Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1245591
`11/02/2022
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No.
`
`92079677
`
`Filing Party
`
`Other Party
`
`Defendant
`Rey Feo Scholarship Foundation
`
`Plaintiff
`Original Lulac Council No. 2
`
`Pending Motion
`
`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
`
`Attachments
`
`rey feo motion to suspend_110222.pdf(2542777 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, Rey Feo
`Scholarship Foundation hereby requests suspension of this proceeding pending a final determination of the
`civil action. Trademark Rule 2.117.
`Rey Feo Scholarship Foundation has secured the express consent of all other parties to this proceeding for
`the suspension requested herein.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this submission has been served upon all parties, at their ad-
`dress of record by Email on this date.
`Respectfully submitted,
`/Victoria J. B. Doyle/
`Victoria J. B. Doyle
`ip@akerman.com
`11/02/2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE TRADEMARK TRIAL AND APPEAL BOARD
`
`ORIGINAL LULAC COUNCIL NO. 2,
`
`Petitioner,
`
`
`
`In re Registration No. 6,431,439
`Registrant: Rey Feo Scholarship Foundation
`Mark: FERIA DE LAS FLORES
`Registration Date: July 17, 2021
`Cancellation No. 92079677
`____________________________________
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`Respondent
`____________________________________:
`
`v.
`
`REY FEO SCHOLARSHIP
`FOUNDATION,
`
`CONSENT MOTION TO SUSPEND PROCEEDINGS
`PENDING DISPOSITION OF CIVIL ACTION
`
`Pursuant to 37 C.F.R. §2.117(a) and TBMP §510.02(a), and with the consent of Petitioner,
`
`Original Lulac Council No. 2, the Respondent, Rey Feo Scholarship Foundation, hereby requests
`
`that the above-captioned cancellation proceeding be suspended in light of a civil action which is
`
`pending before the United States District Court for the Western District of Texas (“Federal Court
`
`Action”)1
`
`The Federal Court Action involves the same parties and issues set forth in the TTAB
`
`Proceedings at issue herein. See Exhibit A (Notice of Removal, filed with the U.S. District Court
`
`on October 3, 2022), Exhibit B (Plaintiff's Original Petition and Request for Injunction and
`
`Equitable Relief, filed with the Bexar County District Court on September 20, 2022); and Exhibit
`
`1 Captioned Rey Feo Scholarship Foundation v. Lulac Council #2, Civil Action No. 5:22-cv-1077
`
`67059222;1
`
`

`

`C (Defendant and Counterclaim-Plaintiff's Answer and Counterclaims to Amended Plaintiff's
`
`Petition, filed with the U.S. District Court on October 13, 2022).
`
`WHEREFORE, Respondent respectfully requests that the TTAB Cancellation Proceeding
`
`be suspended pending resolution of the Federal Court Action.
`
`Dated: November 2, 2022
`
`Respectfully submitted,
`
`AKERMAN, LLP
`
`By: /Victoria J. B. Doyle/
`Victoria J. B. Doyle
`Attorneys for Registrant
`777 South Flagler Drive
`West Tower, Suite 1100
`West Palm Beach, Florida 33401
`Tel: 561-653-5000
`Email: ip@akerman.com
`
`67059222;1
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing document was served by e-mail on
`
`November 2, 2022, to:
`
`Charles W. Hanor
`HANOR LAW FIRM
`750 Rittiman Road
`San Antonio, TX 78209
`trademarks@hanor.com
`
`
`/T.J. Fatum/
`T.J. Fatum, FRP
`
`67059222;1
`
`

