
`7.
`
`This Court has personal jurisdiction over each of the Defendants. On information
`
`and belief, Defendants offer for sale and sell jewelry and apparel bearing the infringing mark in
`
`the United States and this District.
`
`8.
`
`Venue is proper in this judicial district under 28 U.S.C. § 1391(b, c) because
`
`Defendants are subject to personal jurisdiction in this District, Plaintiff resides within this
`
`district, transacts business and sales within this District, and the acts complained of herein that
`
`have caused and are continuing to cause injury to Plaintiff have occurred and are continuing to
`
`occur within this District.
`
`2
`
`

`
`Case 1:16-cv-00203-UNA Document 1 Filed 03/30/16 Page 3 of 11 PageID #: 3
`
`PLAINTIFF'S B+ MARKS
`
`9.
`
`Plaintiff is the owner of the following U.S. Federal Trademark registrations and
`
`pending U.S. Trademark Application:
`
`Mark
`
`B+
`
`Serial/Reg. No.
`
`Class/Goods/Services
`
`86/867,371
`
`14/Jewelry
`
`ANDREW MCDONOUGH
`B+ FOUNDATION & Design
`
`4,821,206
`
`B+ & Design
`
`4,360,988
`
`B+
`
`3,430,360
`
`25/Apparel; headwear
`
`36/Charitable services,
`namely, fund raising for
`medical treatment and
`research; providing
`educational scholarships
`
`45/Personal growth and
`motivation consulting services
`
`36/Charitable services,
`namely, fund raising for
`medical treatment and
`research; providing
`educational scholarships
`
`45/Personal growth and
`motivation consulting services
`
`36/Charitable services,
`namely, fund raising for
`medical treatment and
`research; providing
`educational scholarships
`
`45/Personal growth and
`motivation consulting services
`
`The above trademarks are collectively referred to as "Plaintiff's B+ marks." U.S. Registration
`
`3,430,360 is incontestable pursuant to 15 U.S.C. § 1065 and is evidence of Plaintiff’s exclusive
`
`right to use Plaintiff's B+ marks in commerce in the United States. Copies of the registration
`
`certificates and application file information are attached as Exhibit 1.
`
`3
`
`

`
`Case 1:16-cv-00203-UNA Document 1 Filed 03/30/16 Page 4 of 11 PageID #: 4
`
`DEFENDANTS' B+ MARK
`
`10.
`
`Upon information and belief, Defendant Be Positive Works LLC is the owner of
`
`the following Trademark Registration filed with the US Patent and Trademark Office (USPTO):
`
`Mark
`
`B+
`
`Serial/Reg. No.
`
`3,768,743
`
`Class/Goods/Services
`
`14/Jewelry
`
`11.
`
`Upon information and belief, Defendants are using the above B+ mark in
`
`commerce. The above trademark is hereinafter referred to as "Defendants’ B+ mark". A copy of
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`Defendants’ registration certificate is attached as Exhibit 2.
`
`BACKGROUND FACTS
`
`11.
`
`Plaintiff repeats and re-alleges Paragraphs 1 - 11 as if fully set forth herein.
`
`12.
`
`In 2007, Plaintiff founded The Andrew McDonough B+ Foundation (Plaintiff’s
`
`B+ Foundation), which is an IRS-certified 501(c)(3) non-profit corporation.
`
`13.
`
`Plaintiff’s B+ Foundation honors the memory of Andrew J. McDonough, the son
`
`of Plaintiff, who died at the age of 14, on July 14, 2007, due to complications from leukemia.
`
`Plaintiff’s B+ Foundation engages in fundraising for medical
`
`treatment and cutting edge
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`childhood cancer research, including supporting world leaders in adult and pediatric cancer
`
`treatment and research such as The Dana-Farber Cancer Institute, providing financial and
`
`emotional support
`
`to families of children with cancer through the B+ Family Assistance
`
`Program, and spreading the “B+ Positive” message by helping others “Live Like Andrew.”
`
`Plaintiff’s
`
`B+
`
`Foundation maintains websites
`
`at www.livelikeandrew.org/
`
`and
`
`www.BePositive.org. Plaintiff’s B+ Foundation raises money through charitable events such as
`
`marathons, auctions, dinners, as well as clothing, jewelry sales and more to provide financial and
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`emotional support to families of children with cancer nationwide. Many of these fundraising
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`events are sponsored and supported by colleges and universities nationwide.
`
`4
`
`

