Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA626983
`ESTTA Tracking number:
`09/15/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91218262
`Plaintiff
`Overton Apparel, Inc.
`James W. Faris Jr.
`Kilpatrick Townsend Stockton LLP
`1100 Peachtree Street, NESuite 2800
`Atlanta, GA 30309
`UNITED STATES
`jfar-
`is@ktslaw.com,tmadmin@kilpatricktownsend.com,cbussert@ktslaw.com,mbaca
`@ktslaw.com
`Motion to Suspend for Civil Action
`James W. Faris Jr.
`jfar-
`is@ktslaw.com,tmadmin@kilpatricktownsend.com,cbussert@ktslaw.com,mbaca
`@ktslaw.com
`/James W. Faris Jr./
`09/15/2014
`Motion to Suspend Proceedings Pending Civil Action.pdf(29630 bytes )
`Exhibit A - Complaint.PDF(725491 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
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`OVERTON APPAREL, INC.
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`
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`v.
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`THE SOUTHERN SHIRT COMPANY, LLC
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`
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`Applicant.
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` Opposition No. 91218262
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`
` Serial No. 85873773
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`
` Mark: Stylized Cotton Boll
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`OPPOSER’S MOTION TO SUSPEND PROCEEDINGS
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`PENDING DISPOSITION OF CIVIL ACTION
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`Pursuant to 37 C.F.R. § 2.117(a) and T.B.M.P. § 510.02(a), Opposer Overton Apparel,
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`Inc. (“Overton”) respectfully requests that the Board suspend Opposition No. 91218262 on the
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`ground that Overton and Applicant The Southern Shirt Company, LLC (“Southern Shirt”) are
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`currently parties to a civil action initiated by Overton in the United States District Court for the
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`Northern District of Georgia (the “Civil Action”) that will dispose of the issues raised in this
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`opposition proceeding, namely Southern Shirt’s entitlement to registration of Application Serial
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`No. 85873773.
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`I.
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`BACKGROUND
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`Overton and Southern Shirt are both clothing companies based in the Southeast United
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`States that use a realistic depiction of a cotton boll as a trademark in connection with clothing
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`products. The parties’ respective cotton boll design marks are shown below:
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`Overton’s Cotton Boll Design Mark
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`Southern Shirt’s Cotton Boll Design Mark
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`On March 12, 2013, Southern Shirt filed Application Serial No. 85873773 for its cotton
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`boll design mark for use in connection with clothing products and related services in Class Nos.
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`25, 39, and 42, claiming as a date of first use for all classes August 21, 2009.
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`On September 20, 2013, based on Overton’s priority of rights in its cotton boll design
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`mark for clothing, which dates back to the 1990s, Overton initiated the Civil Action against
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`Southern Shirt seeking, among other things, a judgment permanently enjoining Southern Shirt
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`from using its cotton boll design mark. A copy of the Complaint filed in the Civil Action is
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`attached as Exhibit A.
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`II.
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`ARGUMENT
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`The Board has the power to suspend proceedings in favor of a pending civil action
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`pursuant to Trademark Rule 2.117(a), which provides:
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`Whenever it shall come to the attention of the Trademark Trial and Appeal Board
`that a party or parties to a pending case are engaged in a civil action or another
`Board proceeding which may have a bearing on the case, proceedings before the
`Board may be suspended until termination of the civil action or other Board
`proceeding.
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`37 C.F.R. § 2.117(a). Similarly, the Trademark Trial and Appeal Board Manual of Procedure
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`provides that, “[o]rdinarily, the Board will suspend proceedings in the case before it if the final
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`determination of the other proceeding may have a bearing on the issues before the Board.”
