Case 1:14-cv-00379-PAB-KMT Document 74 Filed 02/17/15 USDC Colorado Page 1 of 36

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO
COLORADO SPRINGS
PROFESSIONAL BULL RIDERS, INC.,
a Colorado corporation,
Plaintiff,
v.
MURCIELAGO, INC.,
a Nebraska corporation

Case No.:

1:14-cv-00379

MR. MICHAEL MALCOM

an individual
Defendants.

SECOND AMENDED COMPLAINT AND JURY DEMAND

Plaintiff Professional Bull Riders, Inc. (PBR), for its Second Amended Complaint and
Jury Demand against Defendant Murcielago, Inc. (Murcielago) and Defendant Mr. Michael
Malcom (Mr. Malcom) (together, the Defendants), states and alleges as follows:
NATURE OF THE CASE
1.

PBR brings this action against Defendants for trademark and trade dress

infringement and unfair competition under the Lanham Act (15 U.S.C. 1051, et seq.), trade
dress infringement under common law trademark infringement, deceptive trade practices under
the Colorado Consumer Protection Act (C.R.S. 6-1-1-101, et seq.), breach of contract, and
declaratory judgment.
PARTIES
2.

PBR is a Colorado corporation having a principal place of business at 101 West

Riverwalk, Pueblo, Colorado 81003.

3.

Murcielago is a Nebraska corporation having a mailing address of PO Box 230,

Alma, Nebraska, 68920. Murcielagos registered agent is Michelle R. Caspersen, 375 Valley
Road, Boelus, Nebraska 68820.
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4.

Mr. Malcom is an individual who, upon information and belief, resides at 3840

Adirondack Drive, Colorado Springs, Colorado 80918.

JURISDICTION AND VENUE
5.

This Court has jurisdiction over PBRs claims pursuant to 28 U.S.C. 1331,

1338(a), 1367, and 2201.

6.

This Court has personal jurisdiction over Murcielago because Murcielago entered

into one or more contracts with PBR in the State of Colorado and transacts business in the State
of Colorado. Murcielago consented to jurisdiction in this state by contract. This Court has
personal jurisdiction over Mr. Malcom because websites he registered are accessible in the State
of Colorado, and Mr. Malcom resides in this State.
7.

Venue is proper in this district pursuant to 28 U.S.C. 1391 and 1400 because a

substantial part of the events giving rise to these claims occurred in this District. Murcielago
consented to venue in this Court by contract. Mr. Malcom is a resident of this District.
FACTUAL BACKGROUND
A. PBRs Business
8.

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

throughout the United States and abroad.

9.

Due in large part to PBRs efforts, bull riding has become one of the fastest

growing sports in the country, setting new milestones in membership, recognition and media
attention.
10.

PBR events are watched by over 100 million viewers each year on network and

cable television in the United States. Additionally, foreign broadcasts of PBR events reach more
than 84 countries and 500 million households worldwide on an annual basis.
11.

PBRs live bull riding events also have enjoyed strong growth in attendance. In

1995, 310,000 fans attended PBR events across the nation. Today, PBR events attract over 1.5
million attendees each year.
B. PBRs Trademarks
12.

From its inception in 1992, PBR consistently and exclusively has used the

trademarks PROFESSIONAL BULL RIDERS, and PBR, as well as other marks and slogans
(collectively, the PBR Marks) to identify its sporting events and related entertainment services.

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Case 1:14-cv-00379-PAB-KMT Document 74 Filed 02/17/15 USDC Colorado Page 3 of 36

PBR also consistently has used the PBR Marks on merchandising and apparel sold in connection
with PBR and in its advertising efforts.
13.

Over the years, PBR has expanded its use of the PBR Marks to a wide range of

goods, including action figures, board games, bedding, video games, decals and posters,
beverage glasses and coffee mugs, key chains, barbecue sauces, and various other apparel and
merchandising items, all of which reference or evoke PBRs services, the sport of bull riding,
and PBRs various properties.
14.

Due to PBRs long-standing, extensive and exclusive use of the PBR Marks, they

have acquired distinctiveness in the minds of the relevant public and have become well-known as
identifying PBRs goods and services.
15.

In recognition of PBRs exclusive right to use the PBR Marks, the United States

Patent and Trademark Office (USPTO) has granted PBR numerous trademark registrations,
including those summarized in the table below (the registered marks identified below are
included among the PBR Marks):
WORDS
8 SECOND HEROES

8 SECONDS

REG. NO.
3,627,366

REG. DATE
05/26/2009

GOODS DESCRIPTION
ACTIVITY TOYS, NAMELY, ACTION
FIGURES AND TOY ANIMALS

3,398,960

03/18/2008

PRINTED MATTER, NAMELY,

POSTERS AND BROCHURES ABOUT
BULL RIDING, DECALS, BUMPER
STICKERS, CALENDARS, PENS AND
NEWSPAPERS AND MAGAZINES
ABOUT BULL RIDING; CLOTHING
FOR MEN AND WOMEN, NAMELY,
SHIRTS, SWEATSHIRTS, BASEBALL
STYLE CAPS AND JACKETS

3,739,507

01/19/2010

EVENT PROGRAMS;
PUBLICATIONS, NAMELY,
MAGAZINES IN THE FIELDS OF
BULL RIDING; SOUVENIR
PROGRAMS CONCERNING BULL
RIDING

3
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BULL & RIDER

*Design Only

3,022,769

12/06/2005

BULL & RIDER

*Design Only

3,583,312

03/03/2009

BULL HEAD
*Design Only

3,044,118

01/17/2006

PRINTED MATTER, NAMELY,

POSTERS AND BROCHURES ABOUT
BULL RIDING, DECALS, BUMPER
STICKERS, CALENDARS, PENS AND
NEWSPAPERS AND MAGAZINES
ABOUT BULL RIDING;
CLOTHING FOR MEN AND WOMEN,
NAMELY, SHIRTS, SWEATSHIRTS,
BASEBALL STYLE CAPS AND
JACKETS; ENTERTAINMENT
SERVICES, NAMELY, ARRANGING,
SPONSORING AND CONDUCTING
SPORTS COMPETITIONS IN THE
FIELD OF BULL RIDING; AND FAN
CLUBS

3,088,091

05/02/2006

ANIMAL FEED

4
4838-5717-2513.1

PRINTED MATTER, NAMELY,

POSTERS AND BROCHURES ABOUT
BULL RIDING, DECALS, BUMPER
STICKERS, CALENDARS, PENS AND
NEWSPAPERS AND MAGAZINES
ABOUT BULL RIDING; CLOTHING
FOR MEN AND WOMEN, NAMELY,
SHIRTS, SWEATSHIRTS, BASEBALL
STYLE CAPS AND JACKETS;
ENTERTAINMENT SERVICES,
NAMELY, ARRANGING,
SPONSORING AND CONDUCTING
SPORTS COMPETITIONS IN THE
FIELD OF BULL RIDING; AND FAN
CLUBS
BAR SERVICES

Case 1:14-cv-00379-PAB-KMT Document 74 Filed 02/17/15 USDC Colorado Page 5 of 36

GET TOUGH

3,740,289

01/19/2010

PRINTED MATTER, NAMELY,

POSTERS AND BROCHURES ABOUT
BULL RIDING, DECALS, BUMPER
STICKERS, CALENDARS,
MAGAZINES AND NEWSPAPERS
ABOUT BULL RIDING; CLOTHING
FOR MEN, WOMEN AND CHILDREN,
NAMELY, SHIRTS, SWEATSHIRTS,
BASEBALL STYLE CAPS, KNIT
CAPS AND JACKETS;
ENTERTAINMENT SERVICES,
NAMELY, ARRANGING AND
CONDUCTING SPORTS
COMPETITIONS IN THE FIELD OF
BULL RIDING AND FAN CLUBS;
RINGS BEING JEWELRY MADE OF
PRECIOUS METAL, ORNAMENTAL
PINS, AND CLOCKS

MOBULL

3,583,328
3,785,420

03/03/2009
05/04/2010

BAR SERVICES
ONLINE RETAIL STORE SERVICES
FEATURING GAMES, CLOTHING,
HOME DCOR, IMAGES, MUSIC,
VIDEO, GIFTS AND NOVELTIES,
AND WALLPAPER FOR USE WITH
MOBILE COMMUNICATIONS
DEVICES; ENTERTAINMENT
SERVICES, NAMELY, PROVIDING
NEWS AND INFORMATION ON THE
TOPIC OF PROFESSIONAL BULL
RIDING, PRESENTED TO MOBILE
COMMUNICATIONS DEVICES VIA A
GLOBAL COMPUTER NETWORK
AND WIRELESS NETWORKS

PBR LTD.