`
`Case 1:16-cv-00203-UNA Document 1 Filed 03/30/16 Page 5 of 11 PageID #: 5
`
`14.
`
`Plaintiff established the first use in commerce of Plaintiff’s B+ marks in 2007.
`
`The marks and logo are licensed to Plaintiff’s B+ Foundation.
`
`15.
`
`Upon information and belief, long after Plaintiff, in October 2009, Defendants
`
`established B+ Foundation, a 501(c)(3) non-profit corporation that also engages in fundraising
`
`for cancer treatment and research. Defendants maintain a website, http://bepositiveworks.com
`
`where they offer for sale jewelry and apparel all bearing the mark B+. Defendants allegedly
`
`contribute 15% of their profits to Defendants’ B+ Foundation which provides financial support
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`to the Bone Marrow/Stem Cell Programs at
`
`the Dana-Farber Cancer Institute in Boston,
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`Massachusetts.
`
`16.
`
`Defendants’ charitable fundraising services for cancer treatment and research are
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`identical to the Plaintiff’s and Plaintiff’s licensees’ charitable fundraising services and are
`
`marketed and promoted through identical channels of trade.
`
`17.
`
`Defendants’ manufacture and sale of jewelry and apparel bearing the B+ mark is
`
`identical to Plaintiff’s manufacture and sale of jewelry and apparel bearing Plaintiff’s B+ marks
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`and are marketed and promoted through identical channels of trade.
`
`18.
`
`Plaintiff is aware of confusion caused by individuals mistaking Defendants’ B+
`
`mark for Plaintiff’s B+ marks.
`
`19.
`
`Plaintiff has demanded that Defendants cease and desist their infringing activity.
`
`20.
`
`Despite Plaintiff’s demand that Defendants cease their infringing use of the B+
`
`mark, Defendants have continued use of the mark and infringement of Plaintiff’s federally
`
`registered B+ mark by using the mark “B+” to advertise and promote their fundraising activities,
`
`as well as on or in connection with its apparel and jewelry. Defendants’ use of Plaintiff’s B+
`
`5
`
`

`
`Case 1:16-cv-00203-UNA Document 1 Filed 03/30/16 Page 6 of 11 PageID #: 6
`
`marks causes confusion as to the source of the goods and services provided by both entities as
`
`well as the origin of the proceeds therefrom.
`
`21.
`
`On January 6, 2016, Plaintiff filed with the United States Patent and Trademark
`
`Office a Petition to Cancel Defendants’ U.S. Registration No. 3,768,743 for the B+ mark. The
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`proceeding is currently pending under Trademark Trial and Appeal Board Cancellation No.
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`92063002.
`
`22.
`
`Plaintiff now brings this action against Defendants, seeking an order enjoining
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`Defendants from further infringement of the B+ mark and from having any ownership interest(s)
`
`in, or right to utilize the same in the future, as well as an award of damages in an amount to be
`
`determined at trial.
`
`COUNT I - INFRINGEMENT UNDER THE LANHAM ACT
`15 U.S.C. § 1114
`
`23.
`
`Plaintiff repeats and re-alleges Paragraphs 1-22 as if fully set forth herein.
`
`24.
`
`Upon information and belief, Defendants adopted and are using Defendants' B+
`
`mark in connection with their charitable fundraising services, sale of jewelry and clothing and
`
`are advertising and promoting to the general public the aforesaid goods and services in
`
`connection with the mark, which is identical/confusingly similar to Plaintiff's B+ marks.
`
`25.
`
`Upon information and belief, Defendants have offered and provided their goods
`
`and services in connection with Defendants' B+ mark in interstate commerce.
`
`26.
`
`As a direct consequence of Defendants' actions, Plaintiff's customers and the
`
`public are likely to be, and have been, deceived or confused as to the source, origin, sponsorship
`
`and/or endorsement of Defendants' goods and services and their relationship to Plaintiff.
`
`27.
`
`Upon information and belief, Defendants' purpose in adopting and using
`
`Defendants' B+ mark and variations thereof was and is to deceive, mislead and confuse
`
`6
`
`

