throbber
Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91208793
`
`Plaintiff
`
`PEI Licensing, Inc.
`ARIEL Y BUBLICK
`NORVELL IP LLC
`1776 ASH STREET
`NORTHFIELD, IL 60093
`UNITED STATES
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`abub|ick@norve||ip.com, jburgett@norve||ip.com, checht@norve||ip.com,
`officeactions@norve||ip.com
`
`Motion to Suspend for Civil Action
`
`Jay M. Burgett
`
`
`
`officeactions@norve||ip.com, jburgett@norve||ip.com
`
`ljmbl
`10/15/2013
`
`131015 Motion to Suspend F|NAL.pdf(472658 bytes )
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA565182
`ESTTA Tracking number:
`10/15/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91208793
`Plaintiff
`PEI Licensing, Inc.
`ARIEL Y BUBLICK
`NORVELL IP LLC
`1776 ASH STREET
`NORTHFIELD, IL 60093
`UNITED STATES
`abublick@norvellip.com, jburgett@norvellip.com, checht@norvellip.com,
`officeactions@norvellip.com
`Motion to Suspend for Civil Action
`Jay M. Burgett
`officeactions@norvellip.com, jburgett@norvellip.com
`/jmb/
`10/15/2013
`131015 Motion to Suspend FINAL.pdf(472658 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`
`
`Case No. 12232-1301
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re Application No. 79-108168
`Filed: July 27, 2011
`
`Mark:
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`Published in the Official Gazette (Trademarks) on: September 4, 2012
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`PEI LICENSING, INC.
`
`
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`
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`KRYOS GUARD, S.L.,
`
`v.
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`Opposer,
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`Applicant.
`
`
`)
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`)
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`)
`
`)
`) Opposition No. 91208793
`)
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`)
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`)
`)
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`MOTION TO SUSPEND OPPOSITION PROCEEDING
`PENDING THE DISPOSITION OF A CIVIL ACTION
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`PEI LICENSING, INC. (“PEI”), through its undersigned counsel, submits the
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`following motion to suspend proceedings pending the disposition of Civil Case No. 1:13-
`
`cv-06922, PEI Licensing, Inc. v. Kryos Guard, S.L., filed on September 26, 2013 in the
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`United States District Court for the Northern District of Illinois, Eastern District (“Civil
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`Action”). A copy of Applicant’s first amended complaint in the Civil Action is attached at
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`Exhibit 1.
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`The Civil Action alleges trademark infringement, dilution and unfair competition
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`and related Illinois State law and common law claims against the same mark that is
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`subject to the above-referenced opposition proceeding (“Opposed Mark”). The Civil
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`Action involves common legal and factual issues as those presented in the opposition
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`proceeding, and the issues raised in the Civil Action will decide the opposition
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`proceeding. Moreover, the final resolution of the Civil Action will be dispositive of all
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`issues involved in the opposition proceeding.
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`Accordingly, in the interest of judicial economy and to prevent potential for
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`inconsistent rulings on the same issues presented in both the Civil Action and the
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`opposition proceeding, and because the decision of the District Court will be binding on
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`the Board, PEI respectfully requests that the Board grant PEI’s motion to suspend the
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`opposition proceeding pending the disposition of the Civil Action. Applicant may argue
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`that its dispositive motion should be decided first; however, this motion was filed in lieu
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`of responding to discovery, and after pleas to PEI to refrain from taking further action.
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`Accordingly suspension is appropriate in this case, either by suspending all further
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`action, including any ruling on Applicant’s motion for judgment or, in the alternative, first
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`denying Applicant’s motion for judgment with leave to reinstate post suspension.
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`Alternatively, if the Board believes Applicant’s motion has merit and should be
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`briefed, PEI requests that the Board grant PEI twenty (20) days subsequent to the
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`Board’s denial of PEI’s motion within which PEI can respond substantively to Applicant’s
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`motion for judgment on the pleadings.
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`
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`Respectfully submitted,
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`PEI LICENSING, INC.