3,857,925

10/05/20 10

CLOTHING, T-SHIRTS,
SWEATSHIRTS, LONG SLEEVE
SHIRTS, WOVEN SHIRTS, THERMAL
UNDERWEAR, FLEECE VESTS,
FLEECE TOPS, FLEECE PANTS,
FLEECE JACKETS, HATS, BEANIES

5
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PBR IRON COWBOY

4,345,838

6/4/2013

SHIRTS, T-SHIRTS, TOPS;

ENTERTAINMENT SERVICES,
NAMELY, ARRANGING AND
CONDUCTING SPORTS
COMPETITIONS IN THE FIELD OF
BULL RIDING

LAST COWBOY
STANDING

4,345,840

6/4/2013

SHIRTS, T-SHIRTS, TOPS;

ENTERTAINMENT SERVICES,
NAMELY, ARRANGING AND
CONDUCTING SPORTS
COMPETITIONS IN THE FIELD OF
BULL RIDING

LAST COWBOY
STANDING

4,345,839

6/4/2013

ENTERTAINMENT SERVICES,
NAMELY, ARRANGING AND
CONDUCTING SPORTS
COMPETITIONS IN THE FIELD OF
BULL RIDING

PBR MOBULL

3,785,421

05/04/2010

ONLINE RETAIL STORE SERVICES

FEATURING GAMES, CLOTHING,
HOME DCOR, IMAGES, MUSIC,
VIDEO, GIFTS AND NOVELTIES,
AND WALLPAPER FOR USE WITH
MOBILE COMMUNICATIONS
DEVICES; ENTERTAINMENT
SERVICES, NAMELY, PROVIDING
NEWS AND INFORMATION ON THE
TOPIC OF PROFESSIONAL BULL
RIDING, PRESENTED TO MOBILE
COMMUNICATIONS DEVICES VIA A
GLOBAL COMPUTER NETWORK
AND WIRELESS NETWORKS

6
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Case 1:14-cv-00379-PAB-KMT Document 74 Filed 02/17/15 USDC Colorado Page 7 of 36

PBR MOBULL

3,785,422

05/04/2010

ONLINE RETAIL STORE SERVICES

FEATURING GAMES, CLOTHING,
HOME DCOR, IMAGES, MUSIC,
VIDEO, GIFTS AND NOVELTIES,
AND WALLPAPER FOR USE WITH
MOBILE COMMUNICATIONS
DEVICES; ENTERTAINMENT
SERVICES, NAMELY, PROVIDING
NEWS AND INFORMATION ON THE
TOPIC OF PROFESSIONAL BULL
RIDING, PRESENTED TO MOBILE
COMMUNICATIONS DEVICES VIA A
GLOBAL COMPUTER NETWORK
AND WIRELESS NETWORKS

PBR PROFESSIONAL
BULL RIDERS

3,092,112

05/16/2006

PRINTED MATTER, NAMELY,

POSTERS AND BROCHURES ABOUT
BULL RIDING, DECALS, BUMPER
STICKERS, CALENDARS, PENS AND
NEWSPAPERS AND MAGAZINES
ABOUT BULL RIDING;
ENTERTAINMENT SERVICES,
NAMELY, ARRANGING,
SPONSORING AND CONDUCTING
SPORTS COMPETITIONS IN THE
FIELD OF BULL RIDING; AND FAN
CLUBS

7
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Case 1:14-cv-00379-PAB-KMT Document 74 Filed 02/17/15 USDC Colorado Page 8 of 36

PBR PROFESSIONAL
BULL RIDERS

2,691,460

02/25/2003

BELT BUCKLES OF PRECIOUS

METAL; RINGS BEING JEWELRY
MADE OF PRECIOUS METAL;
ORNAMENTAL PINS; WATCHES
AND CLOCKS; PRINTED MATTER,
NAMELY, POSTERS AND
BROCHURES ABOUT BULL RIDING,
DECALS, BUMPER STICKERS,
CALENDARS, PENS, AND
NEWSPAPERS AND MAGAZINES
ABOUT BULL RIDING; CLOTH
GARMENT BAGS FOR TRAVEL,
BRIEFCASES AND ALL-PURPOSE
SPORTS EQUIPMENT BAGS;
PLASTIC BANNERS AND PLASTIC
PENNANTS; DRINKING GLASSES,
BEVERAGE GLASSWARE, COFFEE
MUGS AND COFFEE CUPS;
CLOTHING FOR MEN AND WOMEN,
NAMELY, SHIRTS, SWEATSHIRTS,
BASEBALL STYLE CAPS AND
JACKETS; ENTERTAINMENT
SERVICES, NAMELY, ARRANGING
AND CONDUCTING SPORTS
COMPETITIONS IN THE FIELD OF
BULL RIDING AND FAN CLUBS

3,619,950

05/12/2009

COMPUTER GAMES AND VIDEO

GAMES, NAMELY,
DOWNLOADABLE MULTIMEDIA
FILE CONTAINING VIDEO, GAMES,
AND INTERNET WEB LINKS
RELATING TO COMPUTER GAMES;
AND VIDEO GAMES, NAMELY,
COMPUTER PROGRAMS FOR USE IN
COMPUTER GAMES AND VIDEO
GAMES

3,092,012

05/16/2006

TRADING CARD GAMES; ACTIVITY

TOYS, NAMELY, ACTION FIGURES,
TOY VEHICLES AND TOY ANIMALS

8
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Case 1:14-cv-00379-PAB-KMT Document 74 Filed 02/17/15 USDC Colorado Page 9 of 36

PBR TEAM SHOOTOUT

3,720,726

12/08/2009

BAR SERVICES

3,085,917

04/25/2006

ANIMAL FEED

3,780,363

04/27/010

DIGITAL MEDIA, NAMELY, DVDS

FEATURING BULL RIDING

3,938,601

03/29/2011

3,733,312

01/05/2010

AIR FRESHENING PREPARATIONS

DESIGNED FOR VEHICLES;
VEHICLE ACCESSORIES, NAMELY,
WINDSHIELD SUN SHADES, SUN
VISORS, SIDE AND REAR WINDOW
SUN SHADES, SEAT COVERS,
STEERING WHEEL COVERS, CARGO
BAGS AND CASES, VEHICLE
TRUNK ORGANIZER BAGS AND
CASES, VEHICLE GLOVE
COMPARTMENT BAGS AND CASES,
VEHICLE CONSOLE ORGANIZER
BAGS AND CASES, ORGANIZER
BAGS AND CASES THAT ATTACH
TO A VEHICLE SEAT; ROOF
MOUNTED LOAD CARRIERS FOR
USE ON VEHICLES; FITTED COVERS
FOR VEHICLES; FLOOR MATS FOR
VEHICLES
ENTERTAINMENT SERVICES,
NAMELY, ARRANGING AND
CONDUCTING SPORTS
COMPETITIONS IN THE FIELD OF
BULL RIDING

9
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Case 1:14-cv-00379-PAB-KMT Document 74 Filed 02/17/15 USDC Colorado Page 10 of 36

PBR

3,097,240

05/30/2006

2,207,333

12/01/1998

3,249,568

06/05/2007

10
4838-5717-2513.1

BELT BUCKLES, ORNAMENTAL

PINS, MONEY CLIPS, WATCHES,
CLOCKS AND RINGS MADE OF
PRECIOUS METAL; CLOTH
GARMENT BAGS FOR TRAVEL;
WALLETS, BRIEFCASES AND ALLPURPOSE SPORTS EQUIPMENT
BAGS; PLASTIC KEY CHAIN TAGS;
NON-METAL AND NON-LEATHER
KEY CHAINS; DRINKING GLASSES,
BEVERAGE GLASSWARE, COFFEE
MUGS AND COFFEE CUPS;
CLOTHING FOR MEN AND WOMEN,
NAMELY, SHIRTS, SWEATSHIRTS,
BASEBALL STYLE CAPS, JACKETS
AND FOOTWEAR; AND BELTS;
TOYS AND GAMES, NAMELY,
BOARD GAMES, TRADING CARDS
GAMES, CARD GAMES, AND
PUZZLES; ACTIVITY TOYS,
NAMELY, TOY ACTION FIGURES,
TOY VEHICLES AND TOY
ANIMALS; BARBECUE SAUCE
PRINTED MATTER, NAMELY
POSTERS AND BROCHURES
CONCERNING BULL RIDING,
DECALS, AND NEWSPAPERS AND
MAGAZINES CONCERNING BULL
RIDING
ENTERTAINMENT IN THE NATURE
OF COMPETITIONS IN THE FIELD
OF BULL RIDING