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`T.B.M.P. § 510.02(a) (3d ed. 2011). The Board routinely exercises this power “in the interest of
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`judicial economy and consistent with [its] inherent authority to regulate its own proceedings to
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`avoid duplicating the effort of the court and the possibility of reaching an inconsistent
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`conclusion.” Soc’y of Mex. Am. Eng’rs & Scientists, Inc. v. GVR Pub. Relations Agency, Inc.,
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`Opp. No. 91121723, 2002 WL 31488947, at *4 (T.T.A.B. Nov. 6, 2001).1
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`The issue raised in this Board proceeding—Southern Shirt’s right to registration of the
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`mark depicted in Application Serial No. 85873773 for the goods and services identified
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`therein—is fully subsumed by the pending Civil Action. The Court’s conclusions in the Civil
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`Action with respect to priority of rights, confusing similarity, and Overton’s entitlement to a
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`permanent injunction will be binding on Southern Shirt and, consequently, will resolve
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`conclusively the issue in this opposition proceeding. Accordingly, the Civil Action is the
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`appropriate venue in which to resolve the issue. See, e.g., Solid 21 Inc. v. England, Opp. No.
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`91162389, 2005 WL 376725, at *2 (T.T.A.B. Feb. 10, 2005) (suspending the Board proceeding
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`where “the parties to the civil action include the parties herein and the issues include ownership
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`and priority of use of the mark at issue herein”); Tokaido v. Honda Assocs., Inc., 140 U.S.P.Q.
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`861, 862 (T.T.A.B. 1973); see also (“[W]hile a decision by the District Court would be binding
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`upon the Patent Office, a decision by the Trademark Trial and Appeal Board would only be
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`advisory in respect to the disposition of the case pending in the District Court.”).
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`1 See also Vais v. Vais Arms, Inc., Opp. No. 91154485, 2004 WL 390936, at *1 (T.T.A.B. Feb.
`26, 2004) (“It is the policy of the Board to suspend proceedings pursuant to Trademark Rule
`2.117(a) when the parties are involved in a civil action which may be dispositive of or have a
`bearing on the Board case.”); Kearns-Tribune, LLC v. Salt Lake Tribune Publ’g Co., LLC, Opp.
`No. 91151843, 2003 WL 22134916, at *3 (T.T.A.B. Sept. 11, 2003); Gen. Motors Corp. v.
`Cadillac Club Fashions Inc., 22 U.S.P.Q.2d 1933, 1937 (T.T.A.B. 1992) (suspending
`cancellation proceeding where pending civil action requested cancellation of respondent’s
`trademark registrations); Argo & Co. v. Carpetsheen Mfg., Inc., 187 U.S.P.Q. 366, 367 (T.T.A.B.
`1975) (suspending opposition proceeding pending state court action between applicant and third
`party to determine ownership of applicant’s mark); Townley Clothes, Inc. v. Goldring, Inc., 100
`U.S.P.Q. 57, 58 (Comm’r Pat. & Trademarks 1953) (“[I]t would not seem to be in the interests of
`‘judicial economy’ for the parties to proceed in two forums . . . .”); 6 J. Thomas McCarthy,
`McCarthy on Trademarks and Unfair Competition § 32:47 (4th ed. 2010) (“It is standard
`procedure for the Trademark Board to stay administrative proceedings pending the outcome of
`court litigation between the same parties involving related issues.”); 1 Jeffery A. Handelman,
`Guide to TTAB Practice § 14.15(A) (2011) (“Generally, it is the Board’s practice to suspend a
`Board proceeding when there is a pending civil action or another Board proceeding which may
`be dispositive of, or have a bearing on, the proceeding proposed to be suspended.”).
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`Because the outcome of the Civil Action will conclusively and permanently resolve the
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`issue before the Board, the instant proceeding should be suspended in favor of the Civil Action.
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`Requiring the parties to litigate this issue in two forums simultaneously is a waste of the parties’
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`time and resources and a needless imposition on the Board.
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`III. CONCLUSION
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`For the foregoing reasons, Overton respectfully submits that this opposition proceeding
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`should be suspended pending disposition of the Civil Action.
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`Dated: September 15, 2014
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`Respectfully submitted,
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`/s/ James W. Faris Jr.
`By:
`Christopher P. Bussert
`James W. Faris Jr.
