Virginia Polytechnic Institute and State University v. Hokie Real Estate, Inc.

Filing 29

AFFIRMATIVE DEFENSES AND ANSWER to 1 Complaint, COUNTERCLAIM against Virginia Polytechnic Institute and State University, Locke White, Lawrence Hincker by Hokie Real Estate, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G (Part 1), # 8 Exhibit G (Part 2), # 9 Exhibit H, # 10 Exhibit I (Part 1), # 11 Exhibit I (Part 2), # 12 Exhibit I (Part 3), # 13 Exhibit J, # 14 Exhibit K, # 15 Exhibit L, # 16 Exhibit M, # 17 Exhibit N, # 18 Exhibit O, # 19 Exhibit P, # 20 Exhibit Q, # 21 Exhibit R (Part 1), # 22 Exhibit R (Part 2), # 23 Exhibit S (Part 1), # 24 Exhibit S (Part 2), # 25 Exhibit S (Part 3))

Virginia Polytechnic Institute and State University v. Hokie Real Estate, Inc.

Doc. 29 Att. 13

Exhibit J to Counterclaim of Hokie Real Estate, Inc.
Illegal Use of Federal Registration Symbol ("®") With Other Unregistered Terms

Dockets.Justia.com

Listing of Items Illegally Using the Federal Registration Symbol ("®") With Other Unregistered Terms 1. A 1-inch three-ring binder bearing the letters "VT®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked with a sticker and seal stating "Collegiate Licensed Product." The item is marketed by Samsill® and bears the UPC code 764168205331. The item was purchased at the University Bookstore on the Virginia Tech campus. 2. An 11oz. mug bearing the term "HokieBird®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked with a hologram sticker and seal stating "Collegiate Licensed Product" and bearing the code "CS08285874." The item bears the UPC code 705199132005. The item was purchased at Virginia Tech Services, Inc. Volume Two Bookstore, Blacksburg VA. 3. A children's book bearing the phrase "LEARNING FOOTBALL WITH THE HOKIE BIRD®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked "Collegiate Licensed Product" and bearing the code "CL103762010." The item is marketed by Game Day Publications, LLC and bears the UPC code 45000076640. The item was purchased at Virginia Tech Services, Inc. Volume Two Bookstore, Blacksburg VA. Inside the front cover of the book, it is noted that Virginia Tech®, Virginia Tech Hokies , and The Hokie Bird® are trademarks or registered trademarks of Virginia Tech and are used with permission.
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4. A T-shirt bearing the phrase "TECH® HOKIES®" illegally using the federal trademark registration symbol on the unregistered mark TECH. The item is marked with a tag that includes a hologram sticker with a seal that states "Collegiate Licensed Product" and bearing the code "CL55194628." The tag further states "The uniforms and indicia depicted on this product are subject to the intellectual property rights of the respective College or University." The item is marketed by Press Box a division of Royce Apparel and bears the UPC code 844953064302. The item was purchased at Hibbet Sports, Blacksburg VA. 5. A T-shirt bearing the letters "VT®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked with a tag that includes a hologram sticker with a seal that states "Collegiate Licensed Product" and bearing the code "CL14353389." The item is marketed by Banner '47 and bears the UPC code 053838827066 (partially obscured by a price tag). The item was purchased at Hibbet Sports, Blacksburg VA. 6. A long-sleeved T-shirt bearing the phrase "Go Tech®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked with a tag that includes a hologram sticker with a seal that states "Collegiate Licensed Product" and

