Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1099756
`12/04/2020
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No.
`
`92075326
`
`Filing Party
`
`Other Party
`
`Defendant
`Jerry Clevenger
`
`Plaintiff
`HomeVestors of America, Inc.
`
`Pending Motion
`
`Yes, there is a motion currently pending or another motion is being filed concur-
`rent with this consent motion.
`
`Attachments
`
`5811 Joint Motion to Suspend 120420.pdf(100153 bytes )
`EXHIBIT 1_.pdf(2971669 bytes )
`
`Consent Motion for Suspension in View of Civil Proceeding
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Jerry
`Clevenger hereby requests suspension of this proceeding pending a final determination of the civil action.
`Trademark Rule 2.117.
`Jerry Clevenger has secured the express consent of all other parties to this proceeding for the suspension re-
`quested herein.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this filing has been served upon all parties, at their address of
`record by Email on this date.
`Respectfully submitted,
`/Ryan S. Hinderliter/
`Ryan S. Hinderliter
`ryan@midwestip.com, andrew@midwestip.com, uspto@midwestip.com
`12/04/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Registration No. 4,820,901
`
`For the mark DON’T FIX IT . . . SELL IT!
`
`Registered on September 29, 2015
`
`
`
`)
`HOMEVESTORS OF AMERICA, INC.,
`)
`
`
`
`
`
`
`)
`
`
`Petitioner,
`
`
`)
`
`
`
`
`
`
`) Cancellation No. 92075326
`
`v.
`
`
`
`
`)
`
`
`
`
`
`
`)
`JERRY CLEVENGER,
`
`
`)
`
`
`
`
`
`
`)
`
`
`Registrant.
`
`
`___________________________________ )
`
`
`
`JOINT MOTION TO
`
`SUSPEND PROCEEDINGS PENDING DISPOSITION OF DISTRICT COURT ACTION
`
`
`
`Pursuant to 37 C.F.R. § 2.117 and TBMP § 510.02(a), the parties to Cancellation No.
`
`92075326, by and through counsel, hereby jointly move the Board to suspend the above-
`
`referenced cancellation proceedings pending final disposition of Federal District Court Case No.
`
`2:20-cv-00751-JLB-NPM, filed by Petitioner against Registrant on September 29, 2020 in the
`
`United States District Court for the Middle District of Florida (the “Federal Lawsuit”). Copies of
`
`the Complaint and Civil Cover Sheet are attached herewith as Exhibit 1.
`
`The Complaint in the Federal Lawsuit seeks declaratory judgment by the District Court
`
`of non-infringement by Petitioner of U.S. Trademark Registration No. 4,820,901 (the “’901
`
`Registration”) for DON’T FIX IT . . . SELL IT! (the “Registered Mark”), the mark which is the
`
`
`
`-1-
`
`

`

`subject of these cancellation proceedings, and common law trademark rights and further seeks
`
`cancellation of the ‘901 Registration.
`
`When the parties are involved in court proceedings concerning the same marks and
`
`issues, the “standard procedure” of the Board is to suspend its administrative proceedings
`
`pending outcome of the civil litigation. New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99
`
`USPQ2d 1550, 1552 (TTAB 2011) (quoting 6 McCarthy on Trademarks and Unfair Competition
`
`§32:47 (5th ed. updated September 2017)). The civil action need not even be dispositive of the
`
`Board proceeding to warrant suspension. Rather, it is sufficient that the civil action have bearing
`
`on the issues before the Board to justify a suspension. Id.
`
`Here, the Federal Lawsuit covers the same parties, the same marks, and the same issues
`
`involved in these cancellation proceedings. Accordingly, the Federal Lawsuit will be dispositive
`
`of, or at least have a meaningful bearing upon, the issues before the Board. However, the
`
`Federal Lawsuit will also involve other matters and broader issues. Because the parties, marks,
`
`and issues in the Federal Lawsuit are the same and because the outcome will be dispositive or at
`
`least impact the claims before the Board, suspension of Cancellation No. 92075326 pending the
`
`outcome of the Federal Lawsuit between the parties is warranted. Furthermore, judicial
`
`economy is served by immediately suspending all activity in the cancellation proceedings. See
`
`Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125 (1974).
`
`WHEREFORE, for these reasons, the parties jointly submit that an order from the Board
`
`immediately suspending all activity related to Cancellation No. 92075326 is warranted, and the
`
`parties respectfully request the same.
`
`
`
`
`
`
`
`
`-2-
`
`