Case 1:14-cv-00379-PAB-KMT Document 74 Filed 02/17/15 USDC Colorado Page 11 of 36

PBR

3,583,992

03/03/2009

COMPUTER GAMES AND VIDEO

GAMES, NAMELY,
DOWNLOADABLE MULTIMEDIA
FILE CONTAINING VIDEO, GAMES,
AND INTERNET WEB LINKS
RELATING TO COMPUTER GAMES;
AND VIDEO GAMES, NAMELY,
COMPUTER PROGRAMS FOR USE IN
COMPUTER GAMES AND VIDEO
GAMES

3,554,142
3,945,205

12/30/2008
04/12/2011

BAR SERVICES
FLOOR MATS FOR VEHICLES; AIR
FRESHENING PREPARATIONS
DESIGNED FOR VEHICLES;
VEHICLE ACCESSORIES, NAMELY,
WINDSHIELD SUN SHADES, SUN
VISORS, SIDE AND REAR WINDOW
SUN SHADES, SEAT COVERS,
STEERING WHEEL COVERS, CARGO
BAGS AND CASES, VEHICLE
TRUNK ORGANIZER BAGS AND
CASES, VEHICLE GLOVE
COMPARTMENT BAGS AND CASES,
VEHICLE CONSOLE ORGANIZER
BAGS AND CASES, ORGANIZER
BAGS AND CASES THAT ATTACH
TO A VEHICLE SEAT; ROOF
MOUNTED LOAD CARRIERS FOR
USE ON VEHICLES; FITTED
COVERS FOR VEHICLES

3,052,710

01/31/2006

CLOTHING FOR MEN AND WOMEN,

NAMELY, SHIRTS, SWEATSHIRTS,
BASEBALL STYLE CAPS AND
JACKETS; TOYS AND GAMES,
NAMELY, BOARD GAMES,
TRADING CARD GAMES, CARD
GAMES, PUZZLES, ACTIVITY TOYS,
NAMELY, TOY ACTION FIGURES
AND ACCESSORIES THEREFORE

11
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3,721,254

12/08/2009

PBRNOW

3,739,839

01/19/2010

PRO BULL RIDER

2,822,593

03/16/2004

PUBLICATIONS, NAMELY, A
MULTI-MEDIA MAGAZINE
FEATURING BULL RIDING,
PROFESSIONAL BULL RIDERS AND
PROFESSIONAL BULL RIDING
EVENTS

PROFESSIONAL BULL
RIDERS

3,115,825

07/18/2006

CLOTHING FOR MEN AND WOMEN,

NAMELY, SHIRTS, SWEATSHIRTS,
BASEBALL STYLE CAPS AND
JACKETS; TRADING CARD GAMES;
ACTIVITY TOYS, NAMELY, ACTION
FIGURES, TOY VEHICLES AND TOY
ANIMALS; ENTERTAINMENT
SERVICES, NAMELY, ARRANGING,
SPONSORING AND CONDUCTING
SPORTS COMPETITIONS IN THE
FIELD OF BULL RIDING; AND FAN
CLUBS

12
4838-5717-2513.1

PRINTED MATTER, NAMELY,

POSTERS AND BROCHURES ABOUT
BULL RIDING, DECALS, BUMPER
STICKERS, CALENDARS, PENS,
MAGAZINES AND NEWSPAPERS
ABOUT BULL RIDING;
ENTERTAINMENT SERVICES,
NAMELY, ARRANGING AND
CONDUCTING SPORTS
COMPETITIONS IN THE FIELD OF
BULL RIDING, AND FAN CLUBS
EVENT PROGRAMS;
PUBLICATIONS, NAMELY,
MAGAZINES IN THE FIELDS OF
BULL RIDING; SOUVENIR
PROGRAMS CONCERNING BULL
RIDING

Case 1:14-cv-00379-PAB-KMT Document 74 Filed 02/17/15 USDC Colorado Page 13 of 36

2,334,299

03/28/2000

3,661,382

07/28/2009

3,938,604

03/29/2011

13
4838-5717-2513.1

PRINTED MATTER, NAMELY,

POSTERS AND BROCHURES ABOUT
BULL RIDING, DECALS, AND
NEWSPAPERS AND MAGAZINES
ABOUT BULL RIDING
COMPUTER GAMES AND VIDEO
GAMES, NAMELY,
DOWNLOADABLE MULTIMEDIA
FILE CONTAINING VIDEO, GAMES,
AND INTERNET WEB LINKS
RELATING TO COMPUTER GAMES;
AND VIDEO GAMES, NAMELY,
COMPUTER PROGRAMS FOR USE
IN COMPUTER GAMES AND VIDEO
GAMES
AIR FRESHENING PREPARATIONS
DESIGNED FOR VEHICLES;
VEHICLE ACCESSORIES, NAMELY,
WINDSHIELD SUN SHADES, SUN
VISORS, SIDE AND REAR WINDOW
SUN SHADES, SEAT COVERS,
STEERING WHEEL COVERS, CARGO
BAGS AND CASES, VEHICLE
TRUNK ORGANIZER BAGS AND
CASES, VEHICLE GLOVE
COMPARTMENT BAGS AND CASES,
VEHICLE CONSOLE ORGANIZER
BAGS AND CASES, ORGANIZER
BAGS AND CASES THAT ATTACH
TO A VEHICLE SEAT; ROOF
MOUNTED LOAD CARRIERS FOR
USE ON VEHICLES; FITTED
COVERS FOR VEHICLES; FLOOR
MATS FOR VEHICLES

Case 1:14-cv-00379-PAB-KMT Document 74 Filed 02/17/15 USDC Colorado Page 14 of 36

TEAM PBR

3,681,213

09/08/2009

ORNAMENTAL PINS; PRINTED

MATTER, NAMELY, POSTERS AND
BROCHURES ABOUT BULL RIDING,
DECALS, BUMPER STICKERS, PENS,
MAGAZINES AND NEWSPAPERS
ABOUT BULL RIDING; DRINKING
GLASSES, BEVERAGE
GLASSWARE; CLOTHING FOR MEN,
WOMEN AND CHILDREN, NAMELY,
SHIRTS, SWEATSHIRTS, BASEBALL
STYLE CAPS, KNIT CAPS AND
JACKETS; BELT BUCKLES OF
PRECIOUS METAL; FAN CLUBS

TEAM PBR

3,839,887

08/31/2010

ORNAMENTAL PINS; PRINTED

MATTER, NAMELY, POSTERS AND
BROCHURES ABOUT BULL RIDING,
DECALS, BUMPER STICKERS, PENS,
MAGAZINES AND NEWSPAPERS
ABOUT BULL RIDING; CLOTHING,
NAMELY, SHIRTS, SWEAT SHIRTS,
BASEBALL STYLE CAPS, KNIT
CAPS AND JACKETS; FAN CLUBS

TOUGHEST SPORT ON
EARTH

3,782,290

04/27/2010

3,765,265

03/23/2010

PRINTED MATTER, NAMELY,

POSTERS AND BROCHURES ABOUT
BULL RIDING; DECALS AND
CALENDARS; MAGAZINES AND
NEWSPAPERS ABOUT BULL
RIDING; CLOTHING, NAMELY,
SHIRTS, SWEATSHIRTS, BASEBALL
CAPS, AND JACKETS;
ENTERTAINMENT SERVICES,
NAMELY, ARRANGING AND
CONDUCTING SPORTS
COMPETITIONS IN THE FIELD OF
BULL RIDING; FAN CLUBS
DIGITAL MEDIA, NAMELY,
DIGITAL VIDEO DISCS FEATURING
BULL RIDING

14
4838-5717-2513.1

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WOOL WARRIORS

16.

3,995,610

07/19/2011

CLOTHING, NAMELY, SHIRTS,

SWEATSHIRTS, BASEBALL STYLE
CAPS, KNIT CAPS AND JACKETS,
SOLD TO PROMOTE
COMPETITIONS FEATURING
CHILDREN RIDING SHEEP

3,918,891

02/15/2011

PRINTED MATTER, NAMELY,

POSTERS AND BROCHURES ABOUT
RODEO COMPETITIONS
INVOLVING CHILDREN RIDING
SHEEP, DECALS, BUMPER
STICKERS, CALENDARS, PENS;
MAGAZINES AND NEWSPAPERS
ABOUT RODEO COMPETITIONS
INVOLVING CHILDREN RIDING
SHEEP; EVENT PROGRAMS AND
SOUVENIR PROGRAMS
CONCERNING RODEO
COMPETITIONS; ENTERTAINMENT
SERVICES, NAMELY, ARRANGING
AND CONDUCTING SPORTS
COMPETITIONS IN THE FIELD OF
CHILDREN RIDING SHEEP

PBR also has applied for a number of other marks with the United States Patent

and Trademark Office, which are pending, including the following titles and slogans:
WORDS

SER. NO.

