AFDOCS/13050773.1

LANE POWELL PC

601 SW SECOND AVENUE, SUITE 2100

PORTLAND, OREGON 97204-3158

503.778.2100 FAX: 503.778.2200

PAGE 1 - FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND

COUNTERCLAIMS TO THE COMPLAINT

Kenneth R. Davis II, OSB No. 971132

davisk@lanepowell.com

Parna A. Mehrbani, OSB No. 053235

mehrbanip@lanepowell.com

LANE POWELL PC

601 SW Second Avenue, Suite 2100

Portland, Oregon 97204-3158

Telephone: 503.778.2121

Facsimile: 503.778.2200

Michelle Mancino Marsh, pro hac vice

michelle.marsh@arentfox.com

Allen G. Reiter, pro hac vice

allen.reiter@arentfoxcom

Eric Roman, pro hac vice

eric.roman@arentfox.com

Arent Fox LLP

1675 Broadway

New York, NY 10019

Telephone: 212.484.3900

Facsimile: 212.484.3990

Attorneys for Defendant TRB Acquisitions LLC

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

PORTLAND DIVISION

ADIDAS AMERICA, INC., a Delaware

corporation; ADIDAS AG, a foreign entity;

ADIDAS INTERNATIONAL MARKETING

B.V., a foreign entity; REEBOK

INTERNATIONAL LTD., a Massachusetts

corporation; and REEBOK

INTERNATIONAL LIMITED, a foreign

entity,

Plaintiffs,

v.

TRB ACQUISITIONS LLC, a New York

limited liability company,

Defendant.

Case No. 3:15-CV-02113-SI

Defendant TRB Acquisitions LLC’s

FIRST AMENDED ANSWER,

AFFIRMATIVE DEFENSES, AND

COUNTERCLAIMS TO THE COMPLAINT

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LANE POWELL PC

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PORTLAND, OREGON 97204-3158

503.778.2100 FAX: 503.778.2200

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FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND

COUNTERCLAIMS TO THE COMPLAINT

Defendant TRB Acquisitions LLC (“TRB”), by and through its undersigned counsel Lane

Powell PC and Arent Fox LLP hereby answers the Complaint filed by Plaintiffs adidas America,

Inc., adidas AG, adidas International Marketing B.V., Reebok International Ltd., and Reebok

International Limited (“Plaintiffs”), and submits the following Counterclaims, as follows:

I. INTRODUCTION

1. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 1 of the Complaint and therefore denies the

same.

2. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 2 of the Complaint and therefore denies the

same.

3. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 3 of the Complaint and therefore denies the

same.

4. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 4 of the Complaint and therefore denies the

same.

5. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 5 of the Complaint and therefore denies the

same.

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503.778.2100 FAX: 503.778.2200

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6. In answer to paragraph 6 of the Compliant, TRB admits that it is the owner of

U.S. Trademark Registration Nos. 4,466,857, 4,721,056, 4,664,665, 4,724,666, 4,721,054, and

4,466,856 (the “RBX Federal Registrations”), as well as all common law rights, to the trademark

RBX and design shown below (and in earlier variations), and the RBX word mark alone

(collectively the “RBX Marks”) for use in connection with apparel and footwear, as well as other

goods across a wide range of product categories.

TRB further admits that it or its predecessors in interest have used the RBX Marks on products

that have been offered for sale or sold in the United States since as early as 2002 with respect to

socks and as early as 2007 with respect to other apparel. TRB further admits that the letters “RB”

have been used by TRB’s predecessor in interest since as early as 2007. TRB specifically denies

that its use or the use by its predecessors in interest of the RBX Marks is recent or confusing

with any of Plaintiffs’ marks, or that its use of the RBX Marks was wrongful, in bad faith or

otherwise in violation of any of Plaintiffs’ alleged rights in any way. Except as expressly

admitted herein, TRB denies the allegations contained in paragraph 6.

7. In answer to paragraph 7 of the Complaint, TRB admits that it is the owner of the

RBX Federal Registrations and RBX Marks for apparel, including without limitation, clothing

and sportswear, t-shirts, sweatshirts, shorts, pants, and jackets, among other goods across a wide

range of product categories. Except as expressly admitted herein, TRB denies the allegations

contained in paragraph 7.

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503.778.2100 FAX: 503.778.2200

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COUNTERCLAIMS TO THE COMPLAINT

8. In answer to paragraph 8 of the Complaint, TRB admits that products that bear the

RBX Marks have been offered for sale or sold in interstate commerce by TRB or its predecessors

in interest since as early as 2002 with respect to socks and as early as 2007 with respect to other

apparel. TRB denies that it sold a product with three stripes as allegedly depicted in Paragraph 8,

which appears to have been manipulated either physically or through photography to appear to

be a garment with three stripes down the side. Except as expressly admitted herein, TRB denies

the allegations contained in paragraph 8.

9. In answer to paragraph 9 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. TRB denies

any other allegations contained in paragraph 9.

10. In answer to paragraph 10 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. TRB denies

any other allegations contained in paragraph 10.

II. PARTIES

11. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 11 of the Complaint concerning adidas AG’s

corporate organization, status, and place of business, and therefore denies the same.

12. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 12 of the Complaint concerning adidas

International Marketing B.V.’s corporate organization, status, and place of business, and

therefore denies the same.

13. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 13 of the Complaint concerning adidas America,

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COUNTERCLAIMS TO THE COMPLAINT

Inc.’s corporate organization, status, place of business, or business, and therefore denies the

same.

14. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 14 of the Complaint concerning Reebok

International Ltd.’s corporate organization, status, and place of business, and therefore denies the

same.

15. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 15 of the Complaint concerning Reebok

International Limited’s corporate organization, status, and place of business, and therefore denies

the same.

16. TRB admits the allegations of paragraph 16 of the Complaint, except that it denies

its principal place of business is located on the 9th floor; the principal place of business is

located on the 5th floor.

III. JURISDICTION AND VENUE

17. TRB admits the allegations of paragraph 17 of the Complaint.

18. TRB admits the allegations of paragraph 18 of the Complaint.

19. TRB admits the allegations of paragraph 19 of the Complaint.

IV. FACTS COMMON TO ALL CLAIMS FOR RELIEF

20. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 20 of the Complaint and therefore denies the

same.

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503.778.2100 FAX: 503.778.2200

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COUNTERCLAIMS TO THE COMPLAINT

21. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 21 of the Complaint and therefore denies the

same.

22. In answer to paragraph 22 of the Complaint, TRB admits that the U.S. Patent and

Trademark Office’s (“USPTO”) records shows that ADIDAS AG is the last listed owner of

federal trademark registration number 1,815,956, and that Exhibit 2 purports to be a copy of the

certificate of registration for that mark. Except as expressly admitted herein, TRB is without

knowledge or information sufficient to form a belief as to the truth of the allegations as set forth

in paragraph 22 of the Complaint and therefore denies the same.

23. In answer to paragraph 23 of the Complaint, TRB admits that the USPTO’s

records shows that ADIDAS AG is the last listed owner of federal trademark registration number

1,833,868, and that Exhibit 3 purports to be a copy of the certificate of registration for that mark.

Except as expressly admitted herein, TRB is without knowledge or information sufficient to form

a belief as to the truth of the allegations as set forth in paragraph 23 of the Complaint and

therefore denies the same.

24. In answer to paragraph 24 of the Complaint, TRB admits that the USPTO’s

records shows that ADIDAS AG is the last listed owner of federal trademark registration number

2,278,589, and that Exhibit 4 purports to be a copy of the certificate of registration for that mark.

Except as expressly admitted herein, TRB is without knowledge or information sufficient to form

a belief as to the truth of the allegations as set forth in paragraph 24 of the Complaint and

therefore denies the same.

25. In answer to paragraph 25 of the Complaint, TRB admits that the USPTO’s

records shows that ADIDAS AG is the last listed owner of federal trademark registration number

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503.778.2100 FAX: 503.778.2200

PAGE 7 - FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND

COUNTERCLAIMS TO THE COMPLAINT

3,029,129, and that Exhibit 5 purports to be a copy of the certificate of registration for that mark.

Except as expressly admitted herein, TRB is without knowledge or information sufficient to form

a belief as to the truth of the allegations as set forth in paragraph 25 of the Complaint and

therefore denies the same.

26. In answer to paragraph 26 of the Complaint, TRB admits that the USPTO’s

records shows that ADIDAS AG is the last listed owner of federal trademark registration number

3,029,135, and that Exhibit 6 purports to be a copy of the certificate of registration for that mark.

Except as expressly admitted herein, TRB is without knowledge or information sufficient to form

a belief as to the truth of the allegations as set forth in paragraph 26 of the Complaint and

therefore denies the same.

27. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 27 of the Complaint, and therefore denies the

same.

28. In answer to paragraph 28 of the Complaint, TRB admits that the USPTO’s

records shows that ADIDAS AG is the last listed owner of federal trademark registration number

2,058,619, and that Exhibit 8 purports to be a copy of the certificate of registration for that mark.

Except as expressly admitted herein, TRB is without knowledge or information sufficient to form

a belief as to the truth of the allegations as set forth in paragraph 28 of the Complaint and

therefore denies the same.

29. In answer to paragraph 29 of the Complaint, TRB admits that the USPTO’s

records shows that ADIDAS AG is the last listed owner of federal trademark registration number

3,029,127, and that Exhibit 9 purports to be a copy of the certificate of registration for that mark.

Except as expressly admitted herein, TRB is without knowledge or information sufficient to form

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601 SW SECOND AVENUE, SUITE 2100

PORTLAND, OREGON 97204-3158

503.778.2100 FAX: 503.778.2200

PAGE 8 - FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND

COUNTERCLAIMS TO THE COMPLAINT

a belief as to the truth of the allegations as set forth in paragraph 29 of the Complaint and

therefore denies the same.

30. In answer to paragraph 30 of the Complaint, TRB admits that the USPTO’s

records shows that ADIDAS AG is the last listed owner of federal trademark registration number

3,087,329, and that Exhibit 10 purports to be a copy of the certificate of registration for that

mark. Except as expressly admitted herein, TRB is without knowledge or information sufficient

to form a belief as to the truth of the allegations as set forth in paragraph 30 of the Complaint and

therefore denies the same.

