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1 BRUNO W. TARABICHI, CA State Bar No. 215129 [email protected] 2 OWENS TARABICHI LLP 111 N. Market St., Suite 730 3 San Jose, California 95113 Telephone: 408.298.8200 4 Facsimile: 408.521.2203 Pro Hac Vice 5 PUOY K. PREMSRIRUT, State Bar No. 7141 6 [email protected] BROWN BROWN & PREMSRIRUT 7 520 S. Fourth Street, Second Floor Las Vegas, NV 89101 8 Telephone: 702.384.5563 Facsimile: 702.385.1752 9 Attorneys for Plaintiff 10 Russell Road Food and Beverage, LLC 11 UNITED STATES DISTRICT COURT 12 DISTRICT OF NEVADA

13 RUSSELL ROAD FOOD AND BEVERAGE, LLC, a Nevada limited Case No. 2:12-cv-01514-LRH-GWF 14 liability company, PLAINTIFF RUSSELL ROAD FOOD AND 15 Plaintiff, BEVERAGE, LLC’S OPPOSITION TO DEFENDANTS FRANK SPENCER AND 16 vs. CRAZY HORSE CONSULTING'S MOTION FOR PRELIMINARY 17 FRANK SPENCER, an individual; INJUNCTION CRAZY HORSE CONSULTING, INC., an 18 Ohio corporation; and DOES 1 – 50, Case Filed: August 24, 2012 inclusive, Judge: Honorable Larry R. Hicks 19 Defendants. 20 FRANK SPENCER, an individual; and 21 CRAZY HORSE CONSULTING, INC., an Ohio corporation, 22 Counterclaimants, 23 vs. 24 RUSSELL ROAD FOOD AND 25 BEVERAGE, LLC, a Nevada limited liability company, 26 Counterdefendant. 27 28 owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 TABLE OF CONTENTS 2

3 I. INTRODUCTION ...... 1

4 II. RELEVANT BACKGROUND ...... 2

5 A. The original CRAZY HORSE and crowded field of CRAZY HORSE marks ...... 2

6 B. Crazy Horse In Las Vegas and Russell Road’s adoption of CRAZY HORSE III ...... 3

7 C. Spencer and CHC try to appropriate the widely adopted CRAZY HORSE mark ...... 4

8 III. ARGUMENT ...... 5

9 A. Spencer and CHC will suffer no irreparable harm if an injunction is denied ...... 6

10 1. Spencer and CHC’s delay of over a year evidences a lack of irreparable harm ...... 7

11 2. Spencer and CHC are not entitled to an injunction because monetary damages are

12 adequate as evidenced by their offer to license Russell Road ...... 9

13 3. Spencer and CHC are not entitled to an injunction because they do not use the

14 CRAZY HORSE mark in Las Vegas or any nearby geographic markets ...... 10

15 B. Spencer and CHC cannot demonstrate a likelihood of success on the merits ...... 12

16 1. Spencer and CHC are bound by a co-existence agreement that permits Russell Road to

17 use of the CRAZY HORSE III mark ...... 12

18 2. Rusell Road’s use of CRAZY HORSE III does not create a likelihood of confusion

19 with Spencer and CHC’s purported use of CRAZY HORSE ...... 14 20 a. The crowded field of CRAZY HORSE marks precludes confusion ...... 15

21 b. The lack of proximity of services weighs against confusion ...... 16 22 c. Similarity of Marks ...... 16 23 d. Evidence of Actual Confusion ...... 18 24 e. The parties’ differing marketing channels weigh against confusion ...... 18 25 f. The type and nature of the parties’ services weigh against confusion ...... 19 26 g. Russell Road adopted the CRAZY HORSE III mark in good faith ...... 20 27 h. The expansion of product lines factor is neutral ...... 20 28 i. Consent agreements demonstrate there is no likelihood of confusion...... 21 owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law i (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 3. Spencer and CHC’s registration and applications are likely void or invalid ...... 22

2 4. The preliminary injunction should also be denied due to Spencer and CHC’s

3 fraudulent marking, which constitutes unclean hands ...... 23

4 C. The Balance of Hardships Tips Significantly in Russell Road’s Favor ...... 24

5 D. A preliminary injunction is not in the public interest ...... 25

6 E. Spencer and CHC should be required to post a $23 million bond as security in the event

7 that Russell Road is wronglyfully enjoined ...... 26

8 F. A preliminary injunction should not be granted because it alters the status quo ...... 28

9 G. Russell Road requests leave to take discovery to oppose this motion if necessary ...... 30

10 IV. CONCLUSION ...... 30 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law ii (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 TABLE OF AUTHORITIES 2 Cases 3 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, 447 F. Supp. 2d 266, 287–88 (S.D.N.Y. 4 2006) ...... 10 5 3 Point Distribution, LLC v. CafePress.com, Inc., No. 07-0432, 2008 U.S. Dist. LEXIS 17128, *7 6 (C.D. Cal. Feb. 25, 2008) ...... 12 7 AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979) ... 1, 12, 15, 16, 18, 19, 20, 26 8 Apple, Inc. v. Samsung Elecs. Co., No. 12-CV-00630, 2012 U.S. Dist. LEXIS 90979, *190-191 9 (N.D. Cal. July 1, 2012) ...... 9 10 Blue v. Johnson, No. 07-05370, 2008 U.S. Dist. LEXIS 120253, *6 (N.D. Cal. May 9, 2008) .... 28 11 BoomerangIt, Inc. v. ID Armor, Inc., No. 5:12-cv-0920, 2012 U.S. Dist. LEXIS 86382, *9 (N.D. 12 Cal. June 21, 2012) ...... 7 13 Brennan’s, Inc. v. Brennan’s Restaurant, LLC, 360 F.3d 125, 134–35 (2d Cir. 2004) ..... 11, 13, 16 14 Bridges in Org., Inc. v. Bureau of Nat’l Affairs, Inc., No. B-91-23, 1991 U.S. Dist. LEXIS 15449, 15 * 7 (D. Md. June 25, 1991) ...... 29 16 Caesars World, Inc. v. July, No. 11-cv-00536, 2011 U.S. Dist. LEXIS 122914, *4–8 (D. Nev. 17 Oct. 24, 2011) ...... 24 18 California Packing Corp. v. Sun-Maid Raisin Growers, 64 F.2d 370 (CCPA 1933) ...... 14 19 Calvin Klein Cosmetics Corp. v. Lenox Laboratories, Inc., 815 F.2d 500 (8th Cir. 1987) ..... 23, 25 20 Chalk v. U.S. Dist. Ct., 840 F.2d 701, 704 (9th Cir. 1988) ...... 28 21 Clark County Prosecutors Ass’n v. Clark County Bd. of Comm’r, No. 2:11-cv-1111, 2012 U.S. 22 Dist. LEXIS 64811, *5 (D. Nev. May , 2012) ...... 6 23 CLT Logistics v. River West Brands, 777 F. Supp. 2d 1052, 1072 (E.D. Mich. 2011) (citing and 24 referencing Edelman’s article) ...... 8 25 Collins v. Gourdine, No. 2:12-cv-01599, 2012 U.S. Dist. LEXIS 133046, at *5 (D. Nev. Sept. 18, 26 2012) ...... 7, 9 27 ConocoPhillips Co. v. Gonzalez, No. 5:12-cv-00576, 2012 U.S. Dist. LEXIS 20972, *8-9 (N.D. 28 owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law iii (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 Cal. Feb. 17, 2012) ...... 7 2 Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358, 364 (2d Cir. 1959) ...... 10 3 Delphon Indus., LLC v. Int’l Test Solutions Inc., No. 11-cv-1338, 2012 U.S. Dist. LEXIS 119588, 4 *10 (N.D. Cal. Oct. 17, 2011) ...... 7 5 Easton Business Opportunities, Inc. v. Town Executive Suites-Eastern Marketplace, LLC, 230 6 P.3d 827, 830 (Nev. 2010) ...... 13 7 eBay Inc. v. MercExchange, LLC, 547 US 388, 393 (2006) ...... 6 8 Flexible Lifeline Systems, Inc. v. Precision Lift, Inc., 654 F.3d 989, 1000 (9th Cir. 2011) ...... 6 9 Fox Stanley Photo Prods., Inc. v. Otaguro, 339 F. Supp. 1293, 1295 (D. Mass. 1972) ...... 23 10 Freedom Card, Inc. v. JP Morgan Chase & Co., 432 F.3d 463 (3d Cir. 2005) ...... 21 11 George A.Z. Johnson, Jr., Inc. v. Sosebee, 397 F. Supp. 2d 706, (D.S.C. 2005) ...... 11 12 Gold’s Gym Enterprises, Inc. v. Nixon, 1981 U.S. Dist. LEXIS 17407, *2 (D. Ariz. 1981) ...... 22 13 Hansen Beverage Co. v. Cytosport, Inc., No. 09-0031, 2009 U.S. Dist. LEXIS 120508, *71 (C.D. 14 Cal. Nov. 4, 2009) ...... 27 15 Herb Reed Enter., LLC v. Florida Entm’t Mgmt., Inc., No. 2:12-cv-00560, 1012 U.S. Dist. LEXIS 16 102566, *44 (D. Nev. July 24, 2012) ...... 7 17 InstantCert.com, LLC v. Advanced Online Learning, LLC, No. 2:11-cv-1833, 2012 U.S. Dist. 18 LEXIS 121103, *14 (D. Nev. Aug. 27, 2012) ...... 6 19 JL Beverage Co., LLC v. Beam, Inc., No. 2:11-cv-00417, 2012 U.S. Dist. LEXIS 137076, *45-46 20 (D. Nev. Sept. 25, 2012) ...... 7 21 Jupiter Hosting Inc. v. Jupitermedia Corp., 76 U.S.P.Q.2d 1042 (N.D. Cal. 2004) ...... 17 22 Kerr Corp. v. North American Dental Wholesalers, Inc., No. 11-0313, 2011 U.S. Dist. LEXIS 23 61779, *6-14 (N.D. Cal. June 9, 2011) ...... 8 24 Kerzner Int’l Ltd. v. Monarch Casino & Resort, Inc., 675 F. Supp. 2d 1029, 1047 (D. Nev. 2009) 25 ...... 11 26 King Candy Co. v. Eunice King’s Kitchen Inc., 182 U.S.P.Q. 108 (C.C.P.A. 1974) ...... 17 27 L.F. Gaubert & Co., Inc. v. Institute of Electrical & Electronics Engineers, Inc., 563 F. Supp. 28 122, 128 (E.D. La. 1983) ...... 23, 24 owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law iv (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 Los Angeles Mem’l Coliseum Comm'n v. Nat'l Football League, 634 F.2d 1197, 1202 (9th 2 Cir.1980) ...... 6 3 Maidenform, Inc. v. Munsingwear, Inc., 1977 U.S. Dist. LEXIS 14726, *17–18 (S.D.N.Y. 1977) 4 ...... 27 5 Mail Boxes Etc., Inc. v. CMS Enter., Inc., No. 06-130, 2006 U.S. Dist. LEXIS 17252, *8 (W.D. 6 Okla. Feb. 27, 2006) ...... 29 7 MarketQuest Group, Inc. v. Bic Corp., No. 11-cv-618, 2011 U.S. Dist. LEXIS 128778, *48 (S.D. 8 Cal. Nov. 7, 2011) ...... 26 9 Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1145, 1154 (9th 10 Cir. 2011) ...... 15, 18, 19 11 Oakland Tribune, Inc. v. Chronicle Pub. Co., 762 F.2d 1374, 1377 (9th Cir. 1985) ...... 7 12 One Industries, LLC v. Jim O’Neal Distributing, Inc., 578 F.3d 1154, 1164 (9th Cir. 2009) ...... 15 13 Paleteria La Michocana, Inc. v. Productos Lacteos Tocumbo S.A. De C.V., No. 11-1623, 2012 14 U.S. Dist. LEXIS 157074, *8-9 (D.D.C. Nov. 1, 2012) ...... 29 15 Philip Morris Inc. v. Star Tobacco Corp., 879 F. Supp. 379 (S.D.N.Y. 1995) ...... 27 16 Playboy Enters., Inc. v. Netscape Communciations Corp., 354 F.3d 1020, 1029 (9th Cir. 2004) 20 17 Porsche v. Manny’s Porshop, Inc., No. 96 C 5924, 1997 U.S. Dist. LEXIS 4519, *28 (N.D. Ill. 18 Apr. 9, 1997) ...... 29 19 Premier Dental Prod. Co. v. Darby Dental Supply Co., 794 F.2d 850, 853 (3d Cir. 1986) ...... 14 20 Protech Diamond Tools, Inc. v. Liao, No. C 08-3684, 2009 U.S. Dist. LEXIS 53382, *19-21 21 (N.D. Cal. June 8, 2009) ...... 8 22 Robi v. Five Platters, Inc., 918 F.2d 1439, 1444 (9th Cir. 1990) ...... 22 23 Rodan & Fields, LLC v. Estee Lauder Cos., No. 10-CV-02451, 2010 U.S. Dist. LEXIS 109573, 24 *20 (N.D. Cal. Oct. 5, 2010) ...... 25 25 Rush Bev. Co., Inc. v. South Beach Bev. Co., Inc., No. 01-C-5684, 2002 U.S. Dist. LEXIS 23486, 26 *28–33 (N.D. Ill. Dec. 6, 2002) ...... 13 27 Signeo USA, LLC v. SOL Republic, Inc., No. 11-6370, 2012 U.S. Dist. LEXIS 30560, *3 (N.D. 28 Cal. 2012) ...... 30 owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law v (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 Sterling Acceptance Corp. v. Tommark, Inc., 227 F. Supp.2d 454, 468 (D. Md. 2002 ...... 23 2 Stokley-Van Camp, Inc. v. Coca-Cola Co., 2 USPQ2d 1225 (N.D. Ill. 1987) ...... 25 3 Studio Red, Inc. v. Rockwell Architecture Planning & Design, P.C., No. C 07-396, 2007 U.S. 4 Dist. LEXIS 39562, *12 (N.D. Cal. May 18, 2007) ...... 8 5 T&T Mfg. Co. v. A.T. Cross Co., 587 F.2d 533 (1st Cir. 1978) ...... 13 6 Team Gordon, Inc. v. Specialized Bicycle Components, Inc., No. 10-1379, 2010 U.S. Dist. LEXIS 7 130738, *15 (C.D. Cal. Nov. 18, 2010) ...... 27 8 The Active Network, Inc. v. Electronic Arts, Inc., No. 10-cv-1158, 2010 U.S. Dist. LEXIS 90602, 9 *17 (S.D. Cal. Aug. 31, 2010) ...... 25 10 The Topline Corp. v. Report Footwear, Inc., No. C07-938Z, 2007 U.S. Dist. LEXIS 58983, *48 11 (W.D. Wash. Aug. 13, 2007) ...... 27 12 Virginia Tech Found. Inc. v. Family Group Ltd., 666 F. Supp. 856, 860 (W.D. Va. 1987) ...... 29 13 Waukesha Hygeia Mineral Springs Co. v. Hygeia Sparkling Distilled Water Co., 63 F. 438 (7th 14 Cir. 1894) ...... 13 15 Welch Allyn, Inc. v. Tyco Int’l Serv. AG, 200 F. Supp. 2d 130, 136, n.4 (N.D.N.Y. 2002) ...... 29 16 Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008) ...... 6, 25 17 Statutes 18 15 U.S.C. § 1057 ...... 22 19 Other Authorities 20 Lawrence W. Greene, The Ties That Bind? Considerations in Drafting and Maintaining U.S. 21 Trademark Consent and Coexistence Agreements, INTABulletin Vol. 67 No. 6 (March 15, 22 2012) ...... 14 23 Sandra Edelman & Robert Raskopf, Delay in Filing Preliminary Injunction Motions, 80 TMR 36 24 (1990); 85 TMR 1 (1995); 92 TMR 647 (2002); 99 TMR 1074 (2009) ...... 8 25 26 Treatises 27 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition, §§ 31:31 (2012) 8, 13, 14, 28 23, 25, 27 owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law vi (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 I. INTRODUCTION 2 Defendants Frank Spencer (“Spencer”) and Crazy Horse Consulting, Inc.’s (“CHC”) 3 Motion for Preliminary Injunction is nothing more than transparent gamesmanship. Despite 4 knowing for well over a year that Plaintiff Russell Road Food and Beverage, LLC (“Russell 5 Road”) owns and operates a gentlemen’s club under the CRAZY HORSE III mark, Spencer and 6 CHC did not seek any preliminary relief until Russell Road filed this declaratory action for non- 7 infringement. Their long delay is a clear indication that urgent, extraordinary relief is 8 unnecessary and grounds for denying the injunction. Instead of expeditiously seeking preliminary 9 relief, Spencer and CHC tried to persuade Russell Road to take a license, an offer Russell Road 10 rejected from the outset. Their repeated attempts to extract licensing fees from Russell Road are a 11 clear indication that money damages are adequate and grounds for denying the injunction. 12 Simply put, there is no irreparable harm to support the issuance of a preliminary injunction. 13 The absence of irreparable harm is boldly underscored by the fact that the parties do not 14 compete in the same geographic market. Spencer and CHC operate a few adult clubs under the

15 CRAZY HORSE name in Ohio and claim to license the name to a club in South Carolina,1 16 whereas Russell Road’s use of the CRAZY HORSE III name is limited to a gentlemen’s club in 17 Las Vegas, Nevada. Over two thousand miles separate the parties’ respective clubs. In such 18 situations, federal courts systemically invoke the Dawn Donut rule, a per se rule against issuing 19 injunctions in trademark cases when the parties do not compete in the same geographic market, 20 which necessitates the denial of Spencer and CHC’s Motion for Preliminary Injunction.

21 Spencer and CHC’s Motion for Preliminary Injunction should also be denied because they

22 cannot show that they are likely to prevail on their claim for trademark infringement.2 In fact, 23 they are bound by a Co-Existence Agreement that explicitly permits Russell Road to use the 24 CRAZY HORSE III trademark. The agreement by itself affords a complete defense to their claim

25 1 Although Spencer and CHC claim to license the CRAZY HORSE mark to a gentlemen’s club in South Carolina, it 26 appears that this club has recently changed its name from Crazy Horse to Thee Dollhouse. See www.myrtlebeachcrazyhorse.com. If so, Spencer and CHC’s use is limited even further just to Ohio. 27 2 Although Spencer and CHC asserted counterclaims for unfair competition and dilution in their Answer and Counterclaims, (PACER Document #12), their Motion for Preliminary Injunction is based solely on their 28 counterclaim for trademark infringement. owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 1 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 of infringement. Even in the absence of such agreement, Spencer and CHC still could not 2 demonstrate that they are likely to succeed on the merits because an evaluation of the Sleekcraft 3 factors establishes that Russell Road’s use of the CRAZY HORSE III mark does not create a 4 likelihood of confusion. For instance, the first Sleekcraft factor, strength of the mark, is 5 particularly significant in this action and should be given substantial weight because the CRAZY 6 HORSE mark is part of a crowded field and widely adopted by third parties in connection with a 7 variety of goods and services, including gentlemen’s clubs. This crowded field means that even 8 small differences between marks are sufficient to obviate a likelihood of confusion and, as a 9 matter of law, Spencer and CHC cannot prevent Russell Road from using its CRAZY HORSE III 10 mark. Although this factor alone is overwhelmingly dispositive of the likelihood of confusion 11 analysis, the remaining Sleekcraft factors also indicate that there is no likelihood of confusion. 12 And once this Court considers the hardships implicated by the requested injunction, equity 13 demands that a preliminary injunction not issue. If an injunction is denied, Spencer and CHC will 14 truly suffer no harm. The status quo will be maintained, and things will continue as they have for 15 over three years. Spencer and CHC will still have an opportunity to try their case to a jury, and in 16 the unlikely event they prevail, they can obtain permanent injunctive relief and money damages 17 for any past infringement. On the other hand, if the injunction is granted, the status quo will be 18 changed, and Russell Road will lose millions of dollars and suffer untold damage to its reputation 19 and the CRAZY HORSE III brand. The hardships tip in Russell Road’s favor, and it’s not even 20 close. 21 Against this backdrop, it is clear that the real motivation behind Spencer and CHC’s 22 Motion for Preliminary Injunction is to gain an improper advantage in this lawsuit.

23 Consequently, this Court should summarily deny the Motion. 24 II. RELEVANT BACKGROUND 25 A. The original CRAZY HORSE and crowded field of CRAZY HORSE marks 26 In 1951, long before Spencer or CHC started using CRAZY HORSE, Alain Bernardin 27 opened Le Crazy Horse in Paris, France. Tarabichi Decl., ¶3, Exs. B, C. Also known as Le 28 Crazy Horse Saloon or Le Crazy Horse de Paris, the Parisian cabaret featured racy burlesque owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 2 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 routines performed by nude female dancers. Id. In the over 50 years since it opened, Le Crazy 2 Horse has became world renown and been featured in several documentaries. Id. 3 Not surprisingly, the success and notoriety of Le Crazy Horse spawned a multitude of 4 CRAZY HORSE gentlemen’s clubs, night clubs, restaurants, and bars across the United States 5 and the world. Id. at ¶¶ 4–5, Exs. D, E. These countless clubs are not owned or licensed by the 6 original Le Crazy Horse in Paris nor by Spencer or CHC; rather, they are owned and operated by 7 independent and unaffiliated third parties. Id. In fact, it is quite likely that a CRAZY HORSE 8 gentlemen’s club, night club, or restaurant/bar can be found in just about every major city in the 9 United States. Id. By way of example, there are Crazy Horse gentlemen’s clubs in San 10 Francisco, California, just outside of Atlantic City, New Jersey, in Detroit, Michigan, and many 11 more that are not affiliated with Spencer, CHC, or Russell Road. Id. 12 B. Crazy Horse In Las Vegas and Russell Road’s adoption of CRAZY HORSE III 13 There is a long and storied history surrounding the use of the CRAZY HORSE name and 14 mark in Las Vegas, Nevada. During the late 1970s/early 1980s, Jack Galardi opened the original 15 Crazy Horse Saloon club on Paradise Road in Las Vegas, which eventually closed in the late 16 1980s. Id. at ¶¶ 8–12, Ex. F–G. Shortly after the closure of the original Crazy Horse Saloon, the 17 Crazy Horse Too gentlemen’s club opened at 2466 Industrial Road in Las Vegas. Id. As its 18 name implies, Crazy Horse Too was patterned after the Crazy Horse Saloon on Paradise Road. 19 Id. Following the well-publicized legal difficulties of its owner, the Crazy Horse Too club closed 20 its doors on September 7, 2006. Id. 21 About three years later, on or about September 4, 2009, Russell Road opened a 22 gentlemen’s club under the CRAZY HORSE III name in the Playground complex, a 40,000 23 square foot complex in Las Vegas that features 24-hour attractions, including nightclubs, dining 24 establishments, live music, and live sports viewing. Sostilio Decl., ¶ 2, Ex. A. Since opening its 25 CRAZY HORSE III club over three years ago, Russell Road has not experienced any actual 26 confusion arising out of its use of the CRAZY HORSE III name and mark. Id. at ¶ 8. No 27 customers or other third parties have ever inquired about any sponsorship, affiliation, or other 28 relationship between Russell Road and Spencer or CHC or the parties’ respective clubs. Id. owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 3 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 C. Spencer and CHC try to appropriate the widely adopted CRAZY HORSE mark 2 Spencer is an Ohio resident who claims to have used the CRAZY HORSE name for strip 3 clubs in Ohio since 1978. Answer, ¶ 122 (PACER Doc #12). Despite Spencer’s claim to have 4 used the CRAZY HORSE mark since 1978, he did not file federal trademark applications until 5 over 30 years later. Tarabichi Decl., ¶ 13, Ex. H. During those 30 years, he also failed to engage 6 in any policing or enforcement of his alleged rights in the CRAZY HORSE mark even though the 7 CRAZY HORSE mark was being widely adopted and used by third parties across the United

8 States for gentlemen’s clubs, night clubs, restaurants, and bars.3 Id. at ¶¶4–7, Ex. A. 9 At some point during the last couple of years, Spencer altered course in his newly 10 determined quest to profit from the CRAZY HORSE mark. After 30 years of failing to protect 11 and enforce his alleged rights, Spencer’s new objective was to anoint himself as the exclusive 12 owner of the CRAZY HORSE mark and systematically contact each existing Crazy Horse 13 establishment to shake them down for licensing fees. Of course, the problem with his scheme 14 was and continues to be the fact that he is not the exclusive owner of the CRAZY HORSE mark. 15 Nevertheless, Spencer proceeded to file two federal trademark applications with the 16 United States Patent and Trademark Office (“USPTO”) for the CRAZY HORSE trademark, U.S. 17 Application Serial No. 77/557,722 and U.S. Application Serial No. 85/217,717. Id., ¶¶ 13–17, 18 Ex. H. However, upon examination, the USPTO refused registration of Frank Spencer’s 19 applications to register CRAZY HORSE based on U.S. Trademark Registration No. 3,044,028 for 20 CRAZY HORSE, owned by an individual named Carl Reid in South Carolina. Id. 21 After forming CHC on August 19, 2010, Frank Spencer proceeded to orchestrate an 22 assignment of U.S. Trademark Registration No. 3,044,028 from Carl Reid to CHC in order to 23 overcome the USPTO’s rejection of his applications. Id., ¶¶ 18–20, Exs. L–M. The assignment 24 was dated December 10, 2010, and recorded with the USPTO on January 11, 2011. Id. 25 However, before assigning U.S. Trademark Registration No. 3,044,028 to CHC, Carl Reid 26 had executed a Trademark Co-Existence Agreement with Crazy Horse Too A Gentlemen’s Club,

27 3 Spencer and CHC point to the very recent 2011 case they filed against Joal Restaurant. What they fail to mention to this Court is that Joal Restaurant never appeared and defaulted, which is how Spencer and CHC got the injunction. 28 There was not determination on the merits. See CHC v. Joal, No. 1-11-cv-023550 (SDNY 2011). owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 4 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 a Nevada company. Id., ¶¶ 25-29, Exs. P-R. In the Co-Existence Agreement, Carl Reid 2 expressly permitted Crazy Horse Too A Gentlemen’s Club to adopt, use, and register any mark 3 containing CRAZY HORSE so long as it did not include the words PURE GOLD’S. Id. On 4 August 16, 2012, Crazy Horse Too a Gentlemen’s Club assigned its rights under the Co- 5 Existence Agreement with Carl Reid to Russell Road. Id. As a result, pursuant to the terms of 6 the Co-Existence Agreement, Russell Road has the contractual right to use the CRAZY HORSE 7 III mark. Id. Moreover, Spencer and CHC, as the assignee of Carl Reid’s U.S. Trademark 8 Registration No. 3,044,028, are bound by the Trademark Co-Existence Agreement. Id. 9 In addition to the Trademark Co-Existence with Russell Road, on January 26, 2012, 10 Spencer and CHC entered into another consent agreement with JAT Investments, LLC. Id., ¶ 22, 11 Ex. O. In the agreement, Spencer and CHC consented to JAT Investment, LLC’s use of PURE 12 GOLD’S CRAZY HORSE for gentlemen’s clubs and JAT Investment, LLC consented to Spencer 13 and CHC’s use of CRAZY HORSE for gentlemen’s clubs. Id. 14 Despite these consent agreements and the crowded field of CRAZY HORSE marks, 15 Spencer and CHC have been contacting third parties who use and have been using the CRAZY 16 HORSE name for lengthy periods of time and demanding that they enter into a licensing or 17 franchising arrangement with CHC. In August of 2011, Spencer contacted Russell Road about its 18 use of the CRAZY HORSE III mark and demanded that Russell Road take a license. Lenson 19 Decl., ¶¶ 2-3. Russell Road declined because it did not believe it infringed any rights owned by 20 Spencer or CHC and did not require a license. Id.; Tarabichi Decl., ¶¶ 32-34, Exs. T-V. 21 However, because Spencer and CHC continued to claim that Russell Road was infringing, Russell 22 Road filed this declaratory action for noninfringement. Spencer and CHC’s Motion for 23 Preliminary Injunction in response to Russell Road’s Complaint is a thinly veiled attempt to gain 24 leverage in this lawsuit. 25 III. ARGUMENT 26 A preliminary injunction may be issued only if the moving party establishes (1) a 27 likelihood of success on the merits; (2) a likelihood of irreparable harm in the absence of 28 preliminary relief; (3) that the balance of equities tips in its favor; and (4) that the injunction is in owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 5 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 the public interest. Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). In deciding 2 whether to grant a motion for preliminary injunction, a court must be mindful that “injunctive 3 relief [is] an extraordinary remedy that may only be awarded upon a clear showing that the 4 plaintiff is entitled to such relief.” Id. at 22. 5 A. Spencer and CHC will suffer no irreparable harm if an injunction is denied 6 At the core, the purpose of injunctive relief is to protect a party from irreparable harm 7 when legal remedies are inadequate. Los Angeles Mem’l Coliseum Comm'n v. Nat'l Football 8 League, 634 F.2d 1197, 1202 (9th Cir.1980). In fact, “‘the single most important prerequisite for 9 the issuance of a preliminary injunction is a demonstration that if it is not granted the applicant is 10 likely to suffer irreparable harm before a decision on the merits can be rendered.’” 11 InstantCert.com, LLC v. Advanced Online Learning, LLC, No. 2:11-cv-1833, 2012 U.S. Dist. 12 LEXIS 121103, *14 (D. Nev. Aug. 27, 2012); Clark County Prosecutors Ass’n v. Clark County 13 Bd. of Comm’r, No. 2:11-cv-1111, 2012 U.S. Dist. LEXIS 64811, *5 (D. Nev. May , 2012). 14 Since irreparable harm is the most important requirement for preliminary relief, it should 15 be no surprise that a party moving for preliminary relief must make a strong showing of 16 irreparable harm. More specifically, the U.S. Supreme Court recently clarified that a party 17 moving for a preliminary injunction must establish more than the mere possibility of irreparable 18 harm—it must establish that irreparable injury is likely. Winter, 555 U.S. at 22. 19 In addition, the Supreme Court also clarified that irreparable harm can no longer be 20 presumed—even in trademark cases. eBay Inc. v. MercExchange, LLC, 547 US 388, 393 (2006); 21 Flexible Lifeline Systems, Inc. v. Precision Lift, Inc., 654 F.3d 989, 1000 (9th Cir. 2011) 22 (presumption of irreparable harm in copyright cases no longer permitted). Before the Supreme 23 Court’s decision in eBay and the Ninth Circuit’s decision in Flexible Lifeline, courts would 24 routinely presume irreparable harm in a trademark infringement case if the party moving for a

25 preliminary injunction could show a likelihood of success on the merits.4 Now, after those 26 decisions, the District of Nevada and the other district courts within the Ninth Circuit have held

27 4 Even under the old standard that allowed a court to presume irreparable harm upon a showing of likelihood of 28 success on the merits, the presumption was rebuttable. owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 6 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 that irreparable harm may not be presumed even if a likelihood of success on the merits is shown. 2 BoomerangIt, Inc. v. ID Armor, Inc., No. 5:12-cv-0920, 2012 U.S. Dist. LEXIS 86382, *9 (N.D. 3 Cal. June 21, 2012) (holding that “[d]istrict courts in this [Ninth] Circuit that have addressed this 4 issue have found that the governing law has changed, and a plaintiff is not granted the 5 presumption of irreparable harm upon a showing of likelihood of success on the merits.”); Herb 6 Reed Enter., LLC v. Florida Entm’t Mgmt., Inc., No. 2:12-cv-00560, 1012 U.S. Dist. LEXIS 7 102566, *44 (D. Nev. July 24, 2012) (refusing to presume irreparable harm in trademark case). 8 Therefore, when a party moving for preliminary injunction fails to show that irreparable 9 harm is likely, courts deny the motion without reaching the remaining factors. Clark County, 10 2012 U.S. Dist. LEXIS 64811, *5 (“Indeed, where movant fails to establish irreparable harm, 11 courts have denied the motion without considering the remaining three factors.”); Delphon Indus., 12 LLC v. Int’l Test Solutions Inc., No. 11-cv-1338, 2012 U.S. Dist. LEXIS 119588, *10 (N.D. Cal. 13 Oct. 17, 2011) (“Even if a plaintiff establishes a likelihood of success on the merits, ‘the absence 14 of a substantial likelihood of irreparable injury would, standing alone, make preliminary relief 15 improper.”); Collins v. Gourdine, No. 2:12-cv-01599, 2012 U.S. Dist. LEXIS 133046, at *5 (D. 16 Nev. Sept. 18, 2012) (denying preliminary injunction for no likelihood of irreparable harm). 17 1. Spencer and CHC’s delay of over a year evidences a lack of irreparable harm 18 If the moving party has delayed in seeking a preliminary injunction, such delay undercuts 19 the sense of urgency that ordinarily accompanies a motion for preliminary relief and suggests that 20 there is, in fact, no irreparable injury. Oakland Tribune, Inc. v. Chronicle Pub. Co., 762 F.2d 21 1374, 1377 (9th Cir. 1985). Directly on point, this Court recently denied a motion for preliminary 22 injunction because the moving party had “waited more than one year after it learned of the 23 alleged trademark infringement to file its Motion.” JL Beverage Co., LLC v. Beam, Inc., No. 24 2:11-cv-00417, 2012 U.S. Dist. LEXIS 137076, *45-46 (D. Nev. Sept. 25, 2012). 25 Likewise, other district courts in the Ninth Circuit have also denied preliminary 26 injunctions where the party has waited eight months or more. ConocoPhillips Co. v. Gonzalez, 27 No. 5:12-cv-00576, 2012 U.S. Dist. LEXIS 20972, *8-9 (N.D. Cal. Feb. 17, 2012) (denying 28 preliminary injunction where moving party waited eight months to file); Kerr Corp. v. North owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 7 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 American Dental Wholesalers, Inc., No. 11-0313, 2011 U.S. Dist. LEXIS 61779, *6-14 (N.D. 2 Cal. June 9, 2011) (denying preliminary injunction where moving party waited eight months to 3 file first motion); Protech Diamond Tools, Inc. v. Liao, No. C 08-3684, 2009 U.S. Dist. LEXIS 4 53382, *19-21 (N.D. Cal. June 8, 2009) (denying preliminary injunction and finding no 5 irreparable harm based on moving party’s delay in filing motion); Studio Red, Inc. v. Rockwell 6 Architecture Planning & Design, P.C., No. C 07-396, 2007 U.S. Dist. LEXIS 39562, *12 (N.D. 7 Cal. May 18, 2007) (denying injunction where moving party waited eight months to file). 8 In this regard, a comprehensive study of federal trademark cases reveals motions for 9 preliminary injunctions are denied for lack of irreparable harm when the moving party delayed 10 six months or more before filing the motion. Between 1990 and 2009, Sandra Edelman and 11 Robert Raskopf authored four publications for The Trademark Reporter in a series that addresses 12 the effect of delay in preliminary injunction motions in trademark cases. Sandra Edelman & 13 Robert Raskopf, Delay in Filing Preliminary Injunction Motions, 80 TMR 36 (1990); 85 TMR 1 14 (1995); 92 TMR 647 (2002); 99 TMR 1074 (2009); Tarabichi Decl., ¶ 30, Ex. S. In their articles, 15 Raskopf and Edelman’s study of trademark cases concluded that while a three month delay is 16 generally acceptable, a delay of six months runs a significant risk of denial of a motion for 17 preliminary injunction, and most cases deny a motion for preliminary injunction if a year or 18 more has passed. Their articles and studies have been cited with approval by both courts and the 19 leading trademark practice guide McCarthy on Trademarks. CLT Logistics v. River West Brands, 20 777 F. Supp. 2d 1052, 1072 (E.D. Mich. 2011) (citing and referencing Edelman’s article); J. 21 Thomas McCarthy, McCarthy on Trademarks & Unfair Competition, §§ 31:31 (2012). 22 In the instant case, Russell Road has been using its CRAZY HORSE III mark since at 23 least as early as September 4, 2009. Sostilio Decl., ¶ 2, Ex. A. Now, after more than three years 24 since Russell Road’s initial use of the mark, Spencer and CHC seek preliminary relief 25 implausibly claiming a sense of urgency and irreparable harm. Most fatal to the instant Motion is 26 Spencer and CHC’s knowledge of Russell Road’s use of CRAZY HORSE III for at least over a

27 year, as evidenced by Spencer’s first contact with Russell Road in August 2011.5 Lenson Decl., ¶

28 5 Russell Road does not know when Spencer and CHC first learned of Russell Road’s use of the CRAZY HORSE III owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 8 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 ¶ 2-3. Moreover, Spencer and CHC’s delay in moving for preliminary relief is not attributable to 2 any ongoing settlement discussions; Russell Road unequivocally declared from the outset that it 3 did not infringe and would not take a license. Id.; Tarabichi Decl., ¶¶ 32-34, Exs. T-V. 4 Accordingly, because Spencer and CHC waited well over a year to seek preliminary relief, it is 5 clear that there is no urgency for preliminary relief and no irreparable injury. 6 2. Spencer and CHC are not entitled to an injunction because monetary 7 damages are adequate as evidenced by their offer to license Russell Road 8 In order to prove irreparable harm to obtain a preliminary injunction, the moving party 9 must show that it has no adequate remedy at law. Collins, 2012 U.S. Dist. LEXIS 133046 at *7 10 (moving party “cannot simply repeat the phrase ‘irreparable injury’ without providing a basis for 11 that irreparable injury and expect the Court to find a likelihood of irreparable injury”). In other 12 words, the moving party must show that money damages are not adequate. Id. In this regard, if a 13 trademark owner offers to license its trademark to the alleged infringer or other third parties, it 14 evidences that the money damages can adequately compensate for any alleged infringement such 15 that there is no irreparable harm and a preliminary injunction is not warranted. Apple, Inc. v. 16 Samsung, No. 12-CV-00630, 2012 U.S. Dist. LEXIS 90979, *190-191 (N.D. Cal. July 1, 2012) 17 (“patentee’s willingness to license its patents can weigh against a finding of irreparable harm”). 18 In the instant case, Spencer and CHC have repeatedly tried to persuade Russell Road to 19 license the CRAZY HORSE trademark for monetary compensation. Lenson Decl., ¶¶ 2-3; 20 Tarabichi Decl., ¶¶ 32-34, Exs. T-V. Spencer and CHC admit this in their Answer and Motion. 21 See Answer, ¶¶ 30–33, 147 (PACER Document #12); Defs.’ Mtn., at 9:16–23 (PACER Doc. 22 #14). Likewise, Spencer and CHC also claim to license the CRAZY HORSE mark to two 23 gentlemen’s clubs, one in Ohio and one in South Carolina—presumably in exchange for 24 monetary compensation. Id., ¶¶ 124–25. In light of these undisputed facts, it is clear that, if 25 Spencer and CHC were to somehow prevail in this litigation (though they will not), they could be 26 adequately compensated for any alleged infringement by money damages and a permanent

27 mark. In fact, an office action issued by the USPTO indicates that Spencer and CHC knew about Russell Road at least as early as April 7, 2011— four months earlier than August 2011. Tarabichi Decl., ¶ 31, Ex. K. It is even 28 possible that Spencer and CHC have known about Russell Road’s use since 2009. owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 9 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 injunction to be issued after a full jury trial on the merits. Consequently, Spencer and CHC 2 simply cannot make the required showing that they do not have an adequate remedy at law, 3 which, in turn, means that they cannot satisfy the necessary element of irreparable harm. 4 3. Spencer and CHC are not entitled to an injunction because they do not use 5 the CRAZY HORSE mark in Las Vegas or any nearby geographic markets 6 Because Spencer and CHC’s use of CRAZY HORSE and Russell Road’s use of CRAZY 7 HORSE III are confined to geographically separate markets, Spencer and CHC cannot, as a 8 matter of law, enjoin Russell Road’s use of CRAZY HORSE III. In the seminal Dawn Donut 9 case, the Second Circuit essentially established a per se rule against injunctions when a senior 10 federal registrant and a junior user do not compete in the same geographic market. Dawn Donut 11 Co. v. Hart’s Food Stores, Inc., 267 F.2d 358, 364 (2d Cir. 1959). This rule is now commonly 12 known as the “Dawn Donut rule.” 13 In Dawn Donut, the plaintiff, a distributor of doughnuts and baked goods, was the senior 14 user and owned a federal trademark registrations for DAWN and DAWN DONUT. Id. at 360. 15 The plaintiff sought to enjoin the defendant’s use of DAWN in connection with retail sales of 16 doughnuts within a six county area surrounding Rochester, New York. Id. However, the plaintiff 17 had not used its marks in the defendant’s geographic market (i.e., New York) for over 30 years. 18 Id. As a result, despite the plaintiff’s seniority and federal trademark registrations, the Second 19 Circuit denied plaintiff’s request for an injunction, finding that a senior federal registrant is not 20 entitled to enjoin a junior user’s use of a trademark in a geographical market that the federal 21 registrant has not yet entered. Id. at 364. 22 Although the Dawn Donut case was decided in 1959, it is still good law. While some 23 courts have distinguished Dawn Donut based on the specific facts at issue in those decisions, no 24 courts have rejected or overruled the Dawn Donut rule. In fact, many courts continue to follow 25 Dawn Donut and have applied the Dawn Donut rule in recent decisions. 24 Hour Fitness USA, 26 Inc. v. 24/7 Tribeca Fitness, LLC, 447 F. Supp. 2d 266, 287–88 (S.D.N.Y. 2006) (geographic 27 separation precluded confusion where parties offered health club services in New York and 28 California); George A.Z. Johnson, Jr., Inc. v. Sosebee, 397 F. Supp. 2d 706, (D.S.C. 2005) owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 10 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 (“Under the Dawn Donut rule … there is no likely confusion for a court to enjoin until the senior 2 user shows … entry into the junior user’s trade territory.”); Brennan’s, Inc. v. Brennan’s 3 Restaurant, LLC, 360 F.3d 125, 134–35 (2d Cir. 2004) (affirming denial of preliminary injunction 4 where parties offered restaurant services in New York and New Orleans because “geographic 5 remoteness is critical in this case”). These recent decisions underscore the continued applicability 6 of the Dawn Donut rule, especially when local businesses are involved or the services at issue are 7 tied to physical and geographical locations. Id. In fact, even this Court has recently issued a 8 decision acknowledging the Dawn Donut rule. Kerzner Int’l Ltd. v. Monarch Casino & Resort, 9 Inc., 675 F. Supp. 2d 1029, 1047 (D. Nev. 2009) (Under the Dawn Donut rule, “[o]nly once the 10 federal registrant has expanded its use of the mark, so that the market areas of the two users are

11 no longer separate and distinct, will the registrant be entitled to an injunction.”).6 12 The facts of this case are particularly well-suited to the application of the Dawn Donut 13 rule. First, there is no factual dispute that the parties operate in separate and distinct geographic 14 markets. Russell Road operates in Las Vegas while Spencer and CHC operate in Cleveland, Ohio 15 (and the surrounding cities of Brook Park and Bedford) and purportedly in Myrtle Beach, South 16 Carolina (through a licensee).7 Sostilio Decl., ¶ 2; Answer, ¶¶ 124-25 (PACER Doc. #12). To 17 put this in perspective, Cleveland and Las Vegas are over 2,000 miles apart and Myrtle Beach and 18 Las Vegas are over 2,300 miles apart. Moreover, Spencer and CHC claim to have been using the 19 mark since 1978 but have not expanded outside of Ohio in 30 years, with the exception of a 20 recent licensing arrangement with a club in Myrtle Beach. Answer, ¶¶ 122-25 (PACER Doc.

21 #12) Accordingly, there is no reason to believe that, now after 30 years, Spencer and CHC will 22 be entering the Las Vegas market. Moreover, the Dawn Donut rule applies because the parties’ 23 services are tied to physical or geographical locations. The parties’ respective services consist of 24 owning and operating gentlemen’s clubs, which customers would have to physically visit in order

25 6 In Kerzner, this Court explicitly found the continued applicability of the Dawn Donut rule while opining that there 26 might perhaps be an exception to the Dawn Donut rule when the plaintiff owns a famous foreign mark (the Grupo Gigante exception). However, in the instant case, Spencer and CHC do not own a famous foreign mark, so the 27 Grupo Gigante exception to the Dawn Donut rule would not apply. 7 Again, it appears that the Myrtle Beach gentlemen’s club has recently changed its name from Crazy Horse to Thee 28 Dollhouse. See www.myrtlebeachcrazyhorse.com. If so, Spencer and CHC’s use is limited to Ohio. owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 11 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 to purchase and use the services. This is not a situation where good are being purchased and 2 shipped across the U.S. Finally, it should be noted that Russell Road adopted and started using 3 the CRAZY HORSE III mark in good faith without any knowledge of Spencer or CHC (CHC did 4 not even exist when Russell first used its mark). Sostilio Decl., ¶ 3. For these reasons, this Court 5 should adopt and apply the Dawn Donut rule and hold that Spencer and CHC are not yet entitled 6 to an injunction as they have not yet started to use the CRAZY HORSE mark in Las Vegas. 7 B. Spencer and CHC cannot demonstrate a likelihood of success on the merits 8 In order to prevail on a motion for preliminary injunction, the moving party must 9 demonstrate a likelihood of success on the merits. JL Beverage, 2012 U.S. Dist. LEXIS 137076 10 at *10. And to establish a likelihood of success on the merits of a trademark infringement claim, 11 the moving party must establish that (1) it owns a valid, protectable mark, and (2) the alleged 12 infringer’s use creates a likelihood of confusion. Id. Moreover, “Plaintiff's burden to prove likely 13 success on the merits includes a showing that it would likely prevail against any affirmative 14 defenses raised by Defendant.” 3 Point Distribution, LLC v. CafePress.com, Inc., No. 07-0432, 15 2008 U.S. Dist. LEXIS 17128, *7 (C.D. Cal. Feb. 25, 2008). 16 As analyzed below, Spencer and CHC have not and cannot demonstrate a likelihood of 17 success on the merits of their trademark infringement claim for several reasons: (1) Russell Road 18 has a formidable defense to any claims of trademark infringement by virtue a co-existence 19 agreement; (2) an analysis and proper weighing of the Sleekcraft likelihood of confusion factors 20 reveals that there is no likelihood of confusion; and (3) there is irrefutable evidence contesting the 21 ownership by Spencer and CHC of any valid and protectable trademark rights covering the State 22 of Nevada. Consequently, their Motion for Preliminary Injunction should be denied. 23 1. Spencer and CHC are bound by a co-existence agreement that permits 24 Russell Road to use of the CRAZY HORSE III mark 25 Co-existence agreements, also called consent agreements, are contracts in which a 26 trademark owner consents to another party’s defined usage of a mark. Brennan’s Inc. v. Dickie 27 Brennan & Co. Inc., 376 F.3d 356, 354 (5th Cir. 2004); McCarthy, supra, at § 18:79. As long as 28 the party is using the mark in a manner permitted by the consent agreement, the trademark owner owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 12 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 is contractually prohibited from asserting trademark infringement. Brennan’s, 376 F.3d at 364– 2 368; T&T Mfg. Co. v. A.T. Cross Co., 587 F.2d 533 (1st Cir. 1978); Rush Bev. Co., Inc. v. South 3 Beach Bev. Co., Inc., No. 01-C-5684, 2002 U.S. Dist. LEXIS 23486, *28–33 (N.D. Ill. Dec. 6, 4 2002) (finding trademark claims barred by consent agreement). 5 In the absence of language to the contrary, a contract is freely assignable. Easton 6 Business Opportunities, Inc. v. Town Executive Suites-Eastern Marketplace, LLC, 230 P.3d 827, 7 830 (Nev. 2010). Likewise, trademark consent agreements are freely assignable and binding on 8 each party’s successors and assigns. Waukesha Hygeia Mineral Springs Co. v. Hygeia Sparkling 9 Distilled Water Co., 63 F. 438 (7th Cir. 1894) (defendant held bound by the terms of a consent 10 agreement governing the use of the HYGEIA mark entered into by defendant’s predecessor and 11 the plaintiff); T&T Mfg., 587 F.2d 533 (agreement between First Quill and A.T. Cross found 12 enforceable against A.T. Cross where T&T purchased the agreement from First Quill and then 13 assigned the rights to Second Quill, which used the mark A.T. Cross originally consented to). 14 In the instant case, Spencer and CHC are bound by a co-existence agreement that allows 15 Russell Road to use the CRAZY HORSE III mark. At the outset, it is important to remember that 16 Spencer and CHC’s claims of infringement are entirely premised on U.S. Registration No. 17 3,044,028 for CRAZY HORSE. This federal registration provides the only purported legal basis 18 for Spencer and CHC to claim any trademark rights in Nevada. Spencer and CHC own no other 19 federal registrations for CRAZY HORSE and have never used the CRAZY HORSE mark in 20 Nevada (i.e., they have no common law trademark rights in Nevada). 21 However, the original owner of U.S. Registration No. 3,044,028 was an individual named 22 Carl Reid. Tarabichi Decl., ¶¶ 23-29, Exs. P-Q. On July 10, 2009, a Nevada company called 23 Crazy Horse Too A Gentlemen’s Club petitioned to cancel U.S. Registration No. 3,044,028 on 24 multiple grounds, including fraud and abandonment. Id. In order to resolve the dispute and 25 prevent the cancellation of his mark, Mr. Reid entered into a co-existence agreement with Crazy 26 Horse Too A Gentlemen’s Club on September 16, 2009. Id. Under the terms of the agreement, 27 Mr. Reid explicitly consented to Crazy Horse Too A Gentlemen’s Club’s use and registration of 28 “any mark that includes the phrase CRAZY HORSE provided the mark does not contain the owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 13 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 phrase PURE GOLD’S.” Id. In exchange, the cancellation proceeding against U.S. Registration 2 No. 3,044,028 was dismissed. Id. 3 On December 10, 2010, Mr. Reid assigned U.S. Registration No. 3,044,028 to CHC. Id. 4 at ¶ 20, Ex. M. The law is clear that, as the assignee of the trademark and registration, CHC is 5 bound by the September 16, 2009 co-existence agreement between Mr. Reid and Crazy horse Too 6 A Gentlemen’s Club. Premier Dental Prod. Co. v. Darby Dental Supply Co., 794 F.2d 850, 853 7 (3d Cir. 1986) (following a proper assignment of a trademark, “the assignee steps into the shoes 8 of the assignor”); California Packing Corp. v. Sun-Maid Raisin Growers, 64 F.2d 370 (CCPA 9 1933) (assignee of trademark bound by any agreements previously entered into by assignor 10 concerning trademark even without notice); R.L. Polk & Co. v. InfoUSA, Inc., 230 F. Supp. 2d 11 780, 794 (E.D. Mich. 2002) (trademark assignee cannot acquire rights greater than those held by 12 assignor and any burdens or limitations incumbent on assignor); McCarthy, supra, at § 18:15; 13 Lawrence W. Greene, The Ties That Bind? Considerations in Drafting and Maintaining U.S. 14 Trademark Consent and Coexistence Agreements, INTABulletin Vol. 67 No. 6 (March 15, 2012). 15 On August 16, 2012, Crazy Horse Too A Gentlemen’s Club assigned all of its rights, title, 16 and interest in the September 16, 2009 Co-Existence Agreement to Russell Road. Id. at ¶ 27, Ex. 17 Q. As Crazy Horse Too A Gentlemen’s Club’s assignee, Russell Road obtained all the benefits 18 under the agreement, including Mr. Reid and his successors’ (i.e., CHC’s) explicit contractual 19 consent to use and register “any mark that includes the phrase CRAZY HORSE provided the 20 mark does not contain the phrase PURE GOLD’S.” This necessarily includes Russell Road’s 21 CRAZY HORSE III mark, which is a mark that includes the phrase CRAZY HORSE but does 22 not contain the phrase PURE GOLD’S. Accordingly, Spencer and CHC are contractually 23 prohibited (and equitably estopped) from asserting a trademark infringement claim against 24 Russell Road based on its use of the CRAZY HORSE III mark. Therefore, Spencer and CHC are 25 clearly not likely to succeed on the merits, and the preliminary injunction should not be issued. 26 2. Russell Road’s use of CRAZY HORSE III does not create a likelihood of 27 confusion with Spencer and CHC’s purported use of CRAZY HORSE 28 In determining whether a likelihood of confusion exists, a court should consider and owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 14 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 weigh the following factors: (1) the strength of the mark, (2) the proximity of the goods or 2 services, (3) the similarity of the marks, (4) evidence of actual confusion, (5) marketing channels 3 used, (6) the type of goods or services and the degree of care likely to be exercised by the 4 purchasers, (7) defendant’s intent in selecting the mark, and (8) likelihood of expansion of 5 product lines. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979). However, the 6 Ninth Circuit has repeatedly cautioned that the Sleekcraft factors are not exhaustive and should 7 not be used as a scorecard or rote checklist. Network Automation, Inc. v. Advanced Systems 8 Concepts, Inc., 638 F.3d 1137, 1145, 1154 (9th Cir. 2011) (reversing district court’s grant of 9 preliminary injunction because the “district court did not weigh the Sleekcraft factors flexibly to 10 match the specific facts of the case”). Accordingly, the factors are intended as guidance, and “the 11 relative important of each factor will be case-specific.” Fortune Dynamic, Inc. v. Victoria’s 12 Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1031 (9th Cir. 2010). 13 a. The crowded field of CRAZY HORSE marks precludes confusion 14 In assessing the first Sleekcraft factor, strength of the mark, a court must evaluate not only 15 the conceptual strength of the mark but the commercial strength of the mark (i.e., the strength of 16 the mark in the marketplace). One Industries, LLC v. Jim O’Neal Distributing, Inc., 578 F.3d 17 1154, 1164 (9th Cir. 2009). When similar marks permeate the marketplace (known as a 18 “crowded field”), the mark is weak and “merely one of a crowd of marks”. Id.; Miss World (UK) 19 Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1449 (9th 1988). As the Ninth Circuit 20 explained, a crowded field can eliminate any likelihood of confusion: “In such a crowd, 21 customers will not likely be confused between any two of the crowd and may have learned to 22 carefully pick out one from the other.” Id. Importantly, in a crowded field of similar marks, 23 “each member of the crowd is relatively weak in its ability to prevent use by others in the crowd.” 24 One Indus., 578 F.3d at 1164. 25 There can be no dispute that there is a crowded field of CRAZY HORSE mark. Tarabichi 26 Decl., ¶¶ 4-6, Exs. D-E. CRAZY HORSE has been adopted for a wide variety of goods and 27 services, including gentlemen’s clubs, night clubs, restaurants, and bars. Id. For example, there 28 are Crazy Horse gentlemen’s club in San Francisco, Atlantic City, Detroit, Anchorage, Los owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 15 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 Angeles, Denver, Tampa, Forest Park, New Orleans, Nashville, Milwaukee, and many more. Id. 2 Accordingly, because CRAZY HORSE is part of a crowded field for gentlemen’s clubs, 3 the CRAZY HORSE mark is clearly a weak mark entitled to little legal protection. As the alleged 4 owner of a mark in a crowded field, Spencer and CHC’s ability to prevent others from using the

5 CRAZY HORSE mark is legally limited.8 The consuming public has already been exposed to 6 numerous uses of the CRAZY HORSE mark by unrelated parties and has grown accustomed to 7 distinguishing between multiple uses of the CRAZY HORSE mark. In light of the crowded field 8 and weak nature of the CRAZY HORSE mark, this factor weighs against a finding of likelihood 9 of confusion. In fact, Russell Road respectfully submits that, in this case, this first Sleekcraft 10 factor is the most important and dominant factor in the likelihood of confusion analysis. 11 b. The lack of proximity of services weighs against confusion 12 As more fully discussed in Section III.A.3. above, the Dawn Donut rule states that an 13 injunction should not be issued when the parties do not compete in the same geographic market. 14 In the cases that apply the rule, the courts analyze the rule both as a separate overall principle and 15 under this Sleekcraft factor, proximity of the goods or services. See, e.g., Brennan’s, 360 F.3d 16 125 at 134. Accordingly, for all the same reasons articulated in Section III.A.3, the geographic 17 separation between the parties’ services underscores a lack of proximity of the services such that

18 this factor weighs against likelihood of confusion. 19 c. Similarity of Marks 20 In considering the similarity of the marks, courts must compare the marks in terms of 21 sight, sound, meaning, and overall commercial impression. Sleekcraft, 599 F.2d at 351. 22 Moreover, the marks must be considered as they are encountered in the marketplace. Id. In 23 addition, the marks should be analyzed in the context of other identifying features. JL Beverage, 24 2012 U.S. Dist. LEXIS 137076 at *24. Furthermore, when the marks exist in a crowded field,

25 8 Spencer and CHC argue that the USPTO determined that there is not a crowded field. Defs. Mtn., at 12. First, no such determination was made. Second, they are referencing an application that was filed by a different party for a 26 different mark. Third, this is incorrect because examining attorneys are not permitted to consider marks in use in the marketplace that are not registered with the USPTO. TMEP § 1207. As such, crowded field decisions can only be 27 made by courts. Fourth, a decision of an examining attorney is not a decision by the USPTO, is not binding, and no weight is given to any decisions of an examining attorney during ex parte prosecution. A&H v. Victoria’s Secret, 237 28 F.3d 198 (3d 2000) (rejecting assertion that the District Court erred in failing to give weight to examining attorney). owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 16 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 even small differences in the marks are sufficient to obviate a likelihood of confusion. King 2 Candy Co. v. Eunice King’s Kitchen Inc., 182 U.S.P.Q. 108 (C.C.P.A. 1974) (“confusion is 3 unlikely because the marks are … so widely used that the public easily distinguishes slight 4 differences in the marks as well as differences in the goods …”); Jupiter Hosting Inc. v. 5 Jupitermedia Corp., 76 U.S.P.Q.2d 1042 (N.D. Cal. 2004). 6 In the instant case, even though both parties’ marks incorporate CRAZY HORSE, there 7 are significant differences between the parties’ marks. This is immediately apparent when one 8 compares the marks as they are actually used in the marketplace and in the context of other

9 identifying features: 10 Russell Road’s CRAZY HORSE III Mark Spencer and CHC’s CRAZY HORSE Mark 11

12 13 14 15 Sostilio Decl, ¶¶ 3-4. Russell Road’s mark contains a classic design of three horses, which 16 reinforces and underscores the roman numeral III, a reference to the fact that Russell Road’s club 17 is the third Crazy Horse club in Las Vegas after the previous two clubs closed. Id. In contrast, 18 Spencer and CHC’s mark contains a prominent logo of a goofy looking horse with its red tongue 9 19 hanging out. Tarabichi Decl., ¶ 35 This logo always accompanies Spencer and CHC’s use of 20 CRAZY HORSE. Likewise, Spencer and CHC’s mark contains no roman numerals or numbers. 21 In addition, the parties utilize different fonts. Moreover, Russell Road’s mark contains the 22 additional phrase “Gentlemen’s Club,” which does not appear in Spencer and CHC’s mark. 23 Because the CRAZY HORSE mark is part of a crowded field, the purchasing public is 24 aware of the existence and use of multiple CRAZY HORSE marks and is conditioned to 25 distinguish between them based on even slight differences. As a result, the differences listed in

26 9 It is worth noting that, as much as Spencer and CHC try to argue that multiple uses of different CRAZY HORSE marks creates a likelihood of confusion in an already crowded field, Spencer and CHC themselves use different 27 variations of CRAZY HORSE. One of their clubs isn’t even Crazy Horse, it is Platinum Horse. Another one of their clubs in Ohio is actually called The Crazy Horse Saloon. Spencer and CHC’s position seems hypocritical, 28 considering their own muddied and indiscriminate use of different Crazy Horse variations. owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 17 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 the preceding paragraph are sufficient to preclude any likelihood of confusion, which means this 2 factor weighs against any likelihood of confusion. 3 d. Evidence of Actual Confusion 4 If the parties have both been using their marks without any actual confusion, then there is 5 less likelihood of confusion. Sleekcraft, 599 F.2d at 352. In the over three years since Russell 6 Road opened its CRAZY HORSE III club, there have been no instances of actual confusion. 7 Sostilio Decl., ¶ 8. In their opposition, Spencer and CHC unconvincingly argue that there has 8 been an instance of confusion because some blog post made a passing reference to a New York 9 club having to change its name due to a dispute with the “Vegas Crazy Horse” instead of Spencer 10 and CHC. See Defs.’ Mtn. at 13:24–14:2. Not only is this a stretch of epic proportions, but when 11 this blog post was written, Russell Road’s CRAZY HORSE III club was not the only Crazy 12 Horse in Las Vegas—the MGM had a Crazy Horse show in Las Vegas as well and the blog post 13 could have been referring to that “Vegas Crazy Horse” or even perhaps one of the prior Crazy 14 Horse clubs in Las Vegas. The blog post simply lacks any probative value. Second, this single, 15 isolated blog post is insufficient evidence of actual confusion. Sleekcraft, 599 F.2d at 352 16 (discounting isolated instances of past confusion negligible). The fact that this is the only thing 17 that Spencer and CHC can point to evidences the real truth: there has been no actual confusion

18 over the past three years.10 Accordingly, this factor weighs against any likelihood of confusion. 19 e. The parties’ differing marketing channels weigh against confusion 20 Convergent marketing channels increase the likelihood of confusion. Network