`

`Case 5:22-cv-01077 Documenti Filed 10/03/22 Page 1 of4
`
`UNITED STATESDISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`SAN ANTONIO DIVISION
`
`REY FEO SCHOLARSHIP FOUNDATION,
`
`§
`
`Plaintiff,
`
`V.
`LULAC COUNCIL #2
`Defendant.
`
`CIVIL ACTIONNO.5:22-cv-1077
`
`:
`:
`:
`
`NOTICE OF REMOVAL
`
`Defendant, Original Lulac Council #2, dba LULAC Council #2, Defendant in this cause,
`
`states to the Court as follows:
`
`1.
`
`Defendantdesiresto exercise its rights underthe provisions of 28 U.S.C.A. § 1441
`
`et seq. to removethis action from the 57" Judicial District Court of Bexar County, Texas in which
`
`said cause is now pending under the name and style Rey Feo Scholarship Foundation vy. LULAC
`
`Council #2, Cause No. 2022-CI-18447.
`
`2:
`
`Plaintiff states in its AMENDED PLAINTIFF’S PETITION AND REQUEST FOR
`
`RESTRAINING ORDER AND EQUITABLERELIEFthat:
`
`REY FEO SCHOLARSHIP FOUNDATION (REY FEO)attests that REY
`Y.
`FEO has trademarked both the REINA DE LA FERIA DE LAS FLORES (REINA)
`and FERIA DE LAS FLORES(FERIA)phrase and marksandare legally registered
`and are currently active as it relates to both State and Federal guidelines. Please review
`attached exhibits.”
`
`3:
`
`Attached Plaintiff Exhibit 1 is U.S. trademark registration No. 6,431,439 for Feria
`
`De Las Flores.
`
`4,
`
`Attached Plaintiff Exhibit 2 is U.S, trademark registration No 5,495,292 for Reina
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 5:22-cv-01077 Document1i Filed 10/03/22 Page 2 of 4
`
`De La Feria De LasFlores.
`
`5.
`
`This is an action of a civil nature in which the District Courts of the United States
`
`have been given original jurisdiction.
`
`It arises under the laws of the United States as provided in
`
`28 U.S.C. § 1331, and further, it arises under an act of Congress regulating commerceas provided
`
`in 15 U.S.C. § 1121, and Chapter 85 of the Judiciary and Judicial Procedure Code, because federal
`
`courts have jurisdiction over Lanham Act cases based on Federal trademark registrations issued
`
`by the United States Patent and Trademark office forFERIA DE LAS FLORES AND REINA DE
`
`LA FERIA DE LAS FLORES,whicharise under federal law and raise federal questions.
`
`6.
`
`Under the provisions of 28 U.S.C. § 1441 et seq., the right exists to remove this
`
`cause of action from the District Court of Bexar County, Texas to the United States District Court
`
`for the Western District of Texas, San Antonio Division, which embraces the place where this
`
`action is pending.
`
`In its petition for damages and injunctiverelief, Plaintiff seeks to enforceits
`
`U.S. trademarkregistrations and seeks judgment in an unspecified amount within the jurisdictional
`
`limits of that Court. Plaintiff does not have state trademark registrations on the marksat issue,
`
`FERIA DE LAS FLORES AND REINA DE LA FERIA DE LAS FLORES. Said actions
`
`specifically allege a controversy arising out of the statutes and laws of the United States. Thus,
`
`this action arises under an act of Congress and is governed by federal law.
`
`7.
`
`The date on or before which the Defendants were required by 28 U.S.C. § 1446(b)
`
`to file a Notice Of Removal has not lapsed. Counsel for Defendant was served by email on
`
`September 30, 2022 with AMENDED PLAINTIFF’S PETITION AND REQUEST FOR
`
`RESTRAINING ORDER AND EQUITABLE RELIEF and Plaintiff Exhibit 1 - Feria De Las
`
`Flores, U.S. trademark registration No. 6,431,439 and Plaintiff Exhibit 2 - Reina De La Feria De
`
`

`

`
`
`Case 5:22-cv-01077 Documenti Filed 10/03/22 Page 3 of 4
`
`Las Flores, U.S, trademark registration No 5,495,292.
`
`8.
`
`AMENDEDPLAINTIFF’S PETITION AND REQUEST FOR RESTRAINING
`
`ORDER AND EQUITABLERELIEFandPlaintiffExhibit 1 - Feria De Las Flores, U.S. trademark
`
`registration No. 6,431,439 and Plaintiff Exhibit 2 - Reina De La Feria De Las Flores, U.S,
`
`trademark registration No 5,495,292is the first pleading, motion, order, or other paper served on
`
`Defendant from which Defendant could ascertain that this case had become removable.
`
`In
`
`accordance with the requirements of 28 U.S.C. § 1446, this Notice Of Removal is filed within
`
`thirty (30) days after the receipt by Defendant, through service on September 30, 2022, of a copy
`
`of an amendedpleading, motion, order, or other paper from whichit could first be ascertained that
`
`the case had become removable.
`
`9,
`
`Plaintiff filed its Plaintiff's Original Petition and Request for Injunction and
`
`Equitable Reliefwith no attached exhibits on September 20, 2022 but never served it on Defendant.
`
`10.
`
`Pursuant to the provisions of 28 U.S.C. § 1446, Defendant files, together with this
`
`Notice, copies ofall process, pleadings, and orders emailed to Defendant in the above-entitled and
`
`numbered cause on September30, 2022.
`
`11.|According to these premises, Defendant desires and is entitled to have this cause
`
`removed from the 57" Judicial District Court of Bexar County, Texas, to the United States District
`
`Court for the Western District of Texas, San Antonio Division, such being the district where such
`
`suit is pending.
`
`12.
`
`13.
`
`Notice ofthe filing of this petition will be given toall parties as required by law.
`
`A true copyofthis petition will be filed with the Clerk ofthe District Court of Bexar
`
`County, Texas as provided by law.
`
`