`
`Case 1:16-cv-00203-UNA Document 1 Filed 03/30/16 Page 7 of 11 PageID #: 7
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`customers and the public into believing that Plaintiff is the source of Defendants' goods/services,
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`or that the goods/services offered in connection with said marks are sponsored by, licensed by, or
`
`associated with Plaintiff, so as to trade on the substantial reputation and goodwill enjoyed by
`
`Plaintiff in connection with Plaintiff's B+ marks.
`
`28.
`
`Defendants' unlawful acts constitute trademark infringement in violation of the
`
`Lanham Act, 15 U.S.C. § 1114.
`
`29.
`
`By reason of Defendants' unlawful acts and practices in violation of the Lanham
`
`Act, Plaintiff has suffered, and will continue to suffer damage to its business, reputation and
`
`goodwill, for which Plaintiff is entitled to injunctive, monetary and other relief, and will continue
`
`to suffer irreparable harm which is not fully compensable by money damages.
`
`COUNT II - UNFAIR COMPETITION UNDER THE LANHAM ACT,
`15 U.S.C. § 1125(a)
`
`30.
`
`Plaintiff repeats and re-alleges Paragraphs 1-29 as if fully set forth herein.
`
`31.
`
`Plaintiff's use of Plaintiff's B+ marks in connection with its goods and services
`
`since at least as early as 2007 has established in the minds of consumers an association between
`
`Plaintiff's B+ marks and Plaintiff as the source of the goods and services. Plaintiff's B+ marks
`
`are inherently distinctive and have secondary meaning as an identification of the source of
`
`Plaintiff's goods and services.
`
`32. Without Plaintiff's permission, Defendants adopted and are using the Defendants'
`
`B+ mark in connection with their goods and services, and is promoting to the general public their
`
`goods and services in connection with Defendants' B+ mark which is identical to Plaintiff's B+
`
`marks.
`
`33.
`
`Upon information and belief, Defendants have offered their goods/services in
`
`connection with Defendants' B+ mark in interstate commerce.
`
`7
`
`

`
`Case 1:16-cv-00203-UNA Document 1 Filed 03/30/16 Page 8 of 11 PageID #: 8
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`34.
`
`As a direct consequence of Defendants' actions, Plaintiff's customers and potential
`
`customers are likely to be, and have been, deceived or confused into believing that Defendants'
`
`goods and services are authorized by, licensed by, or otherwise associated with Plaintiff.
`
`35.
`
`Upon information and belief, Defendants' purpose in adopting and using
`
`Defendants' B+ mark and variations thereof is to deceive, mislead and confuse customers and the
`
`public into believing that Plaintiff is and was the source of Defendants' goods, or that
`
`Defendants' goods are authorized by, licensed by, or otherwise associated with Plaintiff, so as to
`
`enable Defendants to take advantage of Plaintiff's B+ marks and the substantial reputation and
`
`goodwill enjoyed by Plaintiff therein.
`
`36.
`
`Defendants' use of Defendants' B+ mark and variations thereof constitutes false
`
`representation as to source in violation of the Lanham Act, 15 U.S.C. § 1125(a).
`
`37.
`
`By reason of Defendants' unlawful acts and practices, Plaintiff has suffered, and
`
`will continue to suffer damage to its business, reputation and goodwill, for which Plaintiff is
`
`entitled to injunctive relief and an award of damages, and will continue to suffer irreparable harm
`
`which is not fully compensable by money damages.
`
`COUNT III -- TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
`UNDER DELAWARE LAW
`
`38.
`
`Plaintiff repeats and re-alleges Paragraphs 1-37 as if fully set forth herein.
`
`39.
`
`Defendants'
`
`intentional and blatant
`
`infringement of Plaintiff's B+ marks
`
`constitutes trademark infringement, unfair competition, unfair and fraudulent business acts and
`
`practices and unfair, deceptive, untrue and misleading advertising under Delaware Uniform
`
`Deceptive Trade Practices Act, 6 Del. C. § 2531 et seq.
`
`COUNT IV - UNFAIR COMPETITION UNDER DELAWARE COMMON LAW
`
`40.
`
`Plaintiff repeats and re-alleges Paragraphs 1-39 as if fully set forth herein.
`
`8
`
`