21 Automation, 638 F.3d at 1151. However, this factor becomes less important when the marketing 22 channel is less obscure: “Today, it would be the rare commercial retailer that did not advertise 23 online, and the shared use of a ubiquitous marketing channel does not shed much light on the 24 likelihood of consumer confusion.” Id. This has led the Ninth Circuit to explicitly hold that the 25 shared use of the Internet alone is insufficient to find likelihood of confusion. Id. (“the district

26 10 In their opposition, Spencer and CHC purposely mislead this Court by stating that Russell Road’s tweet of “Third time’s a charm!” somehow purposely implies a connection with them. Opp’n. at 14:3–5. When the entire tweet is 27 reproduced, it is clear that it refers to the third year anniversary: “Third time’s the charm! Celebrate our three year anniversary party.” See Gordon Decl., Ex. B (Pacer Doc. # 15-2). Such an intentional mischaracterization to mislead 28 the Court appears sanctionable. owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 18 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 court’s determination that because both parties advertise on the Internet this factor weighed in 2 favor of Systems was incorrect.”) 3 Notably, Spencer and CHC did not address this factor in their Motion, apparently 4 conceding that the parties use different marketing channels. While both parties do have websites, 5 the Ninth Circuit has found that insufficient. Moreover, the CRAZY HORSE III gentlemen’s 6 club is destination place, and any Internet searches will be destination driven (e.g., “gentlemen’s 7 club Las Vegas” or “strip club Las Vegas” or “Crazy Horse III Las Vegas), thereby even further 8 minimizing the importance of the Internet as a shared channel. Other than the fact that both 9 parties have their own websites, Russell Road is unaware of any shared marketing channels. In 10 fact, much of Russell Road’s marketing is targeted to Las Vegas residents and visitors. Sostilio 11 Decl., ¶ 7. Such targeted marketing would not overlap with Spencer and CHC’s Ohio-specific 12 marketing efforts. Consequently, this factor also weighs against a finding of confusion. 13 f. The type and nature of the parties’ services weigh against confusion 14 In assessing likelihood of confusion, courts should consider the type and nature of the 15 parties’ goods or services and the degree of consumer care in making purchases. Network 16 Automation, 638 F.3d at 1152; Sleekcraft, 599 F.2d at 353. For example, when the goods or 17 services are expensive, the purchasers is expected to exercise greater care. Id. 18 Here, the fact that the parties operate strip clubs weighs against any likelihood of 19 confusion. To put it bluntly, customers who want to visit a strip club when visiting Las Vegas are 20 not going to be confused and accidentally end up in a strip club in Ohio—nor will they confuse 21 the operations of the respective establishments. It is axiomatic that the geographic location of the 22 parties’ respective clubs plays an important role in the analysis of this factor as well. The reality 23 is that the parties’ respective exotic dancers perform at brick and mortar locations situated 24 thousands of miles apart. In addition to the thousands of miles separating the parties’ strip clubs, 25 Russell Road’s CRAZY HORSE III gentlemen’s club strives to provide a more upscale 26 experience at a greater cost than Spencer and CHC’s Ohio clubs. Sostilio Decl., ¶¶ 5-6, Exs. B-C. 27 For example, Russell Road’s CRAZY HORSE III club features well-known celebrities such as 28 Heidi Montag, Carmen Electra, and Jenna Jameson, as well as Playboy Playmates and adult film owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 19 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 stars. Id. In addition, a night at Russell Road’s CRAZY HORSE III club would be significantly 2 more expensive than a night in a strip club outside of Cleveland, Ohio. Id. For example, Russell 3 Road’s Double Eagle Platinum Package costs $22,500. Id. A review of Spencer and CHC’s Ohio 4 clubs reveals that they feature no celebrities and premium packages hover around $20. Tarabichi 5 Decl., ¶ 37, Ex. V. Consequently, the type and nature of the parties’ respective services weights 6 against any likelihood of confusion. 7 g. Russell Road adopted the CRAZY HORSE III mark in good faith 8 When an alleged infringer adopts a trademark in good faith and is unaware of the 9 plaintiff’s mark, then this factor weighs against finding a likelihood of confusion. Sleekcraft, 599 10 F.2d at 354 (agreeing with district court that there was no evidence that defendant was aware of 11 plaintiff’s mark when he adopted the Sleekcraft name). In the instant case, Russell Road adopted 12 the CRAZY HORSE III mark on or before September 4, 2009 and was completely unaware of 13 Spencer or CHC when it adopted the mark. Sostilio Decl, ¶ 3. When Russell Road adopted the 14 mark, the first Crazy Horse Saloon club in Las Vegas had already closed and the second Crazy 15 Horse Too club in Las Vegas had recently closed. Id. As such, CRAZY HORSE III was adopted 16 based on the idea that Russell Road’s club would be the third Crazy Horse club in Las Vegas— 17 Russell Road’s choice of CRAZY HORSE III had nothing to do with Spencer or CHC. Id. Of 18 course, it is not surprising that Russell Road had never heard of Spencer or CHC since CHC did 19 not even exist at the time (it was not formed until August 19, 2010) and Spencer had not (and still 20 hasn’t) used the CRAZY HORSE mark in Nevada. Spencer and CHC have submitted no 21 evidence whatsoever that Russell Road adopted its CRAZY HORSE III mark with an intent to

22 infringe their alleged rights in the CRAZY HORSE mark. 11 Accordingly, this factor clearly 23 weights against likelihood of confusion. 24 h. The expansion of product lines factor is neutral 25 When the goods or services of the parties are related, the likelihood of the expansion of

26 11 Spencer and CHC speciously argue that Russell Road knew about Spencer and CHC prior to adopting the CRAZY HORSE III mark because of office actions issued by the USPTO. See Opp’n at 14:16–19. However, those office 27 actions were issued over a year after Russell Road first used its CRAZY HORSE III mark on September 4, 2009. See Gordon Decl., Exs. C–E (PACER Doc. # 15-3, 15-4, 15-5). In addition, those office actions cited trademark 28 registrations that, at the time, were owned by Carl Reid, not Spencer or CHC. Id. owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 20 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 product lines is irrelevant and does not favor either party. JL Beverage, 2012 U.S. Dist. LEXIS 2 137076 at *41; Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1029 3 (9th Cir. 2004). In the instant case, both Russell Road and Spencer and CHC operate gentlemen’s 4 clubs. Therefore, this factor is neutral and does not favor either party. 5 In their opposition, Spencer and CHC acknowledge the rule that, when the parties offer 6 related services, this factor is irrelevant. Nevertheless, they proceed to try to argue that this factor 7 favors them because Spencer intends to enter the Las Vegas market and because Russell Road 8 filed this lawsuit in the District of Nevada. These arguments have no merit. First, Spencer’s bald 9 assertion that he intends to enter the Las Vegas market should be given no credence—especially, 10 since he claims to have first used the CRAZY HORSE mark in Ohio in 1978 but still has not 11 entered the Las Vegas market over 30 years later. Second, Russell Road filed this lawsuit in this 12 district because Russell Road is a Nevada limited liability company with its principal place of 13 business in Las Vegas—not because it believes Spencer or CHC will enter the Las Vegas market. 14 Russell Road has not ceded this factor. Rather, this factor is neutral and weighs in no one’s favor. 15 i. Consent agreements demonstrate there is no likelihood of confusion 16 As detailed in Section III.B.1 above, Russell Road believes that Spencer and CHC are 17 contractually prohibited from asserting a claim for trademark infringement. However, separate 18 and apart from the contractual prohibition argument, it is well-established that a plaintiff’s 19 consent agreements can evidence that there is no likelihood of confusion and serve as a form of 20 estoppel as well. Freedom Card, Inc. v. JP Morgan Chase & Co., 432 F.3d 463 (3d Cir. 2005) 21 (UTN’s own statements and actions, which included entering into a consent agreement with 22 another party, undermine any claim of likelihood of confusion). 23 Russell Road is aware of at least two consent agreements in which Spencer and CHC have 24 allowed other parties to use the CRAZY HORSE mark. The first agreement is the one discussed 25 at length in Section III.B.1. above. The second agreement is a very recent January 26, 2012 26 consent agreement in which Spencer and CHC explicitly consented to JAT Investments, LLC’s 27 use of PURE GOLD’S CRAZY HORSE. Tarabichi Decl., ¶ 22, Ex. O. These two consent 28 agreements constitute strong evidence that there is no likelihood of confusion not only between owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 21 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 multiple uses of the CRAZY HORSE mark but specifically between Russell Road’s use of 2 CRAZY HORSE III and Spencer and CHC’s use of CRAZY HORSE. 3 3. Spencer and CHC’s registration and applications are likely void or invalid 4 In addition to proving likelihood of confusion, Spencer and CHC must prove that they 5 own a valid and protectable trademark. JL Beverage, 2012 U.S. Dist. LEXIS 137076 at *10. In 6 this regard, Spencer and CHC’s alleged rights in the CRAZY HORSE trademark emanate from 7 only one of four possible bases: (1) common law trademark rights by virtue of their use of the 8 CRAZY HORSE mark in the actual marketplace, (2) Spencer’s two pending federal trademark 9 applications for CRAZY HORSE, and (3) CHC’s U.S. Registration No. 3,044,028, which CHC

10 acquired by assignment after Russell Road had already adopted its CRAZY HORSE III mark.12 11 However, for purposes of this Motion, the court only needs to focus on the U.S. 12 Registration No. 3,044,028 because Spencer and CHC’s common law rights and pending 13 applications do not provide them any trademark rights in Las Vegas or Nevada. This is because 14 common law rights only extend to the geographic areas in which the trademark is used, and 15 Spencer and CHC have only used CRAZY HORSE in Ohio and South Carolina.13 Answer, ¶¶ 16 122–25 (PACER Doc. #12); Gold’s Gym Enterprises, Inc. v. Nixon, 1981 U.S. Dist. LEXIS 17 17407, *2 (D. Ariz. 1981) (“At common law, trademark rights are geographically limited to the 18 territory in which the user has actually used the trademark.”). Likewise, pending trademark 19 applications do not confer any rights until they issue as registrations.14 15 U.S.C. § 1057 20 (constructive nationwide use/priority requires that the application actually register).

21 U.S. Registration No. 3,044,028 should be cancelled because it was obtained by Carl Reid 22 through fraud on the USPTO. To cancel a trademark registration for fraud on the USPTO, the 23 party seeking cancellation must establish the following elements: "a false representation 24 regarding a material fact, the registrant's knowledge or belief that the representation is false, the

25 12 While Spencer and CHC argue this mark is incontestable, (1) even incontestable marks are subject to cancellation, see 15 U.S.C. §§ 1064-65, and (2) obviously, it does not change the likelihood of confusion requirement. 26 13 To be clear, Russell Road is not admitting that Spencer or CHC actually own any common law rights or that they have made proper trademark use of CRAZY HORSE in Ohio or South Carolina. Rather, Russell Road is simply 27 pointing out that, assuming arguendo that they do have such rights, they are insufficient to obtain injunctive relief. 14 Although it is not necessary to address these pending applications in the context of this Motion, Russell Road also 28 believes these applications are void or invalid for the reasons enumerated in its Complaint. owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 22 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 intent to induce reliance upon the misrepresentation and reasonable reliance thereon, and damages 2 proximately resulting from the reliance." Robi v. Five Platters, Inc., 918 F.2d 1439, 1444 (9th 3 Cir. 1990). Carl Reid originally filed the application for CRAZY HORSE that matured into U.S. 4 Registration No. 3,044,028. Mr. Reid made false representations in the application: he 5 represented that he was entitled to use the CRAZY HORSE mark in commerce and that no other 6 person or entity had the right to use the mark, and he represented that he was the owner of the 7 mark and proper applicant. These representations of material fact were false, Mr. Reid knew they 8 were false, he made the false representations with the intent to induce the USPTO to rely on them 9 to issue a registration, the USPTO did rely on them, and Russell Road is now being damaged by 10 the registration. Tarabichi Decl., ¶ 24. Accordingly, Russell Road submits that Reid’s 11 successors, Spencer and CHC, do not even own any trademark rights in Nevada that would 12 support their request for injunctive relief. 13 4. The preliminary injunction should also be denied due to Spencer and 14 CHC’s fraudulent marking, which constitutes unclean hands 15 Because preliminary injunctive relief is a purely equitable relief, a party seeking 16 injunctive relief must come into court with clean hands. Calvin Klein Cosmetics Corp. v. Lenox 17 Laboratories, Inc., 815 F.2d 500 (8th Cir. 1987) (reversing preliminary injunction); Fox Stanley 18 Photo Prods., Inc. v. Otaguro, 339 F. Supp. 1293, 1295 (D. Mass. 1972); McCarthy, supra, at 19 § 30:53. A trademark owner is not permitted to use the registration symbol ® unless the 20 trademark has been registered with the USPTO. 15 U.S.C. § 1111. In this regard, courts have 21 held that when a party uses the federal registration symbol in connection with an unregistered 22 trademark (often called fraudulent marking), such use constitutes unclean hands sufficient to bar 23 preliminary injunctive relief. L.F. Gaubert & Co., Inc. v. Institute of Electrical & Electronics 24 Engineers, Inc., 563 F. Supp. 122, 128 (E.D. La. 1983) (“plaintiffs, whether intentionally or 25 through careless disregard for the significance of such actions, misused the encircled ‘R’ 26 symbolic of trademark registration and thus are precluded from obtaining the equitable remedy of 27 injunctive relief under the unclean hands doctrine”); Sterling Acceptance Corp. v. Tommark, Inc., 28 227 F. Supp.2d 454, 468 (D. Md. 2002) (noting that plaintiff’s misuse of the registration symbol owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 23 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 was sufficient to deny injunctive relief even if defendant may not ultimately prevail on liability on 2 the unclean hands defense); Fox Stanley, 339 F. Supp. at 1295 (finding plaintiff’s illegal use of 3 the registration symbol “a violation of the clean hands doctrine of such serious magnitude as to 4 disqualify plaintiff from obtaining injunctive relief.” 5 Here, there is no factual dispute that Spencer and CHC used the registration symbol ® in 6 connection with the CRAZY HORSE trademark before they owned a federal registration. 7 Tarabichi Decl., ¶¶ 13-15, Ex. H; Defs.’ Mtn. at 16:18-26. In response, Spencer and CHC argue 8 that their illegal use of the registration symbol was “fleeting and inadvertent.” Defs’ Mtn. at 9 16:26. However, at the time of their fraudulent marking, Spencer and CHC had competent legal 10 counsel and were already familiar with the trademark registration process at the USPTO. 11 Tarabichi Decl., ¶ 15. Therefore, the fraudulent marking appears knowing and intentional. 12 Whether Russell Road will ultimately prevail on this defense is a question for another day. For 13 purposes of the Motion before the Court, the law is clear that, in seeking the equitable remedy of 14 a preliminary injunction, Spencer and CHC must come to this Court with clean hands. Their 15 illegal use of the registration symbol—whether inadvertent or not—constitutes unclean hands 16 sufficient to bar preliminary relief at this stage of this lawsuit. See L.F. Gaubert & Co., 563 F. 17 Supp. at 128; Sterling, 227 F. Supp.2d at 468; Fox Stanley, 339 F. Supp. at 1295. 18 C. The Balance of Hardships Tips Significantly in Russell Road’s Favor 19 As an exercise in equitable power, a court must balance the harms and hardships to each 20 party when considering a motion for preliminary injunction. JL Beverage, 2012 U.S. Dist. LEXIS 21 137076 at *46–47. Moreover, a preliminary injunction should not issue unless the balancing of 22 hardships tips sharply in the moving party’s favor. Caesars World, Inc. v. July, No. 11-cv-00536, 23 2011 U.S. Dist. LEXIS 122914, *4–8 (D. Nev. Oct. 24, 2011). Stated another way, if the 24 granting of a preliminary injunction would cause the non-moving party financial loss and damage 25 to business reputation that outweighs any damage to the moving party, preliminary injunctive 26 relief is not appropriate. JL Beverage, 2012 U.S. Dist. LEXIS 137076 at *46–47. In addition, if 27 the case is close on the merits, then the moving party’s delay in seeking injunctive relief tips the 28 balance of hardships in the non-moving party’s favor because the “harm to the defendant owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 24 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 increases with the passage of time.” McCarthy, supra, at § 30:51; Stokley-Van Camp, Inc. v. 2 Coca-Cola Co., 2 USPQ2d 1225 (N.D. Ill. 1987). In fact, even if the moving party shows a 3 likelihood of success on the merits, the court should deny injunctive relief if the balance of 4 hardships favors the non-moving party. JL Beverage, 2012 U.S. Dist. LEXIS 137076 at *46–47. 5 Not only does the balance of hardships not tip sharply in favor of Spencer and CHC, it 6 decidedly tips sharply in favor of Russell Road. If the preliminary injunction is denied, Spencer 7 and CHC will suffer no harm. If Spencer and CHC prevail in this lawsuit, they will still be able 8 to seek a permanent injunction at that time and they will be able to seek monetary compensation 9 for any infringement between now and final decision on the merits after a full trial. In short, 10 things will just continue as they have for the last three years. On the other hand, if this Court 11 issues a preliminary injunction, it will cost Russell Road $23 million and its business reputation 12 will be irreparably harmed. Sostilio Decl., ¶¶ 9-17; see also Section III.E below. The balancing 13 of hardships confirms that it would be inequitable to issue an injunction on the facts of this case. 14 D. A preliminary injunction is not in the public interest 15 A party moving for a preliminary injunction must show that injunctive relief serves the 16 public interest. Winter, 555 U.S. at 20. In trademark infringement cases, if the moving party is 17 unable to establish that it will prevail on the merits, then the injunction will not serve the public 18 interest because there is no likelihood of confusion. JL Beverage, 2012 U.S. Dist. LEXIS 137076 19 at *48; Rodan & Fields, LLC v. Estee Lauder Cos., No. 10-CV-02451, 2010 U.S. Dist. LEXIS 20 109573, *20 (N.D. Cal. Oct. 5, 2010). In fact, if the moving party has failed to show a likelihood 21 of confusion, an injunction would “violate the public’s interest in fair and healthy competition.” 22 The Active Network, Inc. v. Electronic Arts, Inc., No. 10-cv-1158, 2010 U.S. Dist. LEXIS 90602, 23 *17 (S.D. Cal. Aug. 31, 2010); Calvin Klein, 815 F.2d 500 (“the value placed on free competition 24 must be weighed against any individual’s property interest in that trademark”). Finally, should 25 the Court find that Spencer and CHC have not established irreparable harm, a likelihood of 26 success, or that the hardships weigh in their favor, the court need not reach the public interest 27 issue. MarketQuest Group, Inc. v. Bic Corp., No. 11-cv-618, 2011 U.S. Dist. LEXIS 128778, 28 *48 (S.D. Cal. Nov. 7, 2011). owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 25 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 In the instant case, this Court should not even reach this issue because Spencer and CHC 2 have not shown that irreparable harm is likely or that they are likely to succeed on the merits. 3 Nevertheless, as discussed in Section III.B.2. above, an analysis and proper weighing of the 4 Sleekcraft factors leads to the conclusion that there is no likelihood of confusion. Because there 5 is no likelihood of confusion, a preliminary injunction is not in the public interest. See Rodan, 6 2010 U.S. Dist. LEXIS at *20. Along these same lines and without needlessly repeating points 7 already made in this opposition, there is no confusion that the public needs to be protected from 8 because the parties operate in separate and distinct geographic markets. Moreover, there is 9 already a crowded field of CRAZY HORSE marks and enjoining Russell Road will not change 10 that fact, leaving the public in the same position. As a result, this case is one where the public’s 11 interest in fair and healthy competition trumps Spencer and CHC’s alleged (and suspect) property 12 rights in the CRAZY HORSE mark. In addition, as discussed in Section III.E below, if an 13 injunction were issued nearly 400 people would lose their jobs and the closure of the CRAZY 14 HORSE III club would also have a negative impact on the local Las Vegas economy. As such, 15 the public interest weighs in favor of denying the request for preliminary relief. 16 E. Spencer and CHC should be required to post a $23 million bond as security in 17 the event that Russell Road is wrongfully enjoined 18 As detailed throughout this Opposition, Spencer and CHC’s request for a preliminary 19 injunction should be denied because (1) they have not proven any irreparable harm, (2) they have 20 not shown a likelihood of success on the merits, (3) the balance of hardships tips against them, 21 and (4) the status quo would not be maintained pending a full trial on the merits. However, 22 should this Court disagree and issue a preliminary injunction, Russell Road requests that the 23 Court require a bond in the amount of $23,000,000 to protect Russell Road against the costs it 24 would incur and the damages it would sustain by being wrongfully enjoined. 25 Rule 65(c) of the Federal Rules of Civil Procedure allows a court to issue a preliminary 26 injunction “only if the movant gives security in an amount that the court considers proper to pay 27 the costs and damages sustained by any party found to have been wrongfully enjoined or 28 restrained.” Fed. R. Civ. P. 65(c). In determining the amount of the bond, a court should owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 26 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 consider the potential financial ramifications of issuing the preliminary injunction because the 2 “bond should attempt to create a fund from which all of [the] potential damage from an erroneous 3 preliminary injunction can be compensated.” McCarthy, supra, at § 30:55. Accordingly, the 4 court must take into account the additional profits the enjoined party would have earned, the out- 5 of-pocket corrective marketing expenses to re-brand (ad reprints, repackaging, etc.), and damage 6 to the enjoined party’s reputation. Id; Hansen Beverage Co. v. Cytosport, Inc., No. 09-0031, 7 2009 U.S. Dist. LEXIS 120508, *71 (C.D. Cal. Nov. 4, 2009) ; Maidenform, Inc. v. 8 Munsingwear, Inc., 1977 U.S. Dist. LEXIS 14726, *17–18 (S.D.N.Y. 1977). Therefore, as the 9 Seventh Circuit cautioned, “district courts should err on the high side” in setting bond amounts in 10 trademark cases. Mead Johnson & Co. v. Abbott Laboratories, 201 F.3d 883 (7th Cir. 2000). 11 In analogous trademark cases in which the enjoined party had been using its mark for 12 several years and expended significant resources adopting and marketing its goods or services 13 under the mark, federal courts routinely require the moving party to post a bond in the amount of 14 several millions of dollars. Philip Morris Inc. v. Star Tobacco Corp., 879 F. Supp. 379 (S.D.N.Y. 15 1995) (requiring $5,000,000 bond); Team Gordon, Inc. v. Specialized Bicycle Components, Inc., 16 No. 10-1379, 2010 U.S. Dist. LEXIS 130738, *15 (C.D. Cal. Nov. 18, 2010) (requiring a 17 $3,000,000 bond); Emra Corp. v. Superclips Ltd., 559 F. Supp. 705, 720 (E.D. Mich. 1983) 18 (requiring $1,500,000 bond); Hansen Beverage, 2009 U.S. Dist. LEXIS 120508 at *2 (“The 19 preliminary injunction is conditional on the posting of a $1,300,000 bond”); The Topline Corp. v. 20 Report Footwear, Inc., No. C07-938Z, 2007 U.S. Dist. LEXIS 58983, *48 (W.D. Wash. Aug. 13, 21 2007) (requiring $1,000,000 bond); 3 Point Distribution, LLC v. Cafepress.com, Inc., No. 07- 22 0432, 1008 U.S. Dist. LEXIS 17128, * 27 (C.D. Cal. Feb. 25, 2008) (requiring $1,000,000 bond). 23 If Russell Road is enjoined from using its mark, it will suffer approximately $23 million 24 in damages and lose the invaluable consumer recognition and goodwill that it has built since 25 opening its gentlemen’s club over three years ago. Sostilio Decl., ¶¶ 9-17. The $23 million 26 factors in a number of items, including the loss of sales while the club is closed for 3-6 months, 27 loss of sales over 18 months after the club reopens and attempts to get back to its current sales 28 levels, cost of new signage and refitting the club, advertising and promotional costs, printing and owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 27 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 impressions, web design, ecommerce, and SEO expenditures, licensing and permitting expenses, 2 public relations expenditures, legal fees and expenses, and new uniforms and staff imaging. Id. 3 Should the Court require additional evidentiary proof in support of the bond amount, Russell 4 Road is willing to submit detailed breakdowns and financials under seal at the Court’s request. 5 Id. Notably, the $23 million does not include the losses and harm that would be suffered by 6 approximately 400 individuals who would be out of work while Russell Road is forced to close 7 the club to rebrand. Id. Likewise, it does not take into consideration the effect the closure of the 8 CRAZY HORSE III club would have on the local Las Vegas economy. Id. In the past three 9 years, Russell Road has worked strenuously to build its brand and has achieved a high level of 10 publicity. Russell Road’s CRAZY HORSE III club has attracted celebrities and adult 11 entertainment stars, been featured on TV shows and magazines, and become a well-known 12 attraction in Las Vegas. Id. at ¶ 5. The cost of retooling and rebranding would be astronomical, 13 requiring Russell Road to undertake an advertising campaign to educate the public about the 14 transition to a new mark. In addition, there would be the stigma associated with the alleged 15 infringement. Based on the foregoing, Russell Road requests that the Court require a bond in the 16 amount of $23,000,000 to compensate Russell Road for all damages for being wrongly enjoined. 17 F. A preliminary injunction should not be granted because it alters the status quo 18 The fundamental purpose of a preliminary injunction is to preserve the status quo until the 19 action can be decided on its merits. Blue v. Johnson, No. 07-05370, 2008 U.S. Dist. LEXIS 20 120253, *6 (N.D. Cal. May 9, 2008); Chalk v. U.S. Dist. Ct., 840 F.2d 701, 704 (9th Cir. 1988). 21 In this regard, the status quo does not necessarily refer to the situation immediately before the 22 lawsuit is filed, but to the “last uncontested status” that proceeded the controversy. GoTo.com, 23 Inc. v. Walt Disney Co., 202 F.3d 1199, 1210 (9th Cir. 2000). Importantly, if the moving party’s 24 request for injunctive relief would alter the status quo, the request is subject to higher scrutiny and 25 carries a higher burden of persuasion. Blue, 2008 U.S. Dist. LEXIS 120253 at *6. 26 In trademark cases, the status quo is often the situation that existed before the alleged 27 trademark infringement began; however, when the non-moving party has been using its mark for 28 years, federal courts regularly hold that issuing an injunction would alter the status quo and that owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 28 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 preserving the status quo requires denying injunctive relief and allowing the non-moving party to 2 continue to use the mark pending a full adjudication on the merits. Bridges in Org., Inc. v. 3 Bureau of Nat’l Affairs, Inc., No. B-91-23, 1991 U.S. Dist. LEXIS 15449, * 7 (D. Md. June 25, 4 1991) (Because “defendants have used the word ‘Bridges’ for more than a year … maintaining 5 the status quo would lead the Court to withhold the injunction.”); Mail Boxes Etc., Inc. v. CMS 6 Enter., Inc., No. 06-130, 2006 U.S. Dist. LEXIS 17252, *8 (W.D. Okla. Feb. 27, 2006) (“issuance 7 of the injunction would alter the status quo as it would require defendants to cease using 8 telephone numbers they have employed for ten years.”); Marshak v. The Five Platters, Inc., No. 9 96-cv-2292, 2000 U.S. Dist. LEXIS 19577, *14 (E.D.N.Y. 2000) (“the parties to this action have 10 made competing claims to perform … as ‘The Platters’ … plaintiffs have not furnished sufficient 11 basis for now disturbing this status quo”); Paleteria La Michocana, Inc. v. Productos Lacteos 12 Tocumbo S.A. De C.V., No. 11-1623, 2012 U.S. Dist. LEXIS 157074, *8-9 (D.D.C. Nov. 1, 2012) 13 (holding injunction would alter status quo where non-moving party had used the marks for a year 14 and the moving party knew as much); Porsche v. Manny’s Porshop, Inc., No. 96 C 5924, 1997 15 U.S. Dist. LEXIS 4519, *28 (N.D. Ill. Apr. 9, 1997) (“granting the injunction would alter the 16 status quo” because “Porsche, having lived with this situation for over 10 years, suffers no harm 17 by waiting for a final judgment on the merits.”); Welch Allyn, Inc. v. Tyco Int’l Serv. AG, 200 F. 18 Supp. 2d 130, 136, n.4 (N.D.N.Y. 2002) (“the injunctive relief that Plaintiff seeks will alter, 19 rather than maintain, the status quo, by requiring Defendants to cease using the Tyco/Healthcare 20 mark which they have used for years”); Virginia Tech Found. Inc. v. Family Group Ltd., 666 F. 21 Supp. 856, 860 (W.D. Va. 1987) (“Plaintiff is not asking the Court to preserve the status quo, but 22 to change it. The conditions which exist now have existed since November 7, 1986.”). 23 In the instant case, Russell Road has used its CRAZY HORSE III trademark since at least 24 as early as September 4, 2009. Sostilio Decl., ¶ 2. Accordingly, preserving the status quo as it 25 has existed for more than three years means that Russell Road should be permitted to continue 26 using the CRAZY HORSE III mark, which requires denying the requested preliminary injunction. 27 Likewise, Russell Road was already using the CRAZY HORSE III mark for over a year in 28 the “last uncontested status” that proceeded the dispute between Russell Road and Spencer and owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 29 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 CHC. It was not until December 10, 2010 when Spencer orchestrated the assignment of U.S. 2 Trademark Registration No. 3,044,028 from Carl Reid to CHC that the dispute arose. Tarabichi 3 Decl., ¶ 20, Ex. M. Prior to that, there was no basis for Spencer or CHC to even try to claim 4 trademark rights in Nevada because they had not made any common law use in Nevada and they 5 did not own any federal trademark registrations. Accordingly, the “last uncontested status” would 6 be December 9, 2010, the day before U.S. Registration No. 3,044,028 from Carl Reid to CHC. 7 As of that date, Russell Road had been using the CRAZY HORSE III mark for over a year since 8 September 4, 2009. Therefore, the “last uncontested status” in this case was not before Russell 9 Road adopted and started using the CRAZY HORSE III mark but well after that. 10 G. Russell Road requests leave to take discovery to oppose this motion if necessary 11 Russell Road believes that it has submitted sufficient arguments and evidence to convince 12 this Court that the Motion for Preliminary Injunction should be denied. However, to the extent 13 this Court is inclined to grant preliminary injunctive relief, Russell Road requests that the Court 14 stay a hearing on this Motion and permit it to conduct discovery to obtain additional evidence that 15 Spencer and CHC will not be irreparably harmed and are not likely to succeed on the merits of 16 their trademark infringement claim. Tarabichi Decl., ¶¶ 38-41 (detailing the additional discovery 17 requested); Signeo USA, LLC v. SOL Republic, Inc., No. 11-6370, 2012 U.S. Dist. LEXIS 30560, 18 *3 (N.D. Cal. 2012) (“the court finds that limited, expedited discovery of a reciprocal nature is 19 appropriate to facilitate the proper resolution of Signeo’s motion for preliminary injunction”). 20 IV. CONCLUSION 21 For all the foregoing reasons, Russell Road respectfully requests that this Court deny 22 Spencer and CHC’s Motion for Preliminary Injunction.

23 Dated: November 30, 2012 Respectfully submitted,

24 OWENS TARABICHI LLP 25

26 By Bruno W. Tarabichi 27 Attorneys for Plaintiff Russell Road Food and Beverage, LLC 28 owens tarabichi llp OPPOSITION MEMORANDUM Counselors At Law 30 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 BRUNO W. TARABICHI, CA State Bar No. 215129 [email protected] 2 OWENS TARABICHI LLP 111 N. Market St., Suite 730 3 San Jose, California 95113 Telephone: 408.298.8200 4 Facsimile: 408.521.2203 Pro Hac Vice 5 PUOY K. PREMSRIRUT, State Bar No. 7141 6 [email protected] BROWN BROWN & PREMSRIRUT 7 520 S. Fourth Street, Second Floor Las Vegas, NV 89101 8 Telephone: 702.384.5563 Facsimile: 702.385.1752 9 Attorneys for Plaintiff 10 Russell Road Food and Beverage, LLC 11 UNITED STATES DISTRICT COURT 12 DISTRICT OF NEVADA 13 SOUTHERN DIVISION

14 RUSSELL ROAD FOOD AND BEVERAGE, LLC, a Nevada limited Case No. 2:12-cv-01514-LRH-GWF 15 liability company, DECLARATION OF NANDO SOSTILIO 16 Plaintiff, IN SUPPORT OF PLAINTIFF RUSSELL ROAD FOOD AND BEVERAGE, LLC’S 17 vs. OPPOSITION TO DEFENDANTS FRANK SPENCER AND CRAZY HORSE 18 FRANK SPENCER, an individual; CONSULTING'S MOTION FOR CRAZY HORSE CONSULTING, INC., an PRELIMINARY INJUNCTION 19 Ohio corporation; and DOES 1 – 50, inclusive, Case Filed: August 24, 2012 20 Judge: Honorable Larry R. Hicks Defendants. 21 FRANK SPENCER, an individual; and 22 CRAZY HORSE CONSULTING, INC., an Ohio corporation, 23 Counterclaimants, 24 vs. 25 RUSSELL ROAD FOOD AND 26 BEVERAGE, LLC, a Nevada limited liability company, 27 Counterdefendant. 28 owens tarabichi llp SOSTILIO DECL ISO OPPOSITION Counselors At Law (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 I, NANDO SOSTILIO, declare as follows: 2 1. I am an owner and member of Plaintiff Russell Road Food and Beverage, LLC 3 (“Russell Road”). I make this Declaration in support of Russell Road’s Opposition to Defendants 4 Frank Spencer (“Spencer”) and Crazy Horse Consulting, Inc.’s (“CHC”) Motion for Preliminary 5 Injunction. The matters set forth herein are of my own personal knowledge, and if called upon to 6 testify as to such matters, I could and would do so. 7 Russell Road’s Adoption and Use of the CRAZY HORSE III Mark 8 2. On or about September 4, 2009, Russell Road opened a gentlemen’s club under the 9 CRAZY HORSE III name in the Playground complex, a 40,000 square foot complex in Las 10 Vegas that features 24-hour attractions, including nightclubs, dining establishments, live music, 11 and live sports viewing. The club is located at 3525 West Russell Road, Las Vegas, Nevada. 12 Russell Road does not own or operate any other gentlemen’s clubs. As such, Russell Road’s 13 operations are geographically limited to the Las Vegas market. Attached as Exhibit A is a true 14 and correct copy of our advertisement promoting the opening of the CRAZY HORSE III 15 gentlemen’s club, which evidences a first use date at least as early as September 4, 2009. 16 3. Russell Road selected the CRAZY HORSE III mark as an homage to the two 17 previous Crazy Horse gentlemen’s clubs in Las Vegas—the original Crazy Horse Saloon on 18 Paradise Road that closed in the late 1980s and the subsequent Crazy Horse Too on Industrial 19 Road that closed in 2006. As both clubs had closed, the Crazy Horse name was available for use 20 in the Las Vegas market, and it made sense to continue the tradition with a third gentlemen’s club 21 in Las Vegas operating under the CRAZY HORSE name. Therefore, Russell Road decided to 22 adopt and use the CRAZY HORSE III mark. The decision to adopt and use the CRAZY HORSE 23 III mark had absolutely nothing to do with Spencer or CHC. Russell Road had never heard of 24 Spencer, CHC, or the Crazy Horse clubs they claim to own and operate in Ohio. The decision to 25 adopt and use the CRAZY HORSE III mark was made in good faith and without any intent to 26 infringe on anyone’s rights. 27 4. In terms of the specifics of Russell Road’s CRAZY HORSE III mark, the mark is 28 used primarily as part of a design logo that features three horses (underscoring III) and the words owens tarabichi llp SOSTILIO DECL ISO OPPOSITION Counselors At Law 1 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 CRAZY HORSE III GENTLEMEN’S CLUB. An example of the design logo is reproduced here: 2 3 4 Russell never uses its mark with the word CRAZY HORSE by itself without the roman numeral 5 III and never uses its mark with a depiction of a singular horse. 6 5. Our CRAZY HORSE III gentlemen’s club is not your ordinary gentlemen’s club. 7 We strive to provide an opulent and contemporary experience. One way we do this is through our 8 celebrity events. We have had well-publicized events featuring TV stars and celebrities such as 9 Heidi Montag and Carmen Electra, adult film stars such as Jenna Jameson and Kaylani Lei, and 10 Playboy Playmates such as Ciara Price, Jessica Burciaga—and many more. With such well- 11 known names gracing the CRAZY HORSE III gentlemen’s club, the club has been featured 12 consistently in the mainstream media, including in US Weekly, the TV show Access Hollywood, 13 TMZ’s TV show and website, and more. Russell Road has compiled the information regarding 14 the celebrity events and press coverage on its website at www.crazyhorse3.com. Attached as 15 Exhibit B are true and correct copies of documents featuring some of the celebrities that have 16 appeared at the CRAZY HORSE III gentlemen’s club, as well as documents of some of the media 17 coverage of the club. 18 6. With its celebrity events and first-rate dancers, the CRAZY HORSE III 19 gentlemen’s club caters to a more sophisticated and wealthy clientele than a small-town 20 gentlemen’s club. For example, we offer VIP packages at price up to $22,500. Attached as

21 Exhibit C is a true and correct copy of our Double Eagle Platinum Package, which costs $22,500. 22 7. Although Russell Road’s CRAZY HORSE III gentlemen’s club has received 23 coverage from the mainstream media as described in Paragraph 5 above, much of our marketing 24 of the CRAZY HORSE III gentlemen’s club is Las Vegas-centric. We have anywhere from 5-12 25 high-profile billboards in the Las Vegas area advertising the club. We have a large network of 26 local individuals and businesses that refer customers to the CRAZY HORSE III gentlemen’s club, 27 such as doormen, taxi drivers, limo drivers, bartenders, barbers, hotels, night clubs, and other 28 venues. We pass out flyers, business cards, and passes to potential customers on the street to owens tarabichi llp SOSTILIO DECL ISO OPPOSITION Counselors At Law 2 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 attract them to the club. We engage in cross-promotional arrangements with night clubs and 2 other businesses in the Las Vegas area. These are important marketing channels, and because 3 they are targeted at Las Vegas residents and visitors, there is absolutely no overlap with Spencer 4 or CHC. 5 8. Since opening its CRAZY HORSE III club over three years ago, Russell Road has 6 not experienced any actual confusion arising out of its use of the CRAZY HORSE III name and 7 mark. No customers or other third parties have ever inquired about any sponsorship, affiliation, 8 or other relationship between Russell Road and Spencer or CHC or our respective clubs. 9 An injunction would result in over $23 million in damages to Russell Road 10 9. Russell Road has spent millions of dollars and invested untold resources to build 11 the exemplary reputation of its CRAZY HORSE III gentlemen’s club as Las Vegas’ Best Adult 12 Club. In fact, this year the adult nightclub industry named Russell Road’s CRAZY HORSE III 13 gentlemen’s club the “2012 Club of the Year/West” at the 15th Annual Adult Nightclub & Exotic 14 Dancer Award Show in Las Vegas during EXPO 2012. Attached as Exhibit D is a true and 15 correct copy of the September 12, 2012 letter from ED Publications naming CRAZY HORSE III 16 2012 Club of the Year. 17 10. If Russell Road were enjoined from using the CRAZY HORSE III mark for its 18 gentlemen’s club, it would truly have a devastating effect—not only for Russell Road, but also for 19 the 400 individuals who would lose their jobs and the local Las Vegas economy. 20 11. Russell Road estimates that, if it were enjoined from using the CRAZY HORSE

21 III mark, it would have to close its gentlemen’s club for 3-6 months in order to refit and rebuild 22 the club to accommodate a brand change. 23 12. At any one time, there are approximately 400 individuals who derive their income 24 from Russell Road’s CRAZY HORSE III gentlemen’s club to support themselves and their 25 families. Moreover, a quick Google search reveals that the current unemployment rate in Las 26 Vegas itself is somewhere around 11.9%. Many of these 400 persons would be truly devastated if 27 they were out of work for the 3-6 months during which the club would be closed. 28 13. Likewise, the local Las Vegas economy would also be impacted. Not only is the owens tarabichi llp SOSTILIO DECL ISO OPPOSITION Counselors At Law 3 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 CRAZY HORSE III gentlemen’s club a destination spot, but Las Vegas derives significant tax 2 revenues from gentlemen’s clubs, including a 7.1% sales tax, a 10% live entertainment tax on top 3 of that, and payroll taxes. Accordingly, the local economy also would be negatively impacted if 4 the club were forced to close. 5 14. In addition to the 3-6 months during which Russell Road would be forced to close 6 the CRAZY HORSE III gentlemen’s club, it would take another 18–24 months after re-opening 7 the club under a new name just to reach the same level of sales that it currently makes. The 8 amount of money in lost sales alone is staggering. 9 15. Without even including the damage to the 400 individuals or the local economy, 10 Russell Road’s CFO analyzed and calculated the financial loss that Russell Road would incur if it 11 were enjoined, and the number is greater than $23 million. 12 16. Due to the ultra competitive nature of the adult club industry, Russell Road’s 13 specific figures and calculations are considered proprietary trade secret information. Without 14 providing a detailed breakdown due to the proprietary trade secret nature of the financial 15 information, the $23 million number accounts for a number of things, including (1) loss of sales 16 while the club is closed for 3-6 months, (2) loss of sales over 18 months after the club reopens 17 and attempts to get back to its current sales levels, (3) cost of new signage and refitting the club, 18 (4) advertising and promotional costs, (5) printing and impressions, (6) web design, ecommerce, 19 and SEO expenditures, (7) licensing and permitting expenses, (8) public relations expenditures, 20 (9) legal fees and expenses, and (10) new uniforms and staff imaging.

21 17. In the unfortunate even that this Court even reaches the issue of determining an 22 appropriate bond, we would respectfully request the opportunity to submit detailed financial 23 numbers under seal supporting the $23 million in damages that would be suffered by Russell 24 Road if an injunction were issued. 25 26 // 27 // 28 owens tarabichi llp SOSTILIO DECL ISO OPPOSITION Counselors At Law 4 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1

2 Exhibit Description Russell Road’s advertisement for the grand opening of its CRAZY 3 A HORSE III gentlemen’s club on September 4, 2009 Documents featuring some of the celebrities that have appeared at the 4 B CRAZY HORSE III gentlemen’s club, as well as documents of some of the media coverage of the club 5 C The Double Eagle Platinum Package, which costs $22,500 The September 12, 2012 letter from ED Publications naming 6 D CRAZY HORSE III 2012 Club of the Year 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 owens tarabichi llp SOSTILIO DECL ISO OPPOSITION Counselors At Law 6 (CASE NO. 2:12-cv-01514-LRH-GWF)

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EXHIBIT A Case 2:12-cv-01514-LRH-GWF Document 19-1 Filed 11/30/12 Page 9 of 32 Case 2:12-cv-01514-LRH-GWF Document 19-1 Filed 11/30/12 Page 10 of 32

EXHIBIT B Case 2:12-cv-01514-LRH-GWF Document 19-1 Filed 11/30/12 Page 11 of 32 Case 2:12-cv-01514-LRH-GWF Document 19-1 Filed 11/30/12 Page 12 of 32

See http://www.crazyhorse3.com/gallery/

See http://www.crazyhorse3.com/press/

HEIDI MONTAG ON FRIDAY, OCT. 19 We celebrated our three year anniversary in style with bodacious superstar Heidi Montag on Friday, Oct. 19. READ MORE • •

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MISS NOVEMBER 2011, CIARA PRICE Heads turned as the Playmate graced our red carpet wearing a schoolgirl outfit gone naughty, complete with a red plaid skirt, skintight black top and sky-high black stilettos. READ MORE • •

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JESSICA BURCIAGA SPICES UP MEXICAN INDEPENDENCE DAY WEEKEND AT CRAZY HORSE III Playboy Playmate, Jessica Burciaga, celebrated Mexican Independence Day with us on Saturday, Sept. 15. READ MORE • •

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JENNA JAMESON HOST OF OUR LABOR DAY WEEKEND BASH! Stunning adult film superstar, Jenna Jameson, turned heads during her celebratory homecoming to Las Vegas as the host of our Labor Day Weekend bash on Saturday, Sept. 2. READ MORE • •

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ANNA SOPHIA BERGLUND Stunning Playmate, Anna Sophia Berglund, turned up the heat as the host of our ‘Bikini Beach House’ bash on Saturday, July 28. READ MORE • •

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MARY CAREY Bodacious blonde, Mary Carey, lit up the night as the host of our third annual 'Red, White and Boobs' bash on Saturday, June 30. READ MORE • •

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KAYLANI LEI Case 2:12-cv-01514-LRH-GWF Document 19-1 Filed 11/30/12 Page 15 of 32

Sexy adult film star, Kaylani Lei, hosted our after-fight party on Saturday, June 9. READ MORE • •

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PLAYMATE OF THE YEAR – CLAIRE SINCLAIR The gorgeous, modern pin-up girl and 2011’s Playboy “Playmate of the Year,” Claire Sinclair, celebrated her 21st birthday with a lavish party on Saturday, May 26. READ MORE • •

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GORGEOUS PLAYMATE JESSA HINTON The sunny California beach babe made a big splash with a packed house of Memorial Day Weekend revelers when she arrived sporting a form-fitting black tank top paired with royal blue high-waisted shorts and sky-high black stilettos. READ MORE • •

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ICONIC BEAUTY CARMEN ELECTRA CELEBRATES HER 40TH Electra entered the club sporting a form-fitting dress by Single, accompanied with sky-high Christian Louboutin stilletos and bag. READ MORE • •

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TABITHA STEVENS Adult film star Tabitha Stevens celebrated her birthday with an all-out bash at her favorite hot spot, Crazy Horse III Gentlemen's Club on Saturday, Feb. 18. READ MORE • •

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Case 2:12-cv-01514-LRH-GWF Document 19-1 Filed 11/30/12 Page 17 of 32

ICONIC BOMBSHELL CARMEN ELECTRA Electra greeted thousands of adoring fans on the microphone and stopped to sign autographs and pose for pictures. The brunette beauty showed off her seductive moves that skyrocketed her to fame as she partied the night away with friends at her VIP booth sipping on Dom Perignon champagne. READ MORE • •

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OFFICIAL AVN AFTER PARTY The top starlets of the adult industry visited us during the Adult Entertainment Expo as VIVID Vodka launched two “Official AVN After-party’s” hosted by exotic beauty, Sunny Leone on Jan. 18, 2012 and Jan. 19, 2012 READ MORE • •

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ANGEL PORRINO Local Las Vegas siren Angel Porrino secured her spot on the naughty list as the host of our sexy 'XXXmas' bash on December 10, 2011. READ MORE • •

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JOSIE STEVENS E! Entertainment’s “Married to Rock” reality TV star, Josie Stevens, hosted our second annual ‘Red White and Boobs’ bash on July 2, 2011. The blonde bombshell partied the night away with her rocker husband Steve Stevens and fellow E! reality TV star, Laura Croft. READ MORE • •

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LAURA CROFT Laura Croft, co-star of E! Entertainment’s hit show “Holly’s World,” hosted our Industry Appreciation Party on June 15, 2011. READ MORE • •

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Case 2:12-cv-01514-LRH-GWF Document 19-1 Filed 11/30/12 Page 19 of 32

OK MAGAZINE FEATURES HEIDI AT CRAZY HORSE III Three year Anniversary at CrazyHorseIII READ MORE • •

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HEIDI MONTAG FLAUNTS FAMOUS CURVES IN SKIMPY OUTFIT AT STRIP CLUB PARTY Even in a room full of exotic dancers, Heidi Montag still gets all the attention. READ MORE • •

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HEIDI MONTAG & SPENCER PRATT’S ‘CRAZY’ NIGHT OUT IN LAS VEGAS The Hills are alive with the sound of club music! READ MORE • •

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HEIDI MONTAG ‘WOULD NEVER’ HAVE MORE PLASTIC SURGERY; SAYS SHE & SPENCER PRATT LOST OVER $1 MILLION Heidi Montag’s life has taken a drastic turn over the years. After skyrocketing to fame on “The Hills” and making headlines for undergoing 10 plastic surgery procedures in one day in 2010, the former reality star is happy to be living her life out of the spotlight. READ MORE • •

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HEIDI MONTAG LEARNING HOT MOVES FROM THE PROS FOR STRIP CLUB APPEARANCE! Heidi Montag is appearing at a strip club in Las Vegas for a whopping $25,000 and RadarOnline.com is exclusively reporting that she’s learning some extra hot special moves for her big debut! READ MORE • •

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HEIDI MONTAG EARNS $25,000 TO APPEAR AT VEGAS STRIP CLUB Although she's been pretty under the radar screen after appearing on the reality showFamous Food last summer, Heidi Montag is cashing in on her fame. READ MORE • •

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HEIDI MONTAG HEADLINING AT STRIP CLUB… FOR $25,000 Coming up on the main stage ... Heeeeeeeidiiiiiiii Montag!! READ MORE • •

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CELEBRITY REPUBLICANS – JENNA JAMESON Jenna Jameson at perezhilton.com READ MORE • •

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HEIDI MONTAG HOSTING PARTY AT LAS VEGAS STRIP CLUB Heidi Montag is ready to make some dough! READ MORE • •

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THE STNDRD LIFESTYLE – A DAY IN VEGAS Crazy Horse III mentioned in The STNDRD Lifestyle magazine on an article about a day in Vegas! READ MORE • •

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LAS VEGAS WEEKLY – GUIDE TO FOOTBALL GAME DAY SPECIALS Crazy Horse III will offer free Budweiser and Bud Light drafts, in addition to free Crown Royal drinks, for the pregame party starting at 4 p.m. until kickoff on Monday nights. READ MORE • •

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NEON NIGHTS FEATURES JENNA JAMESON AT CRAZY HORSE III Jenna Jameson met fans Saturday at Crazy Horse III! READ MORE • •

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LAS VEGAS WEEKLY – JENNA JAMESON HOSTS AND PARTIES AT CRAZY HORSE III Adult-entertainment superstar Jenna Jameson played hostess with the mostess at Crazy Horse III during the Labor Day Weekend, and certainly heads turned and jaws dropped when UFC stud Tito Ortiz’s baby mama arrived on the red carpet. READ MORE • •

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LAS VEGAS REVIEW JOURNAL – JENNA JAMESON Porn icon Jenna Jameson who had become a red carpet fashionista in recent years, returned to risque in a big way on Saturday during her Labor Day weekend appearance at Crazy Horse III. She was back to showing a lot of skin in a barley-there, spider-inspired jumpsuit... Loan Gruffudd READ MORE • •

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ACCESS HOLLYWOOD – JENNA JAMESON – LATEST STAR SIGHTINGS Jenna Jameson is seen at the Crazy Horse III Gentlemen’s Club at Playground to host a Labor Day weekend party on September 1, 2012 READ MORE • •

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NEON NIGHTS – VEGAS CLUBS PACKING WEEKEND LINEUPS Crazy Horse III featured in Neon Nights article. "Vegas Clubs Packing Weekend Lineups" READ MORE • •

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NEON NIGHTS – ANNA SOPHIA Hugh Hefner ex Anna Sophia Berglund hosted Saturday at Crazy Horse III READ MORE • •

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NEON NIGHTS – SARAH TRESSLER SIGNS AUTOGRAPHS AT CH3 Former journalist and author of "Diary of an angry Stripper" Sarah Tressler signed autographs Friday inside Crazy Horse III READ MORE • •

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DANCING WITH SUCCESS – LAS VEGAS WEEKLY Crazy Horse III Featured in an article on Las Vegas Weekly July 19th 2012 READ MORE • •

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POSH NIGHTCLUB ON TRAVEL CHANNEL Relish your late-night rendezvous at Posh Boutique Nightclub and experience everything a mega club has to offer in an intimately scaled, modern twist of luxurious comfort. Posh has quickly become the hottest wonderland in Las Vegas where revelers continue the party well after the nightclubs on the Strip close down. READ MORE • •

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EXHIBIT C Case 2:12-cv-01514-LRH-GWF Document 19-1 Filed 11/30/12 Page 30 of 32

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EXHIBIT D Case 2:12-cv-01514-LRH-GWF Document 19-1 Filed 11/30/12 Page 32 of 32 publications, inc. E▲D▲ Bob Lenson and Keith Raggano 9/12/2012 Crazy Horse III Las Vegas, NV

Dear Bob and Keith:

On behalf of everyone at ED Publications, and the entire adult nightclub industry, we want to congratulate you on the Cadillac Lounge winning the 2012 Club of the Year/West Award at the recent 15th Annual Adult Nightclub & Exotic Dancer Awards Show in Las Vegas during EXPO 2012.

Out of the 3,000-plus adult nightclubs in the U.S., yours was one of only 12 that were recognized with a 2012 ED Award. This was truly a special year to receive that recognition, as we celebrated our 20th Annual “Reunion” Gentlemen’s Club Owners EXPO.

Also attached to this email is a press release about the 2012 Awards and some photos of your club being honored. We encourage you to send the press release and photos to your local media outlets; you have been saluted by the industry as being among the best of the best, and that is certainly an honor that you and everyone at your club should take pride in!

Congratulations again and we look forward to seeing you at EXPO 2013!

Regards,

Don Waitt Dave Manack Publisher Associate Publisher

ED PUBLICATIONS, INC. 2431 Estancia Blvd. ▲ Building B ▲ Clearwater, Florida 33761-2608 (727) 726-3592 ▲ Fax: (727) 712-8282 ▲ [email protected] Case 2:12-cv-01514-LRH-GWF Document 19-2 Filed 11/30/12 Page 1 of 2 Case 2:12-cv-01514-LRH-GWF Document 19-2 Filed 11/30/12 Page 2 of 2 Case 2:12-cv-01514-LRH-GWF Document 19-3 Filed 11/30/12 Page 1 of 13

1 BRUNO W. TARABICHI, CA State Bar No. 215129 [email protected] 2 OWENS TARABICHI LLP 111 N. Market St., Suite 730 3 San Jose, California 95113 Telephone: 408.298.8200 4 Facsimile: 408.521.2203 Pro Hac Vice 5 PUOY K. PREMSRIRUT, State Bar No. 7141 6 [email protected] BROWN BROWN & PREMSRIRUT 7 520 S. Fourth Street, Second Floor Las Vegas, NV 89101 8 Telephone: 702.384.5563 Facsimile: 702.385.1752 9 Attorneys for Plaintiff 10 Russell Road Food and Beverage, LLC 11 UNITED STATES DISTRICT COURT 12 DISTRICT OF NEVADA 13 SOUTHERN DIVISION

14 RUSSELL ROAD FOOD AND BEVERAGE, LLC, a Nevada limited Case No. 2:12-cv-01514-LRH-GWF 15 liability company, DECLARATION OF BRUNO TARABICHI 16 Plaintiff, IN SUPPORT OF PLAINTIFF RUSSELL ROAD FOOD AND BEVERAGE, LLC’S 17 vs. OPPOSITION TO DEFENDANTS FRANK SPENCER AND CRAZY HORSE 18 FRANK SPENCER, an individual; CONSULTING'S MOTION FOR CRAZY HORSE CONSULTING, INC., an PRELIMINARY INJUNCTION 19 Ohio corporation; and DOES 1 – 50, inclusive, Case Filed: August 24, 2012 20 Judge: Honorable Larry R. Hicks Defendants. 21 FRANK SPENCER, an individual; and 22 CRAZY HORSE CONSULTING, INC., an Ohio corporation, 23 Counterclaimants, 24 vs. 25 RUSSELL ROAD FOOD AND 26 BEVERAGE, LLC, a Nevada limited liability company, 27 Counterdefendant. 28 owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 I, BRUNO TARABICHI, declare as follows: 2 1. I am an attorney at law, duly admitted into practice before all courts for the State 3 of California. I am a partner in the law firm of Owens Tarabichi LLP, counsel for Plaintiff 4 Russell Road Food and Beverage, LLC (“Russell Road”). I make this Declaration in support of 5 Russell Road’s Opposition to Defendants Frank Spencer and Crazy Horse Consulting, Inc.’s 6 Motion for Preliminary Injunction. The matters set forth herein are of my own personal 7 knowledge, and if called upon to testify as to such matters, I could and would do so. 8 The Original Crazy Horse and the Current Crowded Field of Crazy Horse Marks 9 2. On their www.crazyhorse.com website, Spencer and CHC preposterously claim 10 that they are the “rightful and earliest user” of the CRAZY HORSE mark. Attached as Exhibit A 11 is a true and correct copy of one of the webpages on the www.crazyhorse.com website. 12 3. Spencer and CHC’s claim is preposterous because—in 1951, long before Spencer 13 or CHC started using CRAZY HORSE—Alain Bernardin opened Le Crazy Horse in Paris, 14 France. Also known as Le Crazy Horse Saloon or Le Crazy Horse de Paris, the Parisian cabaret 15 featured racy burlesque routines performed by nude female dancers. In the over 50 years since it 16 opened, Le Crazy Horse has become world renown and been featured in several documentaries. 17 The original Parisian Crazy Horse is still in operation today and maintains a website at 18 www.lecrazyhorseparis.com. Attached as Exhibit B is a true and correct copy of a printout from 19 Le Crazy Horse’s website recounting some of its history. Attached as Exhibit C is the Wikipedia 20 entry for Crazy Horse, which recounts the history of the original Crazy Horse in Paris.

