Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1093916 Filing date: 11/06/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92071971 Party Plaintiff Caryn Mandabach Productions Limited Correspondence WILLIAM C WRIGHT Address EPSTEIN DRANGEL LLP 60 EAST 42ND STREET, SUITE 2520 NEW YORK, NY 10165 UNITED STATES Primary Email: [email protected] 212-292-5390 Submission Motion to Suspend for Civil Action Filer's Name Samuel T. Kilb Filer's email [email protected] Signature /Samuel T Kilb/ Date 11/06/2020 Attachments Motion to Suspend and Extend Discovery .pdf(73916 bytes ) 1 Complaint.pdf(2040575 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Caryn Mandabach Productions Limited, Petitioner v. Cancellation No. 92071971 Sadlers Brewhouse Limited, Registrant MOTION TO SUSPEND PROCEEDING AND EXTEND DATES TO RESPOND TO DISCOVERY Caryn Mandabach Productions Limited (“Petitioner”), by its undersigned counsel, respectfully requests that the Board suspend the above-captioned proceeding (“Cancellation Proceeding”), pending the disposition of a recently filed civil action by Petitioner against Sadlers Brewhouse Limited and others, as the litigation involves issues and claims in common with the Cancellation Proceeding. In support of this motion, Petitioner, by its undersigned attorneys, directs the Board to a copy of the complaint that it filed today (November 6, 2020) in the Central District of California against Sadlers Brewhouse Limited and others, Caryn Mandabach Productions Limited v. Sadlers Brewhouse Limited et al, Civil Action No. 2:20-cv-10220, which is attached hereto. In light of this Motion to Suspend, Petitioner further moves that it be granted an additional thirty (30) days from the date of the resumption (if any) of this Cancellation Proceeding to respond to discovery requests propounded by Registrant that will come due during the pendency of this motion. Respectfully submitted, EPSTEIN DRANGEL LLP Attorneys for Petitioner Dated: November 6, 2020 BY: /William C. Wright/ William C. Wright 60 East 42nd Street, Suite 2520 New York, New York 10165 Tel. No.: (212) 292 5390 Fax. No.: (212) 292-5391 E-Mail: [email protected] ****************************************************************************** CERTIFICATE OF SERVICE I hereby certify that a true and complete copy of the foregoing Motion to Suspend and Extend Dates to Respond to Discovery was served by e-mail on this 6th day of November, 2020 upon Applicant’s counsel at the following address: J Scott Gerien Dickenson Peatman & Fogarty 1455 First Street, Suite 301 Napa, CA 94559 [email protected], [email protected], [email protected] Phone: 707-252-7122 Dated: November 6, 2020 By: / Samuel T Kilb / Samuel T. Kilb 60 East 42nd Street, Suite 2520 New York, New York 10165 Phone: (212) 292-5390 Fax: (212) 292-5391 Attorney for Petitioner ****************************************************************************** Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 1 of 25 Page ID #:1 1 EPSTEIN DRANGEL LLP Peter J. Farnese (SBN 251204) 2 [email protected] 3 11601 Wilshire Blvd., Suite 500 Los Angeles, California 90025 4 Telephone: 310-356-4668 Facsimile: 310-388-1232, 5 Jason M. Drangel, Pro Hac Vice Application Forthcoming 6 [email protected] 7 Ashly E. Sands, Pro Hac Vice Application Forthcoming [email protected] 8 William C. Wright, Pro Hac Vice Application Forthcoming [email protected] 9 60 East 42nd Street, Suite 2520 10 New York, NY 10165 Telephone: 212-292-5390 11 Facsimile: 212-292-5391 12 Attorneys for Plaintiff Caryn Mandabach Productions Limited 13 UNITED STATES DISTRICT COURT 14 FOR THE CENTRAL DISTRICT OF CALIFORNIA 15 CARYN MANDABACH PRODUCTIONS CASE NO.: 2:20-cv-10220 LIMITED, 16 COMPLAINT FOR: 17 Plaintiff, (1) FEDERAL UNFAIR 18 v. COMPETITION, PASSING OFF, FALSE ADVERTISING AND 19 SADLERS BREWHOUSE LIMITED; FALSE DESIGNATION OF 20 HALEWOOD WINES & SPIRITS, INC.; ORIGIN; and THE WINEBOW GROUP, LLC, 21 (2) UNFAIR COMPETITION UNDER Defendants. CALIFORNIA’S BUSINESS AND 22 PROFESSIONS CODE § 17200; 23 (3) FALSE ADVERTISING UNDER 24 CALIFORNIA’S BUSINESS AND PROFESSIONS CODE § 17500; 25 AND 26 (4) CANCELLATION OF U.S. TRADEMARK REGISTRATION 27 NO. 5,573,011 28 DEMAND FOR JURY TRIAL COMPLAINT Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 2 of 25 Page ID #:2 1 Caryn Mandabach Productions Limited (hereinafter, “Plaintiff” or “CMPL”), by 2 and through its undersigned counsel, files this Original Complaint against Defendants 3 Sadlers Brewhouse Limited (hereinafter “Sadlers”), Halewood Wines & Spirits, Inc. 4 (hereinafter, “Halewood”) and The Winebow Group, LLC (hereinafter, “Winebow”) 5 (Defendant Sadlers, Defendant Halewood and Defendant Winebow are hereinafter 6 collectively referred to as “Defendants”), and respectfully alleges as follows: 7 NATURE OF THE ACTION 8 1. This case involves claims for unfair competition in violation of Section 9 43(a) of the Trademark Act of 1946, as amended (15 U.S.C. § 1125(a)); and related 10 state and common law claims, arising out of Defendants’ infringement of Plaintiff’s 11 PEAKY BLINDERS Marks (as defined infra), including, without limitation, by 12 manufacturing, advertising, marketing, promoting, distributing, displaying, offering for 13 sale, and/or selling products that infringe one or more of the PEAKY BLINDERS 14 Marks (as defined infra) (collectively, the “Infringing Products”) (the “Action”). 