Monster Jam Lawsuit

Case 8:18-cv-03092-JSM-AAS Document 1 Filed 12/26/18 Page 1 of 33 PageID 1
IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF FLORIDA
FELD MOTOR SPORTS, INC., §

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Plaintiff, §
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v. § CIVIL ACTION NO. ______________
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MATTEL, INC., § JURY TRIAL DEMANDED
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Defendant. §
COMPLAINT FOR BREACH OF CONTRACT, BREACH OF IMPLIED

COVENANT OF GOOD FAITH AND FAIR DEALING, TRADE DRESS
INFRINGEMENT, UNFAIR COMPETITION, UNJUST ENRICHMENT,
VIOLATION OF THE DECEPTIVE AND
UNFAIR TRADE PRACTICES ACT, AND FRAUD
Plaintiff, Feld Motor Sports, Inc., appearing through its undersigned counsel, alleges
as follows:
NATURE OF ACTION AND JURISDICTION
1. This is an action for breach of contract and breach of implied covenant of good
faith and fair dealing under common law; for trade dress infringement and unfair competition
under the Trademark Act of 1946, as amended, 15 U.S.C. § 1051 et seq. (“Lanham Act”); for
trade dress infringement, unfair competition, and unjust enrichment under common law; for
violation of the Deceptive and Unfair Trade Practices Act, Fla. Stat. § 501.201 et seq.; and for
fraud under common law.
2. This Court has jurisdiction over the subject matter of this action pursuant to
Section 39 of the Lanham Act, 15 U.S.C. § 1121, and Chapter 85 of the Judiciary and Judicial
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Procedure Code, 28 U.S.C. §§ 1331 and 1338, and has supplemental jurisdiction over the state
law claims under 28 U.S.C. § 1367(a).
PARTIES
3. Plaintiff Feld Motor Sports, Inc. (“FMS”) is a Delaware corporation with a
principal place of business at 800 Feld Way, Palmetto, Florida 34221.
4. Upon information and belief, Defendant Mattel, Inc. (“Defendant”) is a
Delaware corporation with a principal place of business at 333 Continental Blvd., El Segundo,
California 90245.
FACTS
A. INTRODUCTION
5. For more than 25 years, FMS and its predecessors-in-interest have produced
live monster truck shows and associated goods and services under the mark MONSTER
JAM®.
6. FMS’s MONSTER JAM® shows thrill fans with driving feats and the awesome
power of the world’s most popular monster trucks. For decades, MONSTER JAM® has been
one of the biggest and most successful touring family shows in the nation, and it is still
growing.
7. Mattel is an American toy manufacturing company founded in 1945 with
headquarters in El Segundo, California. Mattel makes a wide variety of toys, which it sells to
consumers through retailers, such as Walmart and Target.
8. In 1999, FMS (through its predecessors in interest) licensed its MONSTER
JAM® property, including the MONSTER JAM® mark and the names and designs of FMS’s
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popular MONSTER JAM® trucks, to Mattel so that Mattel, as FMS’s exclusive licensee, could
manufacture toy replicas of MONSTER JAM® trucks and related toy products to consumers.
9. Mattel and FMS continued this licensing arrangement for almost twenty years.
10. In July 2017, FMS notified Mattel that it would not be renewing the license at
the end of its term on December 31, 2018. FMS provided Mattel significant advance notice to
allow for an orderly transition from Mattel to FMS’s new exclusive toy licensee.
11. Instead of completing the license term in good faith, Mattel began a course of
bad faith conduct, diverting the use of manufacturing molds developed pursuant to FMS’s
license and attendant toy production away from the licensed FMS-authorized MONSTER
JAM® toy trucks to a new start-up line by Mattel branded as “Hot Wheels® Monster Trucks”
(“Hot Wheels Monster Trucks Line.”). The Hot Wheels Monster Trucks Line toy production
includes trucks with infringing designs confusingly similar to the distinctive trade dress of
some of FMS’s famous monster trucks. Mattel also began usurping FMS’s business
opportunities with retailers in 2018 by failing to supply retailers with requested MONSTER
JAM® products licensed exclusively to Mattel, so as to better enable Mattel to engage in self-
dealing by producing and selling its own Hot Wheels Monster Trucks Line in lieu of
MONSTER JAM® products and in support of its upcoming new live event tour, “Hot Wheels
Monster Trucks Live,” opening in January 2019 as announced publicly in November 2018.
