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MICHAEL A. PAINTER, Bar #43600
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. law.com
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,KAUFMAN&PAINTER
10250 Constellation Boulevard, Suite 2900
3 Los Angeles, California 90067
(310) 881-6800 - Telephone
4 (310) 881-6801 - FacsImile

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Attorneys for Plaintiff,
6 GEORGE THOROGOOD

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UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT OF CALIFORNIA

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GEORGE THOROGOOD, an
individual,

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Plaintiff,
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COMPLAINT FOR TRADEMARK
INFRINGEMENT AND FALSE
DESIGNATION OF ORIGIN
JURY TRIAL DEMANDED

MICHAELS STORES, INC., a
Delaware corporation; and DOES IX, Inclusive,

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Defendants.

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COME NOW THE PLAINTIFF, GEORGE THOROGOOD, and for
causes of action against the defendants, complains and alleges as follows:

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JURISDICTION

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1.

This is a civil action which arises under Sections 32(1) [15 U.S.C.

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§ 1114(1)] and 43(a) [15 U.S.C. § 1125(a)] of the United States Trademark Act.

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Jurisdiction is based upon 15 U.S.C. Section 1121 and 28 U.S.C. Section 1338(a).

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THE PARTIES

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2.

Plaintiff, GEORGE THOROGOOD, is an individual and citizen of

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the United States, having his principal place of business in Los Angeles,

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California (hereinafter referred to as "Thorogood").

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3.

Plaintiff is informed and believes and, based on such information and

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belief, alleges that defendant, MICHAELS STORES, INC., is a Delaware corpora-

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tion and has its principal place of business in Irving, Texas and does business

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throughout the United States in general and in the Central District of California in

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particular (hereinafter referred to as "Michaels").

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4.

The true names or capacities, whether individual, corporate, associate,

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representative, or otherwise, of the defendants named herein as DOES I - X,

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inclusive, are unknown to plaintiff who therefore, pursuant to Local Rule 19-1 of

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this Court, sues said defendants by such fictitious names and plaintiff will amend

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this Complaint to show their true names and capacities when the same have been

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ascertained.

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FIRST COUNT FOR TRADEMARK INFRINGEMENT

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5.

Plaintiff hereby repeats and realleges Paragraphs 1 - 4, inclusive, as

though set forth in full herein again.
6.

In 1983, and long prior to any of the acts of the defendants corn-

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plained of in this Complaint, Thorogood, by and through his predecessor-in-

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interest, adopted the mark BAD TO THE BONE as a trademark to designate

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clothing, namely, T-shirts, tank tops, jackets and hats, said mark being extensively

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used, advertised and promoted throughout the United States in general and in the

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State of California in particular.

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7.

Since long prior to any of the acts of the defendants complained of in

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this Complaint, Thorogood, by and through his predecessor-in-interest, applied for

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and registered its BAD TO THE BONE trademark on the Principal Register in the

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United States Patent and Trademark Office, a copy of Certificate of Trademark

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Registration No. 3,684,749 being attached hereto as Exhibit 1. Based upon the

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rights accorded registration of the trademark and the trademark's long and contin-

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uous use by Thorogood, and his predecessor-in-interest, to designate clothing,

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namely , T-shirts, tank tops, jackets and hats, Thorogood owns the exclusive right

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to manufacture and sell clothing, namely, T-shirts, tank tops, jackets and hats

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designated by the BAD TO THE BONE trademark and to advertise and promote

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the sale of clothing, namely, T-shirts, tank tops, jackets and hats through the use of

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the BAD TO THE BONE trademark.

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8.

Since long prior to the acts of defendants complained of in this

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Complaint, Thorogood and his predecessor-in-interest, extensively marketed, sold,

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advertised and promoted the sale of clothing, namely, T-shirts, tank tops, jackets

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and hats under the trademark BAD TO THE BONE. Thorogood has gained a

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substantial reputation in connection with clothing, namely, T-shirts, tank tops,

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jackets and hats marketed and sold under the BAD TO THE BONE trademark. By

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reason of the marketing and sale of products under the above trademark, the trade
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and public, prior to said acts of defendants complained of in this Complaint, have

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come to recognize the trademark BAD TO THE BONE, when used in connection

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with clothing, namely, T-shirts, tank tops, jackets and hats as identifying such

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products as being exclusively supplied by, authorized or affiliated with

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Thorogood.

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9.

Long after Thorogood's first use of the BAD TO THE BONE trade-

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mark in commerce, defendants, and each of them, first commenced use of the

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trademark BAD TO THE BONE to manufacture, identify, distribute, advertise

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and/or promote the sale ofT-shirts in the United States. Defendants, and each of

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them, have used the trademark BAD TO THE BONE despite the fact the identified

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trademark wrongfully appropriates Thorogood's registered BAD TO THE BONE

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trademark and is confusingly similar thereto.

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10.

Defendants' act of manufacturing, distributing, advertising, marketing

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and promoting the sale of T-shirts through the use of the trademark BAD TO THE

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BONE is directed to the same segment of the purchasing public to which

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Thorogood directs his products.

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11.

Defendants' use of the trademark BAD TO THE BONE as alleged

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above to distribute, designate, advertise and/or promote the sale ofT-shirts is

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likely to cause confusion or mistake or to deceive the purchasers of its products as

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to the source of origin of defendants' products and to cause defendants' products

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to be passed off or viewed as those which are provided or authorized by

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Thorogood.

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12.

