ESTTA Tracking number:
`
`ESTTA1379966
`
`Filing date:
`
`08/27/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Docket no.
`
`Wolfpack Boxing Club Miami, LLC
`
`limited liability company
`
`8753 SW 131 STREET
`MIAMI, FL 33176
`UNITED STATES
`
`Incorporated or
`registered in
`
`Florida
`
`CECILIA R. DICKSON
`THE WEBB LAW FIRM
`420 FT. DUQUESNE BLVD., SUITE 1200
`ONE GATEWAY CENTER
`PITTSBURGH, PA 15222
`UNITED STATES
`Primary email: trademarks@webblaw.com
`Secondary email(s): cdickson@webblaw.com, bcoyne@webblaw.com, moliv-
`er@webblaw.com, gvadala@webblaw.com
`412-471-8815
`106202406426
`
`Registration subject to cancellation
`
`Registration no.
`
`Register
`
`Registrant
`
`7258782
`
`Principal
`
`Wolfpack Boxing Inc
`159 KLINGER RD
`CANONSBURG, PA 15317
`UNITED STATES
`
`Additional registrant information
`
`Registration date
`
`01/02/2024
`
`Additional registrant in-
`formation provided by
`the petitioner
`
`WOLFPACK BOXING INC.
`1000 GREGG STREET
`CARNEGIE, PA 15106
`UNITED STATES
`No email provided
`No phone number provided
`
`Goods/services subject to cancellation
`
`Class 041. First Use: Jan 1, 1994 First Use In Commerce: Jan 1, 1994
`All goods and services in the class are subject to cancellation, namely: Boxing instruction; Organiza-
`tion of boxing matches; Providing exercise classes in the field of Boxing
`
`

`

`Grounds for cancellation
`
`Fraud on the USPTO
`
`Other
`
`Attachments
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Priority based on senior prior user rights
`
`Petition for Cancellation.pdf(425695 bytes )
`Ex. 1 - App. No. 97680203.pdf(214795 bytes )
`Ex. 2 - Reg. No. 7258782.pdf(446901 bytes )
`Ex. 3 - Complaint.pdf(4754637 bytes )
`
`Signature
`
`/Cecilia R. Dickson/
`
`Name
`
`Date
`
`Cecilia R. Dickson
`
`08/27/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Cancellation No. __________________
`
`Registration No. 7,258,782
`
`Trademark: WOLFPACK BOXING
`CLUB
`
`Registered: January 2, 2024
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`WOLFPACK BOXING CLUB MIAMI,
`LLC,
`
`
`
`
`
`INC. D/B/A
`WOLFPACK BOXING,
`WOLFPACK BOXING CLUB,
`
`
`
`Petitioner,
`
`
`
`v.
`
`
`
`Registrant.
`
`
`
`
`
`PETITION FOR CANCELLATION
`
`Petitioner, Wolfpack Boxing Club Miami, LLC (“Petitioner”), a Florida limited liability
`
`company, with its principal place of business at 8753 SW 131 Street, Miami, Florida, 33176,
`
`United States, believes it is being and will continue to be damaged by the existence of U.S.
`
`Registration No. 7,258,782 (“the ’782 Registration”), for the mark WOLFPACK BOXING CLUB,
`
`issued on January 2, 2024, and registered to Wolfpack Boxing, Inc. dba Wolfpack Boxing Club
`
`(“Registrant”), a Pennsylvania corporation with a principal place of business at 1000 Gregg Street,
`
`Carnegie, Pennsylvania, 15106. Accordingly, Petitioner hereby petitions to cancel the ’782
`
`Registration on the following grounds:
`
`1.
`
`Petitioner is a martial arts and boxing gym located in Miami, Florida, specializing
`
`in a variety of classes such as boxing, kickboxing, Muay Thai, MMA/BJJ, and strength training.
`
`Petitioner only operates a single gym location and does not have a facility outside of Miami.
`
`2.
`
`Registrant is a martial art and boxing gym facility located in Carnegie,
`
`Pennsylvania, a suburb of Pittsburgh. Registrant only operates a single gym location and does not
`
`have a facility outside of Carnegie.
`
`