`
`
`
`
`
`
`/JMB/
`Joseph V. Norvell
`Jay M. Burgett
`Chloe A. Hecht
`NORVELL IP LLC
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`
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`Dated: October 15, 2013
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`
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`By:
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`2
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`1776 Ash Street
`Northfield, Illinois 60093
`Telephone:
`(888) 315-0732
`Facsimile:
`(312) 268-5063
`jburgett@norvellip.com
`
`Attorneys for PEI LICENSING, INC.
`
`3
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`
`
`Case No. 12232-1301
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re Application No. 79-108168
`Filed: July 27, 2011
`
`Mark:
`
`Published in the Official Gazette (Trademarks) on: September 4, 2012
`
`PEI LICENSING, INC.
`
`
`
`
`
`JEFFREY KAPLAN
`
`v.
`
`Opposer,
`
`Applicant.
`
`
`)
`
`)
`
`)
`
`)
`) Opposition No. 91208793
`)
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`)
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`)
`)
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`MEMORANDUM IN SUPPORT OF MOTION TO SUSPEND OPPOSITION
`PROCEEDING PENDING THE DISPOSITION OF A CIVIL ACTION
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`PEI LICENSING, INC. (“PEI”), through its undersigned counsel, submits the
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`following arguments in support of its motion to suspend the opposition proceeding
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`pending the disposition of a civil action.
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`MEMORANDUM
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`I.
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`BACKGROUND
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`PEI, through its predecessors and/or related companies, adopted and first used a
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`penguin design on or in connection with apparel and related goods since at least as
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`early as 1956, and the PENGUIN word mark since at least as early as 1967. Since
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`these dates, PEI, through its predecessors and/or related companies, has continuously
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`used the penguin design and PENGUIN word mark, in addition to a number of
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`PENGUIN-formative marks and penguin design variations. PEI’s PENGUIN Marks, as
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`defined in PEI’s Notice of Opposition, are distinctive and famous.
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`On January 2, 2013, PEI initiated Opposition No. 91208793 (“Opposition
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`Proceeding”) by filing a Notice of Opposition with the Trademark Trial and Appeal Board
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`(“Board”). PEI sought refusal of registration of Application Serial No. 79-108168 for the
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`mark KRYOS GUARD & penguin design:
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`
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`for use in connection with goods and services falling under International Classes 14, 25
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`and 35 (“Opposed Mark”), owned by KRYOS GUARD, S.L. (“Applicant”). PEI based its
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`Notice of Opposition on a likelihood of confusion under Section 2(d) of the Lanham Act,
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`15 U.S.C. §1052(d), and dilution under Section 43(c) of the Lanham Act, 15 U.S.C.
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`§1125(c). On January 10, 2013, the Board issued an Institution Order, which set forth
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`the trial and discovery dates. Applicant filed an Answer on February 19, 2013.
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`Applicant’s Failure to Comply with Rule 26(f)
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`A.
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`On March 21, 2013, PEI and Applicant held the Discovery Conference under
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`
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`Rule 26(f) of the Federal Rules of Civil Procedure (“FRCP”). (Declaration of Jay M.
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`Burgett (“Burgett”) ¶2, attached at Exhibit 2). Applicant is a Spanish entity and after a
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`diligent search over the Internet, PEI had no information on Applicant at the time of the
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`Discovery Conference. Id. During the Discovery Conference, PEI requested
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`information on Applicant and its intended use of the Opposed Mark so that the parties
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`could discuss the nature and basis of their claims and defenses and the possibility for a
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`prompt settlement or resolution pursuant to Rule 26(f). Id. However, Applicant’s
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`2
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`

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`counsel refused to provide any information about Applicant or discuss settlement. Id.
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`Accordingly, the parties were not able to comply with the requirements and intent of
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`Rule 26(f). Id.
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`On April 9, 2013, PEI wrote to Applicant’s counsel and explained that, because
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`no information was known or provided about Applicant, the parties were not able to
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`discuss settlement, as required by Rule 26. Burgett ¶3. PEI stated that it was prepared
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`to serve discovery; however, at the early stage in the proceeding, it seemed
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`inappropriate to incur the costs of discovery. Id. Moreover, because Applicant is a
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`Spanish entity, the discovery process is burdensome and costly. Accordingly, PEI
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`requested that Applicant provide basic information on its business, its products, trade
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`channels and intended use of the Opposed Mark. Id.
