Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA933249
`
`Filing date:
`
`11/06/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Dancin Vineyards, LLC
`
`Limited Liability Company
`
`Citizenship
`
`Oregon
`
`PO Box 310
`Jacksonville, OR 97530
`UNITED STATES
`
`Sheila Fox Morrison
`Davis Wright Tremaine LLP
`1300 SW Fifth Avenue, Suite 2400
`Portland, OR 97201
`UNITED STATES
`PDXTrademarks@dwt.com, PDXTMEnforcement@dwt.com, sheilafoxmorris-
`on@dwt.com, StevenKlein@dwt.com
`(503) 241-2300
`
`Registration Subject to Cancellation
`
`Registration No.
`
`1822081
`
`Registration date
`
`02/15/1994
`
`Registrant
`
`Sutton, John P.
`2421 Pierce Street
`San Francisco, CA 94115
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 033. First Use: 1993/09/09 First Use In Commerce: 1993/09/09
`All goods and services in the class are subject to cancellation, namely: wine
`
`Grounds for Cancellation
`
`Abandonment
`
`Trademark Act Section 14(3)
`
`Attachments
`
`Petition for Cancellation - ADAGIO.pdf(1500511 bytes )
`
`Signature
`
`/s Steven E. Klein./
`
`Name
`
`Date
`
`Steven E. Klein
`
`11/06/2018
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Registration No. 1822081
`For the Mark: ADAGIO
`Issued on: February 15, 1994
`
`
`
`
`Cancellation No.
`
`
`
`
`
`
`DANCIN VINEYARDS, LLC, an Oregon limited
`liability company,
`
`
`
`
`
`v.
`
`Petitioner,
`
`John P. Sutton, an individual,
`
`
`
`
`
`Respondent.
`
`PETITION FOR CANCELLATION
`
`Dancin Vineyards, LLC, an Oregon limited liability company having an address of PO
`
`Box 310, Jacksonville, Oregon 97530 (“Petitioner”), believes that it will be damaged by the
`
`continued registration of the trademark ADAGIO, Reg. No. 1822081, and hereby petitions to
`
`cancel same.
`
`As grounds for the cancellation, Petitioner alleges as follows:
`
`1.
`
`Petitioner is and has been engaged in the business of, inter alia, producing and
`
`selling wine in commerce in the United States under the mark ADAGIO since at least as early as
`
`May 25, 2012.
`
`2.
`
`Petitioner is the owner of U.S. Trademark Application Serial No. 87/893,497,
`
`filed on April 25, 2018, for the mark ADAGIO in connection with “Wine” in Class 33 (the
`
`“Application”). Attached as Exhibit 1 is a true and correct copy of a printout of the record for
`
`the Application as reflected in the U.S. Patent and Trademark Office’s Trademark Electronic
`
`Search System.
`
`PETITION FOR CANCELLATION - 1
`
`
`

`

`3.
`
`On November 28, 2017, the Examining Attorney issued a Section 2(d) refusal of
`
`the Application based on Registration No. 1822081 for the mark ADAGIO mark in connection
`
`with “wine” in Class 33 (the “Registration”).
`
`4.
`
`On information and belief, John P. Sutton is an individual with an address of 2421
`
`Pierce Street, San Francisco, California 94115 (“Respondent”) and the owner of record of Reg.
`
`No. 1822081 for the mark ADAGIO (the “Registration”).
`
`5.
`
`Assuming for the purposes of this pleading that the Examining Attorney
`
`reviewing the Application is correct that confusion is likely between the mark recited in the
`
`Application and the mark claimed by the Registration, the Examining Attorney’s citation of the
`
`Registration has damaged Petitioner by preventing registration of Petitioner’s ADAGIO mark.
`
`6.
`
`Petitioner upon investigation believes that Respondent’s Registration is invalid
`
`due to abandonment.
`
`7.
`
`On information and belief, Respondent was the plaintiff in a civil action filed in
`
`the United States District Court for the Eastern District of California (the “District Court”)
`
`captioned John P. Sutton v. Williamsburg Winery, Ltd., Case No. 2:12-cv-00333-GEB-EFB (the
`
`“Action”). Attached as Exhibit 2 is a true and correct copy of the Complaint, dated February 8,
`
`2012, filed by Respondent in the Action, which asserts claims for infringement of the
`
`Registration.1 Attached as Exhibit 3 is a true and correct of the Answer and Counterclaim for
`
`non-infringement, dated May 9, 2012, filed in the Action by the defendants Williamsburg
`
`Winery, Ltd.
`
`8.
`
`On information and belief, on September 23, 2013, the District Court entered
`
`judgment in the Action (the “Judgment”) on the Court’s finding that Respondent had abandoned,
`
`
`1 Copies of Exhibits 2 through 7 were accessed and retrieved by Petitioner directly from the
`online PACER CM/ECF electronic case filing system maintained by the District Court.
`
`PETITION FOR CANCELLATION - 2
`
`
`