`

`
`
`Date: December 4, 2020
`
`
`HomeVestors of America, Inc.
`By and through counsel:
`
`
`/s/ Valeri C. Williams
`Valeri C. Williams
`
`
`WILSON ELSER MOSKOWITZ
` EDELMAN & DICKER LLP
`Bank of America Plaza
`
`901 Main Street, Suite 4800
`Dallas, TX 75202
`
`
`(214) 698-8000
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Jerry Clevenger
`By and through counsel:
`
`/s/ Ryan S. Hinderliter
`Ryan S. Hinderliter
`
`THE LAW OFFICE OF MARK BROWN, LLC
`7225 Renner Road, Suite 201
`Shawnee, KS 66217
`(913) 248-4477 Telephone
`(913) 248-4494 Facsimile
`
`
`
`
`
`Attorneys for Registrant
`
`Attorneys for Petitioner
`
`
`
`
`-3-
`
`

`

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

`

`Case 2:20-cv-00751-JLB-NPM Document 1-10 Filed 09/29/20 Page 1 of 1 PageID 48
`Case 2:20-cv-00751-JLB-NPM Document 1-10 Filed 09/29/20 Page 1 of 1 PagelD 48
`
`CIVIL COVER SHEET
`1544 (Rev. I0/20)
`The .18 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference ofthc United States in September 1974, is required for the use of the Clerk of Court for the
`
`purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ONNEXTPAGE OF THIS FORM.)
`I. (a) PLAINTIFFS
`DEFENDANTS
`
`HOMEVESTORS OF AMERICA, iNC.
`
`JERRY CLEVENGER
`
`(b) County ofResidcnec of First Listed Plaintiff Dallas County, Texas
`(EXCEPTIN US PLAINTIFF CASES)
`
`C
`
`Attot‘nc 5 (Firm Name, Address, and Telephone Number)
`-
`.
`y
`n
`Wilson Elser Moskowrtz Edelman & Dicker, LLP
`2063 Main Street — Suite 100 - Sarasota, Florida 34237
`941-866-8561
`II. BASIS OF JURISDICTION (Place an “X" in One Box Onljd
`
`County ofResidence ofFirst Listed Defendant Lee County. Florida
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED
`
`NOTE:
`
`Attomeys (If/(noun)
`
`1:1 1 U.S. Govemment
`Plaintiff
`
`.3 Federal Question
`(U.S. Government Not a Party)
`
`Citizen ofThis State
`
`U 2 US. Government
`Defendant
`
`1:] 4 Diversity
`(Indicate Citizenship QfPurtie: in Item 11])
`
`Citizen ofAnother State
`
`Incorporated or Principal Place
`ofBusiness In This State
`
`DEF
`1:14
`
`Incorporated and Principal Place E 5
`ofBusiness In Another State
`
`I: 5
`
`
`
`
`1:1 2 — l
`
`
`
`
`
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an ”X" in One Box/or Plainlij]
`(For Diversify Cases 011/)?
`mnl One Boijr chi'mlanl)
`DEF
`PTF
`PTF
`1:1 1 E |
`1:] 4
`
`IV. NATURE OF SUIT (Fina an ”X" in One Box (Jam
`CONTRACT
`TORTS
`
`
`
`
`_ 110 Insurance
`120 Marine
`_ 130 Miller Act
`140 Negotiable Instrument
`: 150 Recovery ovaerpayment
`& Enforcement othILIgiltenl
`: 151 Medicare Act
`_ 152 Recovery of Defaulted
`Student Loans
`(Excludes Veterans)
`|: 153 Recovery ovaerpayment
`
`ofVeteran’s Benefits
`160 Stockholders‘ Suits
`- 190 Other Contract
`195 Contract Product Liability
`196 Franchise
`
`
`
`
`
`
`210 Land Condemnation
`220 Foreclosure
`230 Rent Lease & Ejectment
`240 Torts to Land
`_ 245 Tort Product Liability
`
`: 290 All Other Real Property
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`[:6
`1:1 6
`Foreign Nation
`U 3 _ 3
`Citizen or Subject ofa
`
`
`Foreign Country
`
`Click here for: Nature o 1' Suit Code I'llcsct'i “ions.
`
`
`FORFEITURE/PENALTY
`BANKRUPTCY
`OTHER STATUTES
`
`
`375 False Claims Act
`3625 Drug Related Seizure
`422 Appeal 28 USC 158
`PERSONAL INJURY
`PERSONAL INJURY
`
`