31. In answer to paragraph 31 of the Complaint, TRB admits that the USPTO’s

records shows that ADIDAS AG is the last listed owner of federal trademark registration number

2,278,591, and that Exhibit 11 purports to be a copy of the certificate of registration for that

mark. Except as expressly admitted herein, TRB is without knowledge or information sufficient

to form a belief as to the truth of the allegations as set forth in paragraph 31 of the Complaint and

therefore denies the same.

32. In answer to paragraph 32 of the Complaint, TRB admits that the USPTO’s

records shows that ADIDAS AG is the last listed owner of federal trademark registration

numbers 870,136, 0961,353, 2,016,963, 2,284,308, 2,909,861, 2,999,646, 3,183,656, and

3,183,663, and that ADIDAS INTERNATIONAL MARKETING B.V. is the registrant and

owner of federal trademark registration numbers 3,063,742, and 3,063,745, and that Exhibit 12

purports to include copies of the certificate of registration for those marks. Except as expressly

admitted herein, TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 32 of the Complaint and therefore denies the

same.

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503.778.2100 FAX: 503.778.2200

PAGE 9 - FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND

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33. In answer to paragraph 33 of the Complaint, TRB admits that the USPTO’s

records shows that ADIDAS AG is the last listed owner of federal trademark registration number

1,674,229, and that Exhibit 13 purports to be a copy of the certificate of registration for that

mark. Except as expressly admitted herein, TRB is without knowledge or information sufficient

to form a belief as to the truth of the allegations as set forth in paragraph 33 of the Complaint and

therefore denies the same.

34. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 34 of the Complaint, and therefore denies the

same.

35. In answer to paragraph 35 of the Complaint, TRB admits that the USPTO’s

records shows that ADIDAS AG is the last listed owner of federal trademark registration number

2,179,796 and that ADIDAS INTERNATIONAL MARKETING B.V. is the last listed owner of

federal trademark registration numbers 2,411,802, 2,532,007, 2,651,325, 2,627,645, and

3,708,658, and that Exhibit 14 purports to include copies of the certificate of registration for

those marks. Except as expressly admitted herein, TRB is without knowledge or information

sufficient to form a belief as to the truth of the allegations as set forth in paragraph 35 of the

Complaint and therefore denies the same.

36. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 36 of the Complaint and therefore denies the

same.

37. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 37 of the Complaint, and therefore denies the

same.

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38. In answer to paragraph 38 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 38, TRB is without knowledge or information sufficient

to form a belief as to their truth, and therefore denies the same.

39. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 39 of the Complaint, and therefore denies the

same.

40. In answer to paragraph 40 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. TRB avers

that adidas has co-existed with third party owners of “triangular” shaped marks containing lines

for many years, including without limitation, the following federally registered marks for use on

apparel and other products:

As to any other allegations set forth in paragraph 40, TRB is without knowledge or information

sufficient to form a belief as to their truth, and therefore denies the same.

41. In answer to paragraph 41 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 41, TRB is without knowledge or information sufficient

to form a belief as to their truth, and therefore denies the same.

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42. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 2 of the Complaint, and therefore denies the

same.

43. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 43 of the Complaint, and therefore denies the

same.

44. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 44 of the Complaint, and therefore denies the

same.

45. In answer to paragraph 45 of the Complaint, TRB admits that the USPTO’s

records shows that REEBOK INTERNATIONAL LIMITED COMPANY is the last listed owner

of federal trademark registration numbers 1,133,704, 1,390,793, 1,534,383, and 1,736,143, and

that Exhibit 18 purports to include copies of the certificate of registration for those marks. Except

as expressly admitted herein, TRB is without knowledge or information sufficient to form a

belief as to the truth of the allegations as set forth in paragraph 45 of the Complaint and therefore

denies the same.

46. In answer to paragraph 46 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 46, TRB is without knowledge or information sufficient

to form a belief as to their truth, and therefore denies the same.

47. In answer to paragraph 47 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

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other allegations set forth in paragraph 47, TRB is without knowledge or information sufficient

to form a belief as to their truth, and therefore denies the same.

48. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 48 of the Complaint, and therefore denies the

same.

49. In answer to paragraph 49 of the Complaint, TRB admits that the USPTO’s

records shows that REEBOK INTERNATIONAL LIMITED COMPANY is the last listed owner

of federal trademark registration number 3,074,802, and that Exhibit 20 purports to be a copy of

the certificate of registration for that mark. Except as expressly admitted herein, TRB is without

knowledge or information sufficient to form a belief as to the truth of the allegations as set forth

in paragraph 49 of the Complaint and therefore denies the same.

50. In answer to paragraph 50 of the Complaint, TRB admits that the USPTO’s

records shows that REEBOK INTERNATIONAL LIMITED COMPANY is the registrant and

owner of the cancelled federal trademark registration number 3,612,991, and that Exhibit 21

purports to be a copy of the certificate of registration for that mark. Except as expressly admitted

herein, TRB is without knowledge or information sufficient to form a belief as to the truth of the

allegations as set forth in paragraph 50 of the Complaint and therefore denies the same.

51. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 51 of the Complaint, and therefore denies the

same.

52. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 52 of the Complaint, and therefore denies the

same.

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53. In answer to paragraph 53 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 53, TRB is without knowledge or information sufficient

to form a belief as to their truth, and therefore denies the same.

54. TRB is without knowledge or information sufficient to form a belief as to the

truth of the allegations as set forth in paragraph 54 of the Complaint, and therefore denies the

same.

55. In answer to paragraph 55 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. TRB admits

that products that bear the RBX Marks have been offered for sale or sold in interstate commerce

by TRB or its predecessors in interest since as early as 2002 with respect to socks and as early as

2007 with respect to other apparel. TRB specifically denies that its use or the use by its

predecessors in interest of the RBX Marks is confusing with any of Plaintiffs’ marks. As to any

other allegations set forth in paragraph 55, TRB denies the same.

56. In answer to paragraph 56 of the Complaint, TRB admits that TRB is the owner of

RBX Registrations for the design mark shown below for, without limitation, apparel and

footwear, as well as other goods across a wide range of product categories. TRB denies that the

RBX design mark shown below bears a “three-stripe design.”

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TRB further admits that it or its predecessors in interest have used the RBX Marks on products

that have been offered for sale or sold in the United States since as early as 2002 with respect to

socks and as early as 2007 with respect to other apparel. TRB further admits that the letters “RB”

have been used by TRB’s predecessor in interest in connection with apparel since as early as

2007. TRB specifically denies that its use or the use by its predecessors in interest of the RBX

Marks is recent or confusing with any of Plaintiffs’ marks, or that its use of the RBX Marks was

wrongful, in bad faith or otherwise in violation of any of Plaintiffs’ alleged rights in any way.

Except as expressly admitted herein, TRB denies the allegations contained in paragraph 56.

57. In answer to paragraph 57 of the Complaint, TRB admits that products that bear

the RBX Marks have been offered for sale or sold in retail channels of trade by TRB or its

predecessors in interest since as early as 2002 with respect to socks and as early as 2007 with

respect to other apparel. TRB further denies that it sold a product with three stripes as allegedly

depicted in Paragraphs 8 and 57, which appears to have been manipulated either physically or

through photography to appear to be a garment with three stripes down the side. Except as

expressly admitted herein, TRB denies the allegations contained in paragraph 57.

58. In answer to paragraph 58 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 58, TRB denies the same.

59. In answer to paragraph 59 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. TRB admits

that Plaintiffs do not manufacture TRB’s products that bear TRB’s federally registered RBX

mark. TRB further admits that it is not associated, affiliated or connected with Plaintiffs, or

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sponsored by Plaintiffs. Except as expressly admitted herein, TRB denies the allegations

contained in paragraph 59.

60. In answer to paragraph 60 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 60, TRB is without knowledge or information sufficient

to form a belief as to their truth, and therefore denies the same.

61. In answer to paragraph 61 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 61, TRB is without knowledge or information sufficient

to form a belief as to their truth, and therefore denies the same.

62. In answer to paragraph 62 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 62, TRB denies the same.

63. In answer to paragraph 63 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 63, TRB denies the same.

64. In answer to paragraph 64 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 64, TRB denies the same.

65. In answer to paragraph 65 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 65, TRB denies the same.

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66. In answer to paragraph 66 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 66, TRB denies the same.

67. In answer to paragraph 67 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 67, TRB is without knowledge or information sufficient

to form a belief as to their truth, and therefore denies the same.

68. In answer to paragraph 68 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 68, TRB denies the same.

FIRST CLAIM FOR RELIEF

(Federal Trademark Infringement)

69. TRB reaffirms, realleges, and incorporates herein by reference the answers set

forth in paragraphs 1 through 68.

70. In answer to paragraph 70 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 70, TRB denies the same.

71. In answer to paragraph 71 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 71, TRB denies the same.

72. In answer to paragraph 72 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 72, TRB denies the same.

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73. In answer to paragraph 73 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 73, TRB denies the same.

SECOND CLAIM FOR RELIEF

(Federal Unfair Competition)

74. TRB reaffirms, realleges, and incorporates herein by reference the answers set

forth in paragraphs 1 through 73.

75. In answer to paragraph 75 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 75, TRB denies the same.

76. In answer to paragraph 76 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 76, TRB denies the same.

77. In answer to paragraph 77 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 77, TRB denies the same.

78. In answer to paragraph 78 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 78, TRB denies the same.

THIRD CLAIM FOR RELIEF

(Federal Trademark Dilution of the Three-Stripe Mark and REEBOK Mark)

79. TRB reaffirms, realleges, and incorporates herein by reference the answers set

forth in paragraphs 1 through 78.

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80. In answer to paragraph 80 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 80, with respect to its own actions, TRB denies the same.

As to any other allegations with respect to Plaintiffs’ conduct, TRB is without knowledge or

information sufficient to form a belief as to their truth, and therefore denies the same.

81. In answer to paragraph 81 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 81, TRB denies the same.

82. In answer to paragraph 82 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 82, TRB denies the same.

83. In answer to paragraph 83 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 83, TRB denies the same.

FOURTH CLAIM FOR RELIEF

(Unfair and Deceptive Trade Practices)

84. TRB reaffirms, realleges, and incorporates herein by reference the answers set

forth in paragraphs 1 through 83.

