Abercrombie - Motion to Dismiss

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA

MIAMI DIVISION

Case No. 1:11-cv-24110 - LENARD/Simonton

MPS Entertainment, LLC and Michael P. Sorrentino, Plaintiffs, v. Abercrombie & Fitch Stores, Inc., Defendant. _____________________________________/

DEFENDANT’S MOTION AND MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION TO DISMISS PLAINTIFFS’ COMPLAINT

FOR FAILURE TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED

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Case 1:11-cv-24110-JAL Document 6 Entered on FLSD Docket 12/12/2011 Page 1 of 29

TABLE OF CONTENTS Page

I. Factual Background ........................................................................................................... 1

II. Argument ........................................................................................................................... 2

A. Standard for Fed. R. Civ. P. 12(b)(6) Motion To Dismiss For Failure To State A Claim Upon Which Relief Can Be Granted ............................ 2

B. Plaintiffs Cannot State A Claim For Federal Trademark Infringement Under Section 32(1) Of The Lanham Act, Because They Do Not Own a Valid And Registered Trademark .......................................................................... 3

1. Plaintiffs Do Not Own A Federal Trademark Registration For “The Situation” or “GTL”.......................................................................... 3

2. Plaintiffs’ Registration For The Stylized Upside-Down Mark SITUATION & Design Is Invalid.............................................................. 4

3. Plaintiffs’ Sole Registration For The Stylized Upside-Down Mark SITUATION & Design Is So Dissimilar To A&F’s “Use” That There Is No Likelihood Of Confusion ....................................................... 7

C. Plaintiffs Cannot Establish A Prima Facie Case For Unfair Competition Or False Designation Of Origin Under Section 43(a) Of The Lanham Act, 15 U.S.C. § 1125(a).......................... 10

1. Plaintiffs Do Not Own Any Common Law Rights In Any GTL Mark ... 10

2. A&F’s “Use” Was A Non-Actionable Parody......................................... 12

3. A&F’s Use Was Ornamental, Non-Trademark Use ................................ 13

4. A&F’s Products Were Clearly Labeled With Its Own Famous Trademark “FITCH”, Thereby Obviating Any Likelihood Of Confusion ................................................................. 13

D. Plaintiffs Fail To Plead And Cannot Establish Required Elements Of Its Florida Unfair Competition Claim....................................................................... 14

1. Plaintiffs Lack A State Trademark Registration Required To State A Claim Under Fla. Stat. § 495.131 .......................................... 14

2. Plaintiffs Fail To State A Claim Under Fla. Stat. § 495.151 ................... 15

a. Plaintiffs Omit Required Elements Of A Dilution Claim............ 15

b. A&F’s “Use” Is Not Actionable Under Florida Dilution Law .... 16

E. Plaintiffs Fail To Plead A Cognizable Basis For A False Advertising Claim..... 16

F. Plaintiffs’ Common Law Trademark Infringement Claim Fails Under The Same Analysis As Their Federal Trademark Claims........................................... 18

G. Plaintiffs Cannot Establish A Claim For Common Law Injury to Business Reputation...................................................... 18

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H. Plaintiffs Fail To State A Claim Under Fla. Stat. § 540.08 ................................. 19

1. A&F’s Parody Is Protected By The First Amendment ............................ 19

2. A&F Did Not Use Sorrentino’s Name To Directly Promote A Product..................................................................... 19

I. Plaintiffs Are Not Entitled To The Requested Relief .......................................... 20

III. Conclusion ....................................................................................................................... 20

TABLE OF AUTHORITIES Page CASES

Abner's Beef House Corp. v. Abner's Intern., Inc., 227 So.2d 865 (Fla. 1969)........................................................................................................14

Anheuser-Busch, Inc. v. L. & L. Wings, Inc., 962 F.2d 316 (4th Cir. 1992) ...................................................................................................12

Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496 (5th Cir. 1979) .....................................................................................................8

Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937 (2009).....................................................................................2, 3

Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007)........................ 1,_BA_Cite_139 3, 8

Berni v. International Gourmet Restaurants, Inc., 838 F.2d 642 (2d Cir. 1988).......................................................................................................3

Betancur v. Florida, 2008 WL 506305 (N.D. Fla. 2008)............................................................................................9

Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 533 F.Supp. 75 (S.D. Fla. 1981) ..............................................................................................16

Bryant v. Avado Brands, Inc., 187 F.3d 1271 (11th Cir. 1999) .................................................................................................4

Burnett v. Twentieth Century Fox Film Corp., 491 F. Supp. 2d 962 (C.D. Cal. 2007) .....................................................................................12

Cardtoons, L.C. v. Major League Baseball Players Association, 95 F.3d 959 (10th Cir. 1996) .............................................................................................13, 19

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Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F.Supp.2d 1261 (S.D.Fla. 1999) ...................................................................................14, 15

Cleary Building Corp. v. David A. Dame, Inc., 674 F.Supp.2d 1257 (D.Colo. 2009)........................................................................................13

Cory Van Rijn, Inc. v. California Raisin Advisory Bd., 697 F.Supp. 1136 (E.D. Cal. 1987)............................................................................................8

Custom Mfg. and Engineering, Inc. v. Midway Services, Inc., 508 F.3d 641 (11th Cir. 2007) ......................................................................................... passim

Daly v. Viacom, Inc., 238 F. Supp. 2d 1118 (N.D. Cal. 2002) ...................................................................................19

Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004) .................................................................................................8

Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070 (5th Cir. 1997) .................................................................................................15

Faulkner Press, LLC v. Class Notes, LLC, 756 F. Supp. 2d 1352 (N.D. Fla. 2010)....................................................................................20

Fila Sport, S.p.A. v. Diadora America, Inc., 141 F.R.D. 74 (N.D. Ill. 1991)...................................................................................................3

Finger Furniture Co., Inc. v. Mattress Firm, Inc., 2005 WL 1606934 (S.D. Tex. 2005) .......................................................................................10

Freedom Sav. and Loan Ass'n v. Way, 757 F.2d 1176 (11th Cir. 1985) .........................................................................................15, 19

Frehling Enterprises, Inc. v. International Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999) .............................................................................................7, 8

Griffin Indus. v. Irvin, 496 F.3d 1189 (11th Cir. 2007) .............................................................................................3, 7

Haymaker Sports, Inc. v. Turian, 581 F.2d 257 (CCPA 1978) .......................................................................................................5

HBP, Inc. v. Am. Marine Holdings, Inc., 290 F. Supp. 2d 1320 (M.D. Fla. 2003)...................................................................................14

Hensley Manufacturing, Inc. v. ProPride, Inc., 579 F.3d 603 (6th Cir. 2009) .....................................................................................................9

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Herbert Products, Inc. v. S & H Industries, Inc., 1977 WL 23180 (E.D.N.Y. 1977)..............................................................................................3

HI Ltd. Partnership v. Winghouse of Florida, Inc., 347 F.Supp.2d 1256 (M.D. Fla. 2004).....................................................................................18

Horsley v. Feldt, 304 F.3d 1125 (11th Cir. 2002) ...............................................................................................17

Hosid Products, Inc. v. Masbach, Inc., 108 F. Supp. 753 (N.D.N.Y. 1952)............................................................................................4

In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) ..............................................................................................13

Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687 (6th Cir. 2003) ...................................................................................................13

interState Net Bank v. NetB@nk, Inc., 348 F.Supp.2d 340 (D.N.J. 2004) ..........................................................................................5, 6

Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1521 (11th Cir. 1991) ...............................................................................................18

Jackson v. BellSouth Telecomms., 372 F.3d 1250 (11th Cir. 2004) .................................................................................................2

Jordache Enters. v. Hogg Wyld, Ltd., 828 F.2d 1482 (10th Cir. 1987) .........................................................................................12, 16

La Dove Inc. v. Playtex Jhirmack, Inc., 1991 WL 187473 (S.D. Fla. 1991) ....................................................................................14, 18

Marvel Enterprises, Inc. v. NCSoft Corp., 2005 WL 878090 (C.D. Cal. 2005)............................................................................................9

Murray v. Cable NBC, 86 F.3d 858 (9th Cir. 1996) .......................................................................................................8

PepsiCo, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1969) .....................................................................................................6

Pyles v. United Air Lines, 79 F.3d 1046 (11th Cir. 1996) ...................................................................................................2

Robert Stigwood Group, Ltd. v. Hurwitz, 462 F.2d 910 (2d Cir. 1972).....................................................................................................20

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Schutt Mfg. Co. v. Riddell, Inc., 673 F.2d 202 (7th Cir. 1982) ...................................................................................................20

Sinaltrainal v. Coca-Cola Co., 578 F.3d 1252 (11th Cir. 2009) .............................................................................................2, 3

Snow v. DirecTV, Inc. 450 F.3d 1314 (11th Cir. 2006) .................................................................................................2

Solis-Ramirez ex. rel. Solis v. United States Dep't of Justice, 758 F.2d 1426 (11th Cir. 1985) .................................................................................................7

Sugar Busters LLC v. Brennan, 177 F.3d 258 (5th Cir. 1999) .................................................................................................5, 6

Sweet v. City of Chicago, 953 F.Supp. 225 (N.D. Ill. 1996) ...............................................................................................9

Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018 (11th Cir. 1989) .........................................................................................14, 18

Tana v. Dantanna’s, 611 F.3d 767 (11th Cir. 2010) ...............................................................................................3, 9

Tiger Direct, Inc. v. Apple Computer, Inc., 2005 WL 1458046 (S.D. Fla. 2005) ........................................................................................14

Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981) ...............................................................................................9, 12

Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC 221 F. Supp. 2d 410 (S.D.N.Y. 2002)......................................................................................12

Trump Plaza of Palm Beaches Condominium Ass’n, Inc. v. Rosenthal, 2009 WL 1812743 (S.D. Fla. 2009) ........................................................................................15

Tyne v. Time Warner Entertainment Co., 901 S.2d 802 (2005)...........................................................................................................19, 20

Universal City Studios, Inc. v. Casey & Casey, Inc., 622 F.Supp. 201 (S.D. Fla. 1985) ............................................................................................12

Valentine v. C.B.S., Inc., 698 F.2d 430, 433 (11th Cir. 1983). ........................................................................................20

Welding Services, Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007) .................................................................................................8

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Whitney Information Network, Inc. v. Xcentric Ventures, LLC, 2005 WL 1677256 (M.D. Fla. 2005) .........................................................................................3

Winter v. DC Comics, 30 Cal. 4th 881 (Cal. 2003)......................................................................................................19

Z Productions, Inc. v. SNR Productions, Inc., 2011 WL 3754693 (M.D.Fla. 2011) ........................................................................................15

STATUTES

15 U.S.C. § 1052............................................................................................................................10

15 U.S.C. § 1060(a)(1).....................................................................................................................5

15 U.S.C. § 1114............................................................................................................3, 4, 5, 8, 10

15 U.S.C. § 1125(a) ...........................................................................................................10, 11, 18

Fla. Stat. § 495.011(9)....................................................................................................................14

Fla. Stat. § 495.131 ..................................................................................................................14, 15

Fla. Stat. § 495.141 ........................................................................................................................20

Fla. Stat. § 495.151 ..................................................................................................1, 14, 15, 16, 18

Fla. Stat. § 540.08 ....................................................................................................................19, 20

RULES

Fed. R. Civ. P. 10(c). .......................................................................................................................7

Fed. R. Civ. P. 12(b)(6).......................................................................................................... passim

Fed. R. Evid. 201 .............................................................................................................................4

OTHER AUTHORITIES

5A Fed. Prac. & Proc. Civ. § 1327 (3d ed. 2011)..........................................................................17

3-11 Gilson on Trademarks § 11.03 (2010).....................................................................................4

McCarthy on Trademarks and Unfair Competition § 3.3........................................................10, 13

McCarthy on Trademarks and Unfair Competition § 7:20 ...........................................................10


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McCarthy on Trademarks and Unfair Competition § 24:90 .........................................................16

McCarthy on Trademarks and Unfair Competition § 24:117 .......................................................15

McCarthy on Trademarks and Unfair Competition § 31:155 .................................................12, 13

McCarthy on Trademarks and Unfair Competition §32:3 .............................................................3

McCarthy on Trademarks and Unfair Competition § 32:121:25 ..................................................10

Moore’s Federal Practice § 12.34[4][a]..........................................................................................2

Trademark Manual of Examining Procedure § 1202.03(a) ...........................................................13


Defendant Abercrombie & Fitch Stores, Inc. (“A&F”) moves to dismiss Plaintiffs MPS

Entertainment, LLC’s (“MPS”), and Michael P. Sorrentino’s (“Sorrentino”) (collectively

“Plaintiffs”) complaint pursuant to Fed. R. Civ. P. 12(b)(6) because the Plaintiffs have failed to

state a plausible legal and factual basis for each of their claims.

