According to the complaint,
[Gracie] is a 9th degree Red Belt in Brazilian Jiu-Jitsu (superior to the black belt) and is the the patriarch of the famed Gracie family from Brazil. Plaintiff moved from Brazil to Southern California in 1978. Since that time, Plaintiff has been an owner and operator of "Gracie Jiu Jitsu" related commercial endeavors including, without limitation, Gracie Jiu Jitsu instructional courses. In 1989, Plaintiff opened the Gracie Jiu Jitsu Academy in Torrance, California.Gracie alleges that he has sold "clothing and other merchandise bearing the GRACIE mark since the early 1980's, if not earlier." Moreover, Gracie alleges that "[o]n or about July 8, 1997, the USPTO granted the application and entered [the] registration" for the mark Gracie Gear and that "[o]n or about September 20, 2005, the USPTO granted the application and entered [the] registration" for the mark Gracie.
As alleged in the complaint:
[o]n or about September 30, 2005, Black Silver filed an application with the USPTO for a trademark registration for the mark GRACIE in International Class 25. Pursuant to that application, Black Silver alleges that it first started using the mark GRACIE in clothing in 1991.In response to the application, Gracie asserts that "the USPTO issued an Office Action [] refusing to register Black Silver's proposed mark due to the likelihood of confusion to Plaintiff's trademark registrations for GRACIE GEAR (Registration No. 2,076,885) and GRACIE (Registration No. 2,997,282)."
Thereafter, Gracie alleges that "Black Silver filed a Petition to Cancel with the U.S. Trademark Trial and Appeal Board ("TTAB") in an effort to cancel Plaintiff's Registrations, claiming to have rights superior to Plaintiff's rights to the mark GRACIE in connection with clothing and related merchandise."
Gracie also alleged that "[i]n mid-2009, Black Silver made a demand that Plaintiff pay Black Silver the sum of $250,000 as a license fee to use the mark GRACIE, notwithstanding the fact that Plaintiff, and not Black Silver, is the owner" of the marks Gracie and Gracie Gear.
Gracie asserted a number of trademark infringement causes of action, an unjust enrichment cause of action, and a cause of action for declaratory relief.
On January 7, 2010, Black Star and Un Mi Lee filed a motion to dismiss the complaint for improper venue or, in the alternative, sought transfer to a more convenient forum.
On May 11, 2010, the Court denied the motion (adopting its tentative written ruling in an earlier opinion).
On June 23, 2010, Black Star and Lee filed an answer and asserted counterclaims against Gracie for trademark infringement, cancellation of trademark, unfair competition, false description, injury to business reputation, and fraud.
According to the counterclaims:
Black Silver has used the name and mark GRACIE in association with retail clothing sales and on women's clothing items since as early as 1995. Black Silver has also developed a nationwide clientele who recognizes and associates the GRACIE mark with Counter-Claimant's distinctive line of women's designer brands and upscale boutique sales services. Counter-Claimant Black Silver's use of its GRACIE name and mark has been widespread and continuous since at least 1991. During these years, Black Silver has advertised its GRACIE boutiques extensively in magazines and has sold many high-quality clothing items under this mark. Consequently, Black Silver has developed tremendous goodwill in its GRACIE name and mark. In order to protect this hard-earned goodwill, Black Silver vigorously enforces its rights in this name and makes the following Counter-Claims in order to disallow Counter-Defendant as a third party to unfairly compete with Black Silver in the marketplace.The crux of the counterclaims (as you may have guessed) is the allegation that Gracie's use of the Gracie mark infringes on Black Star's use as the senior user of the trade name.
I will continue to monitor.
Fight Lawyer