85. In answer to paragraph 85 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 85, TRB denies the same.

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86. In answer to paragraph 86 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 86, TRB denies the same.

87. In answer to paragraph 87 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 87, TRB denies the same.

FIFTH CLAIM FOR RELIEF

(Common Law Trademark Infringement and Unfair Competition)

88. TRB reaffirms, realleges, and incorporates herein by reference the answers set

forth in paragraphs 1 through 87.

89. In answer to paragraph 89 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 89, TRB denies the same.

90. In answer to paragraph 90 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 90, TRB denies the same.

91. In answer to paragraph 91 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 91, TRB denies the same.

92. In answer to paragraph 92 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 92, TRB denies the same.

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SIXTH CLAIM FOR RELIEF

(State Trademark Dilution and Injury to Business Reputation)

93. TRB reaffirms, realleges, and incorporates herein by reference the answers set

forth in paragraphs 1 through 92.

94. In answer to paragraph 94 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 94, with respect to its own actions, TRB denies the same.

As to any other allegations with respect to Plaintiffs’ conduct, TRB is without knowledge or

information sufficient to form a belief as to their truth, and therefore denies the same.

95. In answer to paragraph 95 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 95, TRB denies the same.

96. In answer to paragraph 96 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 96, TRB denies the same.

97. In answer to paragraph 97 of the Complaint, to the extent that the allegations

contained therein constitute a legal conclusion or argument, no answer is required. As to any

other allegations set forth in paragraph 97, TRB denies the same.

PRAYER FOR RELIEF

TRB denies that Plaintiffs are entitled to any of the relief requested and also denies that

such requested relief could properly be granted to Plaintiffs.

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AFFIRMATIVE DEFENSES

FIRST AFFIRMATIVE DEFENSE

(Failure to State a Claim)

1. Plaintiffs fail to state a claim against TRB on which the Court can grant relief, and

therefore, pursuant to Federal Rule of Civil Procedure 12(b)(6), the Complaint and alleged claim

or claims raised therein must be dismissed.

SECOND AFFIRMATIVE DEFENSE

(Statute of Limitations)

2. Plaintiffs’ claims are barred in whole or in part by the applicable two year statute

of limitations in the state of Oregon and any other applicable statute of limitations.

THIRD AFFIRMATIVE DEFENSE

(Waiver)

3. Plaintiffs’ claims are barred in whole or in part due to waiver.

FOURTH AFFIRMATIVE DEFENSE

(Laches)

4. Plaintiffs’ claims are barred in whole or in part pursuant to the doctrine of laches.

FIFTH AFFIRMATIVE DEFENSE

(Unclean Hands)

5. Plaintiffs’ claims are barred in whole or in part due to their unclean hands,

including without limitation, attempting to prevent lawful competition in the marketplace, failure

to perform a reasonable pre-suit investigation, asserting cancelled or otherwise unenforceable

trademark registrations, and failure to alert the Court to TRB’s numerous prima facie valid

federal trademark registrations, obtained without any objection from any of the Plaintiffs.

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SIXTH AFFIRMATIVE DEFENSE

(Estoppel)

6. Plaintiffs’ claims are barred in whole or in part by the doctrine of estoppel.

SEVENTH AFFIRMATIVE DEFENSE

(Acquiescence)

7. Plaintiffs’ claims are barred in whole or in part by the doctrine of acquiescence.

EIGHTH AFFIRMATIVE DEFENSE

(Federal Preemption of State Law Dilution Claims)

8. Plaintiffs’ state law dilution claims are barred because they are preempted by

federal law and TRB’s ownership of federal trademark registrations.

NINTH AFFIRMATIVE DEFENSE

(Failure to Mitigate)

9. Plaintiffs have failed to mitigate their damages, if any.

TENTH AFFIRMATIVE DEFENSE

(Unjust Enrichment)

10. Plaintiffs would be unjustly enriched if allowed to recover on their Complaint.

ELEVENTH AFFIRMATIVE DEFENSE

(Trademark Misuse)

11. Plaintiffs have used their trademark registrations to improperly and unfairly

promote a monopoly and restrict competition, and therefore should be denied enforcement of any

purported rights therein.

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TWELFTH AFFIRMATIVE DEFENSE

(Abandonment)

12. Plaintiffs’ claims with respect to the mark “RBK” are barred in whole or in part

by their abandonment of any rights they may have had in the mark.

THIRTEENTH AFFIRMATIVE DEFENSE

(Non-Trademark Usage of Stripes)

13. Plaintiffs’ claims are barred in whole or in part by the fact that TRB’s use of

stripes on clothing and footwear is merely ornamental, decorative, non-source identifying,

aesthetically functional, functional, and/or generic.

FOURTEENTH AFFIRMATIVE DEFENSE

(Additional Defenses)

14. TRB reserves the right to allege additional defenses in the event that discovery or

other analysis indicates that additional affirmative or other defenses are appropriate.

TRB’S PRAYER FOR FURTHER RELIEF

TRB requests that each prayer for relief sought by Plaintiffs be denied, that this Court

enter judgment for TRB and against Plaintiffs on all counts, and that the Complaint be dismissed

with prejudice, and further that this Court:

A. Award TRB its costs of defending against the Complaint, together with

reasonable attorneys’ fees and costs as may be allowed by applicable law and/or the equity

powers of this Court; and

B. Award TRB such other and further relief this Court deems just and proper.

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COUNTERCLAIMS

For its counterclaims against Counterclaim-Defendants Adidas America, Inc., Adidas

AG, Adidas International Marketing B.V., Reebok International Ltd., and Reebok International

Limited (each individually “Counterclaim-Defendant” and together “CounterclaimDefendants”), Counterclaimant TRB Acquisitions LLC (“Counterclaimant” or “TRB”) asserts

the following counterclaims.

THE PARTIES

1. Counterclaimant TRB Acquisitions LLC is a New York limited liability company,

with its principal place of business at 34 West 33rd Street, 5th Floor, New York, New York

10001.

2. On information and belief, Counterclaim-Defendant adidas AG is a joint stock

company organized and existing under the laws of the Federal Republic of Germany, having its

office and principal place of business at Postach 11230, D-91072 Herzogenaurach, Federal

Republic of Germany.

3. On information and belief, Counterclaim-Defendant adidas International

Marketing B.V. is organized under the laws of the Netherlands, having a principal place of

business at Atlas Arena Offices, Africa Building, Hoogoorddreef 9-A, 1101 BA Amsterdam

Zuidoost, Netherlands.

4. On information and belief, Counterclaim-Defendant adidas America, Inc. is a

corporation organized and existing under the laws of the State of Delaware, having its principal

place of business at 5055 N. Greeley Avenue, Portland, Oregon 97217.

5. On information and belief, Counterclaim-Defendant Reebok International Ltd. is

a corporation organized and existing under the laws of the Commonwealth of Massachusetts,

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having its principal place of business at 1895 J.W. Foster Boulevard, Canton, Massachusetts

02021.

6. On information and belief, Counterclaim-Defendant Reebok International Limited

is a corporation organized and existing under the laws of England, having its principal place of

business at 11/12 Pall Mall, London SW1Y 5LU, England.

7. On information and belief, Reebok International Ltd. and Reebok International

Limited are wholly owned by adidas AG.

JURISDICTION AND VENUE

8. This Court has jurisdiction over the subject matter of this counterclaim pursuant

to 15 U.S.C. §§ 1064, 1119, 1121 and 28 U.S.C. §§ 1331, 1338, 1367, 2201.

9. In their Complaint, Counterclaim-Defendants have charged Counterclaimant with

federal trademark infringement, federal unfair competition, federal trademark dilution, unfair and

deceptive trade practices, common law trademark infringement and unfair competition, and state

trademark dilution and injury to business reputation under numerous state laws.

10. This Court has personal jurisdiction over Counterclaim-Defendants based on,

inter alia, Counterclaim-Defendants filing of this lawsuit in this jurisdiction. On information and

belief, this Court also has personal jurisdiction, pursuant to ORS § 14.080, over adidas America,

Inc. because it resides in Portland, Multnomah County, Oregon.

11. Based solely on Plaintiff’s filing of this action, venue is proper, though not

necessarily convenient, in this District pursuant at least to 28 U.S.C. § 1391.

12. An immediate, real, and justiciable controversy exists between Counterclaimant

and the Counterclaim-Defendants as to whether TRB’s six trademark registrations for the mark

RBX and design, as depicted below, namely, U.S. Trademark Registration Number 4,466,856,

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U.S. Trademark Registration Number 4,466,857, U.S. Trademark Registration Number

4,664,665, U.S. Trademark Registration Number 4,721,054, U.S. Trademark Registration

Number 4,721,056, and U.S. Trademark Registration Number 4,724,666 (the “RBX Federal

Registrations”) are valid.

13. An immediate, real, and justiciable controversy also exists between

Counterclaimant and the Counterclaim-Defendants as to whether TRB has, or is likely to,

infringe any of Counterclaim-Defendants’ U.S. trademark rights asserted in the Complaint or

before the Trademark Trial and Appeal Board (“TTAB”).

14. An immediate, real, and justiciable controversy also exists between

Counterclaimant and the Counterclaim-Defendants as to whether Counterclaim-Defendants have

abandoned the RBK trademarks, such that U.S. Trademark Registration Number 3,074,802, U.S.

Trademark Registration Number 3,612,991, and U.S. Trademark Registration Number 3,234,100

are all invalid and subject to cancellation.

15. An immediate, real, and justiciable controversy also exists between

Counterclaimant and the Counterclaim-Defendants as to adjudicating the proper scope of U.S.

Trademark Registration Number 3,234,100 and rectifying that registration record at the U.S.

Patent and Trademark Office (“USPTO”).

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16. An immediate, real, and justiciable controversy also exists between

Counterclaimant and the Counterclaim-Defendants as to the invalidity and unenforceability of

U.S. Trademark Registration Number 3,612,991.

FACTS PERTINENT TO COUNTERCLAIMS

17. In March 2011, TRB acquired all right, title, and interest in and to the RBX

trademarks from its predecessor-in-interest, The Rugged Bear Company f/d/b/a RB Acquisition

Corp., a Delaware Corporation (“RBC”).

