STELOR PRODUCTIONS, INC. v. OOGLES N GOOGLES et al

Filing 181

MOTION for Leave to File Amended Counterclaim, filed by Counter Claimant OOGLES N GOOGLES FRANCHISING LLC, Defendant OOGLES N GOOGLES FRANCHISING LLC. (Attachments: # 1 Exhibit A- Proposed Amended Counterclaim, # 2 Exhibit 1 to Amended Counterclaim- Reg. No. 2,087,590, # 3 Exhibit 2 to Amended Counterclaim- N.J. Business Entity Report, # 4 Exhibit 3 to Amended Counterclaim- Edell Sec. 8/15 Declaration, # 5 Text of Proposed Order)(Vaughan, Stephen)

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF INDIANA INDIANAPOLIS DIVISION STELOR PRODUCTIONS, LLC ) ) ) Plaintiff/Counterdefendant ) ) v. ) ) OOGLES N GOOGLES FRANCHISING, LLC, ) et. al. )
Defendant/Counterclaimant ************************ OOGLES N GOOGLES FRANCHISING, LLC v. STELOR PRODUCTIONS, LLC and STEVEN A. ESRIG MOTION FOR LEAVE TO FILE AMENDED COUNTERCLAIM Oogles n Googles Franchising, LLC, by counsel, for its Motion for Leave to File Amended Counterclaim, states as follows: 1. F.R.C.P. 15 states that leave to amend a pleading shall be freely given when ) ) ) ) ) ) ) ) ) )

Case Number: 1:05-CV-0354-DFH-TAB

justice so requires. 2. The deadline for amendments to pleadings is August 15, 2008, pursuant to the

Case Management Plan, as amended by the Court's Order of June 2, 2008 (Doc. 167). 3. Defendants, by counsel, are aware of information showing that The Googles

Childrens Workshop, Inc., a defunct New Jersey Corporation, was the purported owner of the

alleged Googles word and design trademark, U.S.P.T.O. Reg. No. 2,087,590 (Exh. 1 to Exh. A, the proposed Amended Counterclaim). 4. The registration issued on August 12, 1997 (Exh. 1 to Exh. A, the proposed

Amended Counterclaim)and The Googles Chidlren's Workshop, Inc. was dissolved October 22, 1997 (Exh. 2 to Exh. A, the proposed Amended Counterclaim). 5. Upon information and belief, Steven A. Esrig who is or was the President of

Stelor Productions, LLC, directed attorney Ira Edell of Rockville, Maryland to file a Combined Declaration of Use and Incontestability under Sections 8 and 15 of the Trademark Act. Edell attested that The Googles Children's Workshop, Inc. was located and doing business in Potomac, Maryland, and that the Googles word and design mark, Reg. No. 2,087,590, had been in continuous use in interstate commerce for more that five (5) consecutive years from June, 1996 (Exh. 3 to Exh. A, the proposed Amended Counterclaim). 6. The above representations in the Declaration are materially false and but for

these material misrepresentations the U. S. Patent and Trademark Office would not have renewed the registration for the Googles word and design mark. 7. Esrig was Edell's principal; Edell acted at the direction of and was the

attorney and agent for Esrig. 8. Additionally, information obtained by Oogles n Googles Franchising, LLC, by

the undersigned counsel, provides a good faith basis for alleging that the words Oogle, Oggle, and Iggle asserted to be trademarks by the Plaintiff have not been continuously used in commerce as a source identifier of goods and services. Therefore, no trademark rights have ever accrued in those words, or alternatively, those word marks have been abandoned. Esrig knows or should know that no trademark rights have ever accrued in the words Oogle, Oggle, and Iggle to Stelor Productions, LLC or any other alleged prior owner or prior 2

licensee. As such, this is an exceptional case which warrants an award of fees and costs to Defendants. 9. The instant litigation was initiated at the direction of Esrig. The purpose of

these amendments to the counterclaim is to add Steven A. Esrig as a counterdefendant to answer for the misrepresentations that occurred at his direction. 10. The proposed Amended Counterclaim is attached to this Motion as Exhibit A

as required by the Local Rule 15.1. Wherefore, Oogles n Googles Franchising LLC, by the undersigned counsel, respectfully moves that the Court grant this Motion and permit Oogles n Googles Franchising LLC to file its Amended Counterclaim against Stelor Productions, LLC and Steven A. Esrig within ten (10) business days of the Court's Order on this Motion.

Respectfully submitted by: /s/ Stephen L. Vaughan Stephen L. Vaughan, #2294-49 INDIANO VAUGHAN LLP One N. Pennsylvania Street, Suite 1300 Indianapolis, I N 46204 Telephone: [phone] Fax: [phone] E-mail: [e-mail]

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CERTIFICATE OF SERVICE I hereby certify that on August 15, 2008, a copy of the foregoing was filed electronically. Notice of this filing will be sent to all parties of record by operation of the Court's electronic filing system. Parties may access this filing through the Court's system.

/s/ Stephen L. Vaughan Stephen L. Vaughan, #2294-49

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