Hawaii-Pacific Apparel Group, Inc. v. Cleveland Browns Football Company, LLC et al

Filing 8

Hawaii-Pacific Apparel Group, Inc. v. Cleveland Browns Football Company, LLC et al

Doc. 8 Att. 4

Case 1:04-cv-07863-DC

Document 8-5

Filed 12/03/2004

Page 1 of 7

Dockets.Justia.com

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Case 1:04-cv-07863-DC

Document 8-5

Filed 12/03/2004

Page 2 of 7

I\W OFFICES
ClIRrSTINE KAROL ROBERTS
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April 15. 1000

I DgO A

tic. Inc

8f177I.(\go '\thletic COUI1 Indianapolis . IN .16219

Ilawali- I'acitic Apparel Group, Inc. - I.I. DAWG 1'0ll,,\1) tration No. 1 963.463 - March 19. 1996 a;\d 1),\ we; POUND, Application Serial No. 74/198198
To whom it may concern
Ir

prc ;cnll

lawaii-

Pacific Apparel Group. (nc. or J lawail ami Call1brnia. My client IS the owna

or vanous r g1Slercd trademarks and pendllg applications which constitute a family oi DA we; mo7ks.. hereinaiter the "Marks. . In particular. my client is the nwner of the above traucrnark registration for the trademark LIL DA we; rOUND in International C!a.ss 25 (or clothing. nardy
shirts , pams. shorts. jaek ts and swimwear; h adwear, namdy cap;; , hats . basehall capl and sherpa hals. and room'car . namely shoes . tenn" sho s and work shoes. hereinaitcr ref rrcd to as tho gistralion . ,. Furth"r. my chenl asserts both common law and statutory rights to the mark 0,\ POU" D which is the suhject of i\pphcation Serial No. 741498198 , in International Class 25 tor clothing. footwear anu headgear

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Document 8-5 Filed 12/03/2004 Page 3 of 7
alc itcrn cmbodying I

Case 1:04-cv-07863-DC

I.og!' AthletiC , llle

April 25 1000

II has com to thc aHcminn of Hawaii. l'acdic Apparel Grt)up, Inc. that your company may bc
monuf:1Ctu rillg
alld dimihuting t(Jr

mark DA WG POliND in commcrce

through rctail outlets and on th Internet. for c,ample. on ccrlain clothing ilems , such as t-shins. which arc co,"rd by the Rcgi'llatjun and my clicnts common law and statutory right;;.

fhe n:\IncS OAWG PO!/"D , LII. DAWG POUNO, TOP H:\WG and 1. law;1I- Paeilic Appard
'-;roup. Inc " fa1niiv of marks have oecome associated with Ilawaii. Pacilk Apparel Group. /nc. and its producls \)1\ \VG POI!ND and I.IL DA WG POUND are employed by both the puhlic and the clothing industry to refer 10 products marketcd by! lawaii- acllic Apparel Group, Jne.. It is OUI

posilion that your use of the !em DA WG PO(:ilD crcatcs a likelihood of confusion with m
clicnt's Registration and its family of marks and , a, such . constitutes trademuk infringement, unt"ir competition and dilution .,rmy clicnt's family of marks.

On hchalf of Ilawaii- acitic Appard Group, ir.c.. wc rcquest thal you Immediately

cca, and dcsist rra lJf"cturing andior selling any items which embody and/or rclkcl thc

Pacific !\pparel Group. !nc.'s marks:

rk DA we PO(J:lD or any other trade jd

nlity d

signatiOI1 cQntaining any of f-Iawall-

provide us with an accounting selting forth detailed infoLl"alion conccrning lh nalirc and

volumc 01 products you have manufactured and sl,id bearing thc ternl DA we; POUND:
lerminat: c\ny existing liccn e a8r cmc:nls \'Y'ith third partie=, which pellllil the u e of tht:

Marks in queslion including lJA W(; POlii'D and 1.1, DAWG POlil\D.
emt:nt s lling forth lh tcrm On whic, h lhls matter cCln b ()lvcd , induJlIg raymcnt "t' compensatlont() I !awaii, Pacilic Appard Group. Inc. for tne damages arising (rom the above.desc,.hed infnnging activities of your clients.
sign an agr
Ifthis mailer IS to be re,olvecl

mieably, we must havcyourcomplianee with thc forcg(,ing demand.

wlthilltcn (IOJ days of tile date Oilhis letter. We must receive your full coorcratlon with all "I' these dell.aIlUs. and any other rhat may becomc appropriate as we learn more "hl'lIl the nature of your i"fringmg aC!lyitic . or !lawaii-Pacific Apparel Group, Inc. will proceed to vigorously enforce its ridtb lilrow.h the judicial SVSleT. I look forward \0 your early re'ponsc to the mailers di,clJssed above.

