Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA817895
`
`Filing date:
`
`05/01/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92065725
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Menudo International LLC
`
`Ralph H. Cathcart
`Ladas & Parry LLP
`1040 Avenue of the Americas
`New York, NY 10018-3738
`UNITED STATES
`rcathcart@ladas.com, dprahl@ladas.com, jkwon@ladas.com, rwar-
`ren@ladas.com, rroa@ladas.com
`
`Motion to Suspend for Civil Action
`
`Ralph H. Cathcart
`
`rcathcart@ladas.com, dprahl@ladas.com, jkwon@ladas.com, rroa@ladas.com
`
`/Ralph H. Cathcart/
`
`05/01/2017
`
`Consented Motion to Suspend for Civil Action - Cancellation IMP Hold-
`ings.pdf(1047043 bytes )
`Declaration of Ralph H. Cathcart - Cancellation IMP Holdings.pdf(4275453 bytes
`)
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`___________________________________________________________________x
`
`IMP HOLDINGS LLC,
`
`Petitioner,
`
`V.
`
`: Cancellation No. 92/065,725
`
`Registration No. 4,558,767
`
`MENUDO INTERNATIONAL, LLC,
`
`Respondent.
`
`_________________________________________________________________ "X
`
`RESPONDENT’S CONSENTED MOTION TO SUSPEND FOR CIVIL ACTION
`
`Pursuant to 37 C.F.R. § 2.117, Respondent, Menudo International, LLC
`
`(“Menudo”), respectfully requests that the Trademark Trial and Appeal Board (“Board”)
`
`suspend this Cancellation proceeding pending the final disposition of a trademark
`
`infringement action between the Parties filed by Menudo and titled Menudo International,
`
`LLC v. In Miami Production, LLC — Civil Action No. 1:17-cv—21559 (KMW) in the
`
`United States District Court for the Southern District of Florida (“District Court Action”).
`
`BACKGROUND
`
`On March 28, 2017, Petitioner filed a Petition to Cancel Respondent’s MENUDO
`
`Registration No. 4,558,767. The Board assigned proceeding no. 92/065,725
`
`(“Cancellation Proceeding”).
`
`In Petitioner’s Petition to Cancel, Petitioner seeks to cancel Respondent’s
`
`MENUDO Registration No. 4,558,767, seemingly based on fraud in the prosecution and
`
`abandonment.
`
`Petitioner has also opposed Menudo’s pending MENUDO Application No.
`
`

`

`87/056,545 in Opposition No. 91/232,366. That Opposition action is in its infancy,
`
`Menudo recently filed an Answer (Dkt. 5) denying the salient allegations and interposed
`
`several affirrnative defenses, noting its exclusive rights and Petitioner’s unauthorized use
`
`of MENUDO. No discovery has been taken by either side.
`
`On April 26, 2017, Menudo filed the District Court Action alleging exclusive and
`
`prior ownership of MENUDO, trademark infringement by Petitioner of Respondent’s
`
`MENUDO trademarks, including MENUDO Registration No. 4,558,767, unfair
`
`competition and related state claims against Petitioner.
`
`ARGUMENT
`
`It is well established that when a pending civil action between the Parties to a
`
`proceeding before the Board may be dispositive of the Board proceeding, the Board may
`
`suspend those proceedings until final disposition of the civil action. See,
`
`i. e., 37 C.F.R. §
`
`2.117(a); TBMP § 510.02(a). See also, General Motors Corp. v. Cadillac Club Fashions,
`
`Inc, 22 U.S.P.Q.ZD 1933, 1936 (TTAB 1992); The Other Telephone Co. v. Connecticut
`
`National Telephone Co., Inc, 181 U.S.P.Q. 125, 127 (TTAB 1974); Tokaia’o v. Honda
`
`Associates, Inc, 179 U.S.P.Q. 861, 862 (TTAB 1973); Whopper Burger, Inc. v. Burger
`
`King Corp, 171 U.S.P.Q. 805, 807 (TTAB 1971). In fact, “it is deemed to be the better
`
`policy to suspend proceedings [before the Board] until the civil suit has been finally
`
`concluded”. Tokaia’o 179 U.S.P.Q. at 861,
`
`There are numerous reasons for this well settled policy. Indeed, “while a decision
`
`by the district court would be binding upon the Patent Office, a decision by the
`
`Trademark Trial and Appeal Board might only be advisory in respect to the disposition of
`
`the case pending in the District Court”. Id.; See also, Whopper Burger, 171 U.S.P.Q. at
`
`807.
`
`

