Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA652098
`ESTTA Tracking number:
`01/26/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91219978
`Plaintiff
`My Castle Realty, Inc.
`My Castle Realty, Inc.
`10560 N.W. Freeway
`Houston, TX 77092
`UNITED STATES
`tim@headleyiplaw.com
`Other Motions/Papers
`Tim Headley
`tim@headleyiplaw.com
`/Tim Headley/
`01/26/2015
`2015 01 22 1 Complaint.pdf(151815 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA652098
`ESTTA Tracking number:
`01/26/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91219978
`Plaintiff
`My Castle Realty, Inc.
`My Castle Realty, Inc.
`10560 N.W. Freeway
`Houston, TX 77092
`UNITED STATES
`tim@headleyiplaw.com
`Other Motions/Papers
`Tim Headley
`tim@headleyiplaw.com
`/Tim Headley/
`01/26/2015
`2015 01 22 1 Complaint.pdf(151815 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`Case 4:15-cv-00206 Document 1 Filed in TXSD on 01/22/15 Page 1 of 7
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`
`UNITED STATES DISTRICT COURT
`
`
`MY CASTLE REALTY, INC.,
`
`
`Plaintiff
`
`
`versus
`
`
`Rory J. Higgins,
`
`
`SOUTHERN DISTRICT OF TEXAS
`
`Civil Action No. 4:15-cv-206
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Complaint
`
`
`Defendant.
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`
`
`
`
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`Plaintiff My Castle Realty, Inc. (“MCR”) files this suit for unfair competition,
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`trademark infringement, and dilution against Rory J. Higgins (“Higgins”).
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`
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`1.
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`The court has jurisdiction over the subject matter of this action under 15 U.S.C.
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`§ 1121, 28 U.S.C. §§ 1331, 1338(a), 1338(b), and the doctrine of pendent
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`jurisdiction.
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`2.
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`MCR started business June 1, 2006, as a division of My Castle FSBO (for sale by
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`owner) which began in 2001. MCR has listings in Texas and throughout the rest
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`of the United States.
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`3.
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`MCR has been using the following marks to promote its commercial and residential
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`real estate agency services in Houston, Texas, and elsewhere in the United States:
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`Page 1 of 7
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`Complaint: My Castle Realty v. Higgins
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`Case 4:15-cv-00206 Document 1 Filed in TXSD on 01/22/15 Page 2 of 7
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`Date of first use Date of first use in
`commerce
`
`At least as early as
`June 1, 2006
`
`
`At least as early
`as June 1, 2006
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`
`
`At least as early as
`January 1, 2001
`
`
`At least as early as
`June 1, 2006
`
`
`
`At least as early
`as January 1,
`2001
`
`At least as early
`as June 1, 2006
`
`
`
`
`
`Mark
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`My Castle Realty
`
`
`
`
`
`
`
`
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`4.
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`MCR and My Castle FSBO have been in an exclusive vendor relationship with
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`Steven Kaufman and Zeus Mortgage since 2003. Steven Kaufman hired Higgins
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`as the Marketing Director in 2005. At that time Higgins became MCR’s primary
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`advertising and marketing contact with Zeus Mortgage.
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`5.
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`During this period Higgins developed extensive knowledge of MCR’s business.
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`He presented at MCR’s and My Castle FSBO’s joint monthly seminars, joint trade
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`shows, and joint radio programs on Biz Radio 650, in Houston, Texas.
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`6.
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`Higgins has also been in attendance at the Houston Business Journal Brokerage
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`award ceremonies, in which MCR has been recognized as a Top 10 Brokerage
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`since 2007.
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`7.
`
`On a personal level, Higgins frequented poker games held at the homes of the
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`MCR owners, and heard intimate details of MCR’s business during those times.
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`The MCR owners considered him not only a business partner but a friend as well.
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`8.