`

`Case 5:22-cv-01077 Documenti Filed 10/03/22 Page 4 of 4
`
`WHEREFORE, PREMISES CONSIDERED,Defendant, Original Lulac Council #2 prays
`
`that this action be removedto this Court and that this Court assumejurisdiction of this action and
`
`that henceforth this action be placed on the docket of this Court for further proceedings the same
`
`as thoughthis action had originally been instituted in this Court.
`
`Dated: October 3, 2022.
`
`Respectfully submitted,
`/s/ Charles W. Hanor
`Charles W. Hanor
`Texas Bar No. 08928800
`
`Ayesha M.Malik
`Texas Bar No. 24118449
`
`HANOR LAW FIRM PC
`750 Rittiman Road
`San Antonio, Texas 78209
`Telephone: (210) 829-2002
`patents@hanor.com
`
`Attorneys for Defendant
`
`CERTIFICATE OF SERVICE
`
`Thisis to certify that a true and correct copy of the foregoing pleading was served by email
`on October3, 202?to:
`
`Rene Vela, Jr.
`215 W. Bandera, Ste. 114
`Boerne, Texas 78006
`
`/s/ Charles W. Hanor
`Charles W. Hanor
`
`

`

`Il. BASIS OF JURISDICTION (Place an “X"in One Box Only)
`
`(11 U.S. Government
`Plaintiff
`
`[2]3
`
`Federal Question
`(LS. Government Not a Party)
`
`(2 US. Government
`Defendant
`
`(]4 Diversity
`(IndiceCitizenship ofParties in ItemIT)
`
`IL. CITIZENSHIP OF PRINCIPAL PARTIES(Place a“X”in One BoxforPlaintiff
`(lar Diversity Cases Only)
`and One Boxfor Defendant)
`PTF
`PTF
`[11
`[e] 4
`
`CitizenofThis State
`
`DEF
`[1 1
`
`incorporated or Principal Pace
`ofBusiness In This State
`
`DEF
`[_]4
`
`3844 (Rev, 10720) Case 5:22-cv-010G7APCeeriesHilekF0/03/22 Page 1 of 2
`
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplementthe filing and service of pleadings orother papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference ofthe United States in September 1974,is required for the use ofthe Clerk of Court for the
`purpose ofinitiating the civil docket sheet.
`(SEE INSTRUCTIONS ON NEXT PAGE OFTHIS FORM)
`I. (a) PLAINTIFFS
`DEFENDANTS
`
`Rey Feo Scholarship Foundation
`
`(b) County of Residence ofFirst Listed Plaintiff Bexar
`(EXCEPTIN U.S, PLAINTIFFCASES)
`
`(c) Attomeys(Firm Name, Address, and Telephone Number)
`ReneVela, Jr., 215 W. Bandera, Ste. 114, Boerne, Texas
`78006, 361-883-8352
`
`LULAC Council #2
`
`County of Residence ofFirst Listed Defendant Bexar
`(IN U.S. PLAINTIFF CASESONLY)
`INLAND CONDEMNATIONCASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`NOTE:
`
`Attomeys(ifKnown)
`
`Gharles W. Hanor, Ayesha Malik, Hanor Law Firm, PC, 750
`Rittiman Rd., San Antonio, TX 78209, 210-829-2002
`
`
`
`Citizen of Another State
`
`Citizen or Subject of a
`Foreign Country
`
`[12 [2 incorporated and Principal Place
`ofBusiness In Another State
`Foreign Nation
`
`Cc 3
`
`im 3
`
`§=((] 5
`
`(115
`
`O 6
`
`(lé
`
`Click here for: Nature of Suit Code Descriptions,
`¥V. NATURE OF SUIT(piace an “X"in One Box Only)
`
`
`[_____CONTRACT]~~TORTS” C*dSCMRORRRIUREVPENALTY [BANKRUPTCY[| OTHER STATUTES
`
`110 Insurance PERSONAL INJURY[||625 Drug Related SeizurePERSONAL INJURY |_| 422 Appeal 28 USC 158 375 False Claims Act
`
`
`
`
`
`
`
`[| 423 Withdrawal
`ofProperty 21 USC 881
`|_| 310 Airplane
`C 365 Personal Injury -
`L_) 376 Qui Tam (31 USC
`120 Marine
`
`
`28 USC 157
`|_| 315 Airplane Product
`Product Liability
`f
`130 Miller Act
`372%a))
`
`
`
`Liability
`[_] 367 Health Care/
`|_| 400 State Reapportionment
`140 Negotiable Instrument
`|] 320 Assault, Libel &
`Pharmaceutical
`E
`[J] 410 Antitrust
