Professional Bull Riders v. XISC Int'l Sports - bull trademark complaint.pdf

8/19/2019 Professional Bull Riders v. XISC Int'l Sports - bull trademark complaint.pdf

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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO

DENVER

PROFESSIONAL BULL RIDERS, LLC,

a Delaware limited liability corporation,Plaintiff,

v. Case No.:XISC INTERNATIONAL SPORTSCULTURE CO., LTD.a Chinese corporation,

Serve pursuant to the Hague Conventionthrough the People’s Republic of China’sMinistry of Justice’s International Legal

Cooperation Center Defendant.

COMPLAINT AND JURY DEMAND

Plaintiff Professional Bull Riders, LLC, formerly known as Professional Bull Riders, Inc.

(“PBR”), for its Complaint and Jury Demand against Defendant XISC International Sports

Culture Co., Ltd. (“XISC” or “Defendant”), states and alleges as follows:

NATURE OF THE CASE

1. PBR brings this action against Defendant for violation of the Lanham Act (15

U.S.C. § 1051, 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. Upon information and belief, XISC is a Chinese corporation originally having a

mailing address of 5th Floor, Jingchao Building No. 5 South Nongzhan Road Chaoyang District,

Beijing, China 100004.

Case 1:16-cv-00606-MEH Document 1 Filed 03/15/16 USDC Colorado Page 1 of 23


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4. Pursuant to Fed. R. Civ. P. 4(f)(1) and 4(h)(2), PBR will effect service of process

on Xinniu in accordance with the November 15, 1965 Hague Convention on the Service Abroad

of Judicial and Extrajudicial Documents in Civil or Commercial Matters and through the

People’s Republic of China’s Ministry of Justice’s International Legal Cooperation Center,

which is the designated Central Authority.

5. Upon information and belief, XISC has closed its office in China and no longer

maintains a physical address.

JURISDICTION AND VENUE

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

1338(a), 1367, and 2201.

7. This Court has personal jurisdiction over XISC because XISC has transacted

business with PBR, much of which was to be conducted in the State of Colorado, and XISCconsented to jurisdiction in this state by contract.

8. 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. XISC

consented to venue in this Court by contract.

FACTUAL BACKGROUND

A. PBR’s Business

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

throughout the United States and abroad.

10. 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.

11. 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.

12. 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.

13. PBR has expanded internationally and today hosts events in multiple countries,

including Canada, Mexico, Brazil and Australia.



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B. PBR’s Trademarks

14. 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, related entertainment services,

and a wide range of goods.

15. 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.

16. 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 DESCRIPTIONBULL & RIDER *Design Only

3,022,769 12/06/2005 PRINTED MATTER, NAMELY,POSTERS AND BROCHURES ABOUTBULL RIDING, DECALS, BUMPER STICKERS, CALENDARS, PENS AND NEWSPAPERS AND MAGAZINESABOUT BULL RIDING; CLOTHING

FOR MEN AND WOMEN, NAMELY,SHIRTS, SWEATSHIRTS, BASEBALLSTYLE CAPS AND JACKETS;ENTERTAINMENT SERVICES, NAMELY, ARRANGING,SPONSORING AND CONDUCTINGSPORTS COMPETITIONS IN THEFIELD OF BULL RIDING; AND FANCLUBS

BULL & RIDER

*Design Only

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



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BULL HEAD*Design Only

3,044,118 01/17/2006 PRINTED MATTER, NAMELY,POSTERS AND BROCHURES ABOUTBULL RIDING, DECALS, BUMPER STICKERS, CALENDARS, PENS AND NEWSPAPERS AND MAGAZINES

ABOUT BULL RIDING;CLOTHING FOR MEN AND WOMEN, NAMELY, SHIRTS, SWEATSHIRTS,BASEBALL STYLE CAPS ANDJACKETS; ENTERTAINMENTSERVICES, NAMELY, ARRANGING,SPONSORING AND CONDUCTINGSPORTS COMPETITIONS IN THEFIELD OF BULL RIDING; AND FAN

