Free Memorandum in Support of Motion - District Court of Connecticut - Connecticut

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Date: November 12, 2004
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State: Connecticut
Category: District Court of Connecticut
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Case 3:02-cv-02200-CFD Document 68-10 Filed 11/15/2004 Page1 013
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Case 3:02-cv-02200-CFD Document 68-10 Filed 11/15/2004 Page 2 of 3
Errors in the Documents Related to Ownership of the WESTY Marks
The trademark related documents of the WESTY Business, and the actions of the
managers and attomeys of the business related to the WESTY Marks, show that the managers
and attorneys did not understand the implications of the laws of trademark ownership and how it
was affected by the corporate structure they had implemented. The errors and omissions of the
managers and attorneys of the business include, but are not limited to, the following:
· WC1 I is listed the owner of the WESTY’S word mark and the Design of Dog
mark in the trademark applications filed for the marks in 1991 even though it is
undisputed that WC1 1:
(1) was not in existence when the marks were first used in January 1991;
(2) never used the marks;
(3) had no ownership interest of any kind of the entity that used the mark;
(4) had no involvement of any kind with the only store then open and using
the marks (Port Chester);
(5) had no ability to control, and did not control, the use of the marks in
connection with the Port Chester store; and
(6) was voluntarily dissolved shortly after the registrations for the marks
issued in 1992; therefore, it could not under any scenario have controlled
the use of the mark from that point forward.
· WC1 I was intentionally dissolved by its shareholders in 1992 without any thought
as to the affect this would have on the trademark registration that had issued in the
name of WC1 1 or on transferring its purported rights in the WESTY Marks.
· The purported license ofthe unidentified design from WC1 1 to WNY is
ineffective as indefinite because the subject of the license is not identified. The
license is also ineffective because it does not include any quality control
provisions or restrictions on the use of the mark (whatever that mark might have
been). Without such a contractual right of control, WC1 I would have had no way
to control the business operations of WNY. Furthermore, WNY was merely using
the mark as agent for WPCLP and APLP. For WC1 1 to have been able to

Case 3:02-cv-02200-CFD Document 68-10 Filed 11/15/2004 Page 3 of 3
exercise legally enforceable control over the use of the WESTY Marks in Port
Chester, the license would have to have been with APLP or WPCLP.
· W N Y was administratively dissolved in 1993 by the Connecticut Secretary of
State’s office for neglecting to file its corporate minutes with the state. Any
license to WNY would have died with this dissolution. There is no evidence of
any license between WC1 I (or WC1 11) and WNY’s successor, Westy New York,
¤ The USPTO cancelled the original registrations for the WESTY’S mark and Dog
Design mark in 1998 because the business and its attorneys filed the wrong forms
to keep the registrations alive. Instead of filing declarations of continued use, the
attorneys filed statements of use, forms that are used only in connection with
securing an initial registration of an application tiled on an intent to use basis.
i · When WC1 11 was formed, it was intended to be a successor to WC1 1. However,
there was no transfer of any assets from WC1 Ito WC1 11, nor could there have
been because, by law, any assets WC1 1 had would have been distributed to its
shareholders upon its voluntary dissolution four years before WC1 11 was formed.
The shareholders of WC1 1, Carlos and Caesar, never assigned any trademark or
other rights of any kind to WC1 II.
¤ WC1 11 executed a trademark assigmnent agreement in December 1999 that
purported to have the effect of transferring the WESTY Marks from WC1 11 to
A&Co. This document is deficient in several regards, including that it did not
include any consideration for the assignment, and it did not include any reference
to the Design of Dog trademark.
· In an apparent effort to correct the absence of any consideration in the December
1999 trademark assignment from WC1 II to A&Co., these two parties executed a
document entitled "Bill of Sale" that purported to contain the consideration for the
assignment; however, this document listed different trademarks than were listed
in the original assigmnent.
* No written licenses were offered to any of the stores from any of the Westy