`150 Recovery of Overpayment
`
`
`Slander
`Personal Injury
`820 Copyrights
`- 430 Banks and Banking
`& Enforcement ofJudgment!
`
`
`
`
`
`151 Medicare Act|| 330 Federal Employers" Product Liability 830 Patent || 450 Commerce
`
`
`835 Patent - Abbreviated
`152 Recovery of Defaulted
`Liability
`[_] 368 Asbestos Personal
`-460 Deportation
`
`
`
`
`Student Loans|| 340 Marine Injury Product New Drug Application |_| 470 Racketeer Influenced and
`
`
`(Excludes Veterans)|| 345 Marine Product Liability Cornipt Organizations.
`
`
`__
`Liability
`PERSONAL PROPERTY
`|] 480 Consumer Credit
`oO 153 Recovery ofOverpayment
`
`
`
`Lj 160 Stockholders” Suits|| 355 Motor Vehicle H 371 Trath in Lending 485 TelephoneConsumer
`
`|_| 350 Motor Vehicle
`370 Other Fraud
`| 1710 Fair Labor Standards
`of Veteran's Benetits
`(15 USC 1681 or 1692)
`
`
`
`
`
`
`
`
`[_] 190 Other Contract [_] 380 Other Personal|_]720 Labor/MariagementProduct Liability Protection Act
`
`
`
`
`
`195 Contract Product Liability [_]360 Other Personal Property Damage Relations 861 HIA (1395ff) 490 Cable/Sat TV
`
`
`
`
`
`
`196 Franchise [-] 385 Property Damage|_|740 Railway Labor ActInjury 862 Black Lung (923) 850 Securities/Commodities/
`
`
`
`
`
`
`
`
`
`|_| 362 Personal Injury - Product Liability|_|751 Family and Medical 863 DIWC/DIWW (405(g)) Exchange
`
`
`
`
`
`Medical Malpractice
`| 864 SSID Title XVI
`Leave Act
`$90 Other Statutory Actions
`
`
`
`
`
`[REALPROPERTY|CIVILRIGHIS__|PRISONERPETITIONS||790 Other Labor Litigation $91 Agricultural Acts
`
`791 Employee Retirement
`|_| 440 Other Civil Rights
`Habeas Corpus:
`|_| 210 Land Condemnation
`893 Environmental Matters
`
`
`
`Income Security Act
`|_| 895 FreedomofInformation
`|_| 463 Alien Detainee
`|_|441 Voting
`|_| 226 Foreclosure
`
`
`
`
`
`
`|| 230 Rent Lease & Ejectment 442 Employment |_| 510 Motions to Vacate [| 870 Taxes (U.S.Plaintiff Act
`
`
`
`
`
`
`|_| 240 Torts to Land
`443 Housing/
`Sentence
`orDefendant)
`896 Arbitration
`Accommodations
`| {245 Tort Product Liability
`|_| 87] IRS—Third Party
`899 Adminisirative Procedure
`
`[_] 445 Amer. w/Disabilities -
`t
`[_]290 All Other Real Property
`26 USC 7609
`Act/Review or Appealof
`Agency Decision
`950 Constitutionality of
`
`
`
`|| 550 Civil Rights. State Statutes
`
`
`||448 Education ||555 Prison Condition
`|| 560 Civil Detainee -
`
`Conditions of
`
`Confinement
`V. ORIGIN (Place an“in One Box Only}
`(8 Multidistrict
`[7] 5 Transferred from [] 6 Multidistrict
`[714 Reinstatedor
`[1] 3 Remanded from
`[J]! Original
`(eJ2 Removed from
`Litigation -
`Another District
`Litigation -
`Reapened
`Appellate Court
`Proceeding
`State Court
`
`(specify)
`Transfer
`Direct File
`
`Cite the U.S. Civil Statute under which vou are filing (Do notcitejurisdictional statutes unless diversity):
`28 U.S.C. § 1441, 15 U.S.C. § 1121
`
`VI. CAUSE OF ACTION
`Brief description of cause:
`Action for Infringernent of Federal Trademarks
`
`
` ([] CHECK IF THIS IS A CLASS ACTION
`DEMAND $
`CHECKYES only if demanded in complaint:
`VII. REQUESTEDIN
`
`
`
`
`COMPLAINT: JURY DEMAND:—[e]YesUNDER RULE 23, F.R.Cv.P. 50,000-1,000,000 [[]No
`
`VITI. RELATED CASE(S)
`(seSee instructions):
`IF ANY
`.
`”
` UDGE
`DOCKET NUMBER
`
`DATE
`SIGNATURE OF ATTORNEY OF RECORD
`Oct 3, 2022
`/si Charles W. Hanor
`
`FOR OFFICE USE ONLY
`
`
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING [FP
`
`JUDGE
`
`MAG.JUDGE
`
`