`

`pursuant to 15 U.S.C. § 1127, the ADAGIO mark for wine claimed in Registration No. 1822081
`
`due to Respondent having discontinued use of the mark with the intent not to resume use.
`
`Attached as Exhibits 4 and 5 are true and correct copies of the District Court’s Order Granting
`
`Defendant’s Motion for Summary Judgment on the defense of abandonment and Judgment in a
`
`Civil Action entered on the same, both dated September 23, 2013.
`
`9.
`
`On information and belief, on October 15, 2013, Respondent filed an appeal of
`
`the Judgment, captioned John Paul Sutton v. Williamsburg Winery, Ltd., Appeal No. 13-17093,
`
`to the United States Court of Appeals for the Ninth Circuit (the “Appeal”). Attached hereto as
`
`Exhibit 6 is a true and correct copy of Respondent’s Notice of Appeal, dated October 15, 2013.
`
`10.
`
`On information and belief, on October 22, 2015, the Court of Appeals issued an
`
`opinion and mandate affirming the Judgment entered in the Action. Attached as Exhibit 7 is a
`
`true and correct copy of the Court of Appeals’ Mandate and Opinion issued in the Appeal.
`
`11.
`
`On information and belief, the time for Respondent to appeal from the Court of
`
`Appeals’ determination Appeals has long since passed without Respondent having timely
`
`appealed. Accordingly, the Judgment in the Action has become final.
`
`12.
`
`On information and belief, Respondent has never made bona fide use in
`
`commerce of the ADAGIO mark in connection with the sale of wine.
`
`13.
`
`On information and belief, Respondent’s non-use extends from at least as early as
`
`August 24, 1990, the date Respondent filed the application that matured into the Registration,
`
`through February 15, 1994, the date the Registration issued, through to the present.
`
`14.
`
`On information and belief, Respondent discontinued all use of the ADAGIO mark
`
`with wine at least as early as February 24, 1994, and, in any event, no later than
`
`PETITION FOR CANCELLATION - 3
`
`
`

`

`September 22, 2010. On information and belief, Respondent’s nonuse of the ADAGIO mark
`
`with wine continued for 3 or more consecutive years.
`
`15.
`
`On information and belief, when Respondent discontinued all use of the ADAGIO
`
`mark with wine, he did so with the intent not to resume use in U.S. commerce of the marks in
`
`connection with wine.
`
`16.
`
`Further, Respondent’s nonuse for 3 or more consecutive years creates a
`
`presumption of abandonment. 15 U.S.C. § 1127.
`
`17.
`
`Given all of the facts above, any rights in the ADAGIO mark covered by the
`
`Registration have been abandoned in that all use of the mark by Respondent in connection with
`
`wine has been discontinued for at least three consecutive years with no intention to resume use.
`
`18.
`
`The abandonment of the mark covered by the Registration is grounds for
`
`cancellation of the Registration under § 14 of the Lanham Act, 15 U.S.C. § 1064 (3).
`
`19.
`
`On information and belief, Respondent is the same party as the plaintiff-appellant
`
`in the Action and the Appeal.
`
`20.
`
`On information and belief, the Judgment of the District Court in the Action is a
`
`final judgment on the merits of a claim that Respondent’s Registration is invalid based on
`
`abandonment.
`
`21.
`
`The claim for cancellation of the Registration for abandonment recited above is
`
`based on the same set of transactional facts as the claim in the Action, namely, Respondent’s
`
`nonuse of the ADAGIO mark with wine for 3 or more consecutive years.
`
`22.
`
`Accordingly, Respondent is barred by res judicata from relitigating the validity of
`
`the Registration.
`
`PETITION FOR CANCELLATION - 4
`
`
`

