professional bull riders trademark complaint

1 4838-5717-2513.1

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO

COLORADO SPRINGS

PROFESSIONAL BULL RIDERS, INC.,

a Colorado corporation,

Plaintiff,

v. Case No.: 1:14-cv-00379

MURCIELAGO, INC.,

a Nebraska corporation

MR. MICHAEL MALCOM

an individual

Defendants.

SECOND AMENDED COMPLAINT AND JURY DEMAND

Plaintiff Professional Bull Riders, Inc. (“PBR”), for its Second Amended Complaint and

Jury Demand against Defendant Murcielago, Inc. (“Murcielago”) and Defendant Mr. Michael

Malcom (“Mr. Malcom”) (together, the “Defendants”), states and alleges as follows:

NATURE OF THE CASE

1. PBR brings this action against Defendants for trademark and trade dress

infringement and unfair competition under the Lanham Act (15 U.S.C. § 1051, et seq.), trade

dress infringement under common law trademark infringement, deceptive trade practices under

the Colorado Consumer Protection Act (C.R.S. § § 6-1-1-101, et seq.), breach of contract, and

declaratory judgment.

PARTIES

2. PBR is a Colorado corporation having a principal place of business at 101 West

Riverwalk, Pueblo, Colorado 81003.

3. Murcielago is a Nebraska corporation having a mailing address of PO Box 230,

Alma, Nebraska, 68920. Murcielago’s registered agent is Michelle R. Caspersen, 375 Valley

Road, Boelus, Nebraska 68820.

Case 1:14-cv-00379-PAB-KMT Document 74 Filed 02/17/15 USDC Colorado of 36

2 4838-5717-2513.1

4. Mr. Malcom is an individual who, upon information and belief, resides at 3840

Adirondack Drive, Colorado Springs, Colorado 80918.

JURISDICTION AND VENUE

5. This Court has jurisdiction over PBR’s claims pursuant to 28 U.S.C. § § 1331,

1338(a), 1367, and 2201.

6. This Court has personal jurisdiction over Murcielago because Murcielago entered

into one or more contracts with PBR in the State of Colorado and transacts business in the State

of Colorado. Murcielago consented to jurisdiction in this state by contract. This Court has

personal jurisdiction over Mr. Malcom because websites he registered are accessible in the State

of Colorado, and Mr. Malcom resides in this State.

7. Venue is proper in this district pursuant to 28 U.S.C. § 1391 and § 1400 because a

substantial part of the events giving rise to these claims occurred in this District. Murcielago

consented to venue in this Court by contract. Mr. Malcom is a resident of this District.

FACTUAL BACKGROUND

A. PBR’s Business

8. PBR was formed in 1992 to promote, organize and sponsor bull riding events

throughout the United States and abroad.

9. Due in large part to PBR’s efforts, bull riding has become one of the fastest

growing sports in the country, setting new milestones in membership, recognition and media

attention.

10. PBR events are watched by over 100 million viewers each year on network and

cable television in the United States. Additionally, foreign broadcasts of PBR events reach more

than 84 countries and 500 million households worldwide on an annual basis.

11. PBR’s live bull riding events also have enjoyed strong growth in attendance. In

1995, 310,000 fans attended PBR events across the nation. Today, PBR events attract over 1.5

million attendees each year.

B. PBR’s Trademarks

12. From its inception in 1992, PBR consistently and exclusively has used the

trademarks PROFESSIONAL BULL RIDERS, and PBR, as well as other marks and slogans

(collectively, the “PBR Marks”) to identify its sporting events and related entertainment services.


3 4838-5717-2513.1

PBR also consistently has used the PBR Marks on merchandising and apparel sold in connection

with PBR and in its advertising efforts.

13. Over the years, PBR has expanded its use of the PBR Marks to a wide range of

goods, including action figures, board games, bedding, video games, decals and posters,

beverage glasses and coffee mugs, key chains, barbecue sauces, and various other apparel and

merchandising items, all of which reference or evoke PBR’s services, the sport of bull riding,

and PBR’s various properties.

14. Due to PBR’s long-standing, extensive and exclusive use of the PBR Marks, they

have acquired distinctiveness in the minds of the relevant public and have become well-known as

identifying PBR’s goods and services.

15. In recognition of PBR’s exclusive right to use the PBR Marks, the United States

Patent and Trademark Office (“USPTO”) has granted PBR numerous trademark registrations,

including those summarized in the table below (the registered marks identified below are

included among the “PBR Marks”):

WORDS REG. NO. REG. DATE GOODS DESCRIPTION 8 SECOND HEROES

3,627,366 05/26/2009 ACTIVITY TOYS, NAMELY, ACTION

FIGURES AND TOY ANIMALS

3,398,960 03/18/2008 PRINTED MATTER, NAMELY,

POSTERS AND BROCHURES ABOUT

BULL RIDING, DECALS, BUMPER

STICKERS, CALENDARS, PENS AND

NEWSPAPERS AND MAGAZINES

ABOUT BULL RIDING; CLOTHING

FOR MEN AND WOMEN, NAMELY,

SHIRTS, SWEATSHIRTS, BASEBALL

STYLE CAPS AND JACKETS

8 SECONDS 3,739,507 01/19/2010 EVENT PROGRAMS;

PUBLICATIONS, NAMELY,

MAGAZINES IN THE FIELDS OF

BULL RIDING; SOUVENIR

PROGRAMS CONCERNING BULL

RIDING


4 4838-5717-2513.1

BULL & RIDER

*Design Only







FOR MEN AND WOMEN, NAMELY,


STYLE CAPS AND JACKETS;

ENTERTAINMENT SERVICES,

NAMELY, ARRANGING,

SPONSORING AND CONDUCTING

SPORTS COMPETITIONS IN THE

FIELD OF BULL RIDING; AND FAN

CLUBS

BULL & RIDER

*Design Only

3,583,312 03/03/2009 BAR SERVICES

BULL HEAD

*Design Only






ABOUT BULL RIDING;

CLOTHING FOR MEN AND WOMEN,

NAMELY, SHIRTS, SWEATSHIRTS,

BASEBALL STYLE CAPS AND

JACKETS; ENTERTAINMENT

SERVICES, NAMELY, ARRANGING,




CLUBS

3,088,091 05/02/2006 ANIMAL FEED


5 4838-5717-2513.1

GET TOUGH 3,740,289 01/19/2010 PRINTED MATTER, NAMELY,



STICKERS, CALENDARS,

MAGAZINES AND NEWSPAPERS


FOR MEN, WOMEN AND CHILDREN,


BASEBALL STYLE CAPS, KNIT

CAPS AND JACKETS;


NAMELY, ARRANGING AND

CONDUCTING SPORTS

COMPETITIONS IN THE FIELD OF

BULL RIDING AND FAN CLUBS;

RINGS BEING JEWELRY MADE OF

PRECIOUS METAL, ORNAMENTAL

PINS, AND CLOCKS

3,583,328 03/03/2009 BAR SERVICES

MOBULL 3,785,420 05/04/2010 ONLINE RETAIL STORE SERVICES

FEATURING GAMES, CLOTHING,

HOME DÉCOR, IMAGES, MUSIC,

VIDEO, GIFTS AND NOVELTIES,

AND WALLPAPER FOR USE WITH

MOBILE COMMUNICATIONS

DEVICES; ENTERTAINMENT

SERVICES, NAMELY, PROVIDING

NEWS AND INFORMATION ON THE

TOPIC OF PROFESSIONAL BULL

RIDING, PRESENTED TO MOBILE

COMMUNICATIONS DEVICES VIA A

GLOBAL COMPUTER NETWORK

AND WIRELESS NETWORKS

PBR LTD. 3,857,925 10/05/20 10 CLOTHING, T-SHIRTS,

SWEATSHIRTS, LONG SLEEVE

SHIRTS, WOVEN SHIRTS, THERMAL

UNDERWEAR, FLEECE VESTS,

FLEECE TOPS, FLEECE PANTS,

FLEECE JACKETS, HATS, BEANIES


6 4838-5717-2513.1

PBR IRON COWBOY 4,345,838 6/4/2013 SHIRTS, T-SHIRTS, TOPS;