CLUBS3,088,091 05/02/2006 ANIMAL FEED

PBR LTD. 3,857,925 10/05/20 10 CLOTHING, T-SHIRTS,SWEATSHIRTS, LONG SLEEVESHIRTS, WOVEN SHIRTS, THERMALUNDERWEAR, FLEECE VESTS,FLEECE TOPS, FLEECE PANTS,FLEECE JACKETS, HATS, BEANIES

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

ENTERTAINMENT SERVICES, NAMELY, ARRANGING ANDCONDUCTING SPORTSCOMPETITIONS IN THE FIELD OFBULL RIDING



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PBR PROFESSIONALBULL RIDERS

3,092,112 05/16/2006 PRINTED MATTER, NAMELY,POSTERS AND BROCHURES ABOUTBULL RIDING, DECALS, BUMPER STICKERS, CALENDARS, PENS AND NEWSPAPERS AND MAGAZINES

ABOUT BULL RIDING;ENTERTAINMENT SERVICES, NAMELY, ARRANGING,SPONSORING AND CONDUCTINGSPORTS COMPETITIONS IN THEFIELD OF BULL RIDING; AND FANCLUBS

PBR PROFESSIONALBULL RIDERS

2,691,460 02/25/2003 BELT BUCKLES OF PRECIOUSMETAL; RINGS BEING JEWELRY

MADE OF PRECIOUS METAL;ORNAMENTAL PINS; WATCHESAND CLOCKS; PRINTED MATTER, NAMELY, POSTERS ANDBROCHURES ABOUT BULL RIDING,DECALS, BUMPER STICKERS,CALENDARS, PENS, AND NEWSPAPERS AND MAGAZINESABOUT BULL RIDING; CLOTHGARMENT BAGS FOR TRAVEL,

BRIEFCASES AND ALL-PURPOSESPORTS EQUIPMENT BAGS;PLASTIC BANNERS AND PLASTICPENNANTS; DRINKING GLASSES,BEVERAGE GLASSWARE, COFFEEMUGS AND COFFEE CUPS;CLOTHING FOR MEN AND WOMEN, NAMELY, SHIRTS, SWEATSHIRTS,BASEBALL STYLE CAPS ANDJACKETS; ENTERTAINMENT

SERVICES, NAMELY, ARRANGINGAND CONDUCTING SPORTSCOMPETITIONS IN THE FIELD OFBULL RIDING AND FAN CLUBS



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3,619,950 05/12/2009 COMPUTER GAMES AND VIDEOGAMES, NAMELY,DOWNLOADABLE MULTIMEDIAFILE CONTAINING VIDEO, GAMES,AND INTERNET WEB LINKS

RELATING TO COMPUTER GAMES;AND VIDEO GAMES, NAMELY,COMPUTER PROGRAMS FOR USE INCOMPUTER GAMES AND VIDEOGAMES

3,092,012 05/16/2006 TRADING CARD GAMES; ACTIVITYTOYS, NAMELY, ACTION FIGURES,TOY VEHICLES AND TOY ANIMALS

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, DVDSFEATURING BULL RIDING

3,938,601 03/29/2011 AIR FRESHENING PREPARATIONSDESIGNED FOR VEHICLES;VEHICLE ACCESSORIES, NAMELY,WINDSHIELD SUN SHADES, SUNVISORS, SIDE AND REAR WINDOWSUN SHADES, SEAT COVERS,STEERING WHEEL COVERS, CARGOBAGS AND CASES, VEHICLETRUNK ORGANIZER BAGS ANDCASES, VEHICLE GLOVECOMPARTMENT BAGS AND CASES,VEHICLE CONSOLE ORGANIZER BAGS AND CASES, ORGANIZER BAGS AND CASES THAT ATTACH

