ESTTA Tracking number:
`
`ESTTA1318167
`
`Filing date:
`
`10/25/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92077406
`
`Party
`
`Correspondence
`address
`
`Plaintiff
`City of Dallas
`
`ELISABETH A. EVERT
`HITCHCOCK EVERT LLP
`P.O. BOX 131709
`DALLAS, TX 75313-1709
`UNITED STATES
`Primary email: docket@hitchcockevert.com
`214-953-1181
`
`Submission
`
`Appeal or Cross-Appeal of Final Board Decision
`
`Notice of appeal
`to
`
`Name of U.S. dis-
`trict court (if ap-
`plicable)
`
`Case number (if
`known)
`
`Civil Action in United States District Court
`
`Northern District of Texas
`
`3:23-cv-02367-K
`
`Certificate of ser-
`vice
`
`The undersigned hereby certifies that a copy of this submission has been served
`upon all parties, at their address of record by Email on this date.
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Anne M. Turner
`
`docket@hitchcockevert.com
`
`/Anne M. Turner/
`
`10/25/2023
`
`Attachments
`
`231025 Original Complaint with Exhibits.pdf(2810955 bytes )
`
`

`

`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 1 of 24 PageID 1
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`
`
`City of Dallas,
`
`Plaintiff,
`
`
`
`
`v.
`
`
`Triple D Gear, LLC,
`
`
`
`Defendant.
`
`
`
`
`
`CIVIL ACTION NO. 23cv2367
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`ORIGINAL COMPLAINT
`
`TO THE HONORABLE UNITED STATES DISTRICT COURT:
`
`Plaintiff City of Dallas files its Complaint against Defendant Triple D Gear, LLC.
`
`Plaintiff would respectfully show the Court as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is a civil action for review of a decision of the Trademark Trial and Appeal
`
`Board of the United States Patent and Trademark Office (“TTAB”) pursuant to 15 U.S.C.
`
`§ 1071(b)(2) and for cancellation of fraudulently obtained registrations pursuant to 15 U.S.C. §§
`
`1119 and 1120.
`
`2.
`
`The City of Dallas seeks review of the TTAB’s decision dated August 23, 2023, in
`
`the matter of City of Dallas. v. Triple D Gear, LLC, Cancellation No. 92077406. A true and correct
`
`copy of this decision is attached hereto as Exhibit 1.
`
`3.
`
`The City of Dallas seeks cancellation of U.S. Trademark Registration Nos.
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`4,586,688 and 6,330,048 in order to rectify the register with respect to the registrations of
`
`Defendant.
`
`

`

`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 2 of 24 PageID 2
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`4.
`
`The City of Dallas also seeks cancellation of U.S. Trademark Registration Nos.
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`4,586,688 and 6,330,048 on the basis that they were obtained by false or fraudulent declarations
`
`or representations and that the City of Dallas has been injured by such registrations.
`
`5.
`
`Plaintiff City of Dallas (the “City”) is a municipal corporation with an address of
`
`THE PARTIES
`
`1500 Marilla Street, Dallas, Texas 75202.
`
`6.
`
`Defendant Triple D Gear, LLC (“Defendant”) is a Texas limited liability company
`
`with an address at 503 N. Interurban St., Richardson, TX 75081. Defendant may be served with
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`process by serving its registered agent Alfredo Sanchez at 503 N. Interurban St., Richardson, TX
`
`75081.
`
`JURISDICTION AND VENUE
`
`7.
`
`This court has original jurisdiction over this civil action pursuant to 28 U.S.C. §
`
`1338(a) and 15 U.S.C. § 1121(a) as it arises under an Act of Congress relating to trademarks.
`
`8.
`
`This Court has personal jurisdiction over Defendant because it is a Texas limited
`
`liability company operating in this District.
`
`9.
`
`Venue is appropriate pursuant to 28 U.S.C. § 1391(b) because Defendant resides in
`
`this District.
`
`FACTS COMMON TO ALL COUNTS
`
`The City and its Mark
`
`10.
`
`Dallas, Texas is not just one of the largest cities in the United States but one of the
`
`most famous cities in the world. Among other things, Dallas is associated with the NBA
`
`ORIGINAL COMPLAINT—PAGE 2
`
`