`376 Qui Tam (31 USC
`ofProperty 21 USC 881
`423 Withdrawal
`310 Airplane
`1:1 365 Personal Injury -
`
`
`3729(a))
`28 USC 157
`315 Airplane Product
`Product Liability
`400 State Reapportionment
`Liability
`[:1 367 Health Care/
`
`4 IO Antitrust
`:I 320 Assault, Libel &
`Pharmaceutical
`_
`I'ltfil'liR'l‘Y ltlt‘il
`
`430 Banks and Banking
`Slander
`Personal Injury
`820 Copyrights
`
`
`
`450 Commerce
`830 Patent
`330 Federal Employers’
`Product Liability
`
`
`
`460 Deportation
`835 Patent - Abbreviated
`Liability
`1: 368 Asbestos Personal
`
`470 Racketeer Influenced and
`New Drug Application
`340 Marine
`Injury Product
`
`
`
`Con'upt Organizations
`I 345 Marine Product
`840 Trademark
`_
`Liability
`
`
`
`480 Consumer Credit
`PERSONAL PROPERTY_ 880 Defend Trade Secrets
`Liability
`
`
`
`(15 USC 1681 or 1692)
`T 10 Fair Labor Standards
`Act of2016
`350 Motor Vehicle
`370 Other Fraud
`
`_ 485 Telephone Consumer
`355 Motor Vehicle
`371 Truth in Lending
`Act
`
`
`
`Product Liability
`:1 380 Other Personal
`"120 Labor/Management
`Protection Act
`
`
`861 HIA (l395ft)
`360 Other Pcrsonal
`Property Damage
`Relations
`490 Cable/Sat TV
`
`
`:1 385 Property Damage
`862 Black Lung (923)
`Injury
`rm Railway Labor Act
`850 Securities/Commodities/
`
`
`
`
`362 Personal Injury —
`Product Liability
`T51 Family and Medical
`863 DIWC/DIWW (405(g))
`Exchange
`Leave Act
`864 5er Title xv1
`Medical Malpractice
`890 Other Statutory Actions
`
`
`
`
`cw". moms
`PRISONER rmnons
`790 Other Labor Litigation
`891 Agricultural Acts
`865 RS] (405(9)
`893 Environmental Matters
`
`
`
`791 Employee Retirement
`Habeas Corpus:
`I 440 Other Civil Rights
`I 463 Alien Detainee
`Income Security Act
`895 Freedom oflnfonnation
`441 Voting
`
`
`
`I 510 Motions to Vacate
`_
`442 Employment
`Act
`
`
`
`or Defendant)
`443 Housing/
`Sentence
`896 Arbitration
`
`871 IRS—Third Party
`I 530 General
`Accommodations
`899 Administrative Procedure
`
`26 USC 7609
`: 445 Amer. w/Disabilities - I 535 Death Penalty
`Act/Review or Appeal of
`
`
`
`462 Naturalization Application
`Other:
`Employment
`Agency Decision
`
`
`
`
`:1 446 Amer. w/Disabiiities - I 540 Mandamus & Other I 465 Other Immigration
`950 Constitutionality of
`State Statutes
`Actions
`
`Other
`
`I 550 Civil Rights
`
`
`448 Education
`
`I 555 Prison Condition
`
`
`I 560 Civil Detainee -
`Conditions of
`
`
`Confinement
`
`V. ORIGIN (Place (III "N" in One Box Orr/)9
`
`IE] Original
`E
`Proceedin v
`
`:12 Retnoved from
`State Court
`
`
`
`E] 8 Multidistrict
`:I 5 Traintfeircd from D 6 Multidistrict
`El 3 Remandcd from
`E4 Reinstated or
`Litigation -
`Anttlitel District
`Litigation -
`Appellate Court
`Reopened
`Wit-rim Direct File Transfer
`
`
`Cite the U.S. Civil Statute under WhiCit you are filing (Do not eirejurisdiclimml smlnles miles: diversify):
`15 U.S.C. §1052; 15 U.S.C. §1119
`fdcscription ofcause:
`VI. CAUSE OF ACTION 13m
`
`ICancotlation of Trademark Registration
`VII. REQUESTED IN
`E] CHECK IF THIS IS A CLAss ACTION
`
`COMPLAINT:
`UNDER RULE 23, F.R~Cv.P-
`
`DEMAND 3
`
`CHECK YES only ifdcmandcd in complaint:
`JURY DEMAND:
`[£1ch E No
`
`"
`
`' :
`I
`'
`'
`See ins
`)
`VIII. RELATED CASE(S)
`
`
`DOCKET NUMBER
`‘
`JUDGE
`"mm H
`IF ANY
`(
`DATE
`
`Sep 29, 2020
` FOR OFFICE USE ONLY
`
`
`
`RECEIPT #4
`AMOUNT
`APPLYING IFP
`JUDGE
`MAG JUDGE
`
`