The facts supporting these allegations are detailed below.
B. MONSTER JAM®
12. FMS is the owner of U.S. Service Mark Registration No. 2,116,431, duly issued
by the United States Patent and Trademark Office (USPTO) on November 25, 1997, for the
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mark MONSTER JAM, covering entertainment services including outdoor motor sporting
events, such as car and truck racing, in International Class 41. This registration is valid,
subsisting and in full force and effect. This registration became incontestable under 15 U.S.C.
§§ 1065 and 1115(b) on April 23, 2003, when FMS’s predecessor-in-interest filed an affidavit
of incontestability pursuant to 15 U.S.C. § 1065(3) at the USPTO. The USPTO accepted the
affidavit of incontestability on November 4, 2003. A copy of Registration No. 2,116,431 is
attached hereto as Exhibit A.
13. FMS is the owner of U.S. Trademark Registration No. 3,150,449, duly issued
by the USPTO on October 3, 2006, for the mark MONSTER JAM, for various products
relating to motor sports events in International Classes 9, 25 and 28, including toy vehicles.
This registration is valid, subsisting and in full force and effect. This registration became
incontestable under 15 U.S.C. §§ 1065 and 1115(b) on October 25, 2011, when FMS filed an
affidavit of incontestability pursuant to 15 U.S.C. § 1065(3) at the USPTO. The USPTO
accepted the affidavit of incontestability on December 2, 2011. A copy of Registration
No. 3,150,449 is attached hereto as Exhibit B.
by the USPTO on November 4, 2008, for the mark GRAVE DIGGER & Design, for
entertainment services in Class 41. The registration is valid, subsisting, and in full force and
effect. This registration became incontestable under 15 U.S.C. §§ 1065 and 1115(b) on
April 4, 2014, when FMS filed an affidavit of incontestability pursuant to 15 U.S.C. § 1065(3)
at the USPTO. The USPTO accepted the affidavit of incontestability on April 19, 2014. A
copy of Registration No. 3,526,976 is attached hereto as Exhibit C.
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15. FMS is the owner of U.S. Trademark Application No. 86/862,926, for which
the USPTO has issued a Notice of Allowance on March 8, 2017, for the distinctive trade dress
of the GRAVE DIGGER monster truck covering toy trucks, model trucks, and die-cast
collectible trucks in Class 28. A copy of the Trademark Electronic Search System record for
this application and the Notice of Allowance is attached hereto as Exhibit D.
by the USPTO on July 6, 2004, for the mark MONSTER MUTT, for toy trucks in class 28.
The registration is valid, subsisting, and in full force and effect. This registration became
incontestable under 15 U.S.C. §§ 1065 and 1115(b) on September 30, 2009, when FMS filed
an affidavit of incontestability pursuant to 15 U.S.C. § 1065(3) at the USPTO. The USPTO
accepted the affidavit of incontestability on October 17, 2009. A copy of Registration
No. 2,861,600 is attached hereto as Exhibit E.
by the USPTO on May 9, 2015, for the mark MONSTER MUTT, for clothing in Class 25 and
entertainment services, namely monster truck events, in Class 41. The registration is valid,
subsisting, and in full force and effect. A copy of Registration No. 4,738,034 is attached hereto
as Exhibit F.
18. Each year, more than 325 MONSTER JAM® shows, attended by over three
million fans, are presented in stadiums and arenas throughout the United States. In addition,
MONSTER JAM® tours travel internationally each year, typically in three to four other
continents.
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19. Between 75-100 trucks compete every year in MONSTER JAM® shows in the
United States alone. Each truck features a distinctive trade dress that fans recognize and come
to MONSTER JAM® shows to see live.
20. FMS’s MONSTER JAM® shows, the MONSTER JAM® trucks, and the
products and services offered under the mark MONSTER JAM® receive extensive publicity
and promotion. Nationwide over the past three calendar years (2015-2017), FMS has spent
more than $12 million per year on print, radio, television, online, and other forms of
advertisement for its MONSTER JAM® services and products.