`

`
`
`3.
`
`Registrant filed U.S. Trademark Application No. 97/680,203 (“the ’203
`
`Application) to register WOLFPACK BOXING CLUB in Class 41 in connection with “Boxing
`
`instruction; Organization of boxing matches; Providing exercise classes in the field of Boxing” on
`
`November 16, 2022, and claiming a first use date of January 1, 1994. A copy of the ’203
`
`Application is attached hereto as Exhibit 1.
`
`4.
`
`The ’203 Application registered as U.S. Trademark Registration No. 7,258,782
`
`(“the ’782 Registration”) on January 2, 2024. A copy of this registration is attached hereto as
`
`Exhibit 2.
`
`5.
`
`Thus, the registration has only been of record for a number of months and is less
`
`than five years’ old.
`
`6.
`
`Mr. Jeffrey Mucci, Plaintiff’s principal, signed the trademark application and
`
`attested under the penalty of perjury that the application meets the requirements of 15 U.S.C.
`
`§1501(a) and, specifically, “To the best of the signatory's knowledge and belief, no other persons,
`
`except, if applicable, concurrent users, have the right to use the mark in commerce, either in the
`
`identical form or in such near resemblance as to be likely, when used on or in connection with the
`
`goods/services of such other persons, to cause confusion or mistake, or to deceive.” See Exhibit
`
`1, “Declaration” at 4 (emphasis added).
`
`7.
`
`On May 28, 2024, Registrant filed a Complaint (“the Complaint”) in the Western
`
`District of Pennsylvania against Petitioner, alleging infringement of the ’782 Registration. A copy
`
`of the Complaint is attached hereto as Exhibit 3.
`
`8.
`
`In the Complaint, Registrant states that Mr. Mucci “frequently performed internet
`
`searches to determine whether other boxing clubs were using the name ‘Wolfpack Boxing Club’”
`
`and became aware of Applicant in “the fall of 2017.” See Exhibit 3 at ¶12.
`
`2
`
`

`

`
`
`9.
`
`Mr. Mucci believed that “without a federal trademark registration he would be
`
`unable to stop [Petitioner] from using the WOLFPACK BOXING CLUB name [and] filed an
`
`application for the word mark “WOLFPACK BOXING CLUB” on November 16, 2022. See
`
`Exhibit 3 at ¶13.
`
`10.
`
`Prior to filing the Complaint, on January 8, 2024, six days after the ’203 Application
`
`matured to registration, Registrant sent a cease-and-desist letter to Petitioner requesting that
`
`Petitioner cease and desist from any further use of the ’782 Registration. See Exhibit 3 at Exhibit
`
`C. As Registrant admitted in the Complaint, this letter was sent with the full knowledge that
`
`Petitioner had been operating under its trademarks in the Miami area well before Registrant filed
`
`its federal application. Id.; see also Exhibit 3 at ¶13.
`
`11.
`
`On March 7, 2024, counsel for Petitioner responded to Registrant’s cease-and-
`
`desist letter noting that the term “Wolfpack” is commonly used to describe a broad category of
`
`services in the boxing, fitness, sports, and mixed martial arts industries and provided further
`
`specific examples of such uses. See Exhibit 3 at Exhibit D. Counsel for Petitioner further indicated
`
`that Petitioner had been using the “Wolfpack Miami” name since at least 2017. Id.
`
`12.
`
`In the Complaint, Registrant admitted that Petitioner has senior common law rights
`
`in Miami, Florida based on actual use of Petitioner’s mark in Florida. See Exhibit 3 at ¶¶12-13.
`
`13.
`
`Yet Registrant did not identify either Petitioner’s use of “Wolfpack” or any of the
`
`uses of “Wolfpack” identified by Petitioner’s counsel as concurrent users when Registrant filed
`
`the ’203 Application.
`
`14.
`
`Registrant admitted in the Complaint that it obtained this registration in full
`
`knowledge of Petitioner’s senior common law trademark rights in the Miami, Florida area, even
`
`though it did not identify Petitioner as a concurrent user and has improperly threatened and asserted
`
`3
`
`