`
`Case 1:16-cv-00203-UNA Document 1 Filed 03/30/16 Page 9 of 11 PageID #: 9
`
`41.
`
`Defendants'
`
`intentional and blatant
`
`infringement of Plaintiff's B+ marks
`
`constitutes trademark infringement, passing off, and unfair competition under Delaware
`
`Common Law.
`
`COUNT V - COMMON LAW UNJUST ENRICHMENT
`UNDER DELAWARE COMMON LAW
`
`42.
`
`Plaintiff repeats and re-alleges Paragraphs 1-41 as if fully set forth herein.
`
`43.
`
`Benefits have been conferred upon Defendants by Defendants’ unauthorized use
`
`of Plaintiffs’ B+ marks.
`
`44.
`
`Defendants have appropriated, accepted, and retained these benefits.
`
`45.
`
`It is inequitable for Defendants to retain these benefits without the payment of
`
`value to Plaintiff.
`
`46.
`
`Defendants have been unjustly enriched at Plaintiff’s expense.
`
`47.
`
`Defendants’ activities as described above constitute unjust enrichment under the
`
`common law of the State of Delaware.
`
`COUNT VI - CANCELLATION OF DEFENDANTS' B+ TRADEMARK
`
`48.
`
`Plaintiff repeats and re-alleges paragraphs 1-47 as if fully set forth herein.
`
`49.
`
`The continued existence of U.S. Registration No. 3,768,743 is contrary to 15
`
`U.S.C. § 1052(d) and will violate and diminish the prior and superior rights of Plaintiff in
`
`Plaintiff's B+ marks.
`
`50.
`
`Plaintiff is and will continue to be damaged by the existence of U.S. Registration
`
`No. 3,768,743 because Defendants have obtained statutory rights in the Defendants' B+ mark in
`
`violation and derogation of the established prior rights of Plaintiff in Plaintiff's B+ marks, in
`
`violation of 15 U.S.C. § 1052(d).
`
`9
`
`

`
`Case 1:16-cv-00203-UNA Document 1 Filed 03/30/16 Page 10 of 11 PageID #: 10
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff prays that this Court enter judgment in its favor and grant the
`
`following relief:
`
`A.
`
`An injunction enjoining Defendants and their officers, directors, employees,
`
`subsidiaries, affiliates, agencies, and/or instrumentalities from using any mark, trade name or
`
`source identifier, which is confusingly similar to Plaintiff's B+ marks, including but not limited
`
`to the B+ mark appearing in U.S. Registration No. 3,768,743 and variations thereof;
`
`B.
`
`An Order pursuant
`
`to 15 U.S.C. § 1119,
`
`that
`
`the United States Patent and
`
`Trademark Office cancel U.S. Registration No. 3,768,743;
`
`C.
`
`An injunction enjoining Defendants
`
`from providing, offering, advertising or
`
`promoting in any way any of their goods or any other goods that infringe upon Plaintiff's B+
`
`marks and variations thereof;
`
`D.
`
`E.
`
`That Plaintiff be awarded their actual damages in an amount to be proven at trial;
`
`That Defendants be required to account for any revenues attributable to their
`
`infringing acts;
`
`F.
`
`That Plaintiff be awarded three times any damages sustained by Plaintiff, and
`
`prejudgment interest;
`
`G.
`
`H.
`
`That punitive damages be awarded to Plaintiff;
`
`That all products, labels, signs, prints, packages, brochures, and advertising and
`
`promotional materials in the possession of Defendants bearing Defendants' B+ mark, or any
`
`word,
`
`term, name,
`
`symbol, device, combination thereof, designation, description, or
`
`representation that is found in violation of the Lanham Act, or any reproduction, counterfeit,
`
`10
`
`