`

`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 3 of 24 PageID 3
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`Championship winning Dallas Mavericks, the Stanley Cup winning Dallas Stars, the second
`
`busiest airport in the world, and the “Who shot J.R.?” phenomenon1.
`
`11.
`
`In 1972, the City adopted the following logo as a trademark and service mark for
`
`the services rendered by the City and marketing and informational materials (including
`
`promotional merchandise such as t-shirts, bags, and other goods) distributed therewith:
`
`(“City Logo”).
`
`
`
`12.
`
`For fifty-one years now, the City Logo “graces just about everything that emanates
`
`from City Hall.”2 Most residents of Dallas likely see the City Logo several times per day, and
`
`almost every Dallas visitor encounters it as well. There are literally millions and millions of
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`commercial impressions of the City Logo each year, and those impressions have compounded for
`
`more than five decades.
`
`13.
`
`Due in part to the use of three concentric “Ds” in the City Logo, Defendant’s
`
`predecessor in interest alleged – and obtained a Texas state district court judgment finding – that,
`
`“‘Triple D’ is a well recognized nickname for the City of Dallas, Texas.”3
`
`14.
`
`The City Logo identifies the City of Dallas. A Texas state district court has held
`
`that the Triple D nickname also identifies the City of Dallas. Id.
`
`
`1 Available at https://www.latimes.com/archives/la-xpm-1990-11-23-ca-5345-story.html
`2 Available at https://www.dallasobserver.com/news/bust-out-the-d-shaped-cake-dallas-logo-turns-40-this-year-
`7106959
`3 Youssef v. Jackson, No. DC 13-01632 in the 101st Judicial District of Dallas County, Texas (May 22, 2013). For the
`Court’s convenience, a true and correct copy of this judgment is attached as Exhibit 2.
`
`ORIGINAL COMPLAINT—PAGE 3
`
`

`

`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 4 of 24 PageID 4
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`The Triple D Gear Logos: “Basically, we just took the City of Dallas Logo.”
`
`15.
`
`In or around 2007, Ahmed Youssef4 (“Youssef”) and Arturo Sanchez (“Sanchez”)
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`purportedly began doing business as co-owners of Triple D Gear.
`
`16.
`
`Upon establishing their partnership, Youssef and Sanchez allegedly began using a
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`mark that, it is plain to see, was directly copied from the City’s Logo:
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`(“Ghost Logo”).
`
`
`
`17.
`
`The one and only difference between the Ghost Logo and the City’s Logo is the
`
`absence of the stylized oak leaf that is part of the City’s Logo. Both logos contain the same
`
`interruption near the top of the vertical lines of the concentric “Ds,” creating the same proportion
`
`of solid space to white space. Both logos have a subtle angle between the top and bottom edges of
`
`the “Ds” and the rounded right side, rather than a smooth elliptical shape.
`
`18.
`
`At some point in or after 2007 – Defendant’s assertions varied in the proceedings
`
`below as to when – Triple D Gear began using a different facsimile of the City’s Logo:
`
`
`4 Youssef was the original owner of U.S. Registration No. 4,586,688 and later assigned it to Defendant. Youssef was
`the Manager named in Defendant’s Certificate of Formation and reportedly left the business sometime between 2017
`and 2019. Sanchez remains the sole owner of Defendant and is its CEO.
`
`
`
`ORIGINAL COMPLAINT—PAGE 4
`
`

`

`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 5 of 24 PageID 5
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`(“Tilted Star Logo”).
`
`19.
`
`As is readily apparent, the only differences between the City Logo and the Tilted
`
`Star Logo are that the stylized oak leaf in the City Logo was replaced by a tilted star and the open
`
`ends of the “Ds” are rounded in the Tilted Star Logo. Otherwise, both use (1) three concentric
`
`“Ds” with a space between the top and left side of the “Ds” and (2) the same curved and straight
`
`lining for the “Ds”.
`
`20.
`
`The similarity between the logos alone sufficiently shows intent to copy. But in this
`
`case, Sanchez (the current sole owner of Defendant) admitted it on live television.
`
`21.
`
`Specifically, on or about December 17, 2018, during a television appearance on
`
`Good Morning Texas on local Dallas channel WFAA, Sanchez said of the Tilted Star Logo:
`
`“Basically, we just took the City of Dallas Logo and we just put a star in it and tilted it.”5
`
`(screen capture from Sanchez’s appearance on Good Morning Texas)
`
`
`5 Available at https://www.wfaa.com/video/entertainment/television/programs/good-morning-texas/show-off-your-
`love-for-dallas-with-triple-d-gear/287-8380002.
`
`
`
`ORIGINAL COMPLAINT—PAGE 5
`
`