18. Upon information and belief, RBC was founded in and about 1980, as a family

business by Alan McDonough, who was previously a co-founder of the highly successful

outdoor adult clothing and gear retailer Eastern Mountain Sports.

19. Upon information and belief, Alan McDonough founded RBC, in part, to offer for

children the same high-quality, durable outwear that Eastern Mountain Sports was known for in

the adult outdoor clothing field.

20. Upon information and belief, since the early 1980’s, RBC operated retail stores

throughout New England, New York, and New Jersey, selling a wide variety of children’s

apparel, footwear, and accessories.

21. Upon information and belief, RBC was a beloved brand, known for selling high

quality, well-designed apparel, footwear, and accessories at reasonable prices.

22. Upon information and belief, in or about March 2005, RBC designed and created

the RBX trademark (an abbreviation of “Rugged Bear Xtreme”) and the distinctive logo as

shown below, and used the marks in connection with the sale and marketing of apparel and

accessories from as early as Fall 2006 to 2011. Upon information and belief, the six elongated

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ovals in the logo represented bear claw marks, and were not intended to, and do not, represent

stripes.

23. Examples of RBC’s RBX branded apparel is shown below:

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24. Upon information and belief, RBC sold its RBX branded apparel and accessories

in at least 29 retail stores and over the Internet.

25. Upon information and belief, Counterclaim-Defendants were aware of RBC.

26. Upon information and belief, Counterclaim-Defendants never objected to RBC’s

use of the RBX trademarks.

27. Additionally, TRB also owns through acquisition, all right, title, and interest in

and to the mark RBX for use in connection with socks, a mark that TRB’s predecessor-ininterest, SmartWool LLC (“Smartwool”), used since as early as 2002.

28. Upon information and belief, Counterclaim-Defendants were aware of

Smartwool.

29. Counterclaim-Defendants never objected to Smartwool’s use of the RBX

trademark.

30. Since 2012, after the acquisition, TRB, by and through itself and authorized

licensees have designed, manufactured, marketed, distributed, and sold high quality, affordable

athletic apparel and fitness tools and accessories under the RBX trademarks.

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31. TRB’s RBX branded apparel are stylish, comfortable, and moderately priced

active wear sold throughout the United States in well-known department stores and popular

online retailers.

32. As a result of its long and extensive sales across the United States, TRB’s RBX

branded designs and sportswear are well-known and well-received, and are a recipient of

substantial industry and consumer praise for its innovative designs and affordable prices.

33. On August 24, 2011, TRB filed a U.S. trademark application for the mark

identified in Paragraph 12 of these Counterclaims , in connection with “All purpose bags,

backpacks, knapsacks, school book bags, pouches for school supplies, luggage bags, tote bags,

shopping bags, beach and pool tote bags” in International Class 18, assigned U.S. Trademark

Serial No. 85/405,682 (the “‘682 Application”).

34. The USPTO did not cite any of Counterclaim-Defendants’ U.S. trademark

registrations, nor any other prior existing registrations or applications, against the ‘682

Application.

35. The ‘682 Application was published for opposition on August 14, 2012.

36. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. had actual and/or constructive notice of the publication of the ‘682

Application.

37. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited had actual and/or constructive notice of the publication of the ‘682 Application.

38. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. did not file an Opposition proceeding against the ‘682 Application

during its publication period.

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39. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited did not file an Opposition proceeding against the ‘682 Application during its publication

period.

40. No third parties filed an Opposition proceeding against the ‘682 Application

during its publication period.

41. The ‘682 Application matured into U.S. Trademark Registration Number

4,466,856, which issued on January 14, 2014, claiming a first use date of at least as early as

February 15, 2013, for the mark identified in Paragraph 12 in International Class 18 for “all

purpose carrying bags, all purpose sport bags, backpacks, knapsacks, school book bags, pouches

for school supplies, luggage bags, tote bags, excluding bags used specifically for cycling” (“‘856

Registration”). A copy of the Certificate of Registration for this mark is attached as Exhibit 1.

42. On August 24, 2011, TRB applied for a U.S. trademark application for the mark

identified in Paragraph 12, in connection with “Clothing; footwear” in International Class 25,

assigned U.S. Trademark Serial No. 85/405,693 (the “‘693 Application”).

43. The USPTO did not cite any of Counterclaim-Defendants’ U.S. trademark

registrations, nor any other prior existing registrations or applications, against the ‘683

Application.

44. The ‘693 Application was published for opposition on August 14, 2012.

45. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. had actual and/or constructive notice of the publication of the ‘693

Application.

46. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited had actual and/or constructive notice of the publication of the ‘693 Application.

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47. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. did not file an Opposition proceeding against the ‘693 Application

during its publication period.

48. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited did not file an Opposition proceeding against the ‘693 Application during its publication

period.

49. No third parties filed an Opposition proceeding against the ‘693 Application

during its publication period.

50. The ‘693 Application matured into U.S. Trademark Registration Number

4,466,857, which issued on January 14, 2014, claiming a first use date of at least as early as July

2012, for the mark identified in Paragraph 12, in International Class 25 for “clothing and

sportswear, namely, t-shirts, shirts, knit sport shirts, pants, shorts, sweaters, socks, swimwear,

sweatshirts, hooded sweatshirts, sweatpants, warm-up suits, tights, gloves, jackets, parkas, vests,

wind-resistant jackets and vests, snow pants, ski bibs, headwear, headbands, hats, caps,

neckwear, wristbands, underwear, undershirts; footwear, excluding clothing and footwear

designed specifically for cycling” (“‘857 Registration”). A copy of the Certificate of Registration

for this mark is attached as Exhibit 2.

51. On October 22, 2013, TRB applied for a U.S. trademark application for the mark

identified in Paragraph 12, in connection with “Protective covers and cases for cell phones, smart

phones and portable media players; carrying cases specially adapted for electronic equipment,

namely, cell phones, smart phones and portable media players; pedometer; body scale; kitchen

scale; bathroom scale” in International Class 9, assigned U.S. Trademark Serial No. 86/097,779

(the “‘779 Application”).

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52. The USPTO did not cite any of Counterclaim-Defendants’ U.S. trademark

registrations, nor any other prior existing registrations or applications, against the ‘779

Application.

53. The ‘779 Application was published for opposition on April 8, 2014.

54. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. had actual and/or constructive notice of the publication of the ‘779

Application.

55. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited had actual and/or constructive notice of the publication of the ‘779 Application.

56. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. did not file an Opposition proceeding against the ‘779 Application

during its publication period.

57. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited did not file an Opposition proceeding against the ‘779 Application during its publication

period.

58. No third parties filed an Opposition proceeding against the ‘779 Application

during its publication period.

59. The ‘779 Application matured into U.S. Trademark Registration Number

4,721,054, which issued on April 14, 2015, claiming a first use date of at least as early as

December 5, 2013, for the mark identified in Paragraph 12, in International Class 9 for

“Protective covers and cases for cell phones, smart phones and portable media players; carrying

cases specially adapted for electronic equipment, namely, cell phones, smart phones and portable

media players; pedometer; body scale; kitchen scale; bathroom scale; calorie calculators; calorie

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consumption activity meters; electronic calorie measuring meter; electronic calorie counter”

(“‘054 Registration”). A copy of the Certificate of Registration for this mark is attached as

Exhibit 3.

60. On October 22, 2013, TRB applied for a U.S. trademark application for the mark

identified in Paragraph 12, in connection with “Heart rate monitors; calorie monitors; body fat

analyzers; fitness monitors” in International Class 10, assigned U.S. Trademark Serial No.

86/097,880 (the “‘880 Application”).

61. The USPTO did not cite any of Counterclaim-Defendants’ U.S. trademark

registrations, nor any other prior existing registrations or applications, against the ‘880

Application.

62. The ‘880 Application was published for opposition on April 8, 2014.

63. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. had actual and/or constructive notice of the publication of the ‘880

Application.

64. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited had actual and/or constructive notice of the publication of the ‘880 Application.

65. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. did not file an Opposition proceeding against the ‘880 Application

during its publication period.

66. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited did not file an Opposition proceeding against the ‘880 Application during its publication

period.

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67. No third parties filed an Opposition proceeding against the ‘880 Application

during its publication period.

68. The ‘880 Application matured into U.S. Trademark Registration Number

4,724,666 issued on April 21, 2015, claiming a first use date of at least as early as December 5,

2013, for the mark identified in Paragraph 12, in International Class 10 for “Heart rate monitors;

body fat monitors; fitness monitors for measuring heart rate and body fat” (“‘666 Registration”).

A copy of the Certificate of Registration for this mark is attached as Exhibit 4.

69. On October 22, 2013, TRB applied for a U.S. trademark application for the mark

identified in Paragraph 12, in connection with “Sports watches; stop watches” in International

Class 14, assigned U.S. Trademark Serial No. 86/097,886 (the “‘886 Application”).

70. The USPTO did not cite any of Counterclaim-Defendants’ U.S. trademark

registrations, nor any other prior existing registrations or applications, against the ‘886

Application.

71. The ‘886 Application was published for opposition on March 18, 2014.

72. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. had actual and/or constructive notice of the publication of the ‘886

Application.

73. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited had actual and/or constructive notice of the publication of the ‘886 Application.

74. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. did not file an Opposition proceeding against the ‘886 Application

during its publication period.

75. Counterclaim-Defendants Reebok International Ltd. and Reebok International

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Limited did not file an Opposition proceeding against the ‘886 Application during its publication

period.

76. No third parties filed an Opposition proceeding against the ‘886 Application

during its publication period.

77. The ‘886 Application matured into U.S. Trademark Registration Number

4,664,665, which issued on December 30, 2014, claiming a first use date of at least as early as

August 29, 2014, for the mark identified in Paragraph 12, in International Class 14 for “Sports

watches; stop watches” (“‘665 Registration”). A copy of the Certificate of Registration for this

mark is attached as Exhibit 5.

78. On October 22, 2013, TRB applied for a U.S. trademark application for the mark

identified in Paragraph 12, in connection with “Wrist and ankle weights; exercise weight cuffs;

resistance bands; hand resistance grips; jump ropes; push up grips; chest expanders and chest

pulls; slimming belts; yoga mats and carrying straps and bags; yoga blocks; yoga balls; yoga

rollers; foam exercise rollers inflatable exercise balls; dumb-bells” in International Class 28,

assigned U.S. Trademark Serial No. 86/097,892 (the “‘892 Application”).