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309
`Telephone: (404) 815-6500
`Fax: (404) 815-6555
`E Mail: CBussert@KilpatrickTownsend.com
` JFaris@ KilpatrickTownsend.com
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`Attorneys for Opposer Overton Apparel, Inc.
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of the foregoing was served on Southern Shirt’s
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`representative as identified in the correspondence address of record for Application Serial No.
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`85873773 on September 15, 2014 via first class mail to:
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`Pamela Payne Smith
`Balch & Bingham LLP
`1901 Sixth Ave N, Suite 1500
`Birmingham, ALABAMA 35203
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` /s/ James W. Faris Jr.
`James W. Faris Jr.
`Attorney for Overton Apparel, Inc.
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`CERTIFICATE OF TRANSMITTAL
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`I hereby certify that a true copy of the foregoing is being filed electronically with the
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`PTO via ESTTA on this day, September 15, 2014.
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` /s/ James W. Faris Jr.
`James W. Faris Jr.
`Attorney for Overton Apparel, Inc.
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`EXHIBIT A
`EXHIBIT A
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`Case 1:13-cv-03141-SCJ Document 1 Filed 09/20/13 Page 1 of 17
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`OVERTON APPAREL, INC.,
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`
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`CIVIL ACTION FILE
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`NO. ___________________
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
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`)
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`v.
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`THE SOUTHERN SHIRT COMPANY,
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`LLC,
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`)
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`Plaintiff,
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`Defendant.
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`COMPLAINT
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`Plaintiff Overton Apparel, Inc. (“Plaintiff”) states the following for its
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`Complaint against Defendant The Southern Shirt Company, LLC (“Defendant”).
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`NATURE OF THIS ACTION
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`1.
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`This is an action at law and in equity for unfair competition, false
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`representation, and false designation of origin arising under Section 43 of the
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`Federal Trademark Act of 1946 (the “Lanham Act”), 15 U.S.C. § 1125; for
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`deceptive trade practices under the Georgia Uniform Deceptive Trade Practices
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`Act, O.C.G.A. § 10-1-370 et seq. (2007); and for unfair competition in violation of
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`O.C.G.A. § 23-2-55 (2007) and the common law of Georgia.
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`PARTIES
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`2.
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`Plaintiff is a corporation organized and existing under the laws of the
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`Case 1:13-cv-03141-SCJ Document 1 Filed 09/20/13 Page 2 of 17
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`State of Georgia, with its principal place of business in Dacula, Georgia. Plaintiff
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`offers for sale clothing products throughout Georgia and is the owner, in its own
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`right or by assignment from its predecessor-in-interest, Warren Sewell Clothing
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`Company (“Warren Sewell”), of the common law trademarks at issue in this
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`dispute, the COTTON BROTHERS Design Marks, as that term is defined below.
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`3.
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`Upon information and belief, Defendant The Southern Shirt Company
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`is a limited liability company organized and existing under the laws of the State of
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`Alabama, with its principal place of business in Tuscaloosa, Alabama, and which
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`may be served with process through its registered agent, Bryan James Webb, at
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`2032 Cribb Mill Lane, Tuscaloosa, AL 35404. Upon further information and
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`belief, Defendant offers for sale clothing products throughout Georgia via an
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`interactive website located at the URL address <www.southernshirt.com>, and via
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`at least twenty retail stores in Georgia, including stores located in the cities of
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`Cartersville, Dahlonega, Kennesaw, Ringgold, and Rome.
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`JURISDICTION & VENUE
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`4.
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`Subject matter jurisdiction exists under Section 39 of the Lanham Act,
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`15 U.S.C. § 1121, and under 28 U.S.C. §§ 1331 and 1338. This Court has
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`jurisdiction over Plaintiff’s related state and common law claims under 28 U.S.C.
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`§ 1338 and 1367. Subject matter jurisdiction also exists under 28 U.S.C. § 1332.
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`Case 1:13-cv-03141-SCJ Document 1 Filed 09/20/13 Page 3 of 17
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`The amount in controversy exceeds $75,000, exclusive of interest and costs, and
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`the matter is between citizens of different states.