`

`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 6 of 24 PageID 6
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`22.
`
`Notably, this admission was made in response to the interviewer’s unprompted
`
`observation of the similarity between the Tilted Star Logo and the City’s Logo: “Now, the logo is
`
`the D, the Dallas D. Now, it looks very familiar. It looks like the City D...”6
`
`23.
`
`Given that the Ghost Logo lacks even the two minor distinctions from the City’s
`
`Logo that the Tilted Star Logo has, there can be no doubt that Defendant “just took the City of
`
`Dallas Logo” for the Ghost Logo as well—but in this case did not even bother to “just put a star
`
`[or anything else] in it.”
`
`24.
`
`In fact, and as shown further below, Defendant and its current and former
`
`representatives have repeatedly stated and argued in administrative and state court filings that
`
`“Triple D” is a reference to the City of Dallas, Texas.
`
`25.
`
`For example, in a declaration filed with the TTAB, Sanchez stated Triple D referred
`
`to “dirty dirty Dallas.”7
`
`26.
`
`Previously, Youssef filed a motion for summary judgment in a Texas state court
`
`case and submitted an affidavit in which he testified that:
`
`We call the mark the Triple D Logo, as “Triple D” is the well known nickname for
`the City of Dallas. There is no dispute that the term “Triple D” means Dallas. All
`you have to say is “Triple D” and practically anybody in our targeted purchasing
`public knows and understands that you are talking about Dallas, Texas.8
`
`27.
`
`Importantly, Sanchez asserted in deposition testimony given under the penalty of
`
`perjury that, when he “designed” the Ghost Logo and the Tilted Star Logo, he did not consider any
`
`other arrangements for the three Ds (such as stacking the three Ds horizontally or vertically, or in
`
`
`6 Available at https://www.wfaa.com/video/entertainment/television/programs/good-morning-texas/show-off-your-
`love-for-dallas-with-triple-d-gear/287-8380002.
`7 A true and correct copy of this declaration is attached as Exhibit 3.
`8 A true and correct copy of this affidavit is attached as Exhibit 4.
`
`ORIGINAL COMPLAINT—PAGE 6
`
`

`

`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 7 of 24 PageID 7
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`an interlocking pattern similar to the Olympic rings). Rather, from the beginning, Defendant
`
`wanted to use the City’s Logo and took it.
`
`28.
`
`The use of the City’s Logo and the City’s judicially recognized nickname was not
`
`the only way Defendant sought to associate itself with the City. In addition, Defendant placed the
`
`following statement on its website: “In 2011 Triple D Gear LLC was granted the full legal
`
`trademark for the brand mark by the city of Dallas and the United States Supreme Court.”
`
`
`
`(screenshot of Defendant’s website as it appeared on January 15, 2021)
`
`29.
`
`Neither claim is true. The Supreme Court has no involvement in granting trademark
`
`registrations other than review of appeals concerning registration. But Defendant’s statement that
`
`the City of Dallas granted Defendant trademark rights would be viewed by the average consumer
`
`as a claim that the City either licensed use of the City’s Logo or otherwise consented to
`
`Defendant’s use of the Tilted Star Logo. The City did neither.
`
`ORIGINAL COMPLAINT—PAGE 7
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`