FILING DATE GOODS DESCRIPTION

8 SECONDS

86/112,240 11/06/2013

FRAGRANCES; PERFUMES AND

COLOGNES

COWBOY SPRING
BREAK

85/547,988 02/21/2012

VEHICLE ACCESSORIES, NAMELY,

WINDSHIELD SUNSHADES, SUN
VISORS, SIDE AND REAR WINDOW
SUNSHADES, SEAT COVERS,
STEERING WHEEL COVERS, CARGO
BAGS AND CASES, NAMELY,
CARGO CARRIERS FOR VEHICLES,
ORGANIZER BAGS AND CASES

15
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Case 1:14-cv-00379-PAB-KMT Document 74 Filed 02/17/15 USDC Colorado Page 16 of 36

SPECIFICALLY FITTED FOR

VEHICLE TRUNKS, BAGS AND
CASES SPECIFICALLY FITTED FOR
VEHICLE GLOVE COMPARTMENTS,
ORGANIZER BAGS AND CASES
SPECIFICALLY FITTED FOR
VEHICLE CONSOLES, SEAT COVERS
FOR VEHICLE SEATS
INCORPORATING ORGANIZER
BAGS AND CASES; ROOF MOUNTED
LOAD CARRIERS FOR USE ON
VEHICLES; FITTED COVERS FOR
VEHICLES; WATCHES; JEWELRY;
JEWELRY, NAMELY, RINGS,
ORNAMENTAL PINS; EVENT
PROGRAMS AND SOUVENIR
PROGRAMS CONCERNING BULL
RIDING; BROCHURES AND POSTERS
ABOUT BULL RIDING; DECALS;
BUMPER STICKERS; CALENDARS;
PENS; MONEY CLIPS; BAGS,
NAMELY, CLOTH GARMENT BAGS
FOR TRAVEL; BRIEFCASES AND
ALL-PURPOSE SPORTS BAGS;
WALLETS; LUGGAGE; LEATHER
KEY CHAINS; PLASTIC KEY
CHAINS; NON-METAL AND NONLEATHER KEY CHAINS; BEVERAGE
GLASSWARE; DRINKING GLASSES;
MUGS; CLOTHING, NAMELY,
SHIRTS, SWEATSHIRTS, BASEBALLSTYLE CAPS, KNIT CAPS AND
JACKETS; BELT BUCKLES; BELT
BUCKLES OF PRECIOUS METAL
TOYS AND GAMES, NAMELY,
BOARD GAMES, TRADING CARD
GAMES, CARD GAMES AND
PUZZLES; ACTIVITY TOYS,
NAMELY, TOY ACTION FIGURES,
TOY VEHICLES AND TOY ANIMALS;
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ENTERTAINMENT SERVICES,
NAMELY, ARRANGING,
SPONSORING AND CONDUCTING
SPORTS COMPETITIONS IN THE
FIELD OF BULL RIDING
PBR AIR BULL RIDING

85/957,785 06/12/2013

ENTERTAINMENT SERVICES,
NAMELY, ARRANGING,
SPONSORING AND CONDUCTING
SPORTS COMPETITIONS IN THE
FIELD OF BULL RIDING;
ARRANGING OF CONTESTS;
ENTERTAINMENT SERVICES,
NAMELY, CONDUCTING CONTESTS;
ARRANGING OF CONTESTS; TOYS
AND COMPUTER GAMES; VEHICLE
ACCESSORIES; JEWELRY;
WATCHES; BELT BUCKLES;
BEVERAGE GLASSWARE; POSTERS,
BROCHURES, DECALS, BUMPER
STICKERS, CALENDARS; PENS;
EVENT PROGRAMS AND SOUVENIR
PROGRAMS; BAGS; WALLETS;
LUGGAGE; KEY CHAINS; DRINKING
GLASSES; MUGS; CLOTHING;
HEADWEAR; FOOTWEAR

VELOCITY TOUR

86/120,614 11/15/2013

ENTERTAINMENT SERVICES,
NAMELY, ARRANGING,
SPONSORING AND CONDUCTING
SPORTS COMPETITIONS IN THE
FIELD OF BULL RIDING;
ARRANGING OF CONTESTS IN THE
FIELD OF BULL RIDING; FAN CLUBS
IN THE FIELD OF BULL RIDING;
ENTERTAINMENT SERVICES,
NAMELY, PROVIDING NEWS AND
INFORMATION ON THE TOPIC OF
PROFESSIONAL BULL RIDING

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17.

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

various merchandising license agreements entered into with third parties.

C. Murcielagos Business
18.

Murcielago is in the business of manufacturing, advertising and selling cologne,

perfume and other fragrances throughout the United States, including in Colorado, through a
variety of distribution channels, including online storefronts and through distribution agreements
with traditional brick and mortar retailers.
19.

Upon information and belief, Mr. Malcom is a key employee of Murcielago.

20.

Upon information and belief, Murcielago is the successor in interest to The

Murcielago Group, LLC, a limited liability company formed in the State of Colorado for the
purpose of manufacturing and selling cologne, perfume and other fragrances (the Murcielago
Group).
D. PBRs License Agreements with Murcielago
21.

PBR Properties, Inc. (PBR Properties), an affiliate of PBR, entered into a

Merchandising License Agreement with the Murcielago Group dated June 29, 2004 (the First
License Agreement).
22.

Pursuant to the First License Agreement, PBR Properties licensed certain PBR

Marks to the Murcielago Group for the purpose of creating, manufacturing and selling mens
cologne products and making such products available for retail sale. Further, pursuant to the
Agreement, PBR acquired all trade dress rights and ownerships associated with these products.
Section 7(A) of the First License Agreement states as follows:
[PBR] shall have and retain all right, title and interest in and to the original
Licensed Property as well as in any modifications or improvements made thereto
by [Murcielago] in and to all related packaging, advertising and marketing
materials and any other materials provided by [PBR] hereunder or developed by
[Murcielago] in connection with this Agreement for the Licensed Products
(collectively, the Licensed Materials). Nothing herein or otherwise implied by
law shall be deemed to grant [Murcielago] any right, title or interest in or to the
Licensed Property or Licensed Materials. In the event that any such rights vest
initially with [Murcielago] by operation of law or for any other reason,
[Murcielago] hereby perpetually and irrevocably assigns, transfers, and quitclaims
all such rights to [PBR].
23.

Section 7(B) of the First License Agreement states as follows:

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[Murcielago] recognizes the value of the good will associated with the Licensed
Property and acknowledges that the Licensed Property and all rights therein
including the good will pertaining thereto, belong exclusively to [PBR] and shall
inure solely to the benefit of [PBR]. Neither during nor after the termination of
this Agreement shall [Murcielago] assert any claims to the Licensed Materials, the
Licensed Property, or the associated goodwill, nor shall [Murcielago] dispute or
contest, directly or indirectly, [PBRs] exclusive right and title to the Licensed
Property and/or the Marks or the validity thereof.
24.

Section 7(C) of the First License Agreement states as follows:

Any work and materials produced by [Murcielago] hereunder is done at [PBRs]

request, and the resultant work and materials (Work) shall be considered a work
made for hire within the meaning of the copyright laws of the United States and
any foreign jurisdiction recognizing such right of authorship. To the extent that
the Work is not deemed to be a work make for hire, [Murcielago] hereby assigns
to [PBR] all right, title, and interest to the exclusive rights to the Work free from
any claims. [Murcielago] represents and warrants that all of its employees and/or
contractors have signed, or will sign, a work for hire agreement. At any time and
upon [PBRs] request, [Murcielago] shall execute an assignment of copyright in a
form reasonably acceptable to [PBR] evidencing the foregoing transfer, or in the
event [Murcielago] fails to so execute such documents within thirty (30) days
after [PBRs] request, then thereafter [Murcielago] hereby authorizes and appoints
[PBR] as [Murcielagos] attorney-in-fact, coupled with an interest to prepare and
sign all documents on [Murcielagos] behalf which may be required to obtain full
copyright, trademark or other legal benefits, including, but not limited to,
registrations, extensions and renewals. [PBR] shall have the right to register with
the appropriate registration authority in the Territory, all or any part of this
Agreement in excised form, the Licensed Property, and any assignment thereto in
[PBRs] name as the owner thereof. The foregoing assignment to [PBR] of rights
will not include that portion of [Murcielagos] displays, catalogs, promotional
materials and the like that do not contain the Licensed Property or reference to the
Licensed Property.
Notwithstanding any other term in this Agreement,
[Murcielago] shall retain ownership of its pre-existing trademarks and trade
names which may appear on the Licensed Products.
25.