`

`Further, a final judgment in the district court would necessarily obviate the need
`
`for further litigation before the Board. Thus, suspension of the instant proceeding would
`
`be in the interest ofj udicial economy and avoiding the possibility of duplicative litigation
`
`or conflicting judgments being issued by the Board or the district court.
`
`Here, Petitioner’s Petition to Cancel alleges, among other things, that
`
`Respondent’s MENUDO Registration should be cancelled based on abandonment and
`
`fraud in the prosecution.
`
`In the District Court Action appended to the Cathcart Dec’l. as Exhibit A,
`
`Respondent alleges, inter alia, it owns the exclusive rights to MENUDO, that such rights
`
`are prior to any common law rights Petitioner claims to own and that Petitioner is
`
`infringing Respondent’s MENUDO Registration No. 4,558,767.
`
`Further, Respondent’s unfair competition and other state law claims plead in the
`
`District Court Action could not be raised in this Cancellation Proceeding. As such, a
`
`final judgment in the District Court Action will require resolution of additional issues not
`
`presently before the Board. Conversely, a final judgment in the Cancellation Proceeding
`
`would not eliminate the need for continued litigation in the District Court Action.
`
`In light of the above, suspension of these proceedings is in the interest of the
`
`Parties and judicial economy, comports with the practice and precedent of this Board and
`
`will avoid inconsistent judicial determinations of the matters before the Board and the
`
`District Court.
`
`Accordingly, Menudo respectfully requests suspension of all further proceedings
`
`in this Cancellation proceeding until final disposition of the District Court Action.
`
`Petitioner’s counsel, Johanna R. Hyman, Esq, has consented to this request.
`
`

`

`Menudo is also simultaneously filing a consented motion to suspend the
`
`Opposition proceeding between the parties (Opposition No. 91/232, 366) which has not
`
`been consolidated yet with this Cancellation Action.
`
`Dated: May 1, 2017
`
`Respectfully submitted,
`LADAS & PARRY LLP
`
`Attorneys for Applicant
`
`fiaflt/dé-W
`
`Ralph H. Cathcart
`Jennifer Kwon
`
`1040 Avenue of the Americas
`
`New York, NY 10018-3738
`
`Tel: (212) 708-1920
`E-mail: rcathcart@ladas.com
`(Our Ref: C117689487)
`
`

`

`CERTIFICATE OF TRANSMISSION
`
`I, Reinaldo M. Roa, hereby certify that a copy of the foregoing RESPONDENT’S
`
`CON SENTED MOTION TO SUSPEND FOR CIVIL ACTION is being
`electronically transmitted to the United States Patent and Trademark Office on the date
`indicated.
`
`Dated: May 1, 2017
`
`
`
`Reinaldo M. Roa
`
`CERTIFICATE OF SERVICE
`
`I, Reinaldo M. Roa, hereby certify that a copy of the foregoing RESPONDENT’S
`CONSENTED MOTION TO SUSPEND FOR CIVIL ACTION was served on the
`
`person(s) listed below by email on the date indicated:
`
`Vivek Jayaram, Esq.
`
`Jayaram Law Group, Ltd.
`125 S. Clark St.17th Floor
`
`Chicago, IL 60603
`Email: vive_k_@iaya_ramlaw.com, johanna_@jayaramlaw.com,
`doni
`'a aramlaw.com
`
`Phone: 312 212 8676 fl
`
`
`
`Reinaldo M. Roa
`
`Dated: May 1, 2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_________________________________________________________________ "X
`
`IMP HOLDINGS LLC,
`
`Petitioner,
`
`v.
`
`:
`
`Cancellation No. 92/065,725
`
`Registration No. 4,558,767
`
`MENUDO INTERNATIONAL, LLC,
`
`Respondent.
`
`_________________________________________________________________ --X
`
`DECLARATION OF RALPH H. CATHCART, ES! 2.
`
`1, Ralph H. Cathcart, declare that the following is true and correct pursuant to 28
`
`U.S.C. § 1746:
`
`1.
`
`I am a partner at Ladas & Parry LLP, attorneys for Applicant Menudo
`
`International, LLC (“Respondent”) and submit this declaration in support of
`
`Respondent’s Consenth Opposer’s Motion to Suspend for Civil Action.
`
`2.
`
`On March 28, 2017, Petitioner filed a Petition to Cancel Respondent’s
`
`MENUDO Registration No. 4,558,767. The Board assigned proceeding no. 92/065,725.
`
`3.
`
`The Parties have engaged in no discovery, Respondent has yet to file an
`
`Answer and this proceeding is in its infancy
`
`4.
`
`On or about April 26, 2017, Applicant filed a Complaint against Petitioner
`
`in the United States District Court for the Southern District of Florida in an action styled
`
`Menudo International, LLC v. In Miami Production, LLC — Civil Action No. 1:17-cv-
`
`21559 (KMW) (“District Court Action”) alleging prior and exclusive ownership rights to
`
`MENUDO and trademark infringement by Petitioner of Respondent’s MENUDO
`
`

`

`trademarks, including MENUDO Registration No. 4,558,767 and unfair competition and
`
`related state claims. A copy is attached as Exhibit A.
`
`5.
`
`In light of the above, Applicant respectfully requests that the Board
`
`suspend proceedings pending the final disposition of the District Court Action.
`
`I declare that the foregoing is true and correct under penalties of perjury.
`
`Executed on May 1, 2017 in New York, New York.
`
`
`
`2
`
`Ralph H. Cathcart
`
`