('"rdiall)'.

Climlinc Karoll\ol1em

cc. Hav.llii.Paci!ic Apparel Group, Inc.

.,
Case 1:04-cv-07863-DC Document 8-5 Filed 12/03/2004 Page 4 of 7

LAW OFFICES

CHRSTINE

CHRSTE KAOL ROBERTS

KAOL
ROBERTS
In Association with Murland C. Licensed in

California

and Tems

Fischer

P. O. BOX 9827

BAYVIW CENT NEORT BEACH . CA 92658
1EEPHONE 949. 854. 8500 . PACSIME 949. 854. 8535

IN

WEB SIT:

M\'w. ckrbertslaw. com

INlRN E MA: ckbertsiQartymail.com

April 25 , 2000

Puma North America, Inc. 5 Lybert Way Westford , MA 01886
Re:

Hawaii- Pacific Apparel Group, Inc. - LIL DA WG POUND Registration No. 1 963,463 - March 19 , 1996 and DA WG POUN, Application Serial No. 74/498198

To whom it may concern:

I represent Hawaii- Pacific Apparel Group, Inc. of Hawaii and California. My client is the owner of various registered trademarks and pending applications which constitute a family of DA WG marks , hereinafter the "Marks. . In particular, my client is the owner of the above trademark registration for the trademark LIL DA WG POUN in International Class 25 for clothng, namely .shis , pants, short, j ackets and swimwear; .headwea, namely caps, .hats , baseball caps and sherpa hats; and footwear , namely shoes, tenns shoes and work shoes , hereinafter referred to as the Registration. " Further, my client assert both common law and statutory rights to the markDA WG POUND which is the subject of Application Serial No. 74/498198 , in International Class 25 for clothing, footwear and headgear.

000228

Case 1:04-cv-07863-DC

Document 8-5

Filed 12/03/2004

Page 5 of 7

Puma North America, Inc. April 25, 2000
Page 2

It has come to the attention of Hawaii-Pacific Apparel Group, Inc. that your company may be manufacturing and distrbuting for sale items embodying the mark DA WG POUND in commerce through retal outlets and on the Internet, for example , on certin clothing items , such as t-shirts

which are covered by the Registration and my clients common law and statutory rights.

The names DA WG POUND, LIL DA WG POUND, TOP DA WG and HawaiiPacific Apparel Group, Inc. and Group, Inc. s family of marks have become associated with Hawaiiits products. DA WG POUND and LIL DA WG POUN are employed by both the public and the clothing industr to refer to products marketed by Hawaii-Pacific Apparel Group, Inc. It is our

Pacific Apparel

position that your use of the term DA WG POUND creates a likelihood of confusion with my
client's Registration and its family of marks and, as such, constitutes trademark infrngement competition and dilution of my client's family of marks.

, unfair

On behalf of Hawaii-Pacific Apparel Group, Inc. , we request that you immediately:

cease and desist manufacturing and/or sellng any items which embody and/or reflect the Hawaiimark DA WG POUND or any other trde identity designation containing any of
Pacific Apparel Group, Inc.'s marks;
2. '
provide us with an accounting settng fort
detailed information

concernng the natue and

volume of products you have manufactured and sold bearng the term DA WG POUND;

terminate any existing license agreements with thrd paries which permit the use of the Marks in question including DA WG POUN and LIL DA WG POUND.
sign an agreement setting forth the terms on whch this matter can be resolved, including payment of compensation to Hawaii-Pacific Apparel Group, Inc. for the damages arising from the above- described infrnging activities of your clients.
If this matter is to be resolved amcably, we must have your compliance with the foregoing demands within ten (10) days ofthe date of this letter. We must receive your full cooperation with all of these of your demands , and any other that may become appropriate as we learn more about the natue infnging activities , or Hawaii-Pacific Apparel Group; Inc. will proceed to vigorously enforce its

rights through the judicial system. I look forward to your early :response to the matters discussed
above.