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`5.
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`This Court has personal jurisdiction over Defendant because, upon
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`information and belief, Defendant does business in this District, and because a
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`substantial part of the events or omissions giving rise to the claims asserted herein
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`occurred in this District.
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`6.
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`Venue is proper in this District pursuant to 28 U.S.C. § 1391(b)(2)
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`because, upon information and belief, a substantial part of the events or omissions
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`giving rise to the claims asserted herein occurred in this District, where Plaintiff is
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`located.
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`7.
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`Pursuant to LR 3.1(B)(2) and (3), NDGa., venue is proper in this
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`Division because Plaintiff resides in this Division, and because a substantial part of
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`the events or omissions giving rise to the claims asserted herein occurred in this
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`Division.
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`FACTUAL BACKGROUND
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`A.
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`Plaintiff and Its COTTON BROTHERS Design Marks
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`8.
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`Beginning at least as early as June 1991, Plaintiff’s
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`predecessor-in-interest, Warren Sewell, adopted and began using the word mark
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`“COTTON BROTHERS” (the “COTTON BROTHERS Word Mark”) in interstate
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`Case 1:13-cv-03141-SCJ Document 1 Filed 09/20/13 Page 4 of 17
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`commerce in the United States in connection with clothing, including suits, sport
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`coats, slacks, shorts, dress shirts, sport shirts, T-shirts, jerseys, jackets, caps, hats,
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`socks, and sweaters.
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`9.
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`On April 28, 1992, Warren Sewell was granted U.S. Trademark
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`Registration No. 1684492 for the COTTON BROTHERS Word Mark on the
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`Principal Register of the U.S. Patent and Trademark Office (the “USPTO”) for use
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`in connection with “clothing made in whole or in substantial part of cotton,
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`namely, suits, sport coats, slacks, shorts, dress shirts, sport shirts, T-shirts, and
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`jerseys,” in International Class 25 (the “‘492 Registration”). The ‘492 Registration
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`has become incontestable pursuant to the provisions of 15 U.S.C. § 1065.
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`10. On September 22, 1992, Warren Sewell was granted U.S. Trademark
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`Registration No. 1719502 for the COTTON BROTHERS Word Mark on the
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`Principal Register of the USPTO for use in connection with “clothing made in
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`whole, or in substantial part of cotton; namely, jackets, caps, hats, socks, and
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`sweaters,” in International Class 25 (the “‘502 Registration”). The ‘502
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`Registration has become incontestable pursuant to the provisions of 15 U.S.C.
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`§ 1065.
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`11. Later in the 1990s, Warren Sewell adopted and began using in
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`connection with its clothing products, a design element consisting of a realistic
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`Case 1:13-cv-03141-SCJ Document 1 Filed 09/20/13 Page 5 of 17
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`depiction of a cotton boll, as an extension of, and to reinforce, the “COTTON”
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`element of its COTTON BROTHERS Word Mark (the “Original COTTON
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`BROTHERS Design Mark”). One iteration of the Original COTTON BROTHERS
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`Design Mark, as used by Warren Sewell in combination with the COTTON
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`BROTHERS Word Mark, is depicted below:
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`12. On February 27, 2012, Warren Sewell assigned to Plaintiff all right,
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`title, and interest in and to the COTTON BROTHERS trademark and to the ‘492
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`and ‘502 Registrations, and the goodwill associated therewith, including the right
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`to sue for past infringement.
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`13. On March 27, 2012, Plaintiff granted to Warren Sewell an exclusive,
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`perpetual, worldwide license to use the COTTON BROTHERS trademark in
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`connection with the use, manufacture, distribution, marketing, advertising,
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`promotion, and sale of suits, sport coats, and trousers.