`

`CERTIFICATE OF TRANSMISSION
`
`I, Reinaldo M. Roa, hereby certify that a copy of the foregoing DECLARATION
`OF RALPH H. CATHCART, ESQ. is being electronically transmitted to the United
`States Patent and Trademark Office on the date indicated:
`
`Dated: May 1, 2017 M
`
`Reinaldo M. Roa
`
`CERTIFICATE OF SERVICE
`
`I, Reinaldo M. Roa, hereby certify that a copy of the foregoing DECLARATION
`OF RALPH H. CATHCART, ESQ. was served on the persons listed below by e-mail,
`on the date indicated below:
`
`Vivek Jayaram, Esq.
`Jayaram Law Group, Ltd.
`125 S. Clark Street, 17th Floor
`
`Chicago, IL 60603
`Email: vivek@iayaramlaw.com, johanna@jayaramlaw.com,
`doni@jayaramlaw.com
`Phone: 312 212 8676
`
`/ %
`
`Reinaldo M. Roa
`
`Dated: May 1, 2017
`
`

`

`EXHIBIT A
`
`

`

`Case 1:17—cv~21559—XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 1 of 9
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`CASE:_w____MW__
`
`MENUDO INTERNATIONAL, LLC
`A Florida LLC
`
`Plaintiff,
`
`v.
`
`IN MIAMI PRODUCTION. LLC.
`
`A Florida LLC,
`Maria Cristina Braun, an individual, and
`
`Charlie Masso, an individual
`
`Defendants.
`
`
`VERIFIED COMPLAINT AND DEMAND FOR JURY TRIAL
`
`Plaintiff, MENUDO INTERNATIONAL, LLC, a Florida limited liability company
`
`(“Plaintiff”) by and through its undersigned counsel and for its Complaint against Defendants, IN
`
`MIAMI PRODUCTION, LLC.
`
`(“IMP”), MARIA CRISTINA BRAUN AND CHARLIE
`
`MASSO (collectively “Defendants”), allege as follows:
`
`JURISDICTION AND VENUE
`
`This
`
`is a complaint
`
`for Trademark Infringement, Unfair Competition and False
`
`Description arising under §§ 31 and 43 of the Lanham Act, 15 U.S.C. §§ 1114(1) (Trademark
`
`lnfi'ingement) and §1125 (a) (Unfair Competition and False Description), for Unfair Business
`
`Practices arising under Florida Statutes §§ 495.131, 495.151 and for injury to business reputation
`
`under common law.
`
`1.
`
`This Court has original subject matter jurisdiction over this action pursuant to 28
`
`U.S.C. § 1338(a) and 15 U.S.C. § 1121. This Court has related claim jurisdiction over the
`
`

`

`Case 1:17-cv—21559-XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 2 of 9
`
`pendant state law claims pursuant to 28 U.S.C. §1338(b) and 28 U.S.C. §1367. The Court has in
`
`personam jurisdiction over each of the Defendants, who each conducts business in this judicial
`
`district, and because each of the Defendants directed its wrongful actions and has caused damage
`
`to Plaintiff here in the State of Florida.
`
`2.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §l 391 inasmuch as a
`
`substantial part of the events or omissions giving rise to the claims for relief occurred in this
`
`judicial district.
`
`PARTIES
`
`3.
`
`Plaintiff is and at all
`
`time mentioned herein was, a limited liability company
`
`organized and existing under the law of the State of Florida, having a principal place of business
`
`in Monroe County Florida. At all times herein, Plaintiff has been engaged in the business of
`
`developing, marketing, distributing and selling goods and services under
`
`the trademark
`
`“MENUDO” .
`
`4.
`
`Plaintifi~ was established as the exclusive entity to license the mark MENUDO
`
`along with trademarks created and closely associated therewith, including, inter alia, MENUDO
`
`Registration No. 4,558, 767.
`
`5.
`
`Defendant,
`
`IN MIAMI PRODUCTION, LLC (“IMP”) is a company that
`
`is
`
`believed to produce live entertainment and musical events and sells related MENUDO
`
`merchandise.
`
`[MP is a Florida LLC with its principle place of business in Miami Dade County,
`
`Florida.
`
`6.
`
`Defendant, MARIA CRISTINA BRAUN (“BRAUN”) is an individual who is a
`
`resident of Miami Dade County, Florida who controls the infringing activities of IMP.
`
`