21 4. Since the original Le Crazy Horse opened in Paris in 1951, countless gentlemen’s 22 clubs, night clubs, bars, and restaurants have opened under names consisting of or containing 23 CRAZY HORSE. This has created a “crowded field” of CRAZY HORSE marks. My review of 24 these countless clubs reveals that they are not owned or licensed by the original Le Crazy Horse 25 in Paris, Spencer, or CHC; rather, they are owned and operated by independent and unaffiliated

26 third parties. Attached as Exhibit D is true and correct copy of a list of Crazy Horse 27 establishments in the U.S., most of which are gentlemen’s clubs, night clubs, bars, or restaurants. 28 owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law 1 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 5. By no means is the list in Exhibit D exhaustive. There are likely many more Crazy 2 Horse establishments than just the ones listed in Exhibit D. However, it is worth noting that 3 many of the listings in Exhibit D are gentlemen’s clubs, including a Crazy Horse gentlemen’s 4 club in San Francisco, California (www.crazyhorse-sf.com); just outside of Atlantic City, New 5 Jersey (www.thecrazyhorsecabaret.com); two in Denver, Colorado; in Detroit, Michigan 6 (http://www.yelp.com/biz/crazy-horse-detroit); two in Anchorage, Alaska 7 (http://crazyhorsesaloon.yolasite.com); just outside Los Angeles in Covina, California 8 (www.go2crazyhorse.com); in Tampa, Florida; in Forest Park, Georgia; in Geismar, Louisiana; in 9 New Orleans, Louisiana; in Port Allen, Louisiana (www.crazyhorseportallen.com); in 10 Milwaukee, Wisconsin; in Nashville, Tennessee; in Rock Hill, South Carolina; in New Brighton, 11 Pennsylvania; in Beaver, Pennsylvania; three in North Carolina; and many more. Id. In fact, this 12 list and Exhibit D do not even include Russell Road’s Crazy Horse III club in Las Vegas 13 (www.crazyhorse3.com) or Spencer’s Crazy Horse clubs in Ohio (www.crazyhorse.com). 14 6. In addition to gentlemen’s clubs, night clubs, bars, and restaurants, the CRAZY 15 HORSE name has also been widely adopted in connection with other goods and services, such as 16 motorcycles, firearms, clothing, pocket knives, whiskey, special effects services, energy drinks, 17 racing cars, watches, and much more. Attached as Exhibit E are true and correct copies of 18 printouts of trademark applications and registrations filed with the U.S. Patent and Trademark 19 Office for the CRAZY HORSE mark in connection with a wide variety of goods and services. 20 Without question, if Russell Road was given sufficient time to comprehensively gather all

21 common law uses of the CRAZY HORSE mark, the results would contain a staggering number of 22 third party uses of the CRAZY HORSE mark. 23 7. In fact, on their website, Spencer and CHC admit that a crowded field of CRAZY 24 HORSE marks has existed for the last 30 years, a clear result of failing to police their purported 25 rights: “The Crazy Horse name, which has been unavailable for the last 30 years …” See Exhibit 26 A attached hereto. 27 28 owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law 2 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 The History of the CRAZY HORSE mark in Las Vegas 2 8. There is a long and storied history surrounding the use of the CRAZY HORSE 3 name and mark in Las Vegas, Nevada. Russell Road’s CRAZY HORSE III gentlemen’s club is 4 not the first CRAZY HORSE club in Las Vegas, Nevada. Rather, as its name implies, it is third. 5 9. During the late 1970s/early 1980s, Jack Galardi opened the original Crazy Horse 6 Saloon club on Paradise Road in Las Vegas, which eventually closed in the late 1980s. Attached 7 as Exhibit F is a true and correct copy of a January 23, 2004 article from the Las Vegas Sun about 8 Jack Galardi, who opened the original Crazy Horse Saloon. 9 10. Shortly after the closure of the original Crazy Horse Saloon, the Crazy Horse Too 10 gentlemen’s club opened at 2466 Industrial Road in Las Vegas. As its name implies, Crazy 11 Horse Too was patterned after the Crazy Horse Saloon on Paradise Road. However, following 12 the well-publicized legal difficulties of its owner, the Crazy Horse Too club closed its doors on 13 September 7, 2006. Attached as Exhibit G is a true and correct copy of the Wikipedia entry for 14 Crazy Horse Too, which recounts the history. 15 11. Only after the first two Crazy Horse clubs closed, did Russell Road open the 16 CRAZY HORSE III gentlemen’s club on or about September 4, 2009. 17 12. If Spencer and CHC have used the CRAZY HORSE mark since 1978 in Ohio as 18 they claim, then they have co-existed with CRAZY HORSE gentlemen’s clubs in Las Vegas for 19 essentially that entire time—over 30 years. 20 Spencer’s Fraudulent Marking & Filing of Trademark Applications 30 Years Later

21 13. Moreover, Spencer and CHC’s failure to protect their alleged rights is further 22 evidenced by the fact that, even though they claim to have used the CRAZY HORSE mark since 23 1978, they did not file their federal trademark applications until over 30 years later. Attached as

24 Exhibit H are true and correct copies of Spencer’s federal trademark applications, which show the 25 filing dates. 26 14. On August 28, 2008, Spencer filed U.S. Application Serial No. 77/557,722 for 27 CRAZY HORSE based on use in commerce for, among other things,” adult entertainment 28 services featuring exotic dancing performances.” In support of his application, Spencer submitted owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law 3 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 a specimen showing his use of the CRAZY HORSE mark. However, the specimen disclosed that 2 Spencer was using the registration symbol ® in connection with his use of the CRAZY HORSE 3 mark, despite the fact that, as of August 28, 2008, Spencer did not own any federal trademark 4 registrations for CRAZY HORSE. In other words, Spencer was engaged in fraudulent marking. 5 Attached as Exhibit I is a true and correct copy of the specimen that Spencer submitted with 6 initial application on August 28, 2008. 7 15. Although Spencer claims that his illegal use of the registration symbol ® was 8 inadvertent, there is enough circumstantial evidence that it was intentional. As of August 28, 9 2008, he had already been through the trademark registration process at the USPTO several times. 10 Moreover, Spencer was represented by trademark counsel, Jay Mondolvanyi at Fay Sharpe LLP. 11 In addition, it is irrelevant that the USPTO missed the fraudulent marking because the issue of 12 whether fraudulent marking bars injunctive relief or renders a mark unenforceable is an issue that 13 is left for the court to decide, as such decisions are not within the purview of examining attorneys 14 during ex parte prosecution. 15 16. On December 11, 2008, the USPTO issued an office action refusing registration of 16 Spencer’s U.S. Application Serial No. 77/557,722 based on Carl Reid’s prior U.S. Registration 17 No. 3,044,028 for CRAZY HORSE and Carl Reid’s prior U.S. Registration No. 3,055,283 for 18 PURE GOLD’S CRAZY HORSE. Attached as Exhibit J is a true and correct copy of the 19 December 11, 2008 office action. 20 17. On January 14, 2011, Spencer filed another trademark application for CRAZY

21 HORSE, U.S. Application Serial No. 85,217,717, for “restaurant, night club, tavern and cocktail 22 lounge services.” On April 7, 2011, the USPTO issued an office action refusing registration of 23 Spencer’s U.S. Application Serial No. 77/557,722 based on Carl Reid’s prior U.S. Registration 24 No. 3,044,028 for CRAZY HORSE and Carl Reid’s prior U.S. Registration No. 3,055,283 for 25 PURE GOLD’S CRAZY HORSE. In addition, the office action also advised Spencer of Russell 26 Road’s prior filed trademark application. To date, Spencer has not successfully overcome the

27 refusals in this office action. Attached as Exhibit K is a true and correct copy of the April 7, 28 2011 office action. owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law 4 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 The Assignment of U.S. Registration No. 3,044,028 to CHC and Consent Agreement 2 18. Faced with the USPTO’s rejection of his U.S. Trademark Application Serial Nos. 3 77/557,722 and 85/217,717 for CRAZY HORSE based on Carl Reid’s prior U.S. Registration 4 Nos. 3,044,028 and 3,055,283, Spencer realized he would need to obtain Carl Reid’s consent or 5 acquire U.S. Registration Nos. 3,044,028 and 3,055,283for himself. 6 19. On August 19, 2010, Spencer formed a CHC, an Ohio corporation. Attached as 7 Exhibit L is a true and correct copy of a printout from the Ohio Secretary of State’s website 8 showing that CHC was formed on August 19, 2010. 9 20. Spencer then orchestrated an assignment of U.S. Trademark Registration No. 10 3,044,028 from Carl Reid to CHC. The assignment was dated December 10, 2010, and recorded 11 with the USPTO on January 11, 2011. Attached as Exhibit M is a true and correct copy of the 12 December 10, 2010 assignment as recorded with the USPTO. 13 21. On March 16, 2011, Carl Reid assigned U.S. Registration No. 3,055,283 for PURE 14 GOLD’S CRAZY HORSE to JAT Investments, LLC. Attached as Exhibit N is a true and correct 15 copy of the USPTO’s website reflecting the recording of the assignment. 16 22. On January 26, 2012, Spencer and CHC entered into a consent agreement with 17 JAT Investments LLC. In the consent agreement, Spencer and CHC consented to JAT 18 Investments LLC’s use of the PURE GOLD’S CRAZY HORSE mark, and JAT Investments LLC 19 consented to Spencer and CHC’s use of the CRAZY HORSE mark. One reason this is notable is 20 because Spencer and CHC operate a club called PLATINUM HORSE, but they do not appear

21 concerned about potential confusion between PLATINUM HORSE and PURE GOLD’S CRAZY 22 HORSE. Clearly, if CRAZY HORSE and PURE GOLD’S CRAZY HORSE can co-exist, so can

23 CRAZY HORSE and CRAZY HORSE III GENTLEMEN’S CLUB. Attached as Exhibit O is a 24 true and correct copy of the consent agreement between Spencer, CHC, and JAT Investments 25 LLC. 26 The Co-Existence Agreement Permitting Russell Road to use CRAZY HORSE III 27 23. On July 10, 2009, a Nevada company called Crazy Horse Too A Gentlemen’s 28 Club filed a Petition to Cancel Carl Reid’s U.S. Registration No. 3,044,028 for CRAZY HORSE owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law 5 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 on multiple grounds, including fraud on the USPTO. The Trademark Trial and Appeal Board 2 (“TTAB”) at the USPTO instituted the proceeding as Cancellation No. 92051225. The pleadings 3 in the cancellation proceeding can be accessed through the USPTO’s website at this link: 4 http://ttabvue.uspto.gov/ttabvue/v?pno=92051225&pty=CAN 5 24. Russell Road believes that U.S. Registration No. 3,044,028 is invalid and subject 6 to cancellation based on the same reasons articulated in the pleadings in Cancellation 7 No. 92051225. More specifically, Carl Reid executed a declaration alleging under oath that he 8 was entitled to use such mark in commerce and that no other person or entity had the right to use 9 the mark. On information and belief, at the time Carl Reid executed such declaration, he was 10 aware of the widespread adoption of the CRAZY HORSE mark by various third parties in 11 connection with similar goods and services. On information and belief, Carl Reid knew that such 12 third parties had rights in the mark superior to his. On information and belief, he either believed 13 that a likelihood of confusion would result from his use of the CRAZY HORSE mark or had no 14 reasonable basis for believing otherwise. On information and belief, Carl Reid, in failing to 15 disclose these facts to the Patent and Trademark Office, intended to procure a registration to 16 which he was not entitled. In addition, on information and belief, Carl Reid was not the owner of 17 the CRAZY HORSE trademark at the time Respondent filed U.S. Application Serial No. 18 76/621,471 on November 18, 2004 as we believe a corporate entity was the true owner. Because 19 Carl Reid was not the true owner of the CRAZY HORSE trademark at the time of filing, U.S. 20 Registration No. 3,044,028 is void pursuant to 15 U.S.C. § 1051 and 37 C.F.R. § 2.71(d). 21 25. Knowing his U.S. Registration No. 3,044,028 for CRAZY HORSE was vulnerable 22 to cancellation, Carl Reid agreed to settle the cancellation proceeding and entered into a 23 Trademark Co-Existence Agreement with Crazy Horse Too A Gentlemen’s Club on September 24 16, 2009. This Trademark Co-Existence Agreement was executed more than a year before 25 Carl Reid agreed to assign U.S. Registration No. 3,044,028 for CRAZY HORSE to CHC. 26 Attached as Exhibit P is a true and correct copy of the September 16, 2009 Trademark Co- 27 Existence Agreement between Carl Reid and Crazy Horse Too A Gentlemen’s Club. 28 owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law 6 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 26. Pursuant to the terms of the September 16, 2009 Trademark Co-Existence 2 Agreement, Carl Reid explicitly consented to Crazy Horse Too A Gentlemen’s Club “use and 3 registration” of “any mark that includes the phrase CRAZY HORSE provided the mark does not 4 contain the phrase PURE GOLD’S.” See Exhibit P attached hereto, at ¶ 1. 5 27. On August 16, 2012, Crazy Horse Too A Gentlemen’s Club assigned all of its 6 rights, title, and interest in and to the September 16, 2009 Trademark Co-Existence Agreement to 7 Russell Road. Attached as Exhibit Q is a true and correct copy of the Assignment of the 8 September 16, 2009 Trademark Co-Existence Agreement from Crazy Horse Too A Gentlemen’s 9 Club to Russell Road. 10 28. As the assignee and owner of the rights under the September 16, 2009 Trademark 11 Co-Existence Agreement, Russell Road acquired the explicit consent of the owner of U.S. 12 Trademark Registration No. 3,044,028 for CRAZY HORSE to “use and register” “any mark that 13 includes the phrase CRAZY HORSE provided the mark does not contain the phrase PURE 14 GOLD’S.” This language explicitly permits the Russell Road to use and register the CRAZY 15 HORSE III mark. 16 29. Moreover, Spencer and CHC were aware of the September 16, 2009 Trademark 17 Co-Existence Agreement before they acquired U.S. Registration No. 3,044,028 for CRAZY 18 HORSE by assignment on December 10, 2010. I know that Spencer and CHC were aware of the 19 September 16, 2009 Trademark Co-Existence agreement because the agreement was part of the 20 file history for Crazy Horse Too A Gentlemen’s Club’s U.S. Application Serial No. 77,280,405, 21 an application that Spencer filed a notice of opposition against, which was instituted by the TTAB 22 as Opposition No. 91194602. The pleadings in the opposition proceeding can be accessed 23 through at this link: http://ttabvue.uspto.gov/ttabvue/v?pno=91194602&pty=OPP 24 Spencer and CHC’s Delay of Over a Year Requires Denial of the Requested Injunction 25 30. As a matter of course, federal courts deny motions for preliminary injunction in 26 trademark cases in which the moving party has delayed a year or more. Between 1990 and 2009, 27 Sandra Edelman and Robert Raskopf authored four for The Trademark Reporter in a series 28 entitled Delay in Filing Preliminary Injunction Motions that addresses the effect of delay in owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law 7 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 preliminary injunction motions in trademark cases. Attached as Exhibit R are true and correct 2 copies of these articles. 3 31. Russell Road knows that Spencer and CHC have known about Russell Road’s use 4 of the CRAZY HORSE III mark since at least August of 2011 when Spencer contacted Russell 5 Road directly. See Lenson Declaration. However, it is likely that Spencer and CHC knew about 6 Russell Road since at least as early as April 7, 2011 when the U.S. Patent and Trademark Office 7 (“USPTO”) issued an office action citing Russell Road’s trademark application for CRAZY 8 HORSE against Spencer. Attached as Exhibit K is a true and correct copy of the April 7, 2011 9 office action issued by the USPTO informing Spencer about Russell Road. 10 Spencer and CHC’s Attempts to Extort a License and Communications Between the Parties 11 32. On February 8, 2012, Frank Spencer sent email correspondence to Russell Road’s 12 counsel Martin Pomeroy demanding that Russell Road complete and return an application form to 13 license the CRAZY HORSE trademark from Defendants. Attached as Exhibit S is a true and 14 correct copy of the application form that Spencer and CHC demanded Russell Road complete and 15 return. 16 33. On April 20, 2012, I sent a response letter to Spencer and CHC disputing their 17 contention that Russell Road needed any license from Defendants in order to use its CRAZY 18 HORSE III Design Mark. In the letter, I clearly articulate why Russell Road does not infringe 19 Spencer and CHC’s claimed trademark rights in the CRAZY HORSE mark and made it clear that 20 Russell Road would not take a license. Attached as Exhibit T is a true and correct copy of my

21 April 20, 2012 letter. 22 34. On May 17, 2012, Spencer and CHC responded through their counsel, Jay 23 Moldovanyi of Fay Sharpe LLP reiterating their mistaken belief that Russell Road’s use of its 24 CRAZY HORSE III trademark infringed Defendants’ claimed rights in the CRAZY HORSE 25 mark and proceeded to put Russell Road on notice that Defendants intended to oppose Russell 26 Road’s U.S. Trademark Application Serial No. 85/584,958 for the CRAZY HORSE III 27 GENTLEMEN’S CLUB design mark. Notably, even though we had made it clear that we would 28 not take a license, they still offered to consider a license agreement. This underscores that they owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law 8 (CASE NO. 2:12-cv-01514-LRH-GWF)

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1 were really just seeking licensing fees and that any alleged infringement can be adequately 2 compensated with monetary damages. Attached as Exhibit U is a true and correct copy of the 3 May 17, 2012 letter from Defendants’ counsel. 4 Spencer and CHC’s Alleged Crazy Horse Mark and Gentlemen’s Clubs 5 35. Spencer and CHC do not use the CRAZY HORSE mark by itself as a stand alone 6 mark. They use it in connection with a design of a goofy looking horse with its tongue sticking 7 out: 8 9 10 This can be verified by visiting their website at www.crazyhorse.com. On their website, there are 11 links to the adult clubs they claim to operate in Ohio. In addition, there are pictures of the clubs, 12 and it is clear that the design of the goofy looking horse with its tongue sticking out is always 13 used and is actually the dominant part of their brand—in fact, it appears that the outside of one of 14 their clubs bears only this design without the words CRAZY HORSE. 15 36. In addition, although Spencer and CHC claim to be concerned about potential 16 confusion resulting from the use of multiple Crazy Horse marks, it is notable that Spencer and 17 CHC use multiple variations of CRAZY HORSE. One of the clubs they own in Ohio is actually 18 called PLATINUM HORSE, not CRAZY HORSE—but it uses that same goofy logo of the horse 19 with its tongue sticking out. Another one of the clubs they own in Ohio is actually called the 20 CRAZY HORSE SALOON, not CRAZY HORSE—but it also uses that same goofy logo of the

21 horse with its tongue sticking out. And a third one is called CRAZY HORSE MEN’S CLUB. Of 22 the four gentlemen’s clubs in Ohio that Spencer and CHC claim to own, only one of them is 23 actually called CRAZY HORSE. Therefore, if the multiple uses of CRAZY HORSE actually 24 dilutes the distinctiveness and creates confusion as Spencer and CHC claim, they are adding to 25 this alleged effect through their own actions in muddying the waters with their own uses of 26 multiple variations of CRAZY HORSE. These multiple uses actually leads to the conclusion that 27 the dominant part of their mark is not the word CRAZY HORSE but their design logo of the 28 goofy horse with the tongue sticking out. owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law 9 (CASE NO. 2:12-cv-01514-LRH-GWF)

Case 2:12-cv-01514-LRH-GWF Document 19-3 Filed 11/30/12 Page 11 of 13

1 37. In reviewing Spencer and CHC’s website for their Ohio gentlemen’s clubs, I did 2 not see any events featuring celebrities of any kind or any expensively priced services or 3 packages. Rather, their premium packages seem to hover around $20. This is in stark contrast to 4 the offerings of Russell Road’s CRAZY HORSE III gentlemen’s club, as detailed in Nando 5 Sostilio’s declaration. Attached as Exhibit V is a true and correct copy of one of the $20 special 6 packages available at Spencer/CHC’s Cleveland-based Crazy Horse gentlemen’s club. 7 Additional Discovery To Oppose the Motion for Preliminary Injunction 8 38. We believe that sufficient arguments and evidence have been submitted to 9 convince this Court that Spencer and CHC’s Motion for Preliminary Injunction should be denied. 10 However, to the extent this Court is inclined to grant preliminary injunctive relief, Russell Road 11 requests that the Court stay a hearing on this Motion and permit it to conduct discovery to obtain 12 additional evidence that Spencer and CHC will not be irreparably harmed and are not likely to 13 succeed on the merits of their trademark infringement claim. The specific topics of discovery are 14 listed in the paragraphs below. 15 39. We would want to take discovery relating to when Spencer and CHC first learned 16 of Russell Road’s use of CRAZY HORSE III. While we know Spencer and CHC knew as early 17 as August of 2011, we believe they knew well before then and perhaps as early as 2009. If true, 18 this additional delay would weigh even heavier against granting preliminary relief as they would 19 have delayed almost three years. 20 40. We would want to take discovery on the bases for cancelling U.S. Registration No. 21 3,044,028. Russell Road believes that, at the time the application was filed, Carl Reid was not the 22 proper owner, may not have made interstate commerce use, and knew that he was not entitled to 23 exclusively use the CRAZY HORSE mark. Accordingly, this will require issuing a subpoena and 24 taking the deposition of Carl Reid, as the information relating to these claims reside principally 25 with him. 26 41. We would want to take discovery on Spencer’s fraudulent marking (i.e., illegal use 27 of the registration symbol ®). Discovery may reveal documentation or testimony that proves that 28 owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law 10 (CASE NO. 2:12-cv-01514-LRH-GWF)

Case 2:12-cv-01514-LRH-GWF Document 19-3 Filed 11/30/12 Page 12 of 13

1 Spencer knew he was not permitted to use the registration symbol without having a federal 2 registration. 3 42. We will want to take additional discovery regarding the full extent of the crowded 4 field of CRAZY HORSE marks and Spencer and CHC’s knowledge of it and intentional decision 5 not to police against third party uses. This is possibly the most significant factor in the likelihood 6 of confusion analysis in this particular case because of the mind boggling number of CRAZY 7 HORSE marks in use across the U.S. and throughout the world. 8 43. We will want to take discovery on Spencer and CHC’s purported licensing 9 arrangements. Not only will this provide useful information showing that monetary damages are 10 more than adequate such that the equitable remedy of a preliminary injunction is not needed, but 11 it will also inform us as to whether he is truly making any use outside of Ohio, which we 12 seriously question in light of the fact that the one purported licensee in Myrtle Beach, South 13 Carolina recently changed its name from Crazy Horse to Thee Dollhouse.

14 15 I declare under penalty of perjury under the laws of the State of California that the 16 foregoing is true and correct. 17 Executed November 30, 2012 at San Jose, California. 18

19 Bruno Tarabichi 20 21 22 23 24 25 26 27 28 owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law 11 (CASE NO. 2:12-cv-01514-LRH-GWF)

Case 2:12-cv-01514-LRH-GWF Document 19-3 Filed 11/30/12 Page 13 of 13

1

2 Exhibit Description Printout from www.crazyhorse.com evidencing that Spencer and 3 A CHC were aware of the crowded field of CRAZY HORSE marks Printout from the original Parisian Crazy Horse’s website, which 4 B recounts some of its history Printout of the Wikipedia entry for Crazy Horse, which recounts the 5 C history of the original Crazy Horse in Paris Documents listing the crowded field of CRAZY HORSE marks for 6 D gentlemen’s clubs, night clubs, bars, and restaurants Printouts from the U.S. Patent and Trademark Office evidencing the 7 E crowded field of CRAZY HORSE marks for a wide variety of other goods and service 8 January 23, 2004 article from the Las Vegas Sun on Jack Galardi, the F founder of the original Crazy Horse Saloon 9 G Printout of the Wikipedia entry for Crazy Horse Too 10 H Copies of Spencer’s federal trademark applications I Copy of specimen showing Spencer’s fraudulent marking 11 J A copy of the December 11, 2008 office action K A copy of the April 7, 2011 office action 12 Copy of a printout from the Ohio Secretary of State’s website L showing that CHC was formed on August 19, 2010. 13 Assignment of U.S. Trademark Registration No. 3,044,028 from Carl M Reid to CHC 14 USPTO website reflecting assignment of U.S. Trademark N Registration No. 3,055,283 from Carl Reid to JAT Investments 15 O Consent agreement between Spencer, CHC, and JAT Investments P Trademark Co-Existence Agreement Between Carl Reid and Crazy 16 Horse Too A Gentlemen’s Club Q Assignment of Trademark Co-Existence Agreement from Crazy 17 Horse Too A Gentlemen’s Club to Russell Road R Four articles that have appeared in The Trademark Reporter in a 18 series entitled Delay in Filing Preliminary Injunction Motions Spencer and CHC’s license application form that they asked Russell 19 S Road to complete April 20, 2012 letter to Spencer and CHC denying infringement and 20 T refusing license U May 17, 2012 response letter from Spencer and CHC’s counsel 21 V Spencer’s $20 special packages 22 23 24 25 26 27 28 owens tarabichi llp TARABICHI DECL ISO OPPOSITION Counselors At Law 12 (CASE NO. 2:12-cv-01514-LRH-GWF)

Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 1 of 76

EXHIBIT A Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 2 of 76

Home Clubs Income Opportunities Franchise Opportunities Blog Contact

Business Opportunity

For the first time in North America there is a chance to build on the Crazy Horse brand. The Crazy Horse brand is unique in that it is classic and familiar while being fresh and clean all at the same time. The Crazy Horse name, which has been unavailable for the last 30 years has now gone to its rightful and earliest user, C. H. C. Inc.

The brand is instantly recognizable to the entire customer demographic but comes without any of the negative pornographic associations and baggage of some of the comparable magazine based brands. As the sole, indisputable legal owner of the Crazy Horse name and trademark assets – C.H.C. Inc. and any franchise partner have the exciting and unbelievably rare opportunity to participate in this nationally known brand while introducing this new concept into local markets around North America.

Contact

© Copyright 2012 CrazyHorse Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 3 of 76

EXHIBIT B Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 4 of 76

Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 5 of 76

EXHIBIT C Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 6 of 76 Crazy Horse (cabaret) Coordinates: 48°51′57″N 02°18′06″E From Wikipedia, the free encyclopedia

Le Crazy Horse Saloon or Le Crazy Horse de Paris is a Parisian cabaret known for its stage shows performed by nude female dancers and for the diverse range of magic and variety 'turns' between each nude show and the next. Its owners have helped to create related shows in other cities, and unrelated businesses have used the phrase "Crazy Horse" in their names.

The Paris Crazy Horse occupies former wine cellars (12 in all which have been knocked together) of an impressive Haussmanian building at 12 Avenue George-V (from the British king George V, in French "George Street view of the club Cinq").

Alain Bernardin opened it in 1951 and personally operated it for decades until his death by suicide in 1994. Many of the original waiters (their names stitched in large letters onto the backs of their waistcoats) were also substantial shareholders in the original company.

The dancers are deliberately chosen to be indistinguishable on stage in height and in breast size and shape. As of 2008, the enterprise remains a family business, now in the hands of Bernardin's three children, using the name "Le Crazy Horse de Paris" for the original, "Le Crazy Horse de Singapore" for a similar but now-defunct show in that city, and Crazy Horse Paris for one in Las Vegas (formerly La Femme) at the MGM Grand. (A branch opened in Clarke Quay, Singapore in December 2005, but closed in February 2007 due to poor business.)

Along with its dancers, the Crazy Horse has also been a popular venue for many other artists, including magicians, jugglers, and mimes. Bernardin explained that he loved magic because it corresponded with his vision: "[Magic] is a dream. There is no show that is more dreamlike than a magic show. And what we do with the girls is magic, too, because they aren't as beautiful as you see them onstage. It's the magic of lights and costumes. These are my dreams and fascinations that I put onstage." [1]

Under new management in 2008, Crazy Horse started featuring famous or prestigious artists stripping for a limited number of shows, including Dita Von Teese, Carmen Electra, Aria Cascaval, Arielle Dombasle or Pamela Anderson.[2][3] They also hired Philippe Decouflé as choreographer[4] Kelly Brook appeared in the fall of 2012.[5] Also in 2012, the dancers went on strike for higher pay. Before the strike, which caused the cancellation of a high profile revue, they were paid €2,000 per month. The settlement yielded a 15 percent pay raise.[6]

The Paradiso Girls have named their album Crazy Horse after the club, as one of their members Aria Cascaval worked there. It is also mentioned in the Mötley Crüe song "Girls, Girls, Girls".

Contents

1 Film history 2 Public transit access 3 Other clubs 4 References Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 7 of 76 5 External links

Film history

In 1977, the club created and appeared in a documentary film, known as Crazy-Horse, Paris-France, or Crazy Horse de Paris. Crazy Horse-Le Show: a 2004 documentary in DVD format. Crazy Horse, Paris: a 2009 documentary in DVD format. The video features Dita von Teese. Public transit access

Alma – Marceau Champs-Élysées – Clemenceau

Other clubs

Other entertainments with varying degrees of resemblance and similar names, but unaffiliated with the original, include:

The Crazy Horse, Beirut, Lebanon Crazy Horse Too, Las Vegas Crazy Horse, Myrtle Beach, South Carolina Crazy Horse Gentlemen's Club, San Francisco Crazy Horse, Adelaide, Australia Crazy Horse, Gold Coast, Australia Crazy Horse, Winston-Salem, North Carolina Crazy Horse, Akron, Ohio Crazy Horse, Kaohsiung, Taiwan Crazy Horse Too (http://www.crazyhorsetoophilly.com/) , Philadelphia, Pennsylvania Crazy Horse Cabaret, Bronx, New York References

1. ^ "Kevin James at the New Crazy Horse" (http://www.kjmagic.com/miscellaneous/magic.html) , September 1992, Magic Magazine 2. ^ Pamela Anderson at Paris' Crazy Horse cabaret for Valentine's Day (http://afp.google.com/article/ALeqM5gMUlqPd_g9X1mVPch3aCpZKs2RKQ) AFP, Feb 1, 2008 3. ^ Pamela Anderson to perform at nude revue (http://www.reuters.com/article/peopleNews/idUSL0177816020080201) Reuters, Feb 1, 2008 4. ^ Découflé’s ‘Désirs’ at Crazy Horse (http://www.artistikrezo.com/actualites/Divers/crazy-horse-desirs.html) , Artistik Rezo (in French). 2010-03-04. Article and video. 5. ^ "Be kissed by Kelly ... Kelly Brook to appear as guest star in Forever Crazy for one week only : November 1st -8th" (http://www.lecrazyhorseparis.com/en/dernieres-news-en/dernieres-news-en18.html#.UJ7-L2fTOkc) . Crazy Horse Paris - News. Crazy Horse Paris. http://www.lecrazyhorseparis.com/en/dernieres-news-en/dernieres-news-

en18.html#.UJ7-L2fTOkc. Retrieved 11 November 2012. Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 8 of 76 en18.html#.UJ7-L2fTOkc. Retrieved 11 November 2012. 6. ^ "Newsmakers: May. 17-24, 2012:Clothes off, the show’s on" (http://www2.macleans.ca/2012/05/24/newsmakers-may-17-24-2012/) . MacLeans (weekly newsmagazine). May. 24, 2012. http://www2.macleans.ca/2012/05/24/newsmakers-may-17-24-2012/. Retrieved 11 November 2012. External links

Crazy Horse official website (http://www.lecrazyhorseparis.com/) Facade of Paris Crazy Horse (http://www.paris.org/AfterHours/Crazy/gifs/crazy.horse.html) History of Crazy Horse and La Femme (http://www.mgmgrand.com/pages_html/entertainment_lafemme_history.asp) Review of the documentary (http://movies2.nytimes.com/gst/movies/movie.html?v_id=156789) Mention of Alain Bernardin et Compagnie v. Pavilion Properties Ltd suit (http://www.law.harvard.edu/faculty/tfisher/PILMcDvJob.htm)

Retrieved from "http://en.wikipedia.org/w/index.php?title=Crazy_Horse_(cabaret)&oldid=522413150" Categories: Cabarets in Paris Strip clubs in France

This page was last modified on 11 November 2012 at 01:27. Text is available under the Creative Commons Attribution-ShareAlike License; additional terms may apply. See Terms of Use for details. Wikipedia® is a registered trademark of the Wikimedia Foundation, Inc., a non-profit organization. Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 9 of 76

EXHIBIT D Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 10 of 76

CROWDED FIELD OF CRAZY HORSE MARKS (DOES NOT INCLUDE PARTIES’ RESPECTIVE USES)

Alabama

Crazyhorse Bar & Grill 14805 W. US 84 Newton, Alabama 36352

Crazy Horse Restaurant 281 Hwy 11 North Argo Trussville, Alabama 35173

Alaska

Crazy Horse 16th St & Gambell St Anchorage, AK 99501 **Gentlemen’s Club http://crazyhorsesaloon.yolasite.com/contact‐us.php

Crazy Horse Too Brew Pub Restaurant 156 Muldoon Rd. Anchorage, AK 99504

Crazy Horse 1564 Hyder St. Anchorage, AK **Gentlemen’s Club

Arizona

Crazy Horse Saloon 904 S Us Highway 89 Chino Valley, AZ 86323

Arkansas

Crazy Horse Saloon 16325 W Hwy 62 Prairie Grove, AR 72753

California

Crazy Horse 1360 W. Garvey Avenue South West Covina, California **Gentlemen’s Club www.go2crazyhorse.com

Crazy Horse Restaurant 1425 Munras Ave. Monterey, CA 93940

Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 11 of 76

Crazy Horse Gentlemen's Club 980 Market St. San Francisco, CA 94102 **Gentlemen’s Club www.crazyhorse‐sf.com

Crazy Horse Steakhouse and Saloon 71 Fortune Dr., Suite 864 Irvine, CA

Crazy Horse Saloon 303 Main St Chico, CA 95928

Colorado

Kim’s Crazy Horse Saloon 1443 Stout St Denver, CO 80202 **Gentlemen’s Club

Crazy Horse II Salon 734 Front St. Louisville, Colorado 80027

Sid King’s Crazy Horse Bar 1201‐1225 East Colfax Avenue Denver, Colorado **Gentlemen’s Club

Florida

CRAZY HORSE CAFE 13110 Lillian Highway Pensacola, FL 32506

Club 112 AKA Crazy Horse 17800 State Road 9 Miami, FL 33162

Crazy Horse Tavern 1450 King St. Cocoa, FL 32922

THE CRAZY HORSE COMPLEX 1241 Blanding Blvd Jacksonville, FL 32065

Crazy Horse Saloon Orange Park, Florida 32073

Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 12 of 76

Thee Crazy Horse 8829 W. Hillsborough Ave. Tampa, Florida **Gentlemen’s Club

Crazy Horse Saloon 4240 Northlake Blvd Palm Beach Gardens, FL 33410

Crazy Horse Saloon 1770 St Johns Bluff Rd. South Jacksonville, FL, 32225

Georgia

Crazy Horse Saloon 3920 Jonesboro Rd Forest Park, GA **Gentlemen’s Club

Illinois

Crazy Horse Bar & Grill 14747 State Highway 14 Benton, IL 62812

Indiana

Crazy Horse 2 838 N Lima Rd Kendallville, IN 46755

Crazy Horse Emporium 214 W 5th St Bloomington, IN 47404

Iowa

CRAZY HORSE 914 Main St Keokuk‐Fort Madison, IA 52632

Kansas

Crazy Horse Saloon Bar & Cafe 120 W Main St Arlington, KS 67514

CRAZY HORSE SALOON 633 MAIN ST LE ROY, KS 66857

Crazy Horse Bar & Grill Fall River, KS 67047 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 13 of 76

Louisiana

Crazy Horse Cabaret Too 37034 Highway 30 Geismar, LA 70734 **Gentlemen’s Club

Crazy Horse Cabaret 226 Bourbon St New Orleans, LA 70130‐2205 **Gentlemen’s Club

CRAZY HORSE CABARET 2901 Interstate 10 Port Allen, LA 70767‐41 **Gentlemen’s Club www.crazyhorseportallen.com

Maryland

Crazy Horse Steak House & Saloon 116 Railway Lane Hagerstown, MD 21740

Massachusetts

The Krazy Horse Bar & Grill 287 Main St Worcester, MA 01609

Krayzee Horse Pub & Grill 1112 Washington St Norwood, MA 02062

Michigan

Crazy Horse 8140 Michigan Ave Detroit, MI 48210 **Gentlemen’s Club

The Crazy Horse Saloon 4425 14 Mile Road Rockford, MI

Crazy Horse Steakhouse & Saloon 2027 North Park Drive Holland, MI 49424

Missouri

Crazy Horse Saloon 405 Luetkenhaus Boulevard Wentzville, MO 63385 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 14 of 76

Crazy Horse Saloon & Grill 17322 S State Route 291 Pleasant Hill, MO 64080

Nevada

Crazy Horse Saloon 1375 Newlands Dr E Fernley, NV 89408

New Jersey

The Crazy Horse Cabaret 201 E. Delilah Rd. Pleasantville, NJ 08232 **Gentlemen’s Club www.thecrazyhorsecabaret.com

New York

The Crazy Horse Saloon 1770 St. Johns Bluff Rd. S. New York, NY 10022 **Gentlemen’s Club

North Carolina

Crazy Horse Show 5321 E. Independence Blvd. Charlotte, NC 28212 **Gentlemen’s Club

Crazy Horse show club of Hickorey 2160 Hwy. 70 SW Hickory, NC 28601 **Gentlemen’s Club

CRAZY HORSE SALOON 3804 Patterson Ave Winston‐Salem, NC 27105

Crazy Horse 5671 Market St. Wilmington, NC 28405 **Gentlemen’s Club

Pennsylvania

Crazy Horse Steak House 6465 York Rd New Oxford, PA 17350

Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 15 of 76

The Crazy Horse 28 South Main Street Ellsworth, PA

Crazy Horse Gentleman's Club 310 5th St. Beaver, PA 15009 **Gentlemen’s Club

Crazy Horse Gentlemen's Club, Inc 301 4th Street New Brighton, PA 15066‐1707 **Gentlemen’s Club

Crazy Horse Country Saloon And Dance Hall 1155 Washington Pike Bridgeville, PA 15017‐2827

Crazy Horse Saloon 1155 Washington Pike Bridgeville, PA 15017

Crazy Horse Steakhouse, Saloon & Inn 6465 York Road Hanover, PA 17350

Crazy Horse Saloon & Grill 6836 Route 119 Stump Creek, PA 15863

Crazy Horse Saloon & Grill 6580 Route 119 Punxsutawney, PA 15767

South Carolina

Crazy Horse Showclub 184 S Cherry Rd Rock Hill, SC 29732‐3400 **Gentlemen’s Club

Tennessee

Pure Gold's Crazy Horse 300 McCann St. Nashville, Tennessee 37210‐2634 **Gentlemen’s Club

Texas

Crazy Horse Saloon 600 Cooke Drive Rowlett, TX

Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 16 of 76

Crazy Horse Saloon 508 S. Elm St. Denton, TX 76201

The Crazy Horse 1832 Ranchland Dr Kountze, TX 77625

Vermont

The Crazy Horse 4349 Route 5 Irasburg, VT 05845‐9650

Virginia

Crazy Horse Enterprise 381 Eureka Road Charleston, WV 25314‐2150

Wisconsin

Crazy Horse 9442 W National Ave Milwaukee, Wisconsin 53227 **Gentlemen’s lub

Crazy Horse Saloon 158 S Leonard St West Salem, WI 54669 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 17 of 76

EXHIBIT E 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 18 of 76 United States Patent and Trademark Office

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Typed Drawing

Word Mark CRAZY HORSE Goods and IC 025. US 039. G & S: Ladies' Outerwear-Namely, Sweaters, Shirts, Blouses, Jackets, Two Piece Services Suits, Dresses, Pants, Shorts, Skirts and Culottes. FIRST USE: 19630208. FIRST USE IN COMMERCE: 19630208 Mark Drawing (1) TYPED DRAWING Code Serial 72163172 Number Filing Date February 20, 1963 Current 1A Basis Original 1A Filing Basis Registration 0759737 Number Registration November 5, 1963 Date Owner (REGISTRANT) R. F. R. Associates, Inc. CORPORATION NEW YORK 525 7TH AVE. New York NEW YORK

(LAST LISTED OWNER) L.C. LICENSING, LLC LIMITED LIABILITY COMPANY DELAWARE 1441 BROADWAY NEW YORK NEW YORK 10018 Assignment ASSIGNMENT RECORDED Recorded Attorney of DAVID B. KIRSCHSTEIN Record

1/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 19 of 76 Type of TRADEMARK Mark Register PRINCIPAL Affidavit SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20040630. Text Renewal 2ND RENEWAL 20040630 Live/Dead LIVE Indicator

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tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.27 2/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 20 of 76 United States Patent and Trademark Office

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Typed Drawing

Word Mark CRAZY HORSE Goods and IC 014. US 002 027 028 050. G & S: watches and watchbands. FIRST USE: 19950504. FIRST USE Services IN COMMERCE: 19950504 Mark Drawing (1) TYPED DRAWING Code Serial Number 75344261 Filing Date August 20, 1997 Current Basis 1A Original Filing 1B Basis Published for July 28, 1998 Opposition Registration 2271076 Number Registration August 17, 1999 Date Owner (REGISTRANT) Cooper & Company, Inc. CORPORATION OHIO 10179 Commerce Park Drive Cincinnati OHIO 45246

(LAST LISTED OWNER) L.C. LICENSING, LLC LIMITED LIABILITY COMPANY DELAWARE 1441 BROADWAY NEW YORK NEW YORK 10018 Assignment ASSIGNMENT RECORDED Recorded Attorney of JAMES P WERSCHING Record Type of Mark TRADEMARK tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.26 1/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 21 of 76 Register PRINCIPAL Live/Dead LIVE Indicator

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tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.26 2/2 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 22 of 76 United States Patent and Trademark Office

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Typed Drawing

Word Mark CRAZY HORSE Goods and IC 009. US 021 023 026 036 038. G & S: SERIES OF PRE-RECORDED [ AUDIO TAPES AND ] VIDEO Services TAPES FEATURING A MOUNTAIN MONUMENT, MAGNETS AND DECORATIVE REFRIGERATOR MAGNETS, [ AND PHOTOGRAPHIC SLIDE TRANSPARENCIES ]. FIRST USE: 19870000. FIRST USE IN COMMERCE: 19870000

IC 019. US 001 012 033 050. G & S: SCULPTURES OF STONE. FIRST USE: 19490000. FIRST USE IN COMMERCE: 19490000

IC 021. US 002 013 023 029 030 033 040 050. G & S: GIFTWARE OF PLASTER, CERAMIC, PORCELAIN, LEATHER, STONE AND WOOD, NAMELY, DECORATIVE PLATES, DECORATIVE MUGS, PAPER WEIGHTS, DECORATIVE BOXES. FIRST USE: 19490000. FIRST USE IN COMMERCE: 19490000

IC 036. US 100 101 102. G & S: CHARITABLE FUND RAISING SERVICES FOR THE CREATION, CONSTRUCTION AND PRESERVATION OF A CARVED MOUNTAIN MONUMENT. FIRST USE: 19490000. FIRST USE IN COMMERCE: 19490000

IC 041. US 100 101 107. G & S: PROVIDING AN EDUCATIONAL AND CULTURAL EXHIBITION IN THE NATURE OF A CARVED MOUNTAIN MONUMENT. FIRST USE: 19490000. FIRST USE IN COMMERCE: 19490000 Mark Drawing (1) TYPED DRAWING Code Serial 75707088 Number Filing Date May 14, 1999

Current 1A

1/2 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 23 of 76 Basis Original 1A Filing Basis Published for August 28, 2001 Opposition Registration 2508515 Number Registration November 20, 2001 Date Owner (REGISTRANT) Crazy Horse Memorial Foundation, The NON-PROFIT CORPORATION SOUTH DAKOTA 12151 Avenue of the Chiefs Crazy Horse SOUTH DAKOTA 577308900 Attorney of LINDA M. BYRNE Record Type of TRADEMARK. SERVICE MARK Mark Register PRINCIPAL Affidavit SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20101218. Text Renewal 1ST RENEWAL 20101218 Live/Dead LIVE Indicator

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tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.23 2/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 24 of 76 United States Patent and Trademark Office

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Word Mark CRAZY HORSE Goods and IC 036. US 100 101 102. G & S: Arranging and conducting raffle drawings relating to customized Services motorcycles for charitable fundraising purposes. FIRST USE: 20050800. FIRST USE IN COMMERCE: 20050800 Standard Characters Claimed Mark Drawing (4) STANDARD CHARACTER MARK Code Trademark Search Facility SHAPES-MISC Miscellaneous shaped designs Classification Code Serial Number 76681058 Filing Date August 23, 2007 Current Basis 1A Original Filing 1A Basis Published for June 3, 2008 Opposition Registration 3486818 Number Registration Date August 19, 2008

tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.21 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 25 of 76 Owner (REGISTRANT) The Crazy Horse Memorial Foundation NON-PROFIT CORPORATION SOUTH DAKOTA Avenue of the Chiefs Crazy Horse SOUTH DAKOTA 577309506 Attorney of Linda M. Byrne Record Prior 2382778;2385189;2508515 Registrations Type of Mark SERVICE MARK Register PRINCIPAL Live/Dead LIVE Indicator

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tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.21 2/2 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 26 of 76 United States Patent and Trademark Office

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Word Mark CRAZY HORSE Goods and IC 012. US 019 021 023 031 035 044. G & S: Racing cars; Racing motor cars. FIRST USE: 20040601. Services FIRST USE IN COMMERCE: 20040601 Mark Drawing (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Code Serial 77155582 Number Filing Date April 12, 2007 Current Basis 1A Original 1A Filing Basis Published for October 16, 2007 Opposition Registration 3361735 Number Registration January 1, 2008 Date Owner (REGISTRANT) Doty, George INDIVIDUAL UNITED STATES 231 W Beach Street Inglewood CALIFORNIA 90302 Description of Color is not claimed as a feature of the mark. The mark consists of Words Crazy and Horse, all Mark uppercase letter height increasing from the C in crazy to E at the end of Horse. 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 27 of 76 Type of Mark TRADEMARK Register PRINCIPAL Live/Dead LIVE Indicator

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tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.18 2/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 28 of 76 United States Patent and Trademark Office

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Word Mark CRAZYHORSE ENERGY DRINK Goods and IC 032. US 045 046 048. G & S: Energy drinks. FIRST USE: 20070530. FIRST USE IN Services COMMERCE: 20070530 Mark Drawing (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS Code Design Search 03.05.01 - Horses Code 03.05.24 - Stylized horses, donkeys, zebras 18.13.01 - Horseshoes Trademark ANI-MAMM Mammalia;accuracte depiction of warm-blooded animals except for human beings Search Facility ART-18.13 Equipment for animals Classification INAN Inanimate objects such as lighting,clouds,footprints,atomic Code configurations,snowflakes,rainbows,flames SHAPES-MISC Miscellaneous shaped designs Serial Number 77278726 Filing Date September 13, 2007 Current Basis 1A Original Filing 1A Basis Published for Opposition February 12, 2008

Registration 3479439 tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.16 1/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 29 of 76 Number Registration August 5, 2008 Date Owner (REGISTRANT) Beverages Unlimited LLC LIMITED LIABILITY COMPANY ST.KITTS-NEVIS PO Box 636 Charlestown ST.KITTS-NEVIS Attorney of Mark J Young Record Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "ENERGY DRINK" APART FROM THE MARK AS SHOWN Description of Color is not claimed as a feature of the mark. The mark consists of the words "CRAZY HORSE" Mark above an image of a bucking bronco, with the words "ENERGY DRINK" below the image. The horse is in the middle of a large horseshoe. Type of Mark TRADEMARK Register PRINCIPAL Live/Dead LIVE Indicator

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tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.16 2/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 30 of 76 United States Patent and Trademark Office

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Word Mark CHE CRAZY HORSE EFFECTS Goods and IC 037. US 100 103 106. G & S: Decorative painting services, namely, matte painting of environments for Services motion pictures, television, DVDs, commercials and movie trailers. FIRST USE: 20080301. FIRST USE IN COMMERCE: 20080301

IC 040. US 100 103 106. G & S: Custom fabrication of sets and props for motion pictures, television, DVDs, commercials and movie trailers. FIRST USE: 20080301. FIRST USE IN COMMERCE: 20080301

IC 041. US 100 101 107. G & S: Entertainment services, namely, production of visual effects and special effects for motion pictures, television, DVDs, commercials and movie trailers; Entertainment services, namely, production of visual effects and special effects including model-making services, computer- generated imagery and computer-generated graphics for the production of for motion pictures, television, DVDs, commercials and movie trailers; Entertainment services, namely, production of special effects including model-making services and related physical production elements for use in motion pictures, television, DVDs, commercials and movie trailers; Entertainment, namely, preparation of special effects by compositing of images to produce visual effects for motion pictures, television, DVDs, commercials and movie trailers. FIRST USE: 20080301. FIRST USE IN COMMERCE: 20080301

IC 042. US 100 101. G & S: Special-effects design for others for motion pictures, television, DVDs, commercials and movie trailers; Commercial art design, namely, design of conceptual art for motion pictures, television, DVDs, commercials and movie trailers; Design of sets and props for motion pictures, television, DVDs, commercials and movie trailers. FIRST USE: 20080301. FIRST USE IN COMMERCE: 20080301 Mark Drawing (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.14 1/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 31 of 76 Code Design 02.11.15 - Fingerprints; Imprints, hand or finger Search 26.01.01 - Circles as carriers or as single line borders Code Serial 77627529 Number Filing Date December 5, 2008 Current 1A Basis Original Filing 1A Basis Owner (APPLICANT) Crazy Horse Effects, Inc. CORPORATION CALIFORNIA 2320 Abbot Kinney Blvd., Studio A Venice CALIFORNIA 90291 Attorney of Jeremy Smith Record Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "EFFECTS" APART FROM THE MARK AS SHOWN Description Color is not claimed as a feature of the mark. The mark consists of a stylized version of the mark "Crazy of Mark Horse Effects" with a hand-print in the background, the letters "C", "H" and "E" connected by center line that runs through them as part of the letter themselves, beginning with a small circle inside the letter "C" and the words "Crazy Horse Effects" directly below the letters. Type of SERVICE MARK Mark Register PRINCIPAL Live/Dead LIVE Indicator

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tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.14 2/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 32 of 76 United States Patent and Trademark Office

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Word Mark CRAZY HORSE WHISKEY Goods and Services IC 033. US 047 049. G & S: Whiskey Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 77644892 Filing Date January 7, 2009 Current Basis 1B Original Filing Basis 1B Owner (APPLICANT) Spirits of the U.S.A. LLC LIMITED LIABILITY COMPANY GEORGIA 8225 Dogwood Trail Cumming GEORGIA 30041 Attorney of Record Mark L. Seigel Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "WHISKEY" APART FROM THE MARK AS SHOWN Type of Mark TRADEMARK Register PRINCIPAL Live/Dead Indicator LIVE

tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.12 1/2 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 33 of 76

|.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 34 of 76 United States Patent and Trademark Office

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Word Mark CRAZY HORSE KNIVES Goods and IC 008. US 023 028 044. G & S: Pocket knives Services Mark Drawing (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS Code Design Search 03.05.01 - Horses Code 03.05.24 - Stylized horses, donkeys, zebras Serial Number 77654231 Filing Date January 22, 2009 Current Basis 1B Original Filing 1B Basis Owner (APPLICANT) Whittemore, Tony R DBA Tonys Wholesale INDIVIDUAL UNITED STATES 235 Browns Rd Lafayette TENNESSEE 37083 Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "KNIVES" APART FROM THE MARK AS SHOWN Description of Color is not claimed as a feature of the mark. The mark consists of no color. The stippling is for Mark shading purposes only. Type of Mark TRADEMARK Register PRINCIPAL Live/Dead LIVE tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.10 1/2 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 35 of 76 Indicator

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Word Mark CRAZY HORSE Goods and IC 009. US 021 023 026 036 038. G & S: motorcycle helmets; motorcycle goggles. FIRST USE: Services 20060501. FIRST USE IN COMMERCE: 20060501

IC 012. US 019 021 023 031 035 044. G & S: motor vehicles, namely motorcycles; motorcycle accessories, namely tires, motorcycle saddlebags, fenders, chain guards, chains, sissy bars, windshields. FIRST USE: 20060501. FIRST USE IN COMMERCE: 20060501 Standard Characters Claimed Mark Drawing (4) STANDARD CHARACTER MARK Code Serial 78454150 Number Filing Date July 21, 2004 Current 1A Basis Original 1B Filing Basis Published for March 28, 2006 Opposition tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.9 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 37 of 76 Registration 3220548 Number Registration March 20, 2007 Date Owner (REGISTRANT) White, John L. INDIVIDUAL UNITED STATES 10425 19th S.W. Seattle WASHINGTON 98146 Attorney of Michael R. Schacht Record Type of TRADEMARK Mark Register PRINCIPAL Live/Dead LIVE Indicator

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tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.9 2/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 38 of 76 United States Patent and Trademark Office

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Word Mark CRAZY HORSE EDGE A CLAIBORNE COMPANY Goods and IC 025. US 022 039. G & S: Clothing, namely, pants, shirts, skirts, dresses, jackets, vests, sweaters, Services jeans, blazers, neckwear, belts, coats, hats, caps, gloves, sport hosiery, socks, underwear, footwear, robes and pajamas Mark Drawing (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS Code Design 26.11.21 - Rectangles that are completely or partially shaded Search Code 26.17.25 - Other lines, bands or bars Serial 78513545 Number Filing Date November 9, 2004 Current 1B Basis Original 1B Filing Basis Owner (APPLICANT) L.C. Licensing, Inc. CORPORATION DELAWARE 1441 Broadway New York NEW YORK 10018 Attorney of David B. Kirschstein, Esq. Record Prior 0759737;2325993;2528501;AND OTHERS Registrations tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.8 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 39 of 76 Type of Mark TRADEMARK Register PRINCIPAL Live/Dead LIVE Indicator

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tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.8 2/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 40 of 76 United States Patent and Trademark Office

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Word Mark CRAZY HORSE Goods and Services IC 013. US 002 009. G & S: Firearms, in particular, rifles. FIRST USE: 20040705. FIRST USE IN COMMERCE: 20040705 Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 78562411 Filing Date February 8, 2005 Current Basis 1A Original Filing Basis 1A Published for June 27, 2006 Opposition Registration Number 3144390 Registration Date September 19, 2006 Owner (REGISTRANT) Smith Enterprise, Inc. CORPORATION ARIZONA 1701 W. 10th Street, #14 Tempe ARIZONA 85281 Attorney of Record Donna H. Catalfio Type of Mark TRADEMARK Register PRINCIPAL Affidavit Text SECT 15. SECT 8 (6-YR).

1/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 41 of 76 Live/Dead Indicator LIVE

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tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.6 2/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 42 of 76 United States Patent and Trademark Office

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Word Mark CRAZY HORSE Goods and IC 003. US 001 004 006 050 051 052. G & S: Bleaching preparations for laundry use; substances for Services laundry use, namely, laundry bleach, laundry soap; cleaning, polishing, scouring and abrasive preparations, namely, cleaning preparations, floor polish; soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices

IC 008. US 023 028 044. G & S: Hand-operated hand tools and implements, namely, planers, drills, shovels, non-electric cutlery, forks, spoons; side arms other than firearms, namely swords, hunting knives; razors

IC 014. US 002 027 028 050. G & S: Precious metals and their alloys other than for dental use; jewelry, precious stones, timepieces and other chronometric instruments

IC 016. US 002 005 022 023 029 037 038 050. G & S: Paper and cardboard, printed matter, namely, printed awards, printed calendars; bookbinding material; photographs; stationery; materials for artists, namely, art pads, art paper; paintbrushes; typewriters and office requisites, namely, staplers; printed instructional and teaching material in the field of the fine arts and the performing arts, playing cards; printing type; printing blocks

IC 018. US 001 002 003 022 041. G & S: Leather and imitations of leather; goods made of leather and imitation leather, namely, purses, handbags; animal skins and hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery

IC 021. US 002 013 023 029 030 033 040 050. G & S: Non-electric household or kitchen utensils, namely, pot and pan scrapers, rolling pins, spatulas, turners, whisks; containers for household and

1/3 11/30/12 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 43 of 76 kitchen use; combs and cleaning sponges; hair brushes; brush-making materials; cleaning equipment, namely, cleaning rags, cleaning combs; steel wool, unworked or semi-worked glass; dinnerware of glass, porcelain or earthenware

IC 024. US 042 050. G & S: Fabrics for textile use, namely, woolen fabric, silk fabrics; bed and table covers, namely, bed linens, table linen, bedspreads

IC 025. US 022 039. G & S: Clothing, namely, shirts, pants, jackets, underwear, namely, brassiere, underpants, slip, body, longline bra, garter, garter belts; footwear, headwear

IC 026. US 037 039 040 042 050. G & S: Lace and embroidery, ribbons and braid; buttons, namely, buttons for clothing; hooks and eyes; pins, namely hair pins, safety pins; needles, artificial flowers

IC 028. US 022 023 038 050. G & S: Games and playthings, namely, board games, arcade games, action figures; gymnastic and sporting articles, namely, gymnastic apparatus, baseball bats, soccer balls, runner balls; decorations for Christmas trees

IC 029. US 046. G & S: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruit and vegetables; jellies, jams; compotes, eggs; milk and dairy products excluding ice cream, ice milk and frozen yogurt; edible oils and fats

IC 030. US 046. G & S: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flours; preparations made from cereals, namely, breakfast cereals; bread, pastry; confectionery, namely, candy; edible ices; honey, treacle syrup; yeast, baking powder; salt, mustard; vinegar, sauces; spices, ice for refreshment

IC 031. US 001 046. G & S: Agricultural, horticultural, and forestry products, namely, agricultural seeds, seeds for horticultural purposes; unprocessed grains; live animals; fresh fruit and vegetables; natural plants and flowers; foodstuffs for animals, malt for brewing and distilling

IC 032. US 045 046 048. G & S: Beers, mineral and aerated waters; non-alcoholic drinks, namely, soft drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages, namely preparations for making fruit drinks

IC 033. US 047 049. G & S: Alcoholic beverages, namely, liquor, alcoholic punch

IC 034. US 002 008 009 017. G & S: Tobacco; smokers' articles not of precious metals, namely ashtrays; matches

IC 041. US 100 101 107. G & S: Educational services, namely, providing classes, seminars, workshops in the field of the fine arts and the performing arts; training services in the field of the fine arts and the performing arts; entertainment services, namely, providing prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; organizing community sporting and cultural events; book and magazine publishing; book loaning, animal training; television show and film production, entertainment ticket agency services; rental of films, phonographic recordings, cinematographic projection apparatus and accessories for theater sets; entertainment in the nature of competitions in the field of athletics, spelling; arranging and conducting of educational colloquiums, conferences and conventions; organization of exhibitions for cultural or educational purposes; booking of seats for shows

IC 042. US 100 101. G & S: Veterinary and agricultural research services; scientific and industrial research in the field of the fine arts and the performing arts; computer programming; engineering; architectural and engineering services, namely, drafting construction plans; engineering; geological prospecting; material testing; medical laboratories; weather and court reporting Mark Drawing (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS Code Design 26.03.17 - Concentric ovals; Concentric ovals and ovals within ovals; Ovals within ovals; Ovals, Search concentric tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.5 2/3 11/30/12 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 44 of 76 Code 26.03.21 - Ovals that are completely or partially shaded Serial 79050426 Number Filing Date December 4, 2007 Current 66A Basis Original 66A Filing Basis International Registration 0670743 Number Owner (APPLICANT) SODIPA SAS UNKNOWN Avenue des Champs-Elysées, 66 F-75008 Paris FRANCE Attorney of Frederick W. Meyers Record Description Color is not claimed as a feature of the mark. of Mark Type of TRADEMARK. SERVICE MARK Mark Register PRINCIPAL Live/Dead LIVE Indicator

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tess2.uspto.gov /bin/gate.exe?f =doc&state=4006%3Angnn6k.5.5 3/3 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 45 of 76 United States Patent and Trademark Office

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Word Mark CRAZY HORSE Goods and Services IC 012. US 019 021 023 031 035 044. G & S: motor vehicle engines; motorcycle engines Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 85601761 Filing Date April 18, 2012 Current Basis 1B Original Filing 1B Basis Owner (APPLICANT) Crazy Horse Motorcycles LLC LIMITED LIABILITY COMPANY WASHINGTON 19403 72nd Ave. S Kent WASHINGTON 98032 Attorney of Record Michael R Schacht Type of Mark TRADEMARK Register PRINCIPAL Live/Dead Indicator LIVE

tess2.uspto.gov /bin/gate.exe?f =doc&state=4006:ngnn6k.5.1 1/2 11/30/12 Case 2:12-cv-01514-LRH-GWFTrademark Electronic Search Sy stem (TESS) Document 19-4 Filed 11/30/12 Page 46 of 76 |.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY

tess2.uspto.gov /bin/gate.exe?f =doc&state=4006:ngnn6k.5.1 2/2 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 47 of 76

EXHIBIT F Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 48 of 76 Las Vegas Sun Jack Galardi is hoping to improve his reputation

Friday, Jan. 23, 2004 | 11:06 a.m.

Breaking months of public silence, topless nightclub mogul Jack Galardi told the Sun this week that he was "shocked" and "devastated" when he learned that his estranged son, Michael, was targeted in an FBI political corruption probe.

"I couldn't understand it because it was totally unnecessary what he did," Galardi said in a 90-minute interview in the presence of his lawyer, Dominic Gentile. "I had no idea he was that active."

On May 14 FBI agents looking for evidence of payoffs to elected officials raided Cheetahs strip club, co- owned by the Galardis, and Jaguars, owned at the time by Michael, in Las Vegas, as well as Michael's club Cheetahs in San Diego.

The younger Galardi, who learned the topless nightclub business by working his way up the ladder of his father's clubs, later pleaded guilty to federal corruption charges in San Diego and Las Vegas and agreed to testify against elected officials charged with taking money under the table from him in both cities.

The investigation abruptly ended the 42-year-old Michael Galardi's career as a big-spending, politically connected strip club operator and forced Jack Galardi, who was not charged in the probe, to, as he put it, "clean up the mess" his son created.

It also pushed the media-shy father into the limelight.

The 72-year-old Galardi is a Korean War veteran who once served prison time over the theft of money orders from a post office, promoted rock groups in Vietnam during the war and ran an after-hours nightclub in Los Angeles with a man who was murdered years later.

Over the last three decades he built up a small empire of topless clubs across the country. He says he had two dozen of them at last count, and he enjoys the perks that have come with his success, including a posh home in Las Vegas, a 400-acre ranch outside Atlanta, two corporate airplanes and a helicopter.

Galardi didn't dress the part of a nightclub mogul for the interview, however. He wore jeans, a powder blue polo shirt and a black leather bomber jacket with his name stitched on the front and the logo of one of his companies, Galardi South Enterprises, on the back. In all of his years of doing business on the nightclub scene, he said, he had never given an in-depth interview to a reporter and didn't plan on doing it again.

But he said he agreed to talk this week with the hope of improving his reputation, which has been tarnished amid the mass of publicity generated from the corruption probe. Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 49 of 76 "It hurt me everywhere I'm in business today," he said, adding that it caused him to lose several big loans and prompted Las Vegas and Clark County officials to "slap me around pretty good."

Galardi said he also felt like the media dragged him through the mud by unfairly linking him to his son's misconduct.

Initial news reports about the May 14 raid brought up Jack Galardi's name because he was listed as having a 60 percent share of the company that owns Cheetahs in Las Vegas. Michael was listed as having a 40 percent share of the company, La Fuente Inc. Additionally, the search warrants executed in the raid said FBI agents were looking for evidence of hidden ownership by Galardi in Jaguars, which officially was owned by Michael.

But Jack Galardi insisted that he had no interest in Jaguars at the time of the raid and that FBI agents have not interviewed him in connection with the investigation. Galardi's lawyers have previously said they were told Galardi was not a target of the probe.

Galardi said differences over the development of Jaguars, a $15 million megaclub that opened in 2002, led to a split between the father and son. Galardi said he "washed his hands" of Jaguars and let his son take over the club.

Until the May 14 raid, Galardi said, he hadn't spoken to his son in about three years. On that day Michael telephoned him seeking some fatherly comfort, he said.

Both men have talked with each other since then, Jack Galardi said, but their relationship remains strained.

After his son pleaded guilty in the investigation, Galardi bought Michael's 40 percent share of Cheetahs, and he bought Jaguars and Leopard Lounge, another topless club Michael owned. He also banned his son from entering the three clubs and filed a lawsuit alleging Michael unlawfully diverted more than $530,000 from Cheetahs to Jaguars.

But city and county officials have made Jack Galardi pay for not keeping a closer eye on his exuberant son and former business partner.

Earlier this month, the Las Vegas City Council hit La Fuente Inc., which now is solely owned by Galardi, with a $1.1 million fine because of Michael's courtroom admissions of criminal conduct in the corruption investigation. Galardi has not yet paid the fine, which is related to the liquor license at Cheetahs, a club that some have estimated earns $8 million a year.