`

`JS 44 Reverse (Rev. 10/20)
`
`Case 5:22-cv-01077 Document 1-1 Filed 10/03/22 Page 2 of 2
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`
`Authority For Civil Cover Sheet
`
`The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements thefilings and service of pleading or other papers as
`required by law, except as provided by localrules of court. This form, approved by the Judicial Conference ofthe United States in September 1974,is
`required for the use of the Clerk of Court for the purposeofinitiating the civil docket sheet. Consequently,a civil cover sheetis submitted to the Clerk of
`Court for each civil complaintfiled. The attorney filing a case should complete the form as follows:
`
`I.(a)
`
`(b)
`
`(c)
`
`Il.
`
`Ul.
`
`Plaintiffs-Defendants. Enter names(last,first, middle initial) of plaintiff and defendant. If the plaintiff or defendantis a government agency, use
`only the full name or standard abbreviations. If the plaintiff or defendantis an official within a government agency,identify first the agency and then
`the official, giving both name andtitle.
`County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name ofthe county wherethefirst listed plaintiff resides at the
`time offiling. In U.S. plaintiff cases, enter the nameof the county in whichthefirst listed defendant resides at the time offiling. (NOTE:In land
`condemnationcases, the county of residence of the "defendant"is the location of the tract of land involved.)
`Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys,list them on an attachment, noting
`in this section "(see attachment)".
`
`Jurisdiction. The basis ofjurisdiction is set forth under Rulc 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
`in one of the boxes, If there is more than one basis ofjurisdiction, precedenceis given in the order shown below.
`UnitedStates plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
`United States defendant. (2) Whenthe plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
`Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States. an amendment
`to the Constitution, an act of Congress ora treaty ofthe United States. In cases where the U.S.is a party, the U.S. plaintiff or defendant code takes
`precedence, and box 1 or 2 should be marked.
`Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
`citizenship of the different parties must be checked, (See Section III below; NOTE:federal question actions take precedence over diversity
`cases.)
`
`Residence(citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity ofcitizenship was indicated above. Mark this
`section for each principal party.
`
`Nature of Suit. Place an "X" in the appropriate box, If there are multiple nature of suit codes associated with the case. pick the nature of suit code
`that is most applicable. Click here for: Nature of Suit Code Descriptions.
`
`Origin. Place an "X"in one of the seven boxes.
`Original Proceedings. (1) Cases which originate in the United States district courts.
`Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.
`Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
`date.
`Reinstated or Reopened. (4) Check this box for cases reinstated or reopenedin the district court. Use the reopening dateas thefiling date.
`Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or
`multidistrictlitigation transfers.
`Multidistrict Litigation — Transfer. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C.
`Section 1407.
`Multidistrict Litigation — Direct File. (8) Check this box when a multidistrict case is filed in the samedistrict as the Master MDL docket.
`PLEASE NOTE THAT THERE IS NOT AN ORIGIN CODE7, Origin Code 7 was used for historical records andis no longer relevant due to
`changesin statue.
`
`VL
`
`Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do notcite jurisdictional
`statutes unless diversity. Example: U.S. Civil Statute: 47 USC $53 Brief Description: Unauthorized reception of cable service.
`
`Requested in Complaint. Class Action. Place an "X"in this box if you are filing a class action under Rule 23, F.R.Cv.P.
`Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
`Jury Demand. Check the appropriate box to indicate whetheror not a jury is being demanded.
`
`VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
`numbers and the corresponding judge names for such cases.
`
`Date and Attorney Signature. Date and sign the civil cover sheet.
`
`