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`14. On July 17, 2013, Plaintiff and Warren Sewell entered into a nunc pro
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`tunc trademark assignment, with an effective date of February 27, 2012, whereby
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`Warren Sewell assigned to Plaintiff all right, title, and interest in and to the
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`Case 1:13-cv-03141-SCJ Document 1 Filed 09/20/13 Page 6 of 17
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`Original COTTON BROTHERS Design Mark, and the goodwill associated
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`therewith, including the right to sue for past infringement as the intent of Plaintiff
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`and Warren Sewell as of February 27, 2012 was to transfer both the COTTON
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`BROTHERS Word Mark and the Original COTTON BROTHERS Design Mark to
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`Plaintiff.
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`15. Also on July 17, 2013, Plaintiff and Warren Sewell entered into a first
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`amendment to their March 27, 2012 trademark license agreement, with an effective
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`date of March 27, 2012, whereby Plaintiff granted to Warren Sewell an exclusive,
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`perpetual, worldwide license to use the Original COTTON BROTHERS Design
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`Mark in connection with the use, manufacture, distribution, marketing, advertising,
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`promotion, and sale of certain clothing products, namely suits, sport coats, and
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`trousers.
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`16.
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`In or about November 2012, Plaintiff began using an updated version
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`of the COTTON BROTHERS Design Mark in connection with its clothing
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`products in which the design element again consisted of a realistic depiction of a
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`cotton boll (the “Updated COTTON BROTHERS Design Mark”). The Updated
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`COTTON BROTHERS Design Mark is depicted below with the COTTON
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`BROTHERS Word Mark.
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`Case 1:13-cv-03141-SCJ Document 1 Filed 09/20/13 Page 7 of 17
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`17. Plaintiff’s Updated COTTON BROTHERS Design Mark conveys the
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`same overall commercial impression as the Original COTTON BROTHERS
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`Design Mark as they both consist of realistic depictions of a cotton boll.
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`18. The use by Plaintiff, itself and/or through Warren Sewell, of the
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`COTTON BROTHERS Word Mark and the Original COTTON BROTHERS
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`Design Mark in connection with clothing has been valid and continuous since the
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`1990s and has not been abandoned.
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`19. Plaintiff, itself and/or through Warren Sewell, has continuously used
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`the Original COTTON BROTHERS Design Mark and Updated COTTON
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`BROTHERS Design Mark (collectively “COTTON BROTHERS Design Marks”)
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`directly on their clothing items and on hang tags affixed to their clothing items.
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`20. As a result of the continuous use and extensive promotion of the
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`COTTON BROTHERS Design Marks by Plaintiff, itself or through Warren
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`Sewell, the consuming public has come to recognize, and does recognize, the
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`COTTON BROTHERS Design Marks as being used by Plaintiff or by a single
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`source, and to associate and identify those marks with Plaintiff or with a single
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`source. Plaintiff derives substantial goodwill and value from this identification by
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`Case 1:13-cv-03141-SCJ Document 1 Filed 09/20/13 Page 8 of 17
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`the consuming public.
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`B. Defendant’s Unlawful Activities
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`21. Upon information and belief, Defendant is a Tuscaloosa,
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`Alabama-based clothing company formed in 2009 that sells clothing products
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`under the cotton design logo depicted below (Defendant’s “Southern Shirt Design
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`Logo”):
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`22. On April 9, 2013, Defendant filed U.S. Application Serial No.
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`85/899,311 with the USPTO (the “‘311 Application”) to register Defendant’s
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`Southern Shirt Design Logo for use in connection with, among other things,
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`“clothing, namely t-shirts, tank tops, v-necks, sweatshirts, pullovers, polo shirts,
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`button down shirts, pants, shorts, hats, caps, visors, jackets, short sleeve shirts,
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`long sleeve shirts,” in International Class 25. In connection with filing its ‘311
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`Application, Defendant identified its date of first use as August 21, 2009.
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`23. On March 12, 2013, Defendant filed U.S. Application Serial No.
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`85/873,773 with the USPTO (the “‘773 Application”) to register the cotton boll
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`Case 1:13-cv-03141-SCJ Document 1 Filed 09/20/13 Page 9 of 17
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`component of Defendant’s Southern Shirt Design Logo, standing alone (shown
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`below), for use in connection with, among other things, “T-shirts, Hats, tank tops,”
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`in International Class 25 (“Defendant’s Cotton Design Logo”).