This week the Clark County Commission gave Galardi a one-month limited liquor license at Leopard Lounge because Metro Police still are conducting his background investigation, which could take up to nine months. Two former police officers who are leasing Jaguars from Galardi received a four-month temporary license for the same reason.

City and county officials, Galardi said, "did what they had to do" as elected officials. But he thinks the city fine was excessive and plans to challenge it in court.

Galardi said his troubles are the result of letting his son handle the daily operations of Cheetahs the past several years.

"I trusted him to run Cheetahs," he said. "I wasn't paying attention. The bills were being paid. I was drawing a nice salary. Everything was being taken care of to my knowledge. I had no concerns."

Galardi said that he wasn't a hands-on businessman. He said he likes to design and build his bars and nightclubs, but he had preferred to let others run them for him. Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 50 of 76 His laid-back approach also has landed him in trouble in Tampa, where six people at four of his topless clubs were arrested last month in a police investigation that led to charges that the clubs were fronting for prostitution.

"What happened in Tampa blew me out of the water," Galardi said, adding that he has fired the top managers at all four clubs.

Galardi said he placed too much faith in his managers, one of whom had been with him for 14 years.

"There isn't one thing that I have done in my way of life or my way of operation other than trusting people and thinking they're doing a good job," he said. "Maybe it's my fault for not following up. The buck has to stop here. You do your best to clean it up, kick 'em out, which I'm doing."

Galardi said he has learned his lesson and now plans to become more involved in running Cheetahs and his clubs elsewhere in the country. He also has clubs in Atlanta, Miami, Daytona Beach and several cities in South Carolina and North Carolina.

"I'm going to be doing a lot more flying and going to more places," he said.

The Tampa investigation, however, has attracted the interest of Metro Police investigating Galardi's background for his county licenses. Detectives are expected to spend time in Tampa and in other cities where Galardi owns clubs during their investigation.

The background probe also is likely to revive interest in Galardi's 1971 conviction over the theft of money orders from a post office in Long Beach, where he had been running a number of bars.

Galardi said he was charged in the case after he had returned from an 18-month stint in Vietnam promoting rock bands and after he had taken up residence in Las Vegas.

A friend of one of his bartenders, he said, stopped by his office in Long Beach one day, dropped a bunch of the money orders on his desk and asked if Galardi could ship them to Vietnam, where they would earn a high price on the black market.

"I said yes, but then I got busted for it," he explained.

Rather then take a deal and plead guilty to a felony, Galardi said, he decided to go to trial in federal court in Long Beach. But the jury, after deliberating for three days, convicted him. Later he was sentenced to five years in prison.

Galardi said he spent six months behind bars at the Terminal Island federal prison in Long Beach before being admitted into a prison educational program and ultimately a work-release program.

When he got out of prison, Galardi returned to Las Vegas and got into the bar business here. Eventually he invested in the topless nightclub scene, converting one of his bars, the Shadow Box on East Charleston Boulevard and 15th Street into a strip joint.

In the early '80s, Galardi said, he took out a $50,000 loan and bought the controversial Crazy Horse Saloon at Flamingo and Paradise roads. The sale took place after the May 1981 slaying of Tony Albanese, a former Long Beach topless nightclub owner who was suspected by police of having hidden interests in the Crazy Horse. Albanese's severed head was found in the desert near Needles, Calif.

Galardi said he knew Albanese very well and years earlier was partners with him in a Los Angeles after-hours nightclub called Moulin Rouge. The partnership, however, ended shortly after the club opened, Galardi said.

"Let me tell you something about the bar business," he said. "You'll find very few partnerships that last." Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 51 of 76 Authorities speculated that Albanese's slaying did not involve the Crazy Horse, but rather an unrelated power struggle within the mob-dominated massage parlor business in Long Beach.

Still, Galardi said, his reputation with lawmen suffered after he bought the Crazy Horse.

He said a friend in Metro intelligence advised him not to buy the club, which had long been rumored to have ties to the mob, but "I wanted to do it anyway."

Galardi said the mob never bothered him while he owned the club, which no longer is in business.

By the late 1980s Galardi opened Cheetahs, and it quickly became a success allowing him to expand his topless business to other cities. At the same time, Galardi widened his business interests in Las Vegas, opening a popular late-night club called Mr. G's. And he stepped up his political influence as a major donor for the Republican Party. Though he was not a major contributor to campaigns, he was a regular at GOP party functions, even hosting some himself.

Eventually, Michael Galardi, who learned the ropes of management as a shift manager at the Crazy Horse, was given a 40 percent share of Cheetahs and took over its daily operations.

Looking back, Jack Galardi said, he should not have refused to give police $24,000 in 1999 to do a background check on him in connection with his son's plans to open Jaguars. Police wanted to investigate whether he had any interests in the club. Prospective licensees are required to pay for background investigations, but Galardi wasn't applying for a license and maintained he wasn't obligated to give police any money. The County Commission also refused a police request for $11,000 to probe Galardi.

"The biggest mistake I made was not giving the police the money," he said. "It made it look like I had some juice there."

As for the ongoing corruption case, Galardi said he hasn't talked much about the specifics of the FBI probe with Michael and doesn't know the full extent of his "activities." And he offered no opinion on his son's decision to cooperate with the government.

"I don't want to know what, if anything, he did," Galardi said.

But he added: "I feel very badly about what happened. It cast a shadow over politicians in this town."

Galardi said there will come a time when he will reconcile with his son, probably after the corruption case blows over.

As for himself, Galardi said he hopes to hold onto Cheetahs but sell both Jaguars and Leopard Lounge in the near future.

He said he's confident the police background investigation will not turn up any dirt on him and that he'll be in the topless nightclub business a long time.

Galardi, however, said the thought of getting out of the business has crossed his mind.

"Sometimes I say to myself, 'Jack, you don't need this," he explained. "You could sell all of this stuff ... but then I'd go crazy and end up dying. This is my life. This is what I like to do. This is what makes me tick." archive

Locally owned and independent since 1950; Winner of the Pulitzer Prize for Public Service, best news website in the nation & DuPont Award for broadcast journalism Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 52 of 76 © Las Vegas Sun, 2012, All Rights Reserved Las Vegas Sun 2360 Corporate Cir. Henderson, NV 89074 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 53 of 76

EXHIBIT G 11/28/12 CaseCrazy 2:12-cv-01514-LRH-GWFHorse Too - Wikipedia, the f ree ency clopedia Document 19-4 Filed 11/30/12 Page 54 of 76 Crazy Horse Too From Wikipedia, the free encyclopedia

Crazy Horse Too was a strip club located at 2466 Industrial Road in Las Vegas, Nevada, Nevada on Industrial Road a few blocks west of the Las Vegas Strip. The club was patterned after the original Crazy Horse Saloon club on Paradise Road,[citation needed] which was owned by Jack Galardi (father of Mike Galardi, who opened Cheetah's).The club was owned by convicted racketeer Rick Rizzolo.[1] The club is currently owned by USA Marshalls Service Lessee. Background

Before becoming mayor, Oscar Goodman was one of Rizzolo's lawyers.

From 1984 until 2006, Rick Rizzolo was involved in an ongoing dispute over parking with "Buffalo" Jim Barrier, a well-known Las Vegas personality and a commercial tenant of Mr. Rizzolo. According to numerous newspaper and television reports, for 22 years Mr. Rizzolo engaged in an unsuccessful pattern of harassment in attempts to drive Buffalo Jim and his automotive repair business off the Crazy Horse Too property so the club could expand.[2]

On February 20, 2003, 80 FBI, DEA and IRS agents removed files, video surveillance equipment, computers, cash registers, and other materials and documents as part of a lengthy criminal investigation. One of the items under investigation was the $20,000 monthly consulting fee from the Crazy Horse Too bar in Chicago that was being paid to Rizzo. The investigation reportedly was under way for 10 years. As part of that investigation George Clooney, Robert De Niro, and Joe Pesci were interviewed. The case ended in 2006 when 17 defendants pleaded guilty to various offenses. As a part of the plea bargain Rizzolo was ordered to sell the Crazy Horse within one year.

On January 19, 2005, Robert D'Apice was arrested for alleged activities (http://www.usdoj.gov/usao/nv/home/pressrelease/january2005/dapice011905.htm) he participated in at the club including federal racketeering charges, assault from a 2001 crime, aided and abetted in prostitution or illegal sexual activity, and distribution of narcotics.

On September 6, 2006, the Crazy Horse lost its liquor license following Rick Rizzolo's guilty plea for tax evasion.[3] The Crazy Horse closed its doors on September 7. Another local business owner unsuccessfully applied for a new license that October.[4] The club remains closed. Sources

Las Vegas Review-Journal Las Vegas Sun References

1. ^ Rizzolo, et al. (http://www.usdoj.gov/usao/nv/home/pressrelease/june2006/rizzolo060106.htm) 2. ^ by Las Vegas columnist Steve Miller (http://www.americanmafia.com/inside_vegas/1-13-03_Inside_Vegas.html) 3. ^ http://www5.lasvegasnevada.gov/sirepub/pubmtgframe.aspx?meetid=45&doctype=Summary 4. ^ Our Apologies (http://www.kvbc.com/Global/story.asp?S=5445892&nav=15MV)

en.wikipedia.org/wiki/Crazy _Horse_Too 1/2 11/28/12 CaseCrazy 2:12-cv-01514-LRH-GWFHorse Too - Wikipedia, the f ree ency clopedia Document 19-4 Filed 11/30/12 Page 55 of 76 Retrieved from "http://en.wikipedia.org/w/index.php?title=Crazy_Horse_Too&oldid=517843645" Categories: Nightclubs in Las Vegas Strip clubs in the United States Buildings and structures in Las Vegas, Nevada

This page was last modified on 15 October 2012 at 01:49. Text is available under the Creative Commons Attribution-ShareAlike License; additional terms may apply. See Terms of Use for details. Wikipedia® is a registered trademark of the Wikimedia Foundation, Inc., a non-profit organization.

en.wikipedia.org/wiki/Crazy _Horse_Too 2/2 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 56 of 76

EXHIBIT H Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 57 of 76

PTO Form 1478 (Rev 9/2006) OMB No. 0651-0009 (Exp 12/31/2008) Trademark/Service Mark Application, Principal Register

Serial Number: 77557722 Filing Date: 08/28/2008

The table below presents the data as entered.

Input Field Entered SERIAL NUMBER 77557722 MARK INFORMATION

*MARK CRAZY HORSE

STANDARD CHARACTERS YES USPTO-GENERATED IMAGE YES LITERAL ELEMENT CRAZY HORSE The mark consists of standard characters, MARK STATEMENT without claim to any particular font, style, size, or color. REGISTER Principal APPLICANT INFORMATION *OWNER OF MARK Spencer, Frank B. *STREET 1474 St. Clair Avenue *CITY Cleveland

*STATE (Required for U.S. applicants) Ohio

*COUNTRY United States

*ZIP/POSTAL CODE (Required for U.S. applicants only) 44114 LEGAL ENTITY INFORMATION TYPE individual COUNTRY OF CITIZENSHIP United States GOODS AND/OR SERVICES AND BASIS INFORMATION *INTERNATIONAL CLASS 041 Online adult entertainment services featuring Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 58 of 76

pictures and information in the field of exotic dancing, and featuring articles and stories *IDENTIFICATION dealing with adult themes; adult entertainment services featuring exotic dancing performances FILING BASIS SECTION 1(a) FIRST USE ANYWHERE DATE At least as early as 00/00/1978 FIRST USE IN COMMERCE DATE At least as early as 00/00/1978

SPECIMEN \\TICRS\EXPORT3\IMAGEOUT3 FILE NAME(S) \775\577\77557722\xml1\AP P0003.JPG

SPECIMEN DESCRIPTION web page promoting services ATTORNEY INFORMATION NAME Jay F. Moldovanyi ATTORNEY DOCKET NUMBER GAMZ 5 00021 FIRM NAME Fay Sharpe LLP STREET 1100 Superior Avenue INTERNAL ADDRESS Seventh Floor CITY Cleveland STATE Ohio COUNTRY United States ZIP/POSTAL CODE 44114 PHONE 216-861-5582 FAX 216-241-1666 EMAIL ADDRESS [email protected] AUTHORIZED TO COMMUNICATE VIA EMAIL Yes OTHER APPOINTED ATTORNEY Gregory S. Vickers CORRESPONDENCE INFORMATION NAME Jay F. Moldovanyi FIRM NAME Fay Sharpe LLP STREET 1100 Superior Avenue INTERNAL ADDRESS Seventh Floor CITY Cleveland Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 59 of 76

STATE Ohio COUNTRY United States ZIP/POSTAL CODE 44114 PHONE 216-861-5582 FAX 216-241-1666 EMAIL ADDRESS [email protected] AUTHORIZED TO COMMUNICATE VIA EMAIL Yes FEE INFORMATION NUMBER OF CLASSES 1 FEE PER CLASS 325 *TOTAL FEE DUE 325 *TOTAL FEE PAID 325 SIGNATURE INFORMATION SIGNATURE /gsv/ SIGNATORY'S NAME Gregory S. Vickers SIGNATORY'S POSITION Attorney for Applicant DATE SIGNED 08/28/2008 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 60 of 76

PTO Form 1478 (Rev 9/2006) OMB No. 0651-0009 (Exp 12/31/2008)

Trademark/Service Mark Application, Principal Register

Serial Number: 77557722 Filing Date: 08/28/2008 To the Commissioner for Trademarks:

MARK: CRAZY HORSE (Standard Characters, see mark) The literal element of the mark consists of CRAZY HORSE. The mark consists of standard characters, without claim to any particular font, style, size, or color.

The applicant, Frank B. Spencer, a citizen of United States, having an address of 1474 St. Clair Avenue Cleveland, Ohio 44114 United States requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended.

International Class 041: Online adult entertainment services featuring pictures and information in the field of exotic dancing, and featuring articles and stories dealing with adult themes; adult entertainment services featuring exotic dancing performances

Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended.

In International Class 041, the mark was first used at least as early as 00/00/1978, and first used in commerce at least as early as 00/00/1978, and is now in use in such commerce. The applicant is submitting one specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods and/or services, consisting of a(n) web page promoting services. Specimen File1

The applicant hereby appoints Jay F. Moldovanyi and Gregory S. Vickers of Fay Sharpe LLP Seventh Floor 1100 Superior Avenue Cleveland, Ohio 44114 United States to submit this application on behalf of the applicant. The attorney docket/reference number is GAMZ 5 00021. Correspondence Information: Jay F. Moldovanyi Seventh Floor 1100 Superior Avenue Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 61 of 76

Cleveland, Ohio 44114 216-861-5582(phone) 216-241-1666(fax) [email protected] (authorized)

A fee payment in the amount of $325 has been submitted with the application, representing payment for 1 class(es).

Declaration

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.

Signature: /gsv/ Date Signed: 08/28/2008 Signatory's Name: Gregory S. Vickers Signatory's Position: Attorney for Applicant

RAM Sale Number: 8262 RAM Accounting Date: 08/28/2008

Serial Number: 77557722 Internet Transmission Date: Thu Aug 28 12:13:49 EDT 2008 TEAS Stamp: USPTO/BAS-67.39.218.120-2008082812134948 7033-77557722-40058bf72e419996426e72f411 27132a7-CC-8262-20080828114341881509 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 62 of 76 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 63 of 76 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 64 of 76

PTO Form 1478 (Rev 9/2006) OMB No. 0651-0009 (Exp 12/31/2011) Trademark/Service Mark Application, Principal Register

Serial Number: 85217717 Filing Date: 01/14/2011

The table below presents the data as entered.

Input Field Entered SERIAL NUMBER 85217717 MARK INFORMATION

*MARK CRAZY HORSE

STANDARD CHARACTERS YES USPTO-GENERATED IMAGE YES LITERAL ELEMENT CRAZY HORSE The mark consists of standard characters, MARK STATEMENT without claim to any particular font, style, size, or color. REGISTER Principal APPLICANT INFORMATION *OWNER OF MARK Frank B. Spencer *STREET 1474 St. Clair Avenue *CITY Cleveland

*STATE (Required for U.S. applicants) Ohio

*COUNTRY United States

*ZIP/POSTAL CODE (Required for U.S. applicants only) 44114 LEGAL ENTITY INFORMATION TYPE individual COUNTRY OF CITIZENSHIP United States GOODS AND/OR SERVICES AND BASIS INFORMATION INTERNATIONAL CLASS 042 restaurant, night club, tavern and cocktail Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 65 of 76

*IDENTIFICATION lounge services FILING BASIS SECTION 1(a) FIRST USE ANYWHERE DATE At least as early as 08/31/1978 FIRST USE IN COMMERCE DATE At least as early as 08/31/1978

SPECIMEN \\TICRS\EXPORT11\IMAGEOUT FILE NAME(S) 11\852\177\85217717\xml1\ APP0003.JPG \\TICRS\EXPORT11\IMAGEOUT

11\852\177\85217717\xml1\ APP0004.JPG

\\TICRS\EXPORT11\IMAGEOUT

11\852\177\85217717\xml1\ APP0005.JPG \\TICRS\EXPORT11\IMAGEOUT

11\852\177\85217717\xml1\ APP0006.JPG \\TICRS\EXPORT11\IMAGEOUT

11\852\177\85217717\xml1\ APP0007.JPG scanned copy of website pages showing mark SPECIMEN DESCRIPTION as used in connection with the services ATTORNEY INFORMATION NAME Jay F. Moldovanyi ATTORNEY DOCKET NUMBER GAMZ 500021US02 FIRM NAME Fay Sharpe LLP STREET 1228 Euclid Ave 5th Flr CITY Cleveland STATE Ohio COUNTRY United States ZIP/POSTAL CODE 44115 PHONE 216-363-9000 FAX 216-363-9001 EMAIL ADDRESS [email protected] AUTHORIZED TO COMMUNICATE VIA EMAIL No CORRESPONDENCE INFORMATION NAME Jay F. Moldovanyi FIRM NAME Fay Sharpe LLP Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 66 of 76

STREET 1228 Euclid Ave 5th Flr CITY Cleveland STATE Ohio COUNTRY United States ZIP/POSTAL CODE 44115 PHONE 216-363-9000 FAX 216-363-9001 EMAIL ADDRESS [email protected] AUTHORIZED TO COMMUNICATE VIA EMAIL No FEE INFORMATION NUMBER OF CLASSES 1 FEE PER CLASS 325 *TOTAL FEE DUE 325 *TOTAL FEE PAID 325 SIGNATURE INFORMATION SIGNATURE /JFM/ SIGNATORY'S NAME Jay F. Moldovanyi SIGNATORY'S POSITION Attorney of record, Ohio bar member DATE SIGNED 01/14/2011 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 67 of 76

PTO Form 1478 (Rev 9/2006) OMB No. 0651-0009 (Exp 12/31/2011)

Trademark/Service Mark Application, Principal Register

Serial Number: 85217717 Filing Date: 01/14/2011 To the Commissioner for Trademarks:

MARK: CRAZY HORSE (Standard Characters, see mark) The literal element of the mark consists of CRAZY HORSE. The mark consists of standard characters, without claim to any particular font, style, size, or color.

The applicant, Frank B. Spencer, a citizen of United States, having an address of 1474 St. Clair Avenue Cleveland, Ohio 44114 United States requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

International Class 042: restaurant, night club, tavern and cocktail lounge services

In International Class 042, the mark was first used at least as early as 08/31/1978, and first used in commerce at least as early as 08/31/1978, and is now in use in such commerce. The applicant is submitting one specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods and/or services, consisting of a(n) scanned copy of website pages showing mark as used in connection with the services. Specimen File1 Specimen File2 Specimen File3 Specimen File4 Specimen File5

The applicant's current Attorney Information: Jay F. Moldovanyi of Fay Sharpe LLP 1228 Euclid Ave 5th Flr Cleveland, Ohio 44115 United States The attorney docket/reference number is GAMZ 500021US02. The applicant's current Correspondence Information: Jay F. Moldovanyi Fay Sharpe LLP 1228 Euclid Ave 5th Flr Cleveland, Ohio 44115 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 68 of 76

216-363-9000(phone) 216-363-9001(fax) [email protected] (not authorized)

A fee payment in the amount of $325 has been submitted with the application, representing payment for 1 class(es).

Declaration

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.

Signature: /JFM/ Date Signed: 01/14/2011 Signatory's Name: Jay F. Moldovanyi Signatory's Position: Attorney of record, Ohio bar member

RAM Sale Number: 8463 RAM Accounting Date: 01/14/2011

Serial Number: 85217717 Internet Transmission Date: Fri Jan 14 11:22:49 EST 2011 TEAS Stamp: USPTO/BAS-67.109.87.131-2011011411224909 2926-85217717-470a2a8f4562495818ac138fbf ed123a5-CC-8463-20110114110247274667 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 69 of 76 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 70 of 76 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 71 of 76 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 72 of 76 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 73 of 76 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 74 of 76 Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 75 of 76

EXHIBIT I Case 2:12-cv-01514-LRH-GWF Document 19-4 Filed 11/30/12 Page 76 of 76 Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 1 of 38

EXHIBIT J Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 2 of 38

To: Spencer, Frank B. ([email protected]) Subject: TRADEMARK APPLICATION NO. 77557722 - CRAZY HORSE - GAMZ 5 00021 Sent: 12/11/2008 10:51:14 AM Sent As: [email protected] Attachments: Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 77/557722

MARK: CRAZY HORSE *77557722* CORRESPONDENT ADDRESS: JAY F. MOLDOVANYI RESPOND TO THIS ACTION: FAY SHARPE LLP http://www.uspto.gov/teas/eTEASpageD.htm 1100 SUPERIOR AVE E FL 7 CLEVELAND, OH 44114-2530 GENERAL TRADEMARK INFORMATION: http://www.uspto.gov/main/trademarks.htm

APPLICANT: Spencer, Frank B.

CORRESPONDENT’S REFERENCE/DOCKET NO: GAMZ 5 00021 CORRESPONDENT E-MAIL ADDRESS: [email protected]

OFFICE ACTION

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

ISSUE/MAILING DATE: 12/11/2008

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 3 of 38

TMEP §§711, 718.03.

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3044028 and 3055283. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361- 62, 177 USPQ at 567.

In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc. , 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

Comparison of the Marks In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

In this case, applicant’s mark, CRAZY HORSE, is identical to the mark in U.S. Registration No. 3044028 in sound meaning, and appearance. Thus, the marks create same overall commercial impressions. If the marks of the respective parties are identical, the relationship between the services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

Additionally, applicant’s shares identical terms to registrant’s mark, PURE GOLD’S CRAZY HORSE, U.S. Reg. No. 3055283. Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce , 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n , 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark merely deletes registrant’s house mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optical Int’l , 196 USPQ 775, 778 (TTAB 1977); TMEP Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 4 of 38

§1207.01(b)(ii)-(b)(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.

Comparison of the Services The services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc. , 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

In this case, certain of registrant’s marks, namely, “adult entertainment services featuring exotic dancing performances,” are identical to registrant’s services, “Entertainment services, namely, exotic dance performances” and “Exotic dancing services.” Thus, the services are likely to travel through the same channels of trade and be offered to and used by the same types of consumers. If the services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

Further, applicant’s other services, namely, “Online adult entertainment services featuring pictures and information in the field of exotic dancing, and featuring articles and stories dealing with adult themes” are highly related to registrant’s services. Applicant’s services offer information in the field of registrant’s services. Thus, consumers are likely to believe that the services share a common source.

Conclusion Given the similarity of the marks and the services, prospective customers are likely to confuse the source of the respective services. Accordingly, registration of applicant’s mark is properly refused under Section 2(d) of the Trademark Act.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

Prior Pending Application Information regarding pending Application Serial No. 77280405 is enclosed. The filing date of the referenced application precedes applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point. Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 5 of 38

Specimen The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods and/or services specified in the application. An application must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services based on Section 1(a) in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a), 1301.04.

In this case, the specimen shows the mark, but does not give any information on services to show the mark used in association with the identified services.

Therefore, applicant must submit the following:

(1) A substitute specimen showing use of the mark for each class of goods and/or services specified in the application; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “ The specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.

If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.

In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “ Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

Further, the specimen shows use of the federal trademark registration symbol ® with the applied-for mark. However, USPTO records do not show that the mark is registered. Applicant may not use the federal registration symbol until its mark is registered in the USPTO. After registration, applicant may use this symbol in connection with the specific goods and/or services listed in the registration. TMEP §§906, 906.02.

This information is advisory only. Applicant need not respond to this issue.

Identification of Services Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 6 of 38

The identification of services is indefinite and must be clarified because it is unclear as to the specific nature of the services. See TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumers.

Applicant may adopt the following identification, if accurate:

“Online adult entertainment services, namely, providing a website featuring pictures and information in the field of exotic dancing, and featuring articles and stories dealing with adult themes; adult entertainment services, namely, exotic dancing performances,” in International Class 41.

Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include services that are not within the scope of the goods and/or services set forth in the present identification.

For assistance with identifying and classifying services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.

Response Guidelines Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.

/Matt Einstein/ Matt Einstein Trademark Examining Attorney Law Office 115 Phone: (571) 272-8251

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail [email protected]. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 7 of 38 mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 8 of 38 Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 9 of 38 Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 10 of 38 Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 11 of 38 Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 12 of 38 Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 13 of 38 Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 14 of 38

To: Spencer, Frank B. ([email protected]) Subject: TRADEMARK APPLICATION NO. 77557722 - CRAZY HORSE - GAMZ 5 00021 Sent: 12/11/2008 10:51:16 AM Sent As: [email protected] Attachments:

IMPORTANT NOTICE USPTO OFFICE ACTION HAS ISSUED ON 12/11/2008 FOR APPLICATION SERIAL NO. 77557722

Please follow the instructions below to continue the prosecution of your application:

VIEW OFFICE ACTION: Click on this link http://tmportal.uspto.gov/external/portal/tow?DDA=Y&serial_number=77557722&doc_type=OOA&mail_date=20081211 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.uspto.gov/external/portal/tow and enter the application serial number to access the Office action.

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 12/11/2008.

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses. Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.uspto.gov/teas/eTEASpageD.htm.

HELP: For technical assistance in accessing the Office action, please e-mail [email protected]. Please contact the assigned examining attorney with questions about the Office action.

WARNING 1. The USPTO will NOT send a separate e-mail with the Office action attached.

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.

Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 15 of 38

Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 16 of 38

EXHIBIT K Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 17 of 38

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

APPLICATION SERIAL NO. 85217717

MARK: CRAZY HORSE *85217717* CORRESPONDENT ADDRESS: JAY F. MOLDOVANYI CLICK HERE TO RESPOND TO THIS LETTER: FAY SHARPE LLP http://www.uspto.gov/teas/eTEASpageD.htm 1228 EUCLID AVE FL 5 CLEVELAND, OH 44115-1834

APPLICANT: Frank B. Spencer

CORRESPONDENT’S REFERENCE/DOCKET NO: GAMZ 500021U CORRESPONDENT E-MAIL ADDRESS:

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must 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.

Section 2(d) Refusal – Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3044028 and 3055283. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 18 of 38

315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361- 62, 177 USPQ at 567.

The applicant has applied to register CRAZY HORSE, in standard character form, for “restaurant, night club, tavern and cocktail lounge services.” U.S. Registration No. 3044028 is CRAZY HORSE, in standard character form, for “Entertainment services, namely, exotic dance performances.” U.S. Registration No. 3055283 is PURE GOLD’S CRAZY HORSE, in standard character form, for “Exotic dancing services.” The registered marks were initially owned by the same entity, but have subsequently been assigned to different parties.

In this case, the following factors are the most relevant: similarity of the marks, similarity of the services, and similarity of trade channels of the services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc. , 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

Similarity of the Marks

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

The applied-for mark, CRAZY HORSE, is identical to the mark shown in U.S. Registration No. 3044028. Therefore, the marks create the same commercial impression.

Where the marks of the respective parties are identical or virtually identical, there need be only a viable relationship between the relevant goods and/or services to support a finding of likelihood of confusion. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); In re Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).

Applicant’s mark is also similar to the mark shown in U.S. Registration No. 3055283, PURE GOLD’S CRAZY HORSE. The marks contain the similar wording “CRAZY HORSE”; applicant has merely deleted the wording “PURE GOLD’S.” The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l , 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.

Similarity of the Services and Trade Channels

In a likelihood of confusion analysis, the comparison of the parties’ services is based on the services as they are identified in the application and registration, without limitations or restrictions that are not reflected therein. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Dakin’s Miniatures, Inc. , 59 USPQ2d 1593, 1595 (TTAB 1999); see TMEP §1207.01(a)(iii). It is presumed that both the application and registration encompass all services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); In re La Peregrina Ltd., Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 19 of 38

86 USPQ2d 1645, 1646 (TTAB 2008); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).

Moreover, the services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, it is sufficient that the services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc. , 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

In the present case, applicant is providing restaurant, night club, tavern and cocktail lounge services. The registered marks are both being used in connection with exotic dancing services. The attached evidence shows that the services of the parties are related: venues that feature exotic dancing commonly also feature restaurant, night club, tavern, and cocktail lounge services. Thus, consumes who encounter the respective services of the parties marketed under identical or similar marks are likely to be confused as to the origin of the services.

As a matter of fact, applicant’s website makes clear that applicant itself offers exotic dancing services in connection with its restaurant and bar services, claiming “the best Exotic Entertainers in the business.” http://crazyhorseclevelandoh.com/About-Us/.

In addition, attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the similar services as those of applicant and registrants in this case. These printouts have probative value to the extent that they serve to suggest that the exotic dancing services, on the one hand, and restaurant, night club, tavern, and cocktail lounge services, on the other are of a kind that may emanate from a single source. In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii). See the following:

U.S. Registration No. 3106235 (KITTENS GENTLEMEN'S CLUB) for “Adult entertainment services in the nature of nude and exotic dancing” and “ Restaurant and bar services.”

U.S. Registration No. 3928829 (DIVING HORSE) for “Adult entertainment services, namely, nightclub services featuring exotic dancing” and “ Restaurant and bar services.”

U.S. Registration No. 2809938 (FOXY LADY) for “Entertainment in the nature of live performances for an adult audience, namely, exotic dance performances” and “ restaurant services and bar services.”

U.S. Registration No. 2581612 (PUMPS EXOTIC DANCING) for “Adult entertainment in the nature of exotic dancing” and “ bar services.”

U.S. Registration No. 3661298 (SOLO PARA ELLAS) for “Adult entertainment services, namely, live theatrical, musical and dance floor shows at night clubs and theaters; exotic dancing for women.” Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 20 of 38

U.S. Registration No. 3191557 (CHIPPENDALES) for “Adult entertainment services, namely; live theatrical and musical floor shows provided at night clubs and theaters, exotic dancing for women.”

Further, attached are excerpted materials from third-party websites, which demonstrate that the goods of the respective parties are commonly offered together at gentlemen’s clubs. See the following:

http://www.roostersatlanta.com/ (gentlemen’s club features exotic dancers and restaurant and bar services).

http://archibalds.com/ (gentlemen’s club features exotic dancers and restaurant and bar services).

http://www.mycheetahsnyc.com/corporate.html (gentlemen’s club features exotic dancers and restaurant and bar services).

In view of the foregoing, registration of the applied-for mark is refused under Trademark Section Act 2(d) because of a likelihood of confusion with the marks in the cited registration.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

Potential Section 2(d) Refusal s– Likelihood of Confusion

Information regarding pending Application Serial Nos. 85079258, 85079193, 85079211, and 79050426 is enclosed. The filing dates of the referenced applications precede applicant’s filing date. There may be a likelihood of confusion under Trademark Act Section 2(d) between applicant’s mark and the referenced marks. If one or more of the referenced applications registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed applications.

If applicant believes that there is no potential conflict between this application and the earlier-filed applications, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

Applicant must respond to the requirement(s) set forth below.

Identification of Services—Clarification Required

The applicant has identified the services as “restaurant, night club, tavern and cocktail lounge services.” The identification is indefinite and must be clarified because it is too broad and includes services in multiple international classes. See TMEP §§1402.01, 1402.03. Night clubs are in Class 41, while restaurant, tavern and cocktail lounge services are in Class 43.

Applicant may adopt the following identification, if accurate:

Class 41: Night club services Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 21 of 38

Class 43: Restaurant, tavern, and cocktail lounge services

Please note that an applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the 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 see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.

Multiple-Class Application Requirements

If applicant amends the application to include services in both International Classes 41 and 43 to this application, then applicant must meet the following requirements.

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on use in commerce:

(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods/services by international class;

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

(3) SUBMIT REQUIRED STATEMENTS AND EVIDENCE: For each international class of goods and/or services, applicant must also submit the following:

(a) DATES OF USE: Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class. The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;

(b) SPECIMEN: One specimen showing the mark in use in commerce for each international class of goods and/or services. Applicant must have used the specimen in commerce at least as early as the filing date of the application. If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports. Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.;

(c) STATEMENT: The following statement: “ The specimen was in use in commerce on or in connection with the goods and/or services listed in the application Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 22 of 38

at least as early as the filing date of the application.”; and

(d) VERIFICATION: Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods and/or services, the specimen(s) of record is acceptable for International Class(es) 41 and 43. Applicant must submit additional specimens if different international classes are added to the application.

Assistance

If applicant has questions about the application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

/April A. Hesik/ Examining Attorney Law Office 113 (571) 272-4735 [email protected]

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/teas/eTEASpageD.htm. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail [email protected]. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). 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 does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a copy 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 at Case 2:12-cv-01514-LRH-GWF Document 19-5 Filed 11/30/12 Page 23 of 38 http://www.uspto.gov/teas/eTEASpageE.htm.

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Agent/Contact Name Prior Business Name Church Name Corporation Details Entity Number 1957472 Business Name CRAZY HORSE CONSULTING, INC. Filing Type CORPORATION FOR PROFIT Status Active Original Filing Date 08/19/2010 Expiry Date Location: CLEVELAND County: CUYAHOGA State:

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Reel/Frame: 4501/0432 View Recorded Assignment Pages: 4 Received: 03/16/2011 Recorded: 03/16/2011 Conveyance: ASSIGNS THE ENTIRE INTEREST Total properties: 3 1 Serial #: 75393508 Filing Dt: 11/20/1997 Reg #: 2292026 Reg. Dt: 11/16/1999 Mark: PURE GOLD

2 Serial #: 76369257 Filing Dt: 02/12/2002 Reg #: 2639483 Reg. Dt: 10/22/2002 Mark:

3 Serial #: 78569322 Filing Dt: 02/17/2005 Reg #: 3055283 Reg. Dt: 01/31/2006 Mark: PURE GOLD'S CRAZY HORSE Assignor 1 REID, CARL J. Exec Dt: 08/22/2009 Entity Type: INDIVIDUAL Citizenship: UNITED STATES Assignee 1 JAT INVESTMENTS, LLC LIMITED LIABILITY Entity Type: 1315 NORTH SANDHILLS BLVD COMPANY ABERDEEN, NORTH CAROLINA 28315 Citizenship: NORTH CAROLINA Correspondence name and address ERIC P. STEVENS 301 FAYETTEVILLE STREET, SUITE 1900 RALEIGH, NORTH CAROLINA 27601

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EXHIBIT R Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 2 of 135 Vol. 80 TMR

DELAY IN FILING PRELIMINARY INJUNCTION MOTIONS: HOW LONG IS TOO LONG?

By Robert Lloyd Raskopf* and Sandra Edelman**

The preparation of a preliminary injunction motion typ- ically requires an enormous expenditure of time and re- sources. Plaintiffs counsel must gather the facts relevant to the alleged infringement, obtain and assemble the necessary exhibits and interview knowledgeable witnesses in order to present the case. This effort may be wasted if the court finds that the plaintiff has waited too long before taking action. Responding to a preliminary injunction motion can be equally daunting. While plaintiffs counsel may be able to prepare and time the motion with surgical precision, the defendant is often caught off-guard, and is usually hampered by time constraints in fashioning an opposition. Given an appropriate factual context, however, a defendant can neu- tralize the plaintiffs momentum if plaintiff has delayed in seeking preliminary relief. Particularly where the question of infringement is debatable, inexcusable delay by the plain- tiff can tip the scales from success to failure on the motion. This article will explore the subject of delay in the con- text of the preliminary injunction motion. Part I of the article will explain how the concept of delay fits into the analytical framework used by the federal courts in ruling on prelimi- nary injunction motions. Part II will discuss how delay is measured and offer some general guidelines about excessive delay. Part III will examine what constitutes excusable delay, with particular emphasis on settlement negotiations and changes in the scope of the alleged infringement. In an Ap- pendix, we present a survey of cases, arranged by federal

* Partner in the firm of Townley & Updike, New York, N.Y., Associate Member of USTA; Domestic Articles Editor of The Trademark Reporter®. * * Associate at the firm of Townley & Updike, Associate Member of USTA; member of the Editorial Board of The Trademark Reporter®.

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circuit, showing the periods of time which have been held to constitute excusable and excessive delay in moving for a preliminary injunction.

I. DELAY AS A FACTOR IN DETERMINING PRELIMINARY INJUNCTION MOTIONS IN TRADEMARK AND UNFAIR COMPETITION CASES

A preliminary injunction is an extraordinary and drastic remedy,' designed to preserve the status quo pending a final determination of the claims at trial.2 While such relief may be sought in any federal action,3 it is a frequently-used weapon in trademark infringement litigation because of the unique function and fragility of a trademark in representing the intangible assets of good will and reputation.4 In order to prevent irreparable damage to this good will and repu- tation pending the final outcome of litigation, trademark owners often seek expedited relief in the form of a prelimi- nary injunction. Although preliminary injunctions are temporary in na- ture, many trademark infringement actions are resolved by the court's decision at the preliminary injunction hearing. "As a practical matter, a defendant forced to change his newly adopted mark will rarely want to re-introduce it a year or two later if he succeeds at trial or on appeal, espe-

1. Calvin Klein Cosmetics Corp. v. Parfums de Coeur, Ltd., 824 F2d 665, 667, 3 USPQ2d 1498, 1500 (CA 8 1987); Citibank, N.A. v. Citytrust, 756 F2d 273, 275, 225 USPQ 708, 710 (CA 2 1985); GTE Corp. v. Williams, 731 F2d 676, 678, 222 USPQ 803, 804 (CA 10 1984); Dymo Industries Inc. v. Tapeprinter, Inc., 326 F2d 141, 143, 140 USPQ 154, 155 (CA 9 1964). 2. Penn v. San Juan Hospital, Inc., 528 F2d 1181, 1185 (CA 10 1975); Hamilton Watch Co. v. Benrus Watch Co., 206 F2d 738, 742 (CA 2 1953); see generally 11 C. Wright and A. Miller, Federal Practice & Procedure §2947 (1973). 3. Federal Rules of Civil Procedure (FRCP) 65. 4. Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., 486 F Supp 414, 429, 206 USPQ 70, 83 (SDNY 1980); see also Salt Water Sportsman Inc. v. B.A.S.S. Inc., 685 F Supp 12, 4 USPQ2d 1407, 1411 (D Mass 1987), as amended 5 USPQ2d 1620 (D Mass 1987).

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cially if an alternate mark used during this period has achieved consumer recognition."' In addition to the financial expense of changing a product's name, packaging and ad- vertising materials, a defendant's business and good will may be damaged by perceived instability in a product's trademark or trade dress.' On the other hand, a plaintiff that fails to obtain a preliminary injunction will usually reassess the strength of its case and may choose to settle for less than it originally contemplated. Because of the drastic and summary nature of the pre- liminary injunction remedy and its potential destructive im- pact on the defendant's business, the federal courts apply a stringent standard to determine whether a preliminary in- junction is appropriate. In the Second Circuit, for example, the movant must demonstrate (1) irreparable harm and (2) either (a) a probability of success on the merits or (b) suffi- ciently serious questions going to the merits to make them a fair ground for litigation and a balance of the hardships tipping decidedly in the moving party's favor.7 Similar stan- dards have been enunciated in other jurisdictions,8 with many of the federal circuits specifically requiring the addi- tional showing that preliminary injunctive relief will be in the public interest.9 The movant's haste in seeking relief is one of the factors considered by the federal courts in determining whether the

5. la J. Gilson, Trademark Protection and Practice §8.0711] at 8-134 (1989). 6. Ibid. 7. Church of Scientology International v. Elmira Mission of the Church of Scientology, 794 F2d 38, 41, 230 USPQ 325, 327 (CA 2 1986); Joseph Scott Co. v. Scott Swimming Pools, Inc., 764 F2d 62, 66, 226 USPQ 496, 500 (CA 2 1985). 8. See, eg, Miss World (UK), Ltd. v. Mrs. America Pageants, Inc., 856 F2d 1445, 1448, 8 USPQ2d 1237, 1239 (CA 9 1988); Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville Inc., 670 F2d 642, 651, 214 USPQ 15, 22 (CA 6 1982), affg in part and revg in part 514 F Supp 704, 213 USPQ 559 (SD Ohio 1981), cert denied 459 US 916 (1982). 9. See, eg, Mutual of Omaha Insurance Co. v. Novak, 775 F2d 247, 248, 227 USPQ 801, 802 (CA 8 1985); SI Handling Systems, Inc. v. Heisley, 753 F2d 1244, 1254, 225 USPQ 441, 446 (CA 3 1985); GTE Corp. v. Williams, supra note 1 at 677, 222 USPQ at 803; Wesley-Jessen Division of Schering Corp. v. Bausch & Lomb, Inc., 698 F2d 862, 864, 217 USPQ 153, 154 (CA 7 1983).

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"irreparable harm" element of the preliminary injunction standard has been satisfied. Delay "undercuts the sense of urgency that ordinarily accompanies a motion for prelimi- nary relief and suggests that there is, in fact, no irreparable injury."' ° The movant's delay, however, is only one factor in the irreparable harm analysis. Because of the immeasurable value of trademark rights, most courts have held that a showing of a likelihood of success on the merits (usually consisting of proof of likely confusion) gives rise to a pre- sumption of irreparable injury." A defendant can rebut this presumption by demonstrating that a plaintiff has unrea- sonably delayed in seeking preliminary injunctive relief.'2 In

10. Le Sportsac, Inc. v. Dockside Research, Inc., 478 F Supp 602, 609, 205 USPQ 1055, 1062 (SDNY 1979); see also GTE Corp. v. Williams, supra note 1 at 678, 222 USPQ at 804; Kusan, Inc. v. Alpha Distributors, Inc., 693 F Supp 1372, 1374, 7 USPQ2d 1211, 1213 (D Conn 1988) ("[I]f an aggrieved party rests on his rights, it is incongruous for him to ask a court to act swiftly and issue an injunction without which irreparable harm will result"); Gear, Inc. v. L.A. Gear California, Inc., 637 F Supp 1323, 1332, 229 USPQ 980, 987 (SDNY 1986) (where plaintiffs are dilatory in seeking preliminary relief, courts have "looked askance at their assertion that the claimed injury is irreparable"). 11. See General Mills, Inc. v. Kellogg Co., 824 F2d 622, 625, 3 USPQ2d 1442, 1444 (CA 8 1987); Rodeo Collection, Ltd. v. West Seventh, 812 F2d 1215, 1220, 2 USPQ2d 1204, 1208 (CA 9 1987); Camel Hair & Cashmere Institute of America, Inc. v. Associated Dry Goods Corp., 799 F2d 6, 14, 231 USPQ 39, 44 (CA 1 1986); Joseph Scott C. v. Scott Swimming Pools, Inc., supra note 7 at 66, 226 USPQ at 500; Wesley-Jessen Division of Schering Corp. v. Bausch & Lomb Inc., supra note 9 at 867, 217 USPQ at 156; Horizon Financial, F.A. v. Horizon Bancorp., 2 USPQ2d 1696, 1704 (ED Pa 1987); National Yellow Pages Service Assn. v. O'Connor Agency, Inc., 9 USPQ2d 1516, 1521 (CD Calif 1988); Tootsie Roll Industries, Inc. v. Sathers, Inc., 666 F Supp 655, 660, 2 USPQ2d 1520, 1522 (D Del 1987); Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F Supp 1031, 1033, 231 USPQ 850, 851 (ND Ga 1986); American Rice, Inc. v. Arkansas Rice Growers Cooperative Assn., 532 F Supp 1376, 1389, 214 USPQ 936, 945 (SD Tex 1982), affd 701 F2d 408, 218 USPQ 489 (CA 5 1983). 12. Citibank, N.A. v. Citytrust, supra note 1 at 276, 225 USPQ at 711 ("[s]ignificant delay in applying for injunctive relief in a trademark case tends to neutralize any presumption that infringement alone will cause irreparable harm pending trial"); see also Majorica, S.A. v. R.H. Macy & Co., 762 F2d 7, 8, 226 USPQ 624, 624 (CA 2 1985); GTE Corp. v. Williams, supra note 1 at 678, 222 USPQ at 804; Kusan, Inc. v. Alpha Distributors, Inc., supra note 10 at 1374, 7 USPQ2d at 1212; Great Lakes Mink Assn. v. Furrari, Inc., No. 86-6038, slip op (SDNY 12/21/87) (available on LEXIS®); cf Church of Scientology International v. Elmira Mission of the Church of Scientology, supra note 7 at 43, 230 USPQ at 328 (emphasis omitted) (in an infringement action between a trademark li-

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some cases, the court may find that the plaintiffs delay, alone, is a sufficient ground for denying a motion for a pre- liminary injunction. 3

A. Delay and Laches-Are They the Same?

The equitable doctrine of laches, which may be raised as an affirmative defense in trademark and unfair compe- tition actions, is often confused with the issue of delay on preliminary injunction motions. Correctly applied, laches is a defense which bars permanent injunctive relief upon a showing of three elements: (1) plaintiffs knowledge of the defendant's use of the allegedly infringing mark; (2) inex- cusable delay by the plaintiff in taking action; and (3) prej- udice to the defendant if the plaintiff is permitted to assert its rights at the time. 4 Laches thus differs from delay in that it involves the added factor of prejudice to the defendant. In Majorica, S.A. v. R.H. Macy & Co.,' 5 the Second Circuit properly distinguished laches from delay and held that a plaintiffs delay in seeking a preliminary injunction may preclude a finding of irreparable injury, irrespective of whether the defendant is prejudiced by the delay: Lack of diligence, standing alone is insufficient to support a claim of laches; the party asserting the claim

censor and a former licensee, "irreparable harm always flows from unlawful use and confusion"). 13. Citibank, N.A. v. Citytrust, ibid; Kusan, Inc. v. Alpha Distributors, Inc., supra note 10 at 1374, 7 USPQ2d at 1213 ("where the delay is significant a court is justified in denying a motion for a preliminary injunction on that basis alone"); Allen Organ Co. v. CBS, Inc., 230 USPQ 479, 480 (SDNY 1986) (movant's eight month delay in seeking relief held fatal to its request for a preliminary injunction); see also Helena Rubenstein, Inc. v. Frances Denney, Inc., 286 F Supp 132, 134, 159 USPQ 346, 348 (SDNY 1968) ("Delays in seeking preliminary in- junctions have, without more, been held grounds for barring that relief'). 14. Olay Co. Inc. v. Cococare Products, Inc., 218 USPQ 1028, 1043 (SDNY 1983); see also University of Pittsburgh v. Champion Products Inc., 686 F2d 1040, 1044, 215 USPQ 921, 924 (CA 3 1982), cert denied 459 US 1087 (1982); Cuban Cigar Brands, N.V. v. Upmann International, Inc., 457 F Supp 1090, 1096, 199 USPQ 193, 198 (SDNY 1978), affd mem 607 F2d 995 (CA 2 1979). 15. Supra note 12.

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must also establish that it was prejudiced by the delay. Costello v. United States, 365 US 265, 282 (1961). Lack of diligence, standing alone, may, however, preclude the granting of preliminary injunctive relief, because it goes primarily to the issue of irreparable harm rather than occasioned prejudice. 6

Quoting its earlier opinion in Citibank, N.A. v. Citytrust,"7 the Second Circuit in Majorica also emphasized that a par- ticular period of delay may not be long enough to constitute laches but may still indicate the absence of irreparable harm required to support a preliminary injunction. 8 Although the Second Circuit has drawn a clear line be- tween laches and delay on a preliminary injunction motion, confusion of the two concepts is evident elsewhere. The Sev- enth Circuit, for example, has characterized the issue of plaintiff's delay in moving for preliminary injunctive relief as a "laches" defense and has held that the defense may succeed only if the defendant has been "lulled into a false sense of security or .. . acted in reliance on the plaintiff's delay."' 9 Obviously, in jurisdictions requiring a showing of

16. Id at 8, 226 USPQ at 624. 17. Supra note 1. 18. Majorica S.A. v. R.H. Macy & Co., supra note 12 at 8, 226 USPQ at 624; see also Stokely-Van Camp Inc. v. Coca-Cola Co., 2 USPQ2d 1225, 1227 (ND Ill 1987) (although three months is "too short of a time for the equitable doctrine of laches to apply, the fact that Stokely waited three months indicated a lack of a need for the extraordinary remedy of a preliminary injunction"). 19. Ideal Industries, Inc. v. Gardner Bender, Inc., 612 F2d 1018, 1025, 204 USPQ 177, 184 (CA 7 1979), cert denied 447 US 924 (1980); Helene Curtis In- dustries, Inc. v. Church & Dwight Co. Inc., 560 F2d 1325, 1334, 195 USPQ 218, 224 (CA 7 1977), cert denied 434 US 1070, 197 USPQ 592 (1978); see also Earth Technology Corp. v. Environmental Research Technology, Inc., 222 USPQ 585, 587 (CD Calif 1983); Reedco, Inc. v. Hoffmann-La Roche, Inc., 667 F Supp 1072, 1082, 2 USPQ2d 1994, 2002 (D NJ 1987) (laches is a defense to a preliminary injunction motion when "it appears that a plaintiff has unreasonably delayed application for relief and prejudice to opposing parties has thereby resulted"); Jordan K. Rand, Ltd. v. Lazoff Bros., Inc., 537 F Supp 587, 594, 217 USPQ 795, 801 (D PR 1982) (the defense of laches on a preliminary injunction motion is "reserved for those rare cases where a protracted acquiescence by plaintiff in- duces a defendant to undertake substantial activities in reliance on the acqui- escence"); American Rice, Inc. v. Arkansas Rice Growers Cooperative Assn., supra

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prejudice to the defendant, the issue of plaintiffs delay in seeking relief tends to be less significant in the preliminary injunction analysis. Even in jurisdictions which do not consider the prejudice to the defendant arising from plaintiffs delay as part of the irreparable harm analysis, the effect of plaintiffs delay may be factored into a court's evaluation of the balance of hard- ships. In Mego Corp. v. Mattel, Inc.,2 ° the court found that the plaintiff had waited until the proverbial "Eleventh Hour" to seek preliminary injunctive relief against defendant's BATTLESTAR GALACTICA line of toys, by which time de- fendant had committed over seven million dollars to the product introduction and was anticipating twenty million dollars in sales during the imminent pre-Christmas selling season." The court denied plaintiffs motion for a prelimi- nary injunction, holding that the failure of the plaintiff to act in timely fashion had caused the balance of hardships to tip decidedly in defendant's favor.22 Where a plaintiffs delay has caused substantial hard- ship to the defendant, a court may also strike a compromise by granting a preliminary injunction which is limited in its

note 11 at 1390, 214 USPQ at 946; Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville Inc., supra note 8, 514 F Supp at 711, 213 USPQ at 564. 20. 203 USPQ 377 (SDNY 1978). 21. Id at 382-83. 22. Id at 383; see also Stokely-Van Camp Inc. v. Coca-Cola Co., supra note 18 at 1227 (court denied plaintiff's motion for a preliminary injunction where the plaintiff waited three months before filing suit while the defendant was spending substantial amounts to market its product); Racemark International, Inc. v. Speciality Products, Inc., 217 USPQ 772, 781 (NDNY 1982) (during the period of the plaintiffs one year delay, the defendant spent over $500,000 on the challenged mark); Le Cordon Bleu S.a.r.l. v. BPC Publishing Ltd., 327 F Supp 267, 270-71, 170 USPQ 477, 479 (SDNY 1971) (preliminary injunction denied where plaintiff, after learning of defendant's alleged infringing cooking course periodical, took no action until almost thirteen weeks after defendant's initial announcement and eight weeks after the appearance of the first issue, during which time defendant had spent in excess of one million dollars in advertising and initial production costs); Colgate-Palmolive Co. v. North American Chemical Corp., 238 F Supp 81, 87, 144 USPQ 266, 267 (SDNY 1964) (a defendant very often has invested substantial amounts before plaintiff takes final action).

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scope or application. 2 3 For example, in Harlequin Enterprises Ltd. v. Gulf & Western Corp.,24 Harlequin's delay in seeking preliminary relief against the defendant's infringing book covers was taken into consideration by the court, which is- sued an injunction that did not prohibit the defendant's con- tinued sale of books already published with the infringing 25 covers.

B. Intentional Copying May Overcome the Effect of Delay

Some courts have held that a plaintiffs delay in moving for a preliminary injunction will not bar a finding of irrep- arable harm where there is evidence of intentional copying by the defendant. The genesis of this principle is the opinion written over fifty years ago by Judge Learned Hand in My- T Fine Corp. v. Samuels,26 in which the defendant argued that plaintiff's two year delay warranted the denial of plain- tiffs preliminary injunction motion.27 Judge Hand held that the defense of delay was not available because the defendant had deliberately copied the plaintiff's trade dress:

[A]dvantages built upon a deliberately plagiarized make- up do not seem to us to give the borrower any standing to complain that his vested interests will be disturbed. Concededly nothing short of abandonment would be a defence at final hearing. . . . No doubt less is necessary to defeat a preliminary injunction; delay alone may be enough, at least if the original use was innocent. .. But considering the origin of the wrong here, we do not think that a delay of two years is a defence.2"

23. See, eg, I. Peiser Floors, Inc. v. I.J. Peiser's Sons, Inc., No. 81-3359, slip op (SDNY 10/4/82) (available on LEXIS®) (the court held that plaintiffs delay would not preclude the grant of a preliminary injunction given the "severely limited scope and prospective nature of the relief' sought in the motion). 24. 644 F2d 946, 210 USPQ 1 (CA 2 1981). 25. Id at 950, 210 USPQ at 3. 26. 69 F2d 76, 21 USPQ 94 (CA 2 1934). 27. Id at 77, 21 USPQ 94. 28. Id at 78, 21 USPQ at 96 (citations omitted).

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Half a century later, Judge Hand's opinion in My-T Fine remains vital. Indeed, in 1986, the district court in Ventura Travelware Inc. v. A to Z Luggage Co.29 held that My-T Fine had not been superseded by the Second Circuit's 1985 decision in Citibank, N.A. v. Citytrust, holding that significant delay alone may justify the denial of a preliminary injunction." According to the Ventura court, "[a]lthough in cases of ac- cidental copying, delay in seeking a preliminary injunction may negate a finding of irreparable harm, .. . where, as here, there is sufficient evidence indicating deliberate copy- ing a preliminary injunction may still be warranted."'"

C. Delay: How Significant a Role Does It Play in Preliminary Injunction Motions?

From the foregoing discussion, it should be apparent that the plaintiff's delay in filing for relief may play only a minor role in the court's overall preliminary injunction analysis, particularly where evidence of a likelihood of confusion is compelling and the defendant has intentionally traded on the plaintiff's good will and reputation. It is equally apparent, however, that delay can be an important and sometimes pivotal factor in a court's decision on a preliminary injunc- tion motion. In some instances, the plaintiffs delay in a case which is weak on the merits may provide the court with a clear and convenient reason for denying the relief requested. This somewhat indefinite state of affairs is probably as it should be-a preliminary injunction is essentially an equi- table device designed to preserve the court's ability to render justice after a full trial on the merits. Many factors, all of varying degrees of importance depending on the circum- stances, are properly weighed in the balance.

29. 1 USPQ2d 1552 (EDNY 1986) (vacating the magistrate's decision). 30. Id at 1553. 31. Ibid; see also Harlequin Enterprises Ltd. v. Gulf & Western Corp., supra note 24 at 950, 210 USPQ at 3 (laches not a defense to a preliminary injunction motion where defendant intended the infringement); Jordan K. Rand, Ltd. v. Lazoff Bros., Inc., supra note 19 at 594, 217 USPQ at 799 (laches as a defense to a preliminary injunction motion is not available where defendant's own actions were calculated to trade upon plaintiff's reputation).

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Having generally described the role of delay in the pre- liminary injunction process, we will now attempt to describe how the courts have treated delay as an issue distinct from the merits of the infringement analysis.

II. DELAY AS A SEPARATE ISSUE

An Appendix to this article presents a survey of cases, organized by federal circuit, showing the lengths of time which have been held to be acceptable and unacceptable on motions for a preliminary injunction. The period of delay is measured from the date of the movant's notice of the de- fendant's alleged infringement to the date the motion for preliminary relief is filed. While the filing date is readily ascertainable and is never the subject of debate, the date of plaintiff's "cknowledge" can be controversial.

A. Notice of Infringement

A court may accept the plaintiffs claim of recent notice, even where the defendant has actually been using the mark at issue for a year or longer prior to the filing of the prelim- inary injunction motion." A plaintiff will be charged with earlier notice, however, if the court finds that the plaintiff should have known of the defendant's infringement. In one such case, Calvin Klein Co. v. Farah Mfg. Co. Inc.,33 plaintiff Calvin Klein moved in June 1985 for a preliminary injunc- tion against Farah's use of an inverted omega loop pocket stitching design on blue jeans.34 Although Farah had sold over 1.5 million pairs of the jeans at issue beginning October

32. See Cartier, Inc. v. Three Sheaves Co. Inc., 465 F Supp 123, 129, 204 USPQ 377, 382 (SDNY 1979) ("[A] party can be accused of laches only if it fails to act after notice. Plaintiffs sought relief as soon as they became aware of defendant's existence"); Universal City Studios, Inc. v. Mueller Chemical Co., No. 81-5737, slip op (ND Ill 11/24/82) (available on LEXIS®) (preliminary injunction granted where the motion was filed two years after defendant's allegedly infring- ing use began but three months after notice by plaintiff). 33. 229 USPQ 795 (SDNY 1985). 34. Id at 795-96.

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1978 to a variety of major department stores, Calvin Klein claimed that it did not discover Farah's use of the inverted omega design until 1985, even though it had a security force charged with investigating infringements of the Calvin Klein trademarks. 5 The court denied preliminary injunctive relief, holding: The Court does not credit the plaintiffs evidence that Calvin Klein first became aware of Farah's use of the inverted omega stitching in 1985. Calvin Klein is chargeable with years of dilatoriness in enforcing its allegedly protectible mark. In addition, Calvin Klein con- tinued to delay almost seven weeks after filing the com- plaint, to move for a preliminary injunction.3

The failure of a company with significant resources to learn of an alleged infringement also contributed to the Sec- ond Circuit's denial of a preliminary injunction in Citibank, N.A. v. Citytrust 7 As the court found, "It strains one's cre- dulity to argue that a major financial institution such as Citibank, with all its resources and information sources, could not establish before mid-September 1984 that a poten- tial competitor had opened a branch more than ten weeks earlier near the heart of Citibank territory."3

35. Id at 797-98. Moreover, between 1979 and 1981, Farah actually man- ufactured jeans for Calvin Klein. Ibid. 36. Id at 801. 37. Supra note 1. 38. Id at 277, 225 USPQ 711; see also Warner Lambert Co. v. McCrory's Corp., 718 F Supp 389, 12 USPQ2d 1884, 1888 (D NJ 1989) (Warner-Lambert's contention that it was unaware of McCrory's private label mouthwash found to be "somewhat doubtful" in light of Warner-Lambert's practice of sending per- sonnel to conduct field checks of retail stores and the unlikelihood that "industry leader Warner-Lambert could have no knowledge that its own customer and major retailer, McCrory, was selling a product that Warner-Lambert now con- tends poses the danger of irreparable harm"); Reedco, Inc. v. Hoffmann-La Roche, Inc., supra note 19 at 1081, 2 USPQ2d at 2002 (significant publicity regarding defendant's application for registration of the name TEGISON and the nature and side effects of the TEGISON drug "establishes the strong possibility that plaintiffs knew about TEGISON, its uses, and its dangers long before July 1985"); Mego Corp. v. Mattel, Inc., supra note 20 at 383 (even if plaintiff did not know by late spring that BATTLESTAR GALACTICA was the title of defendant's

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Another question to consider with respect to the issue of notice is whether a plaintiff can be charged with delay in taking action against infringers other than the named de- fendant. In one recently decided case, Warner-Lambert Co. v. McCrory's Corp.,39 the New Jersey district court denied a motion for a preliminary injunction against the sale of an alleged imitation of LISTERINE mouthwash where Warner- Lambert had not only delayed taking action against Mc- Crory's, but had also known about other private label brands in "substantially similar" trade dress for years.4" In an earlier case in the same district, however, the court rejected the argument that preliminary relief was barred by plaintiff's knowledge for a number of years of generic substitutes of its pharmaceutical products in imitative trade dress.41

B. The Length of the Delay-How Long Is Too Long?

Not surprisingly, a review of the cases involving the issue of delay in the preliminary injunction context demonstrates that the courts do not apply a uniform "cut-off" point to determine whether a plaintiff has waited too long to seek relief. A delay of thirteen weeks was held to be too long in Le Cordon Bleu S.a.r.l. v. BPC Publishing Ltd.,42 where the defendant had already published eleven issues of the weekly cooking periodical at issue and had invested over one million dollars in start-up costs.43 On the other hand, a delay of approximately two years was held to be acceptable in Earth Technology Corp. v. Environmental Research & Technology, Inc.,44 where most of the movant's delay was found to be attributable to attempts to settle the dispute and the de-

television series, "they should have known this and could have known this," especially in view of publicity in a "plethora" of trade journals). 39. Supra note 38. 40. Ibid. 41. American Home Products Corp. v. Chelsea Laboratories, Inc., 572 F Supp 278, 283, 219 USPQ 1192, 1197 (D NJ 1982), affd 722 F2d 730 (CA 3 1983). 42. Supra note 22. 43. Id at 270-71, 170 USPQ at 479. 44. Supra note 19.