`

`Case 5:22-cv-01077 Documenti-2 Filed 10/03/22 Page i of 2
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`SAN ANTONIO DIVISION
`
`REY FEO SCHOLARSHIP FOUNDATION,
`
`Plaintiff,
`
`§
`
`:
`
`V.
`
`CIVIL ACTION NO. 5:22-cv-1077
`
`LULAC COUNCIL #2
`
`Defendant.
`
`To: U.S. District Clerk’s Office
`655 E. Cesar E. Chavez Blvd., Room G65
`San Antonio, Texas 78206
`
`To: Mary Angie Garcia
`Bexar County District Clerk
`101 W. Nueva, Suite 217
`San Antonio, Texas 78205
`
`APPENDIX
`FOR DEFENDANTS’ NOTICE OF REMOVAL
`
`The following documents are submitted in support of this Notice of Removal:
`
`Exhibit A — Civil Cover Sheet.
`
`Exhibit B — Plaintiffs Original Petition and Request for Injunction and Equitable Relief.
`
`Exhibit C — Plaintiff's Motionto Set
`
`Exhibit D - Amended Temporary Injunction - PETITION
`
`Exhibit E — Plaintiff Exhibit | - Feria De Las Flores, U.S. trademark registration No. 6,431,439.
`
`Exhibit G — Plaintiff Exhibit 2 - Reina De La Feria De Las Flores, U.S, trademark registration No
`
`5,495,292.
`
`

`

`Case 5:22-cv-01077 Document1-2 Filed 10/03/22 Page 2 of 2
`
`Exhibit H — Plaintiff Exhibit 3 - Trademark Challenge.
`
`Exhibit I - Proposed Amended Temporary Injunction.
`
`Dated: October 3, 2022.
`
`Respectfully submitted,
`/s/ Charles W. Hanor
`Charles W. Hanor
`Texas Bar No. 08928800
`
`Ayesha M. Malik
`Texas Bar No. 24118449
`
`HANOR LAW FIRM PC
`750 Rittiman Road
`San Antonio, Texas 78209
`Telephone: (210) 829-2002
`patents@hanor.com
`
`Attorneys for Defendant
`
`CERTIFICATE OF SERVICE
`
`Thisis to certify that a true and correct copy of the foregoing pleading was served by email
`on October 3, 2022to:
`
`Rene Vela, Jr.
`215 W. Bandera, Ste. 114
`Boerne, Texas 78006
`
`/s/ Charles W. Hanor
`Charles W. Hanor
`
`

`

`Case 5:22-cv-01077 Document2 Filed 10/03/22 Page1of3
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERNDISTRICT OF TEXAS
`San Antonio
`DIVISION
`
`Supplementto JS 44 Civil Cover Sheet
`Cases Removed from State District Court
`
`This form must be filed with the Clerk's Office no later than the first business day
`followingthefiling of the Notice of Removal. Additional sheets may be used as necessary.
`
`The attorney of record for the removing party MUSTsign this form.
`
`STATE COURT INFORMATION:
`
`Please identify the court from which the case is being removed; the case number; and the
`1.
`complete style of the case.
`
`CAUSE NO. 2022-CI-18447; REY FEO SHOLARSHIP FOUNDATION v. LULAC COUNCIL#2; IN
`THE DISTRICT COURT,57TH JUDICIAL DISTRICT, BEXAR COUNTY, TEXAS.
`
`2.
`
`Was jury demand madein State Court?
`
`Yes
`
`[| No
`
`If yes, by which party and on what date?
`
`Rey Feo Scholarship Foundation
`Party Name
`
`9/20/2022
`Date
`
`STATE COURT INFORMATION:
`
`List all plaintiffs, defendants, and intervenorsstill remaining in the case. Also, pleaselist the
`1.
`attorney(s) of record for each party namedandinclude the attorney's firm name, correct mailing address,
`telephone number, and fax number(including area codes).
`
`Plaintiff: Rey Feo Scholarship Foundation. Attorney: Rene Vela, Jr., 215 W. Bandera, Ste. 114, Boerne, TX
`78006, Phone: 361-883-8352 Fax: 361-887-9222
`Defendant: LULAC Council #2. Attorney: Charles W. Hanor, 750 Rittiman Rd., San Antonio, TX 78209,
`Phone: 210-829-2002, patents@hanor.com
`
`2. List all parties that have not been servedat the time of the removal, and the reason(s) for non-service.
`
`N/A
`
`TXWD- Supplementto JS 44 (Rev. 9/2019)
`
`Page 1
`
`

`

`FILED
`9/20/2022 2:09 PM
`Mary Angie Garcia
`Bexar County District Clerk
`Accepted By: Jason Pastrano
`
`Bexar County - 57th District Court
`
`2022CI18447
`
`Copy from re:SearchTX
`
`EXHIBIT B
`
`