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`On April 19, 2013, Applicant served a courtesy copy of its Initial Disclosures,
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`which stated that all discoverable information relating to the Opposed Mark, Applicant’s
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`products and services, and trade channels are located in Spain. Burgett ¶4. Applicant
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`also informed PEI that Applicant’s website www.kryosguard.com went live. Id.
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`Applicant provided no other information. Id.
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`April 19, 2013 was the first time PEI had any information about Applicant from
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`which to evaluate settlement opportunities. Burgett ¶5. Based on this website, PEI
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`engaged in research, investigations and analysis to formulate a case analysis and
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`substantive settlement proposal. Id. During the course of this formulation, Applicant’s
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`website substantively changed in appearance and content, requiring additional analysis.
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`Id.
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`3
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`B.
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`Applicant’s Failure to Consent to any Suspensions or Extensions
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`On July 31, 2013, over six weeks prior to the original close of discovery, PEI
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`contacted Applicant’s counsel and stated that it was completing its case analysis, and
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`PEI would like to engage in substantive discussion regarding settlement. Burgett ¶6.
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`PEI sought consent for a first suspension of the Opposition Proceeding so the parties
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`could discuss settlement without simultaneously incurring the expense of discovery. Id.
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`However, Applicant refused PEI’s first request for consent to suspend for settlement
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`discussions, and instead conditioned any consent upon first receiving a settlement
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`proposal from PEI that Applicant would determine, unilaterally, whether there was “room
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`for settlement.” Id.
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`On August 1, 2013, PEI explained that it was committed to a good faith effort to
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`settle the Opposition Proceeding and that it was finalizing a substantive settlement
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`proposal. Burgett ¶7. PEI requested for a second time that discovery and trial dates be
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`extended, contingent upon PEI submitting its proposal by August 15, 2013. Id.
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`Applicant again refused consent.
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`On August 2, 2013, PEI responded that, due to Applicant’s failure to consent to a
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`first suspension or extension for settlement discussions on reasonable terms, PEI must
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`focus efforts on discovery immediately, and PEI explained that there was good cause
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`for extending discovery and trial dates because, even if the parties are not going to
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`engage in bilateral settlement discussions, the depositions of foreign parties on written
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`questions are cumbersome and time consuming. Burgett ¶9. However, Applicant
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`refused consent for an extension of discovery and trial dates a third time. Id.
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`4
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`
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`Due to Applicant’s failure to consent to a suspension or extension on reasonable
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`terms, PEI proceeded with prosecution of the Opposition Proceeding, and PEI timely
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`served written discovery requests on Applicant on August 7, 2013. Burgett ¶10. Shortly
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`thereafter, on or around August 14, 2013, due to Applicant’s failure to engage in
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`bilateral settlement discussions and due to concerns with Applicant’s actual use of the
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`Opposed Mark in commerce, PEI made the decision to file a federal lawsuit against
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`Applicant to address Applicant’s use and registration of the Opposed Mark in a single
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`proceeding. Burgett ¶10.
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`
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`On August 23, 2013, PEI’s counsel completed preparation of the federal
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`complaint against Applicant for trademark infringement, dilution and unfair competition
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`and related Illinois State and common law claims, which is corroborated by the fact that
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`exhibits A, F, G and I to the complaint, as filed, are dated with August 23, 2013, indicate
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`the date in which these documents were retrieved for purposes of filing. Burgett ¶11.
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`C.
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`Applicant’s Failure to Respond to PEI’s Discovery and Applicant’s
`Misrepresentations
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`On September 6, 2013, Applicant’s responses to PEI’s discovery requests were
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`due; however, Applicant failed to respond or even acknowledge PEI’s discovery
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`requests in violation of the Federal Rules of Civil Procedure and the Board’s rules.