`

`
`
`the ’782 Registration against Petitioner knowing full well it did not have exclusivity of use and
`
`that Petitioner was a concurrent user at the time of application for registration and, indeed, the
`
`senior rights holder in the Miami, Florida area.
`
`15.
`
`16.
`
`17.
`
`On July 29, 2024, Petitioner moved to dismiss Registrant’s Complaint.
`
`On August 21, 2024, Registrant dismissed the Complaint without prejudice.
`
`On that very same date, Registrant again threatened Petitioner with district court
`
`litigation seeking to enforce the ’782 Registration against Petitioner.
`
`18.
`
`The continued registration of the ’782 Registration has resulted and will continue
`
`to result in damage to Petitioner pursuant to the allegations stated above.
`
`COUNT I
`REGISTRANT ACQUIRED REGISTRATION BASED ON FRAUD
`
`The preceding paragraphs of this Petition are hereby incorporated by reference as
`
`19.
`
`if fully set forth herein.
`
`20.
`
`The ’203 Application was filed on November 16, 2022, alleging a first use in
`
`commerce date of January 1, 1994.
`
`21.
`
`At the time the ’203 Application was filed, Registrant knew that Petitioner had been
`
`using the name “Wolfpack Boxing Club” in Miami, Florida since at least 2017. See Exhibit 3 at
`
`¶¶12-13, Exhibit A.
`
`22.
`
`15 U.S.C. § 1051(a)(3)(D) requires the verifier to allege to the “best of the verifier’s
`
`knowledge and belief” no other person has the right to use such mark in commerce, except in the
`
`case of applications claiming concurrent use, in which case the application must specify, inter alia,
`
`any concurrent use by others, the goods implicated, and the period of each such use.
`
`23. With the filing of the application, Registrant executed the following declaration:
`
`“To the best of the signatory's knowledge and belief, no other persons, except, if applicable,
`
`4
`
`

`

`
`
`concurrent users, have the right to use the mark in commerce, either in the identical form or in
`
`such near resemblance as to be likely, when used on or in connection with the goods/services of
`
`such other persons, to cause confusion or mistake, or to deceive.” See Exhibit 1, “Declaration” at
`
`4 (emphasis added).
`
`24.
`
`Thus, despite admitting prior knowledge of Petitioner’s use of its trademarks,
`
`Registrant did not file a concurrent use application as required by 15 U.S.C. § 1051(a)(3)(D), and
`
`instead claimed at the time of filing that it believed no other person had a right to use the mark
`
`even though Registrant knew Petitioner was using its marks in Miami. See Exhibit 1 at 4.
`
`25.
`
`Registrant also did not acknowledge in the ’203 application the apparent concurrent
`
`use of the “Wolfpack” mark in the relevant industries set forth in counsel for Petitioner’s letter to
`
`Registrant, including one “Wolfpack” mark first used in 1921 in connection with a “training in a
`
`wide variety of collegiate-level sports.” See Exhibit 3 at Exhibit C. Given Registrant’s admission
`
`in the Complaint that Mr. Mucci “frequently performed internet searches to determine whether
`
`other boxing clubs were using the name ‘Wolfpack Boxing Club’” (see Exhibit 3 at ¶12),
`
`Registrant may well have known of the existence and use of other “Wolfpack” marks such as those
`
`identified by Petitioner’s counsel and certainly knew about the widespread use of the “Wolfpack”
`
`name in relevant industries when the ’203 application was filed.
`
`26.
`
`Thus, Registrant executed the declaration in the application for the ’782
`
`Registration with knowledge that the statements made in the declaration were false.
`
`27.
`
`Registrant did so with an intent to deceive the USPTO for the purpose of trying to
`
`obtain trademark rights from a senior prior user to which Registrant has no lawful claim and then
`
`assert those rights against the senior prior user. Indeed, Registrant admitted in the Complaint it
`
`filed against Petitioner that it filed the ’203 application specifically to accuse Petitioner of
`
`5
`
`

