Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA606805
`ESTTA Tracking number:
`05/28/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056828
`Defendant
`Al Moudabber Food Concepts SAL
`FADI G BOUMITRI
`1797 PEARL RD
`BURNSWICK, OH 44122
`UNITED STATES
`BoumitriLaw@gmail.com
`Opposition/Response to Motion
`Fadi G. Boumitri
`BoumitriLaw@gmail.com
`/Fadi G. Boumitri/
`05/28/2014
`LOTW - Opposition to Petitioner's Motion for Summary Judgment.pdf(210371
`bytes )
`LOTW - Signed Registrant's Answers to Interrogatories.pdf(748186 bytes )
`LOTW - License Agreement with Pronto Signed by Marc Moudab-
`ber.pdf(1647187 bytes )
`LOTW - Signed Affidavit of Thomas Bayeh.pdf(123389 bytes )
`LOTW - Signed License Agreement with Thomas Bayeh.pdf(175478 bytes )
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`THE SAUL ZAENTZ COMPANY,
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`Petitioner
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`AL MOUDABBER FOOD CONCEPTS SAL
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`Registrant
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`Cancellation No. 92056828
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`REGISTRANT’S OPPOSITION TO PETITIONER’S MOTION FOR SUMMARY
`JUDGMENT
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`AND, ALTERNATIVELY,
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` REGISTRANT’S RULE 56 MOTION FOR SUMMARY JUDGMENT AGAINST
`PETITIONER AS TO THE ABANDONMENT CLAIM
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`I.
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`INTRODUCTION
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`Al Moudabber Food Concepts SAL (“Registrant”) has shown proof of use of the mark in
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`commerce within the last three years. Such proof was provided in discovery. In addition,
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`Registrant has shown intent to continue use of the mark sufficient to overcome any prima facie
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`evidence of abandonment. Such proof was provided in discovery. As such, The Saul Zaentz
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`Company (“Petitioner”) is not entitled to summary judgment on the grounds of abandonment.
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`Rather, Petitioner has cannot possibly present evidence to show intent not to resume use of the
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`mark. As such, under Fed. R. Civ. P. 56(f), Registrant respectfully requests this Honorable Board
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`to grant summary judgment in favor of Registrant with regard to the issue of abandonment.
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`II.
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`PETITIONER’S MOTION FOR SUMMARY JUDGMENT ON THE GROUND
`OF ABANDONMENT MUST BE DEFEATED
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`1
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`LAW
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`Summary judgment under Fed. R. Civ. P. 56 must be denied where there is a dispute as to
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`the facts of the controversy or the inferences that may be drawn from those facts. See United
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`States v. Diebold, Inc., 369 U.S. 654, 655 (1962). Summary judgment is only appropriate when
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`the pleadings, depositions, answers to interrogatories, and admissions on file, together with
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`affidavits, if any, show that there is no genuine issue as to any material fact and the moving party
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`is entitled to judgment as a matter of law.” Orvosh v. Program of Group Ins. for Salaried
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`Employees of Volkswagen of Am., Inc., 222 F.3d 123, 129 (3d Cir. 2000). In deciding a summary
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`judgment motion, the court must draw all reasonable inferences in favor of the nonmoving party,
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`and it may not make credibility determinations or weigh the evidence.” Reeves v. Sanderson
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`Plumbing Products, Inc., 530 U.S. 133, 150 (2000). “[T] the party moving for summary
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`judgment…bears the initial burden of identifying evidence that demonstrates the absence of any
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`genuine issue of material fact.” Miller v. Hersman, 594 F.3d 8, 12 (D.C. Cir. 2010). The
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`evidence of the nonmovant is to be believed and all justifiable inferences are to be drawn in
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`[nonmovant’s] favor. First Nat’l Bank of Arizona v. Cities Service Co., 391 U.S. 253, 20 L. Ed.
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`2d 569, 88 S. Ct. 1575 (1968). The burden of persuasion on a party moving for summary
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`judgment “is a stringent one which always remains with the moving party. If there remains any
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`doubt as to whether a trial is necessary, summary judgment should not be granted.” Fagan v.
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`Nordic Prince, Inc., CIV.A. 91-5143, 1992 WL 361704 (D.N.J. July 17, 1992).
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`15 U.S.C. 1127 states, in pertinent part:
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`A mark shall be deemed to be “abandoned” if…its use has been discontinued with intent
`not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse
`for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark
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`2
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`means the bona fide use of such mark made in the ordinary course of trade, and not made
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`merely to reserve a right in a mark. 15 U.S.C. 1127.