`

`23.
`
`On information and belief, the Judgment was based on the District Court’s
`
`determination in the Action that Respondent’s use of the ADAGIO mark with wine had been
`
`discontinued with intent not to resume such use, constituting abandonment of the mark pursuant
`
`to 15 U.S.C. 1127.
`
`24.
`
`On information and belief, the issue of Respondent’s abandonment of the
`
`ADAGIO mark was actually litigated in the Action and the Judgment entered was a final
`
`judgment on the merits.
`
`25.
`
`On information and belief, Respondent, as the plaintiff-appellant in the Action
`
`and the Appeal had a full and fair opportunity to litigate the issue of abandonment in those prior
`
`proceedings.
`
`26.
`
`Accordingly, Respondent is barred by issue preclusion from relitigating the issue
`
`of abandonment.
`
`27.
`
`Petitioner will be damaged by the continued registration of the Registration
`
`because such registration would mislead the public about the legality and proper scope of
`
`Respondent’s registration, which has been cited as a basis for refusing Petitioner’s Application.
`
`WHEREFORE, Petitioner respectfully requests that registration of the mark ADAGIO as
`
`shown by U.S. Registration No. 1822081 be cancelled for abandonment under Sections 14 of the
`
`Lanham Act, 15 U.S.C. §1064(3), and that this Petition for Cancellation be sustained.
`
`DATE: November 5th, 2018.
`
`DAVIS WRIGHT TREMAINE LLP
`
`
`
`By /s Steven E. Klein/
`Sheila Fox Morrison
`Steven E. Klein
`1300 S.W. Fifth Avenue, Suite 2400
`Portland, OR 97201-5610
`Tel: (503) 778-5311 / Fax: (503) 778-5299
`sheilafoxmorrison@dwt.com
`stevenklein@dwt.com
`Attorneys for Petitioner
`
`PETITION FOR CANCELLATION - 5
`
`
`

`

`
`
`
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`

`

`11/2/2018
`
`Trademark Electronic Search System (TESS)
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`TESS)
`
`ADAGIO
`
`Word Mark
`
`ADAGIO
`
`Goods and Services
`
`IC 033. US 047 049. G & S: Wine. FIRST USE: 20120525. FIRST USE IN COMMERCE: 20120525
`
`Standard Characters
`Claimed
`
`Mark Drawing Code
`Serial Number
`
`(4) STANDARD CHARACTER MARK
`87893497
`
`Filing Date
`Current Basis
`
`April 25, 2018
`1A
`
`Original Filing Basis
`
`1A
`
`Owner
`
`(APPLICANT) Dancin Vineyards, LLC LIMITED LIABILITY COMPANY OREGON PO Box 310
`Jacksonville OREGON 97530
`
`Attorney of Record
`
`Sheila Fox Morrison
`
`Type of Mark
`
`TRADEMARK
`
`Register
`Live/Dead Indicator
`
`PRINCIPAL
`LIVE
`
`“M
`
`| HOME | SITE INDEXI SEARCH | eBUSINESS | HELP | PRIVACY POLICY
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`1/1
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`EXHIBIT 2
`EXHIBIT 2
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`

`

`Case 2:12-cv-00.-GEB-EFB Document 1 Filed O‘IlZ Page 1 of 9
`Case 2:12-cv-00333-GEB-EFB Document 1 Filed 02/08/12 Page 1 of 9
`
`JOHN P. SUTTON (SBN 36560)
`123 Race Street
`
`Grass Valley, CA 95945
`
`Telephone (530) 477-8538
`
`F I L E D
`FEB l]
`’8 2012
`CLERK, U.S. DISTRICT COURT
`
`EAST‘EZ DISTRICT OF CALIFORNIA
`
`Bv
`
`‘
`
`DEPUTY CLERK
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF CALIFORNIA
`
`(Sacramento Division)
`
`CaseNo.212 “CV ‘OSSSGEB EFB
`
`John P. Sutton, pro se,
`
`Plaintiff,
`
`COMPLAINT
`
`v.
`
`Williamsburg Winery Ltd.
`
`5800 Wessex Hundred
`Williamsburg, VA 23185
`(757) 258-0899
`
`Defendant
`
`L
`J .
`" V‘ r/
`
`)1”;- M 4,77
`
`)
`
`COMPLAINT
`
`Plaintiff complains of Defendant as follows:
`
`1.
`
`Jurisdiction. This is a federal trademark infringement and false
`
`description case. Jurisdiction arises under 15 U.S.C. §1121. Plaintiff is the owner
`
`of United States Trademark Registration 1822081, granted February 15, 1994, for
`
`the trademark “ADAGIO” as used on wine. Defendant adopted the same
`
`COMPLAINT
`
`-1-
`
`(DOOme-th—A
`
`NNNNNNNNN—A-A—‘A—L—L—AAAAOOKIODU'IAOON—‘OCOCDNGU'I—hOJN—to
`
`