`

`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 8 of 24 PageID 8
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`The Challenged Registrations
`
`Registration No. 4,586,688 for the Tilted Star Logo
`
`30.
`
`On February 8, 2012, Ahmed Youssef, DBA Triple D Gear, filed U.S. Trademark
`
`Application No. 85/537,432 (“the ’432 Application”) with the United States Patent and Trademark
`
`Office (“USPTO”) to register the Tilted Star Logo on and in connection with “Athletic apparel,
`
`namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms” in International Class 25.
`
`31.
`
`Youssef directed his attorney of record to declare under penalty of perjury that he,
`
`as the sole individual applicant, was “the owner of the trademark/service mark sought to be
`
`registered.” Counsel’s declaration is imputed to Defendant. Sanchez has subsequently testified
`
`under oath that he and Youssef were joint proprietors of Triple D Gear from its inception and,
`
`further, that it was Sanchez who “designed” the Tilted Star Logo. If Sanchez’s testimony is to be
`
`believed, Youssef’s declaration was false—Youssef and Sanchez were joint owners of the Tilted
`
`Star Logo as of February 8, 2012.
`
`32.
`
`A trademark application must name and set forth the citizenship of each joint
`
`applicant. 37 C.F.R. § 2.32(a)(2). The ’432 Application failed to identify Sanchez as a joint
`
`applicant with Youssef. Accordingly, the ’432 Application was void ab initio. 37 C.F.R. § 2.71(d).
`
`33.
`
`Youssef also directed his attorney of record to declare under penalty of perjury that
`
`“to the best of [his] knowledge and belief no other person, firm, corporation, or association has the
`
`right to use the mark in commerce, either in the identical form thereof or in such near resemblance
`
`thereto as to be likely, when used on or in connection with the goods/services of such other person,
`
`to cause confusion, or to cause mistake, or to deceive.” This was untrue. Youssef was well aware
`
`that the Tilted Star Logo had been copied from the City’s Logo and that Defendant’s use of the
`
`ORIGINAL COMPLAINT—PAGE 8
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`

`

`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 9 of 24 PageID 9
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`Tilted Star Logo was likely to deceive consumers that the City of Dallas endorsed, approved, or
`
`sanctioned Defendant’s use.
`
`34.
`
`Youssef further directed his attorney of record to declare under penalty of perjury
`
`that he had used the Tilted Star Logo in interstate commerce on or in connection with the claimed
`
`goods since at least as early as January 1, 2007. This was also untrue. Defendant has subsequently
`
`admitted that the Tilted Star Logo has never been used on or in connection with footwear or athletic
`
`uniforms by Defendant or its predecessors, and Sanchez’s sworn deposition testimony in the
`
`proceedings below cast doubt on whether the Tilted Star Logo had even been created as of January
`
`1, 2007.
`
`35.
`
`Although Youssef was represented by counsel when these false declarations were
`
`made and had doubtless been appropriately advised by his counsel of the substance of the
`
`trademark declaration and the seriousness with which such declarations must be made, Youssef
`
`nonetheless directed his counsel to make a declaration replete with knowingly false statements.
`
`36.
`
`On May 21, 2012, the ’432 Application was refused registration under Section 2(d)
`
`of the Trademark Act, 15 U.S.C. § 1052(d), because of a likelihood of confusion with the mark in
`
`U.S. Registration No. 4,048,819, shown below:
`
`37.
`
`In order to overcome the refusal, on September 9, 2012, Youssef filed Cancellation
`
`No. 92055839 against the owner of the cited registration, Freddie Jackson dba Triple D Clothing
`
`
`
`ORIGINAL COMPLAINT—PAGE 9
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`