`

`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 1 of 11 PageID 1
`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 1 of 11 PageID 1
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE MIDDLE DISTRICT OF FLORIDA
`FORT MYERS DIVISION
`
`CASE NO:
`
`2:20-cv-751
`2:20-cv-751
`
`HOMEVESTORS OF AMERICA, INC.,
`
`Plaintiff,
`
`V.
`
`JERRY CLEVENGER,
`
`Defendant.
`
`
`ORIGINAL COMPLAINT AND PETITION FOR DEC LARATORY JUDGMENT
`
`Plaintiff HomeVestors of America, Inc. (“HomeVestors” or “Plaintiff”) through its
`
`undersigned counsel, files this Complaint against Defendant Jerry Clevenger (“Clevenger” or
`
`“Defendant”) seeking cancellation of US Trademark Registration No. 4,820,901; a declaratory
`
`judgment that the purported mark disclosed herein is invalid and unenforceable; a declaratory
`
`judgement of non-infringement of Clevenger’s purported registration and common law trademark
`
`rights; and/or a declaratory judgment that HomeVestors’ use of the phrase “Don’t fix it. Sell it” is
`
`a non-trademark use to explain HomeVestors’ house buying services and therefore does not
`
`infringe on any of Clevenger’s possible registered or common law rights.
`
`In support of this
`
`Complaint, HomeVestors alleges the following:
`
`I.
`
`NATURE OF THE ACTION
`
`1.
`
`This case is about the common and generic phrase “Don’t fix it. Sell it” — a phrase
`
`that has been used in the real estate industry for decades. There is nothing unique, special, or
`
`distinctive about a real estate company or professional recommending, either in print or in online
`
`advertising, “Don’t fix it. Sell it” as an alternative to homeowners facing expensive property
`
`
`
`ORIGINAL COMPLAINT AND PETITION FOR DECLARATORY JUDGMENT—PAGE 1
`Error! Unknown document property name.
`
`

`

`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 2 of 11 PageID 2
`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 2 of 11 PageID 2
`
`repairs. A sample of online advertising using this ubiquitous phrase is shown below and also in
`
`greater numbers in Exhibit A.
`
`l
`
`cont
`.
`:Mgutrt:
`
`
`
`
`It
`a
`
`,
`SELL”.
`Fiirit,
`
`
`“i
`WoBuyAS-ls.
`WWVom-Hou" FASl'l
`SELL ll
`
` D
`
`
`
`
`Call Jim:
`
`-I 7-345-2049
`
`07-420-7057
`.4!
`-.
`.
`“0” T nx ”I
`SELL II FOR CASH
`Or email:
`DON'T FIX IT.
`geka'mQQmaI'I' cam
`
`-.._ MiI '| I‘E mm”l? layImmmmIesuc
`
`_ can close In 7 days!
`mull-t.“-
`
`
`ExhibitA — Sample of Online Advertising Obtainedfrom Google Images
`
`2.
`
`Nevertheless, Clevenger claims that he alone has the exclusive right to use the
`
`generic phrase “Don’t fix it. Sell it” throughout the entire United States to market his real estate
`
`services. He sent HomeVestors cease and desist letters, which threatened legal action for allegedly
`
`infringing on his DON’T FIX IT... SELL ITl mark (the “Mark”).
`
`3.
`
`HomeVestors brings this action seeking cancellation of Clevenger’s DON’T FIX
`
`IT... SELL IT! mark because the Mark is generic and lacks acquired distinctiveness.
`
`HomeVestors also seeks a declaration (i) that it did nothing wrong when it used the “Don’t fix it.
`
`Sell it” phrase in advertising, (ii) that the Mark is invalid, and (iii) that HomeVestors has not
`
`infringed on the Mark.
`
`ORIGINAL COMPLAINT AND PETITION FOR DECLARATORY JUDGMENT—PAGE 2
`Error! Unknown document property name.
`
`