21. FMS’s MONSTER JAM® shows are broadcast on national television networks
throughout the United States. Most recently, MONSTER JAM® has appeared on the Fox
family of networks, with twenty-six (26) new MONSTER JAM® programs each year.
MONSTER JAM® shows are also re-aired on the Fox sports networks (i.e., Fox Sports 1, Fox
Sports 2) several times each week. For calendar years 2016 and 2017, MONSTER JAM®
averaged 199 broadcasts per year on the Fox networks, and as of November 30, 2018, there
have been a total of 128 MONSTER JAM® shows aired thus far.
22. As a result of the popularity of MONSTER JAM®, FMS receives significant
value in earned media relating to MONSTER JAM® shows and trucks. For example, print
publications of national importance, including the New York Times, have published stories
relating to, and photographs of, MONSTER JAM® shows and trucks. Moreover, MONSTER
JAM® events have been featured on various national television programs, including but not
limited to The Today Show (NBC), Fox Business News (FBN), Fox & Friends (FNN), Late
Night with Conan O'Brien (NBC), CONAN on TBS, America's Toughest Jobs (NBC),
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Extreme Makeover Home Edition (ABC), Destroy Build Destroy (Cartoon Network), Cupcake
Wars (Food Network), Ballers (HBO), and Ultimate Cake Off (TLC).
23. FMS’s revenues obtained from services and goods rendered under the
MONSTER JAM® mark and the trade dress of its MONSTER JAM® trucks were well in
excess of $150 million for the calendar years ending December 2017 and December 2018.
FMS’s revenues for licensing the MONSTER JAM® mark and the trade dress of its famous
MONSTER JAM® trucks to third parties are in excess of $5 million for the calendar year
ending December 2017 and are expected to be in excess of $4.5 million for the calendar year
ending December 2018.
C. MLA BETWEEN MATTEL AND FMS
24. Due to the popularity of MONSTER JAM® shows and trucks, FMS has
numerous high-profile companies and organizations that sponsor MONSTER JAM®.
25. FMS also has numerous high-profile companies and organizations that are
licensees of the MONSTER JAM® brand. Currently, FMS licenses the MONSTER JAM®
mark and the trade dress of its most popular trucks to over 20 companies worldwide in more
than seven product categories, including Mattel, which is the exclusive licensee for certain
replica MONSTER JAM® toy vehicles and playsets until the contract expires on December 31,
2018.
26. For almost two decades, FMS (itself and through its predecessors in interest)
has licensed its MONSTER JAM® property, including the MONSTER JAM® mark and the
names and designs of FMS’s popular MONSTER JAM® trucks to Mattel pursuant to a
Merchandise License Agreement (the “MLA”). Among the MONSTER JAM® trucks
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produced and sold under the MLA as a part of the HOT WHEELS® brand owned by Mattel,
are FMS’s enormously popular GRAVE DIGGER®, MONSTER MUTT® ROTTWEILER,
as well as a STARS & STRIPES edition of GRAVE DIGGER and other popular MONSTER
JAM® trucks such as MAXIMUM DESTRUCTION®, EL TORO LOCO®, and MOHAWK
WARRIOR®.
27. The current version of the worldwide MLA between the parties was signed in
2013, with an effective Term from January 1, 2014 to December 31, 2018. Pursuant to the
MLA, Mattel has produced and sold, under license from FMS, vehicle replicas and related
accessories (among other products) bearing the names and designs of popular MONSTER
JAM® trucks.
28. The MLA establishes that any intellectual property (including artwork and
designs) used in the development of the models for these trucks is owned by FMS, including
the “Property” (namely “the artwork, images, copyrights, logos, trademarks, paint schemes,
designs, accessories, names, likenesses, nicknames, sounds, helmets and uniforms, and all
custom features associated with the MONSTER JAM® trucks” listed in Schedule 1 to
Exhibit A) and the “Property Elements” (artwork and other materials supplied by FMS in the
proprietary Style Guide).