`

`
`
`trademark infringement, even though Registrant knew of Petitioner’s senior common law rights in
`
`Miami at the time it filed the application. See Exhibit 3 at ¶¶ 12-13.
`
`28.
`
`Registrant acted willfully and intentionally to defraud the USPTO, and with
`
`reckless disregard for the operative facts, in executing the declaration submitted with the ’203
`
`Application.
`
`29.
`
`Accordingly, Registrant obtained the ’782 Registration fraudulently and for an
`
`improper purpose to try to override admittedly senior common law trademark rights in the Miami,
`
`Florida, area, and it should be cancelled for this reason.
`
`COUNT II
`PETITIONER HAS SENIOR RIGHTS IN THE MIAMI, FLORIDA AREA
`
`The preceding paragraphs of this Petition are hereby incorporated by reference as
`
`30.
`
`if fully set forth herein.
`
`31.
`
`Further, Petitioner has senior rights in and to this mark in the Miami, Florida, area
`
`and thus will be harmed by the continued existence of the ’782 Registration “as is”, and the ’782
`
`Registration should be cancelled pursuant to 15 U.S.C. § 1502(d) or revised to make clear it is not
`
`enforceable against Petitioner based on its senior common law rights in the Miami, Florida area.
`
`WHEREFORE, Petitioner prays that this Petition for Cancellation be sustained in its favor
`
`and the mark shown in Registration No. 7,258,782 be cancelled.
`
`
`Dated: August 27, 2024
`
`
`
`
`
`
`
`Respectfully submitted,
`
`THE WEBB LAW FIRM
`
`
`s/ Cecilia R. Dickson
`Cecilia R. Dickson (PA ID No. 89348)
`Barry J. Coyne (Reg. No. 43,566)
`Michael E. Oliver (PA ID No. 334726)
`One Gateway Center
`420 Ft. Duquesne Blvd., Suite 1200
`
`6
`
`

`

`
`
`
`
`Pittsburgh, PA 15222
`412.471.8815
`412.471.4094 (fax)
`cdickson@webblaw.com
`bcoyne@webblaw.com
`moliver@webblaw.com
`
`7
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 27th day of August, 2024, I electronically filed the foregoing
`
`PETITION FOR CANCELLATION with the TTAB using the ESTTA system. A true and
`
`correct copy of same was also served via email upon the following:
`
`
`Mr. Jeffrey Mucci
`Wolfpack Boxing, Inc.
`1000 Gregg Street
`Carnegie, PA 15106
`
`159 Klinger Rd.
`Canonsburg, PA 15317
`info@wolfpackboxing.com
`Registrant
`
`
`THE WEBB LAW FIRM
`
`s/ Cecilia R. Dickson
`Cecilia R. Dickson
`
`
`
`
`
`
`
`

`

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

`

`PTO- 1478
`
`Approved for use through 10/31/2024. OMB 0651-0009
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number
`
`Trademark/Service Mark Application, Principal Register
`
`TEAS Plus Application
`
`Serial Number: 97680203
`Filing Date: 11/16/2022
`
`NOTE: Data fields with the * are mandatory under TEAS Plus. The wording "(if applicable)" appears where the field is only mandatory
`under the facts of the particular application.
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`TEAS Plus
`
`MARK INFORMATION
`
`*MARK
`
`*STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`LITERAL ELEMENT
`
`*MARK STATEMENT
`
`REGISTER
`
`APPLICANT INFORMATION
`
`*OWNER OF MARK
`
`*MAILING ADDRESS
`
`*CITY
`
`*STATE
`(Required for U.S. applicants)
`
`*COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`*ZIP/POSTAL CODE
`(Required for U.S. and certain international addresses)
`
`PHONE
`
`*EMAIL ADDRESS
`
`LEGAL ENTITY INFORMATION
`
`YES
`
`Wolfpack Boxing Club
`
`YES
`
`YES
`
`Wolfpack Boxing Club
`
`The mark consists of standard characters, without claim to any
`particular font style, size, or color.
`
`Principal
`
`Wolfpack Boxing Inc
`
`159 Klinger rd
`
`Canonsburg
`
`Pennsylvania
`
`United States
`
`15317
`
`412-335-2419
`
`XXXX
`
`*TYPE
`
`CORPORATION
`
`* STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY OF
`INCORPORATION
`
`Pennsylvania
`
`GOODS AND/OR SERVICES AND BASIS INFORMATION
`
`* INTERNATIONAL CLASS
`
`041 
`
`*IDENTIFICATION
`
`Boxing instruction; Organization of boxing matches; Providing
`exercise classes in the field of Boxing
`
`