`

`Council #2 to immediately cease fundraising using Plaintiff's marks, returns funds raised stop
`confusing the public, and stop interfering in Fiesta, the Parades or other community activity.
`Tue
`PARTIES
`12. Rey Feo Scholarship Foundation is a Texas 50I(c)(3) charitable organization, a
`resident of Bexar County, and hasa principal place of business at 626 Avenue E., San Antonio,
`Texas 78215.
`13. Lulac Council #2 is a 501(c)(4) political organization having a principal place of
`business in San Antonio, Bexar County, Texas. It may be served by serving its President, Mr.
`Thomas Tamez, 930 West Wildwood, San Antonio, Texas 78201.
`
`JURISDICTION
`14. This Court has jurisdiction over the lawsuit because the amount
`exceeds this court’s minimum jurisdictional requirements.
`15. This Court has jurisdiction over Lulac Council #2 because its principal place of
`business is Bexar County and all of the actions complained about occurred in Bexar County,
`Texas.
`
`in controversy
`
`VENUE
`16. Plaintiff claims monetary relief of $100,000 or less and non-monetary relief.
`17. Venue is proper in Bexar County under Texas Civil Practice and Remedies Code
`§15.002 because all or a substantial part of the events or omissions giving rise to the claims
`occurred in Bexar County, Texas
`
`Count I.
`Service Mark Misappropriation Under Texas Law
`
`18. Scholarship Foundation incorporates by reference all facts and allegations in all
`preceding and subsequent paragraphsofthis petition as if fully set out.
`19. Plaintiff is the lawful owner ofthe service marks of Feria De Las Flores, Reina De La
`Feria De Las Flores and the Tom Morton Sandoval Parent Child Scholarship.
`20. Plaintiff's service marksare its registered property under Texas law.
`21. Defendant misappropriated Plaintiff's service marks to unlawfully raise funds.
`22. Defendant misappropriated Plaintiffs service marks to unlawfully declare its
`candidate as Queen of the 2022 Feria De Las Flores, and misrepresented its Queen's status to the
`Fiesta Commission San Antonio and the general public.
`
`CountII.
`Defendant Acted With Malice
`23. Scholarship Foundation incorporates by reference all facts and allegations in all
`preceding and subsequent paragraphsofthis petition as if fully set out.
`24. Defendant was specifically put on notice by letter dated September 3, 2021, not to
`engagein activity which misappropriated or otherwise infringed on Plaintiffs marks. Defendant
`was notified to cease and desist all activity.
`25. Defendant knowingly disregarded this notice and actively and affirmatively
`represented to the Battle of Flowers and Flambeau associations that it was the representative of
`the Feria Queen, to the detrimentof Plaintiff.
`26. Defendant's misappropriation of Plaintiffs service mark has been willful and
`malicious such that Plaintiff is entitled to recover exemplary damages in an amount not
`exceeding three times its actual damages and its reasonable attorney's fees under Texas Business
`and Commerce Code §16.102.
`27. As a direct and proximate result of the foregoing activity of Defendant,
`Scholarship Foundation suffered damages in an amountto be provenattrial.
`28. Scholarship Foundation is further entitled to exemplary damages under Texas Civil
`Practice and Remedies Code §41.003 becauseits injury resulted from Defendant's malice.
`Jury DEMAND
`29, Plaintiff demandsa jury trial and tenders the appropriate fee with this petition.
`
`the
`
`REQUEST FOR DisCLOSURE
`
`30. Under Texas Rule of Civil Procedure 194, Plaintiff requests that Defendant disclose,
`within fifty (50) days of the service of this request, all of the information and material described
`in Rule 194.2
`
`EgQurraB_é RELIEF
`31. Plaintiff is likely to succeed on the merits of this lawsuit because Defendantis:
`
`(A)
`
`(B)
`
`marks.
`
`on actualnotice and fully aware of Plaintiff's registered marks;
`
`Attempting to solicit from the general public using Plaintiffs service
`
`Copy from re:SearchTX
`Copy from re:SearchTX
`
`

`

`Rene Vela, Jr.
`24042725
`215 W. Bandera, Ste 114
`Boerne, Texas 78006
`361.883.8352
`361.887.9222
`
`Copy from re:SearchTX
`
`