`

`Case 1:17—cv—21559-XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 3 of 9
`
`7.
`
`Defendant, CHARLIE MASSO (“MASSO”) is an individual who is a resident of
`
`Miami Dade County, Florida who controls the infringing activities of IMP.
`
`FACTUAL BACKGROUND
`
`8.
`
`Formed in 2015, Plaintiff is an entity which exclusively owns the common law
`
`rights and a federal
`
`trademark registration for use of the popular and well-known mark
`
`“MENUDO” (hereinafter referenced as “the Mark”) in commerce. A copy of the MENUDO
`
`trademark registration is attached hereto as Exhibit A.
`
`9.
`
`Since 2015 and continuing to present, Plaintiff has marketed, distributed, and/or
`
`sold its goods and services bearing the Mark or similar variations thereof in relation to the
`
`internationally known MENUDO band. Plaintiff has expended significant time, energy and
`
`money to obtain, preserve and develop the goodwill associated with the Mark and the MENUDO
`
`brand.
`
`10.
`
`Plaintiff is the assignee of all intellectual property rights, including common law,
`
`trademark rights and registrations for the Mark, from predecessors-in-interest who previously
`
`owned and used the Mark since 1995,
`
`including Big Bar Entertainment, LLC, Menudo
`
`Entertainment, LLC, Global Entertainment LLC., New Global Entertainment LLC, and Oscar
`
`Llord.
`
`11.
`
`Without permission from Plaintiff, in or about 2016, Defendants began to market
`
`and promote live performances by entertainers using the Mark, notwithstanding that such
`
`entertainers or performers were not associated or sponsored by Plaintiff, have marketed and
`
`distributed t-shirts and possibly other merchandise containing an obvious reference to the Mark
`
`and have falsely and imperrnissibly attempted to register a claim to the Mark in countries other
`
`than the United States.
`
`

`

`Case 1:17-cv—21559-XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 4 of 9
`
`COUNT I — TRADEMARK INFRINGEMENT UNDER THE LANHAM ACT
`AGAINST ALL DEFENDANTS
`
`12.
`
`Plaintiff repeats and hereby incorporates by reference as though specifically
`
`pleaded herein, the allegations of paragraphs 1
`
`11.
`
`13.
`
`The aforesaid acts of Defendants constitutes infringement of the Mark,
`
`in
`
`violation of Section 32(1) ofthe Lanham Act of 1947, as amended, 15 U.S.C §1114(1).
`
`l4.
`
`Defendants’ unauthorized use of the Mark is an infringement of Plaintiff‘s
`
`exclusive rights to MENUDO, including its registered and validly subsisting trademark, is likely
`
`to cause confiJsion, mistake and deception amongst the public as to the identity, origin and
`
`source of Defendants’ goods and services, thereby causing damage and irreparable harm to
`
`Plaintiff for which there is no adequate remedy at law. Unless Defendants is restrained and
`
`enjoined from continuing its wrongful acts, the damage to Plaintiff will increase.
`
`15.
`
`Plaintiff is informed and believes that each Defendant has unlawfully and
`
`willfully obtained profits from its wrongfiil use of the Mark in concerts, performances and sales
`
`of related merchandise. The amount of money earned by each Defendant is unknown and can
`
`only be ascertained by an accounting of Defendants’ files, books and records.
`
`16.
`
`An accounting is necessary to determine the true status of Defendants’ accounts
`
`and the amounts owed to Plaintiff.
`
`17.
`
`By reason of the foregoing acts, each Defendant is liable to Plaintiff for trademark
`
`infringement under 15 U.S.C §1114.
`
`
`COUNT II — UNFAIR COMPETITION FALSE DESIGNATION
`
`OR ORIGIN AND FALSE ENDORSEMENT — 15 U.S.C §1125§a1
`
`18.
`
`Plaintiff repeats and hereby incorporates by reference as though specifically
`
`pleaded herein, the allegations of paragraphs 1
`
`-~ 11 and 13 - 17.
`
`

`

`Case 1:17-cv-21559-XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 5 of 9
`
`l9.
`
`Defendants’ use of the Mark to promote, market or sell its products and services
`
`as described above, are in direct competition with Plaintiff’s products and services and
`
`constitutes unfair competition, false designation of origin and false endorsement in violation of
`
`15 U.S.C §1125(a). Defendants’ use of the Mark on these goods is likely to cause confusion,
`
`mistake,
`
`and deception amongst consumers
`
`as
`
`to source,
`
`association,
`
`sponsorship or
`
`endorsement.
`
`20.
`
`Defendants’ wrongfiil acts have permitted or will permit it to unfairly capitalize
`
`on the success, goodwill and reputation of Plaintiff and the strength of Plaintiff’s Mark in
`
`promoting its own goods and services.
`
`21.
`
`As a direct and proximate result of Defendants’ wrongful conduct, Plaintiff has
`
`been and will be deprived of the value of its Mark and its related assets.
`
`22.
`
`As a direct and proximate result of Defendants’ wrongful conduct, Plaintiff has
`
`been damaged and such damage will continue unless the Court enjoins Defendants’ acts.
`
`Plaintiff has no adequate remedy at law for Defendants’ continuing violation of their rights.
`
`COUNT III - UNFAIR COMPETITION UNDER FLORIDA STATUTES §fi95.131, 151
`
`23.
`
`Plaintiff repeats and hereby incorporates by reference as though specifically
`
`pleaded herein, the allegations of paragraphs 1 ~ ll.
`
`24.
`
`Defendants’ actions discussed herein constitute unfair competition within the
`
`meaning of sections 495.131 and 151, Florida Statutes.
`
`25.
`
`Plaintiff‘s is entitled to preliminary and permanent injunctive relief ordering each
`
`Defendant to cease this unfair competition, as well as a disgorgement of all of each Defendants’
`
`profits associated with this unfair competition.
`
`COUNT IV - DECEPTIVEa FALSE AND MISLEADING ADVERTISING—
`FLORIDA STATUTE §495.151
`
`-5-
`
`