Section 7(D) of the First License Agreement states as follows:

[Murcielago] shall at no time adopt, modify or use, without [PBRs] prior written
consent (which may be withheld by [PBR] in its sole and absolute discretion), any
variation of the Licensed Property or Licensed Materials. Use of the Licensed
Property other than in connection with this Agreement, in a manner inconsistent
with this Agreement and/or any other guidelines provided by [PBR] hereunder,
shall constitute a material breach of this Agreement.

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26.

Section 7(F) of the First License Agreement states as follows: The parties agree

to execute any documents reasonably required by the other party to effect any of the above
provisions.
27.

Pursuant to Section 11 of the First License Agreement, Murcielago is required to:

defend, indemnify and hold harmless [PBR] and BSM, and each of their
respective officers, directors, shareholders, employees, representatives and agents
(collectively, the Indemnified Parties) from and against any claims, demands,
causes of action, damages, penalties, fines, costs and expenses, including
reasonable attorneys fees, judgments, and settlements arising out of or in
connection with: (i) [Murcielagos] breach or alleged breach of any of its
representations, warranties, covenants or obligations contained in this
Agreement;
28.

Pursuant to Section 15(K) of the First License Agreement, Sections 2, 3, 4, 7, 8, 9,

11, 12, 13 and 15 shall survive expiration of the First License Agreement.
29.

In 2006, PBR Properties and the Murcielago Group amended the First License

Agreement to allow the Murcielago Group to create, manufacture and sell womens cologne and
round glass or plastic ornaments (Amendment # 1 to the First License Agreement).
30.

In 2008, PBR Properties and the Murcielago Group entered into a second

amendment of the First License Agreement to extend the expiration date of that agreement from
December 31, 2007 to December 31, 2010 (Amendment # 2 to the First License Agreement).
31.

Pursuant to the First License Agreement, Murcielago sold fragrances with specific

designs, images, appearances and packaging under PBR 8 SECONDS, PBR GOLD, PBR
TENACIOUS, and PBR BLACK & BLUE (the Licensed Products). At all times since their
introduction to the marketplace, these Licensed Products were advertised as officially licensed
products of PBR and otherwise sold in conjunction with and in close proximity to other PBR
Marks.
32.

Upon information and belief, prior to entering into the First License Agreement,

Murcielago never used the terms and slogans 8 seconds, gold, tenacious or black & blue in
connection with the sale of fragrances.
33.

PBR, Inc. and Murcielago, Inc. entered into a new Merchandising License

Agreement on January 19, 2011 (the Second License Agreement).

The Second License

Agreement gave Murcielago to right to continue creating, manufacturing and selling mens and

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womens cologne products throughout the United States using certain PBR Marks, including
PROFESSIONAL BULL RIDERS and PBR.
34.

The Second License Agreement contains contract terms that are substantially

similar to those contained in the First License Agreement.

35.

The Second License Agreement explicitly states that all right, title, interest, and

goodwill in the PBR Marks inure exclusively to PBR, including ownership of intellectual
property stemming from the PBR Marks that are developed by Murcielago during the term of the
agreement, including but not limited to all trade dress. Specifically, section 7(A) of the Second
License Agreement states as follows:
[PBR] shall have and retain all right, title and interest in and to the original
Licensed Property including Licensed Property incorporated in all Licensed
Products, related packaging, advertising and marketing materials. Except as
otherwise provided herein, [Murcielago] shall have and retain all right, title and
interest in the Licensed Products, related packaging, advertising and marketing
materials created using the Licensed Property but specifically excluding rights in
the Licensed Property itself and/or any other specifications or guidelines provided
by [PBR] pursuant to or as a result of this Agreement. Nothing herein or
otherwise implied by law shall be deemed to grant [Murcielago] any right, title or
interest in or to the Licensed Property. In the event that any such rights vest
initially with [Murcielago] by operation of law or for any other reason, to the
fullest extent permitted by law, [Murcielago] hereby perpetually and irrevocably
assigns, transfers, and quitclaims all such rights, including, for example and not
by way of limitation, moral rights, rights of attribution, or rights to have a work
published anonymously or pseudonymously, to [PBR]. In any jurisdiction where
moral rights may not be transferred, [Murcielago] agrees not to assert such moral
rights. [Murcielago] hereby perpetually and irrevocably grants to [PBR] power of
attorney to execute any and all documents deemed necessary or desirable by
[PBR] to perfect any rights or ownership transfer provided in this Section 7(A).
36.

Section 7(B) of the Second License Agreement states as follows:

[Murcielago] recognizes the value of the goodwill associated with the Licensed
Property and acknowledges that the Licensed Property and all rights therein,
including the goodwill pertaining thereto, belong to [PBR] and shall inure solely
to the benefit of [PBR]. Neither during nor after the termination of this
Agreement shall [Murcielago] assert any claims to any specifications or
guidelines provided by [PBR] pursuant to or as a result of this Agreement, the
Licensed Property, or the associated goodwill, nor shall [Murcielago] dispute or
contest, directly or indirectly, [PBRs] right and title to the Licensed Property,
including the Marks, or the validity thereof.
37.

Section 7(D) of the Second License Agreement states as follows:

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[Murcielago] shall at no time adopt or use, without [PBRs] prior written consent
(which may be withheld by [PBR] in its sole and absolute discretion), any
variation of the Licensed Property, including any variation of the Marks, or any
variation of any [PBR] approved packaging, advertising, promotional or
marketing materials. Use of all or any portion of the Licensed Property other than
in connection with this Agreement, in a manner inconsistent with this Agreement
and/or in a manner inconsistent with any specifications or guidelines provided by
[PBR] pursuant to or as a result of this Agreement, shall constitute a breach of this
Agreement.
38.

In order to protect PBRs intellectual property rights, the Second License

Agreement prohibits Murcielago from: (i) attempting to register current and future PBR Marks
with the USPTO; (ii) registering a website domain that incorporates a PBR Mark; and (iii)
otherwise using PBR Marks in a way that could cause consumer confusion or constitute unfair
competition. See Section 7(E).
39.

Section 7(H) of the Second License Agreement states as follows:

In the event that [PBR] decides to apply for registration of any of the Licensed
Property, including the Marks or any variation thereof, [Murcielago] shall render
[PBR] all reasonable assistance towards obtaining such registration, including the
execution of documents deemed necessary or desirable by [PBR]. If [Murcielago]
is deemed in law to be the proprietor of any mark or name subject to such
registration so as to make it necessary for the application to be made or proceeded
with in the name of [Murcielago], then, at the request and expense of [PBR],
[Murcielago] shall make and proceed with such application for registration and do
all acts and execute all documents necessary for obtaining registration in the name
of [Murcielago] and thereupon assign such registration and any related rights
and/or goodwill to [PBR].
40.

Section 7(I) of the Second License Agreement states as follows:

At the request and expense of [PBR], [Murcielago] shall perform whatever acts
are deemed reasonably necessary or desirable by [PBR] to vest in [PBR]
ownership and title to any of the Licensed Property, including the execution of
any and all documents deemed necessary or desirable by [PBR].
41.

The Second License Agreement includes a provision that allows

Murcielago to sell off its remaining inventory of Licensed Products for a brief period
after the agreement expires. See Section 9(B). Murcielagos right to a sell-off period is
contingent upon it faithfully honoring the terms of the Second License Agreement. See
Sections 9(C) and 9(E). Any failure on Murcielagos part to honor the terms of the

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agreement gives PBR the right to terminate all remaining rights granted by the Second
License Agreement immediately at its sole discretion. See Section 8(B).
42.

Pursuant to Section 9, Murcielago is required to take certain actions upon

termination, including but not limited to providing proof that it has destroyed all remaining
inventory within ten (10) days following termination of the Second License Agreement.
43.

Section 9(E) of the Second License Agreement anticipates the need for an

injunction and provides that:

Upon the breach of all or any portion of this Agreement by [Murcielago],
[PBR]may, without bond, in addition to other remedies, immediately obtain
and enforce injunctive relief prohibiting the breach or threatened breach or
compelling specific performance.
44.

Pursuant to Section 11 of the Second License Agreement, Murcielago is required

to defend, indemnify and hold harmless [PBR], [PBRs] affiliated and related companies, and
all of their officers, directors, shareholders, employees, representatives and agents (collectively,
the Indemnified Parties) from and against any claims, demands, causes of action, damages,
penalties, fines, costs and expenses, including reasonable attorneys fees, judgments, and
settlements arising out of or in connection with any act or omission of [Murcielago], and/or in
connection with this Agreement including, without limitation: (i) the breach or alleged breach of
any of the representations, warranties, covenants or obligations contained in this Agreement by
[Murcielago], its employees, agents or subcontractors, (ii) the unauthorized use of the Licensed
Property by [Murcielago], its employees, agents or subcontractors;
45.