`

`*FILING BASIS
`
`       FIRST USE ANYWHERE DATE
`
`       FIRST USE IN COMMERCE DATE
`
`       SPECIMEN
`       FILE NAME(S)
`
`       
`
`       SPECIMEN DESCRIPTION
`
`        WEBPAGE URL
`
`SECTION 1(a)
`
`At least as early as 01/01/1994
`
`At least as early as 01/01/1994
`
`\\TICRS\EXPORT18\IMAGEOUT
`18\976\802\97680203\xml1 \ FTK0003.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT
`18\976\802\97680203\xml1 \ FTK0004.JPG
`
`Business card and website
`
`www.wolfpackboxing.com
`
`        WEBPAGE DATE OF ACCESS
`
`11/06/2022
`
`ADDITIONAL STATEMENTS INFORMATION
`
`*TRANSLATION
`(if applicable)
`
`*TRANSLITERATION
`(if applicable)
`
`*CLAIMED PRIOR REGISTRATION
`(if applicable)
`
`*CONSENT (NAME/LIKENESS)
`(if applicable)
`
`*CONCURRENT USE CLAIM
`(if applicable)
`
` 
`
` 
`
` 
`
` 
`
` 
`
`CORRESPONDENCE INFORMATION
`
`NAME
`
`Wolfpack Boxing Inc
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`Info@wolfpackboxing.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES)
`
`notifications@trademarkengine.com
`
`FEE INFORMATION
`
`APPLICATION FILING OPTION
`
`NUMBER OF CLASSES
`
`APPLICATION FOR REGISTRATION PER CLASS
`
`*TOTAL FEES DUE
`
`*TOTAL FEES PAID
`
`SIGNATURE INFORMATION
`
`* SIGNATURE
`
`* SIGNATORY'S NAME
`
`* SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`* DATE SIGNED
`
`SIGNATURE METHOD
`
`TEAS Plus
`
`1
`
`250
`
`250
`
`250
`
`/Jeffrey mucci/
`
`Jeffrey Mucci
`
`President
`
`412-335-2419
`
`11/11/2022
`
`Sent to third party for signature
`
`

`

`PTO- 1478
`
`Approved for use through 10/31/2024. OMB 0651-0009
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number
`
` 
`
`Trademark/Service Mark Application, Principal Register
`
`TEAS Plus Application
`
`Serial Number: 97680203
`Filing Date: 11/16/2022
`
`To the Commissioner for Trademarks:
`
`MARK: Wolfpack Boxing Club (Standard Characters, see mark)
`The literal element of the mark consists of Wolfpack Boxing Club. The mark consists of standard characters, without claim to any particular font
`style, size, or color.
`The applicant, Wolfpack Boxing Inc, a corporation of Pennsylvania, having an address of
`      159 Klinger rd
`      Canonsburg, Pennsylvania 15317
`      United States
`      412-335-2419(phone)
`      XXXX
`
`requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register
`established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:
`
`For specific filing basis information for each item, you must view the display within the Input Table.
`International Class 041:  Boxing instruction; Organization of boxing matches; Providing exercise classes in the field of Boxing
`
`Use in Commerce: The applicant is using the mark in commerce on or in connection with the identified goods/services. The applicant attaches, or
`will later submit, one specimen as a JPG/PDF image file showing the mark as used in commerce on or in connection with any item in the class of
`listed goods/services, regardless of whether the mark itself is in the standard character format or is a stylized or design mark. The specimen image
`file may be in color, and the image must be in color if color is being claimed as a feature of the mark.
`
`In International Class 041, the mark was first used by the applicant or the applicant's related company or licensee predecessor in interest at least
`as early as 01/01/1994, and first used in commerce at least as early as 01/01/1994, and is now in use in such commerce. The applicant is
`submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed
`goods/services, consisting of a(n) Business card and website.
`Specimen File1
`Specimen File2
`
`Webpage URL: www.wolfpackboxing.com
`Webpage Date of Access: 11/06/2022
`
`The applicant's current Correspondence Information:
`
`      Wolfpack Boxing Inc
`
`       PRIMARY EMAIL FOR CORRESPONDENCE: Info@wolfpackboxing.com
`       SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): notifications@trademarkengine.com
`
`Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and
`the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark
`Electronic Application System (TEAS).
`A fee payment in the amount of $250 has been submitted with the application, representing payment for 1 class(es).
`
`Basis:
`
`Declaration
`
`