79. The USPTO did not cite any of Counterclaim-Defendants’ U.S. trademark

registrations, nor any other prior existing registrations or applications, against the ‘892

Application.

80. The ‘892 Application was published for opposition on April 8, 2014.

81. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. had actual and/or constructive notice of the publication of the ‘892

Application.

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82. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited had actual and/or constructive notice of the publication of the ‘892 Application.

83. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. did not file an Opposition proceeding against the ‘892 Application

during its publication period.

84. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited did not file an Opposition proceeding against the ‘892 Application during its publication

period.

85. No third parties filed an Opposition proceeding against the ‘892 Application

during its publication period.

86. The ‘892 Application matured into U.S. Trademark Registration Number

4,721,056, which issued on April 14, 2015, claiming a first use date of at least as early as

December 5, 2013, for the mark identified in Paragraph 12, in International Class 28 for “Wrist

and ankle weights for exercise; exercise weight cuffs; resistance bands for fitness training; hand

resistance grips for exercise; jump ropes; push up grips for exercise; chest expanders and chest

pulls; non-electric slimming belts worn during exercise; yoga mats and carrying straps and bags;

yoga blocks; yoga balls; exercise equipment, namely, yoga rollers and foam exercise rollers;

inflatable exercise balls; dumb-bells” (“‘056 Registration”). A copy of the Certificate of

Registration for this mark is attached as Exhibit 6.

87. TRB’s RBX Federal Registrations, namely, the ‘856 Registration, ‘857

Registration, ‘665 Registration, ’054 Registration, ‘056 Registration, and ‘666 Registration, as

applied to those goods and services recited in each registration, are not confusingly similar to any

of the Counterclaim-Defendants’ marks depicted in their asserted U.S. trademark registrations.

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88. TRB is also the owner of the following pending U.S. trademark applications, all

for the mark identified in Paragraph 12, and many of which are already in use in commerce for

the applied for goods or services (“RBX Trademark Applications”):

Application Serial No. Filing Date International Class and Goods/Services

86674663 Jun. 25, 2015 IC 009. Swim goggles, swim masks, snorkels

86258549

Apr. 22, 2014 IC 035. Retail store and online store services

featuring clothing, athletic apparel, footwear,

headwear, outerwear, swimwear, bags,

backpacks, luggage, sporting goods, athletic

equipment, fitness monitors and watches

86674714

Jun. 25, 2015 IC 028. swim boards, kick boards and flotation

devices for recreational use; recreational water

toys; sports equipment for swimming pools;

exercise weights, foam weights for water use;

swim fins; pet toys

86674700

Jun. 25, 2015 IC 025. Infant, baby and toddler apparel, footwear

and accessories; hosiery and legwear; slippers,

slipper-socks, socks and leggings; thermal and

long underwear; sleepwear and loungewear; bras,

shape wear and sports bras; camisoles and tanks;

sleep masks; water shoes and sandals

86674688 Jun. 25, 2015 IC 024. Cooling towels; pillows and pillow cases;

crib bedding, children's bedding

86674677

Jun. 25, 2015 IC 018. Shaving bags sold empty, toiletry bags

sold empty, shoe bags, all-purpose athletic bags,

luggage tags, luggage straps, travel bags, satchels,

wearable strap-on pouches; pet accessories; pet

car seat covers, harnesses, leashes and collars

86674655

Jun. 25, 2015 IC 003. Personal care products, namely, skin

soap, anti-bacterial soap, liquid soap, facial scrub,

shampoo, bath and shower gel, hair conditioner,

body lotion, body spray, non-medicated skin

creams, shaving cream, shaving cases, after

shave, deodorant and cologne, hair gels

86674647

Jun. 25, 2015 IC 032. Pre-fitness energy drinks and shots, post

fitness recovery drinks and shots, fitness drinks to

promote fat burning

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89. As of the date of filing of this counterclaim, the USPTO did not cite any of

Counterclaim-Defendants’ U.S. trademark registrations, nor any other prior existing registrations

or applications, against the pending RBX Trademark Applications.

90. TRB’s U.S. Trademark Application Serial No. 86/258,549 (the “‘549

Application”) was published for opposition on September 16, 2014.

91. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. had actual and/or constructive notice of the publication of the ‘549

Application.

92. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited had actual and/or constructive notice of the publication of the ‘549 Application.

93. Counterclaim-Defendants Adidas America, Inc., Adidas AG, and Adidas

International Marketing B.V. did not file an Opposition against the ‘549 Application during its

publication period.

94. Counterclaim-Defendants Reebok International Ltd. and Reebok International

Limited did not file an Opposition against the ‘549 Application during its publication period.

95. No third parties filed an Opposition proceeding against the ‘549 Application

during its publication period.

96. TRB’s RBX Trademark Applications, as applied to those goods and services

recited in each application, are not confusingly similar to any of the Counterclaim-Defendants’

marks depicted in their asserted U.S. trademark registrations.

97. Counterclaim-Defendants Reebok International Ltd. and/or Reebok International

Limited were aware of TRB and the RBX Mark at least as early as May 2013.

98. TRB’s use of the RBX trademarks in the marketplace are not confusingly similar

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to any of the Counterclaim-Defendants’ marks, including those depicted in their asserted U.S.

trademark registrations.

99. On December 16, 2015, six days after TRB answered the Complaint in this

Action, Counterclaim-Defendants adidas AG, adidas International Marketing B.V., and Reebok

International Limited (“TTAB Plaintiffs”) filed a Trademark Cancellation proceeding (No.

92062918) against the RBX Federal Registrations (the “Cancellation Proceeding”) and a

Trademark Opposition proceeding (No. 91225378) against TRB’s U.S. Trademark Application

Serial No. 86/674,663 (the “‘663 Application”) (the “Opposition Proceeding”) at the Trademark

Trial and Appeal Board (“TTAB”) challenging TRB’s rights in those registrations and the

application. A copy of the Petition to Cancel in the Cancellation Proceeding is attached as

Exhibit 7. A copy of the Notice of Opposition in the Opposition Proceeding is attached as

Exhibit 8.

100. In the Cancellation Proceeding and the Opposition Proceeding, the TTAB

Plaintiffs have asserted that the RBX Federal Registrations and the pending ‘663 Application are

likely to cause confusion in violation of Section 2(d) of the Lanham Act and are likely to dilute

in violation of Section 43(a)(1) of the Lanham Act the Counterclaim-Defendants’ asserted

trademark registrations.

101. In the Cancellation Proceeding and Opposition Proceeding, the TTAB Plaintiffs

assert thirty-eight trademark registrations against TRB, including U.S. Trademark Registration

No. 3,074,802 for the mark RBK (the “‘802 Registration”), U.S. Trademark Registration

Number 3,234,100 (the “‘100 Registration”) for the mark RBK , and U.S. Trademark

Registration Number 3,612,991 (the “‘991 Registration”) for the logo mark depicted below,

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(all three registrations collectively referred to as the “RBK Mark” or “RBK Marks”). A copy of

the ‘100 Registration Certificate is attached as Exhibit 9.

102. On information and belief and according to the records of the USPTO, the ‘991

Registration registered on April 28, 2009.

103. On information and belief and according to the records of the USPTO,

Counterclaim-Defendant Reebok International Limited failed to file maintenance documents

under Section 8 of the Lanham Act for the ’991 Registration by the October 28, 2015 deadline.

104. On information and belief and according to the records of the USPTO, the ‘991

Registration was officially cancelled on December 4, 2015 by the USPTO because registrant and

Counterclaim-Defendant Reebok International Limited did not file an acceptable declaration

under Section 8 of the Lanham Act.

105. A true and correct copy of the USPTO Trademark Status & Document Retrieval,

status page for ‘991 Registration indicating that the registration is cancelled is attached as

Exhibit 10.

106. On information and belief, at the time Counterclaim-Defendant Reebok

International Limited filed the Complaint in this action, it knew or should have known that it had

failed to timely file maintenance documents for the “991 Registration.

107. Specifically, Counterclaim-Defendants in this Action and the TTAB Plaintiffs in

the Cancellation Proceeding and Opposition Proceeding, have falsely asserted that the ‘991

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Registration is still active, valid and enforceable against TRB, and that it covers the following

goods:

Class 9: Hockey helmets, protective pants;

Class 18: Athletic bags; sports bags; gym bags; backpacks; all purpose carrying

bags; trunks, namely, luggage; and traveling suitcases;

Class 25: Leisure and athletic footwear; headgear, namely caps, toques, hats,

visors, headbands; clothing, namely, T-shirts, pants, long sleeve tops, sleeveless

tops, sweaters, sweatshirts, polo shirts, jackets, coats, tracksuits, training suits,

underwear, socks, shorts, and hooded sweaters;

Class 28: Sports balls, namely, basketballs, footballs, soccer balls, volleyballs,

baseballs, and lacrosse balls; sporting articles and equipment, namely, baseball

gloves, batting gloves, football gloves, goalkeepers' gloves, hockey gloves,

baseball bats, exercise equipment, namely, exercise machines, exercise platforms,

exercise balls, weights, exercise bands, exercise mats, and jump ropes, hockey

sticks, in-line skates, protective padding for playing baseball, basketball goal sets,

lacrosse equipment, namely, handles, protective shoulder pads, protective elbow

pads, protective arm pads and protective wrist pads, protective gloves, and

equipment bags; hockey equipment, namely, ice hockey sticks, ice skates;

protective apparel for hockey players, namely, shoulder pads, elbow pads, shin

guards, and hockey gloves.

108. Counterclaim-Defendants in this Action and the TTAB Plaintiffs in the

Cancellation Proceeding and Opposition Proceeding, have improperly asserted the invalid and

unenforceable ‘991 Registration against TRB.