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`In connection with filing the ‘773 Application, Defendant identified its date of first
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`use as August 21, 2009.
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`24. Upon information and belief, Defendant was aware of the existence of
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`Warren Sewell and its use of the COTTON BROTHERS Word Mark and the
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`Original COTTON BROTHERS Design Mark at the time it first adopted and
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`began using Defendant’s Southern Shirt Design Logo and Defendant’s Cotton
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`Design Logo.
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`25. On June 26, 2013, the USPTO issued Office Actions preliminarily
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`refusing to register the ‘311 Application and the ‘773 Application because, among
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`other things, Defendant failed to recite in its identification of Class 25 goods that
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`its clothing products have or exhibit cotton.
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`26. Also on June 26, 2013, Defendant, through counsel, sent a letter to
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`Case 1:13-cv-03141-SCJ Document 1 Filed 09/20/13 Page 10 of 17
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`Plaintiff claiming that Plaintiff’s COTTON BROTHERS Design Mark infringes
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`upon Defendant’s Cotton Design Logo because it is “substantively similar” to
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`Defendant’s logo and is used in connection with “products similar to those
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`designed and sold by [Defendant].” According to Defendant’s counsel, Plaintiff’s
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`use of its COTTON BROTHERS Design Mark “is likely to cause consumers to
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`mistakenly believe that [Plaintiff’s] goods are licensed or endorsed by or are
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`otherwise legitimately affiliated with [Defendant].” Further, “[t]he similarity of
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`the products sold by the two companies and the market overlap contribute to the
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`likelihood of consumer confusion in the marketplace.” Thus, Defendant’s counsel
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`demanded that Plaintiff, among other things, “immediately cease and desist from
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`the advertisement and sale of all products bearing [Plaintiff’s COTTON
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`BROTHERS Design Mark],” or else Defendant would “not hesitate to pursue all
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`legal remedies available to recover damages.” A true and correct copy of
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`Defendant’s June 26, 2013 letter is attached as Exhibit 1.
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`27. Plaintiff agrees with Defendant and its counsel that Plaintiff’s
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`COTTON BROTHERS Design Marks and Defendant’s Cotton Design Logo are
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`“substantively similar,” and that Plaintiff’s clothing products are “similar to those
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`designed and sold by” Defendants. Plaintiff further agrees with Defendant and its
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`counsel that the parties’ use of their substantively similar marks in connection with
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`Case 1:13-cv-03141-SCJ Document 1 Filed 09/20/13 Page 11 of 17
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`similar clothing products is likely to lead to consumer confusion as to the source,
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`sponsorship, or affiliation of those products.
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`28. Plaintiff’s COTTON BROTHERS Design Marks and Defendant’s
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`Cotton Design Logo are both intended to depict a design of a genuine cotton boll.
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`29. Plaintiff has attempted to resolve this dispute short of litigation. For
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`example, on July 17, 2013, counsel for Plaintiff wrote a letter to Defendant’s
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`counsel informing him of Plaintiff’s prior and superior rights in the cotton logo,
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`and noting that despite its priority Plaintiff was willing to consider an amicable
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`resolution of the matter that might permit Defendant to make certain uses of its
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`Cotton Design Logo. A true and correct copy of Plaintiff’s counsel’s July 17, 2013
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`letter is attached as Exhibit 2.
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`30. As of the date of the filing of this Complaint, the parties have been
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`unable to resolve their dispute.
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`31. As of the date of the filing of this Complaint, Defendant, upon
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`information and belief, continue to use Defendant’s Cotton Design Logo in
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`connection with the sale of its clothing products.
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`FIRST CAUSE OF ACTION
`(Federal Unfair Competition and False Designation of Origin
`under 15 U.S.C. § 1125(a)(1)(A))
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`32. Plaintiff repeats and incorporates by reference the allegations
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`contained in the foregoing paragraphs as if fully set forth herein.