`
`Case 1:16-cv-00203-UNA Document 1 Filed 03/30/16 Page 11 of 11 PageID #: 11
`
`copy, or colorable imitation thereof, and all plates, molds, matrices, and other means of making
`
`the same, shall be delivered up by Defendants and destroyed;
`
`I.
`
`That pursuant to 15 U.S.C. § 1116, Defendants file and serve a report under oath
`
`within thirty days of the issuance of injunctive relief indicating the manner in which they have
`
`complied with any injunctive relief ordered by the Court;
`
`That Plaintiff be awarded reasonable attorney fees in prosecuting this action; and
`
`That Plaintiff be granted such other and further relief which the Court deems just
`
`J.
`
`K.
`
`and proper.
`
`JURY DEMAND
`
`Plaintiff demands a jury trial pursuant to Federal Rules of Civil Procedure 38 and 39 on
`
`all issues so triable.
`
`OF COUNSEL:
`
`Alfred W. Zaher
`Holley M. Ford Lewis
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, VA 22314
`Tel: (703) 836-6620
`
`Dated: March 30, 2016
`1220028 / 32200
`
`Respectfully submitted,
`
`POTTER ANDERSON & CORROON LLP
`
`By:
`
`/s/ Kathleen Furey McDonough
`Kathleen Furey McDonough (#2395)
`Bindu A. Palapura (#5370)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`kmcdonough@potteranderson.com
`bpalapura@potteranderson.com
`
`Attorneys for Plaintiff Joseph G. McDonough
`
`11
`
`

`
`Case 1:16-cv-00203-UNA Document 1-1 Filed 03/30/16 Page 1 of 5 PageID #: 12
`
`Exhibit 1
`
`

`
`Trademark Electronic Search System (TESS)
`Page 1 of 2
`Case 1:16-cv-00203-UNA Document 1-1 Filed 03/30/16 Page 2 of 5 PageID #: 13
`
`United States Patent and Trademark Office
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`
`Word Mark
`
`B+
`
`Goods and Services
`
`IC 014. US 002 027 028 050. G & S: Jewelry. FIRST USE: 20080416. FIRST USE IN
`COMMERCE: 20081022
`
`IC 025. US 022 039. G & S: Apparel; headwear. FIRST USE: 20070200. FIRST USE IN
`COMMERCE: 20070916
`
`Standard Characters
`Claimed
`
`Mark Drawing Code
`
`(4) STANDARD CHARACTER MARK
`
`Serial Number
`
`Filing Date
`
`Current Basis
`
`Original Filing Basis
`
`Owner
`
`86867371
`
`January 6, 2016
`
`1A
`
`1A
`
`(APPLICANT) Joseph G. McDonough INDIVIDUAL UNITED STATES 101 Rockland Circle
`Wilmington DELAWARE 19803
`
`Attorney of Record
`
`Alfred W. Zaher
`
`Prior Registrations
`
`3430360;4360988
`
`Type of Mark
`
`Register
`
`TRADEMARK
`
`PRINCIPAL
`
`Live/Dead Indicator
`
`LIVE
`
`|.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4806:o7xjvk.2.1
`
`3/24/2016
`
`

