Haunted Things, LLC v. Halloween Productions, Inc.

Filing 13

ANSWER to 11 Answer to Complaint, Counterclaim by Counter Defendant Haunted Things, LLC, Plaintiff Haunted Things, LLC. (Mueller, John)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION

HAUNTED THINGS, LLC
9891 Montgomery Road, Suite 273
Cincinnati, OH 45242
Plaintiff/Counterclaim-Defendant,
-v-

Civil No.: 1:09-cv-677
Chief Judge Susan J. Dlott

PLAINTIFF’S ANSWER TO
DEFENDANT’S COUNTERCLAIM
JURY TRIAL DEMANDED

HALLOWEEN PRODUCTIONS, INC.
1525 South 8th Street
St. Louis, MO 63129

Defendant/Counterclaim-Plaintiff.

PLAINTIFF’S ANSWER TO DEFENDANT’S COUNTERCLAIM
Plaintiff/Counterclaim-Defendant Haunted Things, LLC (“Haunted Things”) for its
Answer to the Counterclaim of Defendant/Counterclaim-Plaintiff Halloween Productions, Inc.
(“Halloween Productions”) states as follows:
NATURE OF THE ACTION
1.

Haunted Things denies that the trademarks Haunted Attraction and Haunted

Attraction Magazine as used by Haunted Things as source-identifiers for its magazine, both in
print and on-line, are generic and/or are used in their common descriptive sense and thus denies
the same.

THE PARTIES
2.

Haunted Things is without knowledge or information sufficient to form a belief as

to the truth of the allegations contained in Paragraph 2 of the Counterclaim and therefore denies
the same.
3.

Haunted Things admits that it is a corporation organized and existing under the

laws of the state of Ohio and admits that it is in the business of publishing a magazine, both in
print and on-line, directed to all aspects of the haunted house and haunted entertainment industry.
JURISDICTION AND VENUE
4.

Haunted Things admits the allegations of paragraph 4 of the Counterclaim.

5.

Haunted Things admits the allegations of paragraph 5 of the Counterclaim.

6.

Haunted Things admits the allegations of paragraph 6 of the Counterclaim.

7.

Haunted Things admits that it has instituted litigation against Halloween

Productions and asserted that Halloween Productions’ registration and use of the domain names
hauntedattractionmagazine.com and hauntedattractionsmagazine.com constitutes trademark
infringement.
GENERAL ALLEGATIONS
8.

Haunted Things denies the allegations that the trademark Haunted Attraction is a

“common, generic and popular” term as used by Haunted Things as a source-identifier for its
magazine. Haunted Things is without knowledge or information sufficient to form a belief as to
the truth of the remaining allegations contained in Paragraph 8 of the Counterclaim and therefore
denies the same.
9.

Haunted Things denies the allegations that the trademark Haunted Attraction is

“highly descriptive and pervasively used” by the haunted entertainment industry to describe a
class of magazines about the haunted entertainment industry. Haunted Things denies that the
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trademark Haunted Attraction is not uniquely associated with Haunted Things’ goods and
services by the consumers for Haunted Things’ goods and services, namely members of the
haunted entertainment industry.
10.

Haunted Things is without knowledge or information sufficient to form a belief as

to the truth of the allegations contained in Paragraph 10 of the Counterclaim and therefore denies
same.
11.

Haunted Things admits that in 2005 Halloween Productions registered a number

of domain names including Haunted Things trademarks therein, including
hauntedattractionmagazine.com and hauntedattractionsmagazine.com. Haunted Things denies
that those domain names are generic when used in connection with Halloween Productions’
goods and/or services and denies that Halloween Productions registered those domain names
with the intent of using them to “generically, accurately, and plainly identify” the genre or
category of Halloween Productions’ goods and/or services.
12.

Haunted Things denies that it alleged that it is the only entity in the haunted

entertainment industry allowed to use the term “haunted attraction” in connection with
“promoting, discussing, and reviewing” haunted entertainment sites. Haunted Things admits that
it sent the letter attached as Exhibit 3 to Halloween Productions’ Counterclaim on September 8,
2009 to Halloween Productions. Haunted Things submits that the contents of the letter speaks
for itself. Haunted Things admits that it filed the Complaint in the present action on September
15, 2009 and that it included claims under Sections 32(1) and 43(a) of the Lanham Act,
15 U.S.C. §§ 1114, and 1125(a) and (d), and analogous Ohio law claims. Haunted Things admits
that it does not own federal registrations for its Haunted Attraction trademarks and will seek to

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amend its Complaint to remove and/or dismiss the claims made under Section 32(1) of the
Lanham Act.
13.

Haunted Things admits, on information and belief, that prior to September 8,

2009, no representative of Haunted Things (or its predecessor in interest) explicitly advised any
representative of Halloween Productions of Haunted Things’ exclusive rights in the Haunted
Attraction and Haunted Attraction Magazine trademarks or that Halloween Productions was
infringing Haunted Things rights.
14.