`

`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 3 of 11 PageID 3
`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 3 of 11 PageID 3
`
`II.
`
`PARTIES
`
`4.
`
`PlaintiffHomeVestors is a Delaware corporation with its principal place ofbusiness
`
`located at 6500 Greenville Avenue, Suite 400, Dallas, Texas 75206.
`
`5.
`
`On information and belief, Defendant Jerry Clevenger is a resident of 9329 River
`
`Otter Drive, Fort Myers, Florida 33912-8925, and he may be served with process at this address.
`
`III.
`
`JURISDICTION
`
`6.
`
`This action arises and is brought under the Declaratory Judgment Act, 28 U.S.C.
`
`§§ 2201 and 2202, seeking a declaration of the rights and/or other legal relations of the parties to
`
`this litigation with respect to an actual controversy arising under the trademark laws of the United
`
`States, 15 U.S.C. § 1051, et seq. Subject matter jurisdiction over this complaint arises under
`
`Section 39(a) of the Lanham Act, 15 U.S.C. § 1121(a), 28 U.S.C. § 1331 (federal question
`
`jurisdiction) and 28 U.S.C. § 1338(a) (trademark infringement), as well as 15 U.S.C. § 1119, under
`
`which the Court may determine the right to a trademark registration, order the cancellation of
`
`registrations, and otherwise rectify the trademark register with respect to the registration of any
`
`party to the action.
`
`7.
`
`Venue is proper in this District pursuant to 28 U.S.C. § 1391(b)(1) and (0) because
`
`Defendant Jerry Clevenger, the holder of the disputed trademark, is deemed a resident of this
`
`District for venue.
`
`IV.
`
`FACTS SUPPORTING ALL COUNTS
`
`A.
`
`8.
`
`Background on HomeVestors.
`
`Founded in 1996, HomeVestors is a privately owned real estate franchise company
`
`that sells franchises to investors who buy homes in need of repair or homes that owners need to
`
`sell more quickly than can be done through a traditional sales arrangement with a realtor.
`
`ORIGINAL COMPLAINT AND PETITION FOR DECLARATORY JUDGMENT—PAGE 3
`Error! Unknown document property name.
`
`
`
`

`

`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 4 of 11 PageID 4
`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 4 of 11 PageID 4
`
`9.
`
`HomeVestors franchisees typically renovate the houses they purchase and then sell
`
`or rent them to others. HomeVestors is well known for its slogan, “We Buy Ugly Houses,” which
`
`was granted service mark registration by the United States Patent and Trademark Office
`
`(“USPTO”) in September 2003.1 HomeVestors is also well known for its trademarked mascot, a
`
`caveman named “UG.”2 Both marks have attained incontestability from continuous and
`
`widespread use.
`
`10.
`
`As a group, HomeVestors’ franchises comprise the largest home buying network
`
`in the United States. The company is headquartered in Dallas, Texas, and it has more than 1100
`
`independently owned and operated franchises located in 47 states and the District of Columbia.
`
`1 1.
`
`Prior to July 2019, HomeVestors did not receive any complaints from any company
`
`or individual that its use of the phrase “Don’t fix it. Sell it” was inappropriate or otherwise
`
`consisted of infringement of a protected trademark. Evidence shows HomeVestors used the phrase
`
`as early as 2012.
`
`12.
`
`Exhibit B shows a HomeVestors’ advertisement in which the “Don’t fix it. Sell it”
`
`phrase was used on direct mailing postcards and billboards during the period February 27, 2012
`
`through April 1, 2012 in the markets of Philadelphia, Boston, San Francisco, San Antonio, Tulsa,
`
`Minneapolis, and St. Louis.
`
`13.
`
`On December 1 l. 2013, HomeVestors released a video on YouTube entitled
`
`“How To Sell A Home,” which also used the “Don’t fix it. Sell it” phrase. The video has been
`
`1 The various USPTO registration numbers for the WE BUY UGLY HOUSES marks include 2,761,385, 3,009,814,
`2,999,705, and 2,827,136.
`
`2 The various USPTO registration numbers involving the likeness of UG, the caveman, include 2,956,744, 3,263,957,
`3,061,604, and 4,551,942.
`
`
`
`ORIGINAL COMPLAINT AND PETITION FOR DECLARATORY JUDGMENT—PAGE 4
`Error! Unknown document property name.
`
`

`

`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 5 of 11 PageID 5
`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 5 of 11 PageID 5
`
`viewed more than 20,000 times.
`
`3
`
`.Vnulube
`
`r
`
`.1
`
`+1
`
`How to sell a home with HomeVestors
`20.503views . Dec11.2013
`
`
`
`
`
`.=. SAVE
`
`
`Ih ‘1
`
`.la ASHARE
`
`Both uses of the “Don’t fix it. Sell it” phrase significantly pre-date Clevenger’s filing for
`
`registration of the DON’T FIX IT... SELL 1T! mark with the USPTO in 2014.
`
`B.
`
`Documented Indusmide Use of “Don’t fix it. Sell it” Dates Back to 1987.
`
`14.
`
`A Google search of the phrases “don’t fix it sell it” + “house” produces 49,000
`
`results. According to Newspaperscom, the earliest date of an archived advertisement using the
`
`
`phrase is November 26 1987 in a Florida newspaper. See Exhibit C. An archived newspaper
`
`from Calgary, Alberta, Canada shows the “Don’t fix it. Sell it” phrase appeared in a Want Ad on
`
`March 10, 1991. See Exhibit D. The phrase also appeared in archived newspapers from Arizona
`
`on February 28, 1993 and New Jersey on November 21, 2001. See Exhibits E and F.
`
`C.
`
`15.
`
`Prosecution I-Iistogx 0f the DON’T FIX IT... SELL IT! Mark.
`
`On August 27, 2014, Jerry Clevenger filed an application for registration with the
`
`3 “How To Sell A Home” link:
`
`https://www.youtube.com/watch?v=q06quugIPth:ps:liwwwyoutube.comJ-watch?v=906fgiuglIPQ, dated Dec. 11,
`2013.
`
`
`
`ORIGINAL COMPLAINT AND PETITION FOR DECLARATORY JUDGMENT—PAGE 5
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`