`Furthermore, “Abandonment of a trademark or service mark must be strictly proven.” Burgess v.
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`Gilman, (2007) 475 F.Supp.2d 1051.
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`Petitioner’s argument in favor of summary judgment is simply comprised of a brief
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`ARGUMENT
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`statement on the standard of review for summary judgment, followed by the following statement:
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`“Here, there are no disputes as to any material fact relating to the issue of
`abandonment. [Registrant] admits that is has never used its alleged mark in
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`commerce in the United States. [Registrant] admits (sic) has not used the mark for
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`at least three years. There is no evidence that Petitioner could find, or that
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`[Registrant] could produce, to show any use of the mark in the United States in
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`connection with the services in the application. Accordingly, Petitioner is also
`entitled to summary judgment on the ground of abandonment.” (Petitioner’s
`Motion for Judgment on the Pleadings or Alternatively for Summary Judgment at
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`8-9).
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`Amended Answer
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`Petitioner’s arguments were written when Petitioner believed the original Answer, pled by
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`Registrant, would serve as proof that Registrant admits never having used the mark.
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`Subsequently, Registrant made a motion to file an Amended Answer, which motion was granted.
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`The Amended Answer was filed. In the Amended Answer, Registrant blatantly denies that the
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`mark has never been used. This denial clearly creates a genuine dispute of material fact. As such,
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`Petitioner’s Motion for Summary Judgment must be denied.
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`3
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`Discovery
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`Even prior to the filing of the Amended Answer, Petitioner filed its Motion for Summary
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`Judgment with willful disregard to Registrant’s answers to discovery. The answers to discovery
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`clearly show use of the mark by Registrant. Specifically, Petitioner ignores answers to
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`Interrogatory numbers 10, 11, 14, 15, 17, 20, 23, and 25, in which Registrant explains how the
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`mark is used in the United States (Interrogatory Answers attached as Exhibit A). Petitioner
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`further ignores documents produced in discovery which pertain to Registrant’s entry into
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`agreement with a United States limited liability company, located in the state of Ohio, licensing
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`the exclusive rights to use the mark in a specified territory within the United States for one year,
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`which license agreement overcomes the prima facie evidence of abandonment of the mark.
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`Petitioner willfully ignores these answers and documents because they create a dispute of
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`material fact, and render Petitioner’s Motion for Summary Judgment inappropriate and
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`necessarily denied. As such, Petitioner’s Motion for Summary Judgment must be denied.
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`Use in Commerce
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`In “Petitioner’s Opposition to Registrant’s Motion for Leave to Amend,” Petitioner claims it
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`moved for summary judgment because “there are no facts to show that [Registrant] has made
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`trademark use of the mark in the United States since it was registered in 2009. In the Motion for
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`Summary Judgment, Petitioner demonstrated [Registrant] has not produced one shred of
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`evidence that the mark has been actually used in the United States in connection with the
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`services ever…This is undisputed.” Petitioner, again, blatantly disregards the discovery produced
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`(see above argument). Petitioner then asserts that “[Registrant] admits it has no physical location
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`in the United States for its restaurant and thus cannot logically be providing restaurant services.”
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`(Petitioner’s Opp. at 3). Here, Petitioner simply misstates the law and conveniently continues to
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`ignore case law provided by Registrant which states, in short, that advertising in the United
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`States for services outside of the United States is, in fact, use in commerce. (See: International
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`Bancorp LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco, 329 F3d 359).
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`This use in commerce is sufficient to negate any “abandonment” claims Petitioner raises.
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` As such, Petitioner’s Motion for Summary Judgment must be denied.
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`International Bancorp
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`Petitioner is quick to point out that Registrant relies on a 10 year old case from the 4th
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`Circuit to avoid cancellation of the mark when Registrant refers to Int’l Bancorp. Petitioner is
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`also right that this is not controlling law in the TTAB, though it may be persuasive. However,
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`Petitioner fails to produce law contrary to the finding in Int’l Bancorp, whether controlling or
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`otherwise. Petitioner is quick to point out the differences between Int’l Bancorp and the present
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`case, and no doubt there are differences. However, the differences are not substantial with
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`reference to the holdings that come out of the case. The court in Int’l Bancorp held that “United
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`States citizens went to and gambled at the casino. This concession, when taken together with the
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`undisputed fact that the Casino de Monte Carlo is a subject of a foreign nation, makes
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`unavoidable the legal conclusion that foreign trade was present here, and that as such, so also
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`was “commerce” under the Lanham Act.” (Int’l Bancorp LLC v. SBM, 66 USPQ2d 1705, 329
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`F3d 359, at page 1710). In the present case, 1) the mark has been used in Lebanon and
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`throughout the Middle East since 2006 in connection with restaurants/services; 2) Registrant has
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`advertised its services specifically in the United States since 2008, and has been working with a
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`licensee in the United States to grow the brand within the United States; and 3) United States
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`citizens frequent the many locations of restaurants providing services bearing the mark. These
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`facts are almost identical with those in Int’l Bancorp, making the holding pertinent in this case.