CONDUCTING SPORTS


BULL RIDING

LAST COWBOY

STANDING

4,345,840 6/4/2013 SHIRTS, T-SHIRTS, TOPS;



CONDUCTING SPORTS


BULL RIDING

LAST COWBOY

STANDING

4,345,839 6/4/2013 ENTERTAINMENT SERVICES,


CONDUCTING SPORTS


BULL RIDING

PBR MOBULL 3,785,421 05/04/2010 ONLINE RETAIL STORE SERVICES















7 4838-5717-2513.1

PBR MOBULL

3,785,422 05/04/2010 ONLINE RETAIL STORE SERVICES














PBR PROFESSIONAL

BULL RIDERS






ABOUT BULL RIDING;


NAMELY, ARRANGING,




CLUBS


8 4838-5717-2513.1

PBR PROFESSIONAL

BULL RIDERS

2,691,460 02/25/2003 BELT BUCKLES OF PRECIOUS

METAL; RINGS BEING JEWELRY

MADE OF PRECIOUS METAL;

ORNAMENTAL PINS; WATCHES

AND CLOCKS; PRINTED MATTER,

NAMELY, POSTERS AND

BROCHURES ABOUT BULL RIDING,

DECALS, BUMPER STICKERS,

CALENDARS, PENS, AND


ABOUT BULL RIDING; CLOTH

GARMENT BAGS FOR TRAVEL,

BRIEFCASES AND ALL-PURPOSE

SPORTS EQUIPMENT BAGS;

PLASTIC BANNERS AND PLASTIC

PENNANTS; DRINKING GLASSES,

BEVERAGE GLASSWARE, COFFEE

MUGS AND COFFEE CUPS;




JACKETS; ENTERTAINMENT

SERVICES, NAMELY, ARRANGING

AND CONDUCTING SPORTS


BULL RIDING AND FAN CLUBS

3,619,950 05/12/2009 COMPUTER GAMES AND VIDEO

GAMES, NAMELY,

DOWNLOADABLE MULTIMEDIA

FILE CONTAINING VIDEO, GAMES,

AND INTERNET WEB LINKS

RELATING TO COMPUTER GAMES;

AND VIDEO GAMES, NAMELY,

COMPUTER PROGRAMS FOR USE IN

COMPUTER GAMES AND VIDEO

GAMES

3,092,012 05/16/2006 TRADING CARD GAMES; ACTIVITY

TOYS, NAMELY, ACTION FIGURES,

TOY VEHICLES AND TOY ANIMALS


9 4838-5717-2513.1

3,720,726 12/08/2009 BAR SERVICES

3,085,917 04/25/2006 ANIMAL FEED

3,780,363 04/27/010 DIGITAL MEDIA, NAMELY, DVDS

FEATURING BULL RIDING

3,938,601 03/29/2011 AIR FRESHENING PREPARATIONS

DESIGNED FOR VEHICLES;

VEHICLE ACCESSORIES, NAMELY,

WINDSHIELD SUN SHADES, SUN

VISORS, SIDE AND REAR WINDOW

SUN SHADES, SEAT COVERS,

STEERING WHEEL COVERS, CARGO

BAGS AND CASES, VEHICLE

TRUNK ORGANIZER BAGS AND

CASES, VEHICLE GLOVE

COMPARTMENT BAGS AND CASES,

VEHICLE CONSOLE ORGANIZER

BAGS AND CASES, ORGANIZER

BAGS AND CASES THAT ATTACH

TO A VEHICLE SEAT; ROOF

MOUNTED LOAD CARRIERS FOR

USE ON VEHICLES; FITTED COVERS

FOR VEHICLES; FLOOR MATS FOR

VEHICLES

PBR TEAM SHOOTOUT 3,733,312 01/05/2010 ENTERTAINMENT SERVICES,


CONDUCTING SPORTS


BULL RIDING


10 4838-5717-2513.1

PBR

3,097,240 05/30/2006 BELT BUCKLES, ORNAMENTAL

PINS, MONEY CLIPS, WATCHES,

CLOCKS AND RINGS MADE OF

PRECIOUS METAL; CLOTH

GARMENT BAGS FOR TRAVEL;

WALLETS, BRIEFCASES AND ALL-

PURPOSE SPORTS EQUIPMENT

BAGS; PLASTIC KEY CHAIN TAGS;

NON-METAL AND NON-LEATHER

KEY CHAINS; DRINKING GLASSES,

BEVERAGE GLASSWARE, COFFEE

MUGS AND COFFEE CUPS;



BASEBALL STYLE CAPS, JACKETS

AND FOOTWEAR; AND BELTS;

TOYS AND GAMES, NAMELY,

BOARD GAMES, TRADING CARDS

GAMES, CARD GAMES, AND

PUZZLES; ACTIVITY TOYS,

NAMELY, TOY ACTION FIGURES,

TOY VEHICLES AND TOY

ANIMALS; BARBECUE SAUCE

2,207,333 12/01/1998 PRINTED MATTER, NAMELY

POSTERS AND BROCHURES

CONCERNING BULL RIDING,

DECALS, AND NEWSPAPERS AND

MAGAZINES CONCERNING BULL

RIDING

3,249,568 06/05/2007 ENTERTAINMENT IN THE NATURE

OF COMPETITIONS IN THE FIELD

OF BULL RIDING


11 4838-5717-2513.1


GAMES, NAMELY,






COMPUTER PROGRAMS FOR USE IN

COMPUTER GAMES AND VIDEO

GAMES

3,554,142 12/30/2008 BAR SERVICES

3,945,205 04/12/2011 FLOOR MATS FOR VEHICLES; AIR

FRESHENING PREPARATIONS
















USE ON VEHICLES; FITTED

COVERS FOR VEHICLES

PBR

3,052,710 01/31/2006 CLOTHING FOR MEN AND WOMEN,



JACKETS; TOYS AND GAMES,

NAMELY, BOARD GAMES,

TRADING CARD GAMES, CARD

GAMES, PUZZLES, ACTIVITY TOYS,

NAMELY, TOY ACTION FIGURES

AND ACCESSORIES THEREFORE


12 4838-5717-2513.1




STICKERS, CALENDARS, PENS,


ABOUT BULL RIDING;



CONDUCTING SPORTS


BULL RIDING, AND FAN CLUBS

PBRNOW 3,739,839 01/19/2010 EVENT PROGRAMS;

PUBLICATIONS, NAMELY,

MAGAZINES IN THE FIELDS OF

BULL RIDING; SOUVENIR


RIDING

PRO BULL RIDER 2,822,593 03/16/2004 PUBLICATIONS, NAMELY, A

MULTI-MEDIA MAGAZINE

FEATURING BULL RIDING,

PROFESSIONAL BULL RIDERS AND

PROFESSIONAL BULL RIDING

EVENTS

PROFESSIONAL BULL

RIDERS

3,115,825 07/18/2006 CLOTHING FOR MEN AND WOMEN,



JACKETS; TRADING CARD GAMES;