As a matter of law, a court may dismiss an action pursuant to Rule 12(b)(6) if a complaint

does not plead “enough facts to state a claim to relief that is plausible on its face.” Bell Atlantic

Corp. v. Twombly, 550 U.S. 544, 570, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007). Here,

Plaintiffs have failed to allege, and cannot allege, a plausible legal and factual basis for each of

their claims. Plaintiffs cannot establish a federal trademark infringement claim because they do

not own a valid, federal trademark registration for either of their asserted trademarks. Similarly,

Plaintiffs cannot establish a Florida unfair competition claim because they do not own a valid,

state trademark registration and have failed to plead the required elements of Fla. Stat. §

495.151. Further, Plaintiffs’ federal unfair competition and common law trademark claims also

fail as Plaintiffs do not own any valid, recognizable common law rights in any “GTL” mark.

Additionally, A&F’s use of “G.T.L.” and “The Fitchuation” was not a trademark use, and any

likelihood of confusion was obviated by A&F’s use of its own famous “FITCH” trademark on its

shirts. The t-shirts about which the Plaintiffs complain constitute a permissible parody for which

there is no likelihood of confusion and, accordingly, A&F’s parody t-shirts are not actionable

under the Lanham Act, common law or Florida law pursuant to any trademark or right-of-

publicity legal theory. Finally, Plaintiffs have also failed to plead a plausible legal basis to claim

false advertising or common law injury to business reputation. Because these deficiencies

cannot be corrected, the dismissal should be with prejudice.

I. Factual Background Sorrentino is a castmate appearing on MTV’s reality television show “Jersey Shore.”

(ECF No. 1, ¶¶ 4,13.) Sorrentino uses the nickname “The Situation” on the Jersey Shore show,

and Sorrentino and other castmates use the abbreviation “GTL” to refer to their common

activities of going to the gym, tanning and doing laundry. (ECF. No. 1-5.) A&F periodically

produces and sells parody t-shirts as part of its humor line of t-shirts that contain references to

popular culture. A&F neither claims trademark rights in any of the parodies used on these t-

shirts, nor does it use parodies as trademarks (i.e., indicators of source) on its A&F t-shirts. As

part of its offer of parody t-shirts A&F placed an order in January 2010 for two t-shirts featuring

phrases that parodied the “Jersey Shore”. (See ECF. Nos. 1-3, 1-4.) Plaintiffs were aware of, but

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did not object to, the parody t-shirts until almost a year later. Subsequently, on August 11, 2011,

an episode of Jersey Shore aired in which Sorrentino wore green Abercrombie sweat pants

bearing it’s A&F logo throughout most of the episode. (ECF No. 1-5, p. 3.) Based on A&F’s

concern that the prominent display of its A&F logo would be viewed as an endorsement by A&F

of the raucous behavior on the show, A&F sent a letter to MTV in which it requested that its

marks be pixilated out of future episodes, and offered Sorrentino and other castmates money to

stop wearing its products. (ECF No. 1-2, p. 2; ECF No. 1-5, p.3; Ex. 1.)

II. Argument

A. Standard for Fed. R. Civ. P. 12(b)(6) Motion To Dismiss For Failure To State A Claim Upon Which Relief Can Be Granted

Dismissal of a claim is proper “if the complaint lacks an allegation regarding an element

necessary to obtain relief or if the plaintiff fails properly to allege standing to sue.” Moore’s

Federal Practice § 12.34[4][a]; see also Pyles v. United Air Lines, 79 F.3d 1046, 1049 (11th Cir.

1996). A dismissal under Rule 12(b)(6) can be based on either the lack of a cognizable legal

theory or the lack of sufficient facts alleged under a cognizable legal claim. See Snow v.

DirecTV, Inc., 450 F.3d 1314, 1320 (11th Cir. 2006) (“at a minimum, notice pleading requires

that a complaint contain inferential allegations from which we can identify each of the material

elements necessary to sustain a recovery under some viable legal theory”). On a 12(b)(6) motion,

the Court only “accepts all well-pled facts alleged by [sic] in the complaint as true.” Sinaltrainal

v. Coca-Cola Co., 578 F.3d 1252, 1260 (11th Cir. 2009) (emphasis added). “To survive a

motion to dismiss, plaintiffs must do more than merely state legal conclusions; they are required

to allege some specific factual bases for those conclusions or face dismissal of their claims.”

Jackson v. BellSouth Telecomms., 372 F.3d 1250, 1263 (11th Cir. 2004).

“[O]nly a complaint that states a plausible claim for relief survives a motion to dismiss.”

Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 1950 (2009). In order to state a plausible claim,

the complaint must contain “factual content that allows the court to draw the reasonable

inference that the defendant is liable for the misconduct alleged.” Iqbal, 129 S.Ct. at 1949.

“Where a complaint pleads facts that are ‘merely consistent with’ a defendant’s liability, it ‘stops

short of the line between possibility and plausibility of entitlement to relief.’” Id. In this respect,

“[a] plaintiff’s obligation to provide the ‘grounds’ of his ‘entitlement to relief’ requires more

than labels and conclusions, and a formulaic recitation of the elements of a cause of action will

not do.” Twombly, 550 U.S. at 555. “Conclusory allegations and unwarranted deductions of fact

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are not admitted as true.” Griffin Indus. v. Irvin, 496 F.3d 1189, 1206, 1210 (11th Cir. 2007)

(reversing district court’s denial of defendants’ 12(b)(6) motion where facts in plaintiff’s own

complaint contradicted its conclusory allegations). “Threadbare recitals of the elements of a

cause of action, supported by mere conclusory statements” will not suffice. Iqbal, 129 S. Ct. at

1949; see also Sinaltrainal, 578 F.3d at 1270 (dismissing complaint consisting of “vague and

conclusory allegations” which did not “raise a right to relief above the speculative level”).

B. Plaintiffs Cannot State A Claim For Federal Trademark Infringement Under Section 32(1) Of The Lanham Act, Because They Do Not Own a Valid And Registered Trademark

1. Plaintiffs Do Not Own A Federal Trademark Registration For “The Situation” or “GTL”

Section 32(1) of the Federal Trademark Act, 15 U.S.C. § 1114(1), establishes a cause of

action for infringement solely of a federally registered mark, in providing that “[a]ny person who

shall, without the consent of the registrant use in commerce any reproduction, counterfeit, copy

or colorable imitation of a registered mark . . . shall be liable in a civil action by the

registrant….” (Emphasis added). See 6 McCarthy on Trademarks and Unfair Competition §32:3

(4th ed. 2010) (“it is clear on the face of the statute that plaintiff must be the “registrant” of an

already issued and outstanding registration” to bring a § 32 infringement claim); Tana v.

Dantanna’s, 611 F.3d 767, 773 (11th Cir. 2010) (“Section 32(a) creates a cause of action for the

infringement of a registered mark”) (emphasis added); Berni v. International Gourmet

Restaurants, Inc., 838 F.2d 642, 645-646 (2d Cir. 1988) (“Section 32 of the Lanham Act, 15

U.S.C. § 1114(1), grants standing to assert a claim for trademark infringement solely to the

‘registrant’”); Whitney Information Network, Inc. v. Xcentric Ventures, LLC, 2005 WL 1677256,

*3 (M.D. Fla. 2005) (“An action cannot be raised under 15 U.S.C. § 1114 for an unregistered

trademark”); Fila Sport, S.p.A. v. Diadora America, Inc., 141 F.R.D. 74, 80 (N.D. Ill. 1991)

(granting motion to dismiss trademark infringement claim in absence of federal trademark

registration); Herbert Products, Inc. v. S & H Industries, Inc., 1977 WL 23180, *3 (E.D.N.Y.

1977) (“registration is a procedural prerequisite to suit under 15 USC § 1114(1)”).

Plaintiffs allege in paragraph 7 of the Complaint that MPS “owns federally registered

trademarks for use of the marks ‘The Situation’ and ‘GTL’” and that “[c]opies of the trademark

registrations are attached hereto as composite Exhibit ‘A’,” but, Ex. A does not contain copies of

any trademark registrations. Rather, Ex. A merely contains print-outs from the U.S. Patent &

Trademark Office’s (“USPTO”) TESS database which do not list the current status of Plaintiffs’

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alleged marks. In contrast, the records for Plaintiffs’ alleged trademarks in the USPTO public

TARR database (which contains the status of every pending application and registration filed

with the USPTO), available on the USPTO website at http://tarr.uspto.gov/, shows that MPS has

merely applied to register “The Situation” and “GTL” as trademarks, that these applications have

not been granted, and thus MPS does not own any federal trademark registrations for these

alleged marks. (See Ex. 2, pp. 32-33, 54-55.)1 MPS’ mere applications cannot support a claim

for infringement under § 32(1) because they have not yet matured (and may never mature) into

federal trademark registrations.2 See 3-11 Gilson on Trademarks § 11.03 (2010) (“The mere

pendency of an application for federal trademark registration…is not sufficient for jurisdiction

under Section 32”); Hosid Products, Inc. v. Masbach, Inc., 108 F. Supp. 753, 755 (N.D.N.Y.

1952) (pleading federal applications insufficient).

2. Plaintiffs’ Registration For The Stylized Upside-Down Mark SITUATION & Design Is Invalid

The only federal registration that Plaintiffs assert in Ex. A is Registration No. 3,635,203

for the stylized mark SITUATION and Design:

Assigned Reg. No. 3,635,203 Plaintiffs’ Claimed Marks

ECF No. 1-1, p. 26

SITUATION NATION

ECF No. 1-1, pp. 6, 20 and 22. which MPS acquired from a third party through an invalid assignment in gross, and MPS

therefore cannot rely on this registration to assert a federal trademark infringement claim. 3

1 A&F attaches as Ex. 2 the corresponding TARR print-outs containing status information for each of the alleged marks asserted in Plaintiffs’ Ex. A (ECF No. 1-1). A&F respectfully requests that the Court take judicial notice of the information in these public records (as well as other USPTO public records referenced herein) that are available to the public on the USPTO’s website. Under Fed. R. Evid. 201, a court may take judicial notice of “matters of public record.” Bryant v. Avado Brands, Inc., 187 F.3d 1271, 1277 (11th Cir. 1999) (filings at the Securities and Exchange Commission could be judicially noticed as “public records” as “[w]ere courts to refrain from considering such documents, complaints that quoted only selected and misleading portions of such documents could not be dismissed under Rule 12(b)(6) even though they would be doomed to failure”). 2 MPS’s application for “The Situation” in connection with clothing is currently facing an office action from the USPTO preventing its registration. (See Ex. 2, p. 32.) 3 As shown in Ex. A (ECF No. 1-1, p. 27) the original registrant of the stylized mark SITUATION & Design was Yak Shoes which subsequently assigned the registration to MPS.

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Sugar Busters LLC v. Brennan, 177 F.3d 258, 266 (5th Cir. 1999) (concluding that plaintiff’s

service mark was invalidly assigned and therefore “its trademark infringement claim under 15

U.S.C. §1114 cannot succeed on the merits”); McCarthy § 18:17 (“If an assignment is invalid as

being in gross, the purported ‘assignee’ acquires no title in the mark, and hence has no standing

to sue a third party for infringement.”). The Lanham Act allows registrants to assign their

trademark registrations only where such transfer includes the “goodwill” associated with the

trademark. 15 U.S.C. § 1060(a)(1). “A sale of trademark rights apart from good will

symbolized by the trademark is known as an ‘assignment in gross’” and such an assignment “is

invalid, and operates to pass no rights to the purported assignee.” McCarthy § 18:17; see also

Sugar Busters, 177 F.3d at 265. A mere formulaic recitation in an assignment that “goodwill”

has been transferred is insufficient unless there has in fact been some transfer of the business

associated with the trademark. Haymaker Sports, Inc. v. Turian, 581 F.2d 257, 261 (CCPA 1978)

(“Notwithstanding that the agreement recited pro forma that goodwill was transferred along with

the mark, Block and Moran never played an active role in the business of Avon, never used the

mark themselves, and never acquired any tangible assets or goodwill of Avon. Therefore, we

conclude that, as a matter of substance, the assignment was invalid as an assignment in gross,

rendering the latter assignment to Turian also invalid.”); interState Net Bank v. NetB@nk, Inc.,

348 F.Supp.2d 340, 349 (D.N.J. 2004) (“The mere fact that an agreement purports to assign

goodwill along with the trademark is insufficient.”).

MPS’ assignment agreement with Yak Shoes, Inc., the original owner of Registration No.

3,635,203, asserts that the “goodwill” was transferred, but Plaintiffs plead no facts, nor do any

exist, that any business of Yak Shoes was transferred or that Plaintiffs have since used the

stylized mark SITUATION & Design. 4 The registration for the stylized mark SITUATION &

Design covers “retail store services featuring men’s, women’s and children’s apparel, footwear

and accessories.” Plaintiffs plead no facts that they were offering “retail store services featuring

men’s, women’s and children’s apparel, footwear and accessories” at the time MPS acquired the

registration for the stylized mark SITUATION & Design, or that they have since offered retail

store services under this mark. Plaintiffs do not allege that they own any physical retail stores

4 Plaintiff MPS’ assignment agreement was filed with the USPTO, is in the USPTO public records at http://assignments.uspto.gov/assignments/assignment-tm-4589-0440.pdf and is attached hereto as Ex. 3.