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`Petitioner holds that, even if the holding in Int’l Bancorp were precedential, it simply does
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`not hold that a restaurant owner in Lebanon can have rights in the United States or show use
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`sufficient to support a US trademark registration. Here, Petitioner mucks the waters between
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`registration and abandonment. The mark is already registered; the current action speaks only of
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`whether the mark is abandoned in this matter. The holding in Int’l Bancorp, in conjunction with
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`the facts asserted in the discovery answers, are sufficient for a finding of use. Furthermore, it is
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`clear from Petitioner’s arguments that this is an issue of dispute of facts between Petitioner and
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`Registrant, making summary judgment inappropriate. As such, the Board should deny
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`Petitioner’s Motion for Summary Judgment.
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`Failure to Prove Intent Not to Resume Use
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`Furthermore, Petitioner misstates the law by attempting to deem the lack of a physical
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`restaurant location in the United States to be the deciding factor in the abandonment. 15 U.S.C.
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`1127 states :
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`A mark shall be deemed to be “abandoned” if…its use has been discontinued with intent
`not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse
`for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark
`means the bona fide use of such mark made in the ordinary course of trade, and not made
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`merely to reserve a right in a mark. 15 U.S.C. 1127.
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`The plain language of the statute makes clear that Petitioner must prove two things in order to
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`prevail on an abandonment claim: 1. That Registrant discontinued the use of the mark, and 2.
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`That Registrant intended not to resume use of the mark. Petitioner would argue that the lack of a
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`physical location within the United States requires a finding of abandonment. Lack of a physical
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`location within the United States is proof in favor of Petitioner’s assertion that the mark has not
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`been used in commerce in the last three years. Lack of use in commerce in the last three years is
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`prima facie evidence of abandonment. However, this is evidence in favor of abandonment, and
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`not an absolute showing of abandonment. This prima facie evidence of abandonment can be
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`overcome by a show of intent to use the mark. Registrant’s entry into agreement with Pronto,
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`LLC, a United States limited liability company located in the state of Ohio, licensing the
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`exclusive rights to use the mark in a specified territory within the United States for one year,
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`overcomes the prima facie evidence of abandonment of the mark. (License and Use Agreement
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`attached as Exhibit B). The affidavit of Thomas Bayeh – who, as a Member of Pronto, LLC,
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`entered into that License and Use Agreement with Registrant on behalf of Pronto, LLC – further
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`proves that Registrant never intended to abandon the mark, but instead has been working to open
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`locations in the United States in addition to those already opened and opening outside of the
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`United States (Affidavit of Thomas Bayeh attached as Exhibit C). In this affidavit, Mr. Bayeh
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`describes negotiations with Registrant, deals with Registrant, field visits to Registrant’s locations
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`outside of the United States, attempts to open a restaurant in the United States, and signing a
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`second Licensing and Use Agreement with Registrant in his name personally (second License
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`and Use Agreement attached as Exhibit D). This affidavit shows intent to use the mark, negates
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`any intent not to resume use – which intent Petitioner has failed to allege, anyhow – overcomes
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`the prima facie evidence of abandonment of the mark, and shows the existence of a genuine
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`dispute of material fact with regard to whether Registrant has abandoned the mark. As such,
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`Petitioner’s Motion for Summary Judgment is not based on undisputed facts. As such,
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`Petitioner’s Motion for Summary Judgment must be denied.
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`7
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`Further Proof of Intent to Use the Mark
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`Very simply put, Registrant disputes the fact that Registrant has abandoned the mark.
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`Petitioner acknowledges the existence of Registrant’s website and Facebook page, but states only
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`that Registrant makes no reference to a restaurant location in the United States. Petitioner then
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`points out that Registrant has not registered any corporate entities in the United States. Registrant
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`admits both the lack of reference to United States restaurants on the Facebook page and the lack
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`of creation of a corporate entity in the United States. However, Registrant would point out that
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`the Facebook page and website are advertisements in the United States – as is proven by
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`Petitioner’s ability to access those pages and learn about Registrant’s restaurants worldwide from
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`those pages – proving use in commerce in the United States and raising a genuine issue of
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`material fact as to whether the mark is used in commerce. Furthermore, Registrant would point
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`out that Registrant has elected to license the use of the mark to corporate entities in the United
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`States, rather than creating its own entities. Through the License and Use Agreement, Registrant
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`has shown intent to continue use of the mark, raising a genuine issue of material fact in dispute
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`of abandonment. As such, Petitioner’s Motion for Summary Judgment must be denied.