`

`Case 1:17-cv-21559—XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 6 of 9
`
`26.
`
`Plaintiff repeats and hereby incorporates by reference as though specifically
`
`pleaded herein, the allegations of paragraphs 1
`
`~ ll,
`
`27.
`
`The acts of each Defendant described above constitute untrue and misleading
`
`advertising by Florida Statute 495, et seq.
`
`28.
`
`Defendants’ use of the Mark as well as the false and infiinging use of the Mark in
`
`the same market is likely to create confusion, or to cause mistake or to deceive consumers as to
`
`the affiliation, connection or association of Plaintiff’s products and services, or deceive
`
`consumers as to the origin, sponsorship or approval by Plaintiff of Defendants’ products and
`
`services.
`
`29.
`
`Defendants' wrongful acts have permitted or will permit them to capitalize on the
`
`success, goodwill and reputation of Plaintiff and the strength of Plaintiff's Mark in promoting his
`
`own goods and services.
`
`30.
`
`As a direct and proximate result of Defendants’ wrongful conduct, Plaintiff has
`
`been damaged and such damage will continue unless the Court enjoins Defendants’ acts.
`
`Plaintiff has no adequate remedy at law for Defendants’ continuing violation of Plaintiffs rights.
`
`COUNT V — TRADEMARK INFRINGEMENT -— COMMON LAW
`
`3].
`
`Plaintiff repeats and hereby incorporates by reference as though specifically
`
`pleaded herein, the allegations of paragraphs 1
`
`-- ll.
`
`32.
`
`The acts of each Defendant described above constitute trademark infringement of
`
`Plaintiff’s common law rights in its uses of the Mark.
`
`33.
`
`Defendants’
`
`improper and unauthorized use of the Mark is likely to cause
`
`confusion, mistake and deception of the public as to the identity and origin of Plaintiff’s good
`
`

`

`Case 1:17-cv—21559-XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 7 of 9
`
`and services and is likely to cause others to believe that
`
`there is a relationship between
`
`Defendants and Plaintiff.
`
`34.
`
`Defendants’ wrongful acts have permitted or will permit them to capitalize on the
`
`success, goodwill and reputation of Plaintiff and the strength of Plaintiffs Mark in promoting
`
`their own goods and services.
`
`35.
`
`As a direct and proximate result of Defendants’ wrongfiil conduct, Plaintiff has
`
`been and will be deprived of the value of their Mark and related assets.
`
`36.
`
`As a direct and proximate result of Defendants’ wrongful conduct, Plaintiff has
`
`been damaged and such damage will continue unless the Court enjoins Defendants’ continuing
`
`violation of Plaintiff’s trademark rights.
`
`COUNT VI - COMMON LAW INJURY T0 BUSINESS REPUTATION
`
`37.
`
`Plaintiff repeats and hereby incorporates by reference as though specifically
`
`pleaded herein, the allegations of paragraphs 1
`
`»— ll.
`
`38.
`
`Plaintiff alleges that Defendants’ use of the infringing Mark injures and creates a
`
`likelihood of injury to Plaintiff’s business reputation because persons encountering Plaintiff and
`
`its products and services will believe that Defendants are affiliated with or related to or have the
`
`approval of Plaintiff and any adverse reaction by the public to Defendants and the quality of its
`
`products and the nature of its business will injure the business reputation of Plaintiff and the
`
`goodwill that they enjoy in connection with their Mark.
`
`WHEREFORE, Plaintiff prays:
`
`1.
`
`That pursuant to 15 U.S.C. §1116, Fla Stat. §§465.l4l and 540.080) each of the
`
`Defendants and their agents, officers, employees, representatives, successors, assigns, attorneys,
`
`and all other persons acting for, with, by, through or under authority from each Defendants and
`
`