`

`Case 2:12-cv-00333-GEB-EFB Document 1 Filed 02/08/12 Page 2 of 9
`Case 2:12-cv-00.—GEB-EFB Document 1 Filed O‘IlZ Page 2 of 9
`
`trademark for wine in 2008; fifteen years after Plaintiff adopted the trademark for
`
`wine, without permission firom Plaintiff. Defendant filed an application in the
`
`United States Patent and Trademark Office on January 14, 2010. The attorney of
`
`record in the application was Kristen Duffeler, a member of the family that owns
`
`Defendant. The application included a verified statement that Defendant is the
`
`owner of ADAGIO, which was already owned by Plaintiff. The verified statement
`
`also stated that Defendant has used the mark in commerce since September 28,
`
`2008. This court has original jurisdiction of this action “without regard to the
`
`amount in controversy or to diversity or lack of diversity of the citizenship of the
`
`parties” (15 U.S.C. §1121 (a)).
`
`Count 1: INFRINGEMENT
`
`2.
`
`15 U.S.C. §1114(1) provides that: “Any person who shall, without the
`
`consent of the registrant—use in commerce any reproduction, counterfeit, copy, or
`
`colorable imitation of a registered mark in connection with the sale .
`
`.
`
`. of any
`
`goods [if] such use is likely to cause confilsion, or to cause mistake, or to deceive.”
`
`Defendant’s admission in its application that it used ADAGIO in commerce shows
`
`that it is likely to cause confusion and to cause mistake and to deceive. Plaintiff
`
`has requested Defendant to discontinue the use in commerce of Plaintiff” 3
`
`registered mark and Defendant has refused.
`
`3.
`
`Defendant had actual notice of Plaintiff’s ownership of “ADAGIO”
`
`for wine from the Patent and Trademark Office, which refiised registration of
`
`Defendants trademark application because of Plaintiff’s registration. Defendant
`
`acquiesced in the decision of the Office by abandoning its application to register
`
`the same mark for the same goods. Notwithstanding the actual notice and the
`
`abandonment of the application, Defendant continues to use the registered mark on
`
`its wine sold in commerce. The remedy at law is inadequate to end the
`
`infringement, and equitable relief by way of preliminary and permanent injunction .
`
`(OODVO'JU'l-b-ODNA
`
`NMNNNNNNN—l—k—A—L-xA—L-‘AA“NODCJ'I-hWN—‘OCOGDVOIO'I-hWN—‘O
`
`COMPLAINT
`
`-2-
`
`

`

`Case 2:12-cv-00'-GEB-EFB Document 1 Filed O‘IlZ Page 3 of 9
`Case 2:12-cv-00333-GEB-EFB Document 1 Filed 02/08/12 Page 3 of 9
`
`is also sought under 15 U.S.C. §1116.
`
`4.
`
`Plaintiff’s incontestable Registration is “admissible in evidence”
`
`under §1115(a), and “shall be conclusive evidence of the validity of the registered
`
`mark and of the registration of the mark, of the registrant’s ownership of the mark,
`
`and of the registrant’s exclusive right to use the mark in commerce,” under
`
`§1115(b). Plaintiff has notified Defendant of this conclusive evidence, but
`
`Defendant has not discontinued the infringement. Rather, Defendant has referred
`
`this matter to Edward T. White of the law firm of Hunton and Williams in
`
`Richmond, Virginia. Plaintiff has urged counsel for Defendant to end the willful
`
`infiingement, but counsel has not responded. Mr. White has represented
`
`Defendant since at least as early as 2002 in registering trademarks for Defendant in
`
`the Office, as more fully described in Count 2.
`
`5.
`
`Plaintiff is entitled, under §1117(a), “to recover (1) defendant’s
`
`profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.
`
`.
`
`.
`
`. In assessing profits the plaintiff shall be required to prove defendant’s sales
`
`only; defendant must prove all elements of cost or deduction claimed. In assessing
`
`damages the court may enter judgment, according to the circumstances of the case,
`
`for any sum above the amount found as actual damages, not exceeding three times
`
`such amount. If the court shall find that the amount of the recovery based on
`
`profits is either inadequate or excessive the court may enter judgment for such sum
`
`as the court shall find to be just, according to the circumstances of the case. Such
`
`sum .
`
`.
`
`. shall constitute compensation and not a penalty. The court in exceptional
`
`circumstances may award reasonable attorney fees to the prevailing party.
`
`(b) In assessing damages under subsection (a), the court shall, unless the
`
`court finds extenuating circumstances, enter judgment for three times such profits
`
`or damages, Whichever is greater, together with a reasonable attorney’s fee” where
`
`§1114(a) is violated. Defendant has engaged in willful infringement even after
`
`COCDNCDU'l-thA
`
`NNNNNNNNNAAAAAAAAAAmem-bODN—‘CCOWNOU'l-th—‘O
`
`COMPLAINT
`
`-3-
`
`