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`Failure to Allege Intent Not to Resume Use
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`The plain language of 15 U.S.C. 1127 makes clear that Petitioner must prove two things in
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`order to prevail on an abandonment claim: 1. That Registrant discontinued the use of the mark,
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`and 2. That Registrant intended not to resume use of the mark. Petitioner has failed to allege that
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`Registrant intended not to resume use of t he mark. As such, Petitioner’s Motion for Summary
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`Judgment must be denied.
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`8
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`III.
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`CONCLUSION AS TO DENIAL OF PETITIONER’S MOTION FOR
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`SUMMARY JUDGMENT
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`It is clear from Registrant’s interactions with Pronto, LLC and Mr. Thomas Bayeh that
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`Registrant did not and does not intent to abandoned the mark. It is further clear from the
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`combination of the case law in Int’l Bancorp and the responses to discovery that Registrant has
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`been using the mark since registration, and does not intent to abandon the mark. For all of these
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`reasons, Registrant respectfully requests the Board deny the Petitioner’s Motion for Summary
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`Judgment.
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`IV.
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`REGISTRANT’S MOTION FOR SUMMARY JUDGMENT UNDER FED. R.
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`CIV. P. 56
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`Registrant would respectfully request the Board to grant summary judgment to Registrant
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`on the issue of abandonment in accordance with Fed. R. Civ. P. 56(f). Registrant has, in defense
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`of Petitioner’s Motion for Summary Judgment, provided the affidavit of Thomas Bayeh, the
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`License and Use Agreement between Registrant and a U.S. company, and the answers to
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`discovery. These documents are summary proof of the use of the mark in commerce.
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`There is no evidence that Petitioner can supply to negate these documents and proof. In fact,
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`the only evidence of nonuse presented by the Petitioner is The Declaration of Jack Hitt. The
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`Declaration of Jack Hitt states 1. That no mention is made of a United States restaurant location
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`on Registrant’s website or Facebook page, 2. That a search of the Registrant’s name and a search
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`9
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`of the mark in various systems did not return references to the use of the mark, and 3. That
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`Registrant did not submit a Declaration of Use when filing the Trademark Application. Even if
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`taken as true, these allegations do not allege or prove intent not to resume use of the mark. Even
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`if taken as true, and even assuming Petitioner properly made an allegation of intent not to resume
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`use of the mark, the attached Exhibits clearly negate that allegation. There is no evidence that
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`Petitioner might supply that would negate the existence of the Exhibits or negate Registrant’s
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`intention to use the mark. As such, there is no genuine issue as to any material fact, and
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`Registrant is entitled to judgment as a matter of law.
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`Respectfully Submitted,
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`_/Fadi G. Boumitri/_________
`Fadi G. Boumitri
`Boumitri Law LLC
`1797 Pearl Rd.
`Brunswick, Ohio 44212
`UNITED STATES
`216-220-3050
`330-220-2106 (fax)
`BoumitriLaw@gmail.com
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`CERTIFICATE OF SERVICE
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` I
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` hereby certify that a true and accurate copy of the foregoing “Registrant’s Opposition to
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`Petitioner’s Motion for Summary Judgment and Alternatively Registrant’s Rule 56 Motion for
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`Summary Judgment Against Petitioner as to the Abandonment Claim” has been duly served by
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`electronic mail and regular US Mail this 28th day of May, 2014 to:
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`Michael A. Grow
`ARENT FOX LLP
`1717 K Street NW
`Washington, DC 20036
`UNITED STATES
`michael.grow@arentfox.com
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`_/Fadi G. Boumitri/_________
`Fadi G. Boumitri
`Attorney for Registrant
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`11
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`
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`IN
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`UNITED
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`PATENT
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`TRADEMARK-OFFICE
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`SAUL ZAENTZ COMPANY,
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`'.Petitioner
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`MOUDABBER VFOODA CONCEPTS‘ SAL
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`Registrant
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`-icancellation No. 920568283
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`R-EG_ISTRA»NT’1S;
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`TO PETI'I.'I0,NER’S' FIRST f,S_ETOF
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`1,
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`Identifythe persons who have the best knowledge c‘onc'em"i.ng the facts at is'sue"i'r"1 this
`pmoeedi‘nge,= inctudizng with'out1imitation the'ff<1..ct.s_.ass.erted in theiP’e..tition rm: Can'<::eJ1la1‘fo‘nw,<
`the and any def€inses'
`filcd by thfifl parties.