15 JURISDICTION AND VENUE 16 2. This Court has federal subject matter jurisdiction over the claims asserted 17 in this Action pursuant to 28 U.S.C. §§ 1331 and 1338(a) and 15 U.S.C. § 1121, as 18 claims that arise under the Lanham Act. This Court has supplemental jurisdiction 19 pursuant to 28 U.S.C. § 1367(a). 20 3. Personal jurisdiction exists over Defendants because, upon information and 21 belief, Defendants have regularly conducted business in California and in this judicial 22 district, and continue to conduct business in California and in this judicial district; 23 and/or are causing tortious injury by an act in California; and/or are causing tortious 24 injury in California by an act outside California where they regularly do and/or solicit 25 business; and/or engage in other systematic courses of conduct and/or derive substantial 26 revenue from goods used or consumed, or services rendered, in California; and/or 27 otherwise avail themselves of the privileges and protections of the laws of the State of 28 -1- COMPLAINT Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 3 of 25 Page ID #:3 1 California, such that this Court’s assertion of jurisdiction over Defendants does not 2 offend traditional notions of fair play and due process. 3 4. Defendants have sufficient minimum contacts with this State, through at 4 least the importation, marketing, distribution, offer, supply, and/or sale of Infringing 5 Products within the State of California. Upon information and belief Halewood and 6 Winebow are offering for sale and/or selling the Infringing Products in California. 7 5. Alternatively, upon information and belief, Sadlers is not subject to 8 jurisdiction in any state’s court of general jurisdiction and the claims outlined herein 9 primarily arise under federal law. In addition to the actions complained of herein, inter 10 alia, Sadlers has sufficient contacts with the United States as a whole and personal 11 jurisdiction will be established over Sadlers upon service pursuant to Fed. R. Civ. P. 12 4(k)(2): 13 a. Sadlers arranged for the Infringing Products to be imported, distributed, 14 offered, supplied and/or sold in the United States through, inter alia, U.S. 15 importers, distributors, retailers and/or the Internet, including but not 16 limited to Halewood and Winebow. 17 6. Venue for this action is proper in the United States District Court for the 18 Central District of California, inter alia, pursuant to 28 U.S.C. § 1391 because, upon 19 information and belief, a substantial part of the events or omissions giving rise to the 20 asserted counts occurred in this judicial district, and harm to Plaintiff has occurred in 21 this district. Alternatively, as noted supra, this Court has personal jurisdiction over 22 Defendants. 23 THE PARTIES 24 7. Plaintiff is a private limited company, organized and existing under the 25 laws of the United Kingdom with an address of 39a Berwick Street, London, England, 26 W1F 8RU. 27 8. Upon information and belief, Defendant Sadlers is a private limited 28 company, organized and existing under the laws of the United Kingdom and located and -2- COMPLAINT Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 4 of 25 Page ID #:4 1 doing business at 15-17 Church Street, Stourbridge, West Midlands, United Kingdom 2 DY8 1LU. 3 9. Upon information and belief, Defendant Halewood is a corporation, 4 organized and existing under the laws of the State of Florida and is located and doing 5 business at 777 Brickell Avenue, Suite 500, Miami, Florida 33131. 6 10. Upon information and belief, Defendant Winebow is a limited liability 7 company, organized and existing under the laws of the State of Virginia and is located 8 and doing business at 4800 Cox Road, Suite 300, Glen Allen, VA, 23060. 9 GENERAL ALLEGATIONS 10 Plaintiff and its Award-Winning PEAKY BLINDERS SHOW and PEAKY 11 BLINDERS Marks 12 11. Caryn Mandabach is a multi-award-winning television producer whose 13 ground-breaking hits include NURSE JACKIE, ROSEANNE, THIRD ROCK FROM 14 THE SUN and THAT 70S SHOW. 15 12. In 2005, Caryn Mandabach founded CMPL, an internationally renowned 16 production company. 17 13. CMPL produces the multi-award-winning television series, PEAKY 18 BLINDERS, which premiered in the United Kingdom on BBC One in September 2013, 19 and on Netflix in the United States in September 2014 (the “PEAKY BLINDERS 20 SHOW”).