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fendant could not demonstrate detrimental reliance on the delay.45 In the Second Circuit, where many of the cases involving the issue of delay originate, there are a number of decisions denying preliminary injunctive relief in which the plaintiff delayed filing its motion for periods of time ranging from three to ten months.46 Although the decision in Citibank N.A. v. Citytrust has been cited as a denial of preliminary relief based on a ten week delay by Citibank,47 the Second Circuit opinion indicates that Citibank had received notice through the press of defendant's expansion activities nine months prior to the filing of the preliminary injunction motion, after knowing of defendant's existence in other geographic areas for decades." Even properly classified as a case involving a nine-month delay, Citibank is illustrative of the tendency in the Second Circuit to excuse only short periods of delay. Nonetheless, there have been exceptions to the general rule in the Second Circuit where preliminary injunctions have issued despite delays of a year and a half or more.49

45. Id at 587. 46. See, eg, Mathematica Policy Research, Inc. v. Addison-Wesley Pub- lishing Co., Inc., 11 USPQ2d 1391 (SDNY 1989) (ten month delay); Comic Strip, Inc. v. Fox Television Stations, Inc., 710 F Supp 976,981, 10 USPQ2d 1608 (SDNY 1989) (seven month delay); Allen Organ Co. v. CBS, Inc., supra note 13 (eight months after indirect notice; seven months after direct notice); Le Sportsac, Inc. v. Dockside Research, Inc., supra note 10 (ten month delay); Mego Corp. v. Mattel, Inc., supra note 20 (seven month delay); Gianni Cereda Fabrics, Inc. v. Bazaar Fabrics, Inc., 335 F Supp 278, 173 USPQ 188 (SDNY 1971) (seven and one-half month delay). 47. Supra note 1; Country Floors, Inc. v. Gepner, 11 USPQ2d 1401, 1405 (ED Pa 1989); Mathematica Policy Research, Inc. v. Addison-Wesley Publishing Co., supra note 46; Delmatoff, Gerow, Morris, Langhans, Inc., 12 USPQ2d 1136 (DC DC 1989). 48. Citibank, id at 276, 225 USPQ at 711. 49. See, eg, Ventura Travelware Inc. v. A to Z Luggage Co., supra note 29 (eighteen month delay did not bar plaintiffs entitlement to a preliminary injunction because of defendant's intentional infringement); Colgate Palmolive Co. v. North American Chemical Corp., supra note 22 at 86 (twenty month delay excused where defendant intentionally infringed plaintiffs mark); I. Peiser Floors, Inc. v. I.J. Peiser's Sons, Inc., supra note 23 (limited relief granted on preliminary injunction motion despite two-year delay).

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Although the greatest number of cases denying a pre- liminary injunction with delays of ten months or less are in the Second Circuit, cases in the Third, Fourth and Seventh Circuits fit within this category as well. For example, in Stokely-Van Camp Inc. v. Coca-Cola Co.,5" the federal district court for the Northern District of Illinois declined to grant a preliminary injunction where the plaintiff had been aware of Coca-Cola's introduction of REFRESH iced tea for three months and knew that large amounts of money were being spent in connection with the product launch. 1 A seven month delay was also deemed too long by the New Jersey district court in Mars, Inc. v. H.P. Mayer Corp.,52 and an eight month delay resulted in the denial of preliminary relief by a North Carolina federal district court in John Lemmon Films, Inc. v. Atlantic Releasing Corp.53 While it is impossible to harmonize and reconcile all of the decisions involving the issue of delay on preliminary injunction motions, some general conclusions can be drawn. Three months or less is usually considered acceptable. 4 Be- tween three and six months, the cases begin to diverge.5 A plaintiff runs a significant risk that a preliminary injunction motion will be denied where the delay in seeking relief is

50. Supra note 18. 51. Id at 1226. 52. No. 88-2252 (D NJ 8/19/88) (designated not for publication) (available on LEXIS®). 53. 617 F Supp 992, 227 USPQ 386 (WD NC 1985). 54. See, eg, Universal City Studios, Inc. v. Mueller Chemical Co. Inc., supra note 32; Louis Rich, Inc. v. Horace W. Longacre, Inc., 423 F Supp 1327, 195 USPQ 308 (ED Pa 1976); but see Stokely-Van Camp Inc. v. Coca-Cola Co., supra note 18; see also Appendix at the end of this article. 55. Granting a preliminary injunction: Quaker Oats Co. v. Mel Appel Enterprises, Inc., 703 F Supp 1054, 9 USPQ2d 2057 (SDNY 1988) (six month delay); Salt Water Sportsman Inc. v. B.A.S.S. Inc., supra note 4 (approximately a six month delay); C.B. Sports Inc. v. Gaechter-Haber & Associates, Inc., 210 USPQ 597 (D Vt 1981) (six month delay); Cyclonaire Corp. v. United States Systems, Inc., 209 USPQ 310 (D Kan 1980) (six month delay). Denying a prelim- inary injunction: Nina Ricci S.A.R.L. v. Gemcraft Ltd., 612 F Supp 1520, 226 USPQ 575 (SDNY 1985) (five-six month delay); Programmed Tax Systems, Inc. v. Raytheon Co., 419 F Supp 1251, 193 USPQ 435 (SDNY 1976) (four-five month delay); see also Appendix.

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between six months and a year,56 and most cases involving a delay of a year or longer deny preliminary injunctive re- lief," except in jurisdictions which require a showing of prej- udicial delay or in cases where the defendant's intentional infringement defeats the defense of delay. 8

III. EXCUSABLE DELAY

In considering the circumstances under which a plain- tiffs delay will bar the issuance of a preliminary injunction, the reasons why the plaintiff waited to seek relief may be as important as how long the plaintiff waited. Put another way, a particular period of delay will not necessarily preclude a finding of irreparable injury if the court finds the delay to be excusable. The two most frequently accepted excuses are (1) ongoing settlement negotiations and (2) a material escalation in the defendant's infringing activity. To rely on these excuses, how- ever, a plaintiff must move promptly after settlement dis- cussions reach an impasse or after the plaintiff discovers the increase in the scope of the defendant's infringement.

A. Settlement Negotiations

Courts encourage the extra-judicial resolution of legal disputes to spare the resources of the courts and the litigants

56. Denying a preliminary injunction: Citibank, N.A. v. Citytrust, supra note 1 (nine month delay); Mathematica Policy Research, Inc. v. Addison-Wesley Publishing Co., supra note 46 (ten month delay); Mars, Inc. v. H.P. Mayer Corp., supra note 52 (seven month delay); Allen Organ Co. v. CBS, Inc., supra note 13 (seven-eight month delay); see also Appendix. 57. See, eg, GTE Corp. v. Williams, supra note 1 (three year delay); Na- tional Yellow Pages Service Assn. v. O'Connor Agency, Inc., supra note 11 (three year delay); Kusan, Inc. v. Alpha Distributors, Inc., supra note 10 (seventeen- eighteen month delay); Gear, Inc. v. L.A. Gear California, Inc., supra note 10 (fifteen-sixteen month delay); see also Appendix. 58. See supra notes 19 and 26-31.

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and to ease the burden of overcrowded dockets. 9 Consistent with this public policy, many courts have issued preliminary injunctions despite a delay occurring during the conduct of settlement negotiations, 0 even where the settlement nego- tiations were concededly characterized as t desultory." 61 In one recent case, the court found that the movant had not unreasonably delayed in seeking relief even though seven- teen months had elapsed between the mailing of a protest letter and the filing of a preliminary injunction motion.62 In contrast, other courts, while acknowledging the need to en- courage the extrajudicial resolution of trademark disputes, have nonetheless held that the delay occurring during set- tlement discussions indicates a lack of irreparable harm."

59. Clark, Inc. v. Resnick, 219 USPQ 619, 624-25 (D RI 1982) ("Although Plaintiff somewhat belatedly seeks a preliminary injunction, the delay is attrib- utable to efforts to resolve this controversy, a practice which certainly should not be discouraged, much less used to defeat a meritorious claim."). 60. See, eg, Central Benefits Mutual Insurance Co. v. Blue Cross & Blue Shield Assn., 711 F Supp 1423, 11 USPQ2d 1103 (SD Ohio 1989); Earth Technology Corp. v. Environmental Research & Technology, Inc., supra note 19 at 587 ("[A] party will not be charged with delay attributable to efforts to settle the dispute"); CBS, Inc. v. Springboard International Records, 429 F Supp 563, 569 fn 1, 199 USPQ 422, 428 (SDNY 1976) ("It is clear to the Court that the delay in this case was occasioned by the settlement negotiation which was in progress and not by any unreasonable delay on the part of plaintiffs."); Jon Devlin Dancercise, Inc. v. Dancersize, Inc., 525 F Supp 973, 975, 217 USPQ 748, 749 (SDNY 1981) (the plaintiff is not equitably or legally estopped from asserting its claims against defendants where plaintiff consistently asserted its trademark rights against defendants during settlement negotiations); Cyclonaire Corp. v. United States Systems, Inc., supra note 55 at 312, 316 (delay of six months excused where plaintiff sent cease and desist letter seven weeks after discovering the infringe- ment and negotiated with defendant for several more months). 61. Clark, Inc. v. Resnick, supra note 59 at 620. 62. Central Benefits Mutual Insurance Co. v. Blue Cross & Blue Shield Assn., supra note 60; see also Earth Technology Corp. v. Environmental Research & Technology, Inc., supra note 19 at 586 (movant for preliminary injunctive relief first contacted the defendant to express concern in February 1981, called the defendant in December 1981 to advise of its intention to oppose the defendant's application for registration and moved for a preliminary injunction in December 1982); Steinway & Sons v. Robert Demars & Friends, 210 USPQ 954, 960-61 (CD Calif 1981) (plaintiff consistently asserted its rights against defendant between late 1978, when plaintiff filed an opposition proceeding in the Patent and Trade- mark Office, and October 1980, when the civil infringement action was filed). 63. See, eg, Mars, Inc. v. H.P. Mayer Corp., supra note 52 ("While this

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A number of courts have denied preliminary injunctive relief where the plaintiff has either unreasonably delayed filing a motion after settlement negotiations have broken down or the plaintiff has simply allowed the discussions to go on too long. For example, the failure to move quickly after settlement discussions reached an impasse was largely re- sponsible for the denial of plaintiff's preliminary injunction motion in Gear, Inc. v. L.A. Gear California, Inc.' The plain- tiff, owner of the GEAR trademark for luggage, household products and children's clothing, first learned in May 1984 that defendant had licensed the L.A. GEAR mark for chil- dren's clothing and wrote a protest letter to defendant in June 1984. In an exchange of correspondence between June and September 1984, defendant disputed plaintiff's claim of infringement, refused to discontinue use of L.A. GEAR as a trademark and trade name and indicated its intention to pursue registration of the L.A. GEAR mark.65 As the court observed, "The battle lines were drawn by the summer of 1984; yet plaintiff did not even file suit until the following July, and did not seek preliminary relief until three and one- half months later."'66 Accordingly, the court concluded that "plaintiff's long period of inaction, after defendants indicated their full intention to continue using 'L.A.GEAR,' under- mines its contention that the claimed injuries are irrepa- rable."67

court views settlement negotiations with favor and does not wish to impose any prejudice upon plaintiff for attempting to amicably resolve this matter without judicial intervention, plaintiffs delay in bringing this application does somewhat undermine its argument of irreparable harm."); cf Nina Ricci S.A.R.L. v. Gem- craft Ltd., supra note 55 at 1530-31, 226 USPQ at 583 (plaintiffs' "inexplicable delay" in moving for preliminary injunctive relief until six weeks after settlement talks broke down, coupled with their lack of interest in defendant's product during the Christmas selling season "is evidence that little harm is present"). 64. Supra note 10. 65. Id at 1332, 229 USPQ at 987. 66. Ibid. 67. Id at 1333, 229 USPQ at 987; see also Delmatoff, Gerow, Morris, Lan- ghans, Inc. v. Children's Hospital National Medical Center, supra note 47 (where the parties had been discussing settlement for a year and it was clear after five months that negotiations were likely to fail, plaintiffs' delay in filing a motion for a preliminary injunction undermines the claim that irreparable harm will result if such relief is denied); Comic Strip, Inc. v. Fox Television Studios, Inc.,

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In contrast, a preliminary injunction issued in Nature's Bounty, Inc. v. SuperX Drugs Corp.6" where the plaintiff filed suit on September 14, 1979, entered into settlement negoti- ations with defendant after initiating the action, and then moved for a preliminary injunction in January 1980 after the negotiations resulted in only partial agreement. 9 The court concluded that the plaintiff had not inexcusably de- layed in presenting its application for preliminary relief since it had moved quickly after the negotiations reached an im- passe. ° Even absent a clear and irreconcilable conflict between the parties' settlement positions, it is reasonable to expect that a party allegedly suffering irreparable injury will move for expedited relief after the exploration of settlement fails to culminate in an accord after several months.7' As one district court pointed out in denying a preliminary injunc- tion, "It is within the Plaintiffs prerogative to bring the suit negotiations could have whenever it decides and settlement 72 continued after the suit had been filed.

B. Escalation in the Scope of Infringement

A plaintiffs delay in moving for a preliminary injunction

supra note 46 at 981, 10 USPQ2d at 1614 (preliminary injunction denied where plaintiff waited seven months to seek preliminary relief, including three months after its last communications with defendant to settle the dispute); National Yellow Pages Service Assn. v. O'Connor Agency, Inc., supra note 11 at 1521 (plaintiffs three year delay in filing suit and moving for a preliminary injunction was not excused by protracted settlement negotiations); John Lemmon Films, Inc. v. Atlantic Releasing Corp., supra note 53 at 996, 227 USPQ at 389 (prelim- inary injunction denied where plaintiff waited seven weeks after learning of the alleged infringement to send a protest letter and then waited another seven months after receiving an unsatisfactory response to the letter before filing suit). 68. 490 F Supp 50, 207 USPQ 263 (EDNY 1980). 69. Id at 55-56, 207 USPQ at 268-69. 70. Id at 56, 207 USPQ at 269. 71. See Louis Rich, Inc. v. Horace W. Longacre, Inc., supra note 54 at 1335, 195 USPQ at 314 (plaintiff's eight week effort to amicably resolve the trademark dispute with defendant, insisting at all times that defendant cease using its mark held to be "'not an inordinate amount of time to delay taking drastic legal action under such circumstances"). 72. National Yellow Pages Service Assn. v. O'Connor Agency, Inc., supra note 11 at 1521.

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may be excused where (1) the evidence shows a history of slow or modest encroachment followed by an expansion of the defendant's activities; and (2) the plaintiff moves quickly after learning of the escalation in the level of infringement. For example, in Parrot Jungle, Inc. v. Parrot Jungle, Inc.,73 the defendant opened a PARROT JUNGLE store in Brook- lyn, New York in 1977 and three additional stores in the New York metropolitan area in 1978. The plaintiff, owner of a nationally-known tourist attraction in Florida named PARROT JUNGLE, conceded that it was aware of "perhaps three stores" by early 1979, but took no action against what it regarded as a few pet stores.74 However, after learning in late 1980 that the defendant was embarking on a national franchising program, 5 the plaintiff promptly brought suit and moved for a preliminary injunction. Rejecting the de- fendant's argument that plaintiff had inexcusably delayed in bringing the action, the district court granted plaintiffs motion, holding:

[T]here is a substantial difference between plaintiff's awareness of a pet store or stores in New York and its awareness of a national franchising effort. It was the latter which triggered plaintiffs prompt assertion of its rights. A modest encroachment is one thing, a sudden proposed national exploitation of plaintiff's name is quite another, and plaintiff's failure to challenge the former will not entirely disable plaintiffs from preventing the 6 latter.

The significant expansion of a defendant's business was also held to excuse the plaintiffs delay where the defendant announced a change in activities from operating as a retail florist to offering a nationwide telemarketing and credit card

73. 512 F Supp 266, 213 USPQ 49 (SDNY 1981). 74. Id at 267-68, 213 USPQ at 50. 75. Id at 268, 270, 213 USPQ at 50, 52. 76. Id at 270, 213 USPQ at 52-53 (citing Miss Universe v. Patricelli, 271 F Supp 104, 110, 154 USPQ 334, 337-38 (D Conn 1967), affd 386 F2d 997, 155 USPQ 289 (CA 2 1967)).

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program for florists.7 Likewise, where a defendant opened up a new branch of a restaurant in the same part of the city as plaintiff's restaurant, leading to a significant increase in incidents of actual confusion, plaintiff's failure to move prior to the increased level of confusion did not prevent the is- suance of a preliminary injunction." In both of these cases, the court specifically found that the plaintiff had moved promptly after discovering the escalation of the alleged in- fringement." In contrast, preliminary injunctive relief was denied in Citibank, N.A. v. Citytrust,s ° where Citibank knew in the summer of 1983 of Citytrust's intention to expand its banking facilities outside of Connecticut into Citibank's home territory of New York, had direct knowledge of Citytrust's New York area branch in June 1984, and yet did not move for a preliminary injunction until ten weeks later.8 A modest encroachment followed by an increased level of infringing activity can occur not only where a defendant expands the scope of its business geographically, but also where it initially imitates plaintiff's trademark or trade dress to a limited degree and then increases the level of infringe- ment by more brazen copying of the plaintiff's product. In American Rice, Inc. v. Arkansas Rice Growers Cooperative

77. Floralife, Inc. v. Floraline International, Inc., 633 F Supp 108, 112-13 (ND Ill 1985); later proceeding 807 F2d 518, 1 USPQ2d 1132 (CA 7 1986). 78. Calamari Fisheries, Inc. v. Village Catch Inc., 698 F Supp 994, 1014, 8 USPQ2d 1953, 1969 (D Mass 1988); see also Horizon Financial, F.A. v. Horizon Bancorp., supra note 11 at 1705 (the court granted preliminary injunctive relief where plaintiff, the operator of a Pennsylvania savings association named Ho- rizon Financial, filed a motion for preliminary injunction after defendant, a New Jersey financial institution, moved into Pennsylvania and began heavily pro- moting its name); cf University of Pittsburgh v. Champion Products, Inc., supra note 14 at 1046, 215 USPQ at 926 (in an action for permanent injunctive relief, the court excused the plaintiffs extensive delay where "the character and scope of the alleged infringement changed substantially over the years from a modest program of sales to students and local adherents of the university to a program of national sales aimed at servicing and capitalizing upon Pitt's emergence as a national college football power"). 79. Id at 1014, 8 USPQ2d at 1969; Floralife Inc. v. Floraline International, Inc., supra note 77 at 113. 80. Supra note 1. 81. Id at 276, 225 USPQ at 711.

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Assn., 2 the plaintiff ARI sold rice products to the Saudi Arabian market under the name Abu Bint (girl brand) in a yellow, red and black box bearing a design of an Oriental girl.83 The plaintiff took no action when defendant first in- troduced a competitive rice product under the name "Bint al-Arab" in a green and yellow color scheme." Three years later, however, the defendant modified its "Bint al-Arab" label to change the color scheme to yellow, red and black.' The court rejected the defendant's argument that plaintiff's delay barred its entitlement to a preliminary injunction, finding that ARI filed suit within three weeks of defendant's introduction of the modified trade dress.8 6 An escalation in the scope of infringement can also occur where defendant expands its product line to include goods more closely related to plaintiff's products. The court must find, however, that the defendant has in fact made a signif- icant change in the nature of its infringment, thus excusing the movant's previous inaction. In Gear, Inc. v. L.A. Gear California, Inc.," the court held that the defendant's expan- sion into fabric bags and accessories could not be considered ta qualitative change" in the scope of alleged infringement where the plaintiff was previously on notice of the use of the L.A. GEAR mark on children's clothing-a product line di- rectly competitive with plaintiff's line of children's clothing."

C. The Need to Investigate

Courts have excused periods of delay ranging from seven weeks 9 to six months9 ° where the plaintiff asserted the need

82. Supra note 11. 83. 532 F Supp at 1380-81, 214 USPQ at 938-39. 84. Id at 1382, 1390, 214 USPQ at 940, 946. 85. Id at 1382, 214 USPQ at 940. 86. Id at 1390, 214 USPQ at 946. 87. Supra note 10. 88. Id at 1332-33, 229 USPQ at 987. 89. Quaker Oats Co. v. Mel Appel Enterprises, Inc., supra note 55 at 1062, 9 USPQ2d at 2062. 90. C.B. Sports Inc. v. Gaechter-Haber & Associates, Inc., supra note 55

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to investigate the facts and legal theories underlying the claim of infringement. As one court pointed out, "[p]arties should not be encouraged to sue before a practical need to do so has clearly been demonstrated."'" In one recent case, however, the district court declined to excuse a ten month delay in moving for a preliminary injunction (including a seven month gap between sending a cease and desist letter and filing suit) where the plaintiff contended it was prudently waiting until it could establish a case of infringement.9 2 The need to fully investigate the facts has taken on added importance with the emergence of Rule 11 of the Federal Rules of Civil Procedure,9 3 and a party which runs too hastily into court based on an incomplete understanding of the de- fendant's activities may find itself not only the loser of the preliminary injunction motion but also the recipient of Rule 11 sanctions.94 In one case involving a novel argument under Rule 11, a defendant which successfully opposed a prelimi- nary injunction motion asked the court to impose Rule 11

at 599. Although the court in C.B. Sports excused plaintiffs six month delay and granted plaintiff's motion for a preliminary injunction, the court observed that the delay indicated that plaintiff did not consider the ongoing harm caused by defendant's activities to be very serious. Id at 604 fn 8. 91. Quaker Oats Co. v. Mel Appel Enterprises, Inc., supra note 55 at 1062, 9 USPQ2d at 2063 (quoting Horgan v. MacMillan, Inc., 789 F2d 157, 164 (CA 2 1986)); see also Central Benefits Mutual Insurance Co. v. Blue Cross & Blue Shield Assn., supra note 60 at 1434, 11 USPQ2d at 1112 (movant's delay excused where it was conducting settlement negotiations and waiting until it had gathered sufficient evidence of actual confusion to support injunctive relief); Nintendo of America, Inc. v. Bay Coin Distributors, Inc., Copyright L Rep (CCH) 25,409 (EDNY 1982). 92. Mathematica Policy Research, Inc. v. Addison-Wesley Publishing Co., Inc., supra note 46; cf Warner-Lambert Co. v. McCrory's Corp., 718 F Supp 389, 395, 12 USPQ2d 1884, 1888 (D NJ 1989) (the court denied plaintiffs motion for a preliminary injunction but held that plaintiff should not be penalized for delay specifically attributable to the conduct of a confusion survey, since "[t]his type of good faith preparation for litigation should not be used to subsequently bar plaintiff from obtaining injunctive relief'). 93. FRCP 11 94. In one recent copyright case involving a request for expedited relief, plaintiff's counsel was ordered to pay defendant $1100 in costs and damages, although there was no finding that the plaintiffs misconduct, as perceived by the court, was the result of haste in seeking preliminary relief. See Warner Bros., Inc. v. Dae Rim Trading Inc., 877 F2d 1120, 11 USPQ2d 1272 (CA 2 1989).

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sanctions on the plaintiff on the ground that the plaintiff must have known that a nine month delay would "doom its application for preliminary relief."95 The district court for the Southern District of New York denied defendant's re- quest, holding that there is no "per se" rule in the Second Circuit barring an injunction in circumstances involving sub- stantial delay.96

D. Pendency of Proceedings in the Patent and Trademark Office

In jurisdictions in which the courts examine not only the plaintiff's delay in moving for a preliminary injunction but also whether the defendant has relied to its detriment on plaintiff's inaction,97 the fact that the plaintiff has pre- viously instituted an opposition or cancellation proceeding in the United States Patent and Trademark Office may pre- clude a finding of detrimental reliance.9" As the district court explained in Floralife, Inc. v. Floraline International, Inc.:

While a "Notice of Opposition to Registration is not a claim of infringement," it is "an assertion by the owner of a trademark that the applicant's proposed mark is likely to confuse the public as to the source of the product or service." Thus, a notice of opposition sufficiently in- forms the registrant of the trademark holder's objections and renders unreasonable any detriment the registrant may suffer in reliance on the plaintiffs delay in filing suit."°

95. Jewelers of America, Inc. v. Norayr Amirghanyan, No. 86-4371 (SDNY 4/2/87) (available on LEXIS®). 96. Ibid. 97. See supra note 19 and accompanying text. 98. Horizon Financial, F.A. v. Horizon Bancorp., supra note 11 at 1705; Earth Technology Corp. v. Environmental Research & Technology, Inc., supra note 19 at 587; Steinway & Sons v. Robert Demars & Friends, supra note 62 at 960-61. 99. Supra note 77, 100. Id at 113 (quoting James Burrough Ltd. v. Sign of the Beefeater, Inc., 572 F2d 574, 578 fn 5, 197 USPQ 277, 279 (CA 7 1978)).

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While the pendency of adversarial proceedings in the Patent and Trademark Office may excuse a plaintiff's delay in moving for a preliminary injunction in some jurisdictions, at least one court has rejected a plaintiff's excuse that it deferred filing suit until its mark was registered in order to obtain the benefits accompanying federal registration.'01 As the court observed, "[b]y waiting for its certificate of regis- tration to issue, the [P]laintiff may have improved its chances for a permanent injunction. In so waiting, however, it also belied its claim that there is an urgent need for speedy action 10 2 to protect its rights.'

E. Docket Crowding

A plaintiffs inability to obtain an early trial date in a long-pending trademark infringement action has also been held to excuse a delay in moving for preliminary injunctive relief.'0 3 In one case, Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville Inc.," 4 plaintiff filed suit in November 1978 and moved for a preliminary injunction in October 1980 when it "became apparent that docket constraints in the district court would preclude a plenary hearing for an ex- tended period of time."'0 5 The Court of Appeals for the Sixth Circuit observed that "[]nstead of slumbering on its rights, Frisch's sought to draw the court's attention to its dilemma as soon as practicable by applying for a preliminary injunc- tion."' 6

101. John Lemmon Films, Inc. v. Atlantic Releasing Corp., supra note 53. 102. Id at 996, 227 USPQ at 389. 103. Volkswagenwerk, G.m.b.H. v. Frank, supra note 103 at 917, 131 USPQ at 237 (plaintiff filed suit in May 1960 and moved for preliminary injunctive relief in October 1961; the court granted plaintiffs motion, holding that "[tihe delay in seeking injunctive relief is explained in terms of belief by plaintiffs that the cause would be tried at an earlier date than February 5, 1962, on which date it is now set for trial on the merits . . 104. Supra note 8. 105. 670 F2d at 652 fn 6, 214 USPQ at 23. 106. Ibid.

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CONCLUSION

The decision to file a motion for a preliminary injunction in a trademark infringement action usually implicates a va- riety of tactical considerations. In this article we have iso- lated one issue-delay-which can be overlooked or de- emphasized by the plaintiff because it has little bearing on the substantive merits of the infringement claim itself. Be- cause a presumption of irreparable harm flows from proof of a likelihood of success on the merits, the practitioner's evaluation of the probability of success of a preliminary in- junction motion tends to be focused on the merits of the infringement claim. Where there has been delay in moving for the preliminary injunction, however, a separate evalua- tion of the impact of the delay on the likelihood of success on the motion is in order. No per se rule can or should govern this issue. Inexcus- able delay in moving for preliminary relief after the initial or escalated infringement has been discovered, or after set- tlement negotiations have irretrievably broken down, clearly cuts against the plaintiff's plea of irreparable harm requiring extraordinary judicial intervention. On the other hand, a plaintiff which explores the possibility of an extra-judicial settlement of a dispute in an expeditious manner or which defers filing the motion until the facts of the defendant's infringement are clearly understood should not have to fear the court's hostility for having waited until the appropriate time to seek relief. We have analyzed the factors that courts have addressed in determining whether plaintiff's delay is excusable or ex- cessive. An evaluation of these factors, and any others which may bear on the issue of delay in a particular case, should be made in determining whether, under all the circum- stances, plaintiff's delay in seeking a preliminary injunction was reasonable.

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APPENDIX FIRST CIRCUIT Holding Case Delay Length on Motion

Jordan K. Rand, Ltd. 3 months granted v. Lazoff Bros., Inc., 537 F Supp 587, 217 USPQ 795 (D PR 1982)

Salt Water less than 6 months granted Sportsman, Inc. v. B.A.S.S. Inc., 685 F Supp 12, 4 USPQ2d 1407 (D Mass 1987), as amended 5 USPQ2d 1620 (D Mass 1987)

Calamari Fisheries, 21 months after first granted Inc. v. The Village use; 1 month after Catch, Inc., 698 F expansion caused Supp 994, 8 USPQ2d increased level of 1953 (D Mass 1988) confusion

SECOND CIRCUIT

Majorica, S.A. v. R.H. several years denied Macy & Co., 762 F2d 7, 226 USPQ 624 (CA 2 1985)

Citibank, N.A. v. 10 weeks after direct denied Citytrust, 756 F2d notice of actual use; 9 273, 225 USPQ 708 months after notice of (CA 2 1985) intended use in press; years after notice of use in another state

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Holding Case Delay Length on Motion Harlequin Enterprises 6 months after notice granted Ltd. v. Gulf & of intended use; 3 Western Corp., 644 months after notice of F2d 946, 210 USPQ 1 actual use (CA 2 1981) Mathematica Policy 10 months denied Research, Inc. v. Addison-Wesley Publishing Co. Inc., 11 USPQ2d 1391 (SDNY 1989) Comic Strip, Inc. v. 7 months denied Fox Television Stations, Inc., 710 F Supp 976, 10 USPQ2d 1608 (SDNY 1989) Kusan, Inc. V. Alpha 17-18 months denied Distributors, Inc., 693 F Supp 1372, 7 USPQ2d 1211 (D Conn 1988) Artemide Spa v. 7 months granted Grandlite Design & in part Mfg. Co. Inc., 672 F Supp 698, 4 USPQ2d 1915 (SDNY 1987) Great Lakes Mink 20 months denied Assn. v. Furrari, Inc., No. 86-6038 (SDNY 12/21/87) (available on LEXIS®) Ventura Travelware approximately 18 granted Inc. v. A to Z Luggage months Co., 1 USPQ2d 1552 (EDNY 1986)

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Holding Case Delay Length on Motion Allen Organ Co. v. 7-8 months denied CBS, Inc., 230 USPQ 479 (SDNY 1986) Gear, Inc. v. L.A. 17-18 months denied Gear California, Inc., 637 F Supp 1323, 227 USPQ 980 (SDNY 1986) Nina Ricci S.A.R.L. v. 4 months from notice, denied Gemcraft Ltd., 612 F including 6 weeks Supp 1520, 226 USPQ from breakdown of 575 (SDNY 1985) settlement talks Calvin Klein Co. v. 7 years of use; denied Farah Mfg. Co. Inc., plaintiffs claim of 229 USPQ 795 (SDNY less than 6 months 1985) notice rejected I. Peiser Floors, Inc. 2 years granted v. I.J. Peiser's Sons, Inc., No. 81-3359 (SDNY 10/4/82) (available on LEXIS®) Exxon Corp. v. Xoil approximately 12 denied Energy Resources, months Inc., 552 F Supp 1008, 216 USPQ 634 (SDNY 1981) Nike, Inc. v. Rubber several months granted Mfgrs. Assn., 509 F Supp 919, 212 USPQ 225 (SDNY 1981) C.B. Sports Inc. v. 6 months granted Gaechter-Haber & Associates, Inc., 210 USPQ 597 (D Vt 1981)

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Holding Case Delay Length on Motion Le Sportsac, Inc. v. 10 months denied Dockside Research, Inc., 478 F Supp 602, 205 USPQ 1055 (SDNY 1979) Mego Corp. v. Mattel, 7 months after notice denied Inc., 203 USPQ 377 of intended use (SDNY 1978)

Programmed Tax 4-5 months after denied System, Inc. v. actual notice; 3 years Raytheon Co., 419 F after first use Supp 1251, 193 USPQ 435 (SDNY 1976)

Le Cordon Bleu 13 weeks denied S.a.r.l. v. BPC Publishing Ltd., 327 F Supp 267, 170 USPQ 477 (SDNY 1971)

Gianni Cereda 7-1/2 months denied Fabrics, Inc. v. Bazaar Fabrics, Inc., 173 USPQ 188 (SDNY 1971) (copyright and trademark claims)

Helena Rubenstein, 20 months denied Inc. v. Frances Denney, Inc., 286 F Supp 132, 159 USPQ 346 (SDNY 1968)

Stix Products, Inc. v. preliminary denied United Merchants & injunction motion Mfgrs., Inc., 273 F filed 5 years after suit Supp 250, 154 USPQ 477 (SDNY 1967)

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Holding Case Delay Length on Motion Goodyear Tire & 8-9 years denied Rubber Co. v. Topps of Hartford, Inc., 247 F Supp 899, 147 USPQ 240 (D Conn 1965) Colgate-Palmolive Co. 20 months granted v. North American Chemical Corp., 238 F Supp 81, 144 USPQ 266 (SDNY 1964) Gillette Co. v. Ed 4-5 years denied Pinaud, Inc., 178 F Supp 618, 123 USPQ 531 (SDNY 1959) My-T Fine Corp. v. 2 years granted Samuels, 69 F2d 76, 21 USPQ 94 (CA 2 1934)

THIRD CIRCUIT Warner Lambert Co. 12 months after first denied v. McCrory's Corp., use; 5 months after 718 F Supp 389, 12 claimed actual notice USPQ2d 1884 (D NJ 1989) Country Floors, Inc. v. at least 2 years actual denied Gepner, 11 USPQ2d notice; up to 6 years 1401 (ED Pa 1989) constructive notice Mars, Inc. v. H.P. approximately 19 denied Mayer Corp., No. 88- months 2252 (D NJ 8/19/88) (available on LEXIS®) (not for publication) HeinOnline -- 80 Trademark Rep. 65 1990 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12Vol. 80 TMRPage 32 of 135

Holding Case Delay Length on Motion Reedco, Inc. v. 17 months after denied Hoffmann-La Roche, actual notice; years Inc., 667 F Supp 1072, after notice in the 2 USPQ2d 1994 (D NJ press 1987) Horizon Financial, 13 years use; 8 granted F.A. v. Horizon months after Bancorp., 2 USPQ2d geographic expansion 1696 (ED Pa 1987) of defendant's use Louis Rich, Inc. v. 2 months granted Horace W. Longacre, Inc., 423 F Supp 1327, 195 USPQ 308 (ED Pa 1976)

FOURTH CIRCUIT John Lemmon Films, 8 months denied Inc. v. Atlantic Releasing Corp., 617 F Supp 992, 227 USPQ 386 (WD NC 1985)

FIFTH CIRCUIT American Rice, Inc. v. 3 weeks after granted Arkansas Rice increased level of Growers Cooperative infringement; 4 years Assn., 532 F Supp after less 1376, 214 USPQ 936 objectionable use (SD Tex 1982), affd 701 F2d 408, 218 USPQ 489 (CA 5 1983)

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Holding Case Delay Length on Motion SIXTH CIRCUIT Frisch's Restaurants, at least 2 years granted Inc. v. Elby's Big Boy of Steubenville Inc., 514 F Supp 704, 213 USPQ 559 (SD Ohio 1981), affd 670 F2d 642, 214 USPQ 15 (CA 6 1982), cert denied 459 US 916 (1982) Central Benefits 18 months granted Mutual Insurance Co. v. Blue Cross & Blue Shield Assn., 711 F Supp 1423, 11 USPQ2d 1103 (SD Ohio 1989)

SEVENTH CIRCUIT Helene Curtis suit filed within granted Industries, Inc. v. weeks of notice; Church & Dwight Co. preliminary Inc., 560 F2d 1325, injunction filed 13 195 USPQ 218 (CA 7 months later 1977), cert denied 434 US 1070, 197 USPQ 592 (1978) Ideal Industries, Inc. suit filed 7 months granted v. Gardner Bender, after notice; Inc., 612 F2d 1018, preliminary 204 USPQ 177 (CA 7 injunction motion 1979), cert denied 447 filed 8 months later US 924, 206 USPQ 864 (1980)

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Holding Case Delay Length on Motion Vaughan Mfg. Co. v. 10 months granted Brikam International Inc., 814 F2d 346, 1 USPQ2d 2067 (CA 7 1987) American Airlines a few months notice granted Inc. v. A 1-800-A-M-E- by high level R-I-C-A-N Corp., 622 employee; earlier F Supp 673, 228 notice by sales USPQ 225 (ND Ill personnel 1985) Universal City 3 months granted Studios, Inc. v. Mueller Chemical Co., No. 81-5737 (ND Ill 11/24/82) (available on LEXIS®) Floralife, Inc. v. at least 3 years notice granted Floraline of limited use; less International, Inc., than 3 weeks after 633 F Supp 108 (ND knowledge of Ill 1985); later expansion of use proceeding 807 F2d 518, 1 USPQ2d 1132 (CA 7 1986) Stokely-Van Camp 3 months denied Inc. v. Coca-Cola Co., 2 USPQ2d 1225 (ND Ill 1987)

EIGHTH CIRCUIT Mutual of Omaha 12 months granted Insurance Co. v. Novak, 775 F2d 247, 227 USPQ 801 (CA 8 1985)

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Holding Case Delay Length on Motion NINTH CIRCUIT

National Yellow 3 years denied Pages Service Assn. v. O'Connor Agency, Inc., 9 USPQ2d 1516 (CD Calif 1988)

Earth Technology 2 years granted Corp. v. Environmental Research & Technology, Inc., 222 USPQ 585 (CD Calif 1983)

Steinway & Sons v. 2 years granted Robert Demars & Friends, 210 USPQ 954 (CD Calif 1981)

TENTH CIRCUIT

GTE Corp. v. 3 years denied Williams, 731 F2d 676, 222 USPQ 803 (CA 10 1984)

Volkswagenwerk, 17 months after granted G.m.b.H. v. Frank, lawsuit 198 F Supp 916, 131 USPQ 236 (D Colo 1961)

Cyclonaire Corp. v. 6 months granted United States Systems, Inc., 209 USPQ 310 (D Kan 1980)

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Holding Case Delay Length on Motion ELEVENTH CIRCUIT Original Appalachian 5-10 months granted Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F Supp 1031, 231 USPQ 850 (ND Ga 1986)

D.C. CIRCUIT Delmatoff, Gerow, 12 months denied Morris, Langhans, Inc. v. Children's Hospital National Medical Center, 12 USPQ2d 1136 (DC DC 1989)

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+(,1 2 1/,1(

Citation: 85 Trademark Rep. 1 1995

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DELAY IN FILING PRELIMINARY INJUNCTION MOTIONS: A FIVE YEAR UPDATE By Sandra Edelman*

I. INTRODUCTION Five years ago, The Trademark Reporter® published an article examining the subject of delay in the context of a preliminary injunction motion.1 The article offered general guidelines for determining the length of time that constitutes inexcusable and excusable delay and analyzed the principal reasons accepted by courts for the delay. An Appendix to the article presented a survey of cases, arranged by federal circuit, showing the periods of time found to be excusable or excessive in moving for a preliminary injunction. With the passage of time, and the addition of several dozen more cases to the analysis, the article's basic conclusions remain essentially the same: (1) A delay of three months or less is usually considered acceptable.2 (2) Between four and twelve months, the cases diverge.'

* Partner in the firm of Townley & Updike, New York, New York, Associate Member of the International Trademark Association; member of the Editorial Board of The Trademark Reporter®. 1. Robert Lloyd Raskopf and Sandra Edelman, Delay in Filing Preliminary Injunction Motions: How Long Is TIbo Long?, 80 TMR 36 (1990). 2. See, eg, S&R Corp. v. Jiffy Lube International, Inc., 968 F2d 371, 23 USPQ2d 1201 (CA 3 1993) (3 month delay); Bausch & Lomb, Inc. v. Nevitt Sales Corp., 810 F Supp 466, 26 USPQ2d 1275 (WDNY 1993) (1 month after increased scope of infringement); National Rural Electric Cooperative Assn. v. National Agricultural Chemical Assn., 26 USPQ2d 1294 (DC DC 1992) (several weeks after expansion of infringement); Universal Motor Oils Co. v. Amoco Oil Co., 15 USPQ2d 1613 (D Kan 1990) (3 month delay); see also Appendix at the end of this article ("Appendix"). 3. See, eg, Kraft General Foods, Inc. v. Allied Old English, Inc., 831 F Supp 123, 31 USPQ2d 1094 (SDNY 1993) (7 month delay; motion granted); Chase Manhattan Corp. v. Northwestern Mutual Life, 1993 WL 60602 (SDNY 1993) (11 month delay; motion denied); W.L. Gore & Associates, Inc. v. btes, Inc., 23 USPQ2d 1091 (D Del 1992) (4 month delay; motion granted); Studio 1712, Inc. v. Etna Products Co., 777 F Supp 844, 22 USPQ2d 1280 (D Colo 1991) (10 month delay; motion granted); Lanvin Inc. v. Colonia, 739 F Supp 182 (SDNY 1990) (in an action involving breach of a licensing agreement, the court denied a

Vol. 85 TMR

HeinOnline -- 85 Trademark Rep. [xx] 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 39 of 135 Vol. 85 TMR (3) In most cases involving a delay of a year or longer, preliminary injunctive relief is denied,4 except where intentional infringement by the defendant overcomes the adverse effect of the movant's delay.5 (4) Ongoing settlement negotiations6 and changes in the scope of infringement7 are the reasons most frequently cited by courts in finding a period of delay to be excusable. An Updated Appendix to this article includes all of the cases from the earlier Appendix, supplemented by cases decided since 1989. First, however, it is worth reviewing some recent decisions that provide additional insight into how delay is measured, whether preliminary injunction motions may be used as a tactical maneuver in ongoing litigation, and what constitutes excusable delay.

preliminary injunction motion brought over seven months after plaintiff confirmed, by an audit, its awareness of a violation of the agreement); Century Time Ltd. v. Interchron, 729 F Supp 366, 14 USPQ2d 1765 (SDNY 1990) (6 month delay; motion denied); Supercuts, Inc. v. Super Clips, 18 USPQ2d 1378 (D Mass 1990) (10 month delay; motion granted); see also Appendix. 4. See, eg, TLbmmy Hilfiger U.S.S., Inc. v. Siegfried & Parzifal, Inc., 1994 WL 86398 (SDNY 1994) (as much as 2-3 year delay); Jordache Enterprises, Inc. v. Levi Strauss & Co., 841 F Supp 506 (SDNY 1993) (4 year delay); H.G.I. Marketing Services, Inc. v. Pepsico, Inc., 1992 WL 349675 (NDNY 1992) (2-4 year delay); L.G.B., Inc. v. Gitano Group, Inc., 769 F Supp 1236 (SDNY 1991) (18 month delay); American International Group, Inc. v. American International Airways, Inc., 726 F Supp 1470, 14 USPQ2d 1933 (ED Pa 1989) (3 year delay); see also Appendix. 5. Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F Supp 1339 (EDNY 1994) (although plaintiff waited over 3 years to file a preliminary injunction motion, the court granted the motion, citing the defendant's bad faith, fraudulent conduct and intentional misappropriation of plaintiffs good will); see also Grand Lodge Fraternal Order of Police v. Labor Council Michigan FOP, Inc., 1994 US App LEXIS® 30788 (CA 6 1994) (not for publication) (notwithstanding plaintiffs knowledge for more than two years of defendant's infringing use, preliminary injunction granted where defendant had engaged in misleading and possibly fraudulent solicitation of funds), 6. See, eg, Ocean Garden, Inc. v. Marktrade Company, Inc., 953 F2d 500, 21 USPQ2d 1493 (CA 9 1991); Rockland Mortgage Corp. v. Shareholder's Funding Inc., 835 F Supp 182, 30 USPQ2d 1270 (D Del 1993) (the court held that plaintiffs six month delay was excusable because the time was spent, in part, in attempting to resolve the matter without resorting to litigation); American Direct Marketing v. Azad International, Inc., 783 F Supp 84, 22 USPQ2d 1108 (EDNY 1992) (concluding that the plaintiff was not likely to succeed on the merits of its claims, the court denied the motion for preliminary injunctive relief, but specifically found that plaintiffs 3-6 month delay, arising out of reasonable attempts to settle the matter out of court, did not otherwise undercut plaintiffs entitlement to expedited relief); Redmond Products, Inc. v. Body Shop, Inc., 20 USPQ2d 1233 (D Minn 1991). 7. See, eg, National Rural Electric Cooperative Assn. v. National Agricultural Chemical Assn., supra note 2 at 1298 (although 3 years had elapsed since defendant's infringing conduct commenced, the court granted the motion for a preliminary injunction where plaintiff had moved within several weeks of learning that defendant had dramatically expanded its operations); W.L. Gore & Associates, Inc. v. 'Ibtes, Inc, supra note 3 (court found that defendant's false advertising had "inched up" over a 2Y2 year period).

HeinOnline -- 85 Trademark Rep. 1 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 40 of 135 Vol. 85 TMR A. Measuring the Period of Delay Delay is generally measured from the date the movant knew or should have known of the defendant's infringement.8 This standard of actual or constructive notice is sometimes difficult to apply. For example, what if the plaintiff learns that the defendant intends to introduce an infringing product but many months pass before the product is actually introduced to the market? Or, in cases of gradual encroachment occurring over a period of months or years, what is the triggering event from which the movant's delay should be measured? King v. Innovation Books,9 a suit between the author Stephen King and the producers of the film "The Lawnmower Man," illustrates the problem that arises when a temporal gap exists between the announcement of a defendant's plans and the actual sale of the allegedly infringing product or service. King first learned in October 1991, from reading a film magazine, that defendant intended to distribute a motion picture using the title of one of his stories. He promptly wrote a letter objecting to any "possessory credit" for the film.1° A few weeks later, King managed to secure a copy of the screenplay. The screenplay contained the objectionable possessory credit, but King was unable to view the film and screen credits until March 1992. Three months later, he brought suit and a motion for a preliminary injunction under Section 43(a) of the Lanham Act.1" The Court of Appeals for the Second Circuit affirmed the grant of a preliminary injunction enjoining the use of possessory credit, rejecting defendant's contention that King's delay rebutted the presumption of irreparable injury. 2 As the court explained, the actions taken by King between October 1991 and June 1992 to apprise defendants of his objections and to obtain a copy of the film preserved the presumption of irreparable harm."

8. See Paramount Pictures Corp. v. Video Broadcasting Systems Inc, 724 F Supp 808, 822, 12 USPQ2d 1862 (D Kan 1989); see also Raskopf and Edelman, supra note 1 at 45-47. 9. 976 F2d 824, 24 USPQ2d 1435 (CA 2 1992). 10. Id at 827, 24 USPQ2d 1435. 11. Id at 828, 24 USPQ2d 1435. 12. Id at 831, 24 USPQ2d 1435. 13. Ibid. The court also found that defendants contributed to King's delay in seeking preliminary injunctive relief by refusing to make the final film version available to him at an earlier point in time. Hoping to stave off a dispute, the defendants declined to assist King's efforts to view the film before the opening date. Id at 833, 24 USPQ2d 1435; Thomas & Betts Corp. v. Panduit Corp., 1994 US Dist LEXIS® 18113 (ND Ill 1994) (9-10 months before moving for preliminary relief, plaintiff heard rumors about defendant's production introduction and brought the motion 3 months after seeing actual product specimens); see also Mastercard International, Inc. v. Sprint Communications Co., 30 USPQ2d 1963, 1966-67 (SDNY 1994) (in dicta, the court found that Mastercard did not have to take immediate action in mid-1993 when it learned that Sprint planned to promote a

HeinOnline -- 85 Trademark Rep. 2 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 41 of 135 Vol. 85 TMR The problem of measuring delay in a case of gradual encroachment was addressed in Nabisco Brands, Inc. v. Canusa Corp. 4 Nabisco first contemplated bringing an infringement suit in late 1987, when it learned that Canusa was selling an imitation LIFESAVERS product in the United States. 5 Canusa's sales then dropped off sharply, and Nabisco decided not to pursue the matter.16 Between July and October 1988, Nabisco became aware that sales had increased and that Canusa had offered to sell the infringing product to a large LIFESAVERS customer, K-Mart. 7 At that point, Nabisco reconsidered litigation, but did not file suit or seek preliminary injunctive relief until March 1989." The Nabisco court rejected the proposition that delay must necessarily be measured from the date on which the defendant first uses the contested mark. Rather, the triggering event is the "date that the defendant's acts first significantly impacted on the plaintiffs goodwill and business reputation."' 19 In this instance, the court concluded that Nabisco was justified in waiting to bring suit until the defendants' sales had become a competitive threat. °

B. The PreliminaryInjunction Motion as a Tactical Maneuver in Ongoing Litigation In a surprising number of recent cases, the plaintiff com- menced a lawsuit reasonably promptly after learning of an infringement, but then delayed a significant period of time before seeking preliminary injunctive relief. In most cases, the court granted the motion, notwithstanding delays ranging from five to seventeen months between actual notice of the infringing act and the motion for expedited relief.2' In some instances, however, this

calling card at the 1994 World Cup games-allegedly a violation of an exclusive license given to Mastercard-since the games were not set to begin until June 1994). 14. 722 F Supp 1287, 11 USPQ2d 1788 (MD NC), affd mem 892 F2d 74, 14 USPQ2d 1324 (CA 4 1989). 15. Nabisco had first learned of defendant's product in 1984 when it was in limited distribution in Puerto Rico. At that time, Nabisco initiated an opposition proceeding against registration of the product label, but withdrew the proceeding based on defendants' representation that the foray into Puerto Rico was only a test and that they did not anticipate any future endeavor. Id 722 F Supp at 1289, 11 USPQ2d 1788. 16. Id at 1290, 11 USPQ2d 1788. 17. Ibid. 18. Ibid. 19. Id at 1292, 11 USPQ2d at 1792 (quoting 2 J. Thomas McCarthy, Trademarks and Unfair Competition, §31:6 at 570 (2d ed 1984)). 20. Id at 1292, 11 USPQ2d 1788. 21. See, eg, Ocean Garden, Inc. v. Marktrade Co. Inc, supra note 6 (complaint filed 4 months after plaintiff learned of defendant's plans to introduce an infringing product; preliminary injunction brought 6 months later: motion granted); Sega Enterprises Ltd. v. Accolade Inc., 785 F Supp 1392, 23 USPQ2d 1440 (ND Calif 1992) (lawsuit brought 1

HeinOnline -- 85 Trademark Rep. 3 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 42 of 135 Vol. 85 TMR 5 litigation strategy led to the denial of the motion.22 In cases where the intervening time between complaint and motion was devoted to efforts to negotiate a settlement,23 or where the plaintiffs discovery efforts uncovered new circumstances justifying expedited relief, the court's decision to excuse the delay is perhaps under- standable. Often, however, the court does not cite any reason for the plaintiffs failure to seek preliminary injunctive relief at the outset of litigation, nor does it explain how "irreparable injury" could exist so long after the plaintiff first learned of the defend- ant's infringement.24 Courts in the Second Circuit have taken a dim view of this practice, particularly when the delayed filing of the preliminary injunction motion smacks of tactical maneuvering. For example, in Century Time Ltd. v. Interchron,25 the plaintiff became aware of defendant's allegedly infringing watch products in July 1989; it filed suit in September 1989, but waited until January 30, 1990 to file a preliminary injunction motion, four days before an important trade show at which plaintiff knew defendant intended to display the products at issue.26 In denying the motion, the court chastised the plaintiff: "We simply cannot tolerate tactical maneuvering, in injunction matters, whereby parties sit back and wait for what injurious to the procedural fairness they believe to be timing27 most for their adversaries. A stiff rebuke was likewise delivered in a case involving a licensing dispute between the National Football League Player's Association and National Football League Properties, Inc.2" The

months after notice of infringement; preliminary injunction motion brought 3 4 months later: motion granted); Transfer Print Foils, Inc. v. Transfer Print America Inc., 720 F Supp 425, 12 USPQ2d 1753 (D NJ 1989) (plaintiff commenced action 5 months after it learned of defendant's infringing conduct; preliminary injunction motion filed 11 months later: motion granted). 22. See, eg, Century Time Ltd. v. Interchron, supra note 3. 23. See, eg, Supercuts Inc. v. Super Clips, supra note 3 (delay between commencement of suit and filing of preliminary injunction motion excused because of settlement negotiations); P.T.C. Brands, Inc. v. Conwood Co. L.P., 28 USPQ3d 1895 (WD Ky 1993) (preliminary injunction motion filed after expedited discovery). 24. P.T.C. Brands, Inc. v. Conwood Co. L.P., supra note 23 (suit filed 2 months after plaintiff learned of expansion in infringement; preliminary injunction motion filed 6 months later: motion granted); Transfer Print Foils, Inc. v. Transfer Print America Inc, supra note 21. 25. Supra note 3. 26. Id at 368, 14 USPQ2d 1765. 27. Id at 368, 14 USPQ2d at 1766; see also Wilson-Cook Medical, Inc. v. Wiltex, Inc., 18 USPQ2d 1642, 1644 (CA 4 1991) (Fourth Circuit affirmed the denial of preliminary injunctive relief and made note of defendant's argument that plaintiff had "strategically" waited to file suit on the eve of an important medical conference at which defendant planned to promote its business). 28. 1991 WL 79325 (SDNY 1991).

HeinOnline -- 85 Trademark Rep. 4 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 43 of 135 Vol. 85 TMR Player's Association initially filed and withdrew a motion for preliminary relief, then later re-filed the motion and twice voluntarily extended the return date of the later motion.29 The court denied the motion, stating: "[A] motion for a preliminary injunction is a request for extraordinary and urgent relief, not a casual entry on the list of litigation strategies to be postponed or renewed as a carrot or stick depending on the progress of litiga- tion."" In sum, a mid-litigation preliminary injunction motion can be successful, but the plaintiff should have a good reason for not having moved at the outset-especially in the Second Circuit.

C. Excusable and Inexcusable Delay Settlement negotiations and an expansion in the scope of infringement continue to lead the list of acceptable excuses for delay in seeking preliminary injunctive relief. As previously indicated,31 however, a plaintiff must move promptly after settlement negotiations break down or after it learns of a sig- nificant increase in the defendant's infringing conduct. For example, in L.G.B., Inc. v. Gitano Group, Inc., 2 the defendant waited more than a year and a half after the plaintiff instituted a declaratory judgment action to file a preliminary injunction motion. Although part of the eighteen month period of delay was occupied by settlement discussions, the court denied the motion, holding that it was doubtful that the settlement negotia- tion period, exceeding a year after the action was commenced, should be subtracted from the period of delay.3 The plaintiff was also faulted for waiting an additional four months after advising the court that settlement efforts had been exhausted.' In contrast, a preliminary injunction was granted in National Rural Electric Cooperative Association v. National Agricultural Chemical Association35 where, notwithstanding plaintiffs three years' knowledge of infringing conduct by the defendant on a limited scale, the preliminary injunction motion was brought

29. Id at 3. 30. Ibid. 31. Raskopf and Edelman, supra note 1 at 50-56. 32. Supra note 4. 33. Id at 1242. 34. Ibid; see also Museum Boutique Intercontinental, Ltd. v. Picasso, 1995 US Dist LEXIS® 1085 (SDNY 1995) (preliminary injunction denied where parties had been engaged in settlement negotiations for many years). 35. Supra note 2.

HeinOnline -- 85 Trademark Rep. 5 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 44 of 135 Vol. 85 TMR within a few weeks after plaintiff learned of a dramatic expansion of defendant's operations. 6 The District Court of Colorado was particularly forgiving of a ten month delay in Studio 1712, Inc. v. Etna Products Co.,37 in which the plaintiff pleaded "dire financial circumstances" and plaintiffs counsel stated that he needed to acquaint himself with the area of law so that he could, consistent with Rule 11, file the motion for preliminary injunctive relief.38 The Southern District of New York was considerably less lenient in Chase Manhattan Corp. v. Northwestern Mutual Life,39 in which the plaintiffs excuses included the need to conduct a survey and its inability to find out when defendant's allegedly infringing commercials would be broadcast.4 ° Not surprisingly, a plaintiff who claimed he was "too busy to commence a lawsuit,"41 did not obtain emergency relief from the court.

II. CONCLUSION Delay by a plaintiff in moving for a preliminary injunction in a trademark or unfair competition action is only one of many factors a court considers in determining whether expedited relief is appropriate. Nevertheless, it is an important factor, and courts have consistently required applicants for the extraordinary remedy of a preliminary injunction to demonstrate that relief has been urgently and quickly sought. Five years since publication of the original article on this subject, the lessons remain the same: a delay of three months or less is generally acceptable, but it behooves the movant to offer an adequate explanation to justify delays in the six to twelve month range. Good faith settlement efforts will not be penalized and gradual encroachment on the movant's rights will excuse a delay in seeking expedited relief, but the plaintiff must move promptly after settlement efforts come to

36. Id at 1298. 37. Supra note 3. 38. Id at 853, 22 USPQ2d 1280. 39. Supra note 3. 40. Id at 3-4 (the plaintiff in Chase also sought to justify its delay on the ground that it was attempting to settle the matter, but the court rejected this excuse as well, observing that defendant had made it clear to plaintiff at the outset of settlement negotiations that defendant did not intend to stop the conduct challenged by plaintiff); cf Lisa Frank, Inc. v. Impact International, Inc., 799 F Supp 980 (D Ariz 1992) (court excused plaintiffs delay in moving for a preliminary injunction for 3 months after learning of an increase in the scope of infringement, noting that plaintiff had been busy responding to 453 document requests and several motions served by defendants). 41. Cuddle Wit, Inc. v. Chan, 14 USPQ2d 1572 (SDNY 1989) (7 month delay in a copyright infringement action). HeinOnline -- 85 Trademark Rep. 6 1995 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 45 of 135 8 Vol. 85 TMR naught or after the plaintiff has learned of a qualitative change in the scope of infringement.