`

`Case 1:17—cv—21559-XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 8 of 9
`
`each of them, be preliminary and permanently enjoined from (a) using the Mark or any colorable
`
`imitation thereof; (b) using any trademark that imitates or is confusingly similar to or in anyways
`
`similar to Plaintiff‘s Mark, or that is likely to cause confusion, mistake, deception, or public
`
`misunderstanding as to the origin of Plaintiff‘s products and services or their connectedness to
`
`Defendants; (c) using the name, image and likeness of MENUDO for commercial or advertising
`
`purposes, anywhere on the website or in commerce; and ((1) using any Mark that is confusingly
`
`similar to the Plaintiff‘s Marks;
`
`2.
`
`That Defendants be required to file with the Court and serve on Plaintiff within
`
`thirty (30) days after entry of the injunction, a report in writing under oath setting forth in detail
`
`the manner and form in which each Defendants has complied with the injunction;
`
`3.
`
`That pursuant to 15 U.S.C. §lll7, Defendants be held liable for all damages
`
`suffered by Plaintiff resulting limit the willful acts alleged herein;
`
`4.
`
`That pursuant to 15 U.S.C.
`
`(3'1 1 17, each Defendant be compelled to account to
`
`Plaintiff for any and all profits derived by it from its illegal acts complained of herein;
`
`5.
`
`That each Defendant be ordered pursuant to 15 U.S.C. §1118 and Fla. Stat.
`
`§495.l4l to deliver up for destruction all clothing, containers, labels, signs, prints, packages,
`
`wrappers, receptacles, advertising, promotional material or the like in possession, custody or
`
`under the control of Defendants bearing a trademark found to infi'inge Plaintiff‘s trademark
`
`rights, as well as all plates, materials, and other means of making the same;
`
`6.
`
`That the Court declare this to be an exceptional case and award Plaintiff its firll
`
`costs and reasonable attorneys’ fees pursuant to 15 U.S.C. §1 1 l7;
`
`7.
`
`That Defendants be ordered, pursuant to Fla. Stat. 495.141, to pay Plaintiff treble
`
`damages;
`
`

`

`Case 1:17-cv-21559-XXXX Document 1 Entered on FLSD Docket 04/26/2017 Page 9 of 9
`
`8.
`
`That the Court grant Plaintiff any other remedy to which they may be entitled ai
`
`provided for in 15 U S C §i 116 and l 117 or under state law.
`
`9.
`
`For such and other further relief that the Court may deem just and proper.
`
`DEMAND FOR JURY TRIAL
`
`Plaintiffdemand Jury Trial ofall issues
`
`VERIFICATION
`
`1, Paul Tarnopol, as manager of Menudo International, LLC, do hereby verify under
`
`penalties or perjury the truth of the allegations set forth herein
`
`
`
`PA rOPOL, Manager
`MENUDO INTERNATIONAL, LLCO
`
`Dated on this
`
`day of April, 2017.
`
`Respectfully submitted.
`WOLFE LAW MIAML PA.
`
`Altomeysfor Plain!
`175 sw 7" Street, Suite 2410
`Miami, Florida 33130
`Phone: 305-384J370
`
`RICHARD C. WOLFE
`FLORIDA BAR #355607
`
`m olfe gfit'olfelaw truamlice m
`
`

`

`BééémflfiifléfifiégjkfifimbmtfiffiSEIItered on FLSD Docket 04/26/2017 Pfiéfié 98%
`
`/
`United States Patent and Trademark Office
`\ Home I Site Index I Search I FAQ I Glossary I Guide-5 I Contacts I eBusiness I am:
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`~-
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`-
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`alerts Newsl Help
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`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Tue Apr 4 03:21:02 EDT 2017
`
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`for you.
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`Start IList At: I— OR Jump Ito record: I
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`Record 2 out Of
`
`Browser to return to TESS)
`
`( Use the "Back" button of the Internet
`
`MENUDO
`
`Word Mark
`
`MENUDO
`
`Goods and Services IC 041. US 100 101 107. G & S: live performances by a musical group
`Standard Characters
`Claimed
`
`Mark Drawing Code (4) STANDARD CHARACTER MARK
`Serial Number
`87193518
`
`Filing Date
`Current Basis
`
`October 5, 2016
`13
`
`Original Filing Basis 13
`Published for
`Opposition
`Owner
`
`Marc“ 7: 2017
`(APPLICANT) Menudo International, LLC LIMITED LIABILITY COMPANY
`FLORIDA 149 Giardino Drive lslamorada FLORIDA 33036
`
`Attorney of Record Dennis S. Prahl
`
`Type of Mark
`
`SERVICE MARK
`
`PRINCIPAL
`Register
`LivelDead Indicator LIVE
`
`
`
`http:/r'tmsearch.uspto.gov/bin/showfield?%doc&state=4807:q l 4j mx.2.2
`
`4/4/2017
`
`

`

`Baggmrfiscfilmw—ixmrcbmt(fifisfihtered on FLSD Docket 04/26/2017 1%an 9834
`
`
`
`
`
`I HOME I SITEINDEXI SEARCH I éBUSINESS I HELP I PRIVACY POLICY
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4807:q 1 4j mx.2.2
`
`4/4/20] 7
`
`