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`33. Plaintiff’s rights in the COTTON BROTHERS Design Marks in
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`connection with clothing products predate Defendant’s first use of Defendant’s
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`Cotton Design Logo in connection with clothing products.
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`34. Defendant’s unauthorized use of a colorable imitation of Plaintiff’s
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`COTTON BROTHERS Design Marks in connection with the advertising,
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`promotion, offering for sale, and sale of clothing products constitutes unfair
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`competition, false representation, and false designation of origin in violation of
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`Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and is causing and, unless
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`enjoined by this Court will continue to cause, confusion, to cause mistake, or to
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`deceive purchasers and consumers as to the source, origin, affiliation, or
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`sponsorship of Defendant’s clothing products.
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`35. As a direct and proximate result of Defendant’s unfair competition,
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`false representation, and false designation of origin as herein alleged, Plaintiff has
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`suffered, and will continue to suffer, irreparable damage and inherently
`
`unquantifiable injury and harm to its business, reputation, and customer goodwill.
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`Defendant’s unfair competition, false representation, and false designation of
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`origin has caused and will continue to cause Plaintiff to lose sales to which it
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`would otherwise be entitled, unless such unlawful conduct is enjoined by this
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`Court.
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`36. Plaintiff is entitled to recover all damages sustained by Defendant’s
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`actions, all profits realized by Defendant through its unlawful use of a colorable
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`imitation of Plaintiff’s COTTON BROTHERS Design Marks in connection with
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`the advertising, promotion, offering for sale, and sale of clothing products, and the
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`costs of this action.
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`37. Defendant’s actions have been willful and deliberate, with full
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`knowledge and utter disregard of Plaintiff’s rights in the COTTON BROTHERS
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`Design Marks, therefore entitling Plaintiff to recover treble damages and/or profits
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`and an award of reasonable attorneys’ fees against Defendant.
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`SECOND CAUSE OF ACTION
`(Unfair and Deceptive Trade Practices under O.C.G.A. § 10-1-370 et. seq.)
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`38. Plaintiff repeats and incorporates by reference the allegations
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`contained in the foregoing paragraphs as if fully set forth herein.
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`39. The acts of Defendant complained of herein constitute deceptive trade
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`practices under the Georgia Uniform Deceptive Trade Practices Act, O.C.G.A.
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`§ 10-1-372(a) (2009).
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`40. Defendant’s unauthorized use of a colorable imitation of Plaintiff’s
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`COTTON BROTHERS Design Marks has caused substantial injury to the public
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`and to Plaintiff, and Plaintiff is entitled to injunctive relief.
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`41. Defendant’s conduct has been willful and in bad faith, making this an
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`exceptional case under O.C.G.A. § 10-1-372(b)(2).
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`THIRD CAUSE OF ACTION
`(Unfair Competition under O.C.G.A. § 23-2-55 and the Common Law of
`Georgia)
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`42. Plaintiff repeats and incorporates by reference the allegations
`
`contained in the foregoing paragraphs as if fully set forth herein.
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`43. Defendant’s unauthorized use of a colorable imitation of Plaintiff’s
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`COTTON BROTHERS Design Marks is likely to cause confusion, to cause
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`mistake, or to deceive purchasers and customers as to the source, origin, affiliation,
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`or sponsorship of Defendant’s clothing products. The consuming public is likely
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`to believe that said goods of Defendant originate from, or are sponsored or
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`affiliated with, the source of goods bearing Plaintiff’s COTTON BROTHERS
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`Design Marks, and that Defendant’s use of a colorable imitation of Plaintiff’s
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`COTTON BROTHERS Design Marks is authorized when, in fact, Defendant has
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`no such authorization.
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`44. Upon information and belief, Defendant’s unauthorized use of a
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`colorable imitation of Plaintiff’s COTTON BROTHERS Design Marks has been
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`intentionally, deliberately, willfully, and wantonly undertaken with a view and
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`purpose of trading on and benefiting from the substantial reputation and goodwill
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`associated with Plaintiff’s COTTON BROTHERS Design Marks.