`

`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 10 of 24 PageID 10
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`Co., alleging, inter alia, that “Petitioner [Ahmed Youssef] and his associate Arturo Sanchez
`
`designed and used their mark in 2007.”
`
`38.
`
`Youssef also filed an Original Petition for Declaratory Judgment on February 11,
`
`2013 in the 101st Judicial District Court of Dallas County, Texas seeking, inter alia, a declaration
`
`that Freddie Jackson had no rights in the registered logo or in the word mark “Triple D.” Youssef
`
`again falsely alleged that he was the sole owner of the Tilted Star Logo.
`
`39.
`
`The Texas district court granted summary judgment, finding that, as between the
`
`parties, “Plaintiff Ahmed Youssef is awarded all common law rights of ownership of Plaintiff’s
`
`Leaning Star Triple D mark, and a judicial determination of prior use of his Leaning Star Triple D
`
`mark as it relates to any dispute between Plaintiff Ahmed Youssef’s Leaning Star Triple D mark
`
`and Defendant Freddie Jackson’s Stylized D mark” (emphasis in original).9
`
`40.
`
`Following notification to the Trademark Trial & Appeal Board of the Texas state
`
`court’s ruling, the Commissioner of Trademarks cancelled Freddie Jackson’s registration.
`
`41.
`
`U.S. Trademark Registration No. 4,586,688 (“the ’688 Registration”) for the Tilted
`
`Star Logo was issued to Ahmed Youssef, DBA Triple D Gear, on August 19, 2014 for “Athletic
`
`apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms.”
`
`42.
`
`A Certificate of Formation for Triple D Gear, LLC was filed with the Texas
`
`Secretary of State on February 8, 2012, the same day the ’432 Application was filed. On September
`
`17, 2014, Youssef assigned “one hundred percent (100%) interest in Assignor’s share of trademark
`
`in the registered Word Mark ‘D’ to Defendant.” The assignment was recorded with the Assignment
`
`Branch of the USPTO on November 17, 2014.
`
`9 Exhibit 2.
`
`
`
`ORIGINAL COMPLAINT—PAGE 10
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`

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`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 11 of 24 PageID 11
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`43.
`
`On February 19, 2021, Defendant filed a Combined Declaration of Use and
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`Incontestability under Sections 8 & 15, alleging that “the mark is in use in commerce on or in
`
`connection with all of the goods…listed in the existing registration for this specific class: Athletic
`
`apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms” (emphasis in
`
`original). Defendant verified this assertion in a declaration under penalty of perjury personally
`
`signed by Sanchez. Once again, Defendant’s declaration was false—Defendant had never used
`
`the mark on or in connection with footwear or athletic uniforms.
`
`44.
`
`Here again, Defendant had the benefit of counsel to impress upon its authorized
`
`signatory the seriousness of the declaration and the importance of precision. Yet Sanchez still
`
`made a false declaration to the Trademark Office.
`
`45.
`
`The mark shown in the ’688 Registration was selected for the specific purpose of
`
`invoking in the mind of consumers the well-known City Logo and, as such, is confusingly similar
`
`to the City’s Logo and creates a false affiliation between Defendant and the City of Dallas.
`
`46.
`
`The ’688 Registration is void ab initio for failure to correctly identify the joint
`
`applicants, and this is an incurable error. 37 C.F.R. § 2.71(d).
`
`47.
`
`Even if the error could be cured, the ’688 Registration was obtained by fraud.
`
`Ahmed Youssef repeatedly represented himself – to the USPTO Trademark Examination Branch,
`
`to the Trademark Trial & Appeal Board, and to the Texas district court – as the sole owner of the
`
`mark and that no other person had the right to use a confusingly similar mark.
`
`48.
`
`In addition, both Youssef and Sanchez made false declarations that the Tilted Star
`
`Logo was used on or in connection with footwear and athletic uniforms when they never had been.
`
`It was not until the City filed its Petition for Cancellation against Registration No. 6,141,994 for
`
`ORIGINAL COMPLAINT—PAGE 11
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`