ACTIVITY TOYS, NAMELY, ACTION

FIGURES, TOY VEHICLES AND TOY

ANIMALS; ENTERTAINMENT

SERVICES, NAMELY, ARRANGING,




CLUBS


13 4838-5717-2513.1



BULL RIDING, DECALS, AND


ABOUT BULL RIDING


GAMES, NAMELY,






COMPUTER PROGRAMS FOR USE

IN COMPUTER GAMES AND VIDEO

GAMES

3,938,604 03/29/2011 AIR FRESHENING PREPARATIONS
















USE ON VEHICLES; FITTED

COVERS FOR VEHICLES; FLOOR

MATS FOR VEHICLES


14 4838-5717-2513.1

TEAM PBR

3,681,213 09/08/2009 ORNAMENTAL PINS; PRINTED

MATTER, NAMELY, POSTERS AND


DECALS, BUMPER STICKERS, PENS,


ABOUT BULL RIDING; DRINKING

GLASSES, BEVERAGE

GLASSWARE; CLOTHING FOR MEN,

WOMEN AND CHILDREN, NAMELY,


STYLE CAPS, KNIT CAPS AND

JACKETS; BELT BUCKLES OF

PRECIOUS METAL; FAN CLUBS

TEAM PBR 3,839,887 08/31/2010 ORNAMENTAL PINS; PRINTED

MATTER, NAMELY, POSTERS AND


DECALS, BUMPER STICKERS, PENS,


ABOUT BULL RIDING; CLOTHING,

NAMELY, SHIRTS, SWEAT SHIRTS,

BASEBALL STYLE CAPS, KNIT

CAPS AND JACKETS; FAN CLUBS

TOUGHEST SPORT ON

EARTH



BULL RIDING; DECALS AND

CALENDARS; MAGAZINES AND

NEWSPAPERS ABOUT BULL

RIDING; CLOTHING, NAMELY,


CAPS, AND JACKETS;



CONDUCTING SPORTS


BULL RIDING; FAN CLUBS

3,765,265 03/23/2010 DIGITAL MEDIA, NAMELY,

DIGITAL VIDEO DISCS FEATURING

BULL RIDING


15 4838-5717-2513.1

WOOL WARRIORS 3,995,610 07/19/2011 CLOTHING, NAMELY, SHIRTS,

SWEATSHIRTS, BASEBALL STYLE

CAPS, KNIT CAPS AND JACKETS,

SOLD TO PROMOTE

COMPETITIONS FEATURING

CHILDREN RIDING SHEEP



RODEO COMPETITIONS

INVOLVING CHILDREN RIDING

SHEEP, DECALS, BUMPER

STICKERS, CALENDARS, PENS;


ABOUT RODEO COMPETITIONS

INVOLVING CHILDREN RIDING

SHEEP; EVENT PROGRAMS AND

SOUVENIR PROGRAMS

CONCERNING RODEO

COMPETITIONS; ENTERTAINMENT

SERVICES, NAMELY, ARRANGING

AND CONDUCTING SPORTS


CHILDREN RIDING SHEEP

16. PBR also has applied for a number of other marks with the United States Patent

and Trademark Office, which are pending, including the following titles and slogans:

WORDS SER. NO. FILING DATE GOODS DESCRIPTION

8 SECONDS

86/112,240 11/06/2013 FRAGRANCES; PERFUMES AND

COLOGNES

COWBOY SPRING

BREAK

85/547,988 02/21/2012 VEHICLE ACCESSORIES, NAMELY,

WINDSHIELD SUNSHADES, SUN


SUNSHADES, SEAT COVERS,


BAGS AND CASES, NAMELY,

CARGO CARRIERS FOR VEHICLES,

ORGANIZER BAGS AND CASES


16 4838-5717-2513.1

SPECIFICALLY FITTED FOR

VEHICLE TRUNKS, BAGS AND

CASES SPECIFICALLY FITTED FOR

VEHICLE GLOVE COMPARTMENTS,

ORGANIZER BAGS AND CASES

SPECIFICALLY FITTED FOR

VEHICLE CONSOLES, SEAT COVERS

FOR VEHICLE SEATS

INCORPORATING ORGANIZER

BAGS AND CASES; ROOF MOUNTED

LOAD CARRIERS FOR USE ON

VEHICLES; FITTED COVERS FOR

VEHICLES; WATCHES; JEWELRY;

JEWELRY, NAMELY, RINGS,

ORNAMENTAL PINS; EVENT

PROGRAMS AND SOUVENIR


RIDING; BROCHURES AND POSTERS

ABOUT BULL RIDING; DECALS;

BUMPER STICKERS; CALENDARS;

PENS; MONEY CLIPS; BAGS,

NAMELY, CLOTH GARMENT BAGS

FOR TRAVEL; BRIEFCASES AND

ALL-PURPOSE SPORTS BAGS;

WALLETS; LUGGAGE; LEATHER

KEY CHAINS; PLASTIC KEY

CHAINS; NON-METAL AND NON-

LEATHER KEY CHAINS; BEVERAGE

GLASSWARE; DRINKING GLASSES;

MUGS; CLOTHING, NAMELY,

SHIRTS, SWEATSHIRTS, BASEBALL-

STYLE CAPS, KNIT CAPS AND

JACKETS; BELT BUCKLES; BELT

BUCKLES OF PRECIOUS METAL

TOYS AND GAMES, NAMELY,

BOARD GAMES, TRADING CARD

GAMES, CARD GAMES AND

PUZZLES; ACTIVITY TOYS,

NAMELY, TOY ACTION FIGURES,

TOY VEHICLES AND TOY ANIMALS;


17 4838-5717-2513.1


NAMELY, ARRANGING,



FIELD OF BULL RIDING

PBR AIR BULL RIDING 85/957,785 06/12/2013 ENTERTAINMENT SERVICES,

NAMELY, ARRANGING,



FIELD OF BULL RIDING;

ARRANGING OF CONTESTS;


NAMELY, CONDUCTING CONTESTS;

ARRANGING OF CONTESTS; TOYS

AND COMPUTER GAMES; VEHICLE

ACCESSORIES; JEWELRY;

WATCHES; BELT BUCKLES;

BEVERAGE GLASSWARE; POSTERS,

BROCHURES, DECALS, BUMPER

STICKERS, CALENDARS; PENS;

EVENT PROGRAMS AND SOUVENIR

PROGRAMS; BAGS; WALLETS;

LUGGAGE; KEY CHAINS; DRINKING

GLASSES; MUGS; CLOTHING;

HEADWEAR; FOOTWEAR

VELOCITY TOUR 86/120,614 11/15/2013 ENTERTAINMENT SERVICES,

NAMELY, ARRANGING,



FIELD OF BULL RIDING;

ARRANGING OF CONTESTS IN THE

FIELD OF BULL RIDING; FAN CLUBS

IN THE FIELD OF BULL RIDING;


NAMELY, PROVIDING NEWS AND

INFORMATION ON THE TOPIC OF

PROFESSIONAL BULL RIDING


18 4838-5717-2513.1

17. PBR uses the PBR Marks commercially in a variety of ways, including through

various merchandising license agreements entered into with third parties.

C. Murcielago’s Business

18. Murcielago is in the business of manufacturing, advertising and selling cologne,

perfume and other fragrances throughout the United States, including in Colorado, through a

variety of distribution channels, including online storefronts and through distribution agreements

with traditional brick and mortar retailers.

19. Upon information and belief, Mr. Malcom is a key employee of Murcielago.

20. Upon information and belief, Murcielago is the successor in interest to The

Murcielago Group, LLC, a limited liability company formed in the State of Colorado for the

purpose of manufacturing and selling cologne, perfume and other fragrances (the “Murcielago

Group”).

D. PBR’s License Agreements with Murcielago

21. PBR Properties, Inc. (“PBR Properties”), an affiliate of PBR, entered into a

Merchandising License Agreement with the Murcielago Group dated June 29, 2004 (the “First

License Agreement”).