Haunted Things admits that it has never taken any affirmative steps to enforce its

trademark rights against any third parties infringing those rights other than the current action
against Halloween Productions. Haunted Things further admits that it is unaware of any third
party infringement of its trademark rights other than the infringement thereof by Halloween
Productions complained of in the current action.
15.

Haunted Things admits the allegations of paragraph 15 of the Counterclaim.

16.

On information and belief, Haunted Things admits that it has not used a

superscript TM or ® in connection with its use of the Haunted Attraction and Haunted Attraction
Magazine trademarks.
17.

Haunted Things admits that third parties use the term “haunted attraction” in a

non-trademark, descriptive manner to fairly describe their respective goods and/or services.
Haunted Things denies that any third parties use the trademarks Haunted Attraction and/or
Haunted Attraction Magazine as source-identifiers for magazines in the haunted entertainment
industry.
18.

Haunted Things denies the allegations of paragraph 18 of the Counterclaim.

19.

Haunted Things denies the allegations of paragraph 19 of the Counterclaim.

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20.

Haunted Things denies the allegations of paragraph 20 of the Counterclaim.

21.

Haunted Things denies the allegations of paragraph 21 of the Counterclaim.
COUNTERCLAIM

22.

Haunted Things restates and realleges its answers, admissions, and denials set

forth in Paragraphs 1 through 21 as though fully set forth herein.
23.

Paragraph 23 of the Counterclaim states legal conclusions to which no response is

required. To the extent paragraph 23 is deemed to contain allegations of fact, Haunted Things
denies those allegations.
24.

Paragraph 24 of the Counterclaim states legal conclusions to which no response is

required. To the extent paragraph 24 is deemed to contain allegations of fact, Haunted Things
denies those allegations.
25.

Haunted Things denies all allegations set forth in the Counterclaim that are not

specifically admitted herein.
PRAYER FOR RELIEF
WHEREFORE, Haunted Things prays that this Court declare the rights and legal
relations of the parties in respect of the controversy set forth above and to that end adjudge and
decree:

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A.

That the trademarks Haunted Attraction and Haunted Attraction Magazine, when

used in connection with magazines, both print and on-line, directed to the haunted entertainment
industry are not generic and/or that those trademarks have acquired distinctiveness in the
relevant consuming public sufficient for protection as source-identifying trademarks;
B.

That Haunted Things’ rights in the Haunted Attraction and Haunted Attraction

Magazine trademarks are valid;
C.

That Haunted Things is entitled to the exclusive right to use the trademarks

Haunted Attraction and Haunted Attraction Magazine as source-identifiers in connection with
magazines directed to the haunted entertainment industry;
D.

That Halloween Productions’ registration and use of the

hauntedattractionmagazine.com and hauntedattractionsmagazine.com domain names is likely to
and has caused confusion in the relevant consuming public, constitutes a false designations of
origin, and is a false representation;
Counterclaim Defendant Haunted Things respectfully requests that the Court will further:
A.

Permanently enjoin Halloween Productions from infringing uses of Haunted

Things’ Haunted Attraction and Haunted Attraction Magazine trademarks;
B.

Permanently enjoin Halloween Productions from interfering in any manner with

Haunted Things’ exclusive use of its Haunted Attraction and Haunted Attraction Magazine
trademarks;
C.

Award Haunted Things its costs and fees, including its reasonable attorneys’ fees

incurred in this action; and

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E.

Award such other further relief to which Counterclaim Defendant Haunted Things

may be entitled to as a matter of law or equity, or which the Court determines to be just and
proper.
Dated: November 19, 2009

By:

/s/ John M. Mueller
John M.Mueller(0068876)
Ryan M. Bednarczuk (0079795)
TAFT, STETTINIUS & HOLLISTER LLP
425 Walnut Street, Suite 1800
Cincinnati, OH 45202-3957
Telephone [phone]
Facsimile [phone]
mueller @taftlaw.com
[e-mail]
Trial Attorneys for Plaintiff/Counterclaim
Defendant
Haunted Things, LLC

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JURY DEMAND
Plaintiff hereby demands a trial by jury for all issues in this action triable of right by jury.

By:

/s/ John M. Mueller
John M.Mueller(0068876)
Ryan M. Bednarczuk (0079795)
TAFT, STETTINIUS & HOLLISTER LLP
425 Walnut Street, Suite 1800
Cincinnati, OH 45202-3957
Telephone [phone]
Facsimile [phone]
mueller @taftlaw.com
[e-mail]
Trial Attorneys for Plaintiff/Counterclaim
Defendant
Haunted Things, LLC

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CERTIFICATE OF SERVICE
I hereby certify that on November 19, 2009, the foregoing PLAINTIFF’S ANSWER TO
DEFENDANT’S COUNTERCLAIM was filed electronically. Notice of this filing will be sent to
all parties by operation of the Court’s electronic filing system. Parties may access this filing
through the Court’s system.

/s/ John M. Mueller
Trial Attorney for Haunted Things, LLC

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