`
`Higgins even employed Gary F. Bisha, the President of MCR, as his Buyer’s
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`Complaint: My Castle Realty v. Higgins
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`Page 2 of 7
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`Case 4:15-cv-00206 Document 1 Filed in TXSD on 01/22/15 Page 3 of 7
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`Agent in 2007 for the purchase of Higgins’ first home, located at 4950 Woodway.
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`9.
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`MCR was made aware by Steven Kaufman that Higgins’ employment was
`
`terminated by Zeus Mortgage somewhere around 2009. Later MCR was made
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`aware that Higgins had decided to become a licensed Realtor with Keller
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`Williams.
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`10. MCR was surprised that Higgins did not express any interest in joining MCR,
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`because MCR had thought that it always had a good relationship with Higgins.
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`11. MCR has invested many resources to build its name and reputation since 2006.
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`MCR is recognized as an industry leader.
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`12.
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`In addition to contributing to The Houston Business Journal, MCR is also a
`
`frequent contributor to HoustonAgentsMagazine.com, and is a Texas Monthly
`
`Five Star award winner, which recognizes the Top 7% of agent throughout
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`Texas.
`
`13. As a result of the extensive sales and promotion of its services, MCR has bullt up
`
`highly valuable goodwill in MCR's marks, and such goodwill has become closely
`
`and uniquely identified and associated with MCR.
`
`14. MCR's marks are distinctive, well-known, and famous with respect to the services
`
`offered in connection with MCR's marks, and became distinctive, well-known,
`
`and famous with respect to such goods and services prior to Applicant's filing
`
`date.
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`15. MCR actively uses its marks in the course of its business.
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`16.
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`In September 2014 MCR learned that Higgins was attempting to brand himself as
`
`“Castle Realty” in Houston and other markets. MCR also learned that Higgins
`
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`Complaint: My Castle Realty v. Higgins
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`Page 3 of 7
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`Case 4:15-cv-00206 Document 1 Filed in TXSD on 01/22/15 Page 4 of 7
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`had hired two former Zeus employees as agents with his “Castle Realty”
`
`company. Both of these agents had been very involved with the MCR/Zeus
`
`relationship.
`
`17.
`
`In late 2014, MCR learned that Higgins had filed an application with the United
`
`States Patent and Trademark Office for “CASTLE REALTY”. Therefore, MCR
`
`reached out to Higgins and asked him to desist with his trademark application,
`
`but he feigned ignorance to MCR’s use of the name “My Castle Realty”. Higgins
`
`claimed that he thought that MCR was some type of ForSaleByOwner Realty,
`
`when in fact, since the time that he began working with MCR, he has known
`
`MCR’s business and MCR’s business model.
`
`18. MCR believes that it will be damaged by the registration of CASTLE REALTY as
`
`shown in Higgins’ application serial number 86154288, international class 036,
`
`for commercial and residential real estate agency services. Therefore, on
`
`December 31, 2014, MCR filed Opposition No. 91219978 before the Trademark
`
`Trial and Appeal Board.
`
`19. MCR has also learned that Higgins is using the mark “Castle Realty” on his web
`
`sites, www.castlerealty.com and www.houstoncastles.com, to sell his realty
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`services. He is also using the name “Houston Castles Blog” for his blog, at
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`which blog he also promotes his web site www.houstoncastles.com.
`
`20. One of Higgins’ agents, Roger Salinas, has a Facebook page on which he shows
`
`a nameplate for his office that states his name, and states “Castle Realty”.
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`21. Higgins’ unauthorized use of confusingly similar trademarks, as set forth above, is
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`likely to cause confusion as o his affiliation with MCR, or with MCR’s services.
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`Complaint: My Castle Realty v. Higgins
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`Page 4 of 7
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`Case 4:15-cv-00206 Document 1 Filed in TXSD on 01/22/15 Page 5 of 7
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`22.
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`In addition to a likelihood of confusion between MCR’s marks and Higgins’ use
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`of similar marks for the same services, there has also been actual confusion.