`

`Case 2:12-cv-00.-GEB-EFB Document 1 Filed O‘IlZ Page 4 of 9
`Case 2:12-cv-00333-GEB-EFB Document 1 Filed 02/08/12 Page 4 of 9
`
`consulting with its long—standing trademark counsel. Treble damages are
`
`warranted.
`
`6.
`
`§1116(a) provides for injunctions “to prevent the violation of any
`
`right of registrant of a mark registered in the Patent and Trademark Office,” and
`
`such injunctions may be enforced by punishment for contempt.
`
`7. §l l 18 provides for destruction of infringing articles where there is a
`
`“violation of any right of the registrant of a mark registered in the Patent and
`
`Trademark Office.” Such articles include “all labels, signs, prints, packages,
`
`wrappers, receptacles and advertisements in the possession of defendant, bearing
`
`the registered mark.” Accordingly, the “library” wine containers of Defendant
`
`bearing the registered mark “ADAGIO,” and all ads for it may be destroyed.
`
`Count 2: False designations of origin
`
`8.
`
`Defendant has falsely designated its wine as being affiliated,
`
`connected, or associated with Plaintiff and others, or originated, sponsored, or
`
`approved by Plaintiff and others, in violation of 15 U.S.C. §1125(a)(1)(A).
`
`Defendant has continued to use the trademark “ADAGIO” on its wine even though
`
`it had actual knowledge that the mark was owned by Plaintiff. It thus became a
`
`counterfeiter. As used by Defendant, the mark was spurious. Defendant has a
`
`long-standing practice of spurious use of the names and marks of others without
`
`permission in order to reap where it has not sown. Plaintiff has learned that he is
`
`merely the latest victim of Defendant’s trading upon the good will of others by
`
`counterfeiting the designation used by others.
`
`9.
`
`For example, Defendant uses the domain name
`
`“ferrarisonthevine.com” to advertise an event held annually at Defendant’s winery.
`
`This domain name suggests, and is intended to suggest, that one or more persons
`
`named “Ferrari” originate, sponsor or approve Defendant’s wines. Trading on the
`
`goodwill of the “Ferrari” name in promoting Defendant’s wines is a violation of 15
`
`(OCDVODO'l-BOON—l
`
`NMNNNNNNNA—AA—LAAAAAAmVOm-kWN—‘OQOWNODUIAOON—‘O
`
`COMPLAINT
`
`-4-
`
`

`

`Case 2:12-cv-00333-GEB-EFB Document 1 Filed 02/08/12 Page 5 of 9
`Case 2:12-cv-00.-GEB-EFB Document 1 Filed O‘IlZ Page 5 of 9
`
`U.S.C. §1125. Other spurious uses by Defendant of names of famous persons or
`
`things as designations for its wines, in order to profit from the good will of others,
`
`include: (1) “John Adlum,” a famous Viticulturist who, having died in 1836, could
`
`not have originated, sponsored, or approved Defendant’s wines; (2) “Sir
`
`Christopher Wren,” a famous architect who died in 1723; (3) “Gabriel Archer,”
`
`who founded Jamestown, a colony near Williamsburg, in 1607; (4) “Hening’s
`
`Statute,” the collection of Virginia laws in 1619; (5) “Lord Botentort,” the
`
`Governor of the Colony of Virginia, who died in 1770; and (6) “Susan Constant,”
`
`the name of a ship that arrived at the English Virginia Colony.
`
`10.
`
`The fact that the designations are ancient does not permit Defendant
`
`to suggest “affiliation, connection or association,” or “origin, sponsorship or
`
`approval,” of Defendant’s wines. Unlike Adlum, Wren, Archer, or Botentort,
`
`Plaintiff is alive and capable of seeking remedy for Defendant’s spurious use of his
`
`designation “ADAGIO.” Defendant trades on the good will belonging to others in
`
`promoting its wines, a Violation of 15 U.S.C. §1125. Defendant treated the
`
`goodwill belonging to Plaintiff for “ADAGIO” as its own, just as it falsely claims
`
`to own the designation “Sir Christopher Wren.”
`
`11.
`
`Plaintiff is not the Attorney General, and lacks the power to prove that
`
`Defendant has committed a crime. However, as evidence of Defendant’s bad faith,
`
`Plaintiff will prove that Defendant “intentionally traffics .
`
`.
`
`. in goods .
`
`.
`
`. and
`
`knowingly uses a counterfeit mark on or in connection with such goods .
`
`.
`
`.
`
`knowing that a counterfeit mark had been applied thereto, the use of which is likely
`
`to cause confusion, to cause mistake, or to deceive, [subject to a fine of] not more
`
`than $5,000,000” (18 U.S.C §2320(a)(1). Subpart (e)(1) of that statute defines
`
`“counterfeit mark means—
`
`(A)
`
`A spurious mark
`
`(ii) that is identical with .
`
`.
`
`. a mark registered on the principal register in the
`
`OOONOCD-PAOJNA
`
`NNNNNNNNNAAAAAAAAAAmflmm-fimN—AOOQVCDUI-bOJN-AO
`
`COMPLAINT
`
`-5-
`
`