`

`Case 5:22-cv-01077-XR Document 5 Filed 10/13/22 Page 1 of 38
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`SAN ANTONIO DIVISION
`
`
`REY FEO SCHOLARSHIP FOUNDATION,§
`Plaintiff,
`§
`§
`§ CIVIL ACTION NO. 5:22-cv-1077-XR
`§
`§
`§
`
`
`V.
`
`LULAC COUNCIL #2
`Defendant.
`
`
`DEFENDANT AND COUNTERCLAIM-PLAINTIFF’S ANSWER AND
`COUNTERCLAIMS TO AMENDED PLAINTIFF’S PETITION
`Defendant and Counterclaim-Plaintiff, Original Lulac Council No. 2 (misnamed as
`
`1.
`
`LULAC COUNCIL, #2 and referred to at times herein as “Defendant”, “Lulac No. 2”, and
`
`"Counterclaim-Plaintiff”), by and through its undersigned counsel, hereby files this answer to
`
`Plaintiff’s Amended Petition and Request for Restraining Order and Equitable Relief (“Petition”;
`
`DE. 1-6) and counterclaims against Plaintiff and Counterclaim-Defendant, Rey Feo Scholarship
`
`Foundation (referred to at times herein as “Plaintiff”, “Rey Feo SF”, and “Counterclaim-
`
`Defendant”), and in support, alleges and avers the following.
`
`ANSWER
`
`2.
`
`To the extent not admitted herein, the allegations in the AMENDED PLAINTIFF’S
`
`PETITION AND REQUEST FOR RESTRAINING ORDER AND EQUITABLE RELIEF are
`
`denied.
`
`3.
`
`Paragraph 1 of the Petition constitutes a legal conclusion to which no response is
`
`required. To the extent an answer is required, Paragraph 1 is denied, and Defendant alleges it holds
`
`all rights to the FERIA DE LAS FLORES and REINA DE LA FERIA DE LAS FLORES marks.
`
`4.
`
`Paragraph 2 of the Petition constitutes narration to which no response is required.
`
`To the extent an answer is required, Paragraph 2 is denied.
`
`Page 1 of 38
`EXHIBIT C
`
`

`

`Case 5:22-cv-01077-XR Document 5 Filed 10/13/22 Page 2 of 38
`
`5.
`
`6.
`
`7.
`
`Paragraph 3 of the Petition is denied.
`
`Paragraph 4 of the Petition is denied.
`
`Defendant admits that it petitioned to cancel Plaintiff’s fraudulently obtained U.S.
`
`trademark registrations in the United States Patent and Trademark Office (“USPTO”) but denies
`
`the remaining allegations in paragraph 5 of the Petition.
`
`8.
`
`Paragraph 6 of the Petition constitutes a legal conclusion to which no response is
`
`required. To the extent an answer is required, Paragraph 6 is denied.
`
`9.
`
`Paragraph 7 of the Petition constitutes a legal conclusion to which no response is
`
`required. To the extent an answer is required, Paragraph 7 is denied.
`
`10.
`
`The allegations and assertions in the prayer for relief are denied.
`
`AFFIRMATIVE DEFENSES
`
`11.
`
`Plaintiff’s causes of action are barred, in whole or in part, because of issue
`
`preclusion as a result of the prior lawsuits, rulings, findings of fact, settlements and judgments
`
`between Plaintiff and Defendant.
`
`12.
`
`The Petition fails to state a claim upon which relief may be granted.
`
`13.
`
`Plaintiff’s causes of action are barred, in whole or in part, because of the doctrine
`
`of estoppel by contract.
`
`14.
`
`Plaintiff’s causes of action are barred, in whole or in part, because of Plaintiff’s
`
`prior material breach.
`
`15.
`
`Plaintiff’s causes of action are barred in whole or in part by the doctrine of unclean
`
`hands.
`
`16.
`
`Plaintiff’s causes of action are barred in whole or in part because of Plaintiff’s fraud
`
`as set forth herein.
`
`Page 2 of 38
`
`

`

`Case 5:22-cv-01077-XR Document 5 Filed 10/13/22 Page 3 of 38
`
`17.
`
`Plaintiff’s causes of action are barred, in whole or in part, because of Plaintiff’s
`
`consent or acquiescence to the conduct about which it complains.
`
`18.
`
`Plaintiff’s causes of action are barred, in whole or in part, because of the doctrine
`
`of laches.
`
`19.
`
`Plaintiff’s causes of action are barred, in whole or in part, because of the applicable
`
`statutes of limitations.
`
`Plaintiff’s causes of action are barred, in whole or in part, because of release.
`
`Plaintiff’s causes of action are barred, in whole or in part, because of absence of
`
`20.
`
`21.
`
`license.
`
`22.
`
`Plaintiff’s causes of action are barred, in whole or in part, because of Plaintiff’s
`
`waiver.
`
`23.
`
`24.
`
`Plaintiff’s causes of action are barred, in whole or in part, because of