TO A VEHICLE SEAT; ROOFMOUNTED LOAD CARRIERS FOR USE ON VEHICLES; FITTED COVERSFOR VEHICLES; FLOOR MATS FOR VEHICLES



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PBR 3,097,240 05/30/2006 BELT BUCKLES, ORNAMENTALPINS, MONEY CLIPS, WATCHES,CLOCKS AND RINGS MADE OFPRECIOUS METAL; CLOTHGARMENT BAGS FOR TRAVEL;

WALLETS, BRIEFCASES AND ALL-PURPOSE SPORTS EQUIPMENTBAGS; PLASTIC KEY CHAIN TAGS; NON-METAL AND NON-LEATHER KEY CHAINS; DRINKING GLASSES,BEVERAGE GLASSWARE, COFFEEMUGS AND COFFEE CUPS;CLOTHING FOR MEN AND WOMEN, NAMELY, SHIRTS, SWEATSHIRTS,

BASEBALL STYLE CAPS, JACKETSAND FOOTWEAR; AND BELTS;TOYS AND GAMES, NAMELY,BOARD GAMES, TRADING CARDSGAMES, CARD GAMES, ANDPUZZLES; ACTIVITY TOYS, NAMELY, TOY ACTION FIGURES,TOY VEHICLES AND TOYANIMALS; BARBECUE SAUCE

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

POSTERS AND BROCHURESCONCERNING BULL RIDING,DECALS, AND NEWSPAPERS ANDMAGAZINES CONCERNING BULLRIDING

3,249,568 06/05/2007 ENTERTAINMENT IN THE NATUREOF COMPETITIONS IN THE FIELDOF BULL RIDING



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3,583,992 03/03/2009 COMPUTER GAMES AND VIDEOGAMES, NAMELY,DOWNLOADABLE MULTIMEDIAFILE CONTAINING VIDEO, GAMES,AND INTERNET WEB LINKS

RELATING TO COMPUTER GAMES;AND VIDEO GAMES, NAMELY,COMPUTER PROGRAMS FOR USE INCOMPUTER GAMES AND VIDEOGAMES

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

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

VEHICLE ACCESSORIES, NAMELY,WINDSHIELD SUN SHADES, SUNVISORS, SIDE AND REAR WINDOWSUN SHADES, SEAT COVERS,STEERING WHEEL COVERS, CARGOBAGS AND CASES, VEHICLETRUNK ORGANIZER BAGS ANDCASES, VEHICLE GLOVECOMPARTMENT BAGS AND CASES,VEHICLE CONSOLE ORGANIZER BAGS AND CASES, ORGANIZER BAGS AND CASES THAT ATTACHTO A VEHICLE SEAT; ROOFMOUNTED LOAD CARRIERS FOR USE ON VEHICLES; FITTEDCOVERS FOR VEHICLES

PBR 3,052,710 01/31/2006 CLOTHING FOR MEN AND WOMEN, NAMELY, SHIRTS, SWEATSHIRTS,BASEBALL STYLE CAPS AND

JACKETS; TOYS AND GAMES, NAMELY, BOARD GAMES,TRADING CARD GAMES, CARDGAMES, PUZZLES, ACTIVITY TOYS, NAMELY, TOY ACTION FIGURESAND ACCESSORIES THEREFORE



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3,721,254 12/08/2009 PRINTED MATTER, NAMELY,POSTERS AND BROCHURES ABOUTBULL RIDING, DECALS, BUMPER STICKERS, CALENDARS, PENS,MAGAZINES AND NEWSPAPERS

ABOUT BULL RIDING;ENTERTAINMENT SERVICES, NAMELY, ARRANGING ANDCONDUCTING SPORTSCOMPETITIONS IN THE FIELD OFBULL RIDING, AND FAN CLUBS

PBRNOW 3,739,839 01/19/2010 EVENT PROGRAMS;PUBLICATIONS, NAMELY,MAGAZINES IN THE FIELDS OF

BULL RIDING; SOUVENIR PROGRAMS CONCERNING BULLRIDING

PRO BULL RIDER 2,822,593 03/16/2004 PUBLICATIONS, NAMELY, AMULTI-MEDIA MAGAZINEFEATURING BULL RIDING,PROFESSIONAL BULL RIDERS ANDPROFESSIONAL BULL RIDINGEVENTS