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`Burgett ¶12. Accordingly, PEI contacted Applicant and requested a date certain upon
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`which Applicant would respond. Burgett ¶13. In addition, PEI requested consent to
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`extend discovery due to Applicant’s failure to timely respond. Id. Applicant’s counsel
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`responded, in part:
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`“I will ask my client for a status update and provide you with our client’s
`position within one week – by September 23, 2013. Please wait one week
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`5
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`for us to ascertain our client’s position before filing any motion with the
`Board.”
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` …
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`“Please let me know if 60 days is a sufficient extension of time for now,
`and we will consent to it. Meanwhile, I will follow up with you next week to
`discuss our client’s position.” (emphasis added). Burgett ¶14.
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`PEI responded that it does not have date certain upon which Applicant will
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`respond to PEI’s discovery and PEI may need to file a motion to compel. Burgett
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`¶15. Applicant’s counsel responded and stated, again:
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`“Please wait until next week before filing any motion to compel, as we may
`be able to resolve this matter informally before that time.” (emphasis
`added). Burgett ¶16.
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`Based on Applicant’s counsel’s express statements and pleas not to file any motion,
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`PEI refrained from action in anticipation that it would receive Applicant’s “position within
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`one week” and that the matter could be potentially be resolved “informally.” Burgett
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`¶17. However, Applicant had no such intentions, and instead used the additional time
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`to prepare and file a motion for judgment on the pleadings and a motion to suspend with
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`the Board on September 23, 2013, in an attempt to avoid having to respond to PEI’s
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`discovery requests.
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`
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`D.
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`PEI’s Federal District Court Complaint and First Amended Complaint
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`As it became apparent that Applicant had no intention of resolving the matter
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`amicably, PEI filed its federal complaint on September 26, 2013 in the United States
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`District Court for the Northern District of Illinois, Eastern Division (“Civil Action”). The
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`Civil Action was assigned Case No. 1:13-cv-06922. Burgett ¶19. A copy of Applicant’s
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`first amended complaint filed on October 15, 2013 in the Civil Action is attached at
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`Exhibit 1.
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`6
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`

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`The Civil Action is premised on PEI’s prior PENGUIN Marks, and it alleges that
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`Applicant’s Opposed Mark, which is subject to the Opposition Proceeding, is likely to
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`cause confusion with PEI’s PENGUIN Mark and dilutes the distinctive value of PEI’s
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`PENGUIN Marks, among other federal, state and common law claims.1 The trademark
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`infringement and dilution claims in the Civil Action are identical or closely related to
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`those in the Opposition Proceeding.
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`On October 14, 2013, PEI informed Applicant that it was moving the Board to
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`suspend pending the disposition of the Civil Action, and PEI requested consent to
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`extend the time to respond substantively to Applicant’s motion for judgment on the
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`pleadings by twenty (20) days subsequent to the Board’s ruling on PEI’s motion.
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`Burgett ¶22. Applicant denied PEI’s request. Id.
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`II.
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`ARGUMENT
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`Legal Standard
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`A.
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`It is the policy of the Board to suspend proceedings pursuant to Trademark Rule
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`2.117(a), 37 C.F.R. §2.117(a), when the parties are involved in a civil action that may be
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`dispositive of or have a bearing on the Board proceeding. See e.g. Dallas C. Brown Jr.
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`v. Courtney L. Bishop, Cancellation No. 92050965, 2010 WL 2946844, at *3 (TTAB
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`2010); George Vais v. Vais Arms, Inc., Opposition No. 91154485, 2004 WL 390926, *1
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`(TTAB 2004) (suspending the opposition proceeding because it is the policy of the
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`Board to do so when a civil action is pending, despite opposition from the other side).
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`Suspension of a Board proceeding is appropriate even if the civil case may not be
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`dispositive of the Board proceeding, so long as the ruling will have a bearing on the
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`1 In addition to claim of trademark infringement and trademark dilution, PEI alleges claims of unfair
`competition and Illinois State law and common law claims, and PEI seeks damages, which are beyond
`the scope of the Opposition Proceeding.
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`7
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`rights of the parties in the Board proceeding. See Society of Mexican American,
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`Opposition No. 121723, 2002 WL 31488947, at *4 (TTAB 2002).