109. On information and belief and according to the records of the USPTO, the ‘100

Registration registered on April 24, 2007 for:

Class 9: Goggles;

Class 18: Luggage, all purpose sports bags, duffel bags, tote bags;

Class 28: Sports equipment, namely, baseballs, softballs, volleyballs, exercise

machines, namely, treadmills; baseball protective equipment, namely shin pads;

protective football equipment, namely, shoulder pads, hip and thigh pads; baseball

batting gloves, baseball and softball fielding mitts, exercise mats, fitness and

resistance bands;

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Class 35: Retail stores and retail outlet stores in the field of clothing, shoes, bags

and related accessories and audio and video taps (sic);

Class 36: Financial sponsorship of sports camps and athletic events.

110. On information and belief and according to the records of the USPTO, on

April 24, 2013, in a Section 8 renewal filing for the ‘100 Registration, an attorney for the

registrant Reebok International Limited amended that registration to delete the classes 9, 18, 35,

and 36 in their entireties and to narrow the goods designation of class 28 to only cover “sports

equipment, namely, volleyballs.” A copy of the April 24, 2013 Section 8 Renewal Filing for the

‘100 Registration is attached as Exhibit 11.

111. On information and belief and according to the records of the USPTO, for the

‘100 Registration, the registrant Reebok International Limited did not file an affidavit pursuant to

15 U.S.C. § 1065 swearing that the RBK Mark “has been in continuous use for [] five

consecutive years and is still in use in commerce.”

112. On information and belief and according to the records of the USPTO, for the

‘802 Registration, the registrant Reebok International Limited did not file an affidavit pursuant to

15 U.S.C. § 1065 swearing that the RBK Mark “has been in continuous use for [] five

consecutive years and is still in use in commerce.”

113. In the Cancellation Proceeding and Opposition Proceeding, the TTAB Plaintiffs

have asserted the ‘100 Registration against TRB on the allegation that this registration covers the

following goods and services:

Class 9: Goggles;

Class 18: Luggage, all purpose sports bags, duffel bags, tote bags;

Class 28: Sports equipment, namely, baseballs, softballs, volleyballs, exercise

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machines, namely, treadmills; baseball protective equipment, namely shin pads;

protective football equipment, namely, shoulder pads, hip and thigh pads; baseball

batting gloves, baseball and softball fielding mitts, exercise mats, fitness and

resistance bands;

Class 35: Retail stores and retail outlet stores in the field of clothing, shoes, bags

and related accessories and audio and video taps (sic);

Class 36: Financial sponsorship of sports camps and athletic events.

114. The TTAB Plaintiffs have improperly asserted against TRB in the Cancellation

Proceeding and Opposition Proceeding that the ‘100 Registration covers many more goods and

services than just “volleyballs.”

115. In the 2007 Adidas Group Annual Report, in a section entitled “Group Brands and

Divisions,” Plaintiffs describe the Reebok business as incorporating the following brands:

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116. The 2007 Adidas Group Annual Report identifies Rbk Hockey as a Reebok brand

in the section entitled “Group Brands and Divisions.”

117. On August 23, 2007, the Patriot Ledger published an article entitled Reebok’s

RBK brand discontinued (“RBK Brand Discontinued Article”).

118. According to the RBK Brand Discontinued Article:

Reebok International will drop the RBK brand of athletic shoes and apparel as it

simplifies its marketing approach, executives said Wednesday. The RBK line,

which was designed to appeal to young urban males, was launched in 2002.

Reebok promoted the line with endorsements from rappers such as 50 Cent. But

as Reebok attempts to remake its image, it will drop RBK and sell all of its

merchandise under the Reebok brand, Chief Marketing Officer Uli Becker said.

‘‘We have to be a brand that’s more accessible. We can’t just limit us to being

successful with the hip-hop group in the inner cities,’’ Becker told an investor

conference Wednesday. Canton-based Reebok has revamped its marketing

strategy since being acquired by German sporting goods giant Adidas for $3.8

billion last year.

A copy of the RBK Brand Discontinued Article is attached as Exhibit 12.

119. In the 2008 Adidas Group Annual Report section entitled “Our Brand Portfolio,”

Plaintiffs described the Reebok business as incorporating the following brands:

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120. The 2008 Adidas Group Annual Report did not identify RBK or Rbk Hockey as a

Reebok brand in the section entitled “Our Brand Portfolio.”

121. In the 2009 Adidas Group Annual Report section entitled “Group Brands,”

Plaintiffs described the Reebok business as incorporating the following brands:

122. The 2009 Adidas Group Annual Report did not identify RBK or Rbk Hockey as a

Reebok brand in the section entitled “Group Brands.”

123. In the 2010 Adidas Group Annual Report section entitled “Group Brands,”

Plaintiffs described the Reebok business as incorporating the following brands:

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124. The 2010 Adidas Group Annual Report did not identify RBK or Rbk Hockey as a

Reebok brand in the section entitled “Group Brands.”

125. In the 2011 Adidas Group Annual Report section entitled “Group Brands,”

Plaintiffs described the Reebok business as incorporating the following brands:

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126. The 2011 Adidas Group Annual Report did not identify RBK or Rbk Hockey as a

Reebok brand in the section entitled “Group Brands.”

127. In the 2012 Adidas Group Annual Report section entitled “Our Brands,” Plaintiffs

described the Reebok business as incorporating the following brands:

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128. The 2012 Adidas Group Annual Report did not identify RBK or Rbk Hockey as a

Reebok brand in the section entitled “Our Brands.”

129. In the 2013 Adidas Group Annual Report section entitled “Our Brands,” Plaintiffs

described the Reebok business as incorporating the following brands:

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130. The 2013 Adidas Group Annual Report did not identify RBK or Rbk Hockey as a

Reebok brand in the section entitled “Our Brands.”

131. In the 2014 Adidas Group Annual Report section entitled “Our Brands,” Plaintiffs

described the Reebok business as incorporating the following brands:

132. The 2013 Adidas Group Annual Report did not identify RBK or Rbk Hockey as a

Reebok brand in the section entitled “Our Brands.”

133. As of February 25, 2016, the Adidas Group webpage entitled “Profile,” and

available at http://www.adidas-group.com/en/group/profile/, Plaintiffs describes the adidas

Group as incorporating the following brands:

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134. As of February 25, 2016, the Adidas Group webpage entitled “Profile,” and

available at http://www.adidas-group.com/en/group/profile/, does not identify RBK or Rbk

Hockey as an adidas Group brand.

135. Upon information and belief, and upon investigation, Counterclaim-Defendants

abandoned the RBK Marks as a result of three or more consecutive years of nonuse with intent

not to resume use on any goods or in association with any services.

136. Upon information and belief, and upon investigation, Counterclaim-Defendants

had no plans to resume use of the RBK Marks for any goods or services during the period of

nonuse.

FIRST COUNTERCLAIM

(Declaration of Validity of RBX Federal Trademark Registrations)

137. TRB repeats and realleges the allegations in the foregoing paragraphs as if fully

set forth herein.

138. TRB alleges that Counterclaim-Defendants have engaged in acts, including

initiation of this Action and the Cancellation Proceeding and the Opposition Proceeding against

TRB, that give rise to a case of actual controversy within the meaning of 28 U.S.C. § 2201 and

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that TRB is entitled to a declaratory judgment under the Declaratory Judgment Act, 28 U.S.C.

§ 2201 that its RBX Federal Registrations are valid.

139. In this Action, Counterclaim-Defendants allege, inter alia, that TRB’s use of its

RBX trademarks on footwear and apparel (which is protected in TRB’s ‘857 Registration) is

likely causing, and has caused confusion, deception, and mistake by creating the false and

misleading impression that TRB’s goods are manufactured or distributed by CounterclaimDefendants, or are associated or connected with Counterclaim-Defendants, or have the

sponsorship, endorsement, or approval of Counterclaim-Defendants.

140. In the Cancellation Proceeding, the TTAB Plaintiffs allege that the RBX Federal

Registrations are all invalid because, inter alia, the mark identified in Paragraph 12 of these

Counterclaims as applied to the goods and services cited in those registrations is likely to cause

members of the public to be confused, mistaken, or deceived that TRB’s goods originate from,

come from the same source as, or are sponsored by, endorsed by, or affiliated with adidas AG,

adidas International Marketing B.V., or Reebok International Limited.

141. TRB’s RBX Federal Registrations all registered over the CounterclaimDefendants’ U.S. trademark applications and registrations.

142. There is no likelihood of confusion between the mark identified in Paragraph 12

of these Counterclaims for the goods and services identified in the RBX Federal Registrations

and any of Counterclaim-Defendants’ asserted trademarks.

143. TRB is entitled to a declaration confirming the validity and enforceability of

RBX Federal Registrations.

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SECOND COUNTERCLAIM

(Declaration of Non-Infringement)

144. TRB repeats and realleges the allegations in the foregoing paragraphs as if fully

set forth herein.

145. TRB alleges that Counterclaim-Defendants have engaged in acts, including

initiation of this Action against TRB and the Cancellation Proceeding and the Opposition

Proceeding, that give rise to a case of actual controversy within the meaning of 28 U.S.C. § 2201

and that TRB is entitled to a declaratory judgment under the Declaratory Judgment Act, 28

U.S.C. § 2201 that its use of the RBX trademarks does not infringe upon the trademarks asserted

by Counterclaim-Defendants against TRB in this Action, the Cancellation Proceeding, and the

Opposition Proceeding.

146. Counterclaim-Defendants allege in this Action that TRB’s use of the RBX

trademarks on apparel and footwear infringes Counterclaim-Defendants’ asserted marks.

147. In the Cancellation Proceeding, the TTAB Plaintiffs allege that the RBX Federal

Registrations are all invalid because, inter alia, the mark identified in Paragraph 12 of these

Counterclaims as applied to the goods and services cited in those registrations is likely to cause

members of the public to be confused, mistaken, or deceived that TRB’s goods originate from,

come from the same source as, or are sponsored by, endorsed by, or affiliated with the TTAB

Plaintiffs.

148. In the Opposition Proceeding, the TTAB Plaintiffs allege that the ‘663

Application should not register because, inter alia, the mark identified in Paragraph 12 of these

Counterclaims as applied to the goods cited in that Application is likely to cause members of the

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public to be confused, mistaken, or deceived that TRB’s goods originate from, come from the

same source as, or are sponsored by, endorsed by, or affiliated with the TTAB Plaintiffs.