`

`Case 2:12-cv-00333-GEB-EFB Document 1 Filed 02/08/12 Page 6 of 9
`Case 2:12-cv-00'-GEB-EFB Document 1 Filed O‘IlZ Page 6 of 9
`
`United States Patent and Trademark Office and in use .
`
`.
`
`.
`
`(iv) the use of which is likely to cause confusion, to cause mistake, or to
`
`deceive .
`
`. .”
`
`Defendant acted in bad faith when it continued using “ADAGIO” in
`
`connection with wine knowing that it is Plaintiff’s registered mark. The use of a
`
`spurious mark is not only a crime; it also is a false designation of Defendant’s
`
`wines. The fact that Defendant’s acts could be subject to a fine of up to five
`
`million dollars is a circumstance of the case to be considered by the court in
`
`. assessing profits and damages. In the event that Defendant were to be held liable
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`for counterfeiting not only “ADAGIO,” but also “FERRARI,” “JOHN ADLUM,”
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`“SIR CHRISTOPHER WREN,” “GABRIEL ARCHER,” and “SUSAN
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`CONSTANT,” the total exposure to fines against Defendant would climb to thirty
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`million dollars. Its practice of counterfeiting trademarks should not be condoned.
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`Plaintiff does not seek to recover any award for Defendant’s counterfeiting
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`designations of others, just profits, damages, costs, attorney fees and destruction of
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`articles bearing the counterfeit mark as provided under Title 15 trademark law.
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`12. Defendant has adopted some two dozen trademarks for its wine
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`products. It has filed trademark applications to register some of them. Before
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`filing for “ADAGIO” in 2010, Defendant filed four other trademark applications in
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`April 2001. First was Serial Number 78058795 for the mark “GOVERNOR’S
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`WHITE” on wine, claimed to have been used in commerce since 1989. There was
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`no attorney of record in this application; Defendant filed without retaining an
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`attorney. Registration was refused, and Defendant abandoned the application in
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`February 2002, as it did. later with the ADAGIO application. Defendant then
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`retained a trademark lawyer, Edward T. White, who filed a new application for
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`“GOVERNOR’S WHIT ” in June 2002. That application was successful and the
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`mark was registered in October 2002. An affidavit of continued use of the mark
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`(OmNODU'l-hOON—t
`
`NMNNNNNNN—k—LAAAAA—l—KdmVOm-th—‘OCOmVOJU'l-FWN—‘C
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`COMPLAINT
`
`-6-
`
`

`

`Case 2:12-cv-00333-GEB-EFB Document 1 Filed 02/08/12 Page 7 of 9
`Case 2:12-cv-00.—GEB-EFB Document 1 Filed O‘IlZ Page 7 of 9
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`was filed in the Office five years later.
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`13.
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`The second mark applied for was 78058893 for the mark
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`“PLANTATION BLUSH” on wine. This too was filed without an attorney, was
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`rejected, and was abandoned. Attorney Edward White then filed a new application
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`for that mark and was successful and the mark was registered in 2003. An
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`affidavit was filed five years later.
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`14.
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`The third was for “TWO SI-HLLING RED,” which was rejected by
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`the Office, abandoned, and filed again by Attorney White who registered the mark
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`in 2002.
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`15.
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`The fourth was “JAMES RIVER WHITE” with the same sequence of
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`events. Defendant filed without a lawyer; the application was rejected, and then
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`abandoned, and Attorney White successfully registered the mark.
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`16.
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`The records of the Patent and Trademark Office show that the
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`following marks used by Defendant on wine were never filed in trademark
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`applications, either by Defendant or by its Attorney White: (1) “VINTAGE
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`RESERVE,” (2) ACTE 12,” (3) “JOHN ADLUM,” (4) “SAMUELI ARGELI,”
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`(5) “SEYVAL,” (4) “SIR CHRISTOPHER WREN,” (5) “VIRGINIA TRIANON,”
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`(6) “ARUNDELL,” (7) “HENING’S STATUTE,” (8) “GABRIEL ARCHER,” (9)
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`“BURGESSES’ MEASURE,” (10) “J. ANDREWS,” (11) “LORD
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`BOTETOURT,” (12) “SUSAN CONSTANT,” (12) “RED WINE WITH
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`BLACKBERRY,” (13) “SETTLER’S SPICED WINE,” and (14) “LATE
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`HARVEST VIDAL.” No Office records exist for any trademark application
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`having been filed for any of these fourteen trademarks used by Defendant.
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`17. Discovery will be required to determine whether Defendant did not
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`seek to register any of these fourteen trademarks because they are not registrable.
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`It is possible that Defendant asked Edward T. White whether these marks could be
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`registered, and Plaintiff will seek to explore that issue in discovery.
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`LOOONOU'IAOON—A
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`NNNNNNNNNA—AAAA—A—AAAAooxloam-h-ooN—xoroooxlmm-wa-Ao
`
`COMPLAINT
`
`-7-
`
`