`A:
`M-aITc’}.M0uda11ber
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`Addressf: Kaslik-, Jounieh,».Le'ba'non
`V
`Employer:
`:Moufdabber«jFoi0d 'fC‘o:nc*ep;.ts
`Title: ‘Managing-_'Member
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`Josetph Mo.ud-abber
`Jm1.nie’h,»’Lebanm’1
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`‘E-mployer; Al Moud.abber‘.'Food Concepts ‘SAL
`Title: ‘Managing Member
`V
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`3;
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`Identify all persons who Lhavejknowledge concemingé the manner in which R_egistrant’vs
`Mark has: been used in the admrtisivngj or sale ofihc:g‘o6d"s. listed in the .r_egistration of
`‘I?;egistrant’s71\4ark..
`A2
`Marc’-Mouflabber
`
`Joseph Moudmiber
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`Thomas Bayeh
`Add n‘ess:: 64125-.I‘oplar'Drive;,; Indepe_ndenc.e0h'io, 44131
`Emp!o.yer:= Self
`'
`V
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`Title: Engflfiepreneu r/Businessman‘
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`"3,
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`Identify all the féxctS.’relatin_'g.t6 the incorporation or fonnation 0f.Registriant, .inch'Idi.rig‘the
`date on which rgggistranjt’ was created.
`-
`A:
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`Al.jMoudab11er Foot! C0n.<;i¢pfs SAL,-as Registrant,-is incorporateii in: the
`country of:Leban'on.as of 20 .September, .2006}
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`

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`1‘dentityvaIt.share;ho.1ders=and of_£icers—of_Regi‘snant.
`A: Marc M;ond:aLb..he_r
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`Joseph Mnudabher
`Antoine Farah
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`.5;
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`identify all —shareholders, officers, employees ortagentzsof Registrant;
`A:
`OMBJECTION: ..A‘sk’ed...and answ nieélrbhrdenseme, overbroad, and irrelevant-.
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`~.n G. BOl'i (0085636)
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`Attorney for .Plaintiffs
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`i?“
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`Describes all facts relating to. Registrant’-s
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`awareness of Petitioner’ Sf Marks;
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`Regis*trant?s finsit‘: awareness of'the.Petitioner’s -Mark_ar_ose upon tPetitioner’-s
`At.
`fil_i‘n‘g,of'an Opposition. to the registration of.Reg_istrant’.s Mark.
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`ll“
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`Describe all facts;rc,IaIin'g ‘to: the selection o._f'Registrant’:s Mark.
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`A: Registrant :decided to open *a- restaurant with chicken wings as thesingle-»itcm_
`.specialty ofthe restaurant ‘due-to the increasing popularity of chicken wings-. As the
`single-.itein specialty,—.:chicken wings were to he themain attraction. The predominant
`item; raising: -'r,even“ue within the rest'a‘_ura_nt= was to he chickenwings, Therefore,
`Registrant made the b,us,i.noas decision to place-"‘-wings” in the name o‘f=the' .restaurant:
`in order to cause. the name: of— the-: restaurant to advertise, and make: people aware of,
`the singxe-litem Specialty of the restaurant. Furthermore, Registrant. made this decision
`
`in
`0l|_=bll$iIl8SS»$ensc'a, froma. husiness».stan,dpeint:, a. name vtiithflieword
`it attractsa clientele ‘interested in purchasing chicken wings. Many‘ names, including
`“Lord of the Wings,” “King of the Wing,” and otherswere. considered. ”T’he’na‘mes: that
`"were: co‘nside.red were spmificahy chosen on the basisthat they 1. ‘Inform. the public
`this is a restauiralmiz, Inform the clientele-of the single-itetn ’specialty of the «restaurant,
`3. Are catchy,:and 4. "Show:ex_pertiseand domination in the realm of chicken wings. It
`s was determined "t'ha“?t the plural ‘fojrmof theword, “wings,”-was preferred to the
`.si_ngnTar, “wing,” as the idea. was to sell. many‘ chicken wings,-in a variety of cooking
`types‘ (tradifionjah gI*i119<i~, and rbnnekss), and a. variety of-$auces:.(15, different Sauces),
`rathet than just:one at. a ‘time. -“Lord ofthe Wings” was eventually chosen; becarusei» it
`best fittheifour criteria_ V
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`he
`
`Identify the :faCts;.EreIating to any tradem_ark5 search or in.vestigation condueted_ with respect to
`Re'g'i?strant’s ’Maril,€§. hatiluding-.any Search to. determine whether‘ other pctsorishad =u’sed or
`registered or elailmed: rights -in any .ma,r1§< consisti-ng dflor -sitnilar‘to.LOR.D' OF THE WINGS‘.