149. TRB’s use of the RBX trademarks for footwear, apparel, or any of the goods and

services covered by the RBX Federal Registrations and RBX Trademark Applications and/or

used by TRB does not cause a likelihood of confusion with Counterclaim-Defendants’ marks.

150. The Court should declare that TRB’s use of the RBX trademarks does not infringe

any of Counterclaim-Defendants’ rights under 15 U.S.C. § 1114 and/or 15 U.S.C. § 1125(a).

151. In addition, the Court should declare that, as between TRB and CounterclaimDefendants, TRB is entitled to registration of its currently pending RBX Trademark

Applications.

THIRD COUNTERCLAIM

(Cancellation of U.S. Trademark Registration No. 3,074,802)

152. TRB repeats and realleges the allegations in the foregoing paragraphs as if fully

set forth herein.

153. This is a claim for cancellation of U.S. Trademark Registration Number

3,074,802 arising under 15 U.S.C. §§ 1064 and 1119.

154. On information and belief, the ‘802 Registration currently designates class 25 for

“Footwear; headwear; apparel, namely, shirts” and class 28 for “Sports equipment, namely,

hockey skates; protective hockey equipment, namely, shin pads, elbow pads, shoulder pads.”

155. On information and belief, Counterclaim-Defendants have for a period of three or

more consecutive years ceased use of the RBK Mark on those goods currently identified in and

covered by the ‘802 Registration.

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156. On information and belief, Counterclaim-Defendants had no plans to resume use

of the RBK Mark on the goods currently identified in and covered by the ‘802 Registration

during the period of nonuse.

157. By reason of the foregoing, the Counterclaim-Defendants have abandoned all

right, title and interest in and to the mark as shown in the ‘802 Registration and therefore that

registration should be cancelled under 15 U.S.C. § 1064(3) on the grounds that the mark is

abandoned.

FOURTH COUNTERCLAIM

(Cancellation of U.S. Trademark Registration No. 3,612,991)

158. TRB repeats and realleges the allegations in the foregoing paragraphs as if fully

set forth herein.

159. This is a claim for cancellation of U.S. Trademark Registration Number

3,612,991 arising under 15 U.S.C. §§ 1064 and 1119.

160. On information and belief and according to the USPTO records, the ‘991

Registration is cancelled.

161. On information and belief, Counterclaim-Defendants have for a period of three or

more consecutive years ceased use of the RBK Mark on the goods identified in and covered by

the ‘991 Registration.

162. On information and belief, Counterclaim-Defendants had no plans to resume use

of the RBK Mark on the goods identified in and covered by the ‘991 Registration during the

period of nonuse.

163. By reason of the foregoing, the Counterclaim-Defendants have abandoned all

right, title and interest in and to the mark shown in the ‘991 Registration and therefore, to the

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extent that the ‘991 Registration is not already recognized as cancelled, it should be cancelled

under 15 U.S.C. § 1064(3) on the grounds that the mark is abandoned.

FIFTH COUNTERCLAIM

(Cancellation of U.S. Trademark Registration No. 3,234,100)

164. TRB repeats and realleges the allegations in the foregoing paragraphs as if fully

set forth herein.

165. This is a claim for cancellation of U.S. Trademark Registration Number

3,234,100 arising under 15 U.S.C. §§ 1064 and 1119.

166. On information and belief and according to the records of the USPTO, the ‘100

Registration currently designates class 28 for “sports equipment, namely, volleyballs.”

167. On information and belief, Counterclaim-Defendants have for a period of three or

more consecutive years ceased use of the RBK Mark on the goods currently identified in and

covered by the ‘100 Registration.

168. On information and belief, Counterclaim-Defendants had no plans to resume use

of the RBK Mark on the goods currently identified in and covered by the ‘100 Registration

during the period of nonuse.

169. By reason of the foregoing, the Counterclaim-Defendants have abandoned all

right, title, and interest in and to the mark shown in the ‘100 Registration and therefore that

Registration should be cancelled under 15 U.S.C. § 1064(3) on the grounds that the mark is

abandoned.

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SIXTH COUNTERCLAIM

(Rectification of Register as to Proper Narrow Scope of

U.S. Trademark Registration No. 3,234,100)

170. TRB repeats and realleges the allegations in the foregoing paragraphs as if fully

set forth herein.

171. This is a claim for the Court to use its authority pursuant to 15 U.S.C. § 1119 to

issue an order that the USPTO rectify U.S. Trademark Registration No. 3,234,100 by limiting the

scope to class 28 for “sports equipment, namely, volleyballs,” all without in anyway conceding

that the ‘100 Registration is otherwise valid.

172. In the Cancellation Proceeding and in the Opposition Proceeding, the TTAB

Plaintiffs have asserted U.S. Trademark Registration No. 3,234,100 against TRB on the

allegation that this registration covers:

Class 9: Goggles;

Class 18: Luggage, all purpose sports bags, duffel bags, tote bags;

Class 28: Sports equipment, namely, baseballs, softballs, volleyballs, exercise

machines, namely, treadmills; baseball protective equipment, namely shin pads;

protective football equipment, namely, shoulder pads, hip and thigh pads; baseball

batting gloves, baseball and softball fielding mitts, exercise mats, fitness and

resistance bands;

Class 35: Retail stores and retail outlet stores in the field of clothing, shoes, bags

and related accessories and audio and video taps (sic);

Class 36: Financial sponsorship of sports camps and athletic events.

173. As of the date this counterclaim filing is made, on information and belief and

according to the records of the USPTO, on April 24, 2013, in a Section 8 Renewal Filing, an

attorney for Reebok International Limited amended the ‘100 Registration to delete the classes 9,

18, 35, and 36 in their entireties from that registration and to narrow the goods designation of

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class 28 to only “sports equipment, namely, volleyballs.” A copy of the April 24, 2013 Section 8

Renewal Filing for the ‘100 Registration is attached as Exhibit 11.

174. Notwithstanding Reebok International Limited’s amendment of the ‘100

Registration on April 24, 2013 to delete the classes 9, 18, 35, and 36 in their entireties from that

registration and to narrow the goods designation of class 28, the TTAB Plaintiffs continue to

assert this registration against TRB for all the goods, services, and classes originally designated

in the ‘100 Registration.

175. TRB is entitled, inter alia, to a correction and rectification of the Register that

U.S. Trademark Registration Number 3,234,100 is limited by way of partial owner cancellation

and amendment to only cover class 28 for “sports equipment, namely, volleyballs.”

SEVENTH COUNTERCLAIM

(Declaration of Non-Infringement and Invalidity of the Counterclaim-Defendants’

RBK Marks Based on Abandonment)

176. TRB repeats and realleges the allegations in the foregoing paragraphs as if fully

set forth herein.

177. TRB alleges that Counterclaim-Defendants have engaged in acts, including

initiation of this Action and the Cancellation Proceeding and the Opposition Proceeding against

TRB, that give rise to a case of actual controversy within the meaning of 28 U.S.C. § 2201 and

that TRB is entitled to a declaratory judgment under the Declaratory Judgment Act, 28 U.S.C.

§ 2201 that the Counterclaim-Defendants’ RBK Marks are abandoned and therefore

unenforceable.

178. Counterclaim-Defendants have asserted the RBK Marks against TRB in this

Action and in the Cancellation Proceeding and in the Opposition Proceeding.

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179. TRB denies that the Counterclaim-Defendants own any valid and enforceable

trademark rights in the RBK Marks.

180. On information and belief, Counterclaim-Defendants have abandoned all right,

title, and interest in and to the RBK Marks due to a period of three or more years of non-use

without intent to resume use of the RBK Marks.

181. TRB does not and has not infringed, directly or indirectly, the RBK Marks.

182. In light of Counterclaim-Defendants’ abandonment of the RBK Marks, TRB’s use

of its RBX trademarks cannot cause confusion, mistake, or otherwise deceive consumers as to

the affiliation, connection, or association of TRB’s goods and services, or as to the origin,

sponsorship, or approval by Counterclaim-Defendants of TRB’s goods, services, or commercial

activities.

183. TRB is entitled to a declaration that it is not liable to Counterclaim-Defendants on

account of any violation of any alleged trademark infringement of the RBK Marks, including

because the RBK Marks were abandoned and are therefore unenforceable.

EIGHTH COUNTERCLAIM

(Declaration of Non-Infringement of the Cancelled and Unenforceable

U.S. Trademark Registration No. 3,612,991)

184. TRB repeats and realleges the allegations in the foregoing paragraphs as if fully

set forth herein.

185. TRB alleges that Counterclaim-Defendants have engaged in acts, including

initiation of this Action and the Cancellation Proceeding and the Opposition Proceeding, that

give rise to a case of actual controversy within the meaning of 28 U.S.C. § 2201 and that,

notwithstanding the claims set forth herein as to abandonment of the RBK Marks, TRB is

entitled to a declaratory judgment under the Declaratory Judgment Act, 28 U.S.C. § 2201, of

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non-infringement of U.S. Trademark Registration No. 3,612,991 because that ‘991 Registration

was cancelled in its entirety and therefore is unenforceable.

186. Counterclaim-Defendants in this Action, and adidas AG, adidas International

Marketing B.V., Reebok International Limited in the Cancellation Proceeding and in the

Opposition Proceeding, have asserted the ‘991 Registration against TRB on the allegation that

this registration covers:

Class 9: Hockey helmets, protective pants;

Class 18: Athletic bags; sports bags; gym bags; backpacks; all purpose carrying

bags; trunks, namely, luggage; and traveling suitcases;

Class 25: Leisure and athletic footwear; headgear, namely caps, toques, hats,

visors, headbands; clothing, namely, T-shirts, pants, long sleeve tops, sleeveless

tops, sweaters, sweatshirts, polo shirts, jackets, coats, tracksuits, training suits,

underwear, socks, shorts, and hooded sweaters;

Class 28: Sports balls, namely, basketballs, footballs, soccer balls, volleyballs,

baseballs, and lacrosse balls; sporting articles and equipment, namely, baseball

gloves, batting gloves, football gloves, goalkeepers' gloves, hockey gloves,

baseball bats, exercise equipment, namely, exercise machines, exercise platforms,

exercise balls, weights, exercise bands, exercise mats, and jump ropes, hockey

sticks, in-line skates, protective padding for playing baseball, basketball goal sets,

lacrosse equipment, namely, handles, protective shoulder pads, protective elbow

pads, protective arm pads and protective wrist pads, protective gloves, and

equipment bags; hockey equipment, namely, ice hockey sticks, ice skates;

protective apparel for hockey players, namely, shoulder pads, elbow pads, shin

guards, and hockey gloves.