`

`Case 2:12-cv-00333-GEB-EFB Document 1 Filed 02/08/12 Page 8 of 9
`Case 2:12-cv-00'-GEB-EFB Document 1 Filed O‘HZ Page 8 of 9
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`18.
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`Because Edward T. White had succeeded in registering four
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`trademarks that Defendant had failed to register without an attorney of record,
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`discovery is needed to determine whether Attorney White advised against filing
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`trademark applications for these fourteen trademarks, as well as for the trademark
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`“ADAGIO.” If Defendant filed to register “ADAGIO” against the advice of
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`outside counsel White, it is some evidence of bad faith and Willfill infringement,
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`warranting an award of treble damages. Attorney White has been retained by
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`Defendants to respond to Plaintiff 3 claims, but he has not responded. This lack of
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`response permits an inference by a trier of fact that Plaintiff’s claims cannot be
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`denied. The fact that Defendant filed the “ADAGIO” application without retaining
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`Attorney White to do so, following his successful registrations four times where
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`Defendant had been unsuccessful, permits an inference by the trier of fact that
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`Attorney White had advised Defendant that it was not entitled to register
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`“ADAGIO.”
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`WHEREFORE, Plaintiff prays for the following relief:
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`A.
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`A declaration by the court that plaintiff has “conclusive evidence of
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`the validity of the registered mark [ADAGIO] and of the registration of the mark,
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`of the registrant’s ownership of the mark, and of the registrant’s exclusive right to
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`use the registered mark in commerce” pursuant to 15 U.S.C. §1115.
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`B.
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`Profits of Defendant from the use of “ADAGIO” for wine. “In
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`assessing profits, the plaintiff shall be required to prove defendant’s sales only;
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`defendant must prove all elements of cost or deduction claimed. .
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`.
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`. If the court
`
`shall find that the amount of the recovery is .
`
`.
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`. inadequate .
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`. .the court may in its
`
`discretion enter judgment for such sum as the court may find to be just, according
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`to the circumstances of the case” (15 U.S.C. §l 1 17(a)).
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`C.
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`Damages suffered by Plaintiff. “In assessing damages the court may
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`enter judgment, according to the circumstances of the case, for any sum above the
`
`(OCDNODU'l-h-OONA
`
`NNNNNNNNNA—‘An—k—AAAAAAmNO‘JO'l-h-OON—‘OCOWVODO'I-BOJN—IO
`
`COMPLAINT
`
`-8-
`
`

`

`Case 2:12-cv-00.—GEB-EFB Document 1 Filed D‘s/12 Page 9 of 9
`Case 2:12-cv-00333-GEB-EFB Document 1 Filed 02/08/12 Page 9 of 9
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`amount found as actual damages, not exceeding three times such amount” (id.).
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`D.
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`E.
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`F.
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`Costs of the action (id.).
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`Reasonable attorney fees in this “exceptional case” (id.).
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`Destruction of infringing articles, including labels, containers,
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`advertisements, illustrations in all media, pursuant to 15 U.S.C. §1 118.
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`G.
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`Preliminary and permanent injunctive relief under 15 U.S.C.
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`§1 1 16(a).
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`H.
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`Such other and further relief as the court deems just.
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`The filing fee ofMO is submitted herewith.
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`X756 , 965
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`%/
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`'
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`1
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`2
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`4
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`5
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`7
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`10
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`1 1
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`12 Date: February 6, 2012
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`Respectfully submitted,
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`
`
`John P. Sutton, pro se (SBN 36560)
`
`123 Race Street
`Grass Valley, CA 95945
`(530) 477-8538
`johnpsutton@earthlink.net
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`1 3
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`14
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`1 5
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`16
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`17
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`1 9
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`COMPLAINT
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`-9-
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`

`

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`
`EXHIBIT 3
`EXHIBIT 3
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`