Cordially,

Chrstine Karol Roberts

cc: Hawaii- Pacific Apparel Group, Inc.

GQ022J

Case 1:04-cv-07863-DC
. \C

Document 8-5

Filed 12/03/2004

Page 6 of 7

LAW OFFICES

CHRSTINE

CHRirINE KAOL ROBERTS

KAOL
ROBERTS
In Association ""ith Morland C. Licensed in Califoria and Texs

Fischer

P. O. BOX 9827

BAYVW CENTR
NEWPRT BEACH CA 92658

TEHONE 949.854.8500 FACSIM 949.854.8535
INT WE SITE:

www.ckrobertslaw.com

INRN EMA:

attl."'m

April 25 , 2000

Le Sport
c/o VF Knitwear P. O. Box 5423 - Walker Road Martinsvile , VA 24115-5423
Re:

Hawaii-Pacific Apparel Group, Inc. - LIL DA WG POUND Registrtion No. 1 963 463 - March 19, 1996 and DA WG POUN , Application Serial No. 74/498198

To whom it may concem:
I represent Hawaii-Pacific Apparel Group, Inc. of Hawaii and California. My client is the owner of various registered trademarks and pending applications which constitute a family of DA WG marks , hereinafter the "Marks. . In particular, my client is the owner of the above trdemark regstration for the traemark LIL DA WG POUND in International Class 25 for clothng, namely shirts , pants , shorts jackets and swimwear; headwear , namely caps, hats, baseball caps and sherpa hats; and footwear, namely shoes, tennis shoes and work shoes , hereinafter referred to as the Registration. " FUrer, my client assert both common law and statutory rights to the mark DA WG POUN which is the subject of Application Serial No. 74/498198 , in International Class 25 for clothing, footwear and headgear.

0002.3 0

Case 1:04-cv-07863-DC

Document 8-5

Filed 12/03/2004

Page 7 of 7

. 1-

Lee Sport

April 25 , 2000
Page 2

It has come to the attention of Hawaii-Pacific Apparel Group, Inc. that your company may be manufacturing and distributing for sale items embodying the mark DA WG POUN in commerce

through retail outlets and on the Internet, for example, on certain clothing items, such as t-shirts which are covered by the Registrtion and my clients common law and statutory rights.
The names DA WG POUN, LIL DA WG POUND, TOP DA WG and Hawaii-Pacific Apparel Group, Inc. s family of marks have become associated with Hawaii-Pacific Apparel Group, Inc. and its products. DA WG POUND and LIL DA WG POUND are employed by both the public and the clothing industr to refer to products marketed by Hawaii-Pacific Apparel Group, Inc. It is our position that your use of the term DA WG POUND creates a likelihood of confusion with my client's Registrationandits family of marks and, as such, constitutes trademark infrngement, unfair competition and dilution of my client's family of marks.
On behalf of Hawaii- Pacific Apparel Group, Inc. , we request that you immediately:

cease and desist manufacturing and/or selling any items which embody and/or reflect the mark DA WG POUN or any other trade identity designation containing any of HawaiiPacific Apparel Group, Inc.' s marks;-

provide us with an accounting setting forth detailed information concerning the nature and volume of products you have manufactured and sold bearing the tenn DA WG POUND;

terminate any existing license agreements with third paries which permit the use of the Marks in question including DA WG POUND and LIL DA WG POUND.
sign an agreement setting forth the terms on which this matter can be resolved,including payment of compensation to Hawaii-Pacific Apparel Group, Inc. for the damages arising ftom the above-described infrnging activities of your clients.
If ths matter is to be resolved amicably, we must have your compliance with the foregoing demands
within ten (I 0) days ofthe date ofthis letter. We must receive your full cooperation with all of these

demands , and any other that may become appropriate as we learn more about the nature of your infrnging activities, or Hawaii-Pacific Apparel Group, Inc. will proceed to vigorously enforce its rights through the judicial system. I look forward to your early response to the matters discussed above.

Chrstine Karol Roberts

000231