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`When there is a dispositive motion on file, as is the case here, it is within the
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`discretion of the Board to grant the motion to suspend pursuant to Trademark Rule
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`2.117(b), 37 C.F.R. §2.117(b), when the parties are involved in a civil action that may
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`dispositive of or have a bearing on the Board proceeding.
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`B.
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`The Board Should Grant the Suspension Because the Issues are
`Identical and the Civil Action will Determine the Outcome of the
`Opposition
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`The pending Civil Action involves issues of fact that are common to the
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`Opposition Proceeding. In addition, the legal issues underlying both the Civil Action and
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`the Opposition Proceeding are identical or closely related because they are both
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`premised upon claims of trademark infringement and dilution under the Lanham Action.
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`While the Civil Action’s claims and requested relief are broader than the issues raised in
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`the Opposition Proceeding, the issues raised in the Civil Action will clearly affect this
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`Opposition Proceeding, namely whether Applicant’s application for the Opposed Mark is
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`permissible for registration.
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`Specifically, in its Prayer for Relief, PEI sought an injunction against use of the
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`Opposed Mark by Applicant, as well as an order requiring Applicant or the Director of
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`the USPTO to withdraw the application for the Opposed Mark in the Opposition
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`Proceeding. The Board has previously held that when the opposer seeks to enjoin the
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`applicant, “the final determination of the civil suit will directly affect the resolution of the
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`issue of likelihood of confusion which is involved in the proceeding before the
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`Trademark Trial and Appeal Board.” The Other Telephone Co. v. Connecticut National
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`Telephone Co., Inc. 181 U.S.P.Q. 125, 126 (TTAB 1974) (ordering suspension of the
`8
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`opposition pending final disposition of the civil action). There is no reason to stray from
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`this course of action in this instance.
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`C.
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`Because Applicant’s Potentially Dispositive Motion Was Served In
`Lieu Of Timely Responses to Discovery and After Pleas From
`Applicant to “Please Wait … Before Filing Any Motion…”, Action On
`Applicant’s Motion Should Also Be Suspended
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`
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`As explained in Section 510.02(a) of the Trademark Trial and Appeal Board
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`Manual of Procedure (“TBMP”), the purpose of Trademark Rule 2.117(b) is to prevent a
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`party served with a potentially dispositive motion from escaping the motion by filing a
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`civil action and then moving to suspend before the Board has decided the potentially
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`dispositive motion. However, this is not the case here. Burgett ¶21. As a result of
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`Applicant’s failure to engage in bilateral settlement discussions, and PEI’s concerns
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`over the actual use of the Opposed Mark by Applicant in commerce, PEI made the
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`decision to file a federal district court complaint on or around August 14, 2013. The
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`federal complaint was completed on August 23, 2013, pending Applicant’s discovery
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`responses, which were due on September 6, 2013, but never served.
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`When Applicant failed to respond to PEI’s discovery requests, after being
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`contacted by PEI, Applicant’s counsel pleaded PEI that PEI not file any motion and
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`assured PEI that it would receive Applicant’s “position within one week” and that the
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`matter could be potentially be resolved “informally.” Relying upon these assurances,
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`PEI withheld all filings, including the federal complaint. Moreover, PEI anticipated
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`receiving Applicant’s position on the case and believed that the Opposition Proceeding
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`may be resolved informally, thus obviating the need to file the federal complaint. Once
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`PEI became aware that Applicant was pleading for time to file a motion for judgment on
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`9
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`the pleadings rather than respond to PEI’s discovery requests, PEI proceeded to
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`promptly file the Civil Action.
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`The Board does not have the power to enjoin Applicant from its infringing
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`conduct and dilution of PEI’s famous PENGUIN Marks, nor does the Board have the
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`power to resolve issues on damages, which are all subjects to the claims in the Civil
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`Action. Alternatively, the Civil Action involves issues in common with the Opposition
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`Proceeding, and the final resolution of the Civil Action will be dispositive of the issues
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`involved in the Opposition Proceeding. Additionally, any decision by the Board will not
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`be binding upon the issues in the Civil Action, but the decision of the District Court
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`would be binding on the Board. See Society of Mexican American, 2002 WL 31488947
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`at 4.