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`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 12 of 24 PageID 12
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`the Ghost Logo and sought discovery verifying the goods upon which Defendant’s marks were
`
`used did Defendant attempt to amend the ’688 Registration under Section 7 of the Trademark Act.
`
`49.
`
`Defendant also falsely declared that it was aware of no other person that had the
`
`right to use a confusingly similar mark, knowing that the Tilted Star Logo was a colorable imitation
`
`of the City’s Logo and that the widespread recognition of the City’s Logo all but ensured that
`
`consumers would believe that the City sanctioned Defendant’s trademark use. Indeed, Defendant
`
`and its representatives have publicly made affirmative statements to all but ensure that such
`
`confusion occurred – that Triple D refers to Dallas, that Defendant “took the City of Dallas Logo
`
`and we just put a star in it and tilted it,” and that Defendant was “granted the full legal trademark
`
`for the brand mark by the city of Dallas.”
`
`50.
`
`The City of Dallas has been harmed by Defendant’s and its predecessor’s fraud in
`
`obtaining Registration No. 4,586,688 for the Tilted Star Logo, as it is likely to cause confusion, or
`
`to cause mistake, or to deceive as to the affiliation, connection, or association of Defendant with
`
`the City of Dallas, or as to the origin, sponsorship, or approval of Defendant’s goods, services, or
`
`commercial activities by the City of Dallas.
`
`Registration No. 6,141,994 for the Ghost Logo
`
`51.
`
`On March 27, 2020, Defendant filed U.S. Trademark Application No. 88/850,773
`
`(“the ’773 Application”) with the United States Patent and Trademark Office to register the Ghost
`
`Logo on and in connection with “Shirts; Hats; Headwear; Beanies; Pants; Footwear; Jackets;
`
`Jerseys; Sweaters; T Shirts; Long Sleeve Shirts; Short Sleeve Shirts; Tank Tops; Swimwear;
`
`Sweatshirts; Hooded Sweatshirts; Underwear; Shorts; Socks; Jeans; Leggings; Robes; Ties; Coats;
`
`Polo Shirts; Suits; Footwear; Tops as clothing; Bottoms as clothing” in International Class 25.
`
`ORIGINAL COMPLAINT—PAGE 12
`
`

`

`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 13 of 24 PageID 13
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`52.
`
`Defendant declared in its application that it had used the Ghost Logo in interstate
`
`commerce in connection with all of the claimed goods since at least as early as 2007. But
`
`Defendant has since made numerous conflicting statements about when it first used the Ghost
`
`Logo, claiming during its corporate representative deposition in the proceeding below that it sold
`
`products bearing the Ghost Logo prior to January 1, 2007, and later stating in a declaration that
`
`the Ghost Logo wasn’t even designed until late 2007. Both statements were given under oath, but
`
`at least one of those statements must be untrue.
`
`53.
`
`Defendant’s declaration that the Ghost Logo “was in use in commerce as of the
`
`filing date of the application on or in connection with the goods/services in the application” when
`
`filing Application No. 88/850,773 was also made under oath. That, too, was untrue. Defendant has
`
`subsequently admitted in its corporate representative deposition that the Ghost Logo has never
`
`been used on or in connection with pants, footwear, jackets, jerseys, sweaters, tank tops,
`
`swimwear, underwear, shorts, socks, jeans, leggings, robes, ties, coats, polo shirts, suits, footwear,
`
`or bottoms as clothing.
`
`54.
`
`Defendant also declared under penalty of perjury that “to the best of [its] knowledge
`
`and belief no other person, firm, corporation, or association has the right to use the mark in
`
`commerce, either in the identical form thereof or in such near resemblance thereto as to be likely,
`
`when used on or in connection with the goods/services of such other person, to cause confusion,
`
`or to cause mistake, or to deceive.” This was untrue. Defendant was well aware that the Ghost
`
`Logo was an imitation of the City’s Logo and that Defendant’s use of the Ghost Logo was likely
`
`to deceive consumers that the City of Dallas endorsed, approved, or sanctioned Defendant’s use.
`
`55.
`
`U.S. Trademark Registration No. 6,141,994 (“the ’994 Registration”) for the Ghost
`
`Logo was issued on September 1, 2020 for “Shirts; Hats; Headwear; Beanies; Pants; Footwear;
`
`ORIGINAL COMPLAINT—PAGE 13
`
`