22. Pursuant to the First License Agreement, PBR Properties licensed certain PBR

Marks to the Murcielago Group for the purpose of creating, manufacturing and selling men’s

cologne products and making such products available for retail sale. Further, pursuant to the

Agreement, PBR acquired all trade dress rights and ownerships associated with these products.

Section 7(A) of the First License Agreement states as follows:

“[PBR] shall have and retain all right, title and interest in and to the original

Licensed Property as well as in any modifications or improvements made thereto

by [Murcielago] in and to all related packaging, advertising and marketing

materials and any other materials provided by [PBR] hereunder or developed by

[Murcielago] in connection with this Agreement for the Licensed Products

(collectively, the “Licensed Materials”). Nothing herein or otherwise implied by

law shall be deemed to grant [Murcielago] any right, title or interest in or to the

Licensed Property or Licensed Materials. In the event that any such rights vest

initially with [Murcielago] by operation of law or for any other reason,

[Murcielago] hereby perpetually and irrevocably assigns, transfers, and quitclaims

all such rights to [PBR].”

23. Section 7(B) of the First License Agreement states as follows:


19 4838-5717-2513.1

“[Murcielago] recognizes the value of the good will associated with the Licensed

Property and acknowledges that the Licensed Property and all rights therein

including the good will pertaining thereto, belong exclusively to [PBR] and shall

inure solely to the benefit of [PBR]. Neither during nor after the termination of

this Agreement shall [Murcielago] assert any claims to the Licensed Materials, the

Licensed Property, or the associated goodwill, nor shall [Murcielago] dispute or

contest, directly or indirectly, [PBR’s] exclusive right and title to the Licensed

Property and/or the Marks or the validity thereof. “

24. Section 7(C) of the First License Agreement states as follows:

“Any work and materials produced by [Murcielago] hereunder is done at [PBR’s]

request, and the resultant work and materials (“Work”) shall be considered a work

made for hire within the meaning of the copyright laws of the United States and

any foreign jurisdiction recognizing such right of authorship. To the extent that

the Work is not deemed to be a work make for hire, [Murcielago] hereby assigns

to [PBR] all right, title, and interest to the exclusive rights to the Work free from

any claims. [Murcielago] represents and warrants that all of its employees and/or

contractors have signed, or will sign, a work for hire agreement. At any time and

upon [PBR’s] request, [Murcielago] shall execute an assignment of copyright in a

form reasonably acceptable to [PBR] evidencing the foregoing transfer, or in the

event [Murcielago] fails to so execute such documents within thirty (30) days

after [PBR’s] request, then thereafter [Murcielago] hereby authorizes and appoints

[PBR] as [Murcielago’s] attorney-in-fact, coupled with an interest to prepare and

sign all documents on [Murcielago’s] behalf which may be required to obtain full

copyright, trademark or other legal benefits, including, but not limited to,

registrations, extensions and renewals. [PBR] shall have the right to register with

the appropriate registration authority in the Territory, all or any part of this

Agreement in excised form, the Licensed Property, and any assignment thereto in

[PBR’s] name as the owner thereof. The foregoing assignment to [PBR] of rights

will not include that portion of [Murcielago’s] displays, catalogs, promotional

materials and the like that do not contain the Licensed Property or reference to the

Licensed Property. Notwithstanding any other term in this Agreement,

[Murcielago] shall retain ownership of its pre-existing trademarks and trade

names which may appear on the Licensed Products.”

25. Section 7(D) of the First License Agreement states as follows:

“[Murcielago] shall at no time adopt, modify or use, without [PBR’s] prior written

consent (which may be withheld by [PBR] in its sole and absolute discretion), any

variation of the Licensed Property or Licensed Materials. Use of the Licensed

Property other than in connection with this Agreement, in a manner inconsistent

with this Agreement and/or any other guidelines provided by [PBR] hereunder,

shall constitute a material breach of this Agreement.”


20 4838-5717-2513.1

26. Section 7(F) of the First License Agreement states as follows: “The parties agree

to execute any documents reasonably required by the other party to effect any of the above

provisions.”

27. Pursuant to Section 11 of the First License Agreement, Murcielago is required to:

“… defend, indemnify and hold harmless [PBR] and BSM, and each of their

respective officers, directors, shareholders, employees, representatives and agents

(collectively, the “Indemnified Parties”) from and against any claims, demands,

causes of action, damages, penalties, fines, costs and expenses, including

reasonable attorneys’ fees, judgments, and settlements arising out of or in

connection with: (i) [Murcielago’s] breach or alleged breach of any of its

representations, warranties, covenants or obligations contained in this

Agreement;…”

28. Pursuant to Section 15(K) of the First License Agreement, Sections 2, 3, 4, 7, 8, 9,

11, 12, 13 and 15 shall survive expiration of the First License Agreement.

29. In 2006, PBR Properties and the Murcielago Group amended the First License

Agreement to allow the Murcielago Group to create, manufacture and sell women’s cologne and

round glass or plastic ornaments (“Amendment # 1 to the First License Agreement”).

30. In 2008, PBR Properties and the Murcielago Group entered into a second

amendment of the First License Agreement to extend the expiration date of that agreement from

December 31, 2007 to December 31, 2010 (“Amendment # 2 to the First License Agreement”).

31. Pursuant to the First License Agreement, Murcielago sold fragrances with specific

designs, images, appearances and packaging under PBR 8 SECONDS, PBR GOLD, PBR

TENACIOUS, and PBR BLACK & BLUE (the “Licensed Products”). At all times since their

introduction to the marketplace, these Licensed Products were advertised as officially licensed

products of PBR and otherwise sold in conjunction with and in close proximity to other PBR

Marks.

32. Upon information and belief, prior to entering into the First License Agreement,

Murcielago never used the terms and slogans 8 seconds, gold, tenacious or black & blue in

connection with the sale of fragrances.

33. PBR, Inc. and Murcielago, Inc. entered into a new Merchandising License

Agreement on January 19, 2011 (the “Second License Agreement”). The Second License

Agreement gave Murcielago to right to continue creating, manufacturing and selling men’s and


21 4838-5717-2513.1

women’s cologne products throughout the United States using certain PBR Marks, including

PROFESSIONAL BULL RIDERS and PBR.

34. The Second License Agreement contains contract terms that are substantially

similar to those contained in the First License Agreement.

35. The Second License Agreement explicitly states that all right, title, interest, and

goodwill in the PBR Marks inure exclusively to PBR, including ownership of intellectual

property stemming from the PBR Marks that are developed by Murcielago during the term of the

agreement, including but not limited to all trade dress. Specifically, section 7(A) of the Second

License Agreement states as follows:

“[PBR] shall have and retain all right, title and interest in and to the original

Licensed Property including Licensed Property incorporated in all Licensed

Products, related packaging, advertising and marketing materials. Except as

otherwise provided herein, [Murcielago] shall have and retain all right, title and

interest in the Licensed Products, related packaging, advertising and marketing

materials created using the Licensed Property but specifically excluding rights in

the Licensed Property itself and/or any other specifications or guidelines provided

by [PBR] pursuant to or as a result of this Agreement. Nothing herein or

otherwise implied by law shall be deemed to grant [Murcielago] any right, title or

interest in or to the Licensed Property. In the event that any such rights vest

initially with [Murcielago] by operation of law or for any other reason, to the

fullest extent permitted by law, [Murcielago] hereby perpetually and irrevocably

assigns, transfers, and quitclaims all such rights, including, for example and not

by way of limitation, moral rights, rights of attribution, or rights to have a work

published anonymously or pseudonymously, to [PBR]. In any jurisdiction where

moral rights may not be transferred, [Murcielago] agrees not to assert such moral

rights. [Murcielago] hereby perpetually and irrevocably grants to [PBR] power of

attorney to execute any and all documents deemed necessary or desirable by

[PBR] to perfect any rights or ownership transfer provided in this Section 7(A).”