29. The MLA also contains an assignment to FMS of any and all trademarks,
service marks, trade dress, copyrights, equities, goodwill, titles or other rights in and to the
Property and Property Elements which may have vested in Mattel as a result of its activities
under the MLA.
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30. The MLA expressly forbids Mattel from taking “any action which may harm or
adversely affect [FMS’s] rights or goodwill in the Property and Property Elements, including
without limitation using or registering a name or mark which is identical to or confusingly
similar to any name or mark included in the Property and Property Elements.”
31. The MLA further requires Mattel to use “commercially reasonable efforts to
manufacture, sell, distribute, advertise, and promote the Licensed Articles during the term”
and to “make and maintain adequate arrangements of the distribution of the Licensed Articles.”
32. The MLA states that the Agreement shall be governed by the laws of the State
of New York, or where applicable, the laws of the United States as interpreted by federal courts
in the state of New York.
D. FMS’S TRADE DRESS RIGHTS
33. FMS owns many of the most widely recognizable monster trucks in the world,
including GRAVE DIGGER®, MAXIMUM DESTRUCTION®, EL TORO LOCO®, and
MONSTER MUTT®. Many of these trucks, including GRAVE DIGGER® and MONSTER
MUTT®, are so famous that FMS has introduced a family of related trucks, such as SON-
UVA DIGGER®, GRAVE DIGGER THE LEGEND®, MONSTER MUTT® ROTTWEILER
and MONSTER MUTT DALMATION.
34. Among the monster trucks presented at FMS’s MONSTER JAM® shows and
licensed to Mattel are the enormously popular GRAVE DIGGER® and MONSTER MUTT®
ROTTWEILER trucks (shown below):
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35. The GRAVE DIGGER® monster truck is one of the world’s best-known
MONSTER JAM® trucks, originally debuting in 1982. FMS has for many years used a
famous, distinctive, and non-functional trade dress in connection with its GRAVE DIGGER®
monster truck (the “GRAVE DIGGER Trade Dress”), which was licensed to Mattel for use in
connection with replica vehicles and playsets. Elements of this trade dress include the
distinctive green and purple color scheme, the design and placement of green and yellow
flames on the hood, roof, and side of the vehicle, the green chassis, a series of black tombstones
in green vapor, a white full moon surrounding a black leafless tree and a green and red haunted
house and surrounded by purple, and the arched wording “GRAVE DIGGER” and “BAD TO
THE BONE” appearing on the roof of the truck. Representative samples of the GRAVE
DIGGER Trade Dress as used by Mattel are shown below:
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36. The GRAVE DIGGER Trade Dress, particularly when considered as a whole,
is not functional and serves only to uniquely identify the source of the truck as being part of
the MONSTER JAM® line.
37. The GRAVE DIGGER Trade Dress constitutes a service mark for FMS’s
entertainment services, as well as product packaging for FMS’s licensed goods, and is
inherently distinctive.
38. Additionally, due to FMS’s extensive promotional efforts, the consuming
public recognizes the distinctive, non-functional GRAVE DIGGER Trade Dress as an
indicator of origin and as a symbol of quality and value. As a result, FMS’s GRAVE DIGGER
Trade Dress has acquired distinctiveness.
39. In light of FMS’s long use and promotion of the GRAVE DIGGER Trade
Dress, FMS has acquired valuable common law rights in the GRAVE DIGGER Trade Dress.
40. FMS’s MONSTER MUTT® ROTTWEILER monster truck is also a well-
known monster truck, originally debuting in 2011. FMS has for many years used a distinctive,
non-functional trade dress in connection with its MONSTER MUTT® ROTTWEILER
monster truck (the “MONSTER MUTT ROTTWEILER Trade Dress”), which was licensed to
Mattel for use in connection with replica vehicles and playsets. Elements of this trade dress
include a distinctive red, brown, and black color scheme, the placement and design of sharp
teeth along the front and side of the hood, and black eyes and a black line (resembling a snout)
running down the hood of the vehicle. Representative samples of the MONSTER MUTT
ROTTWEILER Trade Dress are shown below:
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41. The MONSTER MUTT ROTTWEILER Trade Dress, particularly when
considered as a whole, is not functional and serves only to uniquely identify the source of the
truck as part of the MONSTER JAM® line.