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`Accordingly, in accordance with 37 C.F.R. §§2.117(a) and (b), in the interest of
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`judicial economy, and in order to prevent the potential for inconsistent rulings on issues
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`similar in this Opposition Proceeding and the Civil Action, PEI respectively requests that
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`the Board grant PEI’s motion to suspend the opposition proceeding pending the
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`disposition of the Civil Action, either by suspending all action, including action on
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`Applicant’s potentially dispositive motion, or by first denying Applicant’s motion without
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`the need for briefing, then suspending. Alternatively, if the Board believes Applicant’s
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`motion has merit and should be briefed, PEI requests that the Board grant PEI twenty
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`(20) days subsequent to the Board’s denial of PEI’s instant motion within which PEI can
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`respond substantively to Applicant’s motion for judgment on the pleadings.
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`10
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`III.
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`CONCLUSION
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`For the reasons set forth above, PEI respectfully requests that the Board grant
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`PEI’s motion to suspend the Opposition Proceeding pending the disposition of Civil
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`Action No. 1:13-cv-06922.
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`
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`Respectfully submitted,
`
`PEI LICENSING, INC.
`
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`
`
`
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`By:
`
`
`
`
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`
`
`
`
`/JMB/
`Joseph V. Norvell
`Jay M. Burgett
`Chloe A. Hecht
`NORVELL IP LLC
`1776 Ash Street
`Northfield, Illinois 60093
`Telephone:
`(312) 659-7157
`Facsimile:
`(312) 268-5063
`jburgett@norvellip.com
`
`Attorneys for PEI LICENSING, INC.
`
`11
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`Dated: October 15, 2013
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`CERTIFICATE OF SERVICE
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`I hereby certify that copies of the foregoing MOTION TO SUSPEND
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`OPPOSITION PROCEEDING PENDING THE DISPOSITION OF A CIVIL ACTION and
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`MEMORANDUM IN SUPPORT OF MOTION TO SUSPEND OPPOSITION
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`PROCEEDING PENDING THE DISPOSITION OF A CIVIL ACTION have been served
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`upon Kryos Guard, S.L. via United States first class mail, postage prepaid, addressed
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`to:
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`Paulo A. de Almeida
`Patel & Almeida, P.C.
`16830 Ventura Blvd., Suite 360
`Encino, CA 91436
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`
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`By:
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`/JMB/
`Jay M. Burgett
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`12
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`Dated: October 15, 2013
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`Exhibit 1
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`Exhibit 1
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`

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`Case: 1:13-cv-06922 Document #: 10 Filed: 10/15/13 Page 1 of 24 PageID #:296
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
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`Civil Action No. 1:13-cv-06922
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`Judge Virginia M. Kendall
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`PEI LICENSING, INC.,
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`
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`v.
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`KRYOS GUARD, S.L.,
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`Plaintiff,
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`Defendant.
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`
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`FIRST AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, DILUTION,
`UNFAIR COMPETITION AND RELATED STATE AND COMMON LAW CLAIMS
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`Plaintiff PEI Licensing, Inc. (“PEI Licensing”), by and through its attorneys,
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`
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`hereby alleges the following as and for its First Amended Complaint for Trademark
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`Infringement, Dilution, Unfair Competition and Related State and Common Law Claims
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`against defendant Kryos Guard, S.L. (“Defendant”):
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`NATURE OF ACTION
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`1.
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`This action is for trademark infringement, dilution and unfair competition in
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`violation of the Lanham Act, 15 U.S.C. §§1114(1) and 1125(a) and (c), deceptive trade
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`practices in violation of the Illinois Uniform Deceptive Trade Practices Act, 815 Ill.
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`Comp. Stat. 510/1 et seq., consumer fraud and deceptive business practices in violation
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`of the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 Ill. Comp.
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`Stat. 505/1 et seq., and unfair competition in violation of Illinois common law.
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`2.