`A:
`' Registrant approached a law fir-m:'to‘ register the n=ame;in the Uniiediifitates.
`Before doing .30., Registrant searched the intemet for the name “Lord '01‘'the"Wing,s""
`
`2
`
`

`
` andwas notable income up with any uses of the name. Registranit ?hired- the la'w- Tum
`
`-to =register.;;w.itl1in. the United -States," the mark,.wh_ichil1a’d aireiady been used in
`Lebanon, Knwaijt, lE'gy:p_t, Qatar, and the United; Arab Emirates.
`
`3.;
`
`or investigation relating-;to.
`:Identify all persons involved. in conducthig anytrademark
`the availabi-li'ty=of.Registrant’s Mark in the United States, including the ijdenti_t_y' ofall
`persons who conducted or provided any opinion relating to any -such search.
`A:
`'1‘alal.Abu~Ghazaleh Organization (legal .representative)
`
`Ideriti’fy the date and manner in: which Reg':istrant’-:s -Mark was -first used in the United States.
`in connection witih= thosale ofveach of the services: listed in ‘the -registraiion for said mark,
`
`name!-ya “ptovidiflg Of'f0;od and d1rink;_ _prov»iding. ternporaryaccommodations; restaurant
`-services; and snack liars.”
`A:
`‘Registrant’s; Ma‘rk..wasi first used‘ in the United States in August 2008, when -an;
`ager1.t:oi1’ Registrant at.ténd.ed “trade shows in order to test and prmnote. tl_11e<pIrod”uctein
`the United’ iS.ta'-ites. A Uufied States businessmaxl by the name of Tl1‘oma‘s Bhyeh showed
`interest in "the concept. Upon a :showing- of iuuterestiby Mr. Bayeh and ojthers,~
`_
`Registrant registered the Mark in the Uiiitedi
`Upon‘ ‘registering the
`Registrant isold :a_,li.e.ense. to
`Bflyeh to use the Markin the lglnited ;S_’t'a,t'ie:s..-
`
`State whether RegistIrant’s- Mark is currently being used in .imejrsta_Ié: commerce
`.Sta_tes. on the services listed in 'Regi~strant:.’s registration..-
`A:
`R.6giSt_I.;'ant’s Mark.»is.c.:urrently'being used
`.inteI‘statewmmerce in the Unlited
`States fforthe followingvservices: providing food’ and drink, restaurant
`and
`S:nfi,ék=,b§YS.
`‘
`
`the»Ui1ited.
`
`Identify the.-total amount ofrevenue received from the sale in the United States;of of
`the iséwices ‘listed. in¥th‘e registration .0f?Registrant-’3s' -Mark for
`year from .the:d‘aIeof'f1rs't
`use toithfil present.
`.
`'
`0B:3.ECTI.<.3N:‘ Itvelevant.
`. M,/—~'*“’
`
`
`
`‘
`
`
`
`
`
`,.
`‘ ».}adi' G. '.’ounii_'tri (0085636)
`Attorney for Plaintiffs
`
`ltdejntif)/i each. address in »the-‘Un_ited..Sta1':ejS for any restaurant, htetel or other business
`establishment at which each o'fTthe* servj-ices leisted.
`the preceding .interrogatory_ha;v_e been
`sold‘ sine-.o. Regisnantis--mark was lfirst used.
`A:
`
`id'enftif_y all ~materia‘ls:=-ciissemiinated. in :the'Un'ited. States on which R¢gistxant’s='Mark=.ha.s’ hoen
`. displayed ’incl’u‘di'n‘g fwithiout: limitations any menus, uniforms, signs-, aiivertiseinents,
`
`3
`
`

`
` pr9mo.ti‘ona1_ —mate15ia£ls', DVDs, v’i‘deos,1d‘irect.mai'l. solicitations, handbiils, stationery,
`
`A5:
`
`‘Websites (www;lordo'fihewings;com;. w‘ww.lordofchewings;ncg
`Lord ofthe Wings‘ menus: have Been distributed to interested U.S. parties
`
`busi'ri*ess' cards, "f"or‘rhs,Vv¢financiat: regions, fbuunper’ stickers_,- deicalsg, badges, catalégs, .ofr:othe.r
`Amateriais.