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`On January 2, 2015, MCR received a letter from Bentwater Yacht & Country
`
`Club, addressed to Higgins of “Castle Realty”, at MCR’s address.
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`23. Higgins’ unauthorized uses of MCR’s trademarks constitute the use of a
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`misleading representation, or false advertising, in violation of 15 U.S.C. § 1125(a).
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`Unless enjoined, Higgins will continue his unauthorized use of MCR’s trademarks,
`
`resulting in a continuing likelihood of confusion and irreparable injury to MCR, for
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`which MCR has no adequate remedy at law.
`
`24. Higgins’ actions, as alleged above, constitute injury to and dilution of MCR's
`
`registered trademark, under 15 U.S.C. § 1125(c). Unless enjoined, Higgins will
`
`continue his diluting activities, resulting in irreparable injury to MCR, for which MCR
`
`has no adequate remedy at law.
`
`25. Higgins’ actions, as alleged above, are likely to cause dilution of MCR's trademarks
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`under § 16.103 of the Texas Business & Commerce Code. Unless enjoined,
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`Higgins will continue his diluting activities, resulting in irreparable injury to MCR,
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`for which MCR has no adequate remedy at law.
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`26. Higgins’ actions, as alleged above, constitute common law trademark infringement
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`and unfair competition under Texas law. Unless enjoined, Higgins will continue
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`his infringing activities, resulting in irreparable injury to MCR, for which MCR has
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`no adequate remedy at law.
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`27. Higgins is clearly aware that MCR’s trademarks are used by MCR to identify its
`
`real estate services. However, Higgins has knowingly refused to discontinue his
`
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`Complaint: My Castle Realty v. Higgins
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`Page 5 of 7
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`
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`Case 4:15-cv-00206 Document 1 Filed in TXSD on 01/22/15 Page 6 of 7
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`use of MCR’s trademarks to sell his real estate services. Therefore, Higgins’
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`continued infringement of MCR’s rights is willful and deliberate.
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`28. MCR is entitled to recover its damages, Higgins’ profits, trebling of all damages
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`and profits awarded, costs of suit, and attorneys' fees from Higgins.
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`
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`Prayer for Relief
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`MCR prays for the following relief:
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`29.
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`That Higgins and his agents and employees, and all others in concert or
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`participation with him, be preliminarily and permanently enjoined from using MCR’s
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`trademarks to sell Higgins’ services;
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`30.
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`That Higgins be ordered, pursuant to 15 U.S.C. § 1118, to deliver up for destruction
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`all literature, signs, labels, prints, packages, wrappers, containers, advertising
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`materials, stationery, and any other items in his possession or control which
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`contain the infringing words “Castle Realty”, either alone or in combination with
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`other words or symbols, and that Higgins be ordered to deliver up for destruction
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`all plates, molds, matrices, masters, and other means of making any of the
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`infringing items;
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`31.
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`That Higgins be ordered to file with the Court, and to serve on MCR, within thirty
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`(30) days after the entry of an injunction, a report in writing under oath setting forth
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`in detail the manner and form in which he has complied with the injunction;
`
`32.
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`That MCR be awarded its damages, defendants’ profits, trebling of all damages
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`and profits awarded, costs of suit, and attorneys' fees; and
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`33.
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`That MCR have such further relief to which it may be entitled.
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`Page 6 of 7
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`Complaint: My Castle Realty v. Higgins
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`Case 4:15-cv-00206 Document 1 Filed in TXSD on 01/22/15 Page 7 of 7
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`Respectfully submitted,
`
`
`Tim Headley
`Attorney-in-Charge for My Castle Realty, Inc.
`State Bar No. 09325210
`Southern District Bar No. 1003
`7941 Katy Freeway, Suite 506
`Houston, TX 77024-1924
`tim@headleyiplaw.com
`www.headleyiplaw.com
`Telephone: 713-467-8500
`Telecopier: 713-467-8501
`
`
`
`
`Complaint: My Castle Realty v. Higgins
`
`
`Page 7 of 7
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