As set forth in Section 15(I), the Second License Agreement is governed by

Colorado law, all disputes are to be decided in Colorado, and Murcielago consents to jurisdiction
in Colorado.
46.

Pursuant to Section 15(J), Sections 2, 3, 4, 7, 8, 9, 11, 12, 13 and 15 of the Second

License Agreement survive expiration of the Agreement.

47.

Pursuant to the Second License Agreement, Murcielago continued to sell

Licensed Products under the names PBR 8 SECONDS, PBR TENACIOUS, PBR GOLD, and
PBR BLACK & BLUE, all of which were created during the term of the First License
Agreement. These Licensed Products were advertised and offered for sale through a variety of
distribution channels, including Murcielagos website (http://www.murcielagofragrances.com).

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A screen shot of Murcielagos website illustrating their advertisement of the Licensed Products
is attached hereto as Exhibit 1 and incorporated herein by this reference.
48.

At all times during the First and Second License Agreements, the Licensed

Products were closely associated with PBR and advertised as an officially licensed product of
PBR.
49.

Through its association with PBR, customers in the United States came to

associate the Licensed Products with PBR.

50.

Upon information and belief, at no point during the production of the Licensed

Products was Murcielago prominently featured on the Products themselves or its packaging so
as to create a connection in the minds of consumers between Murcielago and the fragrances it
produced.
51.

The Second License Agreement expired on December 31, 2013. PBR has chosen

to partner with another fragrance company to design, manufacture and sell PBR branded
colognes and perfumes in 2014 and beyond.
E. Murcielagos Bad Faith under the Second License Agreement
52.

Shortly after signing the Second License Agreement and reaffirming its

commitment to honor PBRs intellectual property rights, Murcielago attempted to register two
trademarks with the USPTO that prominently incorporated the PBR mark.
53.

On September 12, 2012, without the authorization or knowledge of PBR,

Murcielago filed application Serial No. 85/726,694 seeking to register the mark PBR GOLD for
use in connection with International Class 003 Perfumes and Colognes. The application was
filed in direct violation of the First and Second License Agreements.
54.

Also on September 12, 2012, without the authorization or knowledge of PBR,

Murcielago filed application Serial No. 85/726,688 seeking to register the mark PBR
SIGNATURE, also for use in connection with International Class 003 Perfumes and Colognes.
The application was filed in direct violation of the First and Second License Agreements.
55.

The USPTO denied both of Murcielagos trademark applications because each

would create a likelihood of confusion between the marks Murcielago attempted to register and
the registered trademarks owned by PBR.
56.

In addition, between 2012 and 2013, upon information and belief, Mr. Malcom

registered the domain names for several websites that incorporate the PBR word mark in their
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web address, including: buypbr.com, buypbrcologne.com, classicpbr.com, getpbr.com,

orderpbr.com, pbrchamp.com, pbrcologne.com, pbrfragrance.com, pbrfragranceswholesale.com,
pbrfragrance.com, pbrgold.com, pbrinfo.com, pbrking.com, pbrqueen.com, pbrtix.com, and
pbrwholesale.com.

Each of these website domain names was registered without PBRs

authorization or knowledge and in direct violation of the First and Second License Agreements.
F. Murcielagos Improper Use of PBR Marks to Promote New, Unlicensed Products
57.

As mentioned above, the Second License Agreement expired on December 31,

2013. Murcielago has continued manufacturing and advertising western themed fragrances for
men and women using the goodwill achieved during the license term and using names, slogans,
trade dress and other copyrighted materials confusingly similar to PBRs common law and
contractual rights in the marks, slogans, trade dress and copyrights developed during the license
term. Specifically, pursuant to the terms of the First and Second License Agreements, PBR
owned all common law rights, title, and interest in and to PBR 8 SECONDS, PBR BLACK &
BLUE, PBR GOLD, and PBR TENACIOUS. Murcielago now is advertising and selling the
same fragrances in substantially the same packaging, with the same design, appearance and
images, using the names 8 SECONDS, BLACK & BLUE, MURCIELAGO GOLD, and
TENACIOUS (the Infringing Products).
58.
exclusively

Upon information and belief, the Infringing Products are advertised and sold
through

one

or

http://www.shop.murcielagofragrances.com

more

Murcielago

(Website

#1)

and

websites,

including

http://www.buypbr.com

(Website #2). Screen shots illustrating the marketing of Infringing Products available on
Website #1 are attached hereto as Exhibit 2 and incorporated herein by reference.
59.
Website #1:

Murcielago includes the following legend near products available for sale on
Official licensed product of the PBR copyright 2010 All rights reserved.

Professional Bull Riders, Inc. copyright. All rights reserved Murcielago, Inc. See Exhibit 2.
60.

Murcielago also advertises and sells its Infringing Products on Website # 2, with a

web address that specifically uses the PBR word mark. A screen shot illustrating the marketing
of Murcielagos Infringing Products available for sale on Website # 2 is attached hereto as
Exhibit 3 and incorporated herein by reference. These screen shots show the infringing product
which uses PBRs slogan 8 Seconds and has a star and a bull and rider as the dominant image
on the bottle.
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61.

Murcielago advertises and sells the Infringing Products in bottles and packaging

that are virtually identical in size, shape, color, and design to those created, manufactured,
marketed and sold pursuant to the First and Second License Agreements. By design, these
products are western-themed and use trade dress owned by PBR so as to exploit the goodwill
associated with Murcielagos use of the PBR Marks.
62.

PBR has not authorized Murcielago to use the PBR Marks or the goodwill

associated therewith to advertise and sell the Infringing Products.

63.

Murcielagos marketing, advertising, offering for sale, and sale of the Infringing

Products is likely to cause confusion as to the affiliation and sponsorship of the Infringing
Products with PBR.
64.

Murcielagos actions are calculated to deceive customers into believing that PBR

and Murcielago are affiliated with one another, even though no such connection exists with
respect to the Infringing Products.
65.

Murcielagos activities constitute a breach of its continuing obligations under the

Second License Agreement as well as willful infringement of the PBR Marks, PBR slogans, PBR
trade dress and PBR copyrights.
G. Murcielagos Fraudulent Trademark Applications
66.

On December 26, 2013, the eve of the expiration of the Second License

Agreement, Murcielago (by itself and/or through Mr. Malcom) filed four applications with the
USPTO to register the following slogans as trademarks for use in connection with International
Class 003 Perfumes and Colognes: (i) 8 SECONDS (Serial No. 86/164,349); (ii) BLACK &
BLUE (Serial No. 86/152,669); (iii) MURCIELAGO GOLD (Serial No. 86/152,549); and (iv)
TENACIOUS (Serial No. 86/152,556). A true and accurate copy of each of these trademark
applications is attached hereto as Exhibit 4 and incorporated herein by reference.
67.

Pursuant to the terms of the First and Second License Agreements, all right, title

and interest in and to the slogans 8 SECONDS, BLACK & BLUE, MURCIELAGO GOLD, and
TENACIOUS vested immediately upon creation in PBR since they were first used during the
term of the agreement in connection with the PBR Marks.
68.

In each application, Murcielago affirms that it believes it is entitled to use such

mark in commerce and that it is the owner of the trademark/service mark sought to be

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registered.

In light of PBRs superior ownership rights in these marks and slogans,

Murcielagos statement is patently untrue.

69.

Murcielagos trademark applications are currently pending at the USPTO.

H. PBRs Trademark Application

70.

To protect its intellectual property rights, PBR filed an application with the

USPTO to register the slogan 8 SECONDS as a trademark in connection with International Class
003 Perfumes and Colognes (Serial No. 86/112,240). PBRs application is consistent with its
ownership of the 8 SECONDS slogan/mark (Registration No. 3,739,507) for use in connection
with event programs and publications (namely, magazines in the fields of bull riding and
souvenir programs concerning bull riding).
71.

The slogan 8 Seconds is synonymous with the sport of bull riding, as a rider

must stay on a bull for at least eight seconds in order to receive a scoring ride. Over the years,
consumers in the United States and abroad have come to associate the slogan 8 seconds with
the sport of professional bull riding and PBR in particular.
72.

PBRs trademark application is currently pending at the USPTO.

I. Murcielagos Letter to PBR & Subsequent Termination of Second License Agreement

73.

On or about January 29, 2014, Murcielagos attorney sent PBR a letter regarding

the 8 SECONDS trademark (the Demand Letter).

74.