PROFESSIONAL BULLRIDERS 3,115,825 07/18/2006 CLOTHING FOR MEN AND WOMEN, NAMELY, SHIRTS, SWEATSHIRTS,BASEBALL STYLE CAPS ANDJACKETS; TRADING CARD GAMES;ACTIVITY TOYS, NAMELY, ACTIONFIGURES, TOY VEHICLES AND TOYANIMALS; ENTERTAINMENTSERVICES, NAMELY, ARRANGING,SPONSORING AND CONDUCTINGSPORTS COMPETITIONS IN THE

FIELD OF BULL RIDING; AND FANCLUBS



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2,334,299 03/28/2000 PRINTED MATTER, NAMELY,POSTERS AND BROCHURES ABOUTBULL RIDING, DECALS, AND NEWSPAPERS AND MAGAZINESABOUT BULL RIDING

3,661,382 07/28/2009 COMPUTER GAMES AND VIDEOGAMES, NAMELY,DOWNLOADABLE MULTIMEDIAFILE CONTAINING VIDEO, GAMES,AND INTERNET WEB LINKSRELATING TO COMPUTER GAMES;AND VIDEO GAMES, NAMELY,COMPUTER PROGRAMS FOR USEIN COMPUTER GAMES AND VIDEO

GAMES3,938,604 03/29/2011 AIR FRESHENING PREPARATIONS

DESIGNED FOR VEHICLES;VEHICLE ACCESSORIES, NAMELY,WINDSHIELD SUN SHADES, SUNVISORS, SIDE AND REAR WINDOWSUN SHADES, SEAT COVERS,STEERING WHEEL COVERS, CARGOBAGS AND CASES, VEHICLETRUNK ORGANIZER BAGS ANDCASES, VEHICLE GLOVECOMPARTMENT BAGS AND CASES,VEHICLE CONSOLE ORGANIZER BAGS AND CASES, ORGANIZER BAGS AND CASES THAT ATTACHTO A VEHICLE SEAT; ROOFMOUNTED LOAD CARRIERS FOR USE ON VEHICLES; FITTEDCOVERS FOR VEHICLES; FLOOR

MATS FOR VEHICLES

17. Since its inception, PBR continually has expanded its brand throughout the world.

It has established strong fan bases in multiple countries, including but not limited to Canada,



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Mexico, Brazil, and Australia. PBR began expanding its brand into China within the past

decade.

18. PBR has also registered its trademarks throughout the world.

19. PBR has been granted numerous trademark registrations around the world,

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

included among the PBR Marks):

WORDS COUNTRY REG NO. REG.

DATE

GOODS/SERVICES

DESCRIPTION

CANADA TMA779123 10/5/2010 T-SHIRTS AND LONGSLEEVE T-SHIRTS;PRINTED MATTER, NAMELY, POSTERSAND BROCHURES,DECALS AND NEWSPAPERS ANDMAGAZINESCONCERNING BULLRIDING.ENTERTAINMENTSERVICES, NAMELY,SPONSORING,CONDUCTING ANDMANAGING SPORTSCOMPETITIONS INTHE FIELD OF BULLRIDING.

CANADA TMA734857 2/19/2009 COMPUTER GAMESAND VIDEO GAMES, NAMELY,DOWNLOADABLEMULTIMEDIA FILECONTAINING VIDEO,GAMES, ANDINTERNET WEB LINKS

RELATING TOCOMPUTER GAMES;AND VIDEO GAMES, NAMELY, COMPUTER PROGRAMS FOR USEIN COMPUTER GAMESAND VIDEO GAMES



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CANADA TMA724309 9/24/2008 GAMING MACHINES;MONEY CLIPS, BELTS,WALLETS, KEYCHAINS; BEDDING, NAMELY SHEETS,