`

`BaéemaecfilgaaeeixfieflrcbmtfisExtered on FLSD Docket 04/26/2017 Page; 338%
`
`
`
`United States Patent and Trademark Office
`
`Home Site Index I Search I FAQ I Glossary I Guides I ContactsIeBusmessIeBiz
`alerts I News I Help
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Tue Apr 4 03:21:02 EDT 2017
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`m
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`' l“ ( Use the "Back" button of the Internet
`Browser to return to TESS)
`
`MENUDO
`
`Word Mark
`
`MENUDO
`
`Goods and
`Services
`
`IC 009. US 021 023 026 036 038. G & 8: audio and video recordings featuring
`music and artistic performances; compact disks and cassettes featuring pre-
`recorded music; prerecorded dvds featuring music and musical performances
`
`IC 016. US 002 005 022 023 029 037 038 050. G & S: posters, stickers
`
`10 025. US 022 039. G 8. S: t-shirts, sweatshirts. hats. caps
`
`Standard
`Characters
`Claimed
`
`Mark Drawing
`Code
`Serial Number
`
`(4) STANDARD CHARACTER MARK
`87056545
`
`Filing Date
`Current Basis
`
`June 1, 2016
`13
`
`Original Filing
`Basis
`
`18
`
`December 20. 2016
`
`http:fa’tmsearchuspto.gov/bin/showfield?f=doc&state=4807zq14jmx.2. 1
`
`4/4/2017
`
`

`

`BaékmflflficfiléigmwrcbmfitflfisEhtered on FLSD Docket 04/26/2017 131585843894
`
`Published for
`
`Opposition
`International
`
`Registration
`Number
`
`Owner
`
`322$? of
`Type of Mark
`
`Register
`Live/Dead
`Indicator
`
`131758?
`
`(APPLICANT) Menudo lntemationai, LLC LIMITED LIABILITY COMPANY
`FLORIDA 149 Giardino Drive Islamorada FLORIDA 33036
`
`Dennis S. Prahl
`TRADEMARK
`
`PRINCIPAL
`
`LIVE
`
`
`mm“—
`_
`
`
`
`
`
`| HOME 1 SITE INDEXI SEARCH I eBUSINESS I HELP I PRIVACY POLICY
`
`http://tmsearch.uspto.gov/bin/showfleld?f=doc&state=4807:q I 4j mx.2.1
`
`4/4/2017
`
`