36. Section 7(B) of the Second License Agreement states as follows:

“[Murcielago] recognizes the value of the goodwill associated with the Licensed

Property and acknowledges that the Licensed Property and all rights therein,

including the goodwill pertaining thereto, belong to [PBR] and shall inure solely

to the benefit of [PBR]. Neither during nor after the termination of this

Agreement shall [Murcielago] assert any claims to any specifications or

guidelines provided by [PBR] pursuant to or as a result of this Agreement, the

Licensed Property, or the associated goodwill, nor shall [Murcielago] dispute or

contest, directly or indirectly, [PBR’s] right and title to the Licensed Property,

including the Marks, or the validity thereof.”

37. Section 7(D) of the Second License Agreement states as follows:


22 4838-5717-2513.1

“[Murcielago] shall at no time adopt or use, without [PBR’s] prior written consent

(which may be withheld by [PBR] in its sole and absolute discretion), any

variation of the Licensed Property, including any variation of the Marks, or any

variation of any [PBR] approved packaging, advertising, promotional or

marketing materials. Use of all or any portion of the Licensed Property other than

in connection with this Agreement, in a manner inconsistent with this Agreement

and/or in a manner inconsistent with any specifications or guidelines provided by

[PBR] pursuant to or as a result of this Agreement, shall constitute a breach of this

Agreement.”

38. In order to protect PBR’s intellectual property rights, the Second License

Agreement prohibits Murcielago from: (i) attempting to register current and future PBR Marks

with the USPTO; (ii) registering a website domain that incorporates a PBR Mark; and (iii)

otherwise using PBR Marks in a way that could cause consumer confusion or constitute unfair

competition. See Section 7(E).

39. Section 7(H) of the Second License Agreement states as follows:

“In the event that [PBR] decides to apply for registration of any of the Licensed

Property, including the Marks or any variation thereof, [Murcielago] shall render

[PBR] all reasonable assistance towards obtaining such registration, including the

execution of documents deemed necessary or desirable by [PBR]. If [Murcielago]

is deemed in law to be the proprietor of any mark or name subject to such

registration so as to make it necessary for the application to be made or proceeded

with in the name of [Murcielago], then, at the request and expense of [PBR],

[Murcielago] shall make and proceed with such application for registration and do

all acts and execute all documents necessary for obtaining registration in the name

of [Murcielago] and thereupon assign such registration and any related rights

and/or goodwill to [PBR].”

40. Section 7(I) of the Second License Agreement states as follows:

“At the request and expense of [PBR], [Murcielago] shall perform whatever acts

are deemed reasonably necessary or desirable by [PBR] to vest in [PBR]

ownership and title to any of the Licensed Property, including the execution of

any and all documents deemed necessary or desirable by [PBR].”

41. The Second License Agreement includes a provision that allows

Murcielago to sell off its remaining inventory of Licensed Products for a brief period

after the agreement expires. See Section 9(B). Murcielago’s right to a sell-off period is

contingent upon it faithfully honoring the terms of the Second License Agreement. See

Sections 9(C) and 9(E). Any failure on Murcielago’s part to honor the terms of the


23 4838-5717-2513.1

agreement gives PBR the right to terminate all remaining rights granted by the Second

License Agreement immediately at its sole discretion. See Section 8(B).

42. Pursuant to Section 9, Murcielago is required to take certain actions upon

termination, including but not limited to providing proof that it has destroyed all remaining

inventory within ten (10) days following termination of the Second License Agreement.

43. Section 9(E) of the Second License Agreement anticipates the need for an

injunction and provides that:

“Upon the breach of all or any portion of this Agreement by [Murcielago],

[PBR]…may, without bond, in addition to other remedies, immediately obtain

and enforce injunctive relief prohibiting the breach or threatened breach or

compelling specific performance.”

44. Pursuant to Section 11 of the Second License Agreement, Murcielago is required

to “…defend, indemnify and hold harmless [PBR], [PBR’s] affiliated and related companies, and

all of their officers, directors, shareholders, employees, representatives and agents (collectively,

the “Indemnified Parties”) from and against any claims, demands, causes of action, damages,

penalties, fines, costs and expenses, including reasonable attorneys’ fees, judgments, and

settlements arising out of or in connection with any act or omission of [Murcielago], and/or in

connection with this Agreement including, without limitation: (i) the breach or alleged breach of

any of the representations, warranties, covenants or obligations contained in this Agreement by

[Murcielago], its employees, agents or subcontractors, (ii) the unauthorized use of the Licensed

Property by [Murcielago], its employees, agents or subcontractors;…”

45. As set forth in Section 15(I), the Second License Agreement is governed by

Colorado law, all disputes are to be decided in Colorado, and Murcielago consents to jurisdiction

in Colorado.

46. Pursuant to Section 15(J), Sections 2, 3, 4, 7, 8, 9, 11, 12, 13 and 15 of the Second

License Agreement survive expiration of the Agreement.

47. Pursuant to the Second License Agreement, Murcielago continued to sell

Licensed Products under the names PBR 8 SECONDS, PBR TENACIOUS, PBR GOLD, and

PBR BLACK & BLUE, all of which were created during the term of the First License

Agreement. These Licensed Products were advertised and offered for sale through a variety of

distribution channels, including Murcielago’s website (http://www.murcielagofragrances.com).


24 4838-5717-2513.1

A screen shot of Murcielago’s website illustrating their advertisement of the Licensed Products

is attached hereto as Exhibit 1 and incorporated herein by this reference.

48. At all times during the First and Second License Agreements, the Licensed

Products were closely associated with PBR and advertised as an officially licensed product of

PBR.

49. Through its association with PBR, customers in the United States came to

associate the Licensed Products with PBR.

50. Upon information and belief, at no point during the production of the Licensed

Products was “Murcielago” prominently featured on the Products themselves or its packaging so

as to create a connection in the minds of consumers between Murcielago and the fragrances it

produced.

51. The Second License Agreement expired on December 31, 2013. PBR has chosen

to partner with another fragrance company to design, manufacture and sell PBR branded

colognes and perfumes in 2014 and beyond.

E. Murcielago’s Bad Faith under the Second License Agreement

52. Shortly after signing the Second License Agreement and reaffirming its

commitment to honor PBR’s intellectual property rights, Murcielago attempted to register two

trademarks with the USPTO that prominently incorporated the PBR mark.

53. On September 12, 2012, without the authorization or knowledge of PBR,

Murcielago filed application Serial No. 85/726,694 seeking to register the mark PBR GOLD for

use in connection with International Class 003 – Perfumes and Colognes. The application was

filed in direct violation of the First and Second License Agreements.

54. Also on September 12, 2012, without the authorization or knowledge of PBR,

Murcielago filed application Serial No. 85/726,688 seeking to register the mark PBR

SIGNATURE, also for use in connection with International Class 003 – Perfumes and Colognes.

The application was filed in direct violation of the First and Second License Agreements.

55. The USPTO denied both of Murcielago’s trademark applications because each

would create a likelihood of confusion between the marks Murcielago attempted to register and

the registered trademarks owned by PBR.

56. In addition, between 2012 and 2013, upon information and belief, Mr. Malcom

registered the domain names for several websites that incorporate the PBR word mark in their


25 4838-5717-2513.1

web address, including: buypbr.com, buypbrcologne.com, classicpbr.com, getpbr.com,

orderpbr.com, pbrchamp.com, pbrcologne.com, pbrfragrance.com, pbrfragranceswholesale.com,

pbrfragrance.com, pbrgold.com, pbrinfo.com, pbrking.com, pbrqueen.com, pbrtix.com, and

pbrwholesale.com. Each of these website domain names was registered without PBR’s

authorization or knowledge and in direct violation of the First and Second License Agreements.