`

`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 6 of 11 PageID 6
`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 6 of 11 PageID 6
`
`USPTO for the typeset mark DON’T FIX IT... SELL IT! in International Class 36, which covers
`
`“real estate acquisition services.”
`
`16.
`
`Clevenger declared in the application that the Mark was “first used in commerce at
`
`least as early as 09/01/2002” and that he or a licensee predecessor-in-interest used the mark on that
`
`date.
`
`17.
`
`Clevenger’s attorney further swore on the application, under penalty ofperjury, that
`
`“no other person has the right to use the mark in commerce, either in identical form or in such near
`
`resemblance as to be likely, when used on or in connection with the goods/services of such other
`
`person, to cause confusion or mistake, or to deceive.”
`
`18.
`
`These statements are clearly false and misleading. A plethora of evidence shows
`
`that:
`
`o The phrase “Don’t fix it. Sell it” was used throughout the US. and Canada as
`early as November 1987, almost fifteen years before Clevenger claimed “first
`
`use” in September 2002 (See Exhibits C-F);
`
`- HomeVestors used the “Don’t fix it. Sell it” phrase in promotional materials as
`
`early as February 2012, at least eighteen months before Clevenger filed an
`application for a trademark with the USPTO in August 2014 (See Exhibit B);
`and
`
`o Other real estate companies and professionals were using the “Don’t fix it. Sell
`it” phrase several years before Clevenger sought trademark registration in
`
`August 2014 (See Exhibit G).
`
`19.
`
`Despite this extensive prior use by third parties and HomeVestors, Clevenger
`
`obtained federal service mark registration, Registration No. 4,820,901, for DON’T FIX IT. . . SELL
`
`IT! on September 29, 2015. A copy of the certificate is attached hereto as Exhibit H. Nothing in
`
`the registration file indicates Clevenger advised the USPTO of the prior use of “Don’t fix it. Sell
`
`it” phrase by others in the real estate industry.
`
`ORIGINAL COMPLAINT AND PETITION FOR DECLARATORY JUDGMENT—PAGE 6
`Error! Unknown document property name.
`
`

`

`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 7 of 11 PageID 7
`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 7 of 11 PageID 7
`
`20.
`
`After the Mark’s registration, Clevenger has not consistently attempted to enforce
`
`his alleged rights in the phrase “Don’t fix it. Sell it”. Attached as Exhibits A and I are
`
`advertisements, videos, and websites showing third parties have used and continue to use the
`
`phrase “Don’t fix it. Sell it” and close variations thereof as a generic, affirmative statement of the
`
`real estate services offered.
`
`21.
`
`As a result of the long term, widespread use of the phrase “Don’t fix it. Sell it” by
`
`companies and professionals in the real estate industry, the DON’T FIX IT... SELL IT! mark does
`
`not indicate any particular source, is generic, and has not acquired distinctiveness. Accordingly,
`
`the Mark’s registration is subject to cancellation.
`
`D.
`
`Clevenger’s Infringement Allegations and Threat of Litigation.
`
`22.
`
`On July 15, 2019, Clevenger’s attorney sent a cease and desist
`
`letter to
`
`HomeVestors at its headquarters in Dallas, Texas alleging that the following two billboards in
`
`Kansas City infringed upon his DON’T FIX IT... SELL IT! mark:
`
`-800-44-BUYER
`
`a wig 3L1? new HOUSES-COM
`
`23.
`
`The billboard on the right is similar to the 2012 HomeVestors’ billboard and direct
`
`mail postcard shown in Exhibit B.
`
`24.
`
`The billboards above prominently feature the well-known WE BUY UGLY
`
`HOUSES mark and a combination of HomeVestors’ name and/or UG,
`
`the HomeVestors’
`
`trademarked mascot.
`
`The billboards were rented by independently owned and operated
`
`HomeVestors franchisees in Kansas City.
`
`
`
`ORIGINAL COMPLAINT AND PETITION FOR DECLARATORY JUDGMENT—PAGE 7
`Error! Unknown document property name.
`
`