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through which they offer services under the stylized mark SITUATION & Design, nor do

Plaintiffs use the stylized mark SITUATION & Design on their website at

www.officialsituation.com. Plaintiffs merely allege that MPS has “marketed, distributed, and/or

sold its goods and services bearing the Marks” defined as the unstylized word marks “The

Situation” and “GTL.” (ECF No. 1, ¶ 8.)

A change in the type of goods offered under an assigned registration, or in the mark that

was assigned, demonstrates that goodwill has not been transferred and that the trademark was

merely obtained to gain an advantage, and therefore the assignment is invalid. See McCarthy §

18:27 (“Under the general rule, a substantial change in the nature or quality of goods sold under

a mark, whether there is an assignment or not, may so change the nature of good will symbolized

by the mark that the mark becomes fraudulent and original rights are lost”); interState Net Bank,

348 F.Supp.2d at 351 (finding that “[t]he assignment, therefore, was to obtain and use the

NETBANK trademark without obtaining and using any of the goodwill accompanying that

mark” where assignee changed the format of the mark after assignment). In Sugar Busters LLC

v. Brennan, the Court found that the plaintiff’s sale of some books bearing the assigned mark

over the Internet was not sufficiently similar to the assigned registration covering “retail store

services” and therefore the assignment was invalid. 177 F.3d at 266 (“[W]e are unconvinced by

plaintiff’s argument that, by stating on the cover of its diet book that it may ‘help treat diabetes

and other diseases’ and then selling some of those books on the Internet, plaintiff provides a

service substantially similar to a retail store that provides diabetic supplies”); see also PepsiCo,

Inc. v. Grapette Co., 416 F.2d 285, 290 (8th Cir. 1969) (“The evidence is clear that Grapette did

not intend to adopt or exploit any ‘goodwill’ from the name ‘Peppy’ and Fox's long association

and use of it with a cola syrup. When one considers that Grapette did not acquire any of the

assets of Fox, did not acquire any formula or process by which the Fox syrup was made, and then

changed the type of beverage altogether, the assignment on its face must be considered void.”)

(citations omitted).

Here, as shown in Plaintiffs’ Ex. A,5 the USPTO describes the stylized SITUATION &

Design mark to “consist of the upside down stylized wording ‘SITUATION’ with a line above

5 Information in exhibits that Plaintiffs attached to the complaint is treated as part of the complaint and can serve as a basis for dismissal. Griffin Indus., 496 F.3d at 1206 (“Conclusory

6 WAI-3048938v3


the upside down wording” and the USPTO also assigned design search codes for “[r]ectangles

that are completely or partially shaded” and “[l]etters or words underlined and/or overlined by

one or more strokes or lines”, which is substantially different than any of Plaintiffs’ claimed

alleged marks applied for to cover clothing as depicted at page 4 above. As Plaintiffs have

completely changed the format of the assigned mark, and have not used the assigned design mark

in connection with the services for which it is registered, the assignment of Reg. No. 3,635,203 is

an invalid assignment in gross and, therefore, Plaintiffs acquired no title in the mark and have no

standing to sue A&F for infringement based on this registration.

3. Plaintiffs’ Sole Registration For The Stylized Upside-Down Mark SITUATION & Design Is So Dissimilar To A&F’s “Use” That There Is No Likelihood Of Confusion

Even if the invalid assignment-in-gross were deemed a valid acquisition of the

registration for the stylized mark SITUATION & Design, this mark is so dissimilar to A&F’s

“use” as alleged by Plaintiffs that it fails to state a claim for federal trademark infringement.

“[T]he touchstone of liability in a trademark infringement action is not simply whether

there is unauthorized use of a protected mark, but whether such use is likely to cause consumer

confusion.” Custom Mfg. and Engineering, Inc. v. Midway Services, Inc., 508 F.3d 641, 647

(11th Cir. 2007). The Eleventh Circuit uses the seven factors set forth in Frehling Enterprises,

Inc. v. International Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir. 1999) to analyze

likelihood of confusion.6 “Because the bottom line is the likelihood of consumer confusion,

application of the Frehling factors entails more than the mechanistic summation of the number of

factors on each side; it involves an evaluation of the ‘overall balance.’” Custom Mfg., 508 F.3d at

649. The Eleventh Circuit instructs that “[t]he appropriate weight to be given to each of these

(continued…)

allegations and unwarranted deductions of fact are not admitted as true, especially when such conclusions are contradicted by facts disclosed by a document appended to the complaint. If the appended document, to be treated as part of the complaint for all purposes under Rule 10(c), Fed.R.Civ.P., reveals facts which foreclose recovery as a matter of law, dismissal is appropriate.”); Solis-Ramirez ex. rel. Solis v. United States Dep't of Justice, 758 F.2d 1426, 1430 (11th Cir. 1985) (“Under Rule 10(c) Federal Rules of Civil Procedure, such attachments are considered part of the pleadings for all purposes, including a Rule 12(b)(6) motion”). 6 These factors are: (1) type of mark, (2) similarity of mark, (3) similarity of the products the marks represent, (4) similarity of the parties’ retail outlets (trade channels) and customers, (5) similarity of advertising media, (6) defendant’s intent and (7) actual confusion.

7 WAI-3048938v3


factors varies with the circumstances of the case.” Dippin’ Dots, Inc. v. Frosty Bites Distribution,

LLC, 369 F.3d 1197, 1207 (11th Cir. 2004); see also Murray v. Cable NBC, 86 F.3d 858, 861

(9th Cir. 1996) (affirming 12(b)(6) dismissal of a trademark infringement claim on a small sub-

set of likelihood of confusion factors).

The similarity of marks has always been considered a critical question in the likelihood of

confusion analysis. Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496, 502-05 (5th Cir.

1979) (holding that district court’s finding that the marks were “substantially similar” was

clearly erroneous and without “critical finding of trademark similarity” finding of likelihood of

confusion could not stand). “Overwhelming visual dissimilarity can defeat an infringement

claim, even where the other six factors all weigh in favor of the plaintiff.” Welding Services, Inc.

v. Forman, 509 F.3d 1351, 1361 (11th Cir. 2007). In other words, where alleged “conflicting

marks are overwhelmingly dissimilar, a summary dismissal of the infringement claim is proper

even if all of the other factors tip in favor of the plaintiff.” McCarthy § 24:41; Dippin’ Dots, 369

F.3d at 1209 (“two logos are so different that no reasonable jury could find that even a hurried 8-

18 year old impulse shopper could confuse them”); Cory Van Rijn, Inc. v. California Raisin

Advisory Bd., 697 F.Supp. 1136, 1145 (E.D. Cal. 1987) (dismissing trademark infringement

claim finding that “the absence of substantial similarity leaves little basis for asserting a

likelihood of confusion”). Plaintiffs’ sole federal registration [the upside-down stylized mark

SITUATION & Design] is so fundamentally different from A&F’s use [as alleged in Exs. C and

D to the Complaint] Plaintiffs cannot meet this critical element of a §32(1) infringement claim.

“Recovery under the Lanham Act requires, at a minimum, that confusion, mistake, or

deception be likely, not merely possible.” Custom Mfg., 508 F.3d at 651 (citation omitted). Even

before Twombly and its progeny many courts have dismissed trademark infringement claims

under Rule 12(b)(6) where the allegations did not support any plausible finding of likelihood of

confusion. See Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788, 790 (9th Cir. 1981) (affirming

Rule 12(b)(6) dismissal where facts alleged, including dissimilarity of the marks, would not

“permit a conclusion that consumers are likely to be confused as to source or sponsorship”);

Hensley Manufacturing, Inc. v. ProPride, Inc., 579 F.3d 603, (6th Cir. 2009) (affirming 12(b)(6)

dismissal where complaint did not allege facts sufficient to show likelihood of confusion as to

the source of the products and defendant’s mark was “not even remotely similar” to plaintiff’s

asserted mark); Sweet v. City of Chicago, 953 F.Supp. 225, 231-232 (N.D. Ill. 1996) (granting

12(b)(6) motion to dismiss trademark infringement claim with prejudice where “complaint

8 WAI-3048938v3


merely makes the conclusory assertion that confusion is likely and sets forth no facts that would

permit a conclusion that patrons of the Art Fair are likely to be confused as to the origin or

sponsorship of the Art Fair”); Marvel Enterprises, Inc. v. NCSoft Corp., 2005 WL 878090, *4

(C.D. Cal. 2005) (granting 12(b)(6) motion where plaintiff did not own a registration for the

image of the character and dissimilarity of the word marks was “self-evident”); Betancur v.

Florida, 2008 WL 506305, (N.D. Fla. 2008) (a trademark infringement claim “requires a

showing that the defendant’s actual practice is likely to produce confusion in the minds of

consumers about the origin of the goods or services”). Here, confusion is not likely or even

possible, because of the self-evident dissimilarity in both the wording and stylization between

Plaintiffs only asserted federal registration for the stylized mark SITUATION & Design and

A&F’s use of parodic slogans on two of its humor t-shirts as depicted below:

Plaintiffs’ Asserted Federal Registration

A&F’s Use Alleged by Plaintiffs

ECF No. 1-1, p. 26.

ECF No. 1, ¶ 22; ECF Nos. 1-3 and 1-4.

Beyond the striking dissimilarity, Plaintiffs also fail to plead any allegations relating to

actual confusion, a key factor in the Eleventh Circuit. Custom Mfg., 508 F.3d at 650 (Eleventh

Circuit has “consistently held” that “actual confusion” is one of “the most weighty of

considerations”); Tana, 611 F.3d at 779 (“actual confusion in the consuming public, is the most

persuasive evidence in assessing likelihood of confusion”). Plaintiffs also do not plead any

allegations concerning the following likelihood of confusion factors: type of mark, similarity of

the products, similarity of the parties’ retail outlets, and similarity of advertising media. The

overwhelming dissimilarity of the marks in itself dooms Plaintiffs’ § 1114 claim, and the

absence of other well-pled facts sufficient to overcome that dissimilarity supports dismissal. “A

trademark infringement suit may be dismissed on a 12(b)(6) motion if the allegations are totally

without a legal foundation that could lead to liability.” McCarthy § 32:121:25. Accordingly,

Plaintiffs’ federal infringement claim (Count I) must be dismissed with prejudice.

C. Plaintiffs Cannot Establish A Prima Facie Case For Unfair Competition Or False Designation Of Origin Under Section 43(a) Of the Lanham Act

9 WAI-3048938v3


“To establish a prima facie case under § 1125(a), a plaintiff must show (1) that the

plaintiff had enforceable trademark rights in the mark or name, and (2) that the defendant made

unauthorized use of it such that consumers were likely to confuse the two.” Custom Mfg., 508

F.3d at 647 (citation omitted). Plaintiffs’ Count II should be dismissed because it cannot

establish any enforceable trademark rights in the alleged GTL mark, and further cannot establish

that either of A&F’s parodies was likely to cause any confusion with any of Plaintiffs’ asserted

unregistered trademarks.

1. Plaintiffs Do Not Own Any Common Law Rights In Any GTL Mark In order for a mark to be protectable, it must be capable of distinguishing the owner’s

goods from those of others. 15 U.S.C. § 1052. “[T]o create trademark or trade dress rights, a

designation must be proven to perform the job of identification; to identify one source and

distinguish it from other sources. If it does not do this, then it is not protectable as a trademark,

service mark, trade dress or any similar exclusive right.” McCarthy § 3.3 (emphasis added).

“Slogans often appear in such a context that they do not identify and distinguish the source of

goods or services. In such cases, they are neither protectable nor registrable as trademarks.”

McCarthy § 7:20. Where a plaintiff cannot establish its alleged mark identifies a single source,

its claim will be dismissed for failure to state a claim. See Finger Furniture Co., Inc. v. Mattress

Firm, Inc., 2005 WL 1606934, *4 (S.D. Tex. 2005) (granting 12(b)(6) motion to dismiss

trademark infringement and other Lanham Act claims where the Court found it “difficult to

characterize” plaintiff as the “source” of the alleged mark where other third parties used the

phrase).

As plead by Plaintiffs, the alleged mark “G.T.L.” is merely an acronym for “Gym Tan

Laundry.” (ECF No. 1, ¶ 3.) All the castmates on the MTV television show Jersey Shore7 use

the alleged mark “GTL” as an abbreviation of the slogan “Gym, Tanning, Laundry” to describe

their common activities on the show, and “GTL” is not used or recognized by the characters on

the show or by consumers to identify a single source of goods or services. Indeed, the public

records at the USPTO show that Viacom International, Inc. (the parent company of MTV), owns

a trademark registration for “GYM TANNING LAUNDRY” (Reg. No. 4,014,420) as well as a

7 Plaintiffs acknowledge that Plaintiff Sorrentino appeared on the show the “Jersey Shore” (ECF No. 1, ¶¶ 4, 9), and that the Jersey Shore is distributed and produced by MTV. (ECF No. 1, ¶ 13; 1-2; 1-5, p. 2.)