F. Murcielago’s Improper Use of PBR Marks to Promote New, Unlicensed Products

57. As mentioned above, the Second License Agreement expired on December 31,

2013. Murcielago has continued manufacturing and advertising western themed fragrances for

men and women using the goodwill achieved during the license term and using names, slogans,

trade dress and other copyrighted materials confusingly similar to PBR’s common law and

contractual rights in the marks, slogans, trade dress and copyrights developed during the license

term. Specifically, pursuant to the terms of the First and Second License Agreements, PBR

owned all common law rights, title, and interest in and to PBR 8 SECONDS, PBR BLACK &

BLUE, PBR GOLD, and PBR TENACIOUS. Murcielago now is advertising and selling the

same fragrances in substantially the same packaging, with the same design, appearance and

images, using the names 8 SECONDS, BLACK & BLUE, MURCIELAGO GOLD, and

TENACIOUS (the “Infringing Products”).

58. Upon information and belief, the Infringing Products are advertised and sold

exclusively through one or more Murcielago websites, including

http://www.shop.murcielagofragrances.com (“Website #1”) and http://www.buypbr.com

(“Website #2”). Screen shots illustrating the marketing of Infringing Products available on

Website #1 are attached hereto as Exhibit 2 and incorporated herein by reference.

59. Murcielago includes the following legend near products available for sale on

Website #1: “Official licensed product of the PBR copyright© 2010 All rights reserved.

Professional Bull Riders, Inc. © copyright. All rights reserved Murcielago, Inc.” See Exhibit 2.

60. Murcielago also advertises and sells its Infringing Products on Website # 2, with a

web address that specifically uses the PBR word mark. A screen shot illustrating the marketing

of Murcielago’s Infringing Products available for sale on Website # 2 is attached hereto as

Exhibit 3 and incorporated herein by reference. These screen shots show the infringing product

which uses PBR’s slogan “8 Seconds” and has a star and a bull and rider as the dominant image

on the bottle.


26 4838-5717-2513.1

61. Murcielago advertises and sells the Infringing Products in bottles and packaging

that are virtually identical in size, shape, color, and design to those created, manufactured,

marketed and sold pursuant to the First and Second License Agreements. By design, these

products are western-themed and use trade dress owned by PBR so as to exploit the goodwill

associated with Murcielago’s use of the PBR Marks.

62. PBR has not authorized Murcielago to use the PBR Marks or the goodwill

associated therewith to advertise and sell the Infringing Products.

63. Murcielago’s marketing, advertising, offering for sale, and sale of the Infringing

Products is likely to cause confusion as to the affiliation and sponsorship of the Infringing

Products with PBR.

64. Murcielago’s actions are calculated to deceive customers into believing that PBR

and Murcielago are affiliated with one another, even though no such connection exists with

respect to the Infringing Products.

65. Murcielago’s activities constitute a breach of its continuing obligations under the

Second License Agreement as well as willful infringement of the PBR Marks, PBR slogans, PBR

trade dress and PBR copyrights.

G. Murcielago’s Fraudulent Trademark Applications

66. On December 26, 2013, the eve of the expiration of the Second License

Agreement, Murcielago (by itself and/or through Mr. Malcom) filed four applications with the

USPTO to register the following slogans as trademarks for use in connection with International

Class 003 – Perfumes and Colognes: (i) 8 SECONDS (Serial No. 86/164,349); (ii) BLACK &

BLUE (Serial No. 86/152,669); (iii) MURCIELAGO GOLD (Serial No. 86/152,549); and (iv)

TENACIOUS (Serial No. 86/152,556). A true and accurate copy of each of these trademark

applications is attached hereto as Exhibit 4 and incorporated herein by reference.

67. Pursuant to the terms of the First and Second License Agreements, all right, title

and interest in and to the slogans 8 SECONDS, BLACK & BLUE, MURCIELAGO GOLD, and

TENACIOUS vested immediately upon creation in PBR since they were first used during the

term of the agreement in connection with the PBR Marks.

68. In each application, Murcielago affirms that it believes it is “entitled to use such

mark in commerce” and that it is “the owner of the trademark/service mark sought to be


27 4838-5717-2513.1

registered.” In light of PBR’s superior ownership rights in these marks and slogans,

Murcielago’s statement is patently untrue.

69. Murcielago’s trademark applications are currently pending at the USPTO.

H. PBR’s Trademark Application

70. To protect its intellectual property rights, PBR filed an application with the

USPTO to register the slogan 8 SECONDS as a trademark in connection with International Class

003 – Perfumes and Colognes (Serial No. 86/112,240). PBR’s application is consistent with its

ownership of the 8 SECONDS slogan/mark (Registration No. 3,739,507) for use in connection

with event programs and publications (namely, magazines in the fields of bull riding and

souvenir programs concerning bull riding).

71. The slogan “8 Seconds” is synonymous with the sport of bull riding, as a rider

must stay on a bull for at least eight seconds in order to receive a scoring ride. Over the years,

consumers in the United States and abroad have come to associate the slogan “8 seconds” with

the sport of professional bull riding and PBR in particular.

72. PBR’s trademark application is currently pending at the USPTO.

I. Murcielago’s Letter to PBR & Subsequent Termination of Second License Agreement

73. On or about January 29, 2014, Murcielago’s attorney sent PBR a letter regarding

the 8 SECONDS trademark (the “Demand Letter”).

74. The Demand Letter wrongfully asserts that Murcielago owns the 8 SECONDS

mark when, pursuant to the First and Second License Agreements, all such rights are in fact

exclusively vested in PBR.

75. In response to Murcielago’s flagrant disregard of PBR’s intellectual property

rights and continued breaches of the License Agreements, PBR exercised its right to terminate

the Second License Agreement. PBR sent proper notice of termination to Murcielago by letter

dated February 13, 2014 (the “Termination Letter”). A copy of the Termination Letter is

attached and incorporated herein as Exhibit 5.

COUNT I

(Trademark Infringement Under § 32 of the Lanham Act)

76. PBR hereby incorporates paragraphs 1-75 above as though fully set forth herein.


28 4838-5717-2513.1

77. PBR possesses valid registrations issued by the USPTO for PROFESSIONAL

BULL RIDERS, PBR and other PBR Marks for the goods and services set forth in the

registrations.

78. The PBR Marks are incontestable under 15 U.S.C. § 1065.

79. Murcielago’s actions as described above are unauthorized, including its use of the

marks and slogans PROFESSIONAL BULL RIDERS, PBR, and other PBR Marks to identify,

promote and advertise Murcielago goods and services and are likely to create confusion or to

cause mistake or to deceive as to the affiliation, connection or association of Murcielago with

PBR, or as to the origin, sponsorship or approval of Murcielago’s services and products by PBR.

Murcielago’s conduct constitutes trademark infringement in violation of Section 32 of the

Lanham Act, 15 U.S.C. § 1114.

80. Murcielago’s advertisement of PBR’s slogans and trademark infringement has

caused and continues to cause damage and irreparable injury to the value and goodwill of the

PBR Marks, as well as damage and irreparable injury to PBR’s business, goodwill, and

reputation.

81. Murcielago’s continued use of the PBR Marks is deliberate, willful, fraudulent,

constitutes a knowing infringement of the PBR Marks, and makes this case exceptional.

82. PBR is entitled to an injunction preventing Murcielago from using the PBR

Marks.

83. PBR is entitled to recover treble damages as well as its attorneys’ fees and costs

incurred in this action.