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UPDATED APPENDIX

First Circuit

Holding Case Delay Length on Motion

Supercuts, Inc. v. Super Clips, 18 10 months: suit brought granted USPQ2d 1378 (D Mass 1990) after 1 month; motion filed 9 months later

Calamari Fisheries, Inc v. Village 21 months after first use; 1 granted Catch, Inc, 698 F Supp 994, 8 month after expansion USPQ2d 1953 (D Mass 1988) caused increased level of confusion

Salt Water Sportsman, Inc. v. less than 6 months granted B.A.S.S. Inc., 685 F Supp 12, 4 USPQ2d 1407 (D Mass 1987), as amended 5 USPQ2d 1620 (D Mass 1987)

Jordan K. Rand, Ltd. v. Lazoff 3 months granted Bros., Inc., 537 F Supp 587, 217 USPQ 795 (D PR 1982)

Second Circuit

King v. Innovation Books, 976 F2d 11 months from knowledge granted 824, 24 USPQ2d 1435 (CA 2 1992) of intended use, including 3 months from knowledge of actual use

Majorica, S.A. v. R.H. Macy & Co., several years denied 762 F2d 7, 226 USPQ 624 (CA 2 1985)

Citibank, N.A. v. Citytrust, 756 10 weeks after direct denied F2d 273, 225 USPQ 708 (CA 2 notice of actual use; 9 1985) months after notice of intended use in press; years after notice of use in another state

Harlequin Enterprises Ltd. v. Gulf 6 months after notice of granted & Western Corp., 644 F2d 946, 210 intended use; 3 months USPQ 1 (CA 2 1981) after notice of actual use

My-T Fine Corp. v. Samuels, 69 2 years granted F2d 76, 21 USPQ 94 (CA 2 1934)

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Holding Case Delay Length on Motion

Museum Boutique Intercontinental, 14 years of coexistence, denied Ltd. v. Picasso, 1995 US Dist allegedly infringing newer LEXIS® 1085 (SDNY 1995) uses found not qualita- tively different from prior uses

CBS Inc. v. Liederman, 866 F Supp 11 months from first denied (but 763, 33 USPQ2d 1333 (SDNY knowledge of infringing delay found 1994), affd 1995 US App LEXIS® use; 3 months after reasonable) 1532 (CA 2 1995) responsible parties located

Mastercard International, Inc. v. 6-9 months from granted Sprint Communications Co., 30 knowledge of intended use (dicta) USPQ2d 1963 (SDNY 1994)

Tommy Hilfiger U.S.S., Inc. v. 2-3 years from notice of denied Siegfried & Parzifal, Inc., 1994 WL initial elements of 86398 (SDNY 1994) infringement

Dial-A-Mattress Operating Corp. v. 3-4 years granted Mattress Madness, Inc., 841 F Supp 1339 (EDNY 1994)

Jordache Enterprises, Inc. v. Levi 4 years denied Strauss & Co., 841 F Supp 506 (SDNY 1993)

Kraft General Foods, Inc. v. Allied 7 months from publication granted Old English, Inc., 831 F Supp 123, of defendant's mark 31 USPQ2d 1094 (SDNY 1993)

Chase Manhattan Corp. v. 11 months: suit brought denied Northwestern Mutual Life, 1993 after 5 months; motion WL 60602 (SDNY 1993) filed 6 months later

Bausch & Lomb, Inc. v. Nevitt 1 month after increased granted Sales Corp., 810 F Supp 466, 26 scope of infringement USPQ2d 1275 (WDNY 1993)

H.G.I. Marketing Services, Inc. v. 2-4 years denied Pepsico, Inc., 1992 WL 349675 (NDNY 1992)

American Direct Marketing v. Azad 3-6 months denied (but International, Inc., 783 F Supp 84, delay found 22 USPQ2d 1108 (EDNY 1992) excusable)

MGM Pathe Communications Co. v. 6 months granted Pink Panther Patrol, 774 F Supp 869, 21 USPQ2d 1208 (SDNY 1991)

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Holding Case Delay Length on Motion

L.G.B., Inc. v. Gitano Group, Inc., 18 months denied 769 F Supp 1236 (SDNY 1991)

National Football League Player's 9 months denied Assn. v. National Football League Properties, Inc-, 1991 WL 79325 (SDNY 1991) (licensing dispute)

Century Time Ltd. v. Interchron, 6 months: suit brought denied 729 F Supp 366, 14 USPQ2d 1765 after 2 months; motion (SDNY 1990) filed 4 months later

Lanvin Inc. v. Colonia, 739 F Supp 7 months denied 182 (SDNY 1990) (licensing dispute)

Mathematica Policy Research, Inc. 10 months denied v. Addison-Wesley Publishing Co. Inc., 11 USPQ2d 1391 (SDNY 1989)

Comic Strip, Inc. v. Fox Tlevision 7 months denied Stations, Inc, 710 F Supp 976, 10 USPQ2d 1608 (SDNY 1989)

Kusan, Inc v. Alpha Distributors, 17-18 months denied Inc, 693 F Supp 1372, 7 USPQ2d 1211 (D Conn 1988)

Artemide Spa v. Grandlite Design 7 months granted in & Mfg. Co. Ltd., 672 F Supp 698, 4 part USPQ2d 1915 (SDNY 1987)

Great Lakes Mink Assn. v. Furrari, 20 months denied Inc, No. 86-6038 (SDNY 12/21/87) (available on LEXIS ®)

Ventura Travelware Inc. v. A to Z approximately 18 months granted Luggage Co., 1 USPQ2d 1552 (EDNY 1986)

Allen Organ Co. v. CBS, Inc., 230 7-8 months denied USPQ 479 (SDNY 1986)

Gear, Inc v. L.A. Gear California, 17-18 months denied Inc., 637 F Supp 1323, 229 USPQ 980 (SDNY 1986)

Nina Ricci S.A.R.L. v. Gemcraft 4 months from notice, denied Ltd., 612 F Supp 1520, 226 USPQ including 6 weeks from 575 (SDNY 1985) breakdown of settlement talks

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Holding Case Delay Length on Motion

Calvin Klein Co. v. Farah Mfg. Co. 7 years of use; plaintiffs denied Ina, 229 USPQ 795 (SDNY 1985) claim of less than 6 months notice rejected

I. Peiser Floors, Inc. v. I.J. Peiser's 2 years granted Sons, Inc., No. 81-3359 (SDNY 10/4/82) (available on LEXIS ®)

Exxon Corp. v. Xoil Energy approximately 12 months denied Resources, Inc., 552 F Supp 1008, 216 USPQ 634 (SDNY 1981)

Nike, Inc. v. Rubber Mfrs. Assn., several months granted 509 F Supp 919, 212 USPQ 225 (SDNY 1981)

C.B. Sports Inc v. Gaechter-Haber 6 months granted & Associates, Inc., 210 USPQ 597 (D Vt 1981)

Le Sportsac, Inc. v. Dockside 10 months denied Research, Inc., 478 F Supp 602, 205 USPQ 1055 (SDNY 1979)

Mego Corp. v. Mattel, Inc., 203 7 months after notice of denied USPQ 377 (SDNY 1978) intended use

Programmed Tax System, Inc. v. 4-5 months after actual denied Raytheon Co., 419 F Supp 1251, notice; 3 years after first 193 USPQ 435 (SDNY 1976) use

Le Cordon Bleu S.a.r.l. v. BPC 13 weeks denied Publishing Ltd., 327 F Supp 267, 170 USPQ 477 (SDNY 1971)

Gianni Cereda Fabrics, Inc v. 7 1/2 months denied Bazaar Fabrics, Inc., 173 USPQ 188 (SDNY 1971) (copyright and trademark claims)

Helena Rubenstein, Inc. v. Frances 20 months denied Denney, Inc., 286 F Supp 132, 159 USPQ 346 (SDNY 1968)

Stix Products, Inc. v. United preliminary injunction denied Merchants & Mfrs., Inc., 273 F motion filed 5 years after Supp 250, 154 USPQ 477 (SDNY suit 1967)

Goodyear Tire & Rubber Co. v. 8-9 years denied Topps of Hartford, Inc., 247 F Supp 899, 147 USPQ 240 (D Conn 1965)

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Holding Case Delay Length on Motion

Colgate-Palmolive Co. v. North 20 months granted American Chemical Corp., 238 F Supp 81, 144 USPQ 266 (SDNY 1964)

Gillette Co. v. Ed Pinaud, Inc., 178 4-5 years denied F Supp 618, 123 USPQ 531 (SDNY 1959) Third Circuit

S&R Corp. v. Jiffy Lube 3 1/2 months granted International, Inc., 968 F2d 371, 23 USPQ2d 1201 (CA 3 1993)

Rockland Mortgage Corp. v. 6 months: suit brought granted Shareholder's Funding Inc., 835 F after 2 months; motion Supp 182, 30 USPQ2d 1270 (D Del filed 4 months later 1993)

Accu Personnel, Inc. v. AccuStaff 9 months after knowledge granted Inc., 823 F Supp 1161, 27 USPQ2d of intended use, including 1801 (D Del 1993) 2 months after knowledge of expanded activity

W.L. Gore & Associates, Inc. v. 4 months after increased granted Tbtes, Inc., 23 USPQ2d 1091 (D Del scope of activity 1992)

Warner Lambert Co. v. McCrory's 12 months after first use; 5 denied Corp., 718 F Supp 389, 12 USPQ2d months after claimed 1884 (D NJ 1989) actual notice

American International Group, Inc. 3 years denied v. American International Airways, Inc., 726 F Supp 1470, 14 USPQ2d 1933 (ED Pa 1989)

Transfer Print Foils, Inc. v. 16 months: suit brought granted Transfer Print America, 720 F after 5 months; motion Supp 425, 12 USPQ2d 1753 (D NJ filed 11 months later 1989)

Country Floors, Inc. v. Gepner, 11 at least 2 years actual denied USPQ2d 1401 (ED Pa 1989) notice; up to 6 years constructive notice

Mars, Inc. v. H.P. Mayer Corp., approximately 19 months denied 1988 US Dist LEXIS® 9069 (D NJ 1988) (not for publication)

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Holding Case Delay Length on Motion

Reedco, Ina v. Hoffmann-La Roche, 17 months after actual denied Inc., 667 F Supp 1072, 2 USPQ2d notice; years after notice in 1994 (D NJ 1987) the press

Horizon Financial, F.A. v. Horizon 13 years use; 8 months granted Bancorp., 2 USPQ2d 1696 (ED Pa after geographic expansion 1987) of defendant's use

Louis Rich, Inc. v. Horace W. 2 months granted Longacre, Inc., 423 F Supp 1327, 195 USPQ 308 (ED Pa 1976)

Fourth Circuit

Wilson-Cook Medical, Ina v. 1 year denied Wiltex, Inc., 18 USPQ2d 1642 (CA 4 1991)

Rubbermaid Commercial Products, almost 2 years, including 8 granted Inc. v. Contico International, Inc., months after issuance of 836 F Supp 1247, 29 USPQ2d 1574 design patent (WD Va 1993) (design patent and trade dress case)

Nabisco Brands, Inc. v. Conusa 5-8 months from increase granted Corp., 722 F Supp 1287, 11 in scope of infringement USPQ2d 1788 (MD NC 1989), affd mem 892 F2d 74, 14 USPQ2d 1324 (CA 4 1989)

John Lemmon Films, Inc. v. 8 months denied Atlantic Releasing Corp., 617 F Supp 992, 227 USPQ 386 (WD NC 1985)

Fifth Circuit

TJM Corp. v. Xerox Corp., 25 17 months: suit brought denied USPQ2d 1067 (ED La 1992) after 14 months; motion filed 3 months later

American Rice, Inc. v. Arkansas 3 weeks after increased granted Rice Growers Cooperative Assn., level of infringement; 4 532 F Supp 1376, 214 USPQ 936 years after less (SD Tex 1982), affd 701 F2d 408, objectionable use 218 USPQ 489 (CA 5 1983)

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Holding Case Delay Length on Motion Sixth Circuit

Grand Lodge Fraternal Order of more than 2 years after granted Police v. Labor Council Michigan actual notice of infringing FOP, Inc., 1994 US App LEXISO use 30788 (CA 6 1994) (not for publication)

P.T.C. Brands, Inc. v. Conwood Co. 8 months: suit brought granted L.P., 28 USPQ2d 1895 (WD Ky after 2 months; motion 1993) filed 6 months later

Blockbuster Entertainment Group approximately 10 months granted v. Laylco, Inc., 869 F Supp 505 (ED after actual notice; use Mich 1994) commenced 4 years earlier

Central Benefits Mutual Insurance 18 months granted Co. v. Blue Cross & Blue Shield Assn., 711 F Supp 1423, 11 USPQ2d 1103 (SD Ohio 1989)

Frisch's Restaurants, Inc. v. Elby's at least 2 years granted Big Boy of Steubenville Inc., 514 F Supp 704, 213 USPQ 559 (SD Ohio 1981), affd 670 F2d 642, 214 USPQ 15 (CA 6 1982), cert denied 459 US 916 (1982) Seventh Circuit

Helene Curtis Industries, Inc. v. suit filed within weeks of granted Church & Dwight Co. Inc., 560 F2d notice; preliminary 1325, 195 USPQ 218 (CA 7 1977), injunction filed 13 months cert denied 434 US 1070, 197 later USPQ 592 (1978)

Ideal Industries, Inc. v. Gardner suit filed 7 months after granted Bender, Inc., 612 F2d 1018, 204 notice; preliminary USPQ 177 (CA 7 1979), cert denied injunction motion filed 8 447 US 924, 206 USPQ 864 (1980) months later

Vaughan Mfg. Co. v. Brikam 10 months granted International Inc., 814 F2d 346, 1 USPQ2d 2067 (CA 7 1987)

Thomas & Betts Corp. v. Panduit 10 months after rumor of granted Corp., 1994 US Dist LEXIS ® 18113 infringing product; 3 (ND Ill 1994) months after seeing product sample

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Holding Case Delay Length on Motion

Eldon Industries, Inc. v. 4 1/2 years: suit brought denied Rubbermaid, Inc., 735 F Supp 786, after 4 years; motion filed 17 USPQ2d 1280 (ND 111 1990) 6 1/2 months later

Stokely-Van Camp Inc. v. Coca- 3 months denied Cola Co., 2 USPQ2d 1225 (ND Ill 1987)

American Airlines Inc. v. A 1-800- a few months notice by granted A-M-E-R-I-C-A-N Corp., 622 F Supp high level employee; 673, 228 USPQ 225 (ND Ill 1985) earlier notice by sales personnel

Floralife, Inc. v. Floraline at least 3 years notice of granted International, Inc, 633 F Supp 108 limited use; less than 3 (ND Ill 1985); later proceeding 807 weeks after knowledge of F2d 518, 1 USPQ2d 1132 (CA 7 expansion of use 1986)

Universal City Studios, Inc v. 3 months granted Mueller Chemical Co., No. 81-5737 (ND Ill 11/24/82) (available on LEXIS®) Eighth Circuit

Mutual of Omaha Insurance Co. v. 12 months granted Novak, 775 F2d 247, 227 USPQ 801 (CA 8 1985) Ninth Circuit

Ocean Garden, Inc. v. Marktrade 11 months from notice of granted Co. Inc, 953 F2d 500, 21 USPQ2d intended sale, including 2- 1493 (CA 9 1991) 3 months from notice of actual sale

Creative 'Ibchnology Ltd. v. SRT 6 months after notice and granted Inn, 29 USPQ2d 1474 (ND Calif sending of protest letter 1993)

Sega Enterprises Ltd. v. Accolade 5 months: suit brought granted Inc., 785 F Supp 1392, 23 USPQ2d after 1 1/2 months; motion 1440 (ND Calif 1992) filed 3 1/2 months later

Lisa Frank, Inc. v. Impact 7 months after filing granted International, Inc., 799 F Supp 980 complaint; 3 months after (D Ariz 1992) knowledge of expanded line of infringing products

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Holding Case Delay Length on Motion

National Yellow Pages Service 3 years granted Assn. v. O'Connor Agency, Inc., 9 USPQ2d 1516 (CD Calif 1988)

Earth Technology Corp. v. 2 years granted Environmental Research & Technology, Inc., 222 USPQ 585 (CD Calif 1983)

Steinway & Sons v. Robert Demars 2 years granted & Friends, 210 USPQ 954 (CD Calif 1981) Tenth Circuit

GTE Corp. v. Williams, 731 F2d 3 years denied 676, 222 USPQ 803 (CA 10 1984)

Studio 1712, Inc. v. Etna Products 10 months: suit brought granted Co., 777 F Supp 844, 22 USPQ2d after 4 months; motion 1280 (D Colo 1991) filed 6 months later

Universal Motor Oils Co. v. Amoco 3 months granted Oil Co., 15 USPQ2d 1613 (D Kan 1990)

Paramount Pictures Corp. v. Video 15 months denied Broadcasting Systems, 724 F Supp 808, 12 USPQ2d 1862 (D Kan 1989)

Cyclonaire Corp. v. United States 6 months granted Systems, Inc., 209 USPQ 310 (D Kan 1980)

Volkswagenwerk, G.m.b.H. v. 17 months after lawsuit granted Frank, 198 F Supp 916, 131 USPQ 236 (D Colo 1961) Eleventh Circuit

Glen Raven Mills, Inc. v. Ramada 16 months from notice of denied, but International, Inc., 1994 WL intended use, including 11 court found 230365 (MD Fla 1994) months after notice of that actual use plaintiff had acted promptly

Bellsouth Advertising & Publishing 7-8 months granted Corp. v. Real Color Pages, Inc., 792 F Supp 775 (MD Fla 1991)

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Holding Case Delay Length on Motion

Original Appalachian Artworks, 5-10 months granted Inc. v. Topps Chewing Gum, Inc, 642 F Supp 1031, 231 USPQ 850 (ND Ga 1986) D.C. Circuit

National Rural Electric several weeks after granted Cooperative Assn. v. National knowledge of increased Agricultural Chemical Assn., 26 scope of infringement USPQ2d 1294 (DC DC 1992)

Delmatoff, Gerow, Morris, 12 months denied Langhans, Inc. v. Children's Hospital National Medical Center, 12 USPQ2d 1136 (DC DC 1989)

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®

Official Journal of the International Trademark Association

Dilution Redefined for the Year 2002 Jerre B. Swann, Sr.

The Incorporeal Curtain: The EEA Is Closed to Extra-Market Gray Goods Thomas Hays

Delay in Filing Preliminary Injunction Motions: Update 2002 Sandra Edelman

The Shape of Things to Come— Emerging Theories of Design Protection Jonathan E. Moskin

Brief of Amicus Curiae The International Trademark Association in Partial Support of Appellees/Cross-Appellants in Taylor Corporation v. Sigma Chi Fraternity and Sigma Chi Corporation

Vol. 92 May-June, 2002 No. 3 Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 57 of 135

Vol. 92 TMR 647

DELAY IN FILING PRELIMINARY INJUNCTION MOTIONS: UPDATE 2002

By Sandra Edelman*

I. INTRODUCTION The pace of life has noticeably quickened since 1995, when The Trademark Reporter® last published an update on the issue of delay in filing preliminary injunction motions.1 In the intervening seven years, the Internet has exploded as a medium of personal communication and business transactions, with brand names such as eSpeed and features such as Instant Messenger aptly conveying the near-instantaneous nature of interactions on the World Wide Web. As James Gleick observed in his book entitled Faster, “We have reached the epoch of the nanosecond. This is the heyday of speed.”2 In light of technological and cultural changes that have increasingly led to an “ASAP” business culture, it was interesting to investigate whether courts now apply a more stringent standard in determining whether a movant waited too long before seeking expedited injunctive relief.3 A review of the cases decided since 1995 reveals that standards have not materially changed, except in the Second Circuit, home of the proverbial “New York minute.”4 While the two previous articles on this subject expressed general rules for evaluating delay on a nationwide basis, this article will articulate two sets of general rules, one for cases within the Second

* Partner in the firm of Dorsey & Whitney LLP, New York, New York, Associate Member of the International Trademark Association; Original Articles Editor of The Trademark Reporter® and member INTA/CPR Panel of Neutrals. The author would like to thank Adam Sherman, associate at Dorsey & Whitney, for his assistance in preparing this article. 1. S. Edelman, “Delay in Filing Preliminary Injunction Motions: A Five Year Update,” 85 TMR 1 (1995) (updating R.L. Raskopf & S. Edelman, “Delay in Filing Preliminary Injunction Motions: How Long Is Too Long?” 80 TMR 36 (1990)). 2. J. Gleick, Faster—The Acceleration of Just About Everything (Pantheon Books 1999). 3. A plaintiff’s delay is one of the factors courts consider in deciding whether the “irreparable injury” element of the legal standard for obtaining a preliminary injunction has been met. See, e.g., Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 967, 35 U.S.P.Q.2d 1617, 1620 (2d Cir. 1995); GTE Corp. v. Williams, 731 F.2d 676, 678, 222 U.S.P.Q. 803, 805 (10th Cir. 1984). 4. Definitions of the expression “New York minute” include “the time it takes for the light in front of you to turn green and the guy behind you to honk his horn.” See W. Safire, N.Y. Times Section 6, p. 12, col. 3 (Oct. 19, 1986). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 58 of 135

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Circuit5 and the other for cases in the rest of the federal circuits in the country. The article will also discuss the differences that continue to exist among the various federal circuits as to whether prejudice to the defendant should be considered part of the delay analysis. The various explanations for delay that are deemed excusable by the courts will be examined, including: ongoing settlement negotiations; the need to investigate the alleged infringement; and changes in the scope or nature of the defendant’s infringement. Interestingly, a number of cases reported in the last seven years cite the litigation conduct of the plaintiff after commencement of the lawsuit as indicating a less than urgent need for relief, and these cases will be discussed as well. An updated Appendix to this article includes all of the cases from the earlier two articles, supplemented by cases decided since 1995. The cases are arranged by federal circuit, with the appellate cases in each circuit, if any, preceding the district court decisions. The Appendix includes trademark and unfair competition cases, and a few cases involving licensing disputes. Copyright decisions and cases involving both trademark and copyright issues that were decided based on the copyright claim are not included in this review. The periods of delay set forth in the Appendix have been measured from the date of plaintiff’s first actual notice of the defendant’s infringement (or a date of constructive notice determined by the court), to the date when the preliminary injunction motion was filed. This method of measurement reflects the legal standard that “[a]ny delay attributable to a plaintiff must be measured from the time the plaintiff knew or should have known that infringement had ripened into a provable claim.”6 Some reported decisions incorrectly focus only on the delay that occurred between the time the plaintiff first filed suit and the time

5. Although the Second Circuit encompasses New York, Connecticut and Vermont, virtually all of the cases in this Circuit involving the issue of delay emanate from one of the four judicial districts in New York, with the greatest concentration of cases arising in the Southern District of New York. 6. See Big O Tires, Inc. v. Bigfoot 4x4, Inc., 167 F. Supp. 2d 1216, 1229 (D. Colo. 2001) (citing Kason Co. v. Exxon Corp., 209 F.3d 562, 570, 54 U.S.P.Q.2d 1413, 1419 (6th Cir. 2000); Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 777, 34 U.S.P.Q.2d 1822, 1825 (Fed. Cir. 1995); Standard Oil Co. v. Standard Oil Co., 252 F.2d 65, 116 U.S.P.Q. 176 (10th Cir. 1958)). Whether a plaintiff “should have known” earlier about an infringement is generally a question of whether a plaintiff was reasonably vigilant in monitoring the marketplace. In a case reported in 2000, the court observed somewhat quaintly (in light of the active enforcement of trademark owners’ rights on the Internet since the mid-1990s) that “The owner of a registered mark would not necessarily expect that it was likely to be infringed on the Internet and so police the Internet.” First Jewellery Company of Canada, Inc. v. Internet Shopping Network LLC, 53 U.S.P.Q.2d 1838, 1845 (S.D.N.Y. 2000). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 59 of 135

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it moved for preliminary injunctive relief,7 thus ignoring the equally relevant period of time that elapsed between the plaintiff’s first notice of the infringement and its decision to institute litigation. In this type of case, when the motion was filed much later than the complaint, both dates, where available, are used in the Appendix. It should also be noted that some cases involving the issue of delay in filing a preliminary injunction motion have been omitted because the period of delay was too difficult to measure based on the court’s recitation of facts.8 Finally, in reviewing the decisions listed in the Appendix, it is important to bear in mind that the delay by the plaintiff was usually only one of many issues considered by the court in deciding whether to grant or deny the motion for a preliminary injunction, although in a few cases the plaintiff’s delay was an influential factor in the denial of relief.9 Moreover, as noted in the first article in this series, when a case is weak on the merits, the court is more likely to find the plaintiff’s delay to be inexcusable, providing a clear and convenient reason for denying the relief requested.10 Conversely, when a defendant has acted intentionally or engaged in other egregious conduct, the court is likely to de-emphasize the issue of delay and be more tolerant of a plaintiff’s failure to move promptly.11

II. GENERAL STANDARDS FOR EVALUATING DELAY In cases outside of the Second Circuit, the following general rules apply:

7. See, e.g., GoTo.com v. Walt Disney Co., 202 F.3d 1199, 53 U.S.P.Q.2d 1652 (9th Cir. 2000). 8. E.g., Westchester Media v. PRL USA Holdings, Inc., 103 F. Supp. 2d 935 (S.D. Tex. 1998), aff’d in part and vacated and remanded in part, 214 F.3d 658, 55 U.S.P.Q.2d 1255 (5th Cir. 2000). 9. See, e.g., Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 968, 35 U.S.P.Q.2d 1617, 1621 (2d Cir. 1995); Krueger International, Inc. v. Nightingale, Inc., 915 F. Supp. 595, 613, 40 U.S.P.Q.2d 1334, 1348 (S.D.N.Y. 1996); Del-Rain Corp. v. Pelonis USA Ltd., 1995 WL 116043 *6 (W.D.N.Y. 1995). 10. Raskopf & Edelman, supra n. 1, 80 TMR at 44; Magnet Communications, LLC v. Magnet Communications, Inc., 2001 WL 1097965, *1 (S.D.N.Y. 2001); ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 345, 350 (S.D.N.Y. 2000). 11. Sunquest Information Systems, Inc. v. Park City Solutions, Inc., 130 F. Supp. 2d 680, 697 (W.D. Pa. 2000); Porsche Cars North America, Inc. v. Manny’s Porshop, Inc., 972 F. Supp. 1128, 1132-33, 43 U.S.P.Q.2d 1475, 1479 (N.D. Ill. 1997); Bulova Corp. v. Bulova Do Brasil Com. Rep. Imp. & Exp. Ltda., 144 F. Supp. 2d 1329, 1332, 59 U.S.P.Q.2d 1077, 1079 (S.D. Fla. 2001). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 60 of 135

650 Vol. 92 TMR (1) A delay of less than six months is usually considered acceptable,12 unless there is a strong showing of prejudice to the defendant;13 (2) Between six and twelve months, the decisions vary, although it is not uncommon to see preliminary injunction motions granted notwithstanding delays of eight to twelve months;14 and (3) In most cases involving a delay of a year or longer, preliminary injunctive relief is denied,15 except where intentional infringement or other objectionable conduct by the defendant overcomes the adverse effect of the movant’s extended delay.16 In cases within the Second Circuit, the following generalizations apply: (1) A delay of less than three months is usually acceptable;17 (2) Between three and six months, the decisions vary;18

12. See, e.g., Montblanc-Simplo GMBH v. Staples, Inc., 172 F. Supp. 2d 231 (D. Mass. 2001); Avent America, Inc. v. Playtex Products, Inc., 68 F. Supp. 2d 920 (N.D. Ill. 1999); Philip Morris, Inc. v. Allen Distributors, Inc., 48 F. Supp. 2d 844, 51 U.S.P.Q.2d 1013 (S.D. Ind. 1999); Anheuser-Busch, Inc. v. Customer Co., 947 F. Supp. 422, 39 U.S.P.Q.2d 1850 (N.D. Cal. 1996). 13. See, e.g., Packerware Corp. v. Corning Consumer Products Co., 895 F. Supp. 1438 (D. Kan. 1995). 14. Granting relief: Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 129 F. Supp. 2d 351, 57 U.S.P.Q.2d 1522 (D.N.J. 2000); Ty, Inc. v. Jones Group, Inc., 237 F.3d 891, 57 U.S.P.Q.2d 1617 (7th Cir. 2001); Ty, Inc. v. Softbelly’s, Inc., 2001 WL 125321 (N.D. Ill. 2001); Guess?, Inc. v. Tres Hermanos Inc., 993 F. Supp. 1277, 45 U.S.P.Q.2d 1179 (C.D. Cal. 1997); GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 53 U.S.P.Q.2d 1652 (9th Cir. 2000). Denying relief: Media3 Technologies, LLC v. Mail Abuse Prevention System, LLC, 2001 WL 92389 (D. Mass. 2001); McDonald’s Corp. v. Burger King Corp., 87 F. Supp. 2d 722, 54 U.S.P.Q.2d 1507 (E.D. Mich. 1999); Reins of Life, Inc. v. Vanity Fair Corp., 5 F. Supp. 2d 629, 45 U.S.P.Q.2d 1854 (N.D. Ind. 1997); RWT Corp. v. Wonderware Corp., 931 F. Supp. 583 (N.D. Ill. 1996); Golden Bear International, Inc. v. Bear U.S.A., Inc., 969 F. Supp. 742, 42 U.S.P.Q.2d 1283 (N.D. Ga. 1996). 15. Fritz v. Arthur D. Little, Inc., 944 F. Supp. 95, 41 U.S.P.Q.2d 1352 (D. Mass. 1996); Amicus Communications, L.P. v. Hewlett-Packard Co., 1999 WL 495921 (W.D. Tex. 1999); Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc., 182 F.3d 598, 51 U.S.P.Q.2d 1373 (8th Cir. 1999); Fogerty v. Poor Boy Productions, Inc., 124 F.3d 211 (9th Cir. 1997) (unpublished); but see Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 54 U.S.P.Q.2d 1577 (3d Cir. 2000), cert. denied, 531 U.S. 1071, 121 S. Ct. 760 (2001); Ty, Inc. v. Publications Intern., Ltd., 81 F. Supp. 2d 899 (N.D. Ill. 2000). 16. Porsche Cars North America, Inc. v. Manny’s Porshop, Inc., 972 F. Supp. 1128, 43 U.S.P.Q.2d 1475 (N.D. Ill. 1997); Bulova Corp. v. Bulova Do Brasil Com. Rep. Imp. & Exp. Ltda., 144 F. Supp. 2d 1329, 59 U.S.P.Q.2d 1077 (S.D. Fla. 2001). 17. See, e.g., First Jewellery Co. of Canada, Inc. v. Internet Shopping Network LLC, 53 U.S.P.Q.2d 1838 (S.D.N.Y. 2000); Marshak v. Thomas, 1998 WL 476192 (E.D.N.Y. 1998); Ryan v. Vulpine Stamp Co., 107 F. Supp. 2d 369 (S.D.N.Y. 2000); Tactica International, Inc. v. Atlantic Horizon International, Inc., 154 F. Supp. 2d 586 (S.D.N.Y. 2001). 18. Granting relief: see, e.g., Lexington Management Corp. v. Lexington Capital Partners, 10 F. Supp. 2d 271 (S.D.N.Y. 1998); Firma Melodiya v. ZYX Music GmbH, 882 F. Supp. 1306 (S.D.N.Y. 1995); Yurman Design Inc. v. Diamonds and Time, 169 F. Supp. 2d 181 (S.D.N.Y. 2001). Denying relief: see, e.g., Magnet Communications, LLC v. Magnet Communications, Inc., 2001 WL 1097965 (S.D.N.Y. 2001); Greenpoint Financial Corp. v. Sperry & Hutchinson Co., 116 F. Supp. 2d 405 (S.D.N.Y. 2000); ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 345 (S.D.N.Y. 2000); Bear U.S.A., Inc. v. A.J. Sheepskin & Leather Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 61 of 135

Vol. 92 TMR 651 (3) For cases in which the delay is between six and twelve months, there is a significant risk that the motion will be denied;19 and (4) In light of the above, any plaintiff should carefully consider the high risks and attendant extra fees and costs of seeking preliminary injunctive relief from a New York federal court when the delay is greater than one year.20

III. THE SECOND CIRCUIT’S STRICTER STANDARD It is now quite risky to file a preliminary injunction motion in the Second Circuit if the plaintiff has delayed more than three months from the date it first had notice of the defendant’s infringement. Before 1995, there were a few cases in which preliminary injunctive relief was denied when the delay was four or five months,21 and one or two cases denying relief when the delay was three months or less.22 But it was also not unusual to have a motion for injunctive relief granted by a court in the Second Circuit when the plaintiff delayed in taking action for periods ranging from six to nine months.23 Since 1995, a number of cases in the Second Circuit have applied a very strict standard in evaluating the plaintiff’s delay,

Outerwear, Inc., 909 F. Supp. 896, 38 U.S.P.Q.2d 1640 (S.D.N.Y. 1995); Cheng v. Dispeker, 35 U.S.P.Q.2d 1493 (S.D.N.Y. 1995). 19. Since 1995, all of the cases in the Second Circuit involving delays ranging from six to twelve months have denied preliminary injunctive relief. See, e.g., Media Group, Inc. v. Ontel Products Corp., 2001 WL 169776 (D. Conn. 2001); Marcy Playground, Inc. v. Capitol Records, Inc., 6 F. Supp. 2d 277 (S.D.N.Y. 1998); Krueger International, Inc. v. Nightingale Inc., 915 F. Supp. 595, 40 U.S.P.Q.2d 1334 (S.D.N.Y. 1996); Swanson v. Georgetown Collection, Inc., 1995 WL 72717 (N.D.N.Y. 1995). Prior to 1995, however, there are cases in which preliminary injunctive relief was granted notwithstanding delays of six to nine months. See infra n. 23. 20. See, e.g., Ushodaya Enterprises, Ltd. v. V.R.S. Intern., Inc., 47 U.S.P.Q.2d 1223 (S.D.N.Y. 1998); Museum Boutique Intercontinental, Ltd. v. Picasso, 880 F. Supp. 153 (S.D.N.Y. 1995). 21. Nina Ricci S.A.R.L. v. Gemcraft Ltd., 612 F. Supp. 1520, 226 U.S.P.Q. 575 (S.D.N.Y. 1985); Programmed Tax System, Inc. Raytheon Co., 419 F. Supp. 1251, 193 U.S.P.Q. 435 (S.D.N.Y. 1976). 22. See Le Cordon Bleu S.a.r.l. v. BPC Publishing Ltd., 327 F. Supp. 267, 170 U.S.P.Q. 477 (S.D.N.Y. 1971) (denying relief when there was a 13 week delay). As previously noted in the first article on this subject, the decision in Citibank N.A. v. Citytrust, 756 F.2d 273, 275, 225 U.S.P.Q. 708, 710 (2d Cir. 1985), has often been cited as a case involving a ten week delay; in fact, Citibank had at least nine months notice of the defendant’s allegedly infringing activities. See Raskopf & Edelman, supra n. 1, 80 TMR at 48. 23. 6 to 9 months: Harlequin Enterprises Ltd. v. Gulf & Western Corp., 644 F.2d 946, 210 U.S.P.Q. 1 (2d Cir. 1981); Mastercard International, Inc. v. Sprint Communications Co., 30 U.S.P.Q.2d 1963 (S.D.N.Y. 1994); Kraft General Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 31 U.S.P.Q.2d 1094 (S.D.N.Y. 1993); MGM Pathe Communications Co. v. Pink Panther Patrol, 774 F. Supp. 869, 21 U.S.P.Q.2d 1208 (S.D.N.Y. 1991); C.B. Sports Inc. v. Gaechter-Haber & Associates, Inc., 210 U.S.P.Q. 597 (D. Vt. 1981). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 62 of 135

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denying relief when the delay was three to six months in length.24 The stringency of the New York approach is starkly demonstrated in Bear U.S.A., Inc. v. A.J. Sheepskin & Leather Outerwear, Inc.,25 a 1995 decision by Judge Lewis Kaplan of the Southern District of New York, involving the plaintiff’s efforts to protect its BEAR trademark for outerwear, jeans and boots from infringing use by the defendant on a variety of apparel products.26 The facts concerning the plaintiff’s alleged delay in this case are quite complicated: the defendant introduced various infringing products at different times and the parties vigorously disputed what the plaintiff knew about each of the defendant’s products and when it knew it. Ultimately, however, Judge Kaplan determined that (1) the plaintiff knew in June and July 1995 that defendant was the source of BEAR jeans and shirts that plaintiff had previously seen on the market; (2) plaintiff confirmed that defendant was the source of BEAR light jackets in August 1995; and (3) plaintiff became aware of defendant’s BEAR boots in September 1995.27 The plaintiff filed a complaint in late September 1995 and moved for preliminary injunctive relief in mid-October 1995.28 Based on this factual record, the court found that plaintiff had not unreasonably delayed with respect to defendant’s sale of boots (one month delay) and jackets (two month delay), and thus granted preliminary injunctive relief as to these products.29 However, the court held that because the plaintiff had been aware of defendant’s infringing jeans for nearly four months and the shirts for approximately three months, the “plaintiff’s lack of diligence militates against enjoining defendants from selling those items pending a prompt trial.”30 The court reached this conclusion notwithstanding a specific finding that the defendant’s pants and shirts were likely to cause confusion with plaintiff’s products,31 so there is no question that the plaintiff’s delay of three to four months as to these two products was the determining factor in the denial of relief. Three years later in Gidatex, S.R.L. v. Campaniello Imports, Ltd.,32 the court cited Judge Kaplan’s opinion in Bear U.S.A. and held that “courts typically decline to grant preliminary injunctions

24. See supra n. 18. 25. 909 F. Supp. 896 (S.D.N.Y. 1995). 26. Id. at 902. 27. Id. 28. Id. 29. Id. at 910. 30. Id. 31. Id. 32. 13 F. Supp. 2d 417 (S.D.N.Y. 1998). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 63 of 135

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in the face of unexplained delays of more than two months.”33 As an initial matter, it was not even necessary for the court to enunciate such a rigid standard because the plaintiff’s delay in Gidatex exceeded two years.34 Moreover, even assuming the Gidatex court was taking into account cases only within the Second Circuit,35 the observation that it is “typical” for courts to deny motions when the delay is more than two months is still not accurate because there were, at the time Gidatex was decided, a number of cases within the Second Circuit that had granted preliminary injunction motions when the plaintiff’s delay exceeded three months.36 In addition, while the Gidatex court cited Century Time Ltd. v. Interchron Ltd.37 as an example of a case in which relief was denied when the delay was “over two months,”38 Interchron involved a total delay of six months. The plaintiff in Interchron brought suit two months after learning of the defendant’s infringement but did not file its preliminary injunction motion until four months later.39 Similarly, the Gidatex court cited Comic Strip, Inc. v. Fox Television Stations, Inc.40 as having involved a three month delay,41 when in fact the plaintiff in that case delayed a total of seven months between its first notice of the infringement and the motion for a preliminary injunction.42 Since Bear and Gidatex were decided, a number of cases in New York’s federal district courts have denied relief when the plaintiff’s delay was only three to four months,43 a standard much

33. Id. at 419 (emphasis added). 34. Id. at 419-20. 35. Note, however, that the Gidatex opinion included a “But see” cite to a Ninth Circuit appellate decision, Gilder v. PGA Tour, Inc., 936 F.2d 417, 423 (9th Cir. 1991), in which a four month delay was upheld as reasonable. 36. Harlequin Enterprises Ltd. v. Gulf & Western Corp., 644 F.2d 946, 210 U.S.P.Q. 1 (2d Cir. 1981); Mastercard International, Inc. v. Sprint Communications Co., 30 U.S.P.Q.2d 1963 (S.D.N.Y. 1994); Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F. Supp. 1339, 33 U.S.P.Q.2d 1961 (E.D.N.Y. 1994); Kraft General Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 31 U.S.P.Q.2d 1094 (S.D.N.Y. 1993); MGM Pathe Communications Co. v. Pink Panther Patrol, 774 F. Supp. 869, 21 U.S.P.Q.2d 1208 (S.D.N.Y. 1991); Ventura Travelware, Inc. v. A to Z Luggage Co., 1 U.S.P.Q.2d 1552 (E.D.N.Y. 1986). 37. 729 F. Supp. 366, 14 U.S.P.Q.2d 1765 (S.D.N.Y. 1990). 38. 13 F. Supp. 2d at 419. 39. 729 F. Supp.at 367-68, 14 U.S.P.Q.2d at 1766-67. 40. 710 F. Supp. 976, 10 U.S.P.Q.2d 1608 (S.D.N.Y. 1989). 41. 13 F. Supp. 2d at 419. 42. 710 F. Supp. at 981, 10 U.S.P.Q.2d at 1613; 13 F. Supp. 2d at 419 (the three month period cited by the Gidatex court referred only to the time between the last settlement correspondence between the parties and the initiation of the legal action). 43. See, e.g., Magnet Communications, LLC v. Magnet Communications, Inc., 2001 WL 1097965 (S.D.N.Y. 2001); Greenpoint Financial Corp. v. Sperry & Hutchinson Co., 116 F. Supp. 2d 405 (S.D.N.Y. 2000); ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 345 (S.D.N.Y. 2000). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 64 of 135

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more demanding than that applied in other circuits.44 Remarkably, as well, given the much longer periods of delay that have been deemed acceptable in other circuits, the courts in New York frequently expect a plaintiff who has delayed only two to three months to have a good excuse as to why it did not move for relief sooner. For example, in Marshak v. Thomas,45 a case involving the defendant’s unauthorized performances using the name “The Drifters,” the court initially found that a “nearly two-month delay in seeking preliminary injunctive relief militates against the finding of irreparable harm,”46 but then held that the delay was excusable because the plaintiff had, during the two-month period, sent a demand letter to the defendant and had contacted the venues where the defendant was scheduled to perform in order to obtain relief there.47 Likewise, in Ryan v. Volpone Stamp Co.,48 a case involving a dispute over a license granted by pitcher Nolan Ryan to a merchandising company, the plaintiff delayed a mere ten weeks in moving for a preliminary injunction.49 Given the brevity of the delay, the court could have merely rejected out of hand the defendant’s argument that Ryan’s claim of irreparable harm was undermined by the ten-week delay in seeking relief. Instead, the court unnecessarily justified its decision by reciting that Ryan had sent two cease and desist letters during this period and, at the defendant’s request, postponed filing the motion only after the defendant signed a stipulation providing that the deferral of the motion would not be cited by the defendant against Ryan.50

IV. PREJUDICIAL RELIANCE AS A FACTOR IN THE DELAY ANALYSIS For many years, the various federal circuits have differed as to whether prejudicial reliance by the defendant is an element of the delay analysis.51 In a 1985 decision, Majorica, S.A. v. R.H. Macy &

44. See supra n. 12. 45. 1998 WL 476192 (E.D.N.Y. 1998). 46. Id. at *12. 47. Id. 48. 107 F. Supp. 2d 369 (S.D.N.Y. 2000). 49. Id. at 404. 50. Id. at 404-05; see also General Cigar Co. v. G.D.M. Inc., 988 F. Supp. 647, 662-63 (S.D.N.Y. 1997) (noting plaintiff’s exchange of correspondence with the defendant and receipt of additional information about the defendant’s activities); Les Ballets Trockadero de Monte Carlo, Inc. v. Trevino, 945 F. Supp. 563, 574 (S.D.N.Y. 1996) (plaintiff sent a cease and desist letter and awaited the return of its dance troupe from Japan before taking any action against the defendants that would compromise the Japan engagement). 51. See Raskopf & Edelman, supra n. 1, 80 TMR at 40-42. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 65 of 135

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Co.,52 the Second Circuit held that lack of diligence in moving for preliminary relief, even absent any prejudicial reliance by the defendant, may “preclude the granting of preliminary injunctive relief, because it goes primarily to the issue of irreparable harm rather than occasioned prejudice.”53 In contrast, the Seventh and the Third Circuits have considered the prejudicial reliance by the defendant to be an essential part of the delay analysis.54 The lack of uniformity among the various circuit courts as to the relevance of the defendant’s prejudicial reliance continues to be shown in cases reported during the past seven years. Indeed, a 1997 district court decision in the Seventh Circuit, Philip Morris, Inc. v. Allen Distributors, Inc.,55 explicitly acknowledged that it was not following the Second Circuit’s position, holding instead that a plaintiff’s delay would undercut the showing of irreparable injury only if the delay “lulled [the defendant] into a false sense of security or ... [the defendant] acted in reliance on the plaintiff’s delay.”56 Cases in the Third57 and Tenth58 Circuits as well evaluate prejudice to the defendant as part of the delay analysis. Cases in the Second Circuit continue to hold that in assessing a plaintiff’s delay in filing a preliminary injunction motion, prejudice to the defendant is not a required element of the analysis.59

V. EXCUSABLE AND INEXCUSABLE DELAY As set forth in the initial article on preliminary injunction and delay in 1990, the reasons why a plaintiff has waited to seek relief may be as important as the length of the delay, and if the plaintiff has a good explanation for waiting, the delay will be deemed excusable. 60

52. 762 F.2d 7, 8, 226 U.S.P.Q. 624, 624 (2d Cir. 1985). 53. Id. 54. Raskopf & Edelman, supra n. 1, 80 TMR at 41 n. 19. 55. 48 F. Supp. 2d 844, 51 U.S.P.Q.2d 1013 (S.D. Ind. 1997). 56. Id. at 854, 51 U.S.P.Q.2d at 1020 (quoting Vaughan Manufacturing Co. v. Brikam International, Inc., 814 F.2d 346, 351 (7th Cir. 1987)); see also Ty, Inc. v. Jones Group Inc., 237 F.2d 891, 903, 57 U.S.P.Q.2d 1617 (7th Cir. 2001). 57. See Sunquest Information Systems, Inc. v. Park City Solutions, Inc., 130 F. Supp. 2d 680, 697 (W.D. Pa. 2000). 58. See Big O Tires, Inc. v. Bigfoot 4x4, Inc., 167 F. Supp. 2d 1216, 1228 (D. Colo. 2001). 59. See, e.g., Del-Rain Corp. v. Pelonis USA Ltd., 1995 WL 116043, *6 (S.D.N.Y. 1995); Swanson v. Georgetown Collection, Inc., 1995 WL 72717, *9 (S.D.N.Y. 1995); cf. Gidatex, S.R.L. v. Campaniello Imports, Ltd., 13 F. Supp. 2d 417, 419 n. 1 (S.D.N.Y. 1998) (While a finding of prejudice is not required before a request for a preliminary injunction can be denied on grounds of inexcusable delay, “the existence of prejudice to the non-movant caused by the movant’s delay is also a relevant factor.”). 60. Raskopf & Edelman, supra n. 1, 80 TMR at 50-60. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 66 of 135

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A. Settlement Negotiations Consistently over the past twelve years, courts have accepted the explanation that a plaintiff delayed because it was attempting to negotiate a settlement of the matter.61 The court recently observed in Big O Tires, Inc. v. Bigfoot 4x4, Inc.,62 “As a matter of public policy, the law favors and encourages settlements. The settlement of actions should be fostered to avoid protracted, wasteful and expensive litigation. Particularly in complex cases, the litigants should be encouraged to determine their respective rights between themselves.”63 Accordingly, the court held that delays resulting from good faith attempts to negotiate a settlement would not undercut the showing of irreparable harm. Consistent with this judicial philosophy, many cases throughout the different judicial circuits have held that the good faith conduct of settlement negotiations will excuse a delay in seeking preliminary injunctive relief,64 even when the negotiations are protracted in length or conducted at a leisurely pace. Once settlement talks break down, however, the plaintiff is expected to seek relief promptly. The “leisurely” approach to settlement negotiations is illustrated by the plaintiff’s conduct in Times Mirror Magazines, Inc. v. Las Vegas Sports News, LLC,65 a case in which the Third Circuit held that the plaintiff’s fifteen-month delay “attributable to negotiations between the parties” was acceptable and did not rebut the plaintiff’s showing of irreparable injury.66 While the appellate decision in this case is short of the details of exactly what the plaintiff was doing during these fifteen months, according to the lower court opinion in Times Mirror,67 the plaintiff learned of the defendant’s infringement in August 1997, sent a cease and desist letter one month later, attempted to negotiate a settlement for the next thirteen months until October 1998, and then continued to

61. Edelman, supra n. 1, 85 TMR at 6-7. 62. 167 F. Supp. 2d 1216 (D. Colo. 2001). 63. Id. at 1229 (citations omitted). 64. Lexington Management Corp. v. Lexington Capital Partners, 10 F. Supp. 2d 271, 277 n. 3 (S.D.N.Y. 1998); Avent America, Inc. v. Playtex Products, Inc., 68 F. Supp. 2d 920, 933 (N.D. Ill. 1999); Marshak v. Thomas, 1998 WL 476192, *12 (E.D.N.Y. 1998); eBay, Inc. v. Bidder’s Edge, Inc., 100 F. Supp. 2d 1058, 56 U.S.P.Q.2d 1856 (N.D. Cal. 2000); Guess?, Inc. v. Tres Hermanos, Inc., 993 F. Supp. 1277, 45 U.S.P.Q.2d 1179 (C.D. Cal. 1997); cf. Mobilificio San Giacomo S.p.A. v. Stoffi, 1997 WL 699299 (D. Del. 1997) (finding that the plaintiff’s delay was in good faith because it allowed defendants time to discontinue use of the “San Giacomo” mark.). 65. 212 F.3d 157, 54 U.S.P.Q.2d 1577 (3d Cir. 2000). 66. Id. at 169, 54 U.S.P.Q.2d at 1584. 67. 50 U.S.P.Q.2d 1454 (E.D. Pa. 1999). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 67 of 135

Vol. 92 TMR 657 investigate the matter for another several weeks before filing suit.68 Similarly, the Illinois district court in Ty, Inc. v. Publications International, Ltd.69 held that the conduct of settlement negotiations over a fourteen-month period “does not impinge on the showing of irreparable injury.”70 Lesser, but still extended periods of settlement negotiations of nine months and eight months, respectively, were permitted by the California district court in Guess?, Inc. v. Tres Hermanos, Inc.71 and by the Massachusetts district court in Boustany v. Boston Dental Group, Inc.72 As noted, once it becomes apparent that a settlement is not achievable or the talks break down, a plaintiff may be faulted if it delays further in filing a preliminary injunction motion. For example, in New Dana Perfumes Corp. v. New Tinkerbell, Inc.,73 the court criticized the plaintiff, among other reasons, for letting five months lapse after the end of “active negotiations” before moving for relief.74 Lesser delays of two months from the cessation of settlement negotiations were cited by the courts in Marcy Playground, Inc. v. Capital Records, Inc.75 and Swanson v. Georgetown Collection, Inc.76 as a ground for denying preliminary injunctive relief.

B. Investigation of the Infringement As the Second Circuit has held, “a delay caused by the plaintiff’s good faith efforts to investigate an infringement does not rebut the presumption of irreparable harm.”77 Of course, there must be some material unknown facts that need to be investigated.78 If such a factual showing can be made, a court will

68. Id. at 1456-57. 69. 81 F. Supp. 2d 899 (N.D. Ill. 2000). 70. Id. at 903-04. 71. 993 F. Supp. 1277, 1286, 45 U.S.P.Q.2d 1179, 1187 (C.D. Cal. 1997). 72. 42 F. Supp. 2d 100, 112 (D. Mass. 1999). 73. 131 F. Supp. 2d 616 (M.D. Pa. 2001). 74. Id. at 625. 75. 6 F. Supp. 2d 277, 281 (S.D.N.Y. 1998). 76. 1995 WL 27717 at *8 (N.D.N.Y. 1995). 77. Tom Doherty Associates, Inc. v. Saban Entertainment, Inc., 60 F.3d 27, 39, 35 U.S.P.Q.2d 1537, 1546 (2d Cir. 1995); see also Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 129 F. Supp. 2d 351, 368, 57 U.S.P.Q.2d 1522, 1535 (D.N.J. 2000); Philip Morris, Inc. v. Allen Distributors, Inc., 48 F. Supp. 2d 844, 854, 51 U.S.P.Q.2d 1013, 1023 (S.D. Ind. 1999). 78. See, e.g., Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 968, 35 U.S.P.Q.2d 1617, 1619 (2d Cir. 1995) (court noted that the evidence did not show that plaintiff’s delay was attributable to the pursuit of further investigation); Cheng v. Dispeker, Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 68 of 135

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commend a plaintiff for acting “as a responsible litigant should”79 by investigating the necessary facts and hiring a lawyer to advise on the viability of potential claims.80 Similarly, time taken to develop survey evidence in support of a motion for a preliminary injunction has also been recognized as a legitimate reason for a delay in seeking relief.81

C. Assessing the Severity of the Infringement The district court in Sunquest Information Systems, Inc. v. Park City Solutions, Inc.82 declined to “punish” a plaintiff for “failing to sue at a time when it had no idea about the scope or severity” of an alleged infringement.83 Likewise, the district court in Novartis Consumer Health84 did not penalize the plaintiff for waiting until the infringement had a “measurable impact” on the plaintiff’s market.85 Waiting to assess the commercial impact of the infringement can be risky, however. As the Second Circuit held in Tom Doherty Associates,86 a delay in seeking preliminary relief will rebut the presumption of irreparable injury when the “fair inference” can be drawn that the trademark owner initially “concluded that there was no infringement but later brought an action because of the strength of the commercial competition.”87

D. Change in the Scope or Nature of the Infringement A material change in the scope or nature of the defendant’s infringement can excuse a plaintiff’s decision not to move for a preliminary injunction when it first learned of the defendant’s use

35 U.S.P.Q.2d 1493, 1497 (S.D.N.Y. 1995) (plaintiffs “were aware of the extent of the infringement and did not need to investigate further before filing suit”). 79. Sunquest Information Systems, Inc. v. Park City Solutions, Inc., 130 F. Supp. 2d 680, 698 (W.D. Pa. 2000). 80. Id. 81. Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals, Inc. 129 F. Supp. 2d 351, 368, 57 U.S.P.Q.2d 1522, 1534 (D.N.J. 2000). 82. 130 F. Supp. 2d 680 (W.D. Pa. 2000). 83. Id. at 698 (citing Playboy Enterprises v. Chuckleberry Publishing, 486 F. Supp. 414, 434-35, 206 U.S.P.Q. 70, 87-88 (S.D.N.Y. 1980) (“[P]arties should not be encouraged to sue before a practical need to do so has been clearly demonstrated.”)). 84. 129 F. Supp. 2d 351, 57 U.S.P.Q.2d 1522 (D.N.J. 2000). 85. Id. at 368, 57 U.S.P.Q.2d at 1534. 86. 60 F.3d 27, 35 U.S.P.Q.2d 1537 (2d Cir. 1995); see also Krueger International, Inc. v. Nightingale Inc., 915 F. Supp. 595, 612-13, 40 U.S.P.Q.2d 1334 (S.D.N.Y. 1996) (the court criticized the plaintiff’s “nonchalance” in seeking relief and noted that the evidence suggested that “plaintiff did not begin to think about a trade dress infringement claim until it ... lost [a] contract [to the defendant and the defendant’s product began] appearing at trade shows—ie until [it] decided to take the competitive threat seriously.”) 87. 60 F.3d at 39, 35 U.S.P.Q.2d at 1546. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 69 of 135

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of an infringing mark.88 In the past seven years, however, a number of cases have rejected this argument because the plaintiff failed to prove that the defendant’s alleged infringement had in fact materially changed.89 In Amicus Communications, L.P. v. Hewlett-Packard Co.,90 the plaintiff sought to enjoin the defendant’s use of the mark PAVILION in connection with a line of computers that featured software to facilitate Internet access. In response to the defendant’s argument that plaintiff had known of its computers for more than three years before seeking a preliminary injunction, the plaintiff contended that the defendant’s product had initially been promoted as a multimedia/game computer and that the defendant had only recently begun expanding its market by promoting the Internet access features of the product.91 The court found that while the defendant’s product had in fact been marketed initially as a multimedia computer, it was unrebutted that the product could always access the Internet, and thus the delay was not excusable.92

E. The Preliminary Injunction Motion as a Tactical Maneuver Timing a preliminary injunction motion to place one’s adversary at the maximum competitive disadvantage continues to be disfavored by the courts,93 as illustrated by the facts in The Media Group v. Ontel Products Corp.94 The plaintiff in this case learned of the defendant’s alleged infringement in May or June of 2000, filed the lawsuit in October 2000, and then waited until January 10, 2001, just days before the defendant intended to market its products at a major trade show, to file the motion for a

88. Edelman, supra n. 1, 85 TMR at 6-7. 89. See, e.g., New Dana Perfumes Corp. v. New Tinkerbell, Inc., 131 F. Supp. 2d 616, 630 (M.D. Pa. 2001) (“the evidence of this case does not support a finding of progressive encroachment in the context of plaintiff’s broad claims”); Del-Rain Corp. v. Pelonis USA Ltd., 1995 WL 116043 at *6 (plaintiff’s claim that the defendant “dramatically changed its packaging and advertising ... finds no support in the record”); Museum Boutique Intercontinental Ltd. v. Picasso, 880 F. Supp. 153, 165 (S.D.N.Y. 1995) (the previous objectionable uses of the Picasso trademarks and images was found “not qualitatively different” from the more recent uses that gave rise to the motion for a preliminary injunction). 90. 1999 WL 495921 (W.D. Tex. 1999). 91. Id. at *18. 92. Id. The plaintiff in Amicus also argued that its delay was excusable because it had sent the defendant a protest letter early on and had commenced opposition proceedings against the defendant’s mark in the United States Patent and Trademark Office. The court rejected this argument, holding that “opposing a claim for registration is not the same as filing a federal lawsuit to enjoin use.” Id. 93. See Edelman, supra n. 1, 85 TMR at 4-6. 94. 2001 WL 169776 (S.D.N.Y. 2001). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 70 of 135

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preliminary injunction.95 The court denied the motion and criticized what “appears to be tactical maneuvering by [plaintiff] to sit back and wait for what they believe to be timing most injurious to the procedural fairness for their adversaries.”96

VI. PLAINTIFF’S LITIGATION CONDUCT AS A FACTOR IN THE DENIAL OF RELIEF In a number of cases reported since 1995, the courts have denied motions for preliminary injunctive relief based on actions taken (or not taken) by the plaintiff once the suit was brought. The general lesson to be learned by these cases is that if a party asks the court for relief on an expedited basis, it must conduct itself in the litigation as if the need for judicial action is truly urgent. For example, in Federal Express Corp. v. Federal Espresso, Inc.,97 the plaintiff moved for a preliminary injunction against the defendant’s use of the name FEDERAL ESPRESSO for a coffee shop. The district court denied the motion and the plaintiff appealed.98 The Second Circuit affirmed the denial of preliminary injunctive relief, relying, in part, on the plaintiff’s post-motion conduct. As the court stated, “[A]lthough there apparently was no delay by Federal Express in bringing the present action, this Court may take into account whether or not a plaintiff has been assiduous in pursuing the litigation once started. At the oral argument of this appeal, which took place nearly a year after the district court denied the preliminary injunction motion, Federal Express informed us that nothing had been done in the district court to speed the proceedings toward an ultimate resolution of the merits. This seeming lack of urgency on the part of a plaintiff who has been denied interim relief tends to confirm the view that irreparable harm was not imminent.”99 Post-motion conduct was cited by the district court in Origins Natural Resources, Inc. v. Kotler.100 In this case, the plaintiff initially filed its complaint and moved for preliminary injunctive

95. Id. at *3 (quoting Century Time Ltd. v. Interchron Ltd., 729 F. Supp. 366, 368, 14 U.S.P.Q.2d 1765, 1767 (S.D.N.Y. 1990)). 96. 2001 WL 169776 at *1. 97. 201 F.3d 168, 53 U.S.P.Q.2d 1345 (2d Cir. 2000). 98. 201 F.3d at 170, 53 U.S.P.Q.2d at 1347. 99. Id. at 178, 53 U.S.P.Q.2d at 1353; see also Fabrication Enterprises, Inc. v. Hygenic Corp., 64 F.3d 53, 62, 35 U.S.P.Q.2d 1753, 1759 (2d Cir. 1995) (the plaintiff appealed both a grant of summary judgment to the defendant and the denial of its motion for a preliminary injunction; in remanding the matter back to the district court for reconsideration of the plaintiff’s motion for preliminary injunctive relief, the Second Circuit stated that the district court was entitled to consider whether the movant’s “failure to take an interlocutory appeal or to seek expedited handling of, or a stay pending, this appeal has a bearing on any contention that a preliminary injunction should be issued at this late date.”). 100. 2001 WL 492429 (S.D.N.Y. 2001). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 71 of 135

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relief in federal court in New Mexico in October 2000.101 The defendant then moved to dismiss for lack of personal jurisdiction, and the New Mexico court stayed the motion for a preliminary injunction, set a briefing schedule on the jurisdictional motion and ordered the parties to conduct discovery.102 In March 2001, the New Mexico court granted the defendant’s motion to dismiss and plaintiff immediately re-filed its complaint and preliminary injunction motion in federal court in New York.103 The New York district court denied the re-filed motion, holding that “plaintiff’s delay in filing its complaint, particularly combined with the fact that it was content to wait for the New Mexico court’s ruling on defendant’s motion, hardly supports a claim that its harm is imminent and irreparable.”104 Indeed, as the court observed, “Although plaintiff may not have been able to speed up the [New Mexico] court’s timetable, plaintiff was free to re-file its action in the Southern District of New York, thereby ensuring personal jurisdiction over the defendant and prompt attention to its complaints.”105 In another case, Magnet Communications, LLC v. Magnet Communications, Inc.,106 the movant for preliminary injunctive relief did not even initiate the litigation after it learned of the infringing mark but rather waited for the other party to bring an action for declaratory relief.107 The movant then delayed in filing the motion until twelve weeks after the declaratory judgment suit was brought and then, due to apparent discovery and scheduling difficulties, did not appear before the court for oral argument until seven months later.108 Based on this apparent lack of urgency after the declaratory action was filed, the court held that the “cumulative time delay certainly renders inoperative any presumption of irreparable injury.”109

101. Id. at *2. 102. Id. 103. Id. 104. Id. 105. Id. at n. 3. 106. 2001 WL 1097965 (S.D.N.Y. 2001). 107. Id. at *1. 108. Id.; see also The Media Group, Inc. v. Ontel Products Corp., 2001 WL 169776 at *3 (D. Conn. 2001) (among a variety of reasons for holding that the plaintiff inexcusably delayed in moving for preliminary relief, the court noted that the plaintiff initially contended that it needed the court to rule before a trade show took place, but then was willing to delay the hearing on the motion until after the trade show was over). 109. 2001 WL 1097965 at *1; see also Swanson v. Georgetown Collection, Inc., 1995 WL 72717, at *9 (N.D.N.Y. 1995) (the court held that the fact that plaintiff had no plausible excuse for filing the preliminary injunction motion until 2 1/2 months after filing the complaint undercut the showing of irreparable harm). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 72 of 135

662 Vol. 92 TMR An interesting reason for denying relief on the ground of delay was offered by the district court in McDonald’s Corp. v. Burger King Corp.,110 a case involving McDonald’s effort to enjoin Burger King’s use of the designation “Big Kid’s Meal.”111 At the time McDonald’s filed its motion for a preliminary injunction on July 8, 1999, it had an application pending in the United States Patent and Trademark Office (“USPTO”) to register “Big Kid’s Meal.” An office action rejecting the mark had been issued by the USPTO in March 1999. In support of its holding that McDonald’s had inexcusably delayed in asserting its rights, the court cited the fact that McDonald’s had waited until the end of the six-month window for responding to the office action (and one week before the preliminary injunction hearing in the case) to file its response in the USPTO. Thus, as in the cases discussed above, the court in McDonald’s focused not only on the length of time between the notice of infringement and the motion for preliminary relief, it also examined other actions by the movant after the suit was filed to assess whether expedited relief was truly warranted. These cases show that not only does a plaintiff have to act promptly in filing a preliminary injunction motion after it learns of an infringement, it must conduct itself thereafter in a fashion consistent with the request for expedited relief. If a plaintiff acts as if the matter is not particularly urgent, the court may tend to agree.