`

`Case 2:12-cv-00333-GEB-EFB Document 5 Filed 05/09/12 Page 1 of 8
`Case 2:12-cv-00333-GEB-EFB Document 5 Filed 05/09/12 Page 1 of 8
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`HERB ROWLAND (SBN 72461)
`RAGGHIANTI FREITAS LLP
`
`874 Fourth Street, Suite D
`San Rafael, California 94901
`Telephone: (415) 453-9433
`Facsimile:
`(415) 453-8269
`
`‘2
`
`3 4
`
`, WW , ,AttorneyswforDefendant fl
`WILLIAMSBURG WINERY LTD.
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`5 6 7 8 9
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`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF CALIFORNIA
`
`JOHN P. SUTTON, pro se,
`
`Plaintiff,
`
`vs.
`
`WILLIAMSBURG WINERY LTD.,
`
`) CASE NO. CV 12-00333
`)
`) DEFENDANT’S ANSWER TO
`) PLAINTIFF’S COMPLAINT FOR
`)
`INFRINGEMENT AND FALSE
`) DESIGNATION OF ORIGIN AND
`) COUNTERCLAIM
`)
`
`) )
`
`Defendant.
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`Defendant Williamsburg Winery, Ltd. (hereinafter “Defendant”) respond to Plaintiff John
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`P. Sutton’s Complaint as follows:
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`JURISDICTION
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`1. Defendant admits that the Court has exclusive jurisdiction over this action.
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`Defendant admits that United States Patent No. 1,822,081 (the “081 Patent”) was issued on
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`February 15, 1994. Defendant lacks sufficient knowledge or information to admit or deny the
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`remaining allegations of Paragraph 1 of the Complaint, and on that basis denies the remaining
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`allegations of Paragraph 1 of the Complaint.
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`mg
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`(INFRINGEMENT)
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`2. Defendant admits that this Count purports to assert a claim for patent infringement.
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`Defendant denies the remaining allegations of Paragraph 2 of the Complaint.
`
`1
`DEFENDANTS’ ANSWER TO PLAINTIFFS’ COMPLAINT AND COUNTERCLAIM
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`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`

`

`Case 2:12-
`Case 2:12-cv-00333-GEB-EFB Document 5 Filed 05/09/12 Page 2 of 8
`cv-00333-GEB-EFB Document 5 Filed 05/09/12 Page 2 of 8
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`3.
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`4.
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`5.
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`6.
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`Defendant denies the allegations of Paragraph 3 of the Complaint.
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`Defendant denies the allegations of Paragraph 4 of the Complaint.
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`Defendant denies the allegations of Paragraph 5 of the Complaint.
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`Defendant denies the allegations of Paragraph 6 of the Complaint.
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`7
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`7 77'D’éfendariti'deniésthe allegations of Paragraph 7 'of the Complaint.
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`COUNT 2
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`(False Designation of Origin)
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`8.
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`Defendant admits that this Count purports to assert a claim for false designation of
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`10
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`origin. Defendant denies the remaining allegations of Paragraph 8 of the Complaint.
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`11
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`12
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`13
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`14
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`16
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`18
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`9.
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`10.
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`11.
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`12.
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`13.
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`14.
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`Defendant denies the allegations of Paragraph 9 of the Complaint.
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`Defendant denies the allegations of Paragraph 10 of the Complaint.
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`Defendant denies the allegations of Paragraph 11 of the Complaint.
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`Defendant denies the allegations of Paragraph 12 of the Complaint.
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`Defendant denies the allegations of Paragraph 13 of the Complaint.
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`Defendant denies the allegations of Paragraph 14 of the Complaint.
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`15.
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`Defendant denies the allegations of Paragraph 15 of the Complaint.
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`16.
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`17.
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`Defendant denies the allegations of Paragraph 16 of the Complaint.
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`Defendant denies the allegations of Paragraph 17 of the Complaint.
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`AFFIRMATIVE DEFENSES
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`Defendant hereby asserts and interposes the following affirmative defenses to Plaintiff’s
`
`Complaint. Defendant reserves the right to supplement additional affirmative defenses if new
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`evidence supporting such additional affirmative defenses is discovered after further investigation
`
`and discovery.
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`FIRST AFFIRMATIVE DEFENSE
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`(Failure to State a Claim)
`
`18.
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`Plaintiffs Complaint fails to state a claim upon which relief can be granted.
`
`2
`DEFENDANTS’ ANSWER TO PLAINTIFFS’ COMPLAINT AND COUNTERCLAIM
`
`

`

`Case 2:12-cv-00333-GEB-EFB Document 5 Filed 05/09/12 Page 3 of 8
`Case 2:12-cv-00333-GEB-EFB Document 5 Filed 05/09/12 Page 3 of 8
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`SECOND AFFIRMATIVE DEFENSE
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`(Patent Invalidity)
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`19. The 081 patent is invalid and/or unenforceable under the Patent Laws of the
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`1 2 3
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`4 United States, 35 U.S.C. §§ 1, et seq.
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`7
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`' THIRD AFFIRMATIVE DEFENSE
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`(Non-Infringement)
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`20. Defendant has not infringed, an