The Demand Letter wrongfully asserts that Murcielago owns the 8 SECONDS

mark when, pursuant to the First and Second License Agreements, all such rights are in fact
exclusively vested in PBR.
75.

In response to Murcielagos flagrant disregard of PBRs intellectual property

rights and continued breaches of the License Agreements, PBR exercised its right to terminate
the Second License Agreement. PBR sent proper notice of termination to Murcielago by letter
dated February 13, 2014 (the Termination Letter). A copy of the Termination Letter is
attached and incorporated herein as Exhibit 5.
COUNT I
(Trademark Infringement Under 32 of the Lanham Act)
76.

PBR hereby incorporates paragraphs 1-75 above as though fully set forth herein.

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77.

PBR possesses valid registrations issued by the USPTO for PROFESSIONAL

BULL RIDERS, PBR and other PBR Marks for the goods and services set forth in the
registrations.
78.

The PBR Marks are incontestable under 15 U.S.C. 1065.

79.

Murcielagos actions as described above are unauthorized, including its use of the

marks and slogans PROFESSIONAL BULL RIDERS, PBR, and other PBR Marks to identify,
promote and advertise Murcielago goods and services and are likely to create confusion or to
cause mistake or to deceive as to the affiliation, connection or association of Murcielago with
PBR, or as to the origin, sponsorship or approval of Murcielagos services and products by PBR.
Murcielagos conduct constitutes trademark infringement in violation of Section 32 of the
Lanham Act, 15 U.S.C. 1114.
80.

Murcielagos advertisement of PBRs slogans and trademark infringement has

caused and continues to cause damage and irreparable injury to the value and goodwill of the
PBR Marks, as well as damage and irreparable injury to PBRs business, goodwill, and
reputation.
81.

Murcielagos continued use of the PBR Marks is deliberate, willful, fraudulent,

constitutes a knowing infringement of the PBR Marks, and makes this case exceptional.
82.

PBR is entitled to an injunction preventing Murcielago from using the PBR

83.

PBR is entitled to recover treble damages as well as its attorneys fees and costs

Marks.

incurred in this action.

COUNT II
(Trademark Infringement and False Designation Under 43(a) of the Lanham Act)
84.

PBR incorporates by reference paragraphs 1-75 of the above as though fully set

forth herein.
85.

Murcielagos actions, including its unauthorized use of the PBR slogans and

marks to advertise, identify and promote its goods, are likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation, connection or association of Murcielago with PBR, or
as to the origin, sponsorship or approval of Murcielagos goods and services by PBR, in
violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. 1125(a)(1)(A).

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86.

Murcielagos false advertisement, designation, and representations have caused

and continue to cause damage and irreparable injury to the value and goodwill of the PBR
Marks, as well as damage and irreparable injury to PBRs business, goodwill, and reputation.
87.

PBR has no adequate remedy at law because the damages are continuing and

difficult to ascertain.
88.

Murcielagos continued unauthorized use of the PBR Marks and slogans is

deliberate, willful, fraudulent, constitutes a knowing infringement of the PBR Marks, and makes
this case exceptional.
89.

PBR is entitled to injunctive relief and all recoverable damages.

90.

PBR is entitled to recover treble damages as well as its attorneys fees and costs

incurred in this action.

COUNT III
(Trademark Dilution Under 43(a) of the Lanham Act)
91.

PBR hereby incorporates paragraphs 1-75 above as though fully set forth herein.

92.

The PBR Marks and slogans PROFESSIONAL BULL RIDERS and PBR are

distinctive, inherently or through acquired distinctiveness, and are famous under 15 U.S.C.
1125(c).
93.

The PBR Marks and slogans, especially PROFESSIONAL BULL RIDERS and

PBR, are famous marks among consumers in the United States.

94.

Murcielagos advertisement and use of the marks and slogans PROFESSIONAL

BULL RIDERS and PBR is likely to cause dilution of the PBR Marks.
95.

Upon information and belief, Murcielago willfully intended to trade on the

recognition of PBRs famous marks.

96.

Murcielagos conduct has caused and continues to cause damage and irreparable

injury to the value and goodwill of PBRs famous marks, as well as damage and irreparable
injury to PBRs business, goodwill, and reputation. PBR has no adequate remedy at law because
damages are continuing and difficult to ascertain.
97.

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

costs.
COUNT IV
Against Murcielago and Mr. Malcom
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(Federal Cyberpiracy Under 43(d) of the Lanham Act)

98.

PBR hereby incorporates paragraphs 1-75 above as though fully set forth herein.

99.

Defendants Murcielago and Mr. Malcom used and continue to use the PBR Marks

and slogans in commerce by registering, maintaining and, in some instances, advertising

products and making products available for sale on websites that include the PBR Marks and
slogans, including buypbr.com, buypbrcologne.com, classicpbr.com, getpbr.com, orderpbr.com,
pbrchamp.com,

pbrcologne.com,

pbrfragrance.com,

pbrfragranceswholesale.com,

pbrfragrance.com, pbrgold.com, pbrinfo.com, pbrking.com, pbrqueen.com, pbrtix.com, and

pbrwholesale.com, in connection with Murcielagos products and services in such a fashion and
design as to imitate, counterfeit, copy, and reproduce the PBR Marks and PBRs goods and
services.
100.

Defendants advertisement and use of the PBR Marks and slogans and registered

PBR domain names is likely to cause, is intended to cause and, upon information and belief, has
caused the consuming public to mistakenly believe that Murcielagos products and services
originate from, are sponsored by, and/or are associated with PBR.
101.

Mr. Malcom registered the domains listed in Paragraph 99 of this Amended

Complaint in bad faith with the purpose of exploiting, trading on, and profiting from the
substantial goodwill and reputation of PBR.
102.

Defendants had actual knowledge of PBRs exclusive rights in the PBR Marks

and willfully and deliberately infringed PBRs rights in these marks and slogans.
103.

Defendants conduct described herein constitutes federal trademark infringement,

unfair competition and false designation of origin in violation of Section 43(d) of the Lanham
Act, 15 U.S.C. 1125(d). Unless restrained, Defendants continued infringement of PBRs
rights will cause PBR irreparable harm for which there is no adequate remedy at law.
104.

Defendants are on notice of PBRs rights and interests in the PBR Marks and

slogans and, notwithstanding such notice, have continued to use counterfeit PBR Marks and
slogans without PBRs authorization in connection with the sale of goods. Such use is willful
and intentional, entitling PBR to treble damages under 15 U.S.C. 1117(b).
COUNT V
(Common Law Trademark and Trade Dress Infringement)
105.

PBR hereby incorporates paragraphs 1-75 above as though fully set forth herein.
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106.

PBR has acquired common law rights in and to the slogans PBR 8 SECONDS,

PBR BLACK & BLUE, PBR GOLD, and PBR TENACIOUS, which are inherently distinctive
or which have acquired distinctiveness in connection with the goods and services of PBR. PBR
has acquired common law rights in and to the design, image, appearance and packaging of the
products advertised and sold by Murcielago.
107.

These rights have vested with PBR per various terms of the First and Second

License Agreements, as set forth above.

108.

The unregistered use of PBR marks, slogans and trade dress by Murcielago in its

marketing and advertisement is likely to cause confusion as to the source, sponsorship, and/or
authorization of PBR in violation of PBRs rights and constitutes infringement of PBRs
common law trademarks and trade dress.
109.

PBR has been and continues to be damaged by Murcielagos advertisement and

infringement of PBRs common law trademark and trade dress rights.

110.

By reason of the foregoing, PBR is entitled to injunctive relief and damages.

COUNT VI

111.

PBR hereby incorporates paragraphs 1-75 and 106-110 above as though fully set

forth herein.
112.

The infringing conduct of Murcielago is attended by circumstances of fraud,

malice, or willful and wanton disregard of PBRs rights, warranting an award of punitive and
exemplary damages.
COUNT VII
(Unfair Competition)
113.

PBR hereby incorporates paragraphs 1-75 above as though fully set forth herein.

114.

PBR possesses valid and protectable rights in the PBR Marks, slogans, and trade

dress, some or all of which are inherently distinctive or which have acquired distinctiveness in
connection with the goods and services of PBR.
115.

Murcielagos actions as described herein, including Murcielagos unauthorized

advertisement and use of the PBR Marks to identify goods and services, are likely to cause
confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of
Murcielago with PBR, or as to the origin, sponsorship, or approval of Murcielagos goods and
services by PBR, in violation of PBRs rights and constitutes common law unfair competition.
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116.

PBR has been and continues to be damaged by Murcielagos unfair competition.

117.

By reason of the foregoing, PBR is entitled to injunctive relief and damages.

COUNT VIII

118.