10 WAI-3048938v3


pending application (App. No. 77/960,143),8 and that MPS’ trademark application for GYM

TAN LAUNDRY (App. No. 85/185,431) has been suspended by the USPTO due to Viacom’s

(MTV) prior applications.9 Further, MTV is offering t-shirts bearing “GTL” on its website at its

shop for its television show Jersey Shore, http://shop.mtv.com/category/47931979241/1/Jersey-

Shore.htm, and a search for “GTL” on MTV’s website reveals numerous uses of GTL by MTV,

and by other castmates, http://www.mtv.com/search/?q=gtl. Based on both MTV’s and other

Jersey Shore castmates’ use of “GTL”, Plaintiffs cannot establish that they are the single source

of goods being offered under the alleged mark “GTL”, and their unfair competition and false

designation of origin claim under § 1125(a) must fail. Additionally, Plaintiffs’ Ex. A (ECF No.

1-1, p. 38) shows that they did not even file an application claiming any trademark rights in

“GTL” until February 5, 2010, and the current USPTO status report shows that Plaintiffs have

yet to file any proof of use of the alleged “GTL” mark (Ex. 2, p. 54), despite Plaintiffs’ allegation

in ¶ 8 that MPS has been marketing, distributing or selling goods bearing “the Marks.” A&F

ordered its parody t-shirts in January 2010, before Plaintiffs had even asserted any intent to use

“GTL” in the future as a trademark.

2. A&F’s “Use” Was A Non-Actionable Parody It is well established that, “[i]f the difference in wording or appearance of the designation

together with the context and overall setting is such as to convey to the ordinary viewer that this

is a joke, not the real thing, then confusion as to source, sponsorship, affiliation or connection is

unlikely.” McCarthy § 31:155. The Eleventh Circuit and other courts recognize that parody is

not actionable as trademark infringement or unfair competition. Universal City Studios, Inc. v.

Casey & Casey, Inc., 622 F.Supp. 201, 204-05 (S.D. Fla. 1985), aff’d without op., 792 F.2d 1125

(11th Cir. 1986) (affirming denial of preliminary injunction against MIAMI MICE t-shirts);

Anheuser-Busch, Inc. v. L. & L. Wings, Inc., 962 F.2d 316, 319, 321 (4th Cir. 1992) (t-shirt

8 Print-outs from the USPTO TARR public database of Viacom’s registration and application for GYM TANNING LAUNDRY are attached hereto as Ex. 4. 9 A print-out from the USPTO TARR database for Plaintiff MPS’ trademark App. No. 85/185,431 for GYM TAN LAUNDRY showing that the application is suspended is attached as Ex. 5. Additionally a copy of the Office Action refusing registration to MPS’ application and the subsequent suspension letter is available from the USPTO public database at http://tdr.uspto.gov/search.action?sn=85185431# and is also included in Ex. 5. Viacom’s App. No. 77/960,149 cited in the USPTO’s office action and suspension letter has since matured into Reg. No. 4,014,420. (See Ex. 4 attached hereto.)

11 WAI-3048938v3


incorporating beer label design that intentionally imitated non-verbal portion of Budweiser label

was a parody, noting that the “T-shirt design fits a conventional definition of trademark parody”);

Jordache Enters. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1487,1489 (10th Cir. 1987) (in affirming

no confusion between defendant’s LARDASHE use and plaintiff’s JORDACHE mark court

noted “[a]n intent to parody is an intent not to confuse the public”) (emphasis added); Tommy

Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 415 (S.D.N.Y. 2002)

(granting summary judgment to defendant on its use of TOMMY HOLEDIGGER as not

infringing TOMMY HILFIGER, “as the joke is clear enough to result in no confusion”).

Dismissal of trademark claims under Rule 12(b)(6) is proper where the alleged infringing

conduct is merely a parody, and therefore likelihood of confusion is not possible. See Toho Co.,

645 F.2d at 791 (affirming 12(b)(6) dismissal of claims based on GODZILLA trademark against

use of BAGZILLA and the phrase “monstrously strong”, noting “the contention that Sears

intends to confuse consumers is implausible: Sears means only to make a pun”); Burnett v.

Twentieth Century Fox Film Corp., 491 F. Supp. 2d 962 (C.D. Cal. 2007) (granting 12(b)(6)

motion to dismiss trademark infringement claim based on a parodic use stating “[w]here a

defendant uses a variation on plaintiff’s mark merely to make a clever turn of phrase…then

confusion as to source, sponsorship, affiliation or connection is unlikely” and noting that

“[p]ublic figures, such as Ms. Burnett, are frequent targets of parodies”); Cleary Building Corp. v.

David A. Dame, Inc., 674 F.Supp.2d 1257, 1268 (D.Colo. 2009) (granting 12(b)(6) dismissal of

trademark claims and noting that “the Lanham Act is intended to protect the ability of consumers

to distinguish among competing producers, not to prevent all unauthorized uses… trademark

rights cannot be used “to quash an unauthorized use of the mark by another who is

communicating ideas or expressing points of view”) (citations omitted).

A&F’s t-shirt bearing the phrase “The Fitchuation” was a pun or turn of phrase,

parodying Sorrentino’s nickname for himself as “The Situation”. See Cardtoons, L.C. v. Major

League Baseball Players Association, 95 F.3d 959, 969 (10th Cir. 1996) (parodic baseball cards

were “no less protected because they provide humorous rather than serious commentary”). As

Plaintiffs plead, Sorrentino has appeared on several nationally televised programs (ECF No. 1,

¶ 4), and as such is a public figure, subject to being parodied by virtue of his presence in the

public eye. Additionally, the t-shirt bearing the phrase “G.T.L. (You Know The Deal) Fitch”,

was poking fun at the Jersey Shore castmates self-proclaimed habit of doing the “GTL”, i.e.

“gym, tanning, laundry.” “[T]he requirement of trademark law is that a likely confusion of

12 WAI-3048938v3


source, sponsorship or affiliation must be proven, which is not the same thing as a ‘right’ not to

be made fun of.” McCarthy § 31:155. Neither parodic use can establish a likelihood of

confusion as to source. Plaintiffs Count II should be dismissed.

3. A&F’s Use Was Ornamental, Non-Trademark Use To be actionable, A&F must use the alleged trademark as a trademark. Interactive Prods.

Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 695 (6th Cir. 2003) (“If defendants are

only using [plaintiff’s] trademark in a “non-trademark” way - that is, in a way that does not

identify the source of a product - then trademark infringement and false designation of origin

laws do not apply”); see McCarthy § 3.3. Here, however, A&F has not used the acronym

“G.T.L.” or the parody “The Fitchuation” as a trademark, but merely in an ornamental fashion.

“[U]nless the accused use is a trademark use, likelihood of confusion is highly unlikely.”

McCarthy § 3.3. Where an alleged mark is used in large print which fills a large portion of the

shirt or other article of clothing, such use is deemed merely ornamental. See In re Pro-Line

Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); Trademark Manual of Examining Procedure §

1202.03(a). A&F’s use of these phrases in large print across a large portion of the shirts is not

trademark use but merely ornamental, and thus further avoids any likelihood of confusion.

4. A&F’s Products Were Clearly Labeled With Its Own Famous Trademark “FITCH”, Thereby Eliminating Any Likelihood Of Confusion

Each of A&F’s t-shirts challenged by Plaintiffs clearly bears A&F’s famous house mark

“FITCH”, and therefore clearly identifies the source of the product, and eliminates any

likelihood of confusion. See Custom Mfg., 508 F.3d at 652 n.10 (use of house brand significant

in reducing likelihood that consumers would be confused as to source ); Tiger Direct, Inc. v.

Apple Computer, Inc., 2005 WL 1458046, *16 (S.D. Fla. 2005) (J. Lenard) (finding the parties

marks “distinctly different” where defendant Apple’s use occurred in an “Apple-branded

environment”); La Dove Inc. v. Playtex Jhirmack, Inc., 1991 WL 187473, *4-*5 (S.D. Fla. 1991)

(noting the prominent presence of plaintiff’s house mark in finding no similarity); Carnival Corp.

v. SeaEscape Casino Cruises, Inc., 74 F.Supp.2d 1261, 1268 (S.D.Fla. 1999) (“considering the

marks as a whole leads the Court to conclude that they are not similar enough to create a

likelihood of confusion. Especially persuasive is the fact that the ‘Fun Ship’ mark is used in

conjunction with the ‘Carnival’ mark 95% of the time and that the SeaEscape slogan always

features the ‘SeaEscape’ name prominently”); HBP, Inc. v. Am. Marine Holdings, Inc., 290 F.

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Supp. 2d 1320, 1332-33 (M.D. Fla. 2003) (no confusion where defendant prominently used its

mark). Plaintiffs’ Count II should be dismissed on this additional basis.

D. Plaintiffs Fail To Plead And Cannot Establish Required Elements Of Its Florida Unfair Competition Claim

Plaintiffs’ sole allegation in support of its statutory unfair competition claim under

Florida law is that “Defendant’s actions discussed herein constitute unfair competition within the

meaning of section 495.131 and 151, Florida Statutes.” Plaintiffs’ conclusory allegation is

insufficient to state a claim and, further, Plaintiffs cannot meet the required elements of either

cited statute.

1. Plaintiffs Lack A State Trademark Registration Required To State A Claim Under Fla. Stat. § 495.131

Fla. Stat. § 495.131 establishes a cause of action for state trademark infringement and

limits claims to “registrants” for “a mark registered under this chapter,” i.e. a mark registered

under the Florida Registration and Protection of Trademarks Act (“Florida Trademark Act”), Fla.

Stat. 495, et seq. The Florida Trademark Act defines “registrant” as “the person to whom the

registration of a mark under this chapter is issued and the legal representatives, successors, or

assigns of such person.” Fla. Stat. § 495.011(9). Therefore, in order to state a claim under Fla.

Stat. § 495.131, a plaintiff must own and plead ownership of a Florida state trademark

registration. Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018, 1024 (11th Cir.

1989) (“The Act permits a registrant to sue for infringement under…§ 495.131…and pursue

remedies under…§ 495.141”) (emphasis added); Abner's Beef House Corp. v. Abner's Intern.,

Inc., 227 So.2d 865, 866 (Fla. 1969) (“F.S. Section 495.131, F.S.A., which provides

infringement of a registered mark shall subject the infringer to the liability of a civil action by the

owner of the mark and to the injunctive and damage remedies of F.S. Section 495.141”).

Plaintiffs do not plead ownership of a Florida state trademark registration and, therefore, cannot

state a claim under Fla. Stat. § 495.131.

2. Plaintiffs Fail To State A Claim Under Fla. Stat. § 495.151

a. Plaintiffs Omit Required Elements Of A Dilution Claim

Fla. Stat. § 495.151 establishes a cause of action for trademark dilution and requires that

a plaintiff plead and prove the following elements in order to prevail: 1) the plaintiff’s mark is

famous; 2) the defendant used the plaintiff’s mark after the plaintiff’s mark became famous; 3)

the defendant's use was commercial and in commerce; and 4) the defendant’s use of the

14 WAI-3048938v3


plaintiff’s mark has likely caused dilution. Z Productions, Inc. v. SNR Productions, Inc., 2011

WL 3754693, *5 (M.D.Fla. 2011). To state a claim for dilution, Florida law also requires that

Plaintiffs be “the owner of a mark”, Fla. Stat. 495.151(1); see Trump Plaza of Palm Beaches

Condominium Ass’n, Inc. v. Rosenthal, 2009 WL 1812743, *9-*10 (S.D. Fla. 2009) (dismissing

federal dilution claim for lack of standing where plaintiff failed to establish it was the owner of

the mark at issue), and some proof that the use of a trademark decreases the plaintiff's

commercial value. See Freedom Sav. and Loan Ass'n v. Way, 757 F.2d 1176, 1186 (11th Cir.

1985). Under state anti-dilution statutes, courts have also generally required that the accused

mark be nearly identical to the famous mark. See McCarthy § 24:117.

Plaintiffs fail to plead almost every element of a state dilution claim under Fla. Stat. §

495.151. Plaintiffs do not plead, and cannot establish, that the marks “The Situation” or “GTL”

are famous, or that these alleged marks became famous before A&F used its parody slogans on t-

shirts in 2010. “It is clear that anti-dilution statutes are designed to protect only strong, well-

recognized marks.” Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1082 (5th Cir. 1997);

Carnival Corp., 74 F.Supp.2d at 1270-71 (finding plaintiff’s mark not famous under federal or

state dilution law despite over 20 years of use and extensive advertising and sales). Additionally,

Plaintiffs do not plead any allegations showing that A&F’s parody has likely caused dilution

(and cannot as the parody is protected by the First Amendment), and as shown in Section C.1

cannot establish that they are the owner of any “GTL” trademark. Further, Plaintiffs do not

plead any allegations that A&F’s parody t-shirts decreased any commercial value of either

Plaintiff. Finally, as shown in Sections B and C above, Plaintiffs cannot establish a likelihood of

confusion between any of its alleged marks and A&F’s use of parody slogans on t-shirts (which

are strikingly different) and, therefore, cannot establish a dilution claim under Florida law.

Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 533 F.Supp. 75, 84 (S.D. Fla. 1981) (“the

Court’s finding that it is not likely the Suave shoe would be confused with a Brooks shoe means

the Plaintiff has failed to prove a violation of Florida's dilution statute, Fla. Stat. § 495.151”).

b. A&F’s “Use” Is Not Actionable Under Florida Dilution Law A&F’s use on t-shirts is not actionable under Fla. § 495.151 because, as established in

Section C.2, it is a parody protected by the First Amendment. McCarthy § 24:90 (“embodied in

both the Constitutional guarantee of free speech” and dilution law is “the general rule [that]

permits anyone, competitor, critic or comedian, to use a famous mark to make fun of or to

criticize the products or policies of the mark owner”); Jordache Enters., 828 F.2d at 1487,1489-

15 WAI-3048938v3


90 (affirming failure of dilution claim and finding that “because of the parody aspect of Lardashe,

it is not likely that public identification of JORDACHE with the plaintiff will be eroded; indeed,

parody tends to increase public identification of a plaintiff’s mark with the plaintiff”).

Plaintiffs’ allegations relating to an alleged advertising campaign also cannot form the

basis for liability under § 495.151 because Plaintiffs’ allegations relate only to third party news

coverage of A&F’s legitimate offer. But, the explicit text of the statute exempts “all forms of

news reporting and news commentary.” See § 495.151(3)(c).

E. Plaintiffs Fail To Plead A Cognizable Basis For A False Advertising Claim Plaintiffs assert “false advertising” generally under Fla. § 495, et seq., and specifically

under § 495.151, but neither chapter 495, nor § 495.151 provides a cause of action for deceptive,

false and misleading advertising. Plaintiffs’ claim should be dismissed on this lack of a

cognizable legal basis alone. Additionally, at a minimum, a claim for false advertising must

allege some false statement by A&F. Plaintiffs base their false advertising claim on the factual

allegation that A&F “falsely used Sorrentino’s name, image and likeness to create a multimillion

dollar advertising campaign based upon the false statement that Defendant offered money to

Sorrentino so he would not wear Defendant’s goods.” (ECF No. 1, ¶ 36.) However, Plaintiffs

also plead that “Defendant contacted representatives of MTV (the network that distributes the

“Jersey Shore”)” and “offered to pay money to the Sorrentino [sic] if he would stop wearing

Abercrombie brand clothing while on the show.” (ECF No. 1, ¶ 13.) Therefore, as Plaintiffs

acknowledge, A&F did in fact offer to pay for Mr. Sorrentino not to wear its clothes. A&F

communicated the offer to MTV Networks, which has aired the “Jersey Shore” episodes on

which Sorrentino has prominently worn A&F clothing, as it contained an offer not just to

Sorrentino, but also to other castmates, and included a request that MTV pixilate out A&F’s

marks on any future episodes of the Jersey Shore to ameliorate any conclusion of endorsement of

Sorrentino by A&F or product placement by A&F on the Jersey Shore show. (See Ex. 1.)10

10 Ex. A contains a copy of the letter A&F sent to MTV, which the Court may take judicial notice of since its contents are alleged in Plaintiffs’ Complaint at ¶ 13. See Horsley v. Feldt, 304 F.3d 1125, 1134 (11th Cir. 2002) (Eleventh Circuit follows the “incorporation by reference” doctrine, “under which a document attached to a motion to dismiss may be considered by the court without converting the motion into one for summary judgment only if the attached document is: (1) central to the plaintiff's claim; and (2) undisputed.”); 5A Fed. Prac. & Proc. Civ. § 1327 (3d ed. 2011) (“when the plaintiff fails to introduce a pertinent document as part of her pleading, a significant number of cases from throughout the federal court system make it clear that the

16 WAI-3048938v3


Whether the offer letter went directly to Sorrentino is immaterial, and does not establish the

falsity of the offer that Plaintiffs allege was made.

Plaintiffs’ other allegations also fail to establish any basis for a false advertising claim.

Neither Plaintiffs’ conclusory labeling of A&F’s legitimate offer as a “marketing scheme” or

third party news papers’ characterization of the offer as a “marketing ploy” converts A&F’s

legitimate offer into advertising material. Plaintiffs also fail to assert any facts to support their

conclusory allegation at ¶¶ 17 and 36 that any news reporting on A&F’s offer was “worth

millions.” Further, Plaintiffs’ own exhibits recognize the damage to A&F. “The cast of Jersey

Shore doesn’t exactly consists of the kind of role models most brands covet…the show has woo

[sic] millions of viewers who tune in to watch a group of hard-partying, foul-mouthed 20- and

30-somethings hanging out, hooking up and behaving raucously.” (ECF No. 1-5, p.3.) Plaintiffs’

own exhibit also notes that “the teen retailer [Abercrombie] does have an image to protect,” and

quotes an analyst defining the image as “‘classic, sexy, preppy teenagers’” and stating that

“Jersey Shore shows 20-something guys and girls getting drunk every night and going out to

party…so it clearly does not go with the image they [Abercrombie] have worked for over a

decade to show to the world.” (ECF No. 1-5, p. 3.)11 Accordingly, Plaintiffs’ false advertising

Count IV is unplead, implausible and should be dismissed.

F. Plaintiffs’ Common Law Trademark Infringement Claim Fails Under The Same Analysis As Their Federal Trademark Claims

Plaintiffs’ common law trademark infringement claim is governed by the same analysis

applicable to their federal trademark infringement and unfair competition claims, discussed in

Sections B and C above. La Dove, 1991 WL 187473, *3 (“The tests for common law trademark

infringement, unfair competition of this type and violations of 15 U.S.C. § 1125(a) are

essentially the same”) (denying motion for preliminary injunction where plaintiffs failed to

(continued…)

defendant may introduce the document as an exhibit to a motion attacking the sufficiency of the pleading; that certainly will be true if the plaintiff has referred to the item in the complaint and it is central to the affirmative case”). Whether an offer was made is central to Plaintiffs’ claim and Plaintiffs do not dispute that an offer was made to MTV. (ECF No. 1, ¶¶ 13, 34-38.) 11 As noted in fn. 6 infra under Eleventh Circuit law information in exhibits appended to a complaint are treated as part of the complaint and can be a basis for dismissal if the information in the exhibits contradict facts alleged in the complaint.

17 WAI-3048938v3


establish likelihood of success on the merits for trademark infringement and unfair competition

claims). Thus, as Plaintiffs have failed to state a claim for federal trademark infringement and

unfair competition, the ancillary claim for common law trademark infringement in Count V

similarly fails to state a claim and should be dismissed with prejudice as well. Investacorp, Inc.

v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1521, 1521 (11th Cir. 1991) (finding

where plaintiffs’ federal service mark infringement claim failed so did the related state claims

under Florida statute and common law); HI Ltd. Partnership v. Winghouse of Florida, Inc., 347

F.Supp.2d 1256, 1259 (M.D. Fla. 2004) (where a claimant’s federal infringement and dilution

claims rejected, the corresponding state law claims failed as well).

G. Plaintiffs Cannot Establish A Claim For Common Law Injury to Business Reputation

A claim for injury to business reputation is subsumed within Fla. Stat. § 495.151, already

alleged in Count III, and for which Plaintiffs fail to state a claim as discussed above in Section

D.2. See Tally-Ho, 889 F.2d at 1024 (Section 495.151 “permits any trademark owner, whether

registered or unregistered, to prohibit either a non-competitor’s or competitor’s use of a similar

mark if there is a likelihood of injury to business reputation or dilution of the mark’s distinctive

quality.”) (emphasis added). Further, Plaintiffs’ allegations for this claim consist of the same

conduct already alleged and considered under its trademark claims, i.e., confusion as to

affiliation or approval or the origin of Plaintiffs’ goods (cf. ECF No. 1 ¶ 46 to ¶¶ 22, 27, and 41),

and therefore should be dismissed on this basis as well. See Freedom Savings, 757 F.2d at 1186

(affirming district court’s holding for defendant on unfair competition claim where plaintiff did

not complain of any conduct by defendant not already considered in the infringement claim).

Finally, Sorrentino has had actual knowledge of A&F’s humor t-shirts for at least fourteen (14)

months before asserting a “likelihood of injury” claim, even commenting about the t-shirts in an

interview given to New York Magazine, which belie any conclusory allegation of injury as plead

in Count VI. (See Ex. 6.) Based on the lack of a plausible legal theory, and facts to support the

same, Plaintiffs’ Count VI should be dismissed.

H. Plaintiffs Fail To State A Claim Under Fla. Stat. § 540.08

1. A&F’s Parody Is Protected By The First Amendment Fla. Stat. § 540.08 provides a cause of action for unauthorized publication of name or

likeness, otherwise known as a “right of publicity” claim. The Florida Supreme Court,

reviewing decisions from other jurisdictions, has found that “[n]ot only do these decisions

18 WAI-3048938v3


demonstrate that the common usage of the term ‘commercial’ in the commercial

misappropriation and right of publicity context is indeed limited to the promotion of a product or

service as the courts construing section 540.08 have concluded, but they also indicate that such

works should be protected by the First Amendment.” Tyne v. Time Warner Entertainment Co.,

901 S.2d 802, 810 (2005). “[R]ight of publicity derived from public prominence does not confer

a shield to ward off caricature, parody and satire. Rather, prominence invites creative comment.”

Winter v. DC Comics, 30 Cal. 4th 881, 887, 892 (Cal. 2003) (parodic portrayal protected by First

Amendment against a right of publicity claim). A&F’s parodic use does not use Sorrentino’s

“name or likeness,” and further its parody is protected by the First Amendment. The fact that

A&F’s parody was on humor t-shirts scarcely disqualifies the use from protection from the First

Amendment. Cardtoons, 95 F.3d at 969 (parodic baseball cards protected by First Amendment

against right of publicity claim, finding “[t]he cards are no less protected because they provide

humorous rather than serious commentary”); Daly v. Viacom, Inc., 238 F. Supp. 2d 1118, 1123

(N.D. Cal. 2002) (“a cause of action for appropriation of another’s ‘name and likeness’ may not

be maintained against expressive works, whether factual or fictional,” and “[e]ntertainment is

entitled to the same constitutional protection as the exposition of ideas”).

2. A&F Did Not Use Sorrentino’s Name To Directly Promote A Product The purpose of Fla. Stat. § 540.08 “is to prevent the use of a person’s name or likeness to

‘directly promote a product or service.’” Faulkner Press, LLC v. Class Notes, LLC, 756 F. Supp.

2d 1352 (N.D. Fla. 2010) (holding that “no reasonable inference can be drawn that Dr. Moulton

was actually promoting or endorsing the notes or that [defendant] used Dr. Moulton’s name to

give that impression”); Tyne, 901 S.2d at 808. In Valentine v. C.B.S., Inc., the Eleventh Circuit

affirmed the district court’s decision “as a matter of law” that use of plaintiff’s name in a song

did not commercially exploit Valentine’s name as “defendants did not use her name to directly

promote a product or service . . . an interpretation that the statute absolutely bars the use of an

individual's name without consent for any purpose would raise grave questions as to

constitutionality.” 698 F.2d 430, 433 (11th Cir. 1983). Plaintiffs’ allegation regarding A&F’s

legitimate offer to Sorrentino to cease wearing its clothing is insufficient to state a claim as

A&F’s offer did not directly promote a product or service.

I. Plaintiffs Are Not Entitled To The Requested Relief Plaintiffs fail to plead allegations sufficient to entitle them to the relief requested in their

prayer for relief. Plaintiffs request injunctive relief, but as they acknowledge in their complaint

19 WAI-3048938v3


(ECF No. 1, ¶ 16), Plaintiffs’ sales of the allegedly infringing t-shirts have already ceased.

Additionally, press coverage regarding A&F’s offer to Sorrentino had also ceased until Plaintiffs

issued their own press release threatening claims against A&F. As such, any request for

injunctive relief is moot. Schutt Mfg. Co. v. Riddell, Inc., 673 F.2d 202, 207 (7th Cir. 1982)

(affirming denial of injunction where defendant “clearly did not threaten to persist in or resume

the allegedly infringing or unfair conduct”); Robert Stigwood Group, Ltd. v. Hurwitz, 462 F.2d

910, 913 (2d Cir. 1972) (no “cognizable danger of recurrent [alleged] violation” from a one-shot

series of performances, because there must be “something more than the mere possibility which

serves to keep the case alive”). Plaintiffs also cannot recover any relief requested under Fla. Stat.

§495.141, because as established in Section D.2.a, it does not own a Florida state trademark

registration and relief is only available for “any owner of a mark registered under this chapter

may proceed by suit to….” Finally, Plaintiffs request a “reasonable royalty” in the amount of

$1,000,000 without pleading any allegations establishing the basis for this amount, or for any

royalty for any alleged use of Sorrentino’s name or likeness.

III. Conclusion For the foregoing reasons, A&F respectfully requests that the Court dismiss Plaintiffs’

Complaint in its entirety.

Respectfully submitted,

/s Gerald J. Houlihan

Gerald J. Houlihan (Florida Bar No. 0458430) Email: [email protected] Houlihan & Partners, P.A. 2332 Galiano Street, Second Floor Miami, Florida 33134 Telephone: (305) 460-4091 Facsimile: (305) 397-0955 Attorneys for Abercrombie & Fitch Stores, Inc.