PILLOW CASES, BEDCOVERS, BLANKETS,COMFORTERS ANDTOWELS; FOOTWEAR, NAMELY, BOOTS ANDPROTECTIVEFOOTWEAR; RUGS,MATS AND WALLCOVERINGS; TOYSAND GAMES, NAMELY, BOARD

GAMES, TRADINGCARDS, CARD GAMES,PUZZLES, TOYACTION FIGURES ANDACCESSORIESTHEREFORE; TOYSAND GAMES, NAMELY, ACTIVITYTOYS, NAMELY, TOYFIGURINES ANDPLUSH TOYS;BARBECUE SAUCE;ANIMAL FEED.ENTERTAINMENTSERVICES, NAMELY,SPONSORING ANDMANAGING SPORTSCOMPETITIONS INTHE FIELD OF BULLRIDING.

MEXICO 928983 04/17/2006 FORMS, POSTERS,LEAFLETS, LABELS,ADHESIVES,STATIONERY,CALENDERS,MAGAZINESRELATING TOINCREASES THANFORUMS,



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DECALCOMANIAS, NEWSPAPERS ANDPENS

MEXICO 1200753 2/11/2011 ENTERTAINMENT

NAMELYORGANISATION,CONDUCTING ANDPIPING OFCOMPETITIONSSPORTS IN THE FIELDOF INCREASES THANBULL AND CLUBTHAN FANS[ENTERTAINMENT OR EDUCATIONS

BRAZIL 821736337 1/29/2013 AMUSEMENTSERVICES,ENTERTAINMENTAND ANCILLARY;SERVICES OFORGANISATION OFEXHIBITIONS,EXHIBITION;CONGRESSES,~ESPETÁCULO~ARTISTIC, SPORTINGAND CULTURAL;SERVICES OF~CARÁTER~SPORTING,RECREATIONAL,SOCIAL ANDCULTURAL, WITHOUTAIM PROFIT

CTM-Community

Trademark

EuropeanCountriesIncluded:Austria,Benelux(Belgium, the

3692118 6/7/2005 APPARATUS FOR RECORDING,

TRANSMISSION OR REPRODUCTION OFSOUND OR IMAGES;MAGNETIC DATACARRIERS,RECORDING DISCS;AUTOMATICVENDING MACHINES,



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NetherlandsandLuxembourg),Bulgaria,Cyprus, the

CzechRepublic,Denmark,Estonia,Finland,France,Germany,Greece,Hungary,Ireland, Italy,Latvia,

Lithuania,Malta,Poland,Portugal,Romania,Slovakia,Slovenia,Spain,Sweden andthe UnitedKingdom

AUTOMATIC GAMINGANDENTERTAINMENTMACHINES,INCLUDING VIDEO

AND COMPUTER GAMES. CLOTHINGEXCLUDINGFOOTWEAR;HEADGEAR; SHIRTS,SWEATSHIRTS,BASEBALL STYLECAPS AND JACKETS.28 GAMES ANDPLAYTHINGS; PLUSHTOY BULLS AND

BULL MODELS;BOARD GAMES; CARDGAMES; PLAYINGCARDS; PUZZLES;ACTIVITY TOYS; TOYACTION FIGURES ANDACCESSORIESTHEREFORE,AUTOMATIC GAMINGANDENTERTAINMENTMACHINES,INCLUDING VIDEOAND COMPUTER GAMES (TOKEN OR COIN-OPERATED).ENTERTAINMENT;SPORTING ANDCULTURALACTIVITIES;ARRANGING ANDCONDUCTING SPORTSCOMPETITIONS INTHE FIELD OF BULLRIDING; FILM, AUDIO,VIDEO ANDTELEVISIONPRODUCTION; FANCLUB SERVICES.