42. The MONSTER MUTT ROTTWEILER Trade Dress constitutes a service mark
for FMS’s entertainment services, as well as product packaging for FMS’s licensed goods, and
is inherently distinctive.
43. Additionally, due to FMS’s extensive promotional efforts, the consuming
public recognizes the distinctive, non-functional MONSTER MUTT ROTTWEILER Trade
Dress as an indicator of origin and as a symbol of quality and value. As a result, FMS’s
MONSTER MUTT ROTTWEILER Trade Dress has acquired distinctiveness.
44. As a result of FMS’s long use and promotion of the MONSTER MUTT
ROTTWEILER Trade Dress, FMS has acquired valuable common law rights in the
MONSTER MUTT ROTTWEILER Trade Dress.
E. INTRODUCTION TO MATTEL’S UNLAWFUL ACTIVITIES
45. In July 2017, FMS notified Mattel that it would not be renewing the MLA after
its current term concludes on December 31, 2018.
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46. After receiving this notification, Mattel embarked on a deliberate course to
prematurely decrease and then stop production of FMS’s licensed products prior to the
expiration of the MLA’s term in order to use the molds and production resources to make,
debut and sell its own Hot Wheels Monster Trucks Line.
47. By doing this, Mattel withheld supply of FMS’s licensed goods from the market
without the knowledge or consent of FMS in breach of the MLA.
48. In addition, Mattel unlawfully used the trade dress of two of FMS’s most
popular trucks in the production of the Hot Wheels Monster Trucks Line (namely GRAVE
DIGGER® and MONSTER MUTT® ROTTWEILER), thereby infringing on FMS’s trade
dress rights. By design, the infringing toy vehicles use confusingly similar trade dresses as
those owned by FMS. Mattel did not disclose this to FMS, but instead, announced and began
selling its Hot Wheels Monster Trucks Line in or about June 2018.
49. Mattel’s actions were taken in an attempt to confuse consumers into believing
that Mattel’s “Monster Trucks” products were authorized or affiliated MONSTER JAM®
products.
F. MATTEL’S TRADE DRESS INFRINGEMENT
50. Within its Hot Wheels Monster Trucks Line, that it launched at retail in the
Summer of 2018, Mattel introduced its own monster truck toys called “BONE SHAKER” and
“HOTWEILER,” (the “Infringing Designs.”). These Infringing Designs are confusingly
similar to FMS’s GRAVE DIGGER Trade Dress and MONSTER MUTT ROTTWEILER
Trade Dress, as shown by the side-by-side comparisons below:
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FMS’S TRADE DRESS INFRINGING DESIGNS
GRAVE DIGGER® BONE SHAKER
FMS’S TRADE DRESS INFRINGING DESIGNS
MONSTER MUTT® ROTTWEILER Mattel HOTWEILER
51. Before 2017, Mattel had previously manufactured and sold “BONE SHAKER”
and “HOTWEILER” toy vehicles. Tellingly, these earlier toys bore no resemblance to FMS’s
GRAVE DIGGER or MONSTER MUTT ROTTWEILER Trucks during the term of the MLA.
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52. However, after being informed that FMS did not intend to renew the MLA,
Mattel intentionally redesigned the “BONE SHAKER” and “HOTWEILER” trucks to evoke
an association with FMS’s GRAVE DIGGER Trade Dress and MONSTER MUTT
ROTTWEILER Trade Dress. This striking evolution is shown through the side-by-side
comparison of the prior versions of BONE SHAKER and HOTWEILER with the new, current
Infringing Designs of these products and FMS’s GRAVE DIGGER Trade Dress and
MONSTER MUTT ROTTWEILER Trade Dress.