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bearing the code "CL14387743." The item is marketed by Banner '47 and bears the UPC code 053838827769. The item was purchased at Hibbet Sports, Blacksburg VA. 7. A collared, short-sleeved shirt bearing the letters "VT®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked with a tag that includes a hologram sticker with a seal that states "Collegiate Licensed Product" and bearing the code "CL101783031." The item is marketed by Under Armour® and bears the UPC code 763838603613. The item was purchased at Campus Emporium South "Your One Stop Hokie Shop", Blacksburg VA. 8. A ball cap bearing the letters "VT®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked with a hologram sticker that includes a seal and states "Collegiate Licensed Product" and bearing the code "CL107320749." The item is marketed by Legacy and bears the UPC code 651920590678. The item was purchased at Campus Emporium South "Your One Stop Hokie Shop", Blacksburg VA. 9. A ball cap bearing the letters "VT®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked with a hologram sticker that includes a seal and states "Collegiate Licensed Product" and bearing the code "CL90774244." The item is marketed by Legacy and bears the UPC code 651920622218. The item was purchased at Campus Emporium South "Your One Stop Hokie Shop", Blacksburg VA. 10. A ball cap bearing the letters "VT®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked with a hologram sticker that includes a seal and states "Collegiate Licensed Product" and bearing the code "CL102942359." The item is marketed by Legacy and bears the UPC code 651920606904. The item was purchased at Campus Emporium "Your One Stop Hokie Shop", Blacksburg VA. 11. An assortment of magnets, some of which bear the terms "bird®" and "VT®" illegally using the federal trademark registration symbol on unregistered marks. The item is marked with a hologram sticker that includes a seal and states "Collegiate Licensed Product" and bearing the code "CL50087179." The item is marketed by Triple Overtime Promotions, LLC. and bears the UPC code 890359002066. The item was purchased at Campus Emporium South "Your One Stop Hokie Shop", Blacksburg VA. 12. A hooded sweatshirt bearing the term "TECH®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked with a tag that includes a hologram sticker with a seal that states "Collegiate Licensed Product" and bearing the code "CL85774545." The tag further states "The uniforms and indicia depicted on this product are subject to the intellectual property rights of the respective College or University." The item is marketed by Press Box a division of Royce Apparel and bears the UPC code 748100916394. The item was purchased at Tech Bookstore,

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Blacksburg VA. 13. A T-shirt bearing the letters "VT®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked by a hologram tag stating "Collegiate Licensed Product" and bearing the code "CT 31662655" and another tag bearing an "Officially Licensed Collegiate Products" seal. The item is marketed by JanSport® and bears the UPC code 884805359514. The item was purchased at the University Bookstore on the Virginia Tech campus. 14. Maroon child's pants bearing the letters "VT®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marketed by College Kids® / www.college-kids.net and bears the UPC code 6374A. The item was purchased at Gobbler Gear, 603 College Avenue, Salem, VA. 15. A baby's blanket bearing the phrase "LITTLE HOKIEBIRD®!" illegally using the federal trademark registration symbol on an unregistered mark. The item is marketed by College Kids® / www.college-kids.net and bears the UPC code 000566. The item was purchased at Gobbler Gear, 603 College Avenue, Salem, VA. 16. A child's one-piece garment bearing the phrase "LITTLE HOKIEBIRD®!" illegally using the federal trademark registration symbol on an unregistered mark. The item is marketed by College Kids® / www.college-kids.net and bears the UPC code 6344B. The item was purchased at Gobbler Gear, 603 College Avenue, Salem, VA. 17. A youth's hooded sweatshirt bearing the letters "VT®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marketed by College Kids® / www.college-kids.net and bears the UPC code 5224A. The item was purchased at Gobbler Gear, 603 College Avenue, Salem, VA. 18. A 1" three-ring binder bearing the letters "VT®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked with a sticker and seal stating "Collegiate Licensed Product." The item is marketed by Samsill® and bears the UPC code 764168205317. The item was purchased at Virginia Tech Services, Inc. Volume Two Bookstore, Blacksburg VA. 19. A 1-inch three-ring binder bearing the letters "VT®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked with a sticker and seal stating "Collegiate Licensed Product." The item is marketed by Samsill® and bears the UPC code 764168205324. The item was purchased at the University Bookstore on the Virginia Tech campus. 20. A T-shirt bearing the letters "VT®" illegally using the federal trademark registration symbol on an unregistered mark. The item is marked with a tag that includes a hologram sticker with a seal that states "Collegiate Licensed Product" and bears the code "CL62900332." The item is marketed by Champion and bears the UPC code

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801779034735. The item was purchased at the University Bookstore on the Virginia Tech campus. 21. Vol. 3 No. 2, September 2010 issue of Inside Hokiesports magazine containing the sentence "JOIN YOUNG HOKIES® JOE AND EMMA as the Hokie Bird® teaches this curious brother and sister duo how to play the game of football...and end up on the field themselves!" illegally using the federal trademark registration symbol on the unregistered mark "Hokie Bird." The sentence appears on page 44 as part of an advertisement for Game Day Publications' book "Learning Football With The Hokie Bird." Inside Hokiesports magazine states on its cover that it is "The Official Publication of Virginia Tech Athletics." The item bears the UPC code 45000077147. The item was purchased at the University Bookstore on the Virginia Tech campus.

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Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with a unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark

Illegal use of the federal registration symbol with an unregistered mark