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CHINA 14438835 6/7/2015 ARRANGEMENTS ANDORGANIZATIONSHOSTING BULLRIDING AND BULLRIDING FAN CLUB

SPORTS THEME;ORGANIZEEDUCATIONAL OR ENTERTAINMENTCONTESTS; ARRANGEAND ORGANIZETRAINING; ARRANGEAND ORGANIZESPORTSCOMPETITIONS;ORGANIZATIONAL

PERFORMANCE(PERFORMANCE);ENTERTAINMENT

CHINA 5423710 9/14/2009 RECREATIONALACTIVITIES;ORGANIZING,ARRANGING SPORTS(CONDUCTEDBETWEENBULLFIGHTING CLUBBULLFIGHT);ORGANIZEEDUCATIONAL OR ENTERTAINMENTCOMPETITIONS;SCHEDULING ANDORGANIZINGMEETINGS;ORGANIZATION OFSPORTSCOMPETITIONS;ARRANGEMENT ANDORGANIZATION OFTRAINING COURSES;ORGANIZATIONALPERFORMANCE(PERFORMANCE)



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AUSTRALIA 1099015 2/15/2006 GAMING MACHINES;ELECTRONICAPPARATUSJEWELLERY, BELTBUCKLES OF

PRECIOUS METALS,RINGS, PINS,WATCHES, CLOCKSPRINTED MATTER,PRINTEDPUBLICATIONS, NEWSPAPERS,POSTERS,BROCHURES,STICKERS,CALENDARS,

MAGAZINES, DECALS,STATIONERY, PENSTEXTILES AND

TEXTILE GOODSINCLUDING PILLOWCASES, SHEETS, BEDCOVERS, BLANKETS,COMFORTERS ANDTOWELSCLOTHING,

FOOTWEAR ANDHEADGEAR INCLUDING SHIRTS,SWEATSHIRTS, CAPS,JACKETSBELT BUCKLESTOYS, GAMES AND

PLAYTHINGSINCLUDING BOARDGAMES, TRADINGCARDS, CARD GAMES,PUZZLES, ACTIVITYTOYS, TOY ACTIONFIGURES ANDACCESSORIESTHEREFOREENTERTAINMENT

SERVICES,ARRANGING ANDCONDUCTING SPORTS



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COMPETITIONS INTHE FIELD OF BULLRIDING AND FANCLUBS

INTERNATIONALREGISTRATION

(DESIGNATEDCOUNTRIES:

AL (ALBANIA)AM (ARMENIA)AU (AUSTRALIA)AZ (AZERBAIJAN)BG (BULGARIA)BH (BAHRAIN)

BW (BOTSWANA)BY (BELARUS)GE (GEORGIA)HR (CROATIA)IR (IRAN(ISLAMICREPUBLIC OF))IS (ICELAND)KE (KENYA)LI(LIECHTENSTEIN)

MD (MOLDOVA)TM(TURKMENISTAN)TR (TURKEY)UZ(UZBEKISTAN)ZM (ZAMBIA)

927774 6/12/2007 COMPUTER GAMESAND VIDEO GAMES, NAMELYDOWNLOADABLEMULTIMEDIA FILECONTAINING VIDEO,GAMES ANDINTERNET WEB LINKSRELATING TOCOMPUTER GAMES;VIDEO GAMES, NAMELY COMPUTER PROGRAMS FOR USEIN COMPUTER GAMESAND VIDEO GAMES

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

sponsoring live events and through various merchandising license agreements entered into with

third parties throughout the world.

C. PBR’s Production Service Agreement with XISC

21. XISC is, or was, engaged in the business of marketing, producing and presenting

live events.



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22. PBR entered into a Production Service Agreement with XISC dated January 29,

2014, which was amended from time to time, including by amendments dated September 15,

2015 and November 13, 2015 (the “Agreement”).

23. The Agreement was designed to allow PBR to stage live bull riding events in

China in collaboration with XISC.

24. Pursuant to the Agreement, XISC was to produce a minimum number of bull

riding performances each year.

25. The Agreement provided, among other things, that XISC was to purchase PBR

approved bucking bulls in a minimum number to allow staging of events in China. XISC also

was required to transport, feed, secure and house the bulls in keeping with PBR standard

requirements and animal welfare policies.

26. Further, the Agreement required XISC to provide veterinary services necessaryfor the health and welfare of the livestock, both at the events and at their housing area.