`
`Case 1:16-cv-00203-UNA Document 1-1 Filed 03/30/16 Page 3 of 5 PageID #: 14
`Case 1:16—cv—OO203—UNA Document 1-1 Filed 03/30/16 Page 3 of 5 Page|D #: 14
`
`Tlflniteh étatw iBatent ant: Ofirahemark ®fft'te
`
`ANDREW M(DONOUCH
`
`
`
`FOUNDATION
`
`JOSEPH MCDONOUGH (UNITED STATES INDIVIDUAL)
`Reg_ No.
`101 ROCKLAND C {CLE
`_
`Reglstered Sep. 29, 2015 w1L1v11NGT0N.D3 19303
`
`Int. ClS.:
`
`and
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`FOR: CI-IARITARIF, SERVICES, NAMELY, FI N ) RAISING FOR MEDICAL TREATMENT
`AND RESEARCH; JROVIDING EDUCATIONAL SCHOLARSHIPS, IN CLASS 36 (US. CLS.
`I00, 10 AND 102).
`
`FIRST USE 8-9-2007; IN COMMERCE 8-9-2007.
`
`FOR: I-’.:'RSONAL GROWTH AND MOTIVATION CONSULTING SERVICES, IN CLASS 45
`(US. CLS. IOOAND 101).
`
`FIRST USE 8-9-2007; IN COMMERCE 8-9-2007.
`
`N O CLAIM IS MADE TO THE EXCLU SI VE RIGHT TO U SE "FOUNDATION " , APART FROM
`T {E MARK AS SHOVVN.
`
`T {E NAME SHOWN IN THE MARK DOES NOT IDENTIFY A PARTICULAR LIVING INDI-
`VII')UAI,.
`
`TIE MARK CONSISTS OF THE STYLIZED WORDING "ANDREW MCDONOUGH", THE
`STYLIZED TERM “B—" IN AN INCONPLETE CIRCLE ON A T—SHIRT ON A SHADED
`RECTANGULAR BACKGROUND.AND THE STYLIZED WORDING “FOUNDATION".
`
`SER. NO. S6-468,995, FILED 12-2-2014.
`
`KIM MONTNGHOFF, EXAIVITNING ATTORNEY
`
`Director of t11e United States
`Patent and Trademark Office
`
`

`
`Case 1:16-cv-00203-UNA Document 1-1 Filed 03/30/16 Page 4 of 5 PageID #: 15
`Case 1:16—cv—OO203—UNA Document 1-1 Filed 03/30/16 Page 4 of 5 Page|D #: 15
`
`
`
`JOSEPH MCDONOUGH (UNITED STATES INDIVIDUAL)
`Reg_ No_ 4,360,933
`101 ROCKLAND C {CLE
`_
`Reglstered July 2, 2013 WIL1\/J1NGTON.,D3 19303
`
`Int. ClS.:
`
`and
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`FOR: CI-IARITARIF, SERVICES, NAMEIY, EI N ) RAISING FOR MEI)ICAI, TREATMENT
`AND R.:'SEARCI—I; JROVIDING .:'I)UCA'I'IONAL SCHOLARSHIPS, IN CLASS 36 (US. CLS.
`100, 10 AND 102).
`
`FIRST USE 8-9-2007; IN COMMERCE 8-9-2007.
`
`FOR: I-’.:'RSONAL GROWTH AND MO'I'IVA'I'ION CONSULTING SERVICES, IN CLASS 45
`(US. CLS. IOOAND 101).
`
`FIRST USE 8-9-2007; IN COMMERCE 8-9-2007.
`
`OWNER OF U.S. REG. NO. 3,430,360.
`
`THE MARK CONSISTS OF AN APPROXIMATE CIRCLE WITH A SLIGHT OPENING AT
`ITS BOTTOM RIGHT HAND SIDE. WITHIN SAID CIRCLE CONTAINS THE STYLIZED
`LETTER, "RI, ANDA PTJIIS SYIVIROL.
`
`SER. NO. 85-771,436, FILED 11-5-2012.
`
`I
`WILLIAM P. SHANAHAN, EXAMINING ATTORNEY
`
`
`
`Acting Director ufthe United States PHLEIII. and Tmdenmrk Offlce
`
`

`
`Case 1:16-cv-00203-UNA Document 1-1 Filed 03/30/16 Page 5 of 5 PageID #: 16
`Case 1:16—cv—OO203—UNA Document 1-1 Filed 03/30/16 Page 5 of 5 Page|D #: 16
`
`Int. Cls.: 36 and 45
`
`Prior U.S. Cls.: 100, 101 and 102
`
`United States Patent and Trademark Office
`
`Reg. No. 3,430,360
`Registered May 20, 2008
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`
`
`JOSEPH MCDONOUGH (UNITED STATES INDI-
`VIDUAL)
`100 ROCKLAND ROAD
`WILMINGTON, DE 19803
`
`FOR: CHARITABLE SERVICES, NAMELY, FUND
`RAISING FOR MEDICAL TREATMENT AND RE-
`SEARCH; PROVIDING EDUCATIONAL SCHOLAR-
`SHIPS, IN CLASS 36 CU.S. CLS. 100, 101 AND 102).
`
`FOR: PERSONAL GROWTH AND MOTIVATION
`CONSULTING SERVICES, IN CLASS 45 (US. CLS.
`100 AND 101).
`
`FIRST USE 8-9-2007; IN COMMERCE 8-9-2007.
`
`SER. NO. 77-272,701, FILED 9-6-2007.
`
`FIRST USE 8-9-2007; IN COMMERCE 8-9-2007.
`
`KEVON CHISOLM, EXAMINING ATTORNEY
`
`