OF COUNSEL John G. Froemming, Esq. [email protected] Jessica D. Bradley, Esq. [email protected] Jones Day 51 Louisiana Avenue, N.W. Washington, D.C. 20001-2113 Telephone: 202-879-4693 Facsimile: 202-626-1700

20 WAI-3048938v3


21 WAI-3048938v3

CERTIFICATE OF SERVICE

I hereby certify that on December 12, 2011, I electronically filed the foregoing document with the Clerk of the Court using CM/ECF. I also certify that the foregoing document is being served this day on all counsel of record identified on the attached Service List in the manner specified, either via transmission of Notice of Electronic Filing generated by CM/ECF or in some other authorized manner for those counsel or parties who are not authorized to receive electronically Notice of Electronic Filing.

/s Gerald Houlihan_______

Gerald J. Houlihan

SERVICE LIST

Darren Adam Heitner, Esq. Koch Parafinczuk & Wolf 110 E. Broward Blvd. Suite 1630 Fort Lauderdale, FL 33301 Telephone: 954-462-6700 Facsimile: 954-462-6567 Email: [email protected] Richard Charles Wolfe, Esq. Wolfe Law Miami, P.A. 175 SW 7 Street, Penthouse 2410 Miami, FL 33131 Telephone: 305-384-7370 Facsimile: 305-384-7371 Email: [email protected]


EXHIBIT 1

Ex. 1, Page 1

Case 1:11-cv-24110-JAL Document 6-1 Entered on FLSD Docket 12/12/2011 Page 1 of 2

Ex. 1, Page 2


EXHIBIT 2

Ex. 2, Page 1


Thank you for your request. Here are the latest results from the TARR web server.

This page was generated by the TARR system on 2011-12-08 16:47:02 ET

Serial Number: 85156576 Assignment Information Trademark Document Retrieval

Registration Number: (NOT AVAILABLE)

Mark

(words only): THE SITUATION

Standard Character claim: Yes

Current Status: A final Office action refusing registration has been sent(issued) because the applicant neither satisfied nor overcame all requirements and/or refusals previously raised. The applicant may respond by filing (1)a request for reconsideration; and/or (2) an appeal to the Trademark Trial and Appeal Board. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.

Date of Status: 2011-10-11

Filing Date: 2010-10-19

Transformed into a National Application: No

Registration Date: (DATE NOT AVAILABLE)

Register: Principal

Law Office Assigned: LAW OFFICE 109

Attorney Assigned: GOODMAN WENDY BETH

Current Location: L9X -TMEG Law Office 109 - Examining Attorney Assigned

Date In Location: 2011-10-10

LAST APPLICANT(S)/OWNER(S) OF RECORD

1. MPS ENTERTAINMENT, LLC

Page 1 of 3Latest Status Info

12/8/2011http://tarr.uspto.gov/tarr?regser=serial&entry=85156576

Ex. 2, Page 2


Address:MPS ENTERTAINMENT, LLC153 Dorado Beach CourtHowell, NJ 07331United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: New Jersey

GOODS AND/OR SERVICES

International Class: 041Class Status: ActiveEntertainment, namely, personal appearances by an entertainer, television personality, television celebrity and model; entertainment services, namely, live, televised and movie appearances by a professional entertainer; entertainment, namely, television show production; television and cable television show production; entertainment in the nature of on-going television and cable television programs featuring music, comedy, drama, fashion shows, exhibitions and competitions and spoken word; entertainment services namely, providing on-going television and cable television programs featuring music, comedy, drama, fashion shows, exhibitions and competitions and spoken word; entertainment in the nature of ongoing television and cable television reality based shows and programsBasis: 1(a)First Use Date: 2009-12-03First Use in Commerce Date: 2009-12-03

ADDITIONAL INFORMATION

Name Portrait Consent: The name(s), portrait(s), and/or signature(s) shown in the mark identifies THE SITUATION, whose consent(s) to register is made of record.

MADRID PROTOCOL INFORMATION

(NOT AVAILABLE)

PROSECUTION HISTORY

NOTE: To view any document referenced below, click on the link to "Trademark Document Retrieval" shown near the top of this page.

2011-10-11 - Final refusal mailed

2011-10-10 - Final Refusal Written

2011-10-10 - Examiner's Amendment Entered

2011-10-10 - Examiners Amendment -Written

2011-08-29 - Assigned To Examiner



Ex. 2, Page 3


2011-08-26 - Teas/Email Correspondence Entered

2011-08-25 - Communication received from applicant

2011-08-25 - TEAS Response to Office Action Received

2011-08-25 - Petition To Revive-Granted

2011-08-25 - TEAS Petition To Revive Received

2011-01-31 - Non-final action mailed

2011-01-31 - Non-Final Action Written


2010-10-25 - New Application Office Supplied Data Entered In Tram

2010-10-22 - New Application Entered In Tram

ATTORNEY/CORRESPONDENT INFORMATION

Attorney of RecordDave Feldman

CorrespondentDAVE FELDMANBLOOM HERGOTT DIEMER ROSENTHAL LAVIOLETT150 S RODEO DR FL 3BEVERLY HILLS, CA 90212-2410Phone Number: 310 859 6800



Ex. 2, Page 4






Mark

(words only): OFFICIAL THE SITUATION SITUATION NATION

Standard Character claim: No

Current Status: A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional information and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.





Register: Principal









Ex. 2, Page 5


Address:MPS ENTERTAINMENT, LLC153 El Dorado CourtHowell, CA 90046United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: New Jersey


International Class: 041Class Status: ActiveEntertainment servicesBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


Color(s) Claimed: Color is not claimed as a feature of the mark.

Description of Mark: The mark consists of a circular design consisting of three co-centric circles, at the top of the middle circle is the word OFFICIAL, at the bottom of the middle circle is the word SITUATION NATION, and superimposed on the circular design is a rectangular design with the words THE SITUATION in stylized lettering.

Design Search Code(s):24.09.07 - Advertising, banners; Banners 26.01.17 - Circles, two concentric; Concentric circles, two; Two concentric circles


(NOT AVAILABLE)

PROSECUTION HISTORY





2011-09-01 - Notice Of Design Search Code Mailed




Ex. 2, Page 6








Ex. 2, Page 7






Mark








Register: Principal









Ex. 2, Page 8


Address:MPS ENTERTAINMENT, LLC153 El Dorado CourtHowell, NJ 07731United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: New Jersey


International Class: 025Class Status: ActiveClothing; footwear; and headwearBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)



Description of Mark: The mark consists of a circular design consisting of three co-centric circles, at the top of the middle circle is the word OFFICIAL, at the bottom of the middle circle is the word SITUATION NATION, and superimposed on the circular design is a rectangular design with the words THE SITUATION in stylized lettering.

Design Search Code(s):25.01.25 - Borders, ornamental; Other framework and ornamental borders 26.01.17 - Circles, two concentric; Concentric circles, two; Two concentric circles


(NOT AVAILABLE)

PROSECUTION HISTORY









Ex. 2, Page 9








Ex. 2, Page 10






Mark








Register: Principal









Ex. 2, Page 11


Address:MPS ENTERTAINMENT, LLC153 El Dorado Beach CourtHowell, NJ 07731United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: New Jersey


International Class: 003Class Status: ActiveAfter-shave lotions; shaving balms; colognes; eye creams; shaving creams; skin creams; facial scrubs; bath gels; shaving gels; shower gels; skin lotions; shaving lotions; sun screen preparation; non-medicated lip balm; sun-tanning lotions; sun-tanning preparations; hair care preparations; hair styling gel; after sun preparations, namely, creams, gels, lotions, milks and oils; creams and lotions for firming and toning the abdomen, and other areas of the body, body reducing creamsBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)



Description of Mark: The mark consists of a circular design consisting of three co-centric circles, at the top of the middle circle is the word OFFICIAL, at the bottom of the middle circle is the word SITUATION NATION, and superimposed on the circular design is a rectangular design with the words The Situation in stylized lettering.

Design Search Code(s):24.09.07 - Advertising, banners; Banners 26.01.17 - Circles, two concentric; Concentric circles, two; Two concentric circles


(NOT AVAILABLE)

PROSECUTION HISTORY







Ex. 2, Page 12










Ex. 2, Page 13






Mark








Register: Principal









Ex. 2, Page 14


Address:MPS ENTERTAINMENT, LLC153 Dorado Beach CourtHowell, CO 07731United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: New Jersey


International Class: 003Class Status: ActiveAfter-shave lotions; shaving balms; colognes; eye creams; shaving creams; skin creams; facial scrubs; bath gels; shaving gels; shower gels; skin lotions; shaving lotions; sun screen preparation; non-medicated lip balm; sun-tanning lotions; sun-tanning preparations; hair care preparations; hair styling gel; after sun preparations, namely, creams, gels, lotions, milks and oilsBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY











Ex. 2, Page 15





Ex. 2, Page 16






Mark



Current Status: An Office action suspending further action on the application has been sent (issued) to the applicant. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.





Register: Principal


Attorney Assigned: SHOSHO II ERNEST

Current Location: M8X -Law Office 117 - Examining Attorney Assigned




Address:



Ex. 2, Page 17


MPS ENTERTAINMENT, LLC153 Dorado Beach CourtHowell, NJ 07731United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: New Jersey


International Class: 016Class Status: ActivePrinted instructional, informational, and educational, brochures, booklets, books, and workbooks in the field of diet, exercise, fitness, health, lifestyle, and nutrition; comic books; magazines featuring information on health, fitness, exercise, treatments, therapies, diet and nutrition; temporary tattoos; posters; calendarsBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


Name Portrait Consent: The name(s), portrait(s), and/or signature(s) shown in the mark identifies "THE SITUATION", whose consent(s) to register is made of record.


(NOT AVAILABLE)

PROSECUTION HISTORY


2011-09-19 - Letter of suspension mailed

2011-09-17 - Suspension Letter Written



2011-08-18 - Assigned To LIE






Ex. 2, Page 18







CorrespondentDAVE FELDMANBLOOM HERGOTT DIEMER ROSENTHAL LAVIOLETT150 S RODEO DR FL 3BEVERLY HILLS, CA 90212-2410



Ex. 2, Page 19






Mark



Current Status: Notice of Allowance (NOA) sent (issued) to the applicant. Applicant must file a Statement of Use or Extension Request within six months of the NOA issuance date.



The Notice of Allowance Date is: 2011-10-18



Register: Principal



Current Location: 700 -Intent To Use Section






Ex. 2, Page 20




International Class: 014Class Status: ActiveJewelryBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


Name Portrait Consent: The name(s), portrait(s), and/or signature(s) shown in the mark identifies Michael Sorrentino, whose consent(s) to register is made of record.


(NOT AVAILABLE)

PROSECUTION HISTORY


2011-10-18 - NOA Mailed - SOU Required From Applicant

2011-08-23 - Published for opposition

2011-08-03 - Notice of publication

2011-07-15 - Approved For Pub - Principal Register








Ex. 2, Page 21



2011-01-28 - Previous Allowance Count Withdrawn










Ex. 2, Page 22






Mark








Register: Principal







Address:



Ex. 2, Page 23


MPS ENTERTAINMENT, LLC153 Dorado Beach CourtHowell, CA 07731United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: New Jersey


International Class: 005Class Status: ActiveDietary and nutritional supplements; Dietary beverage supplements for human consumption in liquid and dry mix form; Dietary food supplements; Dietary supplemental drinks; Dietary supplemental drinks in the nature of vitamin and mineral beverages; Food supplements, namely, anti-oxidants; Health food supplements; Liquid nutritional supplement; Meal replacement and dietary supplement drink mixes; Natural herbal supplements; Nutritional and dietary supplements formed and packaged as bars; Nutritional energy bar for use as a meal replacement; Nutritional food bars for use as a meal replacement; Nutritional supplement in the nature of a nutrient-dense, protein-based drink mix; Nutritional supplements; Powdered fruit-flavored dietary supplement drink mix; Powdered nutritional supplement drink mix; Protein supplements; Vitamin and mineral formed and packaged as bars; Vitamin and mineral supplements; Vitamin enriched water; Vitamin fortified beverages; Vitamin preparations; Vitamin supplements; VitaminsBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY









Ex. 2, Page 24











CorrespondentDAVE FELDMANBLOOM HERGOTT DIEMER ROSENTHAL LAVIOLETT150 S RODEO DR FL 3BEVERLY HILLS, CA 90212-2410



Ex. 2, Page 25






Mark








Register: Principal









Ex. 2, Page 26




International Class: 009Class Status: ActiveComputer application software for use with smartphones, PDA devices, and tablet computers, namely, software for accessing, viewing, interacting with and downloading entertainment contentBasis: 1(a)First Use Date: 2010-09-15First Use in Commerce Date: 2010-09-15


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY













Ex. 2, Page 27










Ex. 2, Page 28






Mark

(words only): SITUATION NATION


Current Status: A second request for extension of time to file a Statement of Use has been granted.