`

`If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a):
`
`The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered;
`The mark is in use in commerce and was in use in commerce as of the filing date of the application on or in connection with the
`goods/services in the application;
`The specimen(s) shows the mark as used on or in connection with the goods/services in the application and was used on or in
`connection with the goods/services in the application as of the application filing date; and
`To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.
`
`And/Or
`If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d),
`and/or § 1126(e):
`
`The signatory believes that the applicant is entitled to use the mark in commerce;
`The applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as
`of the application filing date on or in connection with the goods/services in the application; and
`To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.
`
`To the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the
`mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the
`goods/services of such other persons, to cause confusion or mistake, or to deceive.
`
`To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the
`allegations and other factual contentions made above have evidentiary support.
`
`The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §
`1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration
`resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and
`belief are believed to be true.
`
`Declaration Signature
`
`Signature: /Jeffrey mucci/   Date: 11/11/2022
`Signatory's Name: Jeffrey Mucci
`Signatory's Position: President
`Signatory's Phone Number: 412-335-2419
`Signature method: Sent to third party for signature
`Payment Sale Number: 97680203
`Payment Accounting Date: 11/16/2022
`
`Serial Number: 97680203
`Internet Transmission Date: Wed Nov 16 15:27:02 ET 2022
`TEAS Stamp: USPTO/FTK-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
`XXXX:XXXX-20221116152704103203-97680203-
`820f1e6dd894b4492ae461ad9c92917445362904
`9661c9de59b46bfc782bcd6-CC-27022776-2022
`1111154916970111
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`Wolfpack Boxing Club
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`Boxing Lessons
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`EXHIBIT 2
`EXHIBIT 2
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`qaited tates of Amery,
`Guited States Patent and Trademark Office
`lly
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`Wolfpack Boxing Club
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`Reg. No. 7,258,782
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`Registered Jan. 02, 2024
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`Wolfpack Boxing Inc (PENNSYLVANIA CORPORATION)
`159 Klinger rd
`Canonsburg, PENNSYLVANIA 15317
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`Int. Cl.: 41
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`Service Mark
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`Principal Register
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`CLASS 41: Boxing instruction; Organization of boxing matches; Providing exercise
`classes in the field of Boxing
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`FIRST USE 1-1-1994; IN COMMERCE1-1-1994
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`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO
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`ANY PARTICULAR FONTSTYLE, SIZE OR COLOR
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`No claim is made to the exclusive right to use the following apart from the mark as
`shown: "BOXING CLUB"
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`SER. NO. 97-680,203, FILED 11-16-2022
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`KotiKilbyVidat
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`Director of the United States
`Patent and Trademark Office
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`EXHIBIT 3
`EXHIBIT 3
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`Case 2:24-cv-00780-KT Document 1 Filed 05/28/24 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FORTHE WESTERN DISTRICT OF PENNSYLVANIA
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`WOLFPACK BOXING, INC.
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`dba WOLFPACK BOXING CLUB
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` Plaintiff,
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`v.
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`WOLFPACK BOXING CLUB MIAMI
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` Defendant.
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`Civil Action No. 2:24-cv-780
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`JURY TRIAL DEMANDED
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`COMPLAINT
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`Plaintiff, Wolfpack Boxing, Inc., dba Wolfpack Boxing Club ("Plaintiff" or
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`"Plaintiff WBI") by its attorney, Acker Wood Intellectual Property Law, LLC, files this
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`Complaint against defendant Wolfpack Boxing Club Miami ("Defendant").
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`I.
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`1.
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`INTRODUCTION
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`This is an action for trademark infringement, unfair competition, false
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`advertising, and unjust enrichment under the Trademark Act of 1946, as amended, 15 U.S.C.
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`§ 1051 et seq. (the "Lanham Act").
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`2.
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`Plaintiff WBI is a Pennsylvania corporation with a place of business at 1000
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`Gregg Street, Carnegie, PA 15106.
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`3. Wolfpack Boxing Club is a martial art and boxing gym facility established
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`in 1994 providing martial art boxing instruction and exercise classes to its members by certified
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`boxing coaches. The one of a kind 6,500 square foot building which houses the facility was built