`

`Case 1:17-cv-21559-XXXX Document 1—4 Entered on FLSD Docket 04/26/2017 Page 1 of 1
`‘15" (Rev W
`CIVIL COVER SHEET
`
`NOTE
`
`
`
`lace nor su plemertt the filing and service ofpleadings or other apers as re%uin:d by low, except as provided
`The .IS 44 civil cover sheet and the inflammation contained herein neither
`by local mles ofcotm Thizt l'orrm approved by the Judicial Conference 0 the L‘nitcd tales in September l9'l4V is required for the use of
`e Clerk of our! forth: purpose ofmitittting
`the civil docket sheet
`(555 msmmrtons ON THE REVERSE or rm anM t
`NOTICE: Attorneys MUST Indicate All Re-flled Cases Below.
`DE FENDANTS
`
`I. (I) PLAINTIFFS
`MENUDO INTERNATIONAL, LLC
`IN MIAMI PRODUCTION, LLC
`A Florida LLC
`A Florida LLC.,
`(It) Cuunry of Residence of First Listed Plaintiff Miami Dade County
`County of Residence ofFitst Listed Defendant Miami Dade Coung
`(EXCEPT [N U S PLAINTIFF CASES]
`
`
`(IN U S PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT
` (C) Anomcy's tFirm Name. Addrul. and Teleyl‘mne Numtrrt
`LAND INVOLVED
`
`
`
`
`
`Anomcys (Ir Knuwn'z
`
`
`
`Wolfe Law Miami, PA.
`Richard C. Wolfe, Esq.
`175 SW 7th Street. #2410, Miami, Honda 33 l30305—384-7370
`
`
`
`
`
`
`(«Check CountyWhen: Action Nose. vémam mug 3 MONROE 3 anowann a PALMHEACH a MARTIN 3 st LUCIE 3 wow: RIVER :i oxsscuoasn
`HIGHLANDS
`
`
`II. BASIS OF JURISDICTION (rt-:2 an -x* in On: Box Only)
`III. CITIZENSHIP OF PRINCIPAL PARTIEStrI-ee no ‘X‘ in On. flu: {or Phimiff
`
`(For Diversity Carer Only]
`and O»: Box for Defend-m)
`3 l
`U S [Sovemnem
`(5 3
`Federal Question
`P'I'F DEF
`PTF
`DEF
`Plaintiff
`(Us Government Not a Party)
`I
`3 I
`4
`3 4
`
`Clllllfl ol'Thir State
`
`'1
`
`Incorporated or Principal Place
`nffluinur In Thia Slat:
`
`3
`
`
`
`D 2
`
`U S Governnunt
`Drrlndanl
`
`3 4 Divenny
`(Indicate Citizeme ol’l’ameo in Item III)
`
`Citizen oI Another Stale
`
`Crfiren or Sub zct oh
`
`3
`
`3
`
`1
`
`3
`
`J 2
`
`J 1
`
`Incorporated and Principal Place
`oonIineu In Another Slot:
`
`Foreign Nation
`
`3
`
`3
`
`5
`
`6
`
`D 5
`
`D 6
`
`
` IV.
`The: an ‘X" in One Boa Onl
`
`
`
`
`
`
`
`
`3
`
`:I
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3 III) Inuit-nee
`3 l2!) Marine
`3 130 Minn Aer
`0 I40 Negotiable Instrument
`3 iii) Recovery «(Overpayment
`l Eol'oreewnr ol‘ludlnunl
`3 l5] Medical: Act
`3 I52 Recovery ofDel‘aolted
`Student Loan:
`(Eacl Veteran-I
`a m Recovery oIOva‘plymenl
`oertrran'l Benefits
`3 I69 chkbolderr' Suita
`3 I90 Olin Coltlact
`3 IOS Contract Product Liability
`3 [96 Francine
`an n I nor?
`3 2H] Land Condemnation
`3 220 Fonda-ore
`J 130 Rent Leue & Ejeeuaent
`3 240 Tom to Land
`J 135 To" Product Liabilily
`
`
`
`
`FEISONAI. INJURY
`PERSONAL INJURY 3 6|!) Animal“:
`3 ‘22 Appeal 2! USC IS!
`3 400 Slur Reoppofllonment
`
`
`
`J
`3 J10 Airplane
`3 620 Odie: Food I. Dru;
`3 421 Withdrawal
`3 ‘IO Allilml
`362 FIND-I Injury
`
`
`3 3|! Airplloe Product
`J 625 Drug Rllolad 5mm
`2! USC 157
`J 430 Bull and Banking
`Med Malpractice
`
`
`Liability
`365 Peuonal Injury
`ol'Properry 2| "St" I"
`J 450 Commerce
`3 520 Anal Ltoel I
`.
`.
`.
`Prod-Kt Liability
`J 6}! Liquor Laura
`3 £60 Deportation
`
`Slander
`3 '20 Copyrighla
`3 16' Aablflol Pencil-l
`3 “II I R A Track
`.3
`410 Racketeer Influenced and
`
`
`3 JJG Federal Employem‘
`
`3 650 Airline Rep
`3 in Patent
`[any Plodufl
`Campl Organizations
`Liability
`3 660 Occupaticul
`I no Trader-ark
`liabilny
`3 no Consumer Credit
`
`
`3 3‘0 Marine
`PERSONAL flo'EITV
`Slfflyrflealli
`3 490 CableJSal TV
`
`
`3 345 Marine I'rod-ct
`3 690 Ollrer
`3
`310 Other Fraud
`3 III] Selective Service
`
`Liaoility
`:i
`:71 Troll in Lending
`:l
`:50 Samaria/Comma.th
`3 35“ Motor Vehicle
`3 110 Fa‘w Labor Standards
`3 ISI “IA (1195“)
`3 SID Other Personal
`Exchange
`
`
`
`
`
`J 155 Motor Vehicle
`3 I62 Black Long (923)
`Propeny Dar-age
`Acl
`3 I15 Cutout: challenge
`
`
`
`
`
`Product Liabiily
`3 I61 DIWCIDIWW (405m)
`3 720 Labor)!an Relation:
`335 Properly DI-ljfl
`l1 USC 3-H!)
`
`
`3 160 Other Pmoul
`3 864 55") Title XVI
`3 I90 Other Stat-Jory Action
`Product Liability
`3 730 Lahor‘MgiIl Reporting
`
`
`
`In'
`3 165 RSI (lost I)
`3 l9! Agricultural Art-
`a Diaelolore Act
`
`
`392 Economic Sllbiliulion Act
`D TIC Railway Labor Ael
`ctvit. moors
`5! Motion h: Vocal:
`3 MI Voting
`3 I91 Environmental Mann:
`.3
`790 Other Lat-or Litigation
`3 I70 Taxes (US Phi-ti"
`
`Sentence
`J 441 Enpkyntm
`3 19I Empl Rer In: 52mm!
`or Defendant)
`3 394 Energy Allocation Aer
`
`Eaten Corp-s:
`1. l4) Hearing}
`J ITI IRS Third Party
`Acl
`3
`-
`
`530 General
`3
`Accommodation:
`16 us: 7599
`"5 h‘d‘“ """°"’"'°‘ A"
`J l-N Welfare
`II
`535 Death Penally
`3 900 Appeal offee Determination
`4-1!
`662 Naturalization
`[tater ufDiuhiIiriea ‘
`Under Equleceu to Ionic:
`
`3
`Employmnl
`“Wm-“o-
`‘46 Amer ufDiaaliiliiiu -
`.
`.
`.
`£63 Haheu Corona Alien
`
`
`3
`550 Clvtl In»:
`J Dali":
`3 0m“
`
`
`950 Coollilntbollily uI'State
`,
`.
`.
`.
`_
`. .‘
`465 Other Immigration
`
`
`
`3 555 '71.“: Conduun J Ania” 3J 44!) Other Civil light: 5mm"
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`J 290 All Other Real Property
`
`A
`IODism'