VII. CONCLUSION A plaintiff seeking preliminary injunctive relief must move promptly after becoming aware of acts of alleged infringement or unfair competition, or risk a finding that it has not established a threat of irreparable harm. No uniform standard exists, however, as to whether the plaintiff has moved promptly enough. Certainly in the Second Circuit, and particularly within the New York federal judicial districts, “promptly” means three months or less. Outside of the Second Circuit, delays up to six months will likely be considered acceptable, and even longer delays of six to twelve months may not necessarily disqualify the plaintiff from obtaining expedited relief. A court is more likely to excuse a plaintiff’s delay if it is attributable to settlement negotiations conducted actively and diligently, or if the plaintiff has a legitimate need to investigate the defendant’s infringement or develop evidence in support of the motion for a preliminary injunction. Finally, even after a plaintiff has commenced suit or filed a motion for preliminary relief, it must

110. 87 F. Supp. 2d 722, 54 U.S.P.Q.2d 1507 (E.D. Mich. 1999). 111. 87 F. Supp. 2d at 724, 54 U.S.P.Q.2d at 1508. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 73 of 135

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UPDATED APPENDIX 2002 FIRST CIRCUIT

HOLDING DELAY ON CASE LENGTH MOTION Montblanc-Simplo GMBH v. 2 months granted Staples, Inc., 172 F. Supp. 2d 231 (D. Mass. 2001) Media3 Technologies, LLC v. Mail 6 months denied Abuse Prevention System, LLC, 2001 WL 92389 (D. Mass. 2001) Boustany v. Boston Dental Group, 8 months granted Inc., 42 F. Supp. 2d 100 (D. Mass. 1999) Fritz v. Arthur D. Little, Inc., 944 At least 2 denied F. Supp. 95, 41 U.S.P.Q.2d 1352 (D. years Mass. 1996) constructive notice Supercuts, Inc. v. Super Clips, 18 10 months: granted U.S.P.Q.2d 1378 (D. Mass. 1990) suit brought after 1 month; motion filed 9 months later Calamari Fisheries, Inc. v. The 21 months granted Village Catch, Inc., 698 F. Supp. after first use; 994, 8 U.S.P.Q.2d 1953 (D. Mass. 1 month after 1988) expansion caused increased level of confusion Salt Water Sportsman, Inc. v. less than 6 granted B.A.S.S. Inc., 685 F. Supp. 12, 4 months U.S.P.Q.2d 1407 (D. Mass. 1987), as amended 5 U.S.P.Q.2d 1620 (D. Mass. 1987) Jordan K. Rand, Ltd. v. Lazoff 3 months granted Bros., Inc., 537 F. Supp. 587, 217 U.S.P.Q. 795 (D.P.R. 1982) SECOND CIRCUIT Tough Traveler, Ltd. v. Outbound 13 months vacating Products, 60 F.3d 964, 35 (complaint district U.S.P.Q.2d 1617 (2d Cir. 1995) filed after 9 court’s grant months) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 75 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Tom Doherty Associates, Inc. v. 4 months affirming Saban Entertainment, Inc., 60 F.3d district 27, 35 U.S.P.Q.2d 1537 (2d Cir. court’s grant 1995) King v. Innovation Books, 976 F.2d 11 months granted 824, 24 U.S.P.Q.2d 1435 (2d Cir. from 1992) knowledge of intended use, including 3 months from knowledge of actual use Majorica, S.A. v. R.H. Macy & Co., several years denied 762 F.2d 7, 226 U.S.P.Q. 624 (2d Cir. 1985) Citibank, N.A. v. Citytrust, 756 10 weeks after denied F.2d 273, 225 U.S.P.Q. 708 (2d Cir. direct notice of 1985) actual use; 9 months after notice of intended use in press; years after notice of use in another state Harlequin Enterprises Ltd. v. Gulf 6 months after granted & Western Corp., 644 F.2d 946, 210 notice of U.S.P.Q. 1 (2d Cir. 1981) intended use; 3 months after notice of actual use My-T-Fine Corp. v. Samuels, 69 2 years granted F.2d 76, 21 U.S.P.Q. 94 (2d Cir. 1934) Yurman Design Inc. v. Diamonds 4 months granted and Time, 169 F. Supp. 2d 181 (S.D.N.Y. 2001) Tactica Intern., Inc. v. Atlantic 1 month granted Horizon Intern., Inc., 154 F. Supp. 2d 586 (S.D.N.Y. 2001) Magnet Communications, LLC v. 3 months denied Magnet Communications, Inc., 2001 WL 1097965 (S.D.N.Y. 2001) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 76 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Media Group, Inc. v. Ontel Products 7-8 months denied Corp., 2001 WL 169776 (D. Conn. (complaint 2001) filed after 4-5 months) Origins Natural Resources, Inc. v. 4-6 months denied Kotler, 2001 WL 492429 (S.D.N.Y. 2001) Greenpoint Financial Corp. v. 4 months denied Sperry & Hutchinson Co., 116 F. Supp. 2d 405 (S.D.N.Y. 2000) Ryan v. Vulpine Stamp Co., 107 F. 2 months granted Supp. 2d 369 (S.D.N.Y. 2000) ImOn, Inc. v. ImaginOn, Inc., 90 F. 4 months denied Supp. 2d 345 (S.D.N.Y. 2000) First Jewellery Co. of Canada, Inc. 2 months granted v. Internet Shopping Network LLC, 53 U.S.P.Q.2d 1838 (S.D.N.Y. 2000) Gidatex, S.r.L. v. Campaniello more than 2 denied Imports, Ltd., 13 F. Supp. 2d 417, years (5-8 47 U.S.P.Q.2d 1701 (S.D.N.Y. 1998) months after termination of related litigation between parties) Lexington Management Corp. v. 5-6 months granted Lexington Capital Partners, 10 F. Supp. 2d 271 (S.D.N.Y. 1998)

Marcy Playground, Inc. v. Capitol 9 months denied Records, Inc., 6 F. Supp. 2d 277 (S.D.N.Y. 1998) Marshak v. Thomas, 1998 WL 2 months granted 476192 (E.D.N.Y. 1998) Ushodaya Enterprises, Ltd. v. almost 3 years denied V.R.S. Intern., Inc., 47 U.S.P.Q.2d at minimum 1223 (S.D.N.Y. 1998) General Cigar Co., Inc. v. G.D.M. 3 months granted Inc., 988 F. Supp. 647, 45 U.S.P.Q.2d 1481 (S.D.N.Y. 1997) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 77 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Les Ballets Trockadero de Monte 2 months granted Carlo, Inc. v. Trevino, 945 F. Supp. 563, 41 U.S.P.Q.2d 1109 (S.D.N.Y. 1996) Krueger International, Inc. v. 6-9 months denied Nightingale Inc., 915 F. Supp. 595 (S.D.N.Y. 1996) Bear U.S.A., Inc. v. A.J. Sheepskin 1-2 months for granted as to & Leather Outerwear, Inc., 909 F. some 1-2 month Supp. 896, 38 U.S.P.Q.2d 1640 infringing delay; denied (S.D.N.Y. 1995) products; 3-4 as to 3-4 months for month delay other infringing products Trustco Bank, Nat. Ass’n v. Glens 3 months denied (but Falls National Bank and Trust Co., delay found N.A., 903 F. Supp. 335 (N.D.N.Y. excusable) 1995) Firma Melodiya v. ZYX Music 3-4 months granted GmbH, 882 F. Supp. 1306 (S.D.N.Y. 1995) Museum Boutique Intercontinental, 14 years (15 denied Ltd. v. Picasso, 880 F. Supp. 153 months from (S.D.N.Y. 1995) alleged change in scope of infringement while standstill agreement in effect) Cheng v. Dispeker, 35 U.S.P.Q.2d 5 months denied 1493 (S.D.N.Y. 1995) Del-Rain Corp. v. Pelonis USA Ltd., 23 months denied 1995 WL 116043 (W.D.N.Y. 1995) Swanson v. Georgetown Collection, 8 months denied Inc., 1995 WL 72717 (N.D.N.Y. (complaint 1995) filed after 5 months) Mastercard International, Inc. v. 6-9 months granted Sprint Communications Co., 30 from (dicta) U.S.P.Q.2d 1963 (S.D.N.Y. 1994) knowledge of intended use Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 78 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Tommy Hilfiger U.S.A., Inc. v. 2-3 years from denied Siegfried & Parzifal, Inc., 31 notice of U.S.P.Q.2d 1222 (S.D.N.Y. 1994) initial elements of infringement Dial-A-Mattress Operating Corp. v. 3-4 years granted Mattress Madness, Inc., 841 F. Supp. 1339 (E.D.N.Y. 1994) Jordache Enterprises, Inc. v. Levi 4 years denied Strauss & Co., 841 F. Supp. 506 (S.D.N.Y. 1993) Kraft General Foods, Inc. v. Allied 7 months from granted Old English, Inc., 831 F. Supp. 123, publication of 31 U.S.P.Q.2d 1094 (S.D.N.Y. 1993) defendant’s mark Chase Manhattan Corp. v. 11 months: denied Northwestern Mutual Life, 1993 suit brought WL 60602 (S.D.N.Y. 1993) after 5 months; motion filed 6 months later Bausch & Lomb, Inc. v. Nevitt Sales 1 month after granted Corp., 810 F. Supp. 466, 26 increased U.S.P.Q.2d 1275 (W.D.N.Y. 1993) scope of infringement H.G.I. Marketing Services, Inc. v. 2-4 years denied Pepsico, Inc., 1992 WL 349675 (N.D.N.Y. 1992) American Direct Marketing v. Azad 3-6 months denied (but International, Inc., 783 F. Supp. 84, delay found 22 U.S.P.Q.2d 1108 (E.D.N.Y. 1992) excusable) MGM Pathe Communications Co. v. 6 months granted Pink Panther Patrol, 774 F. Supp. 869, 21 U.S.P.Q.2d 1208 (S.D.N.Y. 1991) National Football League Players 9 months denied Association v. National Football League Properties, Inc., 1991 WL 79325 (S.D.N.Y. 1991) (licensing dispute) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 79 of 135

Vol. 92 TMR 669

HOLDING DELAY ON CASE LENGTH MOTION Century Time Ltd. v. Interchron, 6 months: suit denied 729 F. Supp. 366, 14 U.S.P.Q.2d brought after 1765 (S.D.N.Y. 1990) 2 months; motion filed 4 months later Lanvin, Inc. v. Colonia, 739 F. 7 months denied Supp. 182 (S.D.N.Y. 1990) (licensing dispute) Mathematica Policy Research, Inc. 10 months denied v. Addison-Wesley Publishing Co. Inc., 11 U.S.P.Q.2d 1391 (S.D.N.Y. 1989) Comic Strip, Inc. v. Fox Television 7 months denied Stations, Inc., 710 F. Supp. 976, 10 U.S.P.Q.2d 1608 (S.D.N.Y. 1989) Kusan, Inc. v. Alpha Distributors, 17-18 months denied Inc., 693 F. Supp. 1372, 7 U.S.P.Q.2d 1211 (D. Conn. 1988) Artemide Spa v. Grandlite Design & 7 months granted in Mfg. Co., Inc., 672 F. Supp. 698, 4 part U.S.P.Q.2d 1915 (S.D.N.Y. 1987) Great Lakes Mink Assn. v. Furrari, 20 months denied Inc., No. 86-6038 (S.D.N.Y. 12/21/87), 1987 U.S. Dist. LEXIS 11800 Ventura Travelware, Inc. v. A to Z approximately granted Luggage Co., 1 U.S.P.Q.2d 1552 18 months (E.D.N.Y. 1986) Allen Organ Co. v. CBS, Inc., 230 7-8 months denied U.S.P.Q. 479 (S.D.N.Y. 1986) Gear, Inc. v. L.A. Gear California, 17-18 months denied Inc., 637 F. Supp. 1323, 227 U.S.P.Q. 980 (S.D.N.Y. 1986) Nina Ricci S.A.R.L. v. Gemcraft 4 months from denied Ltd., 612 F. Supp. 1520, 226 notice, U.S.P.Q. 575 (S.D.N.Y. 1985) including 6 weeks from breakdown of settlement talks Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 80 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Calvin Klein Co. v. Farah Mfg. Co., 7 years of use; denied Inc., 229 U.S.P.Q. 795 (S.D.N.Y. plaintiff’s 1985) claim of less than 6 months’ notice rejected I. Peiser Floors, Inc. v. I.J. Peiser’s 2 years granted Sons, Inc., No. 81-3359 (S.D.N.Y. 10/4/82), 1982 U.S. Dist. LEXIS 15465 Exxon Corp. v. Xoil Energy approximately denied Resources, Inc., 552 F. Supp. 1008, 12 months 216 U.S.P.Q. 634 (S.D.N.Y. 1981) Nike, Inc. v. Rubber Mfrs. Assn., several granted 509 F. Supp. 919, 212 U.S.P.Q. 225 months (S.D.N.Y. 1981) C.B. Sports, Inc. v. Gaechter-Haber 6 months granted & Associates, Inc., 210 U.S.P.Q. 597 (D. Vt. 1981) Le Sportsac, Inc. v. Dockside 10 months denied Research, Inc., 478 F. Supp. 602, 205 U.S.P.Q. 1055 (S.D.N.Y. 1979) Mego Corp. v. Mattel, Inc., 203 7 months after denied U.S.P.Q. 377 (S.D.N.Y. 1978) notice of intended use Programmed Tax System, Inc. 4-5 months denied Raytheon Co., 419 F. Supp. 1251, after actual 193 U.S.P.Q. 435 (S.D.N.Y. 1976) notice; 3 years after first use Le Cordon Bleu S.a.r.l. v. BPC 13 weeks denied Publishing Ltd., 327 F. Supp. 267, 170 U.S.P.Q. 477 (S.D.N.Y. 1971) Gianni Cereda Fabrics, Inc. v. 7 1/2 months denied Bazaar Fabrics, Inc., 173 U.S.P.Q. 188 (S.D.N.Y. 1971) (copyright and trademark claims) Helena Rubenstein, Inc. v. Frances 20 months denied Denney, Inc., 286 F. Supp. 132, 159 U.S.P.Q. 346 (S.D.N.Y. 1968) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 81 of 135

Vol. 92 TMR 671

HOLDING DELAY ON CASE LENGTH MOTION Stix Products, Inc. v. United preliminary denied Merchants & Mfrs., Inc., 273 F. injunction Supp. 250, 154 U.S.P.Q. 477 motion filed 5 (S.D.N.Y. 1967) years after suit Goodyear Tire & Rubber Co. v. 8-9 years denied Topps of Hartford, Inc. 247 F. Supp. 899, 147 U.S.P.Q. 240 (D. Conn. 1965) Colgate-Palmolive Co. v. North 20 months granted American Chemical Corp. 238 F. Supp. 81, 144 U.S.P.Q. 266 (S.D.N.Y. 1964) Gillette Co. v. Ed Pinaud, Inc., 178 4-5 years denied F. Supp. 618, 123 U.S.P.Q. 531 (S.D.N.Y. 1959) THIRD CIRCUIT Times Mirror Magazines, Inc. v. Las 14-15 months grant Vegas Sports News, L.L.C., 212 affirmed F.3d 157, 54 U.S.P.Q.2d 1577 (3d Cir. 2000), cert. denied, 531 U.S. 1071, 121 S. Ct. 760 (2001) Pappan Enterprises, Inc. v. 5 weeks reversed Hardee’s Food Systems, Inc., 143 district F.3d 800, 46 U.S.P.Q.2d 1769 (3d court’s denial Cir. 1998) S&R Corp. v. Jiffy Lube 3 1/2 months granted International, Inc., 968 F.2d 371, 23 U.S.P.Q.2d 1201 (3d Cir. 1993) J & J Snack Foods, Corp v. Nestle 10 months denied USA, Inc., 149 F. Supp. 2d 136 (complaint (D.N.J. 2001) filed after 2 months) New Dana Perfumes Corp. v. The 50 years (as to denied Disney Store, Inc., 131 F. Supp. 2d one claim); 9- 616 (M.D. Pa. 2001) 10 months (as to another claim) Sunquest Information Systems, Inc. 15 months granted v. Park City Solutions, Inc., 130 F. Supp. 2d 680 (W.D. Pa. 2000) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 82 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Novartis Consumer Health, Inc. v. 9 months (as granted Johnson & Johnson-Merck to claim Consumer Pharmaceuticals Co., 129 against F. Supp. 2d 351, 57 U.S.P.Q.2d product 1522 (D.N.J. 2000) name); 4 months (as to advertising claim) Mobilificio San Giacomo S.p.A. v. 6 months after granted Stoffi, 1997 WL 699299 (D. Del. filing suit (but 1997) 1 month after use of mark became unauthorized) Rockland Mortgage Corp. v. 6 months: suit granted Shareholder’s Funding Inc., 835 F. brought after Supp. 182, 30 U.S.P.Q.2d 1270 (D. 2 months; Del. 1993) motion filed 4 months later Accu Personnel, Inc. v. AccuStaff 9 months after granted Inc., 823 F. Supp. 1161, 27 knowledge of U.S.P.Q.2d 1801 (D. Del. 1993) intended use, including 2 months after knowledge of expanded activity W.L. Gore & Associates, Inc. v. 4 months after granted Totes, Inc., 23 U.S.P.Q.2d 1091 (D. increased Del. 1992) scope of activity Warner Lambert Co. v. McCrory’s 12 months denied Corp., 718 F. Supp. 389, 12 after first use; U.S.P.Q.2d 1884 (D.N.J. 1989) 5 months after claimed actual notice American International Group, Inc. 3 years denied v. American International Airways, Inc., 726 F. Supp. 1470, 14 U.S.P.Q.2d 1933 (E.D. Pa. 1989) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 83 of 135

Vol. 92 TMR 673

HOLDING DELAY ON CASE LENGTH MOTION Transfer Print Foils, Inc. v. 16 months: granted Transfer Print America, 720 F. suit brought Supp. 425, 12 U.S.P.Q.2d 1753 after 5 (D.N.J. 1989) months; motion filed 11 months later Country Floors, Inc. v. Gepner, 11 at least 2 denied U.S.P.Q.2d 1401 (E.D. Pa. 1989) years’ actual notice; up to 6 years’ constructive notice Mars, Inc. v. H.P. Mayer Corp., approximately denied 1988 U.S. Dist. LEXIS 9069 (D.N.J. 19 months 1988) (not for publication) Reedco, Inc. v. Hoffmann-La Roche, 17 months denied Inc., 667 F. Supp. 1072, 2 after actual U.S.P.Q.2d 1994 (D.N.J. 1987) notice; years after notice in the press Horizon Financial, F.A. v. Horizon 13 years use; 8 granted Bancorp., 2 U.S.P.Q.2d 1696 (E.D. months after Pa. 1987) geographic expansion of defendant’s use Louis Rich, Inc. v. Horace W. 2 months granted Longacre, Inc., 423 F. Supp. 1327, 195 U.S.P.Q. 308 (E.D. Pa. 1976) FOURTH CIRCUIT Wilson-Cook Medical, Inc. v. Wiltex, 1 year denied Inc., 18 U.S.P.Q.2d 1642 (4th Cir. 1991) Nabisco Brands, Inc. v. Conusa 5-8 months granted Corp., 722 F. Supp. 1287, 11 from increase U.S.P.Q.2d 1788 (M.D.N.C.) aff’d in scope of mem., 892 F.2d 74, 14 U.S.P.Q.2d infringement 1324 (4th Cir. 1989) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 84 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Rubbermaid Commercial Products, almost 2 granted Inc. v. Contico International, Inc., years, 836 F. Supp. 1247, 29 U.S.P.Q.2d including 8 1574 (W.D. Va. 1993) (design patent months after and trade dress case) issuance of design patent John Lemmon Films, Inc. v. 8 months denied Atlantic Releasing Corp., 617 F. Supp. 992, 227 U.S.P.Q. 386 (W.D.N.C. 1985) FIFTH CIRCUIT Amicus Communications, L.P. v. 2-3 years denied Hewlett-Packard Co., 1999 WL 495921 (W.D. Tex. 1999) TJM Corp. v. Xerox Corp., 25 17 months: denied U.S.P.Q.2d 1067 (E.D. La. 1992) suit brought after 14 months; motion filed 3 months later American Rice, Inc. v. Arkansas 3 weeks after granted Rice Growers Cooperative Assn., increased level 532 F. Supp. 1376, 214 U.S.P.Q. 936 of (S.D. Tex. 1982), aff’d, 701 F.2d 408, infringement; 218 U.S.P.Q. 489 (5th Cir. 1983) 4 years after less objectionable use SIXTH CIRCUIT McDonald’s Corp. v. Burger King 8-9 months denied Corp., 87 F. Supp. 2d 722, 54 U.S.P.Q.2d 1507 (E.D. Mich. 1999) P.T.C. Brands, Inc. v. Conwood Co. 8 months: suit granted L.P., 28 U.S.P.Q.2d 1895 (W.D. Ky. brought after 1993) 2 months; motion filed 6 months later Central Benefits Mutual Insurance 18 months granted Co. v. Blue Cross & Blue Shield Assn., 711 F. Supp. 1423, 11 U.S.P.Q.2d 1103 (S.D. Ohio. 1989) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 85 of 135

Vol. 92 TMR 675

HOLDING DELAY ON CASE LENGTH MOTION Frisch’s Restaurants, Inc. v. Elby’s at least 2 granted Big Boy of Steubenville Inc., 514 F. years Supp. 704, 213 U.S.P.Q. 559 (S.D. Ohio 1981), aff’d, 670 F.2d 642, 214 U.S.P.Q. 15 (6th Cir. 1982), cert. denied, 459 U.S. 916 (1982) SEVENTH CIRCUIT Ty, Inc. v. Jones Group, Inc., 237 at least 8 grant F.3d 891, 57 U.S.P.Q.2d 1617 (7th months affirmed Cir. 2001) (motion filed 8 months after complaint was filed) Ideal Industries, Inc. v. Gardner suit filed 7 granted Bender, Inc., 612 F.2d 1018, 204 months after U.S.P.Q. 177 (7th Cir. 1979), cert. notice; denied, 447 U.S. 924, 206 U.S.P.Q. preliminary 864 (1980) injunction motion filed 8 months later Helene Curtis Industries, Inc. v. suit filed granted Church & Dwight Co., Inc., 560 within weeks F.2d 1325, 195 U.S.P.Q. 218 (7th of notice; Cir. 1977), cert. denied, 434 U.S. preliminary 1070, 197 U.S.P.Q. 592 (1978) injunction filed 13 months later Vaughan Mfg. Co. v. Brikam 10 months granted International, Inc., 814 F.2d 346, 1 U.S.P.Q.2d 2067 (7th Cir. 1987) Floralife, Inc. v. Floraline at least 3 granted International, Inc., 633 F. Supp. years notice of 108 (N.D. Ill. 1985); later limited use; proceeding 807 F.2d 518, 1 less than 3 U.S.P.Q.2d 1132 (7th Cir. 1986) weeks after knowledge of expanison of use Ty, Inc. v. Softbelly’s, Inc., 2001 WL 10 months granted 125321 (N.D. Ill. 2001) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 86 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Ty, Inc. v. Publications Intern., 14 months granted Ltd., 81 F. Supp. 2d 899 (N.D. Ill. 2000) Avent America, Inc. v. Playtex 2-3 months granted Products, Inc., 68 F. Supp. 2d 920 (N.D. Ill. 1999) Philip Morris, Inc. v. Allen 5 months granted Distributors, Inc., 48 F. Supp. 2d 844, 51 U.S.P.Q.2d 1013 (S.D. Ind. 1999) Reins of Life, Inc. v. Vanity Fair 8-9 months denied Corp., 5 F. Supp. 2d 629, 45 U.S.P.Q.2d 1854 (N.D. Ind. 1997) Porsche Cars North America, Inc. v. 4 years (10 granted Manny’s Porshop, Inc., 972 F. Supp. years from 1128, 43 U.S.P.Q.2d 1475 (N.D. Ill. first 1997) infringement dispute) RWT Corp. v. Wonderware Corp., 9 months denied 931 F. Supp. 583 (N.D. Ill. 1996) Eldon Industries, Inc. v. 4 1/2 years: denied Rubbermaid, Inc., 735 F. Supp. 786, suit brought 17 U.S.P.Q.2d 1280 (N.D. Ill. 1990) after 4 years; motion filed 6 1/2 months later Stokely-Van Camp, Inc. v. Coca- 3 months denied Cola Co., 2 U.S.P.Q.2d 1225 (N.D. Ill. 1987) American Airlines, Inc. v. A 1-800- a few months granted A-M-E-R-I-C-A-N Corp., 622 F. notice by high Supp. 673, 228 U.S.P.Q. 225 (N.D. level Ill. 1985) employee; earlier notice by sales personnel Universal City Studios, Inc. v. 3 months granted Mueller Chemical Co., 223 U.S.P.Q. 798 (N.D. Ill. 1983) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 87 of 135

Vol. 92 TMR 677

HOLDING DELAY ON CASE LENGTH MOTION

EIGHTH CIRCUIT Hubbard Feeds, Inc. v. Animal Feed 4 years denied Supplement, Inc., 182 F.3d 598, 51 U.S.P.Q.2d 1373 (8th Cir. 1999) Mutual of Omaha Insurance Co. v. 12 months granted Novak, 775 F.2d 247, 227 U.S.P.Q. 801 (8th Cir. 1985) NINTH CIRCUIT GoTo.com, Inc. v. Walt Disney Co., at least 5 grant 202 F.3d 1199, 53 U.S.P.Q.2d 1652 months affirmed (9th Cir. 2000) (additional delay prior to filing of complaint) Fogerty v. Poor Boy Productions, more than 1 reversing Inc., 124 F.3d 211 (9th Cir. 1997) year district court (unpublished) grant Ocean Garden, Inc. v. Marktrade 11 months granted Co., 953 F.2d 500, 21 U.S.P.Q.2d from notice of 1493 (9th Cir. 1991) intended sale, including 2-3 months from notice of actual sale eBay, Inc. v. Bidder’s Edge, Inc., 2 years granted 100 F. Supp. 2d 1058 (N.D. Cal. 2000) (trespass and trademark case) Playboy Enterprises, Inc. v. 11 months denied Netscape Communications Corp., 55 F. Supp. 2d 1070, 52 U.S.P.Q.2d 1162 (C.D. Cal. 1999) Sun Microsystems, Inc. v. Microsoft 6 weeks granted Corp., 999 F. Supp. 1301, 46 U.S.P.Q.2d 1531 (N.D. Cal. 1998) Guess?, Inc. v. Tres Hermanos, Inc., 9 months granted 993 F. Supp. 1277, 45 U.S.P.Q.2d 1179 (C.D. Cal. 1997) Anheuser-Busch, Inc. v. Customer 2-3 months granted Co., 947 F. Supp. 422 (N.D. Cal. 1996) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 88 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Creative Technology Ltd. v. SRT, 6 months after granted Inc., 29 U.S.P.Q.2d 1474 (N.D. Cal. notice and 1993) sending of protest letter Sega Enterprises Ltd. v. Accolade, 5 months: suit granted Inc., 785 F. Supp. 1392, 23 brought after U.S.P.Q.2d 1440 (N.D. Cal. 1992) 1 1/2 months; motion filed 3 1/2 months later Lisa Frank, Inc. v. Impact 7 months after granted International, Inc., 799 F. Supp. filing 980 (D. Ariz. 1992) Complaint; 3 months after knowledge of expanded line of infringing products National Yellow Pages Service 3 years granted Assn. v. O’Connor Agency, Inc., 9 U.S.P.Q.2d 1516 (C.D. Cal. 1988) Earth Technology Corp. v. 2 years granted Environmental Research & Technology, Inc., 222 U.S.P.Q. 585 (C.D. Cal. 1983) Steinway & Sons v. Robert Demars 2 years granted & Friends, 210 U.S.P.Q. 954 (C.D. Cal. 1981)

TENTH CIRCUIT GTE Corp. v. Williams, 731 F.2d 3 years denied 676, 222 U.S.P.Q. 803 (10th Cir. 1984) Big O Tires, Inc. v. Bigfoot 4x4, Inc., more than 2 granted 167 F. Supp. 2d 1216 (D. Colo. years 2001) Packerware Corp. v. Corning 3-4 months denied Consumer Products Co., 895 F. Supp. 1438 (D. Kan. 1995) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 89 of 135

Vol. 92 TMR 679

HOLDING DELAY ON CASE LENGTH MOTION Studio 1712, Inc. v. Etna Products 10 months: granted Co., 777 F. Supp. 844, 22 suit brought U.S.P.Q.2d 1280 (D. Colo. 1991) after 4 months; motion filed 6 months later Universal Motor Oils Co. v. Amoco 3 months granted Oil Co., 15 U.S.P.Q.2d 1613 (D. Kan. 1990) Paramount Pictures Corp. v. Video 15 months denied Broadcasting Systems, 724 F. Supp. 808, 12 U.S.P.Q.2d 1862 (D. Kan. 1989) Cyclonaire Corp. v. United States 6 months granted Systems, Inc. 209 U.S.P.Q. 310 (D. Kan. 1980) Volkswagenwerk, G.m.b.H. v. 17 months granted Frank, 198 F. Supp. 916, 131 after lawsuit U.S.P.Q. 236 (D. Colo. 1961) ELEVENTH CIRCUIT Bulova Corp. v. Bulova Do Brasil 4 1/2 years granted Com. Rep. Imp. & Exp. Ltda., 144 F. Supp. 2d 1329, 59 U.S.P.Q.2d 1077 (S.D. Fla. 2001) Golden Bear International, Inc. v. 8 months (first denied Bear U.S.A., Inc., 969 F. Supp. 742, use was more 42 U.S.P.Q.2d 1283 (N.D. Ga. 1996) than a year prior to plaintiff’s first actual notice of use) Glen Raven Mills, Inc. v. Ramada 16 months denied, but International, Inc., 1994 WL from notice of court found 230365 (M.D. Fla. 1994) intended use, that plaintiff including 11 had acted months after promptly notice of actual use Bellsouth Advertising & Publishing 7-8 months granted Corp. v. Real Color Pages, Inc., 792 F. Supp. 775 (M.D. Fla. 1991) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 90 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Original Appalachian Artworks, 5-10 months granted Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031, 231 U.S.P.Q. 850 (N.D. Ga. 1986)

D.C. CIRCUIT National Rural Electric Cooperative several weeks granted Association v. National Agricultural after Chemical Association, 26 knowledge of U.S.P.Q.2d 1294 (D.D.C. 1992) increased scope of infringement Delmatoff, Gerow, Morris, 12 months denied Langhans, Inc. v. Children’s Hospital National Medical Center, 12 U.S.P.Q.2d 1136 (D.D.C. 1989) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 91 of 135

®

The Law Journal of the International Trademark Association

No Trolls Barred: Trademark Injunctions After eBay David H. Bernstein and Andrew Gilden

Delay in Filing Preliminary Injunction Motions: 2009 Edition Sandra Edelman

Genericness Surveys in Trademark Disputes: Evolution of Species E. Deborah Jay

Space Pirates, Hitchhikers, Guides, and the Public Interest: Transformational Trademark Law in Cyberspace Thomas C. Folsom

The Identification of Trademark Filing Strategies: Creating, Hedging, Modernizing, and Extending Brands

Philipp G. Sandner

Vol. 99 September-October, 2009 No. 5

Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 92 of 135

1074 Vol. 99 TMR

DELAY IN FILING PRELIMINARY INJUNCTION MOTIONS: 2009 EDITION

By Sandra Edelman∗

I. INTRODUCTION This is the fourth article in a series that has addressed the effect of a delay in filing a motion for preliminary injunction in a trademark lawsuit pending in a United States district court.1 The last article in the series in 2002 examined whether the advent of Internet communications in the business world had led to a more demanding requirement for speed in filing a motion for preliminary injunction than had been previously applied by the courts. The answer in 2002 was, not so much, except in the courts within the Second Circuit, which diverged from courts in other circuits by applying a more stringent standard to periods of delay in the three-to-six-month range.2 This article will provide an overview of the trademark cases that have been decided since 2002 that have devoted attention to the issue of delay in moving for a preliminary injunction, and will focus specifically on the applicable legal standards for evaluating delay, and the two primary reasons offered for excusable delay: (1) settlement and enforcement efforts by the plaintiff; and (2) an alleged expansion in the scope or nature of the defendant’s infringement. The 2009 Appendix includes all of the cases cited in the three prior articles in this series, supplemented by the cases that have been decided since 2002. As was done in prior appendices in the series, the cases are arranged by U.S. Circuit, with appellate court decisions preceding district court cases. The 2009 Appendix includes trademark and unfair competition cases as well as a few decisions involving both trademark and other intellectual property issues in which the delay issue was adjudicated with respect to the trademark claims involved.

∗ Partner, Dorsey & Whitney LLP, New York, NY; Associate Member, International Trademark Association. The author would like to thank David Cheng and Jonathan Montcalm, summer associates at Dorsey & Whitney, for their assistance with the research for this article. 1. See Sandra Edelman, Delay in Filing Preliminary Injunction Motions: Update 2002, 92 TMR 647 (2002); Sandra Edelman, Delay in Filing Preliminary Injunction Motions: A Five Year Update, 85 TMR 1 (1995); Robert L. Raskopf & Sandra Edelman, Delay in Filing Preliminary Injunction Motions: How Long Is Too Long? 80 TMR 36 (1990). 2. 92 TMR at 649-54. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 93 of 135

Vol. 99 TMR 1075

II. CURRENT STANDARDS FOR EXCUSABLE DELAY Since 2002, it seems as if the speed of business decisions and communications has continued to accelerate, perhaps exemplified by the best-selling book entitled Blink by Malcolm Gladwell, which is about instantaneous intuitive decision-making;3 and the emergence of Twitter, a real-time, 140-character limited Internet messaging service. Has the faster pace of life since 2002 (real or imagined) led to greater expectations of speed in moving for expedited injunctive relief? Not really, but plaintiffs in the Second Circuit are still being held to a more demanding standard.

A. Generally Acceptable Periods of Delay in the Second Circuit Based on a review of the trademark cases that were decided between 2002 and 2009 in which the courts measured and evaluated delay as a factor in deciding whether to issue a preliminary injunction, trademark litigants in the Second Circuit—and especially those in the Southern and Eastern Districts of New York—have been expected to move more quickly than litigants in other circuits in seeking preliminary injunctive relief. Most of the motions for preliminary injunctive relief were denied in the Second Circuit, with delays ranging there from four months4 to 24 years.5 With a notable exception discussed below,6 in which the Court of Appeals for the Second Circuit vacated the district court’s denial of preliminary injunctive relief where there was a delay of approximately four to six months,7 the handful of cases in the Second Circuit in which the court granted a motion for preliminary injunction generally involved very short periods of delay,8 ranging from just two days9 to four months.10 Thus, as of

3. M. Gladwell, Blink: The Power of Thinking Without Thinking (Little, Brown & Co. 2005). See also T. Hayes & M.S. Malone, The Ten Year Century, Wall St. J., Aug. 11, 2009, at A17 (observing that faster computation technology and quicker online access has led to shorter decision cycles for business enterprises). 4. The Deal, LLC v. Korangy Publ’g, Inc., 309 F. Supp. 2d 512 (S.D.N.Y. 2004). 5. Air Cargo News, Inc. v. Tabmag Publ’g, Ltd., 2007 WL 1101183 (E.D.N.Y. Apr. 11, 2007). 6. See infra Part II.C. 7. Weight Watchers Int’l, Inc. v. Luigino’s Inc., 423 F.3d 137 (2d Cir. 2005). 8. A delay of up to 20 months was also excused in Kuklachev v. Gelfman, 2008 WL 5411641 (E.D.N.Y. Dec. 22, 2008), but the circumstances were quite atypical. The plaintiff, the Russian owner of the trademark MOSCOW CATS THEATER, first learned of the defendant’s infringing use in the United States in early 2007, but he was then in Russia, did not speak English, and it therefore took time to investigate and secure appropriate counsel, who sent several protest letters. The infringing activity then ceased by early 2008, and when the plaintiff learned of further threatened infringing performances in the fall of 2008,

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2009, plaintiffs litigating in the Second Circuit should move for preliminary injunctive relief within three months of actual or constructive notice of the infringement (or actionable expansion of infringement) in order to be confident of establishing the element of irreparable harm.

B. Generally Acceptable Periods of Delay Outside the Second Circuit Outside of the Second Circuit, the cases decided since 2002 indicate that plaintiffs who delay three months or less in seeking preliminary injunctive relief can also be confident they can show irreparable harm.11 However, it is not at all unusual for courts in other circuits to grant motions for a preliminary injunction where the period of delay has been six to seven months;12 nine to ten months;13 or even a year or more.14 On the other hand, it is also not unusual for courts outside of the Second Circuit to deny motions for preliminary injunction where the delay in seeking relief ranges from four to nine months.15 Overall, as of 2009, a plaintiff litigating outside of the Second Circuit who has delayed six months or more has a fighting chance of obtaining preliminary

he took “immediate” steps to file a motion for a preliminary injunction. Id. at ** 10-11. The court found that the delay was excusable because the “plaintiffs have diligently pursued their rights, to the extent practical, given that they are foreign nationals who do not speak English and are regularly on tour, making it difficult for them to determine the extent of harm as it occurred.” Id. 9. Virgin Enters. v. Nawab, 335 F.3d 141 (2d Cir. 2003). 10. Kadant, Inc. v. Seeley Mach., Inc., 244 F. Supp. 2d 19 (N.D.N.Y. 2003). In another case in the Western District of New York (and thus, like Kadant, not in the Southern or Eastern Districts of New York), the court found an almost one year delay from first knowledge of anticipated infringement to be reasonable, but denied the plaintiff’s motion on other grounds. See Dudley, D.C. v. Healthsource Chiropractic, Inc., 585 F. Supp. 2d 433 (W.D.N.Y. 2008). 11. See, e.g., Clam Corp. v. Innovative Outdoor Solution, Inc., 89 U.S.P.Q.2d 1314 (D. Minn. 2008); Nova Wines, Inc. v. Adler Fels Winery LLC, 467 F. Supp. 2d 965 (N.D. Cal. 2006); Lazzaroni USA Corp. v. Steiner Foods, 2006 U.S. Dist. LEXIS 74614 (D.N.J. 2006). 12. See, e.g., Oliva v. Ramirez, 2007 U.S. Dist. LEXIS 62011 (D.P.R. 2007); Keystone Consol. Indus. Inc. v. Mid-States Distrib. Co., 235 F. Supp. 2d 901 (C.D. Ill. 2002). 13. See, e.g., Jonathan Neil & Assocs., Inc. v. JNA Seattle, Inc., 2007 WL 788354 (W.D. Wash. Mar. 14, 2007); Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146 (C.D. Cal. 2002). 14. See, e.g., Nat’l Council of Young Men’s Christian Assocs. of U.S. v. Human Kinetics Publishers, Inc., 2006 WL 752950 (N.D. Ill. Nov. 21, 2003); Conversive, Inc. v. Conversagent, Inc., 433 F. Supp. 2d 1079 (C.D. Cal. 2006). 15. See, e.g., Cascade Fin. Corp. v. Issaquah Cmty. Bank, 2007 WL 2871981 (W.D. Wash. Sept. 27, 2007); J.D. Williams & Co. v. Am. Home Mortgage Inv. Corp., 2005 WL 1429271 (W.D. Okla. June 13, 2005); MB Fin. Bank, N.A. v. MB Real Estate Serv., LLC, 2003 WL 752950 (N.D. Ill. Nov. 21, 2003). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 95 of 135

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injunctive relief, while that would not likely be the case within the Second Circuit. Even if the delay outside the Second Circuit is more than a year, there is still a chance of obtaining expedited preliminary injunctive relief, but the case must be strong on the merits and the equities, and the plaintiff better have a good excuse for the delay.

C. Outliers: Two Recent Examples of Appellate Court Leniency Interestingly, two appellate court decisions since 2002 in Circuits particularly active in the trademark field—the Second and the Third—were relatively lenient in evaluating both the length of the delay and the excuses offered by plaintiffs for their delay in seeking expedited injunctive relief. The Second Circuit’s decision in Weight Watchers International, Inc. v. Luigino’s, Inc.16 involved a motion by Weight Watchers to modify a preliminary injunction order that had been entered on June 30, 2003, against the use of packaging by Luigino’s that made certain references in a confusing manner to Weight Watchers’ POINTS trademark. That same month, Luigino’s introduced new packaging that Weight Watchers learned about “some time over the summer,” or the latest by September 2003.17 Weight Watchers then conducted informal testing to evaluate whether the Luigino’s packaging was confusing consumers; objected to the packaging for the first time on September 23, 2003; commissioned a formal consumer survey that was completed by the end of November 2003; and moved for a modification of the preliminary injunction order on January 16, 2004—almost seven months after first use of the new packaging by Luigino’s, and likely four to six months after Weight Watchers first had actual notice of the new packaging.18 The Second Circuit vacated the district court’s substantial denial of the Weight Watcher motion for preliminary injunction and remanded the case for further proceedings consistent with the opinion. The Second Circuit specifically addressed the argument by Luigino’s that Weight Watchers had unduly delayed in bringing the motion. The court acknowledged that it had previously found “delays of as little as ten weeks sufficient to defeat the presumption of irreparable harm,”19 but that it had also held that

16. 423 F.3d 137 (2d Cir. 2005). The author’s law firm was counsel to defendant Luigino’s in this action. 17. Id. at 140, 144. 18. Id. 19. Id. at 144 (citing Citibank, N.A. v. Citytrust, 756 F.2d 273, 276-77 (2d Cir. 1985)). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 96 of 135

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“a short delay does not rebut the presumption where there is good reason for it, as when a plaintiff is not certain of the infringing activity or has taken additional time to examine the infringing product.”20 After considering the facts concerning Weight Watchers’ delay, the court held, “While Weight Watchers did not act as promptly as it could have, the delay here, in all the circumstances, does not require denial of the modification it seeks.”21 Although it is not unusual for courts in other circuits to excuse a four- to six-month delay,22 the Weight Watchers case is a bit of an outlier in the Second Circuit, which the Weight Watchers court tacitly acknowledged by referring to its prior decision denying preliminary injunctive relief in a case involving a ten-week delay.23 Perhaps the court was inclined to be more forgiving of a delay where a preliminary injunction was already in place. The Third Circuit’s decision in Kos Pharmaceuticals, Inc. v. Andrx Corp.24 was also somewhat unusual in excusing a plaintiff’s delay of more than one year in moving for preliminary injunctive relief. The case involved an action by plaintiff Kos, the owner of the mark ADVICOR for a cholesterol medication, to enjoin the use of the mark ALTOCOR by defendant Andrx for its own cholesterol drug.25 A month after Kos began marketing the ADVICOR drug in December 2001, it learned that Andrx had received preliminary FDA (U.S. Food and Drug Administration) marketing approval to sell the same type of medication under the name ALTOCOR. In February 2002, Andrx’s trademark application to register ALTOCOR, which it filed in December 2000, was published for opposition by the U.S. Trademark Office.26 Kos contacted the FDA Division of Medication Errors in March 2002 to express its concerns about the Andrx mark, and sent two letters to Andrx in April 2002 objecting to its use of ALTOCOR. A month later in May 2002, Kos filed an opposition proceeding in the U.S. Trademark Office against Andrx’s trademark registration application. Andrx began marketing ALTOCOR in July 2002, and in January and February 2003, Kos sent Andrx information concerning multiple instances of alleged actual consumer confusion

20. 423 F.3d at 144-45. 21. Id. at 145. 22. See, e.g., PDL, Inc. v. All Star Driving School, 2007 WL 1515739 (E.D. Cal. May 22, 2007); Kadant, Inc. v. Seeley Mach., Inc., 244 F. Supp. 2d 19 (N.D.N.Y. 2003). 23. 423 F.3d at 144. 24. 369 F.3d 700 (3d Cir. 2004). 25. Id. at 703-04. 26. Id. at 704-05. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 97 of 135

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between the parties’ marks.27 It was not until August 2003 that Kos filed in a U.S district court a complaint against Andrx for trademark infringement and a motion for a preliminary injunction. The district court denied the Kos motion for preliminary injunctive relief, holding that Kos had failed to show a likelihood of success on the merits of its trademark infringement claims, but the Third Circuit reversed and remanded the case for the entry of preliminary injunctive relief.28 The Third Circuit addressed the issue of whether Kos’s delay had undercut its showing of irreparable harm, and initially disagreed with the district court’s finding that Kos had not generated sufficient goodwill to suffer irreparable harm in light of the relatively short period of time in which Kos’s ADVICOR drug had been on the market. As the Third Circuit pointed out, this finding was inconsistent with the district court’s further holding that Kos had developed a “high level of commercial strength” in its mark, evidenced by $70 million in sales.29 Moreover, as the Third Circuit observed, [W]e do not agree that a company’s goodwill is less likely to be irreparably harmed if it has used its mark for only a short time. Indeed, it could be argued that irreparable harm is more likely when a “young” mark, rather than an old and well- established mark, is infringed.30 Moving from its factual findings to the appropriate legal standard, the Third Circuit rejected the argument that Kos’s delay of more than 13 months after Andrx’s product was first marketed was sufficient to rebut the presumption of irreparable harm.31 Rather, the court clarified that under Third Circuit precedent,32 only “inexcusable” delay could defeat the presumption of irreparable harm in an appropriate case.33 As the court found, “Kos sought relief directly and through administrative proceedings from the time it learned of the proposed use of the ALTOCOR mark through the time it filed this suit.”34 In addition, Andrx was found to have contributed to Kos’s delay when it submitted alternate

27. Id. at 705. 28. Id. 29. Id. at 726. 30. Id. 31. Id. at 727. Note that the plaintiff’s total delay was much longer if measured from the date of its first notice of the defendant’s mark. 32. Times Mirror Magazines, Inc. v. Las Vegas Sports News, LLC, 212 F.3d 157 (3d Cir. 2000). 33. 369 F.3d at 727 (emphasis in original). 34. Id. at 721. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 98 of 135

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names to the FDA, and stated in its annual report that Kos had opposed its application for trademark registration and that Andrx might “seek to change the name of Altocor.”35 The court concluded, “Under these circumstances, no reasonable fact finder could find that Kos had waived its rights or conceded that it was not irreparably harmed by filing when it did.”36 Although the Third Circuit has generally been more tolerant of delay than has the Second Circuit, excusing a delay of at least 13 months is noteworthy. Of course, the involvement of pharmaceuticals with the possibility of medication error may have tipped the scales for the court37 in determining that preliminary injunctive relief was appropriate.

III. THE ROLE OF DELAY IN ADJUDICATING PRELIMINARY INJUNCTION MOTIONS An alleged delay in filing a motion for preliminary injunction is just one of many factors a court will consider in determining whether to grant or deny the motion. Most decisions involve a thorough examination of the plaintiff’s likelihood of success on the merits of its substantive trademark claims, for that is one of the pillars of the legal standard for granting a motion for preliminary injunction.38 Occasionally, the delay will be sufficiently long that a court will deny the motion on that basis alone, without even providing a written analysis of the merits of the plaintiff’s claims. For example, in Adventure Plus Enterprises, Inc. v. Gold Suit, Inc.,39 the court denied a motion for a preliminary injunction where the plaintiff waited nearly 15 months after discovering the alleged infringement to file its lawsuit, and then almost three more months before seeking a preliminary injunction, all without

35. Id. 36. Id. 37. The appellate court mentioned the district court’s finding that Kos had not established a “serious health risk” due to medication error, but nonetheless found that the public interest favored the issuance of injunctive relief. Id. at 730. 38. A plaintiff generally has to demonstrate a probability of success on the merits of its claims at trial; that it will suffer irreparable injury absent a preliminary injunction that will preserve the status quo pending trial; and that the balance of hardships tips in favor of the plaintiff. Courts in some circuits also examine whether the public interest favors granting preliminary injunctive relief. See generally 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§ 30:31; 30:32 (4th ed. 2009) [hereinafter McCarthy]. 39. 2008 U.S. Dist. LEXIS (N.D. Tex. April 2, 2008). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 99 of 135

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offering any explanation for the delay.40 The court’s Memorandum Order in this case focused solely on the issue of delay.41 In other cases, the issue of delay played a supporting role, but was not case-determinative. In The Deal, LLC v. Korangy Publishing, Inc.,42 the plaintiff was aware of the defendant’s magazine in April 2003, but did not bring suit until October 2003, and then waited another four weeks to file a motion for preliminary injunctive relief. After addressing the issue of delay in a few brief paragraphs, the court stated, “While plaintiff’s delay in seeking relief informs the question of whether The Deal has suffered irreparable harm, the delay is not so lengthy as to require denial of the motion.”43 The court then proceeded to engage in an extended analysis as to why the plaintiff had failed to demonstrate a likelihood of success on its trademark infringement claims, resulting in a denial of the requested relief.44 The issue of delay in filing a motion for preliminary injunction received extensive treatment in a few cases, such as in Pharmacia Corp. v. Alcon Laboratories, Inc.45 Several pages of the court’s opinion denying the motion are devoted to the delay issue, even though the court also concluded that plaintiff Pharmacia had not made a showing of a likelihood of success on its trademark claims. Thus, the court could have addressed more briefly the issue of the plaintiff’s delay of more than one year in seeking expedited injunctive relief. The court rejected multiple reasons given by the plaintiff as to why it had waited so long to bring the motion, including patent negotiations, the possibility (deemed “remote” by the court) that the FDA would not approve the defendant’s product, the need to investigate the defendant’s product, and the defendant’s alleged bad faith in adopting the mark at issue.46 The court held that the plaintiff’s delay “was a separate but equally dispositive basis, apart from the weakness of Pharmacia’s case on

40. Id. at **3-4; see also n.56 for discrepancies in the court’s stated calculations in this case. 41. Id.; cf. Brockmeyer v. Hearst Corp., 2002 U.S. Dist. LEXIS 11725, at **10-13 (S.D.N.Y. June 27, 2002) (the court held that the delay of more than 15 months was a “sufficient ground” for the denial of the plaintiff’s preliminary injunction motion, but then also proceeded to analyze and determine that the plaintiff had not demonstrated a likelihood of success on the merits or the other substantive requirements for obtaining expedited relief). 42. 309 F. Supp. 2d 512 (S.D.N.Y. 2004). 43. Id. at 521 (emphasis in original). 44. Id. at 521, 530 (emphasis in original). 45. 201 F. Supp. 2d 335 (D.N.J. 2002). 46. Id. at 384-85. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 100 of 135

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the merits, for denying Pharmacia’s motion for a preliminary injunction.”47 Whether or not the issue of delay receives brief or thorough treatment, it often appears that a court will assess the reasonableness of the alleged delay in light of its overall views of the merits of the plaintiff’s case. If the plaintiff’s claims are perceived as weak, the court will not likely be tolerant of a delay in seeking relief.48 Conversely, when the merits are strong and/or the equities strongly disfavor the defendant, the court will more likely be forgiving of a plaintiff’s delay.49

IV. MEASURING THE PERIOD OF DELAY The court in Pharmacia Corp. v. Alcon Laboratories, Inc.,50 confirmed, Actual or constructive notice is the governing standard for measuring delay in moving for preliminary injunctive relief. Thus, courts consider both a trademark plaintiff’s actual knowledge of infringement and its constructive knowledge.51 The court explained that a trademark plaintiff has a duty to police the market for infringing uses. Thus, the “should have known” standard is “satisfied by contrasting the full scope of a party’s monitoring practices and the way it addressed marks it truly regarded as violating its rights, with its inactivity with respect to the mark it belatedly seeks to enjoin.”52 Although some judicial opinions make it easier to calculate the period of delay by providing a detailed chronology that reveals what happened and when, other courts address the issue of delay

47. Id. at 382. 48. See, e.g., Ultimate Trading Corp. v. Daus, 2007 WL 302 5681 (D.N.J. Oct. 15, 2007); Lapham v. Porach, 2007 WL 1224924 (S.D.N.Y. Apr. 25, 2007) (the plaintiff failed to establish likelihood of success on the merits); Richard A. Leslie Co. v. Birdie, LLC, 2007 WL 4245847 (S.D.N.Y. Nov. 26, 2007) (weak ownership rights demonstrated by the plaintiff); MJM Prods. v. Kelley Prods., Inc., 68 U.S.P.Q.2d 1131 (D.N.H. 2003) (the plaintiff’s unregistered mark lacked secondary meaning). 49. See, e.g., SMC Promotions, Inc. v. SMC Promotions, 355 F. Supp. 2d 1127 (C.D. Cal. 2005); Kadant, Inc. v. Seeley Mach., Inc., 244 F. Supp. 2d 19 (N.D.N.Y. 2003); Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146 (C.D. Cal. 2002). 50. 201 F. Supp. 2d 335 (D.N.J. 2002). Where possible to discern from the recited facts, the calculation of time periods set out in the Appendix is based on this alternative standard of actual or constructive notice. 51. Id. at 382. 52. Id. at 382-83; see also Jonathan Neil & Assocs., Inc. v. JNA Seattle, Inc., 2007 WL 788354, at *6 (W.D. Wash. Mar. 14, 2007) (the relevant delay on a motion for a preliminary injunction “is the period from when the plaintiff knew or should have known of the allegedly infringing conduct until the initiation of the lawsuit.”). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 101 of 135

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more generally, without providing the specific information necessary to calculate or even roughly estimate the period of delay.53 Sometimes a court will highlight how long the plaintiff waited to move for preliminary injunctive relief after filing the lawsuit, which obviously leaves unaddressed how long the plaintiff knew about the defendant’s mark before commencing the litigation in the first place.54 In other cases, the court will quantify the period of delay and mention the exact dates of acquisition of knowledge and the filing of the motion for preliminary injunction, but the calculation is somewhat mystifying. For example, in Nature’s Life, Inc. v. Renew Life Formulas Inc.,55 the court stated that the plaintiff learned of the defendant’s design in January 2005, but did not file the motion for a preliminary injunction until August 2005. The court characterized this time period as a “nine month” delay,56 when it appears to be only seven months.

V. LACHES VERSUS DELAY Some courts continue to refer to the issue of delay in filing a motion for preliminary injunction as a “laches” defense,57 while other courts have drawn a clear distinction between the legal standard for finding laches at a full trial, and the more limited inquiry involved in evaluating whether a plaintiff has demonstrated irreparable injury for purposes of obtaining a

53. See, e.g., Novartis Animal Health U.S. Inc. v. Abbeyvet Export Ltd., 409 F. Supp. 2d 264, 268 (S.D.N.Y. 2005). The court in Novartis expressly declined “to calculate the degree of urgency” with any precision, holding that while Novartis had “not acted in a way that bespeaks the urgency usually connoted by ‘irreparable harm,’” it had acted sufficiently promptly that its attempts to resolve the dispute informally “should not be held against it.” Id. at 267-68. See also Verizon Cal. Inc. v. Navigation Catalyst Sys., Inc., 568 F. Supp. 2d 1088, 1097 (C.D. Cal. 2008) (court mentions only that there was “no significant delay”); Playmakers, LLC v. ESPN, Inc., 297 F. Supp. 2d 1277 (W.D. Wash. 2003) (providing only a vague description of the relevant dates). 54. See, e.g., Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146, 1190 (C.D. Cal. 2002) (the court addressed the nine month delay between commencement of the action and the filing of the preliminary injunction motion, rather than focusing on the plaintiff’s first notice of the infringing conduct). 55. 2006 WL 62829 (D. Utah Jan. 11, 2006). 56. Id. at *7. In another instance of curious calculation, the court in Adventure Plus Enters., Inc. v. Gold Suit, Inc., 2008 U.S. Dist. LEXIS (N.D. Tex. Apr. 2, 2008), appears to calculate the time lapse between August 2005 and November 2006 as “nearly 18 months” when it in fact appears to be 15 months. In addition, the court in this case mentions that the plaintiff filed suit in November 2006, and then “waited another four months, until January 26, 2007 before seeking a preliminary injunction,” when the time lapse between the two filings appears to be only 2 ½ months. Id. at **3-4. 57. See, e.g., Oliva v. Ramirez, 2007 U.S. Dist. LEXIS (D.P.R. Aug. 21, 2007; SMC Promotions, Inc. v. SMC Promotions, 355 F. Supp. 2d 1127 (C.D. Cal. 2005). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 102 of 135

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preliminary injunction.58 Because laches generally involves the added factor of demonstrating prejudice to the defendant, the cases that characterize the issue of delay on a motion for preliminary injunction as a laches defense also require a showing that the defendant has been prejudiced by the plaintiff’s delay in seeking expedited injunctive relief. For example, in Jonathan Neil Associates, Inc. v. JNA Seattle, Inc.,59 the court characterized the issue of delay in filing a motion for preliminary injunction as one of laches, and then set out a two-part test for establishing the laches defense: “[A] party must show (1) that the claimant unreasonably delayed in filing suit; and (2) as a result of the delay, the party suffered prejudice.”60

VI. EXCUSABLE DELAY While defendants often argue that an extended period of delay is sufficient in itself to warrant denial of a motion for a preliminary injunction, it is important to bear in mind that only inexcusable delay will defeat the presumption of irreparable harm.61 The two reasons most commonly cited to justify a plaintiff’s delay in moving for a preliminary injunction continue to be: (1) investigative, enforcement and settlement efforts; and (2) an alleged expansion in the nature or scope of the defendant’s infringement that excuses the plaintiff’s past inaction.