`

`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 14 of 24 PageID 14
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`Jackets; Jerseys; Sweaters; T Shirts; Long Sleeve Shirts; Short Sleeve Shirts; Tank Tops;
`
`Swimwear; Sweatshirts; Hooded Sweatshirts; Underwear; Shorts; Socks; Jeans; Leggings; Robes;
`
`Ties; Coats; Polo Shirts; Suits; Footwear; Tops as clothing; Bottoms as clothing.”
`
`56.
`
`The mark shown in the ’994 Registration was selected for the specific purpose of
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`invoking in the mind of consumers the well-known City Logo and, as such, is confusingly similar
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`to the City’s Logo and creates a false affiliation between Defendant and the City of Dallas.
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`57.
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`In addition, the registration was obtained by fraud. Defendant made a false
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`declaration that the Ghost Logo was used on or in connection with pants, footwear, jackets, jerseys,
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`sweaters, tank tops, swimwear, underwear, shorts, socks, jeans, leggings, robes, ties, coats, polo
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`shirts, suits, footwear, or bottoms as clothing when they never had been. It was not until the City
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`filed its Petition for Cancellation and sought discovery verifying the goods upon which
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`Defendant’s marks were used did Defendant attempt to amend the ’994 Registration under Section
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`7 of the Trademark Act.
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`58. Moreover, Defendant falsely declared that the Ghost Logo was used on the claimed
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`goods at least as early as January 1, 2007 when, in fact, Defendant has subsequently admitted that
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`the Ghost Logo was not even designed until late 2007.
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`59.
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`Defendant also falsely declared that it was aware of no other person that had the
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`right to use a confusingly similar mark, knowing that the Ghost Logo was copied directly from,
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`and visually nearly identical to, the City’s Logo and that the widespread recognition of the City’s
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`Logo all but ensured that consumers would believe that the City sanctioned Defendant’s trademark
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`use.
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`60.
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`The City of Dallas has been harmed by Defendant’s fraud in obtaining Registration
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`No. 6,141,994 for the Ghost Logo, as it is likely to cause confusion, or to cause mistake, or to
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`ORIGINAL COMPLAINT—PAGE 14
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`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 15 of 24 PageID 15
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`deceive as to the affiliation, connection, or association of Defendant with the City of Dallas, or as
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`to the origin, sponsorship, or approval of Defendant’s goods, services, or commercial activities by
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`the City of Dallas.
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`Registration No. 6,330,048 for the Tilted Star Logo
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`61.
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`On February 19, 2020, Defendant filed U.S. Trademark Application No.
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`88/802,417 (“the ’417 Application”) with the United States Patent and Trademark Office to
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`register the Tilted Star Logo on and in connection with “Shirts; Hats; Headwear; Beanies; Pants;
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`Footwear; Jackets; Jerseys; Sweaters; T Shirts; Long Sleeve Shirts; Short Sleeve Shirts; Tank
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`Tops; Swimwear; Sweatshirts; Hooded Sweatshirts; Underwear; Shorts; Socks; Jeans; Leggings;
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`Robes; Ties; Coats; Polo Shirts; Suits; Footwear; Tops as clothing; Bottoms as clothing” in
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`International Class 25 and “Retail store services featuring eyeglasses, sunglasses, rings, key rings,
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`watches, clocks, umbrellas, bags, wallets, luggage and other goods made of leather or imitations
`
`of leather, cushions, cups, mugs, clothing, headgear, and footwear; online retail store services in
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`the field of eyeglasses, sunglasses, rings, key rings, watches, clocks, umbrellas, bags, wallets,
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`luggage and other goods made of leather or imitations of leather, cushions, cups, mugs, clothing,
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`headgear, and footwear; Retail apparel stores; Online retail store services featuring apparel” in
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`International Class 35.
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`62.
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`Defendant declared under penalty of perjury that “to the best of [its] knowledge and
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`belief no other person, firm, corporation, or association has the right to use the mark in commerce,
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`either in the identical form thereof or in such near resemblance thereto as to be likely, when used
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`on or in connection with the goods/services of such other person, to cause confusion, or to cause