COUNT II

(Trademark Infringement and False Designation Under § 43(a) of the Lanham Act)

84. PBR incorporates by reference paragraphs 1-75 of the above as though fully set

forth herein.

85. Murcielago’s actions, including its unauthorized use of the PBR slogans and

marks to advertise, identify and promote its goods, are likely to cause confusion, or to cause

mistake, or to deceive as to the affiliation, connection or association of Murcielago with PBR, or

as to the origin, sponsorship or approval of Murcielago’s goods and services by PBR, in

violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A).


29 4838-5717-2513.1

86. Murcielago’s false advertisement, designation, and representations have caused

and continue to cause damage and irreparable injury to the value and goodwill of the PBR

Marks, as well as damage and irreparable injury to PBR’s business, goodwill, and reputation.

87. PBR has no adequate remedy at law because the damages are continuing and

difficult to ascertain.

88. Murcielago’s continued unauthorized use of the PBR Marks and slogans is

deliberate, willful, fraudulent, constitutes a knowing infringement of the PBR Marks, and makes

this case exceptional.

89. PBR is entitled to injunctive relief and all recoverable damages.

90. PBR is entitled to recover treble damages as well as its attorneys’ fees and costs

incurred in this action.

COUNT III

(Trademark Dilution Under § 43(a) of the Lanham Act)


92. The PBR Marks and slogans PROFESSIONAL BULL RIDERS and PBR are

distinctive, inherently or through acquired distinctiveness, and are famous under 15 U.S.C.

§ 1125(c).

93. The PBR Marks and slogans, especially PROFESSIONAL BULL RIDERS and

PBR, are famous marks among consumers in the United States.

94. Murcielago’s advertisement and use of the marks and slogans PROFESSIONAL

BULL RIDERS and PBR is likely to cause dilution of the PBR Marks.

95. Upon information and belief, Murcielago willfully intended to trade on the

recognition of PBR’s famous marks.

96. Murcielago’s conduct has caused and continues to cause damage and irreparable

injury to the value and goodwill of PBR’s famous marks, as well as damage and irreparable

injury to PBR’s business, goodwill, and reputation. PBR has no adequate remedy at law because

damages are continuing and difficult to ascertain.

97. PBR is entitled to injunctive relief and damages, including its attorneys’ fees and

costs.

COUNT IV

Against Murcielago and Mr. Malcom


30 4838-5717-2513.1

(Federal Cyberpiracy Under § 43(d) of the Lanham Act)


99. Defendants Murcielago and Mr. Malcom used and continue to use the PBR Marks

and slogans in commerce by registering, maintaining and, in some instances, advertising

products and making products available for sale on websites that include the PBR Marks and

slogans, including buypbr.com, buypbrcologne.com, classicpbr.com, getpbr.com, orderpbr.com,

pbrchamp.com, pbrcologne.com, pbrfragrance.com, pbrfragranceswholesale.com,

pbrfragrance.com, pbrgold.com, pbrinfo.com, pbrking.com, pbrqueen.com, pbrtix.com, and

pbrwholesale.com, in connection with Murcielago’s products and services in such a fashion and

design as to imitate, counterfeit, copy, and reproduce the PBR Marks and PBR’s goods and

services.

100. Defendants’ advertisement and use of the PBR Marks and slogans and registered

PBR domain names is likely to cause, is intended to cause and, upon information and belief, has

caused the consuming public to mistakenly believe that Murcielago’s products and services

originate from, are sponsored by, and/or are associated with PBR.

101. Mr. Malcom registered the domains listed in Paragraph 99 of this Amended

Complaint in bad faith with the purpose of exploiting, trading on, and profiting from the

substantial goodwill and reputation of PBR.

102. Defendants had actual knowledge of PBR’s exclusive rights in the PBR Marks

and willfully and deliberately infringed PBR’s rights in these marks and slogans.

103. Defendants’ conduct described herein constitutes federal trademark infringement,

unfair competition and false designation of origin in violation of Section 43(d) of the Lanham

Act, 15 U.S.C. § 1125(d). Unless restrained, Defendants’ continued infringement of PBR’s

rights will cause PBR irreparable harm for which there is no adequate remedy at law.

104. Defendants are on notice of PBR’s rights and interests in the PBR Marks and

slogans and, notwithstanding such notice, have continued to use counterfeit PBR Marks and

slogans without PBR’s authorization in connection with the sale of goods. Such use is willful

and intentional, entitling PBR to treble damages under 15 U.S.C. § 1117(b).

COUNT V

(Common Law Trademark and Trade Dress Infringement)



31 4838-5717-2513.1

106. PBR has acquired common law rights in and to the slogans PBR 8 SECONDS,

PBR BLACK & BLUE, PBR GOLD, and PBR TENACIOUS, which are inherently distinctive

or which have acquired distinctiveness in connection with the goods and services of PBR. PBR

has acquired common law rights in and to the design, image, appearance and packaging of the

products advertised and sold by Murcielago.

107. These rights have vested with PBR per various terms of the First and Second

License Agreements, as set forth above.

108. The unregistered use of PBR marks, slogans and trade dress by Murcielago in its

marketing and advertisement is likely to cause confusion as to the source, sponsorship, and/or

authorization of PBR in violation of PBR’s rights and constitutes infringement of PBR’s

common law trademarks and trade dress.

109. PBR has been and continues to be damaged by Murcielago’s advertisement and

infringement of PBR’s common law trademark and trade dress rights.

110. By reason of the foregoing, PBR is entitled to injunctive relief and damages.

COUNT VI

111. PBR hereby incorporates paragraphs 1-75 and 106-110 above as though fully set

forth herein.

112. The infringing conduct of Murcielago is attended by circumstances of fraud,

malice, or willful and wanton disregard of PBR’s rights, warranting an award of punitive and

exemplary damages.

COUNT VII

(Unfair Competition)


114. PBR possesses valid and protectable rights in the PBR Marks, slogans, and trade

dress, some or all of which are inherently distinctive or which have acquired distinctiveness in

connection with the goods and services of PBR.

115. Murcielago’s actions as described herein, including Murcielago’s unauthorized

advertisement and use of the PBR Marks to identify goods and services, are likely to cause

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of

Murcielago with PBR, or as to the origin, sponsorship, or approval of Murcielago’s goods and

services by PBR, in violation of PBR’s rights and constitutes common law unfair competition.


32 4838-5717-2513.1

116. PBR has been and continues to be damaged by Murcielago’s unfair competition.

117. By reason of the foregoing, PBR is entitled to injunctive relief and damages.

COUNT VIII

118. PBR hereby incorporates paragraphs 1-75, 106-110 and 114-117 as though fully

set forth herein.

119. The infringing conduct of Murcielago is attended by circumstances of fraud,

malice, or willful and wanton disregard of PBR’s rights warranting an award of punitive and

exemplary damages.

COUNT IX

(Declaratory Judgment of Trademark Ownership and Interest)


121. Pursuant to the First and Second License Agreements, including Sections 7(A),

7(B), 7(C) and 7(F), PBR owns all right, title and interest in and to the following marks and

slogans: 8 SECONDS, PBR 8 SECONDS, PBR GOLD, MURCIELAGO GOLD, BLACK &

BLUE, PBR BLACK & BLUE, TENACIOUS and PBR TENACIOUS.

122. Accordingly, PBR requests that this Court find that PBR exclusively owns all

right, title and interest in and to the 8 SECONDS, PBR 8 SECONDS, PBR GOLD,

MURCIELAGO GOLD, BLACK & BLUE, PBR BLACK & BLUE, TENACIOUS and PBR

TENACIOUS marks and slogans.

COUNT X

(Violation of Colorado Consumer Protection Act, C.R.S. § § 6-1-1-101, et seq.)