That unless restrained by this Court, defendants, and each of them,

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will continue to use the trademark BAD TO THE BONE to manufacture, identify,

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distribute, advertise and/or promote the sale of T-shirts and, as a result thereof, the

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public generally will be misled and deceived into believing that the products of

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defendants, and each of them, are those of, or are affiliated with Thorogood, to the

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irreparable damage and injury of the business of Thorogood.
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13.

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Thorogood has duly demanded that defendants, and each of them,

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cease and desist from the aforesaid violation of Thorogood's rights, defendant

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having refused to do so. This is therefore an exceptional case within the meaning

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of §35 of the United States Trademark Act, 15 U.S.C. §1117, entitling Thorogood

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The aforesaid actions of defendants, and each of them, have irrepar-

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ably damaged Thorogood and will, unless restrained, continue to so damage the

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business of Thorogood and its good will, for all of which there is no adequate

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remedy at law.

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SECOND COUNT FOR FEDERAL UNFAIR COMPETITION

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AND FALSE DESIGNATION OF ORIGIN

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Plaintiffs hereby repeat and reallege Paragraphs 1 - 4, and 5 - 14,

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inclusive, of the First Count as though set forth in full herein again inclusive, of

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the First Count as though set forth in full herein again.

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16.

Defendants' above-alleged actions constitute the use in connection

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with goods of false or misleading descriptions and representations with respect to

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the origin, sponsorship or approval of its products and the publicity therefor by

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suggesting that such goods and the advertising thereof are connected with or

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associated, sponsored or affiliated with Thorogood, or that the same truly origi-

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nated with Thorogood. Defendants, and each of them, have caused its T-shirts,

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and the distributing, designating, advertising and/or promotion thereof, to enter

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United States commerce. The misappropriation and use of Thorogood's BAD TO

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THE BONE trademark by defendants, and each of them, as well as defendant's

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other actions described above constitute false and misleading descriptions of fact

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and representations of fact that are likely to give the public a false impression and

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to confuse the public as to the source of defendants' goods.

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Thorogood is informed and believes and, based on such information

and belief, alleges that defendants, and each of them, adopted and used the
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trademark BAD TO THE BONE with actual knowledge of Thoro good's long prior

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use of the BAD TO THE BONE trademark and with the intent to trade on the

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reputation and good will of that mark.

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Although defendants, and each of them, have been requested by

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Thorogood to cease the advertising and promotion of the sale of T-shirts through

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the use of the trademark BAD TO THE BONE, defendants, and each of them,

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have, nevertheless, refused said request and have continued to use said mark in

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connection with advertising, marketing and promoting the sale of its products.

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This is therefore an exceptional case within the meaning of §35 of the United

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States Trademark Act, 15 U.S.C. § 1117, entitling Thorogood to recover reason-

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able attorneys' fees.

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The aforesaid actions of defendants, and each of them, have irrepar-

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ably damaged Thorogood and will, unless restrained, continue to so damage the

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business of Thorogood and its good will, for all of which there is no adequate

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remedy at law.

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WHEREFORE, plaintiff seeks judgment against defendants, and each of

them, as follows:
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That defendants, and each of them, and their officers, agents, ser-

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vants, employees, attorneys, confederates, related companies, and all persons

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acting in concert or participation with it, be enjoined and restrained during the

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pendency of this action, and permanently thereafter:

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( a)

from using in any manner as a trademark or trade name the

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mark BAD TO THE BONE, alone or in combination with any other word or words

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or design, in connection with designating, distributing, advertising, promoting

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and/or offering for sale or the sale ofT-shirts not produced by plaintiff, or not

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authorized by plaintiff to be sold in connection with said mark;

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(b)

from passing off, inducing or enabling others to sell or pass off

T-shirts which are not plaintiffs or not offered under the control and supervision
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of plaintiff and approved by plaintiff, through the use of the mark BAD TO THE

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BONE, or formatives thereof;
( c)

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from committing any acts calculated to cause purchasers to

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believe that defendants' T-shirts are sponsored by or approved or connected with

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or guaranteed by or offered and sold under the control and supervision of plaintiff;

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and
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manner.

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2.

from otherwise competing unfairly with plaintiff in any

That defendants, and each of them, be required to deliver up to

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plaintiff or destroy any and all price lists, labels, signs, prints, packages, wrappers,

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receptacles, advertising matter, promotional and other material in the possession of

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defendant, or under its control bearing the mark BAD TO THE BONE alone, or in

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combination with any other word or words or design used in connection with the

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distributing, designating, advertising, promotion or sale of T-shirts not produced

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by plaintiff or not made under the supervision and control of plaintiff.
3.

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That defendants, and each of them, account for and pay over to

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plaintiff all damages sustained by plaintiff and all profits realized by defendants by

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reason of defendants' unlawful acts and that the amount of damages for infringe-

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ment of plaintiffs trademark be increased by a sum not exceeding three times the

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amount thereof as provided by Section 35 of the United States Trademark Act, 15

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U.S.C. §1117.

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4.

That plaintiff be awarded exemplary damages in the amount of

$100,000.

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S.

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That plaintiff be awarded its costs of suit, including reasonable

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attorneys' fees and have such other and further relief as to the Court may deem

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equitable, including but not limited to, any relief set forth under Section 34-39 of

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the United States Trademark Act.

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PLAINTIFF DEMANDS A JURY TRIAL OF THIS ACTION.

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Respectfully submitted,

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ISAACMAN, KAUFMAN & PAINTER

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BY:~~

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Dated:

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Mlchae A. Pamter
Attorneys for Plaintiff
GEORGETHOROGOOD

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