Register: Principal


Attorney Assigned: TENG SIMON





Address:



Ex. 2, Page 29


MPS ENTERTAINMENT, LLC153 DORADO BEACH COURTHOWELL, NJ 07731United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: New Jersey


International Class: 025Class Status: ActiveCLOTHING, NAMELY, T-SHIRTS AND UNDERWEARBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY


2011-08-30 - Notice Of Approval Of Extension Request Mailed

2011-08-29 - Extension 2 granted

2011-07-13 - Extension 2 filed

2011-08-29 - Applicant/Correspondence Changes (Non-Responsive) Entered

2011-08-29 - Case Assigned To Intent To Use Paralegal

2011-08-19 - Extension Received With TEAS Petition



2011-08-15 - Abandonment Notice Mailed - No Use Statement Filed

2011-08-15 - Abandonment - No use statement filed



Ex. 2, Page 30


2011-05-17 - Withdrawal Of Attorney Granted

2011-05-17 - TEAS Withdrawal Of Attorney Received

2011-01-15 - Notice Of Approval Of Extension Request E-Mailed



2011-01-13 - TEAS Extension Received

2010-07-13 - NOA E-Mailed - SOU Required From Applicant

2010-05-18 - Notice Of Actual Publication E-Mailed


2010-04-10 - Law Office Publication Review Completed


2010-03-24 - Automatic Update Of Assignment Of Ownership



2010-03-24 - Notification Of Examiners Amendment E-Mailed

2010-03-24 - Examiners amendment e-mailed






CorrespondentMPS ENTERTAINMENT, LLC153 DORADO BEACH COURTHOWELL NJ 07731



Ex. 2, Page 31






Mark








Register: Principal









Ex. 2, Page 32


Address:MPS ENTERTAINMENT, LLC153 DORADO BEACH COURTHOWELL, NJ 07731United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: New Jersey


International Class: 025Class Status: ActiveClothing, namely, t-shirts and underwearBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)



Name Portrait Consent: The name(s), portrait(s), and/or signature(s) shown in the mark identifies Michael Sorrentino, whose consent(s) to register is made of record.

Prior Registration Number(s):3635203


(NOT AVAILABLE)

PROSECUTION HISTORY





2011-08-02 - Amendment From Applicant Entered


2011-08-02 - Petition Granted - Response Received



Ex. 2, Page 33


2011-08-02 - Assigned To Petition Staff

2011-08-01 - Petition To Revive-Received

2011-08-01 - FAX RECEIVED

2011-07-29 - Attorney Revoked And/Or Appointed

2011-07-29 - TEAS Revoke/Appoint Attorney Received

2011-06-01 - Abandonment Notice Mailed - Failure To Respond

2011-06-01 - Abandonment - Failure To Respond Or Late Response



2010-11-13 - Notification Of Final Refusal Emailed

2010-11-13 - Final refusal e-mailed


2010-05-13 - Notification Of Letter Of Suspension E-Mailed

2010-05-13 - LETTER OF SUSPENSION E-MAILED







2010-03-24 - Notification Of Non-Final Action E-Mailed

2010-03-24 - Non-final action e-mailed







Ex. 2, Page 34



Attorney of Record/Dave Feldman/

CorrespondentDave FeldmanBloom Hergott Diemer Rosenthal LaViolett150 S. Rodeo Drive, 3rd FloorBeverly Hills CA 90210Phone Number: 31-8596800



Ex. 2, Page 35





Registration Number: 3635203

Mark

(words only): SITUATION


Current Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.



Filed as TEAS Plus Application: Yes

Currently TEAS Plus Application: Yes


Registration Date: 2009-06-09

Register: Principal


If you are the applicant or applicant's attorney and have questions about this file, please contact the Trademark Assistance Center at [email protected]

Current Location: 650 -Publication And Issue Section





Ex. 2, Page 36



Address:MPS ENTERTAINMENT, LLC153 DORADO BEACH COURTHOWELL, NJ 07731United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: New Jersey


International Class: 035Class Status: ActiveRetail store services featuring men's, women's and children's apparel, footwear, and accessoriesBasis: 1(a)First Use Date: 2008-05-01First Use in Commerce Date: 2008-08-01



Description of Mark: The mark consists of the upside down stylized wording "SITUATION" with a line above the upside down wording.

Design Search Code(s):26.11.21 - Rectangles that are completely or partially shaded 26.17.13 - Letters or words underlined and/or overlined by one or more strokes or lines; Overlined words or letters; Underlined words or letters


(NOT AVAILABLE)

PROSECUTION HISTORY



2009-06-09 - Registered - Principal Register





Ex. 2, Page 37




2009-02-11 - Approved for Pub - Principal Register (Initial exam)


2009-02-11 - Notification Of Examiners Amendment E-Mailed

2009-02-11 - Examiners amendment e-mailed






CorrespondentYAK SHOES INC.YAK SHOES INC.116 CUMBERLAND STMEMPHIS, TN 38112-3820Phone Number: (901) 568-2482Fax Number: (901) 324-5483



Ex. 2, Page 38






Mark

(words only): GTL


Current Status: A first request for extension of time to file a Statement of Use has been granted.






Register: Principal


Attorney Assigned: RAPPAPORT SETH A





Address:



Ex. 2, Page 39




International Class: 003Class Status: ActiveAfter-shave lotions; shaving balms; colognes; eye creams; shaving creams; skin creams; facial scrubs; bath gels; shaving gels; shower gels; skin lotions; shaving lotions; sun screen preparation; non-medicated lip balm; sun-tanning lotions; sun-tanning preparations; hair care preparations; hair styling gel; after sun preparations, namely, creams, gels, lotions, milks and oilsBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY












Ex. 2, Page 40



2011-01-31 - Examiner's amendment mailed









CorrespondentDAVE FELDMANBLOOM HERGOTT DIEMER ROSENTHAL et al150 S RODEO DRFL 3BEVERLY HILLS, CA 90212-2410Phone Number: 310 859 6800



Ex. 2, Page 41






Mark

(words only): GTL


Current Status: A first request for extension of time to file a Statement of Use has been granted.






Register: Principal







Address:



Ex. 2, Page 42




International Class: 018Class Status: ActiveAthletic bags, backpacks, baby backpacks, knapsacks, duffel bags, tote bags, beach tote bags, luggage, wallets, gym bagsBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY













Ex. 2, Page 43








CorrespondentDAVE FELDMANBLOOM HERGOTT DIEMER ROSENTHAL et al150 S RODEO DRFL 3BEVERLY HILLS, CA 90212-2410Phone Number: 310 859 6800



Ex. 2, Page 44






Mark

(words only): GTL








Register: Principal









Ex. 2, Page 45




International Class: 041Class Status: ActiveEntertainment, namely, personal appearances by an entertainer, television personality, television celebrity, and model; entertainment services, namely, live, televised and movie appearances by a professional entertainer; entertainment, namely, television show production; television and cable television show production; entertainment in the nature of on-going television and cable television programs featuring music, comedy, drama, fashion shows, exhibitions, competitions and spoken word; entertainment services, namely, providing on-going television and cable television programs featuring music, comedy, drama, fashion shows, exhibitions, competitions and spoken word; entertainment in the nature of on-going television and cable television reality based shows and programsBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY










Ex. 2, Page 46





2011-08-25 - TEAS Request For Reconsideration Received

2011-06-28 - Final refusal mailed















Ex. 2, Page 47






Mark

(words only): GTL








Register: Principal









Ex. 2, Page 48


Address:MPS ENTERTAINMENT, LLC153 Dorado Beach CourtHowell, NJ 07731United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: Montana


International Class: 044Class Status: ActiveHealth and fitness spa services for health and wellness of body and spirit, namely, health spa services for the health and wellness of the body and spirit and providing weight loss programs; Counseling services in the fields of health, nutrition and lifestyle wellness; Providing a website featuring information about health, lifestyle wellness and nutrition; Providing assistance, fitness evaluation and consultation to individuals to help them make health, wellness and nutritional changes in their daily living to improve healthBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY











Ex. 2, Page 49

















CorrespondentDAVE FELDMANBLOOM HERGOTT DIEMER ROSENTHAL LAVIOLETT150 S RODEO DRFL 3BEVERLY HILLS, CA 90212-2410Phone Number: 310 859 6800



Ex. 2, Page 50






Mark

(words only): GTL


Current Status: New application will be assigned to an examining attorney approximately 3 months after filing date.





Register: Principal

Law Office Assigned: (NOT AVAILABLE)


Current Location: 042 -New Application Processing




Address:MPS ENTERTAINMENT, LLC



Ex. 2, Page 51


153 Dorado Beach CourtHowell, NJ 07731United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: New Jersey


International Class: 005Class Status: ActiveDietary and nutritional supplements; Dietary beverage supplements for human consumption in liquid and dry mix form; Dietary food supplements; Dietary supplemental drinks; Dietary supplemental drinks in the nature of vitamin and mineral beverages; Food supplements, namely, anti-oxidants; Health food supplements; Liquid nutritional supplement; Meal replacement and dietary supplement drink mixes; Natural herbal supplements; Nutritional and dietary supplements formed and packaged as bars; Nutritional energy bar for use as a meal replacement; Nutritional food bars for use as a meal replacement; Nutritional supplement in the nature of a nutrient-dense, protein-based drink mix; Nutritional supplements; Powdered fruit-flavored dietary supplement drink mix; Powdered nutritional supplement drink mix; Protein supplements; Vitamin and mineral formed and packaged as bars; Vitamin and mineral supplements; Vitamin enriched water; Vitamin fortified beverages; Vitamin preparations; Vitamin supplements; Vitamins; creams and lotions for firming and toning the abdomen and gluteal areas of the body, body reducing creams; health productsBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY








Ex. 2, Page 52





Ex. 2, Page 53






Mark

(words only): GTL


Current Status: A second request for extension of time to file a Statement of Use has been granted.






Register: Principal


Attorney Assigned: TENG SIMON





Address:



Ex. 2, Page 54


MPS ENTERTAINMENT, LLC153 DORADO BEACH COURTHOWELL, NJ 07731United StatesLegal Entity Type: Limited Liability CompanyState or Country Where Organized: New Jersey


International Class: 025Class Status: ActiveCLOTHING, NAMELY, T-SHIRTS AND UNDERWEARBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY





2011-08-29 - Applicant/Correspondence Changes (Non-Responsive) Entered

2011-08-29 - Case Assigned To Intent To Use Paralegal

2011-08-19 - Extension Received With TEAS Petition



2011-08-15 - Abandonment Notice Mailed - No Use Statement Filed

2011-08-15 - Abandonment - No use statement filed



Ex. 2, Page 55




2011-01-15 - Notice Of Approval Of Extension Request E-Mailed















CorrespondentMPS ENTERTAINMENT, LLC153 DORADO BEACH COURTHOWELL NJ 07731



Ex. 2, Page 56


EXHIBIT 3

Ex. 3, Page 1


Ex. 3, Page 2


Ex. 3, Page 3


EXHIBIT 4

Ex. 4, Page 1





Registration Number: 4014420

Mark

(words only): GYM TANNING LAUNDRY


Current Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.




Registration Date: 2011-08-23

Register: Principal



Current Location: 650 -Publication And Issue Section



1. VIACOM INTERNATIONAL INC.

Address:VIACOM INTERNATIONAL INC.


12/8/2011http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=77960149

Ex. 4, Page 2


1515 BroadwayNew York, NY 10036United StatesLegal Entity Type: CorporationState or Country of Incorporation: Delaware


International Class: 024Class Status: ActiveBEACH TOWELSBasis: 1(a)First Use Date: 2010-01-22First Use in Commerce Date: 2010-01-22


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY


2011-08-23 - Registered - Principal Register

2011-07-15 - Extension Of Time To Oppose Process - Terminated

2011-03-29 - Extension Of Time To Oppose Received





2010-12-23 - Approved for Pub - Principal Register (Initial exam)





Ex. 4, Page 3










Attorney of RecordLavatus Powell

CorrespondentLAVATUS POWELLVIACOM INTERNATIONAL INC.1515 BROADWAYNEW YORK, NY 10036-8901Phone Number: 212-846-7007



Ex. 4, Page 4






Mark

(words only): GYM TANNING LAUNDRY








Register: Principal


Attorney Assigned: TRUSILO KELLY JEAN




1. VIACOM INTERNATIONAL INC.



Ex. 4, Page 5


Address:VIACOM INTERNATIONAL INC.1515 BroadwayNew York, NY 10036United StatesLegal Entity Type: CorporationState or Country of Incorporation: Delaware


International Class: 025Class Status: ActiveMENS, WOMENS, AND CHILDRENS CLOTHING, NAMELY, SHIRTS, PANTS, UNDERWEAR, PAJAMAS; JACKETS, SUITS, SKIRTS, STOCKINGS, TIGHTS, TROUSERS, SWEATERS, DRESSES, BLOUSES; FOOTWEAR, HEADWEAR, OUTERWEAR, NAMELY, JACKETS, COATS, HATS, GLOVES, SCARVES, VESTS; SWIMWEAR; SHIRTS, T-SHIRTS, SWEATSHIRTS; JEANS, TROUSERS; HATS, CAPS; BOOTS; SHOES, SANDALS, SLIPPERS; BELTS, SOCKS; TIES; NECKTIESBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY



2011-07-15 - Extension Of Time To Oppose Process - Terminated

2011-03-29 - Extension Of Time To Oppose Received







Ex. 4, Page 6













Attorney of RecordLavatus Powell

CorrespondentLAVATUS POWELLVIACOM INTERNATIONAL INC.1515 BROADWAYC/O TONY ORTIZ 34TH FLOORNEW YORK, NY 10036-8901Phone Number: 212-846-7007



Ex. 4, Page 7


EXHIBIT 5

Ex. 5, Page 1






Mark

(words only): GYM TAN LAUNDRY







Register: Principal


Attorney Assigned: SHOSHO II ERNEST

Current Location: M8X -Law Office 117 - Examining Attorney Assigned




Address:



Ex. 5, Page 2




International Class: 018Class Status: ActiveAthletic bags, backpacks, baby backpacks, knapsacks, duffel bags, tote bags, beach tote bags, luggage, wallets, gym bags, all-purpose carrying bags, book bags, garment bags for travel, garment bags for travel made of leather, shoulder bags, shoe bags for travelBasis: 1(b)First Use Date: (DATE NOT AVAILABLE)First Use in Commerce Date: (DATE NOT AVAILABLE)


(NOT AVAILABLE)


(NOT AVAILABLE)

PROSECUTION HISTORY













Ex. 5, Page 3




Attorney of RecordDave Feldman, Esq.