187. As of the date this counterclaim filing is made, on information and belief and

according to the records of the USPTO, U.S. Trademark Registration Number 3,612,991 was not

renewed by the statutory renewal deadline of October 28, 2015.

188. On information and belief and according to the records of the USPTO, the ‘991

Registration was officially cancelled on December 4, 2015 by the USPTO because registrant and

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Counterclaim-Defendant Reebok International Limited did not file an acceptable declaration

under Section 8.

189. TRB is entitled to a declaration of non-infringement as to the ‘991 Registration

because it was cancelled and is therefore unenforceable.

NINTH COUNTERCLAIM

(Declaration that TRB Has Not Engaged in Federal Unfair Competition)

190. TRB repeats and realleges the allegations in the foregoing paragraphs as if fully

set forth herein.

191. TRB alleges that Counterclaim-Defendants have engaged in acts, including

initiation of this Action and the Cancellation Proceeding and the Opposition Proceeding, that

give rise to a case of actual controversy within the meaning of 28 U.S.C. § 2201 and that TRB is

entitled to a declaratory judgment under the Declaratory Judgment Act, 28 U.S.C. § 2201, that it

has not engaged in federal unfair competition in violation of 15 U.S.C. § 1125(a).

192. Counterclaim-Defendants allege in this Action that TRB’s use of the RBX

trademarks on apparel and footwear is likely to cause confusion, deception, and mistake by

creating the false impression that TRB’s goods are manufactured or distributed by CounterclaimDefendants, or are affiliated, connected, or associated with Counterclaim-Defendants, or have

the sponsorship, endorsement, or approval of Counterclaim-Defendants.

193. TRB’s use of the RBX trademarks for footwear, apparel, or any of the goods and

services covered by the RBX Federal Registrations and RBX Trademark Applications does not

cause confusion, deception, and mistake by creating the false impression that TRB’s goods are

manufactured or distributed by Counterclaim-Defendants, or are affiliated, connected, or

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associated with Counterclaim-Defendants, or have the sponsorship, endorsement, or approval of

Counterclaim-Defendants.

194. The Court should declare that TRB’s use of the RBX trademarks does not

constitute federal unfair competition in violation of 15 U.S.C. § 1125(a).

TENTH COUNTERCLAIM

(Declaration that TRB Has Not Engaged in Unfair and Deceptive Trade Practices)

195. TRB repeats and realleges the allegations in the foregoing paragraphs as if fully

set forth herein.

196. TRB alleges that Counterclaim-Defendants have engaged in acts, including

initiation of this Action and the Cancellation Proceeding and the Opposition Proceeding, that

give rise to a case of actual controversy within the meaning of 28 U.S.C. § 2201 and that TRB is

entitled to a declaratory judgment under the Declaratory Judgment Act, 28 U.S.C. § 2201, that it

has not and does not engage in unfair and deceptive trade practices in violation of statutes of

several states including California CAL. BUS. & PROF. CODE § 17200, et seq. (West 2009);

Colorado, COLO. REV. STAT. ANN. §§ 6-1-101 to 6-1-115 (West 2009); Delaware, DEL.

CODE ANN. tit. 6, §§ 2531 to 2536 (2009); Georgia, GA. CODE ANN. §§ 10-1-370 to 10-

1¬375 (2009); Hawaii, HAW. REV. STAT. §§ 481A-1 to 481A-5 (2009); Illinois, ILL. COMP.

STAT. ANN. ch. 815, 510/1 to 510/7 (2009); Maine, ME. REV. STAT. ANN. tit. 10, §§ 1211 to

1216 (West 2009); Minnesota, MINN. STAT. ANN. § 325D.43 to .48 (West 2009); Nebraska,

NEB. REV. STAT. §§ 87-301 to 87-306 (2009); New Mexico, N.M. STAT. ANN. §§ 57-12-1 to

57-12-22 (Michie 2009); New York, N.Y. GEN. BUS. Law § 349 (McKinney 2009); Ohio,

OHIO REV. CODE ANN. §§ 4165.01 to 4165.04 (Baldwin 2009); and Oklahoma, OKLA.

STAT. ANN. tit. 78, §§ 51 to 55 (West 2009).

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197. Counterclaim-Defendants allege in this Action that TRB has been and is passing

off its goods as those of Counterclaim-Defendants, causing a likelihood of confusion or

misunderstanding as to the source, sponsorship, or approval of TRB’s goods, causing a

likelihood of confusion as to TRB’s affiliation, connection, or association with CounterclaimDefendants, and otherwise damaging the public.

198. TRB has not and does not pass off its goods as those of Counterclaim-Defendants,

and therefore has not and does not cause a likelihood of confusion or misunderstanding as to the

source, sponsorship, or approval of TRB’s goods, nor a likelihood of confusion as to TRB’s

affiliation, connection, or association with Counterclaim-Defendants, nor otherwise damaging

the public.

199. The Court should declare that TRB has not and does not engage in unfair and

deceptive trade practices in violation of statutes of several states including California CAL. BUS.

& PROF. CODE § 17200, et seq. (West 2009); Colorado, COLO. REV. STAT. ANN. §§ 6-1-

101 to 6-1-115 (West 2009); Delaware, DEL. CODE ANN. tit. 6, §§ 2531 to 2536 (2009);

Georgia, GA. CODE ANN. §§ 10-1-370 to 10-1¬375 (2009); Hawaii, HAW. REV. STAT. §§

481A-1 to 481A-5 (2009); Illinois, ILL. COMP. STAT. ANN. ch. 815, 510/1 to 510/7 (2009);

Maine, ME. REV. STAT. ANN. tit. 10, §§ 1211 to 1216 (West 2009); Minnesota, MINN. STAT.

ANN. § 325D.43 to .48 (West 2009); Nebraska, NEB. REV. STAT. §§ 87-301 to 87-306 (2009);

New Mexico, N.M. STAT. ANN. §§ 57-12-1 to 57-12-22 (Michie 2009); New York, N.Y. GEN.

BUS. Law § 349 (McKinney 2009); Ohio, OHIO REV. CODE ANN. §§ 4165.01 to 4165.04

(Baldwin 2009); and Oklahoma, OKLA. STAT. ANN. tit. 78, §§ 51 to 55 (West 2009).

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PRAYER FOR RELIEF

1. That this Court declare that TRB’s ‘856 Registration is valid and enforceable.

2. That this Court declare that TRB’s ‘857 Registration is valid and enforceable.

3. That this Court declare that TRB’s ‘665 Registration is valid and enforceable.

4. That this Court declare that TRB’s ‘054 Registration is valid and enforceable.

5. That this Court declare that TRB’s ‘056 Registration is valid and enforceable.

6. That this Court declare that TRB’s ‘666 Registration is valid and enforceable.

7. That this Court declare that TRB does not, has not, and is not likely to infringe

any the marks asserted by Counterclaim-Defendants in this Action, in the Opposition

Proceeding, or in the Cancellation Proceeding.

8. That this Court should declare that, as between TRB and CounterclaimDefendants, TRB is entitled to registration of its currently pending RBX Trademark

Applications.

9. That this Court declare that TRB does not, has not, and is not likely to infringe the

RBK Marks because they are abandoned.

10. That this Court declare that U.S. Trademark Registration Number 3,074,802 is

invalid and unenforceable because it was abandoned.

11. That this Court declare that U.S. Trademark Registration Number 3,612,991 is

invalid and unenforceable because it was abandoned, and/or because it was cancelled.

12. That this Court declare that TRB does not, has not, and is not likely to infringe

U.S. Trademark Registration Number 3,612,991 because it was cancelled and therefore is

unenforceable.

13. That this Court declare that U.S. Trademark Registration Number 3,234,100 is

invalid and unenforceable because it was abandoned.

14. That, to the extent this Court does not declare that U.S. Trademark Registration

Number 3,234,100 is invalid and unenforceable because it was abandoned, that this Court enter a

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judgment directing the U.S. Trademark Office to rectify and correct the Federal Trademark

Register to reflect that U.S. Trademark Registration Number 3,234,100 was limited by way of

partial owner cancellation and amendment to only cover class 28 for “sports equipment, namely,

volleyballs,” and that it is therefore invalid and unenforceable as to any goods or services outside

of “sports equipment, namely, volleyballs.”

15. That this Court declare that TRB has not and does not engage in federal unfair

competition.

16. That this Court declare that TRB has not and does not violate the unfair and

deceptive trade practices statutes of several states.

17. That this Court award TRB its costs and disbursements in this Action.

18. That this Court declare this is an exceptional case, including without limitation,

due to Plaintiffs assertion of cancelled, invalid and/or abandoned marks and registrations, and

that TRB be awarded its reasonable attorneys’ fees.

19. That this Court award such other and further relief as it may deem just and proper.

Case 3:15-cv-02113-SI Document 32 Filed 03/09/16 Page 69 of 70
711124.0001/6621049.1

LANE POWELL PC

601 SW SECOND AVENUE, SUITE 2100

PORTLAND, OREGON 97204-3158

503.778.2100 FAX: 503.778.2200

PAGE 70 - FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND 

COUNTERCLAIMS TO THE COMPLAINT

DEMAND FOR JURY TRIAL

20. Pursuant to Fed. R. Civ. P. 38(b), TRB demands a trial by jury of all issues so 

triable.

DATED: March 9, 2016

LANE POWELL PC

By /s/ Parna A. Mehrbani

Kenneth R. Davis II, OSB No. 971132

Parna A. Mehrbani, OSB No. 053235

Telephone: 503.778.2100

Facsimile: 503.778.2200

ARENT FOX LLP

Michelle Mancino Marsh, pro hac vice

Allen G. Reiter, pro hac vice

Eric Roman, pro hac vice

Telephone: 212.484.3900 

Facsimile: 212.484.3990

Attorneys for Defendant TRB Acquisitions LLC

Case 3:15-cv-02113-SI Document 32 Filed 03/09/16 Page 70 of 70