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`in 1856 and is the only gym in western Pennsylvania with two 24 foot boxing rings, over twenty
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`Case 2:24-cv-00780-KT Document 1 Filed 05/28/24 Page 2 of 11
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`heavy bags, seven speed bags, six double end bags, assortment of cardio equipment and weights,
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`and other specialty equipment. WOLFPACK BOXING CLUB has developed and continues to
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`enjoy a reputation as the most preeminent boxing gym in western Pennsylvania and assertedly one
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`of the best boxing gyms in the United States.
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`4.
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`Further, Wolfpack Boxing Club has been helping people with Parkinson's
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`disease by providing special boxing classes and individual instruction to those fighting this
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`disease.1 Wolfpack Boxing Club was affiliated with the "Rock Steady Boxing" franchise until
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`2020. Since 2020, Wolfpack Boxing Club continued its Parkinson's classes under a different name:
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`"HOPE with Boxing" (Helping Overcome Parkinson's Everyday) through boxing.
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`5.
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`Jeff Mucci is the Presiding Officer of Plaintiff WBI and owner and head
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`trainer of the Wolfpack Boxing Club ("Mr. Mucci"). Mr. Mucci has been involved in amateur
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`boxing and martial arts since 1990, including studying Muay Tai, Jun Fan Jeet Kune Do and USA
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`Boxing in State College, PA. Mr. Mucci is a former undefeated Regional Golden Gloves champion.
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`6.
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`Mr. Mucci has been with Wolfpack Boxing Club as a coach since 2009 and
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`took over ownership in 2012. Since 2013, Mr. Mucci has produced thirty-two Western PA Golden
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`Gloves Championships, two Silver Gloves Champions and three Master's Division World
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`Champions (Ringside Masters Tournament, Sonny's International Master's Tourney and Gleason's
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`Master's World Championship).
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`7.
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`In addition to being an experienced boxer, Certified Rock Steady Boxing
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`Instructor, and Level 2 USA Boxing certified coach, Mr. Mucci holds a Masters degree in business
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`(MBA).
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`1 The benefits of a non-contact boxing workout for those with Parkinson's Disease is well known. Research has
`shown that regular boxing exercise improves balance, walking, endurance and overall quality of life for those with
`this disease.
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`Case 2:24-cv-00780-KT Document 1 Filed 05/28/24 Page 3 of 11
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`8.
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`Plaintiff WBI currently owns and has all rights to the word mark
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`WOLFPACK BOXING CLUB®.
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`9.
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`Defendant is a business located at 8753 SW 131 Street, Miami, Florida
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`33176 and has committed the acts complained of herein.
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`II.
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`JURISDICTION AND VENUE
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`10.
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`This Court has jurisdiction over this action under Section 39 of the
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`Lanham Act, 15 U.S.C. § 1121, and Title 28 of the United States Code, §§ 1331 and 1338.
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`The Court has supplemental jurisdiction over the state law claims under 28 U.S.C. § 1367(a).
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`11. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b).
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`III.
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`BACKGROUND
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`A. Defendant's Wrongful Actions
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`12.
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`In the fall of 2017, Mr. Mucci, who frequently performed internet searches
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`to determine whether other boxing clubs were using the name "Wolfpack Boxing Club," became
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`aware of Defendant's website, which showed Defendant's use of the name WOLFPACK BOXING
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`CLUB for its business which specialized in boxing training, was located in Miami, Florida, and
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`referred to itself on social media as "Wolfpack Boxing Club Miami." A digital screenshot of
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`Defendant's website (https://www.wolfpackboxingclubmiami.com; retrieved on May 23, 2024) is
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`attached hereto as Exhibit A.
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`13. Mr. Mucci, believing that without a federal trademark registration he would
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`be unable to stop Defendant from using the WOLFPACK BOXING CLUB name, filed an