Original BONE SHAKER Infringing Design – FMS’s GRAVE DIGGER Trade

BONE SHAKER Dress
Original HOTWEILER Infringing Design – FMS’S MONSTER MUTT Trade

HOTWEILER Dress
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53. The Infringing Designs copy elements from the FMS’s GRAVE DIGGER
Trade Dress and MONSTER MUTT ROTTWEILER Trade Dress, including distinctive color
schemes and the design and placement of distinctive elements (e.g., the flames of the GRAVE
DIGGER Trade Dress and the teeth of the MONSTER MUTT ROTTWEILER Trade Dress),
to create confusingly similar overall commercial impressions.
54. Mattel adopted the Infringing Designs and is using them in commerce with full
knowledge and in conscious disregard of FMS’s rights, as evidenced in part by the fact that
Mattel had complete access to FMS’ proprietary trade dress designs through the Style Guide
provided to Mattel under the MLA.
55. Mattel’s conscious disregard for FMS’s rights is not only demonstrated by its
sudden adoption of the Infringing Designs, but also by its introduction of other toy monster
truck products that evoke authorized MONSTER JAM® products.
56. For example, although upon information and belief Mattel had never offered a
“STARS & STRIPES” monster truck other than the authorized MONSTER JAM® “STARS
& STRIPES” line, it released a similar “REV TREDZ STARS & STRIPES” monster truck as
a part of its Hot Wheels Monster Trucks line after learning that the MLA would not be renewed
(a side-by-side comparison is shown below).
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MONSTER JAM® STARS & STRIPES REV TREDZ STARS & STRIPES
57. Similarly, Mattel also recently released a new line of “BLIZZARD BASHERS”
trucks which bear an “ice-themed” design and paint scheme. Mattel’s “BLIZZARD
BASHERS” trucks closely resemble FMS’s line of “FIRE & ICE” trucks which FMS debuted
at the May 2018 Licensing Expo in Las Vegas (a side-by-side comparison is shown below).
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MONSTER JAM® FIRE & ICE BLIZZARD BASHERS
58. On November 12, 2018, Mattel announced that it will launch a “Hot Wheels
Monster Trucks Live” tour in January 2019. The announcement of the live tour directly relates
to Mattel’s actions that improperly diverted production and sale from FMS licensed
MONSTER JAM® monster truck toys to Mattel’s own branded monster truck toys, which it
wanted to introduce into the marketplace in advance of its live tour.
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59. According to the press release, the Hot Wheels Monster Trucks Live show will
feature “everyone’s favorite Hot Wheels Monster Trucks,” which could include trucks
featuring the Infringing Designs and/or trucks previously sold as part of the MONSTER JAM
line.
60. According to its press release, Mattel is partnering with Raycom-Legacy
Content Company to launch the Hot Wheels Monster Trucks Live tour. Raycom-Legacy is in
turn a partnership between Raycom Sports and Legacy Motorsports Events. Legacy
Motorsports Events’ co-founders are former FMS executives, and thus are intimately familiar
with FMS’s MONSTER JAM® live shows, the actual FMS-owned monster trucks, and the
toys based on them.
61. These actions reflect the deliberate course of conduct Mattel has embarked upon
to confuse consumers into believing that the Hot Wheels Monster Trucks line is still affiliated
with, or sponsored or approved by, FMS in order to divert sales from genuine MONSTER
JAM® products.
62. Upon information and belief, products featuring the Infringing Designs are
being offered to companies for sale at stores in Florida (and elsewhere), including within this
judicial district.
63. FMS did not authorize Mattel to use the Infringing Designs, or any other
confusingly similar marks or trade dress.
64. Mattel’s use of the Infringing Designs is meant to trade upon the goodwill and
substantial recognition associated with FMS’s trade dresses.
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65. Mattel’s use of the Infringing Designs is an attempt to associate itself and its
products with FMS or otherwise trade upon FMS’s goodwill and reputation relating to
MONSTER JAM® products and services.
66. Mattel profits from its unlawful use of the Infringing Designs, in that consumers
will purchase BONE SHAKER or HOTWEILER monster trucks, believing that they are
purchasing trucks associated with MONSTER JAM®, GRAVE DIGGER®, and MONSTER
MUTT® ROTTWEILER.
67. FMS commenced use of the GRAVE DIGGER Trade Dress and MONSTER
MUTT ROTTWEILER Trade Dress long before Mattel commenced use of the Infringing
Designs.