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`This action results from Defendant’s unauthorized use of a penguin design
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`in connection with apparel and related retail services that is confusingly similar to PEI
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`Licensing’s federally registered and famous PENGUIN and penguin design trademarks.
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`
`
`
`
`

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`Case: 1:13-cv-06922 Document #: 10 Filed: 10/15/13 Page 2 of 24 PageID #:297
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`PARTIES
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`3.
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`PEI Licensing, Inc. is a Delaware corporation with a principal place of
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`business at 3000 NW 107th Avenue, Miami, Florida 33172, United States of America.
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`4.
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`Kryos Guard, S.L. is a Spanish Sociedad Limitada with a principal place of
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`business at Rambla de Catalunya, 38 - 8ª planta, Barcelona E08007, Spain.
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`JURISDICTION AND VENUE
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`5.
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`This Court has subject matter jurisdiction over PEI Licensing’s federal
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`claims pursuant to the Lanham Act, 15 U.S.C. §1121, and 28 U.S.C. §§1331, 1332 and
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`1338(a) and (b). This Court has supplemental jurisdiction over PEI Licensing’s state
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`law claims pursuant to 28 U.S.C. §§1338 and 1367 because these claims are joined
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`with substantial and related claims under the trademark laws of the United States, and
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`are related to claims in the action within such original jurisdiction that they form part of
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`the same case or controversy or derive from a common nucleus of operative fact.
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`6.
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`The exercise of personal jurisdiction by the Court over Defendant is
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`appropriate in this instance pursuant to the Illinois long-arm statute, 735 Ill. Comp. Stat.
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`5/2-209 et seq., and such an assertion is in accordance with the Due Process Clause of
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`the Fourteenth Amendment of the United States Constitution.
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`7.
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`This Court has personal jurisdiction over Defendant because Defendant
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`targets and makes sales in Illinois and this District, and transacts business in this
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`District. Defendant operates an Internet website at the domain name
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`www.kryosguard.com (“Defendant Website”), which is accessible by and targets
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`residents of Illinois and this District. Defendant has purposefully availed itself of the
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` 2
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`

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`Case: 1:13-cv-06922 Document #: 10 Filed: 10/15/13 Page 3 of 24 PageID #:298
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`benefits of doing business in Illinois by actually transacting business in Illinois, and
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`Defendant can reasonably anticipate being haled into court in Illinois.
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`8.
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`The Defendant Website lists shipping costs to the United States, including
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`Illinois and this District. The Defendant Website also provides information on import
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`duties and taxes for shipments to the United States, and delivery times for shipments to
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`the United States. Attached as Exhibit A is a true and correct printout of the shipping
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`options and delivery from the Defendant Website.
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`9.
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`Moreover, Defendant has, in fact, shipped product to the United States,
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`including Illinois and this District. Attached as Exhibit B is a true and correct printout of
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`shipping information for product sold and shipped by Defendant to Downers Grove,
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`Illinois, United States. Attached as Exhibit C are true and correct photographs of
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`Defendant’s shirts bearing the infringing mark complained of herein that were shipped
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`by Defendant to Downers Grove, Illinois, United States.
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`10. Additionally, Defendant invites consumers from the United States,
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`including Illinois and this District, to visit the Defendant Website and purchase items.
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`Attached as Exhibit D is a true and correct copy of an e-mail dated August 7, 2013 from
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`Defendant’s Customer Department to a consumer in Downers Grove, Illinois, United
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`States in which Defendant states, “We invite you to visit our online store and repeat the
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`purchasing process.”
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`11. Defendant also filed a trademark application to register the mark KRYOS
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`GUARD & Penguin Design with the United States Patent and Trademark Office
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`(“USPTO”), which was based on Section 66(a) of the Lanham Act, 15 U.S.C. §1141f(a),
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`and assigned Application Serial No. 79-108168. Pursuant to Trademark Rule 2.33(e),
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` 3
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`
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`

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`Case: 1:13-cv-06922 Document #: 10 Filed: 10/15/13 Page 4 of 24 PageID #:299
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`37 C.F.R. §2.33(e), Defendant or Defendant’s representative executed a declaration,
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`stating, inter alia, that Defendant has a bona fide intention to use the mark in commerce
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`that the United States Congress can regulate on or in connection with the goods and
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`services identified in the application.