`'
`
`
`
`"Promo "Video~ZConcept. Snapshot: wvvw.youtube.com/watch?v‘%zAPEswz5n0UM
`
`‘parties
`
`Email commmfications with jlrttfcrested
`Twitter 2 @.L,ordofche.Wings,,
`‘Facebook: Lord of the Wings
`Linkedlnz Lord. ofthe Wings
`_I’n.stagI“&m: .totw'__kW; 1ordoftheW3h3S_1b
`Google+: lotw__lb
`‘Foursquare.-2 ’lord‘offl1e~w—ing's
`
`‘
`
`Identify all persons who d_es“igned Gr made anymaterial-s=on which Registxanfis Mark has
`ever‘
`dispiayed in‘ the Un’-itic'ii
`Specifying which items. were desfgrzed, created or
`made-b_y.ea_<_:_h.suQh ‘person
`,
`A:
`All -such materials are: created ‘by Registrant 'm—house.
`
`the dollar
`Identify on an iarmual ._basiS~for each year since R.egistmnt’_s.M‘ad< was first
`amount -of adwcrtising Vexpen(iiture;s..m.ade in the United Staltesfor each ofthe .—services listed
`in the registrations fé3r=.Registrant’.s Mark;
`»
`A:
`'(iB;JECfITION:‘1rre‘ls:v;§nt.
`% //’
`
`
`
`
`
`
`
`
`t”;ri‘(0085636«}
`_
`Att, rney for Plaintiiffs‘
`
`£23 Identify all" ‘newspapers, magazines, 'or:oth'er1adve1fising ‘media that‘:have:publ’ished or
`.di'sseminaIed' in the United States any advettisemsnts bear1ng“‘Regi_straht’s
`_
`A:
`Websites‘(Wvvw;lordoi’thewings.cQm; www.lordofih£:wings-.net)
`iPromo Video‘/Céoncept Snapshot: www.youtubc.com/watch?v=zAPEswA1OUM
`Email communications with ;i11terested U.MS. parties
`
`Twitter‘ .@I;0'rdO.fih¢Wings__
`=F-acgziéook: Lord. of t‘_h_c:‘Wings
`Linkediuz Lordvofthe Wings.
`slnsfagraum 1c>tw’_l<.:v.v; .1erd01thewihg's.;lb
`
`:C‘toogle+;I 1k)tw_‘l_b.
`‘Foursquare:: lord..of the wings
`
`

`
` ;_§: Identify each instance in=wh.ich a person has been actually confused as: to the soume of‘-the
`
`goods or services- sold under .Registrant-’s5Mafk or Petitioneris Mark.
`A:
`‘With specific regard to Kegistr1ant’s"'Mark, no ."5uchj.oonft1$ion iskttown to,Registrant,...
`With: specific regard to Pjeti‘tijoner’s Mark: OBJECTIOIS3: ‘I_rre1e_van:t,=contains
`subparts, and Registrant ‘has no knowledge of any ‘confusion assto Petiti.o'ner’s.=.
`.Mark(s).
`
`
` adji
`»
`Attorney far;PIalintif£s
`
`by Registrant to prevent eonfiJsfioI1'fi'om arising among
`Deseribeiany actions
`customers due to the similarity :in_.,Registrant’s.'Mar4l<~and= Petitioner’s.Mark.
`A:
`OBJECTION': Irrelevant. irrtplile/s,ad’uty upon "Registrant where none exists.
`
`,..»-
`
`
`
`
`
`\ ‘adi Gs. Bnumittfi .(0085_636)
`Attorneiy: for .P|‘a.inti’ffs—
`
`
`
`Identitféy all oral or written agreements relating; to"Registrantv”s»Mark, including without
`ftimiration an licenses; assignments, co-existence. -agr'e.errt“entS;_', partnership agreements, or
`
`joint venture~_.a3gre:ert1‘ents.
`A:
`Registrant has granted ;a.=l%icense to use _th_e.Mark to the fol.lowi.ng:
`Concepts ‘M
`a Seychelles‘ Intemational Business Company;
`Pronto, _LLC, on Ohio USA lirnited liabi‘lity company
`Fjranchise agreements with:
`Lord‘ o‘fIthe.’Wings Kaslik
`Lord ofthetwings Hamra.
`
`l
`
`‘Lord oifthe Wings.
`ofthe Wings
`Lord‘ ofthe “Wings Kuwait
`
`' Lordi of the Wings: Qatar‘
`
`Identify all leasestor other documents relating to any locations“ in the United States where
`R1efgistrant.has'sold’ set'1Vices= under the mark TLORI) OF
`A:
`Registrant. dioesgnot possess. any ileases or other doeumentstrelating to any l'ocatio’ns‘:
`in the U.n’ited_ $tates; where Regi:strant has sold: services under the §Mark;
`
`or oral communications between Registrant. and Petitioner.