68. Mattel’s introduction of the Infringing Designs constitutes a breach of the
MLA, which prohibits Mattel from taking “any action which may harm or adversely affect
[FMS’s] rights or goodwill in the Property and Property Elements, including without limitation
using or registering a name or mark which is identical to or confusingly similar to any name
or mark included in the Property and Property Elements.”
G. MATTEL’S UNLAWFUL FAILURE TO SUPPLY RETAILERS
69. In addition to and in tandem with Mattel’s introduction of the Infringing
Designs, Mattel breached the MLA by failing to use “commercially reasonable efforts to
manufacture, sell, distribute, advertise, and promote the Licensed Articles during the term”
and to “make and maintain adequate arrangements of the distribution of the Licensed Articles.”
70. Until the end of the MLA’s term on December 31, 2018, Mattel was obligated
to continue supplying retailers with sufficient stock of authorized MONSTER JAM® trucks
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to meet consumer demand, particularly in consideration of the importance of the holiday
season and the final quarter of the year for retail sales.
71. Upon information and belief, Mattel is failing to provide adequate supply of
authorized MONSTER JAM® trucks to retailers, despite retailers’ demand for these products
and despite its obligation to do so under the MLA.
72. One retailer reported that Mattel refused to provide the requested amount of
inventory, and as such, the retailer had to settle for ordering almost 100,000 units less than it
believed it could reasonably sell during the remainder of the year.
73. Another retailer in Australia complained that Mattel’s refusal to supply
sufficient product led to empty store shelves prior to the important holiday sales season (as
shown in the photo below):
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74. Notwithstanding that the MLA provides for an agreed six-month selloff period
beginning after the MLA term expires on December 31, 2018, Mattel has prematurely depleted
product supply prior to the authorized selloff period allotted in 2019 by the MLA, thereby
frustrating the intended purpose and breaching the terms of the MLA.
75. Upon information and belief, at some point in 2018, Mattel diverted at least
some or all of the molds it had developed pursuant to the MLA from the manufacture of
licensed MONSTER JAM® toy trucks to manufacture of its own Hot Wheels Monster Trucks
Line.
76. For example, previously Mattel had been making and selling larger scale
MONSTER JAM® trucks under its “REV TREDZ” collection for some time during the term
of the MLA. An example of the FMS ZOMBIE® MONSTER JAM® truck is shown below.
77. However, following FMS’ notification that it would not renew the MLA, Mattel
then introduced a “REV TREDZ” collection within its Hot Wheels Monster Trucks Line. An
example of the Mattel “REV TREDZ” BONE SHAKER vehicle (featuring one of the
Infringing Designs) is shown below.
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78. A casual comparison between the MONSTER JAM® licensed “REV TREDZ”
vehicle and Mattel’s recently-introduced toy featuring the Infringing Design shows that Mattel
has used the MONSTER JAM® mold for the chassis on its Hot Wheels Monster Trucks Line
vehicles, in violation of the MLA.
79. Similarly, Mattel had been making and selling BONE SHAKER toy trucks
under the MONSTER JAM® line, but then introduced BONE SHAKER toy trucks under the
Hot Wheels Monster Trucks Line that are virtually identical in shape and construction to the
BONE SHAKER toy trucks previously sold under the MONSTER JAM® line.
80. Thus, FMS believes Mattel is using the same molds to make these Hot Wheels
Monster Trucks Line products that it used to make MONSTER JAM® products.
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81. FMS further believes that there was sufficient retailer demand for MONSTER
JAM® toy trucks during the term of the MLA such that it was commercially unreasonable for
Mattel to suppress the MONSTER JAM® toy supply and sales in order to secretly divert the
use of these molds to manufacture its directly competing Hot Wheels Monster Trucks Line.
82. Upon information and belief, Mattel’s sales numbers provided to FMS for
licensed MONSTER JAM® trucks for the third quarter of 2018 were well below Mattel’s
projections for the year and its sales in comparative earlier quarters.
83. Upon information and belief, Mattel’s sales numbers for licensed MONSTER
JAM® trucks for the fourth quarter of 2018 will similarly be well below Mattel’s projections
for