27. Pursuant to the Agreement, PBR provided XISC with a “non-exclusive, non-

transferable, limited license to use, throughout the Term [of the Agreement] and with PBR’s

prior written approval, PBR’s name and certain of its logos, trademarks and service marks,

together with related artwork…, for the limited purpose of promoting, advertising and marketing

the Event(s).”

28. The Agreement also provides that neither XISC nor PBR shall “produce, license,

contact, or otherwise participate in any event reasonably deemed to be competitive to the Events

contemplated hereunder during the Term nor for two (2) years thereafter in the Chinese markets

expressly contemplated herein.”

29. The Agreement provides that any material breach constitutes a default. In the

event that one party defaults under the Agreement and the other party does not, the party not in

default can “(a) declare this Agreement to be null and void; and/or (b) pursue and enforce any

rights and remedies available at law, in equity or under or pursuant to this Agreement.”

30. In the event of a default, the Agreement provides that XISC must hold PBR

harmless and indemnify it for all costs and expenses incurred, including but not limited to

attorneys’ fees.



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D. XISC Breached the Agreement by Failing to Care for the Bulls

31. With PBR’s help, XISC purchased approximately 95 bucking bulls and imported

them into China. XISC also purchased other equipment, such as stalls and gates, necessary to

house the bulls.

32. PBR and XISC worked together with the expectation of staging the first PBR live

bull riding event in China in July of 2014.

33. XISC continually experienced problems and caused delay in consummating

production of a live event.

34. On two separate occasions, PBR amended the Agreement and extended the time

within which XISC was required to produce live events.

35. In early 2016, it became clear to PBR that XISC was having problems, and it lost

confidence in XISC’s ability to produce the events.36. Between February 15, 2016 and February 18, 2016, a PBR representative visited

the locations in China where XISC had been housing the imported bulls. No bulls remained.

Accordingly, the PBR representative interviewed a number of local people and ultimately

confirmed that XISC had slaughtered all of the bulls.

E. XISC’s Bad Faith Trademark Applications

37. Shortly after signing the Agreement, in or around March of 2014, XISC filed

twenty trademark applications with the Chinese Trademark Office. The trademark applications

are attached as Exhibit A.

38. These twenty trademark applications comprise the following two marks:



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39. The logo of a man riding a bull is a derivative of PBR’s world famous bull and

rider marks.

40. The applications comprising Chinese characters are identical to two applications

filed by PBR in China. (PBR’s Chinese trademark applications are attached as Exhibit B. Note

that “zhi ye dou niu shi ou xian gong si” refers to PBR)

41. XISC did not inform PBR that it filed the twenty trademark applications in China.

42. XISC is listed as the sole owner of the twenty trademark applications.

43. XISC’s trademark applications are currently pending at the Chinese Trademark

Office.

F. PBR’s Letter to XISC & Subsequent Termination of the Agreement

44. On or about March 7, 2016, PBR’s attorney sent XISC a letter regarding XISC’s

anticipatory breach of the Agreement by slaughtering the bulls, breach of the Agreement byfiling twenty trademark applications in its own name for marks owned by PBR, and other various

breaches of the Agreement (the “Termination Letter”).

45. Pursuant to the Agreement, the Termination Letter provided XISC with five days

to cure its breach with respect to the trademark applications by assigning those applications to

PBR.

46. Because the bulls already were deceased, XISC had no ability to cure its breach

with respect to proper care of the bulls and provision of veterinary care, and the five day cure

period was therefore futile with respect to that breach.

47. XISC did not make any attempt to cure any of its breaches within the five days

allotted in Agreement.

48. A copy of the Termination Letter is attached and incorporated herein as Exhibit

C.

COUNT I

(Declaratory Judgment of Trademark Ownership and Interest)

49. PBR hereby incorporates paragraphs 1-48 above as though fully set forth herein.

50. Pursuant to the Agreement, including Section 23(e), PBR owns all right, title and

interest in and to the twenty Chinese trademark applications because they are derivatives of the

PBR Marks.