`

`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 8 of 11 PageID 8
`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 8 of 11 PageID 8
`
`25.
`
`On August 21, 2020, Clevenger’s attorney sent another
`
`letter demanding
`
`HomeVestors promptly discontinue use of the DON’T FIX IT... SELL IT mark, alleging
`
`HomeVestors’ website, wwwwebuvuglyhousescom, contained numerous infringements of the
`
`Mark. HomeVestors created the website on June 4, 2000 and controls its operation from Dallas,
`
`Texas. The letter threatened to sue if HomeVestors did not comply with certain demands.
`
`26.
`
`Upon information and belief, HomeVestors has cause to regard Clevenger’s
`
`communications as a ‘shake-down’ for money and that Clevenger is engaged in bad faith use of
`
`trademark enforcement provisions. For this reason, HomeVestors seeks relief from the Court.
`
`V.
`
`CLAIMS FOR RELIEF
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`
`COUNT ONE
`
`27.
`
`Plaintiff HomeVestors incorporates Paragraphs 1 through 26 of this Complaint as
`
`if they were fully set forth herein.
`
`28.
`
`The question of whether HomeVestors infringed on Defendant Clevenger’s
`
`purported trademark of the phrase “Don’t fix it. Sell it” when it identified its real estate services
`
`on the website wwwwebuflglyhousescom, in online Videos, on billboards, through direct mail
`
`and other promotional activities is real, substantial, and continues to affect the rights and business
`
`of HomeVestors.
`
`29.
`
`An actual and justiciable controversy exists between the parties over HomeVestors’
`
`alleged infringement of the DON’T FIX IT... SELL IT! mark.
`
`30.
`
`The phrase “Don’t fix it. Sell it” is now, and has always been, understood by the
`
`real estate industry and the consuming public as a generic phrase associated with direct house
`
`selling, buying, or investing transactions and/or the companies who provide or offer such services.
`
`As such, the phrase “Don’t fix it. Sell it” is not understood by the consuming public to refer to
`
`
`
`ORIGINAL COMPLAINT AND PETITION FOR DECLARATORY JUDGMENT—PAGE 8
`Error! Unknown document property name.
`
`

`

`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 9 of 11 PageID 9
`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 9 of 11 PageID 9
`
`Clevenger individually or real estate services directly offered by Clevenger or a company owned
`
`by him.
`
`31.
`
`As shown above, the phrase “Don’t fix it. Sell it” and close variations thereof have
`
`been used by numerous third parties prior to and after Clevenger’s registration of the DON’T FIX
`
`IT... SELL IT! mark. Additionally, neither Clevenger, nor any previous owner of the Mark, has
`
`consistently enforced their purported rights in the mark, resulting in widespread and continuing
`
`use by competitors and real estate professionals.
`
`32.
`
`More specifically, HomeVestors’ use of the “Don’t fix it. Sell
`
`it” phrase in
`
`advertising its services occurred at
`
`least eighteen months before Clevenger even filed an
`
`application with the USPTO to register the DON’T FIX IT... SELL IT! mark.
`
`33.
`
`To the extent Clevenger has any protectable rights in the purported Mark, there has
`
`not been and will not be any likelihood of confusion between Clevenger’s use of the Mark and
`
`HomeVestors’ use of the phrase “Don’t fix it. Sell
`
`it” because the focus of HomeVestors’
`
`advertising is its own registered trademarks. The WE BUY UGLY HOUSES mark, UG the
`
`caveman mark, and even the HOMEVESTORS mark are featured prominently on all
`
`HomeVestors’ marketing materials and are well-recognized by consumers as identifying
`
`HomeVestors as the source for the real estate services being promoted.
`
`34.
`
`Accordingly, HomeVestors is entitled to a declaration that it has not infringed on
`
`any valid trademark or common law right in the DON’T FIX IT... SELL IT! mark.
`
`COUNT TWO
`
`CANCELLATION OF REGISTRATION No. 4,820,901
`0N GROUNDS THAT THE MARK IS GENERIC
`
`35.
`
`Plaintiff HomeVestors incorporates Paragraphs 1 through 27 of this Complaint as
`
`if they were fully set forth herein.
`
`
`
`ORIGINAL COMPLAINT AND PETITION FOR DECLARATORY JUDGMENT—PAGE 9
`Error! Unknown document property name.
`
`