`Describe all
`QBJECTION‘;
`such eomm_unications are equally a\zai‘lable—to the propou=n_ding'
`
` 5
`
`

`
` T
`
`-Attorney for P‘l'aintiffs=
`
`:Identify the facts. relatingztp -all t.1?ade.shows, exhibitions, street f6Sti5Va1Ss ‘food Grbevcrgge
`shows, or .oth_er:events at which 3Registrant’zs Mark: has: been displayed, including anyvtrade:
`shows; street festivals, Grf 1-drsbeveragerevehts.
`
`’Re_gistrant;sent representative ”Maxc'Moudahber»”t9 theNational Buffalo W'ing.
`Festival Buffalo.. New York USA in.Au.gus_t o,f"2D0;8..
`behalf 0fRiegistran.t,
`Moudabber
`Mark and Concept behind it.
`
`Identify the c_-lasseis of purchasers‘t'm;vhom Registrant has jsojld products or services. under
`Regvistrantis. Mark.
`OBJECTEONE: Vagué-, broad; 3t1dAb..
`A‘:
`
`
`
`
`
`
`
`
`‘V i:u;_s5636f§,
` .di
`Attiorniey for PI.la'intif.fs
`
`De'scribé32al1ftradEé:CharInelS"thr0ugh which any services have been sold in the United. States
`under Regiistrant’ Sf Mark.
`
`__;A:
`
`Foogd service
`
`'
`
`’Identify ganh person who provided information« or .othe:rwisevassisted in flje-prétparation of
`.aI>1'sw€l:s'to_ the‘ foregoing ‘zintm-rogatories: Specifying.’ the information -whic‘h(s;)he jpro'vi‘dgd;
`A:
`A 0BIEC1?ION': .Pe.titi0ner has exceeded. the "allowed numberiof interrog;atori.es
`prcipounded.
`,//""
`
`
`
`j%mm~aJ<oosss36).
`-a4di"G. Bfi‘
`A;_ftorney.‘f!3’r"Plaintiffs’
`
`

`
`
`
`
`
`
`ragular U.S». Mail to Petitioncr’-s ’CounseL.M1chael...A, Grow ‘ofArent-Fox LLP at 1717 K ‘St..,; NW,
`
`CERTIFICA
`
`a.
`
`A copy“-ofthe forego‘ing__pleadingjwas forwarded this
`
`:d
`
`Waslfingtbon,
`
`20036.
`
`.
`
`V
`
`‘
`
`/J"
`
`
`CADI
`.
`Attomeyfor Plaihiifik
`
`hereby "_tha_t'th'e answers and
`
`rntewbgixtcxaksz is true. .accurate-and /corremito
`
`%&ep‘u§?§§’Qfi«§b3*§@9:
`C1t>%0fBei‘r*it
`
`States Uf?America
`
`)
`J
`
`)
`
`SWORN TO.-and subscri.bed
`
`m;y:presegxces~th3s‘j... ..
`
`20113.
`
`

`
`LICENSE AND USE AGREEMENT
`
`This LICENSE AND USE AGREEMENT (this "Agreement"), effective this 15th day of
`February, 2011, is made and entered into at Cleveland, Ohio by and between M Concepts, Inc., a
`Seychelles International Business Company (hereinafter referred to as "Licensor"), and Pronto,
`LLC, an Ohio limited liability company, of 13342 Madison Ave., Lakewood, Ohio 44107
`(hereinafter referred to as "Licensee").
`
`Preliminary Statement
`
`WHEREAS, Licensor has the exclu3ive right to grant franchises of a Trademark known as
`"Lord of the Wings" (hereinafter referred to as "Trademark") within the United States of America
`(hereinafter referred to as the "Territory");
`
`WHEREAS, Licensee intends to purchase a license to use the Trademark within the
`Territory;
`
`NOW, THEREFORE, for and in consideration of the mutual covenants and agreements
`contained herein and for other good and valuable consideration, the sufficiency of which is hereby
`acknowledged, Licensor and Licensee, intending to be legally bound hereby, agree as provided
`herein.
`
`1. GRANT OF LICENSE
`Licensor agrees to sell, grant, and deliver to Licensee, and Licensee agrees to buy, for the
`consideration hereinafter provided, the exclusive license to use the Trademark. This sale, grant, and
`right of use of license only applies to