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

right, title and interest in and to the twenty Chinese trademark applications identified on Exhibit

A.

52. PBR requests that this Court Order XISC to assign the twenty Chinese trademark

applications identified on Exhibit A to PBR and grant PBR the power of attorney to effect the

assignment of those marks.

COUNT II

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


54. The PBR Marks incorporating the bull and rider are distinctive, inherently or

through acquired distinctiveness, and are famous under 15 U.S.C. § 1125(c).

55. The PBR Marks and slogans, especially the bull and rider logo and PBR, arefamous marks among consumers in the United States.

56. XISC’s advertisement and use of the bull and rider marks is likely to cause

dilution of the PBR Marks.

57. Upon information and belief, XISC willfully intended to trade on the recognition

of PBR’s famous marks.

58. XISC’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.

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

costs.

COUNT III

(Breach of Contract by XISC)


61. The Agreement is a valid and enforceable contract between XISC and PBR.

62. XISC breached the Agreement by applying with the Chinese Trademark Office to

register the trademarks identified on Exhibit A in its own name.

63. XISC breached the Agreement by failing to feed, secure and house the bulls in

keeping with PBR standard requirements and animal welfare policies.



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64. XISC breached the Agreement by failing to provide veterinary services necessary

for the health and welfare of the livestock.

65. PBR has at all times complied with all of its obligations under the Agreement.

66. PBR provided XISC notice and an opportunity to cure its breaches, to the extent

possible.

67. XISC made no effort to cure its breach of the Agreement.

68. As a result of XISC’s breach of the Agreement, the Agreement is deemed null and

void, and PBR may pursue any remedies available under the Agreement, at law or in equity for

breach of the Agreement.

69. Because the Agreement is null and void, PBR has no obligation to comply with

any of the terms of the Agreement, including but not limited to any requirement it otherwise

would have had not to compete with XISC.70. Because the Agreement was breached by XISC, XISC remains obligated to PBR

to perform under the terms of the Agreement, which include but are not limited to XISC’s

obligation not to compete with PBR by not participating in any event reasonably deemed to be

competitive to the Events contemplated under the Agreement during the term of the agreement

and for a period of two (2) years thereafter in the Chinese markets contemplated by the

Agreement.

71. PBR is entitled to an award of its attorneys’ fees and costs herein pursuant to the

terms of the Agreement.

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 exclusively is the owner of all right, title and interest

in and to the twenty (20) Chinese trademark applications identified on Exhibit A;

B. The Court enter an Order requiring XISC to assign all right, title and interest in

and to the twenty (20) Chinese trademark applications identified on Exhibit A, which are

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

C. The Court enter an Order granting PBR the power of attorney to effect the

assignment to PBR of the twenty (20) Chinese trademark applications identified on Exhibit A.



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D. The Court declare that XISC has been and is infringing upon PBR’s valid and

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

E. The Court find that XISC breached the Agreement and, as a result, PBR is

relieved of any obligation it otherwise would have had under the Agreement, including but not

limited to any obligation not to compete in the Chinese markets contemplated under the

Agreement;

F. The Court find that XISC breached the Agreement and, as a result, XISC remains

bound by all provisions of the Agreement, including but not limited to its obligation not to

compete in the Chinese markets contemplated under the Agreement;

G. The Court award 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;

H. The Court award PBR pre- and post-judgment interest on all damages recovered by or awarded to PBR; and,

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

shall deem just and proper.

JURY DEMAND

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

Dated this 15th day of March, 2016.

KUTAK ROCK LLP

By: s/ Juliet A. CoxJuliet A. Cox2300 Main Street, Suite 800Kansas City, MO 64108(816) 960-0090 Telephone(816) 960-0041 Facsimile [email protected]

ATTORNEYS FOR PLAINTIFF


Professional Bull Riders v. XISC Int'l Sports - bull trademark complaint.pdf

Documents

Transcript of Professional Bull Riders v. XISC Int'l Sports - bull trademark complaint.pdf