`

`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 10 of 11 PageID 10
`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 10 of 11 PageID 10
`
`36.
`
`DON’T FIX IT... SELL IT! is not capable of distinguishing Clevenger’s goods or
`
`services pursuant to 15 U.S.C. § 1052 and Clevenger’s common law rights because (i) it is a
`
`generic phrase associated with direct house selling, buying, or investing transactions and/or the
`
`companies who provide or offer such services, and (ii) the Mark cannot identify a source due to
`
`the widespread of the phrase “Don’t fix it. Sell it” in the real estate industry.
`
`37.
`
`Clevenger’s ownership of a generic mark and threatened enforcement of a generic
`
`mark damages and interferes with HomeVestors’ and other third parties rights to make legitimate
`
`use of the phrase “Don’t fix it. Sell it” and close variations thereof in connection with real estate
`
`services.
`
`38.
`
`Further, Clevenger’s lack of enforcement of the purported Mark over many years
`
`has resulted in HomeVestors and third parties either (i) using the Mark without awareness of its
`
`registration, or (ii) believing use of the “Don’t fix it. Sell it” phrase was non-infringing.
`
`39.
`
`By reason of the foregoing, HomeVestors is entitled to a declaration that the
`
`registration of the DON’T FIX IT... SELL IT! mark, Registration No. 4,820,901, should be
`
`cancelled on bases of genericness and/or abandonment.
`
`40.
`
`Pursuant to 15 U.S.C. § 1119, HomeVestors seeks an order from the Court
`
`cancelling the registration of the purported Mark.
`
`VI.
`
`JURY DEMAND
`
`41.
`
`HomeVestors demands a trial by jury on all matters and issues triable by a jury.
`
`VII.
`
`PRAYER FOR RELIEF
`
`Plaintiff HomeVestors of America, Inc. respectfully requests this Court:
`
`(1) Enter a declaratory judgment that HomeVestors does not infringe and has not
`
`infringed any valid right in the registered 4,820,901 mark DON’T FIX IT...
`
`SELL IT!;
`
`
`
`ORIGINAL COMPLAINT AND PETITION FOR DECLARATORY JUDGMENT—PAGE 10
`Error! Unknown document property name.
`
`

`

`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 11 of 11 PageID 11
`Case 2:20-cv-00751-JLB-NPM Document 1 Filed 09/29/20 Page 11 of 11 PageID 11
`
`(2) Enter a declaratory judgment that HomeVestors does not infringe and has not
`
`infringed any valid right in the common law mark DON’T FIX IT... SELL IT!;
`
`(3) Enter a declaratory judgment that the registered 4,820,901 mark DON’T FIX
`
`IT... SELL IT! is generic;
`
`(4) Enter a declaratory judgment that the registered 4,820,901 mark DON’T FIX
`
`IT... SELL IT! is invalid;
`
`(5) Enter a judgment directing the United States Patent and Trademark Office to
`
`cancel the registered 4,820,901 mark DON’T FIX IT... SELL IT!; and
`
`(6) Enter any award to HomeVestors of such other relief as this Court deems just
`
`and equitable.
`
`Dated:
`
`September 29, 2020
`Sarasota, FL
`
`Respectfully submitted,
`
`
`
`By: WMI( (W4
`
`JURA C. 2113-3
`Florida Bar No: 124571
`
`"
`
`WILSON ELSER MOSKOWITZ
`
`EDELMAN & DICKER, LLP.
`2063 Main Street — Suite 100
`
`Sarasota FL 34237
`
`Telephone: 941-866-8561
`Facsimile: 941-210-5979
`
`
`'ura.zibas<‘r_ii:wilsonclsemom
`Primary Email:
`Secondary Email: brett.sarason-"§I‘f'wilsonelscr.c0m
`Tertiary Email: clicrvl.kujawski:'@wilsonelsemom
`Attorneys for Plaintiff
`
`
`
`
`
`ORIGINAL COMPLAINT AND PETITION FOR DECLARATORY JUDGMENT—PAGE 11
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`
`

`

`Case 2:20-cv-00751-JLB-NPM Document 1-1 Filed 09/29/20 Page 1 of 7 PageID 12
`Case 2:20-cv-00751—JLB-NPM Document 1-1 Filed 09/29/20 Page 1 of 7 PageID 12
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`

`

`9/22/2020
`
`Case 2:20-cv-00751-JLB-NPM Document 1-1 Filed 09/29/20 Page 2 of 7 PageID 13
`Case 2:20-cv-00751—JLB-NPM Documetq; Q7315" “Eiigggggégggzo Page 2 of 7 PagelD 13
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