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`12.
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`In undertaking these deliberate acts, including all facts and allegations set
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`forth below, which are incorporated herein by reference, Defendant had fair warning that
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`it may be called before an Illinois court.
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`13. Venue is proper in the Northern District of Illinois pursuant to 28 U.S.C.
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`§1391, because PEI Licensing and/or its related companies are doing business in this
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`District, the claims arose in this District and a substantial part of the events giving rise to
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`the claims occurred in this District. Moreover, Defendant transacts business in this
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`District, has committed tortious acts in this District and has engaged in activities that
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`subject Defendant to the jurisdiction of this Court. Finally, because Defendant is subject
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`to personal jurisdiction in this District, venue is appropriate in this District.
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`PEI LICENSING AND ITS FAMOUS PENGUIN MARKS
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`14. PEI Licensing and its related companies are leading marketers of a broad
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`line of apparel, accessories and related goods.
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`15. PEI Licensing is the owner and licensor of a number of well-known,
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`globally recognized brands, including, for example, PERRY ELLIS®, JANTZEN®,
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`LAUNDRY BY SHELLI SEGAL®, MANHATTAN®, ORIGINAL PENGUIN®, and several
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`penguin designs:
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`®.
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`®
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` 4
`
`
`
`®
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`

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`Case: 1:13-cv-06922 Document #: 10 Filed: 10/15/13 Page 5 of 24 PageID #:300
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`16. Since long prior to the acts of Defendant complained of herein, PEI
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`Licensing, through its predecessors and/or related companies, adopted and first used a
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`penguin design on or in connection with apparel and related goods since at least as
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`early as 1956 and the PENGUIN word mark since at least as early as 1967. Since
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`these dates, PEI Licensing, through its predecessors and/or related companies, has
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`continuously used the penguin design and the PENGUIN word mark, in addition to a
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`number of PENGUIN-formative marks and penguin designs.
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`17. PEI Licensing, through its predecessors, created the first logo golf shirt in
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`the United States in the 1950s, which prominently featured a penguin design on the
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`chest of the shirt. The shirt quickly became a favorite of professional golfers and
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`celebrities. Today, PEI Licensing’s iconic penguin designs are immediately recognized
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`by consumers nationwide and apparel and related goods bearing these designs
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`continue to be a favorite of consumers, professional athletes and celebrities.
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`18. PEI Licensing and/or its related companies (hereafter, “PEI”) distribute
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`goods through regional, national and international department stores, national and
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`regional chain stores, mass merchants and green-grass and other specialty stores. PEI
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`also engages in direct-to-consumer business through company-owned retail stores
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`located throughout the nation and e-commerce websites. PEI owns and operates an
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`Original Penguin boutique in Chicago, located at 901 North Rush Street, Chicago,
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`Illinois 60611.
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`19. PEI Licensing owns the following United States trademark registrations, all
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`of which are legally and validly registered on the Principal Register of the USPTO, and
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` 5
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`

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`Case: 1:13-cv-06922 Document #: 10 Filed: 10/15/13 Page 6 of 24 PageID #:301
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`many off which have long since acquired “incontestaable” statuss (collectiveely, the “PE
`
`
`
`
`
`I
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`Status
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`
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`Incontestaable
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`
`
`Incontestaable
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`
`
`Incontestaable
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`
`
`Incontestaable
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`
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`Incontestaable
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`Goodds / Servicees
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`namely, spport
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`Gs
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`Bg
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`Cws
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`ws
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`
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`Regg. No.
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`
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`6733,912
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`1,1116,035
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`
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`2,0775,922
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`Golf shirts annd other
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`pportswear,
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`shhirts, sweatters
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`arrel bags aand golf ummbrellas;
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`
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`oolf bag coveers, golf baalls, golf
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`teees
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`lothing; nammely, men'ss,
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`women's andd children'ss tops,
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`hhirts, skirts,, pu

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