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`45. Defendant’s conduct alleged herein constitutes unfair competition in
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`violation of O.C.G.A. § 23-2-55 and the common law of the State of Georgia.
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`46. As a direct and proximate result of Defendant’s unlawful conduct, as
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`herein alleged, Plaintiff has suffered irreparable damage and inherently
`
`unquantifiable injury and harm to its business, reputation, and customer goodwill.
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`Such conduct has caused Defendant to achieve sales and profits to which it is not
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`entitled.
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`47. Defendant’s conduct has caused substantial injury to the public and to
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`Plaintiff, and Plaintiff is entitled to injunctive relief, Defendant’s profits, and
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`Plaintiff’s actual damages, costs, and reasonable attorneys’ fees.
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`48. The acts of Defendant complained of herein showed willful
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`misconduct, malice, fraud, wantonness, oppression, or that entire want of care that
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`would raise the presumption of conscious indifference to the consequences of those
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`actions, and thus form a basis for punitive damages under O.C.G.A.
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`§ 51-12-5.1(b).
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays that a judgment be entered:
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`1.
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`Permanently enjoining Defendant and all affiliated or related entities,
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`agents, officers, employees, representatives, successors, assigns, attorneys, and all
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`other persons acting for, with, by, through, or under authority from Defendant, or
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`in concert or participation with Defendant, pursuant to the powers granted to this
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`Court by 15 U.S.C. § 1116 and relevant state statutes, from:
`
`a.
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`using Plaintiff’s COTTON BROTHERS Design Marks, and
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`any other marks that are confusingly similar imitations of
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`Plaintiff COTTON BROTHERS Design Marks, including
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`without limitation Defendant’s Cotton Design Logo, in
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`connection with Defendant’s business or services;
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`b.
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`using any trademark, name, logo, or source designation of any
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`kind that is a copy, reproduction, colorable imitation, or
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`simulation of or confusingly similar to, or in any way similar to,
`
`the trademarks, logos, or source designations of Plaintiff, or is
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`likely to cause confusion, mistake, deception, or public
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`misunderstanding that Defendant’s business or goods are the
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`business or goods of Plaintiff, or are sponsored by, affiliated
`
`with, or in any way related to Plaintiff.
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`2.
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`Awarding Plaintiff compensatory and punitive damages; an
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`accounting for all profits received by Defendant’s unauthorized use of a colorable
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`Case 1:13-cv-03141-SCJ Document 1 Filed 09/20/13 Page 17 of 17
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`imitation of Plaintiff’s COTTON BROTHERS Design Marks; reasonable
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`attorneys’ fees under 15 U.S.C. § 1117 and O.C.G.A. § 10-1-373(b)(2); and a
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`trebling of damages and profits as authorized by law.
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`3.
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`Directing Defendant to immediately surrender or deliver up for
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`destruction all clothing products, apparel products, clothing accessories, labels,
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`signs, packages, receptacles, advertising, promotional materials or the like in the
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`possession, custody, or control of Defendant that are found to adopt or to infringe
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`Plaintiff’s COTTON BROTHERS Design Marks.
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`4.
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`Granting Plaintiff such other and further relief as the Court may deem
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`just and proper.
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`This the 20th day of September, 2013
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`By: /s/ James W. Faris
`KILPATRICK TOWNSEND & STOCKTON LLP
`Christopher P. Bussert (GA Bar. No. 099085)
`James W. Faris (GA Bar No. 452293)
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309
`Telephone: (404) 815-6500
`Fax: (404) 815-6555
`E-Mail: CBussert@KilpatrickTownsend.com
` JFaris@ KilpatrickTownsend.com
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`Attorneys for Plaintiff Overton Apparel, Inc.
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`Case 1:13-cv-03141-SCJ Document 1-1 Filed 09/20/13 Page 1 of 3
`Case 1:13—cv—O3141—SCJ Document 1-1 Filed 09/20/13 Page 1 of 3
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