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`application for the word mark WOLFPACK BOXING CLUB, listing Plaintiff WBI as owner, on
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`November 6, 2022.
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`Case 2:24-cv-00780-KT Document 1 Filed 05/28/24 Page 4 of 11
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`14. United States Trademark Registration No. 7258782 was ultimately assigned
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`to the word mark WOLFPACK BOXING CLUB on January 2, 2024 ("Plaintiff's Registered
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`Mark"). A true and correct copy of the certificate of registration from the United States Patent and
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`Trademark Office is attached hereto as Exhibit B.
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`15. On January 8, 2024, Mr. Mucci sent a Cease & Desist Letter to Defendant in
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`which he requested that Defendant cease and desist from any further use of Plaintiff's Registered
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`Mark or any confusingly similar mark. A true and correct copy of this Cease & Desist Letter is
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`attached as Exhibit C.
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`16. On March 7, 2024, Mr. Mucci received a letter from Defendant's attorney,
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`Humberto Rubio, Jr. ("attorney Rubio"), in which Mr. Rubio stated, in pertinent part, that Defendant
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`would not cease and desist use of WOLFPACK BOXING CLUB for its business. A true and correct
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`copy of this letter is attached as Exhibit D.
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`17. On April 17, 2024, Mr. Mucci was alarmed when his business Wolfpack
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`Boxing Club was tagged on Instagram by Defendant, allegedly: (1) in an attempt to increase
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`Defendant's reach in the marketplace and to at least reach the public in Plaintiff's geographic
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`location; (2) to trade on the goodwill and excellent reputation of Mr. Mucci's Wolfpack Boxing Club
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`business; (3) to cause customer confusion; and, most egregiously, (4) to thumb its nose at the Cease
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`& Desist Letter it received from Mr. Mucci in January. Defendant's Instagram post was a photograph
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`of Defendant's instructors, in which "WOLFPACKBOXINGCLUB Tagged" was printed above the
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`photo and "Let's conquer together!" was printed underneath the photo. A true and correct copy of
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`this Instagram post is attached as Exhibit E.
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`4
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`Case 2:24-cv-00780-KT Document 1 Filed 05/28/24 Page 5 of 11
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`18. On April 23, 2024, Mr. Mucci's attorney, Gwen R. Acker Wood ("attorney
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`Acker Wood") sent Defendant a second Cease & Desist Letter, in which it was stated that unless
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`Mr. Mucci receive written confirmation that Defendant had ceased all use or planned use of
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`Plaintiff's Registered Mark or any confusingly similar mark within seven days, Plaintiff WBI would
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`file suit for trademark infringement based on Defendant's willful and intentional ongoing and
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`continuing infringement of Plaintiff's Registered Mark. A true and correct copy of this Cease &
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`Desist Letter is attached as Exhibit F.
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`19. On May 22, 2024, attorney Acker Wood received an email from attorney
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`Rubio requesting, inter alia, a "coexistence scenario" in which Defendant would agree to limit its
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`services solely to Florida. A true and correct copy of this email is attached as Exhibit G.
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`20.
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`To date, Defendant has failed, neglected, and refused to comply with the
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`demands set forth in the two Cease & Desist Letters.
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`B. The Effect of Defendant's Actions on Plaintiff and the Consuming Pubic
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`21. Defendant' s unauthorized use of Plaintiff's Registered Mark is likely to
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`cause confusion, to cause mistake, and to deceive the parties' customers and potential customers as
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`to whether there is some affiliation, connection or association between Defendant and Plaintiff, or
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`as to the origin, sponsorship, or approval of Defendant's services by Plaintiff.
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`22. Defendant's unauthorized use of Plaintiff's Registered Mark falsely indicates
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`to the purchasing public that Defendant and its services originate with Plaintiff, or are affiliated,
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`connected, or associated with Plaintiff, or are sponsored, endorsed, or approved by Plaintiff, or are
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`in some other manner related to Plaintiff.
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`23. Defendant's unauthorized use of Plaintiff's Registered Mark falsely
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`designates the