PBR hereby incorporates paragraphs 1-75, 106-110 and 114-117 as though fully

set forth herein.

119.

The infringing conduct of Murcielago is attended by circumstances of fraud,

malice, or willful and wanton disregard of PBRs rights warranting an award of punitive and
exemplary damages.
COUNT IX
(Declaratory Judgment of Trademark Ownership and Interest)
120.

PBR hereby incorporates paragraphs 1-75 above as though fully set forth herein.

121.

Pursuant to the First and Second License Agreements, including Sections 7(A),

7(B), 7(C) and 7(F), PBR owns all right, title and interest in and to the following marks and
slogans: 8 SECONDS, PBR 8 SECONDS, PBR GOLD, MURCIELAGO GOLD, BLACK &
BLUE, PBR BLACK & BLUE, TENACIOUS and PBR TENACIOUS.
122.

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

right, title and interest in and to the 8 SECONDS, PBR 8 SECONDS, PBR GOLD,
MURCIELAGO GOLD, BLACK & BLUE, PBR BLACK & BLUE, TENACIOUS and PBR
TENACIOUS marks and slogans.
COUNT X
(Violation of Colorado Consumer Protection Act, C.R.S. 6-1-1-101, et seq.)
123.

PBR hereby incorporates paragraphs 1-75, 106-110 and 114-117 above as though

fully set forth herein.

124.

Murcielago has engaged in deceptive trade practices in violation of Colo. Rev.

Stat. 6-105(a), (b), (c), and (u).

125.

In the course of its business, Murcielago has and is advertising its goods and

passing off its goods and services as being associated, affiliated, or originating with PBR,
knowingly making false representations as to the source, sponsorship, and approval of its goods
and services, and knowingly making false representations as to the affiliation, connection, or
association of its products with PBR.

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126.

Murcielagos deceptive trade practices have had and will continue to have a

significant negative impact on the public as actual and potential consumers of PBRs products
and services.
127.

Murcielagos deceptive trade practices have caused and continue to cause

irreparable injury to the value of the PBR Marks and slogans, as well as irreparable injury to
PBRs business, goodwill, and reputation. PBR has no adequate remedy at law.
COUNT XI
(Breach of Contract by Murcielago)
128.

PBR hereby incorporates paragraphs 1-127 as though fully set forth herein.

129.

In 2012, Murcielago attempted to trademark PBR GOLD and PBR SIGNATURE.

Such activity constitutes a direct violation of the terms of the First and Second License
Agreements.
130.

In 2012 and 2013, Murcielago registered several domain names that incorporate

certain PBR Marks. Such activity also constitutes a direct violation of the terms of the First and
Second License Agreements.
131.

Murcielago has utilized and continues to utilize the PBR Marks, slogans and trade

dress to advertise and market Murcielagos unlicensed products. Such activity constitutes a
direct violation of the First and Second License Agreements.
132.

By wrongfully asserting rights to the 8 SECONDS trademark and PBRs trade

dress and copyrights, Murcielago has willfully and wantonly breached the terms of the First and
Second License Agreements.
133.

PBR is entitled to its attorneys fees and costs pursuant to the First and Second

License Agreements.
134.

PBR has been and is being damaged by Murcielagos actions in an amount to be

proven at trial.
PRAYER FOR RELIEF
WHEREFORE, PBR prays for judgment with respect to its Complaint and Demand for
Jury Trial as follows:
A.

The Court declare that PBR is the sole and lawful owner of and owns all right,

title and interest to the marks and slogans 8 SECONDS, PBR 8 SECONDS, BLACK & BLUE,

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PBR BLACK & BLUE, PBR GOLD, MURCIELAGO GOLD, PBR TENACIOUS, and
TENACIOUS;
B.

The Court enter an Order requiring Murcielago to either assign all right, title and

interest to the Murcielago Applications to PBR, as contemplated by the First and Second License
Agreements, or abandon the Murcielago Applications and any future attempts to register 8
SECONDS, PBR 8 SECONDS, BLACK & BLUE, PBR BLACK & BLUE, PBR GOLD,
MURCIELAGO GOLD, PBR TENACIOUS, and TENACIOUS, or any other marks or slogans
which are confusingly similar to and attempt to trade upon the goodwill of PBR;
C.

The Court declare that Murcielago has been and is infringing upon PBRs valid

and subsisting trademarks and trade dress and that such infringement has been and is willful;
D.

The Court enter a preliminary and permanent injunction against Murcielago and

those in participation with it, prohibiting them from displaying, offering for sale or selling any
item affixed with any of the PBR Marks or slogans or trade dress or any marks or slogans or
trade dress which are confusingly similar to and attempt to trade upon the goodwill of PBR and
requiring those items to be permanently removed from any and all websites or other media
operated, owned or controlled by Murcielago;
E.

The Court enter a preliminary and permanent injunction against Murcielago and

those in participation with it, prohibiting them from using the PBR Marks, slogans and trade
dress, including those marks, slogans and trade dress over which PBR acquired common law
trademark rights or which are confusingly similar to and attempt to trade upon the goodwill of
PBR in the identification and description of Murcielagos goods or services, or in the advertising,
marketing, sale or other promotion of its goods and services;
F.

The Court enter a preliminary and permanent injunction against Murcielago and

those in participation with it, prohibiting them from engaging in any acts or activities directly or
indirectly calculated to trade upon the reputation and goodwill of PBR;
G.

The Court require that, pursuant to 15 U.S.C. 1116, Murcielago file with this

Court and serve upon PBR within 30 days after the entry of the injunction, a writing under oath
setting forth in detail the manner in which it has complied with the injunction;
H.

The Court enter its Order finding that this case is exceptional pursuant to 15

U.S.C. 1117 and award PBR treble damages and all costs and attorneys fees incurred in this
matter;
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I.

The Court enter its Order requiring Murcielago to deliver for destruction all

promotional materials, advertisements, signage and other communications to the public or any
other material or representations that are or may include any renditions or imitations of the PBR
Marks, slogans and trade dress, including those marks over which PBR acquired common law
rights, or any material confusingly similar to the PBR Marks;
J.

The Court require Murcielago to account for all sales made and revenues received

at any time related to merchandise sold in association with any of the PBR Marks, slogans and
trade dress, including those marks over which PBR acquired common law rights;
K.

The Court order a constructive trust be imposed on all revenues received by

Murcielago at any time related to merchandise sold in association with the PBR Marks, slogans
and trade dress, including those marks, slogans and trade dress over which PBR acquired
common law rights;
L.

The Court find that Murcielago is in breach of the First and Second License

Agreements and PBR is entitled to terminate the agreement immediately and without penalty;
M.

Awarding PBR any and all damages recoverable under contract, applicable law or

N.

Awarding PBR exemplary and punitive damages in an amount to be determined at

O.

The Court enter an Order requiring Mr. Malcom to transfer the registrations for

statute;

trial;

buypbr.com, buypbrcologne.com, classicpbr.com, getpbr.com, orderpbr.com, pbrchamp.com,

pbrcologne.com,

pbrfragrance.com,

pbrfragranceswholesale.com,

pbrfragrance.com,

pbrgold.com, pbrinfo.com, pbrking.com, pbrqueen.com, pbrtix.com, and pbrwholesale.com to

PBR;
P.

The Court enter an Order enjoining Defendants from registering any domain

name containing the letters PBR;

Q.

Awarding PBR its attorneys fees, costs, expert witness fees and expenses

incurred in connection with this action as provided for by contract, applicable rule and/or law;
R.

Awarding PBR pre- and post-judgment interest and all damages recovered by or

awarded to PBR; and,

S.

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

shall deem just and proper.

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JURY DEMAND
PBR hereby demands a jury trial on all issues so triable.
Dated this 17th day of February, 2015.
KUTAK ROCK LLP

By: s/ Juliet A. Cox

Juliet A. Cox
2300 Main Street, Suite 800
Kansas City, MO 64108
(816) 960-0090 Telephone
(816) 960-0041 Facsimile
juliet.cox@kutakrock.com
ATTORNEYS FOR PLAINTIFF

CERTIFICATE OF SERVICE
I hereby certify that on February 17, 2015, I electronically filed the foregoing with the
clerk of the court by using the CM/ECF system which will send a notice of electronic filing to
the following:
James B. Powers
Jane Bendle Lucero
HARRIS, KARSTAEDT, JAMISON & POWERS, P.C.
10333 E. Dry Creek Road, Suite 300
Englewood, Colorado 80112
jpowers@hkjp.com
jlucero@hkjp.com
ATTORNEYS FOR DEFENDANTS
s/ Juliet A. Cox
ATTORNEYS FOR PLAINTIFF

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