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`mistake, or to deceive.” This was untrue. Defendant was well aware that the Tilted Star Logo had
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`ORIGINAL COMPLAINT—PAGE 15
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`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 16 of 24 PageID 16
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`been copied from the City’s Logo and that Defendant’s use of the Tilted Star Logo was likely to
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`deceive consumers that the City of Dallas endorsed, approved, or sanctioned Defendant’s use.
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`63.
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`Defendant also declared under penalty of perjury that it had used the Tilted Star
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`Logo in interstate commerce on or in connection with all of the claimed goods in International
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`Class 25 since at least as early as 2008. This was also untrue. Defendant has subsequently admitted
`
`that the Tilted Star Logo has never been used on or in connection with pants, footwear, jackets,
`
`jerseys, sweaters, tank tops, swimwear, underwear, shorts, socks, jeans, leggings, robes, ties, coats,
`
`polo shirts, suits, footwear, or bottoms as clothing.
`
`64.
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`In addition, Defendant declared under penalty of perjury that it had a bona fide
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`intention to use the Tilted Star Logo in interstate commerce on or in connection with all of the
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`claimed services in International Class 35.
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`65.
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`On February 11, 2021, Defendant filed a Trademark/Service Mark Statement of
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`Use pursuant to 15 U.S.C. § 1051(d). In it, Defendant declared under penalty of perjury that: “The
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`mark is in use in commerce on or in connection with all of the goods/services, or to indicate
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`membership in the collective organization listed in the application or Notice of Allowance or as
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`subsequently modified for this specific class.” This was untrue. Defendant has since admitted that
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`the Tilted Star Logo has never been used on or in connection with retail store services featuring
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`eyeglasses, sunglasses, rings, key rings, watches, clocks, umbrellas, bags, wallets, luggage and
`
`other goods made of leather or imitations of leather, cushions, cups, mugs, clothing, headgear, and
`
`footwear; online retail store services in the field of eyeglasses, sunglasses, rings, key rings,
`
`watches, clocks, umbrellas, bags, wallets, luggage and other goods made of leather or imitations
`
`of leather, cushions, cups, mugs, and footwear; or retail apparel stores.
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`ORIGINAL COMPLAINT—PAGE 16
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`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 17 of 24 PageID 17
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`66.
`
`U.S. Trademark Registration No. 6,330,048 (“the ’048 Registration”) for the Tilted
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`Star Logo was issued on April 20, 2021 for “Shirts; Hats; Headwear; Beanies; Pants; Footwear;
`
`Jackets; Jerseys; Sweaters; T Shirts; Long Sleeve Shirts; Short Sleeve Shirts; Tank Tops;
`
`Swimwear; Sweatshirts; Hooded Sweatshirts; Underwear; Shorts; Socks; Jeans; Leggings; Robes;
`
`Ties; Coats; Polo Shirts; Suits; Footwear; Tops as clothing; Bottoms as clothing” in International
`
`Class 25 and “Retail store services featuring eyeglasses, sunglasses, rings, key rings, watches,
`
`clocks, umbrellas, bags, wallets, luggage and other goods made of leather or imitations of leather,
`
`cushions, cups, mugs, clothing, headgear, and footwear; online retail store services in the field of
`
`eyeglasses, sunglasses, rings, key rings, watches, clocks, umbrellas, bags, wallets, luggage and
`
`other goods made of leather or imitations of leather, cushions, cups, mugs, clothing, headgear, and
`
`footwear; Retail apparel stores; Online retail store services featuring apparel” in International
`
`Class 35.
`
`67.
`
`The mark shown in the ’048 Registration was selected for the specific purpose of
`
`invoking in the mind of consumers the well-known City Logo and, as such, is confusingly similar
`
`to the City’s Logo and creates a false affiliation between Defendant and the City of Dallas.
`
`68.
`
`The registration was also obtained by fraud. Defendant made a false declaration
`
`that the Tilted Star Logo was used on or in connection with pants, footwear, jackets, jerseys,
`
`sweaters, tank tops, swimwear, underwear, shorts, socks, jeans, leggings, robes, ties, coats, polo
`
`shirts, suits, footwear, or bottoms as clothing and retail store services featuring eyeglasses,
`
`sunglasses, rings, key rings, watches, clocks, umbrellas, bags, wallets, luggage and other goods
`
`made of leather or imitations of leather, cushions, cups, mugs, clothing, headgear, and footwear;
`
`online retail store services in the field of eyeglasses, sunglasses, rings, key rings, watches, clocks,
`
`umbrellas, bags, wallets, luggage and other goods made of leather or imitations of leather,
`
`ORIGINAL COMPLAINT—PAGE 17
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`Case 3:23-cv-02367-K Document 1 Filed 10/25/23 Page 18 of 24 PageID 18
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`cushions, cups, mugs, and footwear; and retail apparel stores when they never had been. It was not
`
`until the City filed its Petition for Cancellation and sought discovery verifying the goods upon
`
`which Defendant’s marks were used did Defendant attempt to amend the ’048 Registration under
`
`Section 7 of the Trademark Act.
`
`69.
`
`Defendant also falsely declared that it was aware of no other person that had the
`
`ri