A. Investigative, Enforcement and Settlement Efforts The federal courts appreciate that a plaintiff might need to investigate the relevant facts before running into court for a preliminary injunction, and courts value extrajudicial efforts to resolve disputes in order to avoid the time, expense and resources involved in litigation. Accordingly, investigative, enforcement and settlement efforts will generally excuse a delay in moving for a preliminary injunction, so long as the efforts are pursued diligently and credibly.62

58. See generally 5 McCarthy, supra note 38, § 31:32. 59. 2007 WL 788354 (W.D. Wash. Mar. 14, 2007). 60. Id. at *6; see also Oliva v. Ramirez, 2007 U.S. Dist. LEXIS 62011 at *5; cf. Keystone Consol. Indus. Inc. v. Mid-States Distrib. Co., 235 F. Supp. 2d 901, 915 (C.D. Ill. 2002) (“to prove the defense of delay in filing a motion for a preliminary injunction, the defendant must have been ‘lulled into a false sense of security or . . . acted in reliance on the plaintiff’s delay.’”) (citation omitted). 61. See Kos Pharms., Inc. v. Andrx Corp., 369 F.3d 700, 726-27 (3d Cir. 2004). 62. See Christian v. Alloy, Inc., 72 U.S.P.Q. 2d 1697, 1699 (S.D.N.Y. 2004) (“Settlement is highly favored by the courts and [the plaintiff’s] efforts to amicably resolve the matter are to be applauded, but the mere fact that [the plaintiff] attempted to negotiate a settlement

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In Christopher Norman Chocolates, Ltd. v. Schokinag Chocolates North America, Inc.,63 the court rejected the plaintiff’s excuse for its delay attributed to the pursuit of settlement discussions because the correspondence between the parties only occupied three months, “leaving unaccounted” a further period of delay of four months.64 Likewise, in Richard A. Leslie Co. v. Birdie LLC,65 the plaintiff sought to negotiate a settlement resolution with the defendant for two months, and when no settlement was reached, the plaintiff filed suit a few weeks later. However, the plaintiff did not move for a preliminary injunction for another three months after commencing the action. The court held that the initial two-month delay was excusable, but the later three-month period “is sufficiently long, in and of itself, to warrant denial of preliminary relief, as [the plaintiff’s] conclusory and unsubstantiated implication that he could not have moved more quickly is unpersuasive.”66 Plaintiffs are also expected to move promptly once it becomes clear to the plaintiff that the defendant will not discontinue the allegedly offending conduct. In Cascade Financial Corp. v. Issaquah Community Bank,67 the plaintiff became aware of the defendant’s allegedly infringing trademark for banking in January 2007 and promptly sent a cease and desist letter. When the defendants refused to comply, the plaintiffs sent a second letter with a deadline for a response of March 12, 2007. According to the court, when no response was received by the March 12 deadline, the plaintiffs were “on notice” that the defendants were not going to change the offending trademark. By waiting to sue until the defendant’s bank opened on July 16, 2007, and then waiting until August 1, 2007, two weeks later, to file a motion for a preliminary

does not relieve her of her burden to demonstrate irreparable harm. Settlement negotiations and a motion for preliminary relief are in no way mutually exclusive . . . .”). 63. 270 F. Supp. 2d 432 (S.D.N.Y. 2003). 64. Id. at 438-39. 65. 2007 WL 4245847 (S.D.N.Y. Nov. 26, 2007). 66. Id. at *2; see also GoNannies, Inc. v. GoAuPair.com, Inc., 464 F. Supp. 2d 603, 609 & n.5 (N.D. Tex. 2006) (“[A]lthough settlement discussions might entail some delay in seeking injunctive relief, it is difficult to see how they would support Plaintiff’s delay of over six (6) months from the time of learning of the alleged infringing conduct and seeking injunctive relief from the Court.”); J.D. Williams & Co. v. Am. Home Mortgage Inv. Corp., 2005 WL 1429271 (W.D. Okla. June 13, 2005) (finding that the plaintiff did not act diligently when it waited approximately six months to send a protest letter to the defendant and then did not file the suit or seek injunctive relief until an additional month later). 67. 2007 WL 2871981 (W.D. Wash. Sept. 27, 2007). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 104 of 135

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injunction, the plaintiff undercut the assertion of irreparable harm.68 The need to conduct a pre-litigation investigation received favorable treatment in Weight Watchers International, Inc. v. Luigino’s, Inc.,69 in which the court held that “a short delay” does not rebut the presumption of irreparable harm “where there is good need for it, as when a plaintiff is not certain of the infringing activity or has taken additional time to examine the infringing product.”70 In that case, as noted above,71 the court found that the plaintiff had not acted as promptly as it could have, but nonetheless excused a delay attributable in part to consumer testing of the defendant’s allegedly infringing products.72 Similarly, in MetLife, Inc. v. Metropolitan National Bank,73 the court excused a 3-1/2-month delay in taking action after the defendant’s alleged expansion of infringement, during which time the plaintiff investigated the likelihood of consumer confusion, including the commission of a market research study. As the court stated, “There is no evidence that this passage of time amounted to dilatory conduct on the plaintiffs’ part, or that it was due to anything more than an effort to investigate facts relevant to this motion.”74 On the other hand, in Pharmacia Corp. v. Alcon,75 the court rejected the plaintiff’s excuse based on the alleged need to investigate whether it had a valid trademark claim, holding,

68. Id. at *17; see also eAcceleration Corp. v. Trend Micro, Inc., 408 F. Supp. 2d 1110, 1122 & n. 4 (W.D. Wash. 2006) (the court acknowledged that some portion of the plaintiff’s delay was likely the result of attempts to resolve the matter without litigation, but by waiting to file suit until six months after the defendant made it clear it was unwilling to cease the allegedly infringing conduct, and then waiting over two additional months before moving for preliminary relief, the plaintiffs were unable to demonstrate the possibility of irreparable harm.) 69. 423 F.2d 137 (2d Cir. 2005). 70. Id. at 144-45. 71. See supra Part II.C. 72. Id. at 144. 73. 388 F. Supp. 2d 223 (S.D.N.Y. 2005). The author was counsel to the defendant in this action. 74. Id. at 237-38; see also Kuklachev v. Gelfman, 2008 WL 5411641 at *10 (E.D.N.Y. Dec. 22, 2008) (in excusing the plaintiff’s delay, the court cited a number of reasons, including “the need to investigate the nature of the infringement and to explore what legal recourse was possible”); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 340 F. Supp. 2d 415 (S.D.N.Y 2004) (the court denied the plaintiff’s motion for a preliminary injunction but found that a six-month delay in seeking preliminary relief was excusable where it was attributable to the plaintiff’s efforts to “conduct an investigation and weigh the costs and benefits of pursuing a lawsuit.”) 75. 201 F. Supp. 2d 335 (D.N.J. 2002). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 105 of 135

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“Investigation is no excuse when the plaintiff is in possession of all of the necessary facts constituting the alleged infringement.”76

B. Expansion of the Scope or Nature of Infringement A change in the nature, extent or geographic reach of infringing conduct can excuse a delay in filing a motion for preliminary injunction, but courts will scrutinize whether the alleged change was material and will evaluate whether the plaintiff moved promptly after the material change became apparent. The court accepted this explanation for delay in Guinness United Distillers & Vintners B.V. v. Anheuser-Busch, Inc.,77 where defendant Anheuser-Bush initially conducted a test market of the “Red Label from Budweiser” brand in approximately 20 to 30 bars and restaurants in New York City in September 2001, and then decided in April 2002 to expand its test marketing to three other cities beginning in July 2002. Plaintiff Guinness brought suit in February 2002, but did not move for a preliminary injunction until June 2002. The court rejected Anheuser-Busch’s argument that a nine-month delay precluded preliminary injunctive relief, holding that Guinness was not required to have taken action earlier against “the limited distribution and media penetration of ‘Red Label from Budweiser’ to date . . . .”78 The geographic expansion of the defendant’s services into the plaintiff’s market in Boston Duck Tours, LP v. Super Duck Tours, LLC,79 likewise excused the plaintiff’s six years of prior knowledge and inaction against the defendant’s services in another city, notwithstanding the fact that the plaintiff had known about the defendant’s intent to expand into the plaintiff’s market for almost two years.80 The court in this case appeared to be persuaded by the fact that the plaintiff took legal action five weeks after the defendant’s actual geographic expansion, and that 30 reported instances of actual confusion had occurred in that brief time period.81 In contrast, in EMSL Analytical, Inc. v. Testamerica Analytical Testing Corp.,82 the court rejected the plaintiff’s attempt to excuse a six-year delay in filing suit and in seeking preliminary

76. Id. at 384. 77. 2002 WL 1543817 (S.D.N.Y. July 12, 2002). 78. Id. at ** 1, 2, 6. 79. 514 F. Supp. 2d 119 (D. Mass. 2007). 80. Id. at **2-3. 81. Id. at **15-16. 82. 2006 U.S. Dist. LEXIS 16672 (D.N.J. Apr. 4, 2006). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 106 of 135

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injunctive relief on the ground that it had only recently become aware that the defendant was offering a particular type of service. The court concluded that the nature of the infringement was apparent to the plaintiff long before it filed suit, and that the plaintiff even delayed six months in seeking injunctive relief after the plaintiff conceded it became aware of the full scope of the infringement.83 Similarly, in Air Cargo News, Inc. v. Tabmag Publishing, Ltd.,84 the court declined to excuse the plaintiff’s delay of more than 20 years in taking action against an allegedly infringing trade journal title, because it “failed to offer a tenable explanation as to why it made no objection, either formal or informal,” as the defendants systematically increased the number of copies it circulated over the past 24 years.85

C. Litigation Tactics Resulting in Delay Courts will occasionally examine the litigation conduct of the parties in evaluating whether a delay in filing a motion for a preliminary injunction is excusable. The excuse of alleged settlement efforts was rejected as a pretext for sharp litigation tactics in MJM Productions v. Kelley Productions, Inc.,86 a case involving the name of the defendant’s television series The Brotherhood of Poland, New Hampshire. Although the plaintiff admitted to knowing about the television series for more than six months, it waited until just sixteen days before the scheduled premiere of the television series to bring a motion for preliminary injunction. The court concluded that “the timing of the plaintiff’s request for injunctive relief was primarily the product of tactical, rather than practical considerations.”87 In Hodgdon Powder Co. v. Alliant Techsytems, Inc,88 the court denied the plaintiff’s motion for a preliminary injunction where the plaintiff had delayed seven months after becoming aware of the defendant’s allegedly infringing products. The court specifically pointed to the plaintiff’s chosen method of service of process on the defendant in explaining its decision:

83. Id. at **38-41; see also Christian v. Alloy, Inc., 72 U.S.P.Q.2d 1697 (S.D.N.Y. 2004) (the court rejected the plaintiff’s explanation as to why it did not take action against the defendant’s book series but then sought to enjoin a film bearing the same mark). 84. 2007 WL 1101183 (E.D.N.Y. Apr. 11, 2007). 85. Id. at *11. 86. 68 U.S.P.Q.2d 1131 (D.N.H. 2003). 87. Id. at 1135. 88. 2006 WL 2092391 (D. Kan. July 26, 2006). Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 107 of 135

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After filing its Complaint, plaintiff chose to request a waiver of service under Federal Rule of Civil Procedure 4(d) instead of promptly serving defendant, which allowed defendant additional time to answer the complaint. Plaintiff’s tardiness in instigating this lawsuit is inconsistent with its current request for immediate temporary relief.89 This court apparently felt that if the plaintiff was asking the court for the urgent and extraordinary relief of a preliminary injunction, it should have acted as if the need for relief was in fact urgent by using the most expeditious form of service of process available. Litigation conduct by the defendant had the effect of undermining its defense of delay to a motion for preliminary injunction in Perfect 10, Inc. v. Cybernet Ventures, Inc.,90 a case involving both copyright and trademark claims. The court rejected the defendant’s argument that a nine-month period of delay between the date the action was commenced and the date the motion for a preliminary injunction was filed defeated the inference of irreparable harm.91 Citing the defendant’s dilatory tactics during the litigation, which the plaintiff characterized as “stonewalling,” the court pointed to “the constant stream of motions in the case, including three motions to dismiss and the multiplicity of theories presented in the case, which may have reasonably delayed the proceedings.”92

VII. CONCLUSION Inexcusable delay in filing a motion for preliminary injunction in a trademark case can have an adverse effect on the success of the motion, as it will undercut the showing of irreparable harm necessary to obtain expedited injunctive relief. While appropriate investigative efforts and settlement negotiations will provide a cushion of excusable delay, the asserted need to obtain additional information must not be pretextual, and the settlement efforts must be pursued diligently. In many cases, a plaintiff will attempt to account for years of knowledge of the defendant’s activities by pointing to new and

89. Id. at *3; see also Scientific Weight Loss, LLC v. U.S. Med. Care Holdings, LLC, 2008 WL 4533918 (C.D. Cal. Oct. 6, 2008) (in denying preliminary injunctive relief, in part based on the plaintiff’s delay, the court noted that the plaintiffs had twice stipulated to continue the preliminary injunction motion over a period of several months). 90. 213 F. Supp. 2d 1146 (C.D. Cal. 2002). 91. Id. at 1190. 92. Id. Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 108 of 135

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different conduct that allegedly expands the nature, scope or geographic reach of the defendant’s infringement. Unless there has been a real, material change in the defendant’s actions that renders infringing what reasonably could have been deemed non- actionable in the past, courts will be reluctant to overlook a long prior history of coexistence between the parties when evaluating expedited injunctive relief. While each case has its own unique set of facts and equities, it is still possible to see broad patterns in the body of judicial opinions on delay in filing motions for preliminary injunction. The standards have stayed fairly consistent since 2002. A plaintiff in the Second Circuit should bring its motion for preliminary injunction within three months of notice of the defendant’s infringing conduct, or risk the significant likelihood that the motion will be denied. Greater latitude exists outside of the Second Circuit, where motions are frequently granted even when the delay ranges from four months up to one year. Of course, when filing a motion for preliminary injunction in any circuit, the sooner you file the better.

Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 109 of 135

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UPDATED APPENDIX 2009 FIRST CIRCUIT

HOLDING DELAY ON CASE LENGTH MOTION Operation Able of Greater Boston, 6 weeks from granted in Inc., 2009 WL 2407753 (D. Mass. alleged part Aug. 3, 2009) expansion of infringement Oliva v. Ramirez, 2007 U.S. Dist. 6 months granted LEXIS 62011 (D.P.R. Aug. 21, 2007) Boston Duck Tours, LP v. Super 6 years after granted (as to Duck Tours, LLC, 514 F. Supp. 2d knowledge of trademark 119 (D. Mass. 2007) use in other claims) geographic

market 2 years after knowledge of intent to expand into plaintiff’s market 5 weeks after alleged expansion of infringement MJM Prods. v. Kelley Prods., Inc., 6-7 months denied 68 U.S.P.Q.2d 1131 (D.N.H. 2003) Montblanc-Simplo GMBH v. 2 months granted Staples, Inc., 172 F. Supp. 2d 231 (D. Mass. 2001) Media3 Tech., LLC v. Mail Abuse 6 months denied Prevention Sys., LLC, 2001 WL 92389 (D. Mass. 2001) Boustany v. Boston Dental Group, 8 months granted Inc., 42 F. Supp. 2d 100 (D. Mass. 1999) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 110 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Fritz v. Arthur D. Little, Inc., 944 At least 2 denied F. Supp. 95, 41 U.S.P.Q.2d 1352 (D. years Mass. 1996) constructive notice Supercuts, Inc. v. Super Clips, 18 10 months: granted U.S.P.Q.2d 1378 (D. Mass. 1990) suit brought after 1 month; motion filed 9 months later Calamari Fisheries, Inc. v. The 21 months granted Village Catch, Inc., 698 F. Supp. after first use; 994, 8 U.S.P.Q.2d 1953 (D. Mass. 1 month after 1988) expansion caused increased level of confusion Salt Water Sportsman, Inc. v. less than 6 granted B.A.S.S. Inc., 685 F. Supp. 12, 4 months U.S.P.Q.2d 1407 (D. Mass. 1987), as amended, 5 U.S.P.Q.2d 1620 (D. Mass. 1987) Jordan K. Rand, Ltd. v. Lazoff 3 months granted Bros., Inc., 537 F. Supp. 587, 217 U.S.P.Q. 795 (D.P.R. 1982) SECOND CIRCUIT Weight Watchers Int'l, Inc. v. 4-6 months denial Luigino’s, Inc., 423 F.3d 137 (2d vacated, with Cir. 2005) remand for entry of modified injunction Virgin Enters. Ltd. v. Nawab, 335 19 months denial F.3d 141 (2d Cir. 2003) after reversed knowledge of ITU applications 2 days after knowledge of actual infringement Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 111 of 135

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HOLDING DELAY ON CASE LENGTH MOTION W.B. Marvin Mfg. Co. v. Howard 6 months denial Berger Co., 33 Fed. Appx. 588 (2d affirmed (motion filed 3 Cir. 2002) months after lawsuit commenced) Tough Traveler, Ltd. v. Outbound 13 months vacating Prods., 60 F.3d 964, 35 U.S.P.Q.2d (complaint district 1617 (2d Cir. 1995) filed after 9 court’s grant months) Tom Doherty Assoc., Inc. v. Saban 4 months affirming Entm’t, Inc., 60 F.3d 27, 35 district U.S.P.Q.2d 1537 (2d Cir. 1995) court’s grant King v. Innovation Books, 976 F.2d 11 months granted 824, 24 U.S.P.Q.2d 1435 (2d Cir. from 1992) knowledge of intended use, including 3 months from knowledge of actual use Majorica, S.A. v. R.H. Macy & Co., several years denied 762 F.2d 7, 226 U.S.P.Q. 624 (2d Cir. 1985) Citibank, N.A. v. Citytrust, 756 10 weeks after denied F.2d 273, 225 U.S.P.Q. 708 (2d Cir. direct notice of 1985) actual use; 9 months after notice of intended use in press; years after notice of use in another state Harlequin Enters. Ltd. v. Gulf & 6 months after granted Western Corp., 644 F.2d 946, 210 notice of U.S.P.Q. 1 (2d Cir. 1981) intended use; 3 months after notice of actual use My-T-Fine Corp. v. Samuels, 69 2 years granted F.2d 76, 21 U.S.P.Q. 94 (2d Cir. 1934) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 112 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Kuklachev v. Gelfman, 2008 WL 15-20 months granted 5411641 (E.D.N.Y. Dec. 22, 2008) from first acts of infringing performance name that later ceased within 1 month of resumed infringement Dudley, D.C. v. Healthsource almost 1 year denied (but Chiropractic, Inc., 585 F. Supp. 2d from note that 433 (W.D.N.Y. 2008) knowledge of delay was anticipated found infringement reasonable) 6 months from knowledge of actual infringing use Lapham v. Porach, 2007 WL Approximately denied 1224924 (S.D.N.Y. Apr. 25, 2007) 2 years since first use (actual knowledge unclear) Richard A. Leslie Co., Inc. v. Birdie, More than a denied LLC, 2007 WL 4245847 (S.D.N.Y. year after first Nov. 26, 2007) use 5 months after knowledge of infringement (motion filed 3 months after lawsuit commenced) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 113 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Air Cargo News, Inc. v. Tabmag Approximately denied Publ’g, Ltd., 2007 WL 1101183 24 years after (E.D.N.Y. Apr. 11, 2007) initial use of infringing mark Several months after knowledge of alleged expansion of infringement Total Control Apparel, Inc. v. DMD More than 19 denied Int’l Imports, LLC, 409 F. Supp. 2d months 403 (S.D.N.Y. 2006) Metlife, Inc. v. Metro. Nat’l Bank, 3.5 years after granted 388 F. Supp. 2d 223 (S.D.N.Y. 2005) first knowledge of defendant’s mark 3.5 months after knowledge of alleged expansion of infringement The Deal, LLC v. Korangy Publ’g, 4 months after denied Inc., 309 F. Supp. 2d 512 (S.D.N.Y. first 2004) knowledge of infringement (7 months after first use) Louis Vuitton Malletier v. Dooney 9-10 months denied & Bourke, Inc., 340 F. Supp. 2d 415 after (S.D.N.Y. 2004), aff’d in part and knowledge of vacated in part on other grounds, intended use 454 F.3d 408 (2d Cir. 2006) A few weeks after sending protest letter Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 114 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Christian v. Alloy, Inc., 72 Almost 2 years denied U.S.P.Q.2d 1697 (S.D.N.Y. 2004) Christopher Norman Chocolates, 8-9 months denied Ltd. v. Schokinag Chocolates N. Am., Inc., 270 F. Supp. 2d 432 (S.D.N.Y. 2003) Kadant, Inc. v. Seeley Mach., Inc., 4 months granted in 244 F. Supp. 2d 19 (N.D.N.Y. 2003) part M&G Elecs. Sales Corp. v. Sony 6-7 months denied Kabushiki Kaisha, 250 F. Supp. 2d (motion filed 6 91 (E.D.N.Y. 2003) months after lawsuit commenced) Guinness United Distillers & 9 months after granted Vintners B.V. v. Anheuser-Busch, first use in Inc., 64 U.S.P.Q.2d 1039 (S.D.N.Y. limited 2002) market 2 months after alleged expansion of infringement (motion filed 4 months after lawsuit commenced) Brockmeyer v. Hearst Corp., 2002 More than 16 denied U.S. Dist. LEXIS 11725 (S.D.N.Y. months after 2002) first knowledge of infringement (motion filed 2 months after lawsuit commenced) Yurman Design Inc. v. Diamonds 4 months granted and Time, 169 F. Supp. 2d 181 (S.D.N.Y. 2001) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 115 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Tactica Int’l, Inc. v. Atlantic 1 month granted Horizon Int’l, Inc., 154 F. Supp. 2d 586 (S.D.N.Y. 2001) Magnet Commc’ns, LLC v. Magnet 3 months denied Commc’ns, Inc., 2001 WL 1097965 (S.D.N.Y. 2001) Media Group, Inc. v. Ontel Prods. 7-8 months denied Corp., 2001 WL 169776 (D. Conn. (complaint 2001) filed after 4-5 months) Origins Nat’l Res., Inc. v. Kotler, 4-6 months denied 2001 WL 492429 (S.D.N.Y. 2001) Greenpoint Fin. Corp. v. Sperry & 4 months denied Hutchinson Co., 116 F. Supp. 2d 405 (S.D.N.Y. 2000) Ryan v. Vulpine Stamp Co., 107 F. 2 months granted Supp. 2d 369 (S.D.N.Y. 2000) ImOn, Inc. v. ImaginOn, Inc., 90 F. 4 months denied Supp. 2d 345 (S.D.N.Y. 2000) First Jewellery Co. of Canada, Inc. 2 months granted v. Internet Shopping Network LLC, 53 U.S.P.Q.2d 1838 (S.D.N.Y. 2000) Gidatex, S.r.L. v. Campaniello more than 2 denied Imports, Ltd., 13 F. Supp. 2d 417, years (5-8 47 U.S.P.Q.2d 1701 (S.D.N.Y. 1998) months after termination of related litigation between parties) Lexington Mgmt. Corp. v. 5-6 months granted Lexington Capital Partners, 10 F. Supp. 2d 271 (S.D.N.Y. 1998) Marcy Playground, Inc. v. Capitol 9 months denied Records, Inc., 6 F. Supp. 2d 277 (S.D.N.Y. 1998) Marshak v. Thomas, 1998 WL 2 months granted 476192 (E.D.N.Y. 1998) Ushodaya Enters., Ltd. v. V.R.S. almost 3 years denied Int’l, Inc., 47 U.S.P.Q.2d 1223 at minimum (S.D.N.Y. 1998) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 116 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Gen. Cigar Co., Inc. v. G.D.M. Inc., 3 months granted 988 F. Supp. 647, 45 U.S.P.Q.2d 1481 (S.D.N.Y. 1997) Les Ballets Trockadero de Monte 2 months granted Carlo, Inc. v. Trevino, 945 F. Supp. 563, 41 U.S.P.Q.2d 1109 (S.D.N.Y. 1996) Krueger Int’l, Inc. v. Nightingale 6-9 months denied Inc., 915 F. Supp. 595 (S.D.N.Y. 1996) Bear U.S.A., Inc. v. A.J. Sheepskin 1-2 months for granted as to & Leather Outerwear, Inc., 909 F. some 1-2 month Supp. 896, 38 U.S.P.Q.2d 1640 infringing delay; denied (S.D.N.Y. 1995) products; 3-4 as to 3-4 months for month delay other infringing products Trustco Bank, Nat. Ass’n v. Glens 3 months denied (but Falls Nat’l Bank & Trust Co., N.A., delay found 903 F. Supp. 335 (N.D.N.Y. 1995) excusable) Firma Melodiya v. ZYX Music 3-4 months granted GmbH, 882 F. Supp. 1306 (S.D.N.Y. 1995) Museum Boutique Intercontinental, 14 years (15 denied Ltd. v. Picasso, 880 F. Supp. 153 months from (S.D.N.Y. 1995) alleged change in scope of infringement while standstill agreement in effect) Cheng v. Dispeker, 35 U.S.P.Q.2d 5 months denied 1493 (S.D.N.Y. 1995) Del-Rain Corp. v. Pelonis USA Ltd., 23 months denied 1995 WL 116043 (W.D.N.Y. 1995) Swanson v. Georgetown Collection, 8 months denied Inc., 1995 WL 72717 (N.D.N.Y. (complaint 1995) filed after 5 months) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 117 of 135

Vol. 99 TMR 1099

HOLDING DELAY ON CASE LENGTH MOTION Mastercard Int’l, Inc. v. Sprint 6-9 months granted Commc’ns Co., 30 U.S.P.Q.2d 1963 from (dicta) (S.D.N.Y. 1994) knowledge of intended use Tommy Hilfiger U.S.A., Inc. v. 2-3 years from denied Siegfried & Parzifal, Inc., 31 notice of U.S.P.Q.2d 1222 (S.D.N.Y. 1994) initial elements of infringement Dial-A-Mattress Operating Corp. v. 3-4 years granted Mattress Madness, Inc., 841 F. Supp. 1339 (E.D.N.Y. 1994) Jordache Enters., Inc. v. Levi 4 years denied Strauss & Co., 841 F. Supp. 506 (S.D.N.Y. 1993) Kraft General Foods, Inc. v. Allied 7 months from granted Old English, Inc., 831 F. Supp. 123, publication of 31 U.S.P.Q.2d 1094 (S.D.N.Y. 1993) defendant’s mark Chase Manhattan Corp. v. Nw. 11 months: denied Mutual Life, 1993 WL 60602 suit brought (S.D.N.Y. 1993) after 5 months; motion filed 6 months later Bausch & Lomb, Inc. v. Nevitt Sales 1 month after granted Corp., 810 F. Supp. 466, 26 increased U.S.P.Q.2d 1275 (W.D.N.Y. 1993) scope of infringement H.G.I. Mktg. Serv., Inc. v. Pepsico, 2-4 years denied Inc., 1992 WL 349675 (N.D.N.Y. 1992) Am. Direct Mktg. v. Azad Int’l, Inc., 3-6 months denied (but 783 F. Supp. 84, 22 U.S.P.Q.2d delay found 1108 (E.D.N.Y. 1992) excusable) MGM Pathe Commc’ns Co. v. Pink 6 months granted Panther Patrol, 774 F. Supp. 869, 21 U.S.P.Q.2d 1208 (S.D.N.Y. 1991) Nat’l Football League Players Ass’n 9 months denied v. Nat’l Football League Props., Inc., 1991 WL 79325 (S.D.N.Y. 1991) (licensing dispute) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 118 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Century Time Ltd. v. Interchron, 6 months: suit denied 729 F. Supp. 366, 14 U.S.P.Q.2d brought after 1765 (S.D.N.Y. 1990) 2 months; motion filed 4 months later Lanvin, Inc. v. Colonia, 739 F. 7 months denied Supp. 182 (S.D.N.Y. 1990) (licensing dispute) Mathematica Policy Research, Inc. 10 months denied v. Addison-Wesley Publ’g Co. Inc., 11 U.S.P.Q.2d 1391 (S.D.N.Y. 1989) Comic Strip, Inc. v. Fox Television 7 months denied Stations, Inc., 710 F. Supp. 976, 10 U.S.P.Q.2d 1608 (S.D.N.Y. 1989) Kusan, Inc. v. Alpha Distribs., Inc., 17-18 months denied 693 F. Supp. 1372, 7 U.S.P.Q.2d 1211 (D. Conn. 1988) Artemide Spa v. Grandlite Design & 7 months granted in Mfg. Co., Inc., 672 F. Supp. 698, 4 part U.S.P.Q.2d 1915 (S.D.N.Y. 1987) Great Lakes Mink Ass’n v. Furrari, 20 months denied Inc., No. 86-6038 (S.D.N.Y. 12/21/87), 1987 U.S. Dist. LEXIS 11800 Ventura Travelware, Inc. v. A to Z approximately granted Luggage Co., 1 U.S.P.Q.2d 1552 18 months (E.D.N.Y. 1986) Allen Organ Co. v. CBS, Inc., 230 7-8 months denied U.S.P.Q. 479 (S.D.N.Y. 1986) Gear, Inc. v. L.A. Gear Cal., Inc., 17-18 months denied 637 F. Supp. 1323, 227 U.S.P.Q. 980 (S.D.N.Y. 1986) Nina Ricci S.A.R.L. v. Gemcraft 4 months from denied Ltd., 612 F. Supp. 1520, 226 notice, U.S.P.Q. 575 (S.D.N.Y. 1985) including 6 weeks from breakdown of settlement talks Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 119 of 135

Vol. 99 TMR 1101

HOLDING DELAY ON CASE LENGTH MOTION Calvin Klein Co. v. Farah Mfg. Co., 7 years of use; denied Inc., 229 U.S.P.Q. 795 (S.D.N.Y. plaintiff’s 1985) claim of less than 6 months’ notice rejected I. Peiser Floors, Inc. v. I.J. Peiser’s 2 years granted Sons, Inc., No. 81-3359 (S.D.N.Y. 10/4/82), 1982 U.S. Dist. LEXIS 15465 Exxon Corp. v. Xoil Energy Res., approximately denied Inc., 552 F. Supp. 1008, 216 12 months U.S.P.Q. 634 (S.D.N.Y. 1981) Nike, Inc. v. Rubber Mfrs. Ass’n, several granted 509 F. Supp. 919, 212 U.S.P.Q. 225 months (S.D.N.Y. 1981) C.B. Sports, Inc. v. Gaechter-Haber 6 months granted & Assoc., Inc., 210 U.S.P.Q. 597 (D. Vt. 1981) Le Sportsac, Inc. v. Dockside 10 months denied Research, Inc., 478 F. Supp. 602, 205 U.S.P.Q. 1055 (S.D.N.Y. 1979) Mego Corp. v. Mattel, Inc., 203 7 months after denied U.S.P.Q. 377 (S.D.N.Y. 1978) notice of intended use Programmed Tax Sys., Inc. 4-5 months denied Raytheon Co., 419 F. Supp. 1251, after actual 193 U.S.P.Q. 435 (S.D.N.Y. 1976) notice; 3 years after first use Le Cordon Bleu S.a.r.l. v. BPC 13 weeks denied Publ’g Ltd., 327 F. Supp. 267, 170 U.S.P.Q. 477 (S.D.N.Y. 1971) Gianni Cereda Fabrics, Inc. v. 7 1/2 months denied Bazaar Fabrics, Inc., 173 U.S.P.Q. 188 (S.D.N.Y. 1971) (copyright and trademark claims) Helena Rubenstein, Inc. v. Frances 20 months denied Denney, Inc., 286 F. Supp. 132, 159 U.S.P.Q. 346 (S.D.N.Y. 1968) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 120 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Stix Prods., Inc. v. United preliminary denied Merchants & Mfrs., Inc., 273 F. injunction Supp. 250, 154 U.S.P.Q. 477 motion filed 5 (S.D.N.Y. 1967) years after suit Goodyear Tire & Rubber Co. v. 8-9 years denied Topps of Hartford, Inc. 247 F. Supp. 899, 147 U.S.P.Q. 240 (D. Conn. 1965) Colgate-Palmolive Co. v. N. Am. 20 months granted Chem. Corp. 238 F. Supp. 81, 144 U.S.P.Q. 266 (S.D.N.Y. 1964) Gillette Co. v. Ed Pinaud, Inc., 178 4-5 years denied F. Supp. 618, 123 U.S.P.Q. 531 (S.D.N.Y. 1959) THIRD CIRCUIT Kos Pharms., Inc. v. Andrx Corp., Approximately reversal of 369 F. 3d 700 (3d Cir. 2004) 18 months denial and since first remand for knowledge of entry intended use of infringing mark At least 13 months since knowledge of sale of infringing products Times Mirror Magazines, Inc. v. Las 14-15 months grant Vegas Sports News, L.L.C., 212 affirmed F.3d 157, 54 U.S.P.Q.2d 1577 (3d Cir. 2000), cert. denied, 531 U.S. 1071, 121 S. Ct. 760 (2001) Pappan Enters., Inc. v. Hardee’s 5 weeks reversed Food Sys., Inc., 143 F.3d 800, 46 district U.S.P.Q.2d 1769 (3d Cir. 1998) court’s denial S&R Corp. v. Jiffy Lube Int’l, Inc., 3 1/2 months granted 968 F.2d 371, 23 U.S.P.Q.2d 1201 (3d Cir. 1993) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 121 of 135

Vol. 99 TMR 1103

HOLDING DELAY ON CASE LENGTH MOTION Ultimate Trading Corp. v. Daus, 5 months denied 2007 WL 3025681 (D.N.J. Oct. 15, 2007) Medavante, Inc. v. Proxymed, Inc., 4 months granted 2006 U.S. Dist. LEXIS 74614 (D.N.J. Oct. 12, 2006) Lazzaroni USA Corp. v. Steiner 2 months granted Foods, 2006 U.S. Dist. LEXIS 20962 (D.N.J. Apr. 10, 2006) EMSL Analytical, Inc. v. 4-6 years after Testamerica Analytical Testing first Corp., 2006 WL 892718 (D.N.J. Apr. knowledge of 4, 2006) infringing uses 6 months after knowledge of alleged expansion of infringement Pharmacia Corp. v. Alcon Labs., Approximately denied Inc., 201 F. Supp. 2d 335 (D.N.J. 2 years since 2002) constructive knowledge Approximately 1 year since actual knowledge J & J Snack Foods Corp. v. Nestlé 10 months denied USA, Inc., 149 F. Supp. 2d 136 (complaint (D.N.J. 2001) filed after 2 months) New Dana Perfumes Corp. v. The 50 years (as to denied Disney Store, Inc., 131 F. Supp. 2d one claim); 9- 616 (M.D. Pa. 2001) 10 months (as to another claim) Sunquest Info. Sys., Inc. v. Park 15 months granted City Solutions, Inc., 130 F. Supp. 2d 680 (W.D. Pa. 2000) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 122 of 135

1104 Vol. 99 TMR

HOLDING DELAY ON CASE LENGTH MOTION Novartis Consumer Health, Inc. v. 9 months (as granted Johnson & Johnson-Merck to claim Consumer Pharms. Co., 129 F. against Supp. 2d 351, 57 U.S.P.Q.2d 1522 product (D.N.J. 2000) name); 4 months (as to advertising claim) Mobilificio San Giacomo S.p.A. v. 6 months after granted Stoffi, 1997 WL 699299 (D. Del. filing suit (but 1997) 1 month after use of mark became unauthorized) Rockland Mortgage Corp. v. 6 months: suit granted Shareholder’s Funding Inc., 835 F. brought after Supp. 182, 30 U.S.P.Q.2d 1270 (D. 2 months; Del. 1993) motion filed 4 months later Accu Personnel, Inc. v. AccuStaff 9 months after granted Inc., 823 F. Supp. 1161, 27 knowledge of U.S.P.Q.2d 1801 (D. Del. 1993) intended use, including 2 months after knowledge of expanded activity W.L. Gore & Assoc., Inc. v. Totes, 4 months after granted Inc., 23 U.S.P.Q.2d 1091 (D. Del. increased 1992) scope of activity Warner Lambert Co. v. McCrory’s 12 months denied Corp., 718 F. Supp. 389, 12 after first use; U.S.P.Q.2d 1884 (D.N.J. 1989) 5 months after claimed actual notice Am. Int’l Group, Inc. v. Am. Int’l 3 years denied Airways, Inc., 726 F. Supp. 1470, 14 U.S.P.Q.2d 1933 (E.D. Pa. 1989) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 123 of 135

Vol. 99 TMR 1105

HOLDING DELAY ON CASE LENGTH MOTION Transfer Print Foils, Inc. v. 16 months: granted Transfer Print Am., 720 F. Supp. suit brought 425, 12 U.S.P.Q.2d 1753 (D.N.J. after 5 1989) months; motion filed 11 months later Country Floors, Inc. v. Gepner, 11 at least 2 denied U.S.P.Q.2d 1401 (E.D. Pa. 1989) years’ actual notice; up to 6 years’ constructive notice Mars, Inc. v. H.P. Mayer Corp., approximately denied 1988 U.S. Dist. LEXIS 9069 (D.N.J. 19 months 1988) (not for publication) Reedco, Inc. v. Hoffmann-La Roche, 17 months denied Inc., 667 F. Supp. 1072, 2 after actual U.S.P.Q.2d 1994 (D.N.J. 1987) notice; years after notice in the press Horizon Fin., F.A. v. Horizon 13 years use; 8 granted Bancorp., 2 U.S.P.Q.2d 1696 (E.D. months after Pa. 1987) geographic expansion of defendant’s use Louis Rich, Inc. v. Horace W. 2 months granted Longacre, Inc., 423 F. Supp. 1327, 195 U.S.P.Q. 308 (E.D. Pa. 1976) FOURTH CIRCUIT Wilson-Cook Med., Inc. v. Wiltex, 1 year denied Inc., 18 U.S.P.Q.2d 1642 (4th Cir. 1991) Nabisco Brands, Inc. v. Conusa 5-8 months granted Corp., 722 F. Supp. 1287, 11 from increase U.S.P.Q.2d 1788 (M.D.N.C.), aff’d in scope of mem., 892 F.2d 74, 14 U.S.P.Q.2d infringement 1324 (4th Cir. 1989) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 124 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Garden & Gun, LLC v. Twodalgals, 5-6 weeks granted in LLC, 2008 WL 3925276 (W.D.N.C. part Aug. 21, 2008) Fairbanks Capital Corp. v. Kenney, More than 10 granted in 303 F. Supp. 2d 583 (D. Md. 2003) months; part potentially up to 2 years Great Eastern Resort Corp. v. Several years granted Virtual Resort Solutions, LLC, 189 since F. Supp. 2d 469 (W.D. Va. 2002) knowledge of initial use 7 months after knowledge of alleged expansion of infringement Rubbermaid Comm’l Prods., Inc. v. almost 2 granted Contico Int’l, Inc., 836 F. Supp. years, 1247, 29 U.S.P.Q.2d 1574 (W.D. Va. including 8 1993) (design patent and trade months after dress case) issuance of design patent John Lemmon Films, Inc. v. 8 months denied Atlantic Releasing Corp., 617 F. Supp. 992, 227 U.S.P.Q. 386 (W.D.N.C. 1985) FIFTH CIRCUIT H.D. Vest, Inc. v. H.D. Vest Mgmt. at least 5 and denied & Servs., LLC, 2009 WL 1766095 up to 11 (N.D. Tex. June 23, 2009) months Innovation Ventures, LLC v. 9 months denied Ultimate Lifestyles, LLC, 2009 WL 1490588 (E.D. Tex. May 27, 2009) Ellipse Commc’ns, Inc. v. Caven, more than 7 denied 2009 WL 497268 (N.D. Tex Feb. 26, months 2009) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 125 of 135

Vol. 99 TMR 1107

HOLDING DELAY ON CASE LENGTH MOTION Adventure Plus Enters., Inc. v. Gold 17 months denied Suit, Inc., 2008 U.S. Dist. LEXIS (motion filed 27220 (N.D. Tex. Apr. 2, 2008) almost 3 months after lawsuit commenced) GoNannies, Inc. v. GoAuPair.com, 7 years after denied Inc., 464 F. Supp. 2d 603 (N.D. Tex. initial use 2006) 6 months after alleged expansion of infringement Amicus Commc’ns, L.P. v. Hewlett- 2-3 years denied Packard Co., 1999 WL 495921 (W.D. Tex. 1999) TJM Corp. v. Xerox Corp., 25 17 months: denied U.S.P.Q.2d 1067 (E.D. La. 1992) suit brought after 14 months; motion filed 3 months later Am. Rice, Inc. v. Arkansas Rice 3 weeks after granted Growers Coop. Ass’n, 532 F. Supp. increased level 1376, 214 U.S.P.Q. 936 (S.D. Tex. of 1982), aff’d, 701 F.2d 408, 218 infringement; U.S.P.Q. 489 (5th Cir. 1983) 4 years after less objectionable use SIXTH CIRCUIT Guar. Residential Lending, Inc. v. 6 years after denied Homestead Mortg. Co., 2005 U.S. initial use Dist. LEXIS 43640 (E.D. Mich. (motion by Dec. 13, 2005), later proceeding, 291 counterclaim Fed. Appx. 734 (6th Cir. 2008) plaintiff filed 9 months after lawsuit commenced) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 126 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Wells Fargo v. WhenU.com, Inc., 9 months denied 293 F. Supp. 2d 734 (E.D. Mich. 2003) R.L. Polk & Co. v. Infousa, Inc., 230 3 months dranted F. Supp. 2d 780 (E.D. Mich. 2002) McDonald’s Corp. v. Burger King 8-9 months denied Corp., 87 F. Supp. 2d 722, 54 U.S.P.Q.2d 1507 (E.D. Mich. 1999) P.T.C. Brands, Inc. v. Conwood Co. 8 months: suit granted L.P., 28 U.S.P.Q.2d 1895 (W.D. Ky. brought after 1993) 2 months; motion filed 6 months later Central Benefits Mutual Insurance 18 months granted Co. v. Blue Cross & Blue Shield Ass’n, 711 F. Supp. 1423, 11 U.S.P.Q.2d 1103 (S.D. Ohio. 1989) Frisch’s Rests., Inc. v. Elby’s Big at least 2 granted Boy of Steubenville Inc., 514 F. years Supp. 704, 213 U.S.P.Q. 559 (S.D. Ohio 1981), aff’d, 670 F.2d 642, 214 U.S.P.Q. 15 (6th Cir. 1982), cert. denied, 459 U.S. 916 (1982) SEVENTH CIRCUIT AM Gen. Corp. v. DaimlerChrysler Years after denial Corp., 311 F.3d 796 (7th Cir. 2002) knowledge of affirmed initial use At least 6 months after knowledge of alleged expansion of infringement Ty, Inc. v. Jones Group, Inc., 237 at least 8 grant F.3d 891, 57 U.S.P.Q.2d 1617 (7th months affirmed Cir. 2001) (motion filed 8 months after complaint was filed) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 127 of 135

Vol. 99 TMR 1109

HOLDING DELAY ON CASE LENGTH MOTION Ideal Indus., Inc. v. Gardner suit filed 7 granted Bender, Inc., 612 F.2d 1018, 204 months after U.S.P.Q. 177 (7th Cir. 1979), cert. notice; denied, 447 U.S. 924, 206 U.S.P.Q. preliminary 864 (1980) injunction motion filed 8 months later Helene Curtis Indus., Inc. v. suit filed granted Church & Dwight Co., Inc., 560 within weeks F.2d 1325, 195 U.S.P.Q. 218 (7th of notice; Cir. 1977), cert. denied, 434 U.S. preliminary 1070, 197 U.S.P.Q. 592 (1978) injunction filed 13 months later Vaughan Mfg. Co. v. Brikam Int’l, 10 months granted Inc., 814 F.2d 346, 1 U.S.P.Q.2d 2067 (7th Cir. 1987) Country Inns & Suites by Carlson, less than 1 granted Inc. v. Nayan, LLC, 2008 WL month 4735267 (S.D. Ind. Oct. 28, 2008) Miyano Mach. USA, Inc. v. approximately granted Miyanohitec Mach., Inc., 576 F. 1 year Supp. 2d 868 (N.D. Ill. 2008) Nat’l Council of Young Men’s One year granted Christian Assocs. of U.S. v. Human Kinetics Publishers, Inc., 2006 WL 752950 (N.D. Ill. Mar. 15, 2006) MB Fin. Bank, N.A. v. MB Real 9 months denied Estate Servs., L.L.C., 2003 WL 22765022 (N.D. Ill. Nov. 21, 2003) Keystone Consol. Indus. Inc. v. Mid- 7 months granted States Distrib. Co., 235 F. Supp. 2d 901 (C.D. Ill. 2002) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 128 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Floralife, Inc. v. Floraline Int’l, Inc., at least 3 granted 633 F. Supp. 108 (N.D. Ill. 1985), years notice of later proceeding, 807 F.2d 518, 1 limited use; U.S.P.Q.2d 1132 (7th Cir. 1986) less than 3 weeks after knowledge of expanison of use Ty, Inc. v. Softbelly’s, Inc., 2001 WL 10 months granted 125321 (N.D. Ill. Feb. 9, 2001) Ty, Inc. v. Publications Int’l, Ltd., 14 months granted 81 F. Supp. 2d 899 (N.D. Ill. 2000) Avent Am., Inc. v. Playtex Prods., 2-3 months granted Inc., 68 F. Supp. 2d 920 (N.D. Ill. 1999) Philip Morris, Inc. v. Allen 5 months granted Distribs., Inc., 48 F. Supp. 2d 844, 51 U.S.P.Q.2d 1013 (S.D. Ind. 1999) Reins of Life, Inc. v. Vanity Fair 8-9 months denied Corp., 5 F. Supp. 2d 629, 45 U.S.P.Q.2d 1854 (N.D. Ind. 1997) Porsche Cars N. Am., Inc. v. 4 years (10 granted Manny’s Porshop, Inc., 972 F. Supp. years from 1128, 43 U.S.P.Q.2d 1475 (N.D. Ill. first 1997) infringement dispute) RWT Corp. v. Wonderware Corp., 9 months denied 931 F. Supp. 583 (N.D. Ill. 1996) Eldon Indus., Inc. v. Rubbermaid, 4 1/2 years: denied Inc., 735 F. Supp. 786, 17 suit brought U.S.P.Q.2d 1280 (N.D. Ill. 1990) after 4 years; motion filed 6 1/2 months later Stokely-Van Camp, Inc. v. Coca- 3 months denied Cola Co., 2 U.S.P.Q.2d 1225 (N.D. Ill. 1987) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 129 of 135

Vol. 99 TMR 1111

HOLDING DELAY ON CASE LENGTH MOTION Am. Airlines, Inc. v. A 1-800-A-M-E- a few months granted R-I-C-A-N Corp., 622 F. Supp. 673, notice by high 228 U.S.P.Q. 225 (N.D. Ill. 1985) level employee; earlier notice by sales personnel Universal City Studios, Inc. v. 3 months granted Mueller Chem. Co., 223 U.S.P.Q. 798 (N.D. Ill. 1983) EIGHTH CIRCUIT Hubbard Feeds, Inc. v. Animal Feed 4 years denied Supplement, Inc., 182 F.3d 598, 51 U.S.P.Q.2d 1373 (8th Cir. 1999) Mutual of Omaha Ins. Co. v. Novak, 12 months granted 775 F.2d 247, 227 U.S.P.Q. 801 (8th Cir. 1985) Cmty. of Christ Copyright Corp. v. approximately granted Devon Park Restoration Branch of 1 year Jesus Christ’s Church, 613 F. Supp. 2d 1140 (W.D. Mo. 2009) Clam Corp. v. Innovative Outdoor 1 year after denied Solutions, Inc., 89 U.S.P.Q. 2d 1314 initial use (D. Minn. 2008) 3 months after alleged expansion of infringement Gander Mountain Co. v. Cabela’s, 3 months after denied Inc., 2006 WL 2788184 (D. Minn. objectionable Sept. 26, 2006) conduct by defendant More than 2 years after litigation between parties began Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 130 of 135

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HOLDING DELAY ON CASE LENGTH MOTION

NINTH CIRCUIT GoTo.com, Inc. v. Walt Disney Co., at least 5 grant 202 F.3d 1199, 53 U.S.P.Q.2d 1652 months affirmed (9th Cir. 2000) (additional delay prior to filing of complaint) Fogerty v. Poor Boy Prods., Inc., more than 1 reversing 124 F.3d 211 (9th Cir. 1997) year district court (unpublished) grant Ocean Garden, Inc. v. Marktrade 11 months granted Co., 953 F.2d 500, 21 U.S.P.Q.2d from notice of 1493 (9th Cir. 1991) intended sale, including 2-3 months from notice of actual sale Protech Diamond Tools, Inc. v. Liao, almost 3 years denied 2009 WL 1626587 (N.D. Cal. June 8, 2009) Volkswagen AG v. Verdier Microbus Approximately granted and Camper, Inc., 2009 WL 928130 2 months (N.D. Cal. Apr. 3, 2009) Cascade Fin. Corp. v. Issaquah 6-7 months denied Cmty. Bank, 2007 WL 2871981 (W.D. Wash. Sept. 27, 2007) Topline Corp. v. 4273371 Can., Inc., 10 months granted 2007 WL 2332471 (W.D. Wash. Aug. 13, 2007) PDL, Inc. v. All Star Driving School, More than 3 granted 2007 WL 1515139 (E.D. Cal. May years after 22, 2007) initial use 4-6 months after knowledge of alleged expansion of infringement Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 131 of 135

Vol. 99 TMR 1113

HOLDING DELAY ON CASE LENGTH MOTION Studio Red Inc. v. Rockwell 8 months denied Architecture Planning and Design, P.C., 2007 WL 1462458 (N.D. Cal. May 18, 2007) Jonathan Neil & Assoc., Inc. v. JNA At least 9 granted Seattle, Inc., 2007 WL 788354 months (W.D. Wash. Mar. 14, 2007) Nova Wines, Inc. v. Adler Fels 1-3 months granted Winery LLC, 467 F. Supp. 2d 965 (N.D. Cal. 2006) Conversive, Inc. v. Conversagent, More than 1 granted Inc., 433 F. Supp. 2d 1079 (C.D. year Cal. 2006) eAcceleration Corp. v. Trend Micro, More than 1 denied Inc., 408 F. Supp. 2d 1110 (W.D. year Wash. 2006) First Franklin Fin. Corp. v. 11 years after denied Franklin First Fin., Ltd., 356 F. first use Supp. 2d 1048 (N.D. Cal. 2005) At least 2 and up to 7 months after claimed first knowledge SMC Promotions, Inc. v. SMC 4 months after granted Promotions, 355 F. Supp. 2d 1127 suit (C.D. Cal. 2005) commenced First notice by plaintiff unclear Rain Bird Corp. v. Hit Prods. Corp., At least 17 granted 72 U.S.P.Q.2d 1105 (C.D. Cal. 2004) months Nautilus Group, Inc. v. Icon Health Several granted and Fitness, Inc., 308 F. Supp. 2d months 1208 (W.D. Wash. 2003) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 132 of 135

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HOLDING DELAY ON CASE LENGTH MOTION Perfect 10, Inc. v. Cybernet 9 months after granted Ventures, Inc., 213 F. Supp. 2d suit 1146 (C.D. Cal. 2002) commenced First notice by plaintiff unclear H.O. Sports, Inc. v. Earth & Ocean 1-2 months granted Sports, Inc., 57 U.S.P.Q.2d 1927 (W.D. Wash. 2001) eBay, Inc. v. Bidder’s Edge, Inc., 2 years granted 100 F. Supp. 2d 1058 (N.D. Cal. 2000) (trespass and trademark case) Playboy Enters., Inc. v. Netscape 11 months denied Commc’ns Corp., 55 F. Supp. 2d 1070, 52 U.S.P.Q.2d 1162 (C.D. Cal. 1999) Sun Microsystems, Inc. v. Microsoft 6 weeks granted Corp., 999 F. Supp. 1301, 46 U.S.P.Q.2d 1531 (N.D. Cal. 1998) Guess?, Inc. v. Tres Hermanos, Inc., 9 months granted 993 F. Supp. 1277, 45 U.S.P.Q.2d 1179 (C.D. Cal. 1997) Anheuser-Busch, Inc. v. Customer 2-3 months granted Co., 947 F. Supp. 422 (N.D. Cal. 1996) Creative Tech. Ltd. v. SRT, Inc., 29 6 months after granted U.S.P.Q.2d 1474 (N.D. Cal. 1993) notice and sending of protest letter Sega Enters. Ltd. v. Accolade, Inc., 5 months: suit granted 785 F. Supp. 1392, 23 U.S.P.Q.2d brought after 1440 (N.D. Cal. 1992) 1 1/2 months; motion filed 3 1/2 months later Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 133 of 135

Vol. 99 TMR 1115

HOLDING DELAY ON CASE LENGTH MOTION Lisa Frank, Inc. v. Impact Int’l, 7 months after granted Inc., 799 F. Supp. 980 (D. Ariz. filing 1992) Complaint; 3 months after knowledge of expanded line of infringing products Nat’l Yellow Pages Serv. Ass’n v. 3 years granted O’Connor Agency, Inc., 9 U.S.P.Q.2d 1516 (C.D. Cal. 1988) Earth Tech. Corp. v. Envtl. 2 years granted Research & Technology, Inc., 222 U.S.P.Q. 585 (C.D. Cal. 1983) Steinway & Sons v. Robert Demars 2 years granted & Friends, 210 U.S.P.Q. 954 (C.D. Cal. 1981) TENTH CIRCUIT GTE Corp. v. Williams, 731 F.2d 3 years denied 676, 222 U.S.P.Q. 803 (10th Cir. 1984) Close to My Heart, Inc. v. Up to 2 years denied Enthusiast Media LLC, 508 F. after initial Supp. 2d 963 (D. Utah 2007) use Several months after alleged expansion of infringement Hodgdon Powder Co., Inc. v. Alliant 7 months denied Techsystems, Inc., 2006 WL 2092391 (D. Kan. July 26, 2006) Nature's Life, Inc. v. Renew Life 7 months denied Formulas, Inc., 2006 WL 62829 (D. Utah Jan. 11, 2006) Pimentel & Sons Guitar Makers, More than 2 granted Inc. v. Pimentel, 2005 WL 3664269 and up to 10 (D.N.M. Oct. 12, 2005) months Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 134 of 135

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HOLDING DELAY ON CASE LENGTH MOTION J.D. Williams & Co., Inc. v. Am. Approximately denied Home Mortgage Invest. Corp., 2005 6 months WL 1429271 (W.D. Okla. June 13, 2005) Simmons, Inc. v. Bombardier Inc., More than 4 denied 2002 WL 31956160 (D. Utah Sept. years 16, 2002), later proceeding, 73 Fed. Appx. 421 (Fed. Cir. 2003) Big O Tires, Inc. v. Bigfoot 4x4, Inc., more than 2 granted 167 F. Supp. 2d 1216 (D. Colo. years 2001) Packerware Corp. v. Corning 3-4 months denied Consumer Prods. Co., 895 F. Supp. 1438 (D. Kan. 1995) Studio 1712, Inc. v. Etna Prods. Co., 10 months: granted 777 F. Supp. 844, 22 U.S.P.Q.2d suit brought 1280 (D. Colo. 1991) after 4 months; motion filed 6 months later Universal Motor Oils Co. v. Amoco 3 months granted Oil Co., 15 U.S.P.Q.2d 1613 (D. Kan. 1990) Paramount Pictures Corp. v. Video 15 months denied Broad. Sys., 724 F. Supp. 808, 12 U.S.P.Q.2d 1862 (D. Kan. 1989) Cyclonaire Corp. v. U.S. Sys., Inc., 6 months granted 209 U.S.P.Q. 310 (D. Kan. 1980) Volkswagenwerk, G.m.b.H. v. 17 months granted Frank, 198 F. Supp. 916, 131 after lawsuit U.S.P.Q. 236 (D. Colo. 1961) ELEVENTH CIRCUIT AT & T Mobility LLC v. Nat’l Ass'n 2-3 months granted for Stock Car Auto Racing, Inc., 487 F. Supp. 2d 1370 (N.D. Ga. 2007), vacated and dismissed on other grounds, 494 F.3d 1356 (11th Cir. 2007) Hi-Tech Pharms., Inc. v. Herbal 7 months denied Health Prods., Inc., 311 F. Supp. 2d 1353 (N.D. Ga. 2004) Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 Page 135 of 135

Vol. 99 TMR 1117

HOLDING DELAY ON CASE LENGTH MOTION Seiko Kabushiki Kaisha v. Swiss 10 months denied Watch Int’l, Inc., 188 F. Supp. 2d 1350 (S.D. Fla. 2002) Bulova Corp. v. Bulova Do Brasil 4 1/2 years granted Com. Rep. Imp. & Exp. Ltda., 144 F. Supp. 2d 1329, 59 U.S.P.Q.2d 1077 (S.D. Fla. 2001) Golden Bear Int’l, Inc. v. Bear 8 months (first denied U.S.A., Inc., 969 F. Supp. 742, 42 use was more U.S.P.Q.2d 1283 (N.D. Ga. 1996) than a year prior to plaintiff’s first actual notice of use) Glen Raven Mills, Inc. v. Ramada 16 months denied, but Int’l, Inc., 1994 WL 230365 (M.D. from notice of court found Fla. 1994) intended use, that plaintiff including 11 had acted months after promptly notice of actual use Bellsouth Adver. & Publ’g Corp. v. 7-8 months granted Real Color Pages, Inc., 792 F. Supp. 775 (M.D. Fla. 1991) Original Appalachian Artworks, 5-10 months granted Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031, 231 U.S.P.Q. 850 (N.D. Ga. 1986) D.C. CIRCUIT Nat’l Rural Elec. Coop. Assoc. v. several weeks granted Nat’l Agric. Chem. Assoc., 26 after U.S.P.Q.2d 1294 (D.D.C. 1992) knowledge of increased scope of infringement Delmatoff, Gerow, Morris, 12 months denied Langhans, Inc. v. Children’s Hosp. Nat’l Med. Ctr., 12 U.S.P.Q.2d 1136 (D.D.C. 1989)

Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 1 of 15

EXHIBIT S Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 2 of 15

Company Disclosure Form

Section A Name of Corporation or LLC: Date of Organization:

Address of business location: City, State Zip

Township/County Tax Identification Number (TIN)

Section B – Please list the top 5 officers of the business. If an office is NOT held, please indicate by writing NONE. Name of Officer Social Security Number Date of Birth 1) CEO

2) President

3) Vice President

4) Secretary

5) Treasurer

Section C – Please list the managing members and all persons with a 5% or greater membership or voting interest in the Corporation or LLC. 1) Name Social Security # if individual Managing Member Residence Address Tax I.D. # if applicable 5% or greater voting interest City and State Zip code 5% or greater membership Telephone # Date of Birth interest

2) Name Social Security # if individual Managing Member Residence Address Tax I.D. # if applicable 5% or greater voting interest City and State Zip code 5% or greater membership Telephone # Date of Birth interest

3) Name Social Security # if individual Managing Member Residence Address Tax I.D. # if applicable 5% or greater voting interest City and State Zip code 5% or greater membership Telephone # Date of Birth interest Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 3 of 15

4) Name Social Security # if individual Managing Member Residence Address Tax I.D. # if applicable 5% or greater voting interest City and State Zip code 5% or greater membership Telephone # Date of Birth interest

5) Name Social Security # if individual Managing Member Residence Address Tax I.D. # if applicable 5% or greater voting interest City and State Zip code 5% or greater membership Telephone # Date of Birth interest

6) Name Social Security # if individual Managing Member Residence Address Tax I.D. # if applicable 5% or greater voting interest City and State Zip code 5% or greater membership Telephone # Date of Birth interest

Section D Have you or any partner, office holder, managing member, 5% stockholder or member, spouse or other person interested in this license/franchise ever been convicted of a felony? Yes No If YES, attach a written explanation.

Do you own the real estate on which the proposed franchise/license will be located? Yes No If NO, attach a completed signed and dated copy of your LEASE OR RENTAL CONTRACT

Section E List any prior experience in hospitality industry List any prior experience in adult entertainment/exotic dancer industry

List any current ownership, management, consulting with List any current ownership, management, consulting with hospitality industry adult/exotic dancer industry

THIS WORK SHEET HAS BEEN DEVISED AS AN AID TO APPLICANTS IN COMPLETING THE FINACIAL VERIFICATION REQUIRED FOR THEIR APPLICATION FOR A FRANCHISE/LICENSE. THIS SHEET ALONE DOES NOT CONSTITUTE FINANCIAL VERIFICATION. ATTACHMENTS ARE REQUIRED. Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 4 of 15

EXHIBIT T Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 5 of 15

owens tarabichi llp Counselors At Law

111 N. Market St., Suite 730 San Jose, CA 95113 Tel: 408-298-8200 Fax: 408-521-2203 www.owenstarabichi.com

Bruno W. Tarabichi 408-298-8204 [email protected]

April 20, 2012

By Email and First Class Mail ([email protected])

Frank B. Spencer President Crazy Horse Consulting, Inc. 1474 St. Clair Ave. Cleveland, OH 44114-2002

Re: CRAZY HORSE III Trademark Dispute

Dear Mr. Spencer:

Owens Tarabichi LLP has been retained by Russell Road Food and Beverage, LLC (“RRFB”) to represent it in trademark and unfair competition matters, including specifically your claim that RRFB must seek a license from you or Crazy Horse Consulting in order to continue its use of its CRAZY HORSE III trademark. Please direct all future correspondence regarding this matter to our attention.

As an initial matter, RRFB disputes that it needs a license to use its CRAZY HORSE III trademark. RRFB’s CRAZY HORSE III mark does not infringe your alleged rights in the CRAZY HORSE mark. In this regard, there are clear differences in sight, sound, meaning, and overall commercial impression that obviate any likelihood of confusion. Moreover, it is unclear that you or Crazy Horse Consulting possess any valid trademark rights in the CRAZY HORSE name and mark. To date, you have not provided any evidence supporting your claimed rights.

In addition, we note that your supposed right to exclude others from using CRAZY HORSE is extremely limited. Despite allegedly first using CRAZY HORSE in 1978, you delayed filing to federally register the CRAZY HORSE mark until 2008, over 30 years later. During those 30 years, you have continually failed to police the CRAZY HORSE mark, as evidenced by numerous third-party uses of, applications for, and registrations for marks consisting of or containing CRAZY HORSE in connection with a wide variety of goods and services, including adult entertainment services (e.g., strip clubs). This crowded field of CRAZY HORSE trademarks in the United States (and most likely throughout the world) means that CRAZY HORSE is a weak mark entitled to lesser protection and that your rights, if any, must be

Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 6 of 15

Frank B. Spencer President Crazy Horse Consulting, Inc. April 20, 2012 Page 2

narrowly construed and cannot—as a matter of law—form the basis for an infringement claim against RRFB.

In this regard, we note that, in early February 2012, you had corresponded with Martin Pomeroy, who was previously handling this matter on RRFB’s behalf, and requested that RRFB enter into a licensing arrangement with you. We understand that Mr. Pomeroy asked you to provide a few proposals for RRFB’s consideration, but that you have yet to do so. Therefore, we presume that you have also reached the same conclusion that no license is required for the reasons enumerated in the preceding paragraphs.

Nevertheless, in an effort to reach an amicable resolution to this matter, RRFB is willing to enter into a simple consent agreement without monetary exchange. While RRFB will vigorously defend its right to use its CRAZY HORSE III trademark, it does not necessarily seek to preclude your use of CRAZY HORSE outside the State of Nevada. Presuming that you are willing to settle on this basis, we can provide you with a draft consent agreement for execution. Although RRFB desires to resolve this matter amicably, you should note that this proposal is for settlement purposes only and is without prejudice to its rights in this matter. In the absence of a favorable response, we will recommend that RRFB take appropriate action to protect its rights in the CRAZY HORSE III trademark.

We look forward to your prompt reply no later than April 30, 2012.

Sincerely,

OWENS TARABICHI LLP

By Bruno W. Tarabichi

Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 7 of 15

EXHIBIT U Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 8 of 15 Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 9 of 15 Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 10 of 15 Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 11 of 15 Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 12 of 15 Case 2:12-cv-01514-LRH-GWF Document 19-8 Filed 11/30/12 Page 13 of 15

EXHIBIT V 11/29/12 Case 2:12-cv-01514-LRH-GWFCrazy Horse Document Cleveland 19-8 Filed 11/30/12 Page 14 of 15

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CRAZY HORSE, PLATINUM HORSE, GOLD HORSE, SILVER HORSE and the HORSE HEAD logo are FEDERALLY REGISTERED trademarks, which are used under license by Crazy Horse Management Inc. and its licensees. Any use of these marks without the written consent of Crazy Horse Management Inc. is unlawful and prohibited. Crazy Horse Management Inc. will pursue all available remedies for injunctive relief and damages against any persons who engage in such unauthorized use.

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