CorrespondentDAVE FELDMAN, ESQ.BLOOM HERGOTT DIEMER ROSENTHAL LAVIOLETT150 S RODEO DR FL 3BEVERLY HILLS, CA 90212-2410Phone Number: 310 859 6800



Ex. 5, Page 4


UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

APPLICATION SERIAL NO. 85185431 MARK: GYM TAN LAUNDRY

*85185431* CORRESPONDENT ADDRESS: DAVE FELDMAN, ESQ. BLOOM HERGOTT DIEMER ROSENTHALLAVIOLETT 150 S RODEO DR FL 3 BEVERLY HILLS, CA 90212-2410

CLICK HERE TO RESPOND TO THIS LETTER:http://www.uspto.gov/teas/eTEASpageD.htm

APPLICANT: MPS ENTERTAINMENT,LLC

CORRESPONDENT’S REFERENCE/DOCKETNO: N/A CORRESPONDENT E-MAIL ADDRESS:

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUSTRECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THEISSUE/MAILING DATE BELOW. ISSUE/MAILING DATE: The referenced application has been reviewed by the assigned trademark examining attorney. Applicantmust respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a),2.65(a); TMEP §§711, 718.03. POTENTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION The filing dates of pending Application Serial Nos. 77960149 and 77960143 precede applicant’s filingdate. See attached referenced applications. If one or more of the marks in the referenced applicationsregister, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of alikelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP§§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on thisapplication may be suspended pending final disposition of the earlier-filed referenced applications. In response to this Office action, applicant may present arguments in support of registration by addressingthe issue of the potential conflict between applicant’s mark and the marks in the referenced applications.

Ex. 5, Page 5


Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address thisissue later if a refusal under Section 2(d) issues. IDENTIFICATION AND CLASSIFICATION OF GOODS The identification of goods is indefinite and must be clarified as garment bags and shoe bags can beclassified in different classes based on their function as indicated below. See TMEP §1402.01. Applicantmay adopt the following identification, if accurate:

“Athletic bags, backpacks, baby backpacks, knapsacks, duffel bags, tote bags, beach tote bags,luggage, wallets, gym bags, all-purpose carrying bags, book bags, garment bags for travel, garmentbags for travel made of leather, shoulder bags, shoe bags for travel”, in Class 018

“garment bags for storage; shoe bags for storage” , in Class 022

An applicant may amend an identification of goods and services only to clarify or limit the goods andservices; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R.§2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. For assistance with identifying and classifying goods and/or services in trademark applications, please seethe online searchable Manual of Acceptable Identifications of Goods and Services athttp://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04. POSSIBLE ADDITIONAL FEES REQUIRED For an application with more than one international class, called a “multiple-class application,” anapplicant must meet all of the requirements below for those international classes based on an intent to usethe mark in commerce under Trademark Act Section 1(b):

(1) LIST GOODS/SERVICES BY INTERNATIONAL CLASS: Applicant must list thegoods and/or services by international class; and

(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submitan application filing fee for each international class of goods and/or services not covered by thefee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “ViewFee Schedule” under the column titled “Trademarks”).

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01,1403.02(c). DISCLAIMER REQUIRED The applicant must insert a disclaimer of GYM or LAUNDRY in the application because the terms aredescriptive of a function or use of the goods. Applicant’s goods are bags used for storage of gym gearand/or laundry. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). The computerized printing format for the Office’s Trademark Official Gazette requires a standardizedformat for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:

Ex. 5, Page 6


No claim is made to the exclusive right to use GYM or LAUNDRY apart from the mark asshown.

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

/Ernest Shosho/Trademark AttorneyLaw Office 117571-272-9705

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS)response form at http://teasroa.uspto.gov/roa/. Please wait 48-72 hours from the issue/mailing date beforeusing TEAS, to allow for necessary system updates of the application. For technical assistance withonline forms, e-mail [email protected]. WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicantor someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all jointapplicants). If an applicant is represented by an attorney, the attorney must sign the response. PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant doesnot miss crucial deadlines or official notices, check the status of the application every three to four monthsusing Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep acopy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/. TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form athttp://www.uspto.gov/teas/eTEASpageE.htm.

Ex. 5, Page 7


Ex. 5, Page 8


Ex. 5, Page 9


Ex. 5, Page 10


Ex. 5, Page 11


UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

APPLICATION SERIAL NO. 85185431 MARK: GYM TAN LAUNDRY

*85185431* CORRESPONDENT ADDRESS: DAVE FELDMAN, ESQ. BLOOM HERGOTT DIEMER ROSENTHALLAVIOLETT 150 S RODEO DR FL 3 BEVERLY HILLS, CA 90212-2410

GENERAL TRADEMARK INFORMATION:http://www.uspto.gov/main/trademarks.htm

APPLICANT: MPS ENTERTAINMENT, LLC

CORRESPONDENT’S REFERENCE/DOCKETNO: N/A CORRESPONDENT E-MAIL ADDRESS:

SUSPENSION NOTICE: NO RESPONSE NEEDED ISSUE/MAILING DATE: The trademark examining attorney is suspending action on the application for the reason(s) stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq. The USPTO will periodically conduct a status check of the application to determine whether suspensionremains appropriate, and the trademark examining attorney will issue as needed an inquiry letter toapplicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04. No response to this notice is necessary; however, if applicant wants to respond, applicant should use the“Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.uspto.gov/rsi/rsi. The examining attorney has searched the Office records and has found no similar registered mark thatwould bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. Action on this application is suspended pending the disposition of: - Application Serial No(s). 77960149 and 77960143 Since applicant's effective filing date is subsequent to the effective filing date of the above-identified

Ex. 5, Page 12


application(s), the latter, if and when it registers, may be cited against this application in a refusal toregister under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d). See 37 C.F.R. §2.83; TMEP§§1208 et seq. A copy of information relevant to this pending application(s) was sent previously. Applicant may submit a request to remove the application from suspension to present arguments related tothe potential conflict between the relevant application(s) or other arguments related to the ground forsuspension. TMEP §716.03. Applicant's election not to present arguments during suspension will notaffect the applicant's right to present arguments later should a refusal in fact issue. If a refusal does issue,applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit aresponse. 15 U.S.C. §1062(b); 37 C.F.R. §2.62. The following refusal(s)/requirement(s) is/are continued and maintained: disclaimer requirement.

/Ernest Shosho/Trademark AttorneyLaw Office [email protected]

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant doesnot miss crucial deadlines or official notices, check the status of the application every three to four monthsusing Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep acopy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/. TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form athttp://www.uspto.gov/teas/eTEASpageE.htm.

Ex. 5, Page 13


EXHIBIT 6

Ex. 6, Page 1


(Photo: Danielle Levitt)

“I

What Attracted Us

to Côte Crass?

•

Jersey Shore's The

Situation

•

Weekend Journeys to

Three

Very Different New Jerseys

•

New York Magazine

The Situation With The SituationBy Emma Rosenblum Published Jun 20, 2010

have

a tell

-all

book about where I came from, as well as a workout video. There’s a single with D.J. Class and

Fatman Scoop—I’m not going to claim to be a singer, but my voice is in it and the song is

technically about me. We also have two workout supplements:a fat burner, as well as a creatine product

for a pre-workout drink. I’m working with two clothing lines, and an iPhone app—it’s a GTL locator.

Wherever you are in the U.S., you can locate your nearest gym, tanning, and laundry.”

Mike “The Situation” Sorrentino is sitting at the Beachcomber Bar & Grill in Seaside Heights, New

Jersey, talking about everything that’s come from his appearance on Jersey Shore, the show that made

him famous enough to make money off a branded creatine shake. He’s wearing a dizzying black-and-

white graphic T-shirt, a neon-print bathing suit, and a bedazzled blue baseball cap. He keeps his

sunglasses on. “Every day I wake up and my popularity gets bigger and bigger. The show went

international, and I read that it’s very big overseas, especially ‘The Situation’—my name, or my

character—is known worldwide now. Abercrombie & Fitch, their most popular shirt, they told me, is

‘Fitchuation.’ I mean, where did they get that from? Obviously from myself.”

Two years ago, Mike Sorrentino was a struggling fitness model–slash–stripper living in Staten Island.

“At 25, I had lost my job due to the economy, and my family wanted me to become a policeman or

firefighter, but I knew there were other things out there for me. I sent some pictures to New York City

and a model agency called and said, ‘Where have you been?’ So my friends took me out to celebrate in

some bar where the girls wear bikinis and guys have shorts on, and a girl was holding her boyfriend’s

hand, and as she walked by me, she’s like, ‘Oh my God, honey, look at his abs!’ And my friends were like,

‘Dude, that’s a situation!’ And I looked down and I was like, ‘That’s the situation!’ ” Sorrentino picks at

his chicken sandwich. The Beachcomber is one of his summer favorites (and, memorably, where his

castmate Snooki was punched in the face), but he’s eating light so as not to lose his trademark.Literally.

He filed to have “The Situation” trademarked after season one, in the midst of a short legal battle with

his brother.

When Sorrentino landed an audition for the pilot of Jersey Shore, MTV was canny enough to ignore the

fact that he wasn’t actually from New Jersey. At this point, it hardly matters; his most famous

catchphrase—“GTL, baby. Gym, Tanning, Laundry”—has become an unofficial state motto. To

Sorrentino, though, New Jersey is just a launching pad. “I have meetings in L.A. with studio houses, and

they want to see if they can find a spot for me in future roles, whether it’s G.I. Joe 2 or The Fast and the

Furious 5. Right now I’m the biggest name in reality, but I’d like to keep moving forward. The only thing

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Ex. 6, Page 2


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I can kind of compare it to is The Rock. The Rock started in the WWF, but he eventually transcended

and moved into film. Now he’s Dwayne ‘The Rock’ Johnson, just how hopefully one day I’ll be Mike ‘The

Situation’ Sorrentino.”

In the meantime, the new season of Jersey Shore starts July 29. Sorrentino is cagey on how his

newfound fame affected his relationship with other cast members. “I can’t really delve into how people

dealt with me on the show, but how people treat each other based on how famous they are off the show

… that could be possibly a variable,” he says, pulling down his sunglasses to indicate he’s serious. While

most of this season’s episodes were actually filmed in Miami (winter on the Jersey shore isn’t conducive

to GTL), the cast is set to return to Seaside Heights in July to film its final episodes. “You know what?”

says Sorrentino, pausing to appreciate the screams of “The Situation!” and “GTL!” coming from fans

who’ve gathered outside the bar. “It’ll probably be nice to be home.”

Next: What Shore Are You Looking For?

RECENT COMMENTS ON THIS ARTICLE

BY VOGUETTE on 06/23/2010 at 8:14 pm

BY SC10017 on 06/23/2010 at 9:00 am

Related:

Archive: “Guides”•Articles by Emma Rosenblum•Table of Contents: Jun 28, 2010 issue of New York | Subscribe!•

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Where to Get Outside and Play! New York's New Lobster Economy

Helen Mirren Wants to Be a Bad Girl Prince of the Fire Island Pines

Elevated Drinking: A Rooftop Bar Guide Supersize Cocktail Recipes

The Lure of the Jersey Shore How Dr. Luke Crafts Perfect Summer Songs

Sia, the Power Balladist Who Wants to Party Nicki Minaj, the Rapper With a Crush on Meryl Streep

Edelstein on Toy Story 3's Seasonal Nostalgia

Read All Comments | Add YoursJOIN THE DISCUSSION

Not trying to take away from the guy, but I've seen better abs. And no, they didn't belong to celebs or pseudo-celebs.

The Rise and Fall of the US , now in freefall mode

See All 2 Comments | Add Yours

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Ex. 6, Page 3


Documents

Abercrombie - Motion to Dismiss