`
`Case 1:16-cv-00203-UNA Document 1-2 Filed 03/30/16 Page 1 of 2 PageID #: 17
`
`Exhibit 2
`
`

`
`Case 1:16-cv-00203-UNA Document 1-2 Filed 03/30/16 Page 2 of 2 PageID #: 18
`Case 1:16-cv-00203-UNA Document 1-2 Filed 03/30/16 Page 2 of 2 Page|D #: 18
`
`“mg étatez of am“.
`Tlflniteh étatw iBatent ant: Ofirahemark ®fft'£e
`
`B+
`
`Reg_ No, 3,768,743 G()RI\/lAN,L)J:'BORAHA. (UNl'1'EL) S'lA'l'J:'S INDIVIDUAL), DBA 5+:
`Registered Mar. 30, 2010 72 HUNT FARM ROAD
`WACCABUC, NY 10597
`
`Int. CL:
`
`FOR: JEWELRY, IN CLASS 14 (US. CLS_ 2, 27, 28 AND 50).
`
`FIRST USE I2-4-2008; IN COMMFRCF, I2-4-2008.
`
`TRADEMARK
`PRINCIPAL REGISTER TTE MARK CONs1sTs or STANDARD CHARACTLRS WITHOUT CLAIM To ANY PAR-
`TCILAR FONT, STYLE, SIZE, OR COLOR.
`
`S\I 77-620,154, FILFT) 1 1-22-2008.
`
`KATT JERINE STOIDES, EXAMTNING ATTORNEY
`
`
`
`Di|'CL'1UIUfUlC Luitcd Statue Patent and l':L<d::m:u1x OITRL-r:
`
`

`
`@I // %HTe) ,-*,-&
`
`Case 1:16-cv-00203-UNA Document 1-3 Filed 03/30/16 Page 1 of 2 PageID #: 19
` CIVIL COVER SHEET
`JWT @I // RXeX[ R^eTa bWTTc P]S cWT X]U^a\PcX^] R^]cPX]TS WTaTX] ]TXcWTa aT_[PRT ]^a bd__[T\T]c cWT UX[X]V P]S bTaeXRT ^U _[TPSX]Vb ^a ^cWTa _P_Tab Pb aT‘dXaTS Qh [Pf’ TgRT_c Pb
`_a^eXSTS Qh [^RP[ ad[Tb ^U R^dac) JWXb U^a\’ P__a^eTS Qh cWT @dSXRXP[ 8^]UTaT]RT ^U cWT K]XcTS IcPcTb X] IT_cT\QTa ,42/’ Xb aT‘dXaTS U^a cWT dbT ^U cWT 8[TaZ ^U 8^dac U^a cWT
`_da_^bT ^U X]XcXPcX]V cWT RXeX[ S^RZTc bWTTc) (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`
`I. (a) PLAINTIFFS
`
`Joseph G. McDonough
`
`DEFENDANTS
`
`Deborah A. Gorman, Be Positive Works LLC and B+ Foundation, Inc.
`
`(b) 8^d]ch ^U HTbXST]RT ^U <Xabc BXbcTS F[PX]cXUU
`
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`
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`(IN U.S. PLAINTIFF CASES ONLY)
`
`(c) 6cc^a]Thb (Firm Name, Address, and Telephone Number)
`Kathleen Fury McDonough (# 2395)
`Potter Anderson & Corroon LLP, Hercules Plaza, 6th Floor
`1313 N. Market Street, Wilmington, DE 19801; (302) 984-6000
`
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
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`
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`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`(For Diversity Cases Only)
` and One Box for Defendant)
` PTF DEF
` PTF
` DEF
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`CONTRACT
`TORTS
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