123. PBR hereby incorporates paragraphs 1-75, 106-110 and 114-117 above as though

fully set forth herein.

124. Murcielago has engaged in deceptive trade practices in violation of Colo. Rev.

Stat. § § 6-105(a), (b), (c), and (u).

125. In the course of its business, Murcielago has and is advertising its goods and

passing off its goods and services as being associated, affiliated, or originating with PBR,

knowingly making false representations as to the source, sponsorship, and approval of its goods

and services, and knowingly making false representations as to the affiliation, connection, or

association of its products with PBR.


33 4838-5717-2513.1

126. Murcielago’s deceptive trade practices have had and will continue to have a

significant negative impact on the public as actual and potential consumers of PBR’s products

and services.

127. Murcielago’s deceptive trade practices have caused and continue to cause

irreparable injury to the value of the PBR Marks and slogans, as well as irreparable injury to

PBR’s business, goodwill, and reputation. PBR has no adequate remedy at law.

COUNT XI

(Breach of Contract by Murcielago)

128. PBR hereby incorporates paragraphs 1-127 as though fully set forth herein.

129. In 2012, Murcielago attempted to trademark PBR GOLD and PBR SIGNATURE.

Such activity constitutes a direct violation of the terms of the First and Second License

Agreements.

130. In 2012 and 2013, Murcielago registered several domain names that incorporate

certain PBR Marks. Such activity also constitutes a direct violation of the terms of the First and

Second License Agreements.

131. Murcielago has utilized and continues to utilize the PBR Marks, slogans and trade

dress to advertise and market Murcielago’s unlicensed products. Such activity constitutes a

direct violation of the First and Second License Agreements.

132. By wrongfully asserting rights to the 8 SECONDS trademark and PBR’s trade

dress and copyrights, Murcielago has willfully and wantonly breached the terms of the First and

Second License Agreements.

133. PBR is entitled to its attorneys’ fees and costs pursuant to the First and Second

License Agreements.

134. PBR has been and is being damaged by Murcielago’s actions in an amount to be

proven at trial.

PRAYER FOR RELIEF

WHEREFORE, PBR prays for judgment with respect to its Complaint and Demand for

Jury Trial as follows:

A. The Court declare that PBR is the sole and lawful owner of and owns all right,

title and interest to the marks and slogans 8 SECONDS, PBR 8 SECONDS, BLACK & BLUE,


34 4838-5717-2513.1

PBR BLACK & BLUE, PBR GOLD, MURCIELAGO GOLD, PBR TENACIOUS, and

TENACIOUS;

B. The Court enter an Order requiring Murcielago to either assign all right, title and

interest to the Murcielago Applications to PBR, as contemplated by the First and Second License

Agreements, or abandon the Murcielago Applications and any future attempts to register 8

SECONDS, PBR 8 SECONDS, BLACK & BLUE, PBR BLACK & BLUE, PBR GOLD,

MURCIELAGO GOLD, PBR TENACIOUS, and TENACIOUS, or any other marks or slogans

which are confusingly similar to and attempt to trade upon the goodwill of PBR;

C. The Court declare that Murcielago has been and is infringing upon PBR’s valid

and subsisting trademarks and trade dress and that such infringement has been and is willful;

D. The Court enter a preliminary and permanent injunction against Murcielago and

those in participation with it, prohibiting them from displaying, offering for sale or selling any

item affixed with any of the PBR Marks or slogans or trade dress or any marks or slogans or

trade dress which are confusingly similar to and attempt to trade upon the goodwill of PBR and

requiring those items to be permanently removed from any and all websites or other media

operated, owned or controlled by Murcielago;

E. The Court enter a preliminary and permanent injunction against Murcielago and

those in participation with it, prohibiting them from using the PBR Marks, slogans and trade

dress, including those marks, slogans and trade dress over which PBR acquired common law

trademark rights or which are confusingly similar to and attempt to trade upon the goodwill of

PBR in the identification and description of Murcielago’s goods or services, or in the advertising,

marketing, sale or other promotion of its goods and services;

F. The Court enter a preliminary and permanent injunction against Murcielago and

those in participation with it, prohibiting them from engaging in any acts or activities directly or

indirectly calculated to trade upon the reputation and goodwill of PBR;

G. The Court require that, pursuant to 15 U.S.C. § 1116, Murcielago file with this

Court and serve upon PBR within 30 days after the entry of the injunction, a writing under oath

setting forth in detail the manner in which it has complied with the injunction;

H. The Court enter its Order finding that this case is exceptional pursuant to 15

U.S.C. § 1117 and award PBR treble damages and all costs and attorneys’ fees incurred in this

matter;


35 4838-5717-2513.1

I. The Court enter its Order requiring Murcielago to deliver for destruction all

promotional materials, advertisements, signage and other communications to the public or any

other material or representations that are or may include any renditions or imitations of the PBR

Marks, slogans and trade dress, including those marks over which PBR acquired common law

rights, or any material confusingly similar to the PBR Marks;

J. The Court require Murcielago to account for all sales made and revenues received

at any time related to merchandise sold in association with any of the PBR Marks, slogans and

trade dress, including those marks over which PBR acquired common law rights;

K. The Court order a constructive trust be imposed on all revenues received by

Murcielago at any time related to merchandise sold in association with the PBR Marks, slogans

and trade dress, including those marks, slogans and trade dress over which PBR acquired

common law rights;

L. The Court find that Murcielago is in breach of the First and Second License

Agreements and PBR is entitled to terminate the agreement immediately and without penalty;

M. Awarding PBR any and all damages recoverable under contract, applicable law or

statute;

N. Awarding PBR exemplary and punitive damages in an amount to be determined at

trial;

O. The Court enter an Order requiring Mr. Malcom to transfer the registrations for

buypbr.com, buypbrcologne.com, classicpbr.com, getpbr.com, orderpbr.com, pbrchamp.com,

pbrcologne.com, pbrfragrance.com, pbrfragranceswholesale.com, pbrfragrance.com,

pbrgold.com, pbrinfo.com, pbrking.com, pbrqueen.com, pbrtix.com, and pbrwholesale.com to

PBR;

P. The Court enter an Order enjoining Defendants from registering any domain

name containing the letters PBR;

Q. Awarding PBR its attorneys’ fees, costs, expert witness fees and expenses

incurred in connection with this action as provided for by contract, applicable rule and/or law;

R. Awarding PBR pre- and post-judgment interest and all damages recovered by or

awarded to PBR; and,

S. The Court grant PBR such other and further relief at law or in equity as the Court

shall deem just and proper.


36 4838-5717-2513.1

JURY DEMAND

PBR hereby demands a jury trial on all issues so triable.

Dated this 17th

day of February, 2015.

KUTAK ROCK LLP

By: s/ Juliet A. Cox

Juliet A. Cox

2300 Main Street, Suite 800

Kansas City, MO 64108

(816) 960-0090 Telephone

(816) 960-0041 Facsimile

[email protected]

ATTORNEYS FOR PLAINTIFF

CERTIFICATE OF SERVICE

I hereby certify that on February 17, 2015, I electronically filed the foregoing with the

clerk of the court by using the CM/ECF system which will send a notice of electronic filing to

the following:

James B. Powers

Jane Bendle Lucero

HARRIS, KARSTAEDT, JAMISON & POWERS, P.C.

10333 E. Dry Creek Road, Suite 300

Englewood, Colorado 80112

[email protected]

[email protected]

ATTORNEYS FOR DEFENDANTS

s/ Juliet A. Cox

ATTORNEYS FOR PLAINTIFF


mailto:[email protected]



professional bull riders trademark complaint

Documents

state of colorado

colorado corporation

defendant murcielago

usdc colorado page

michael malcom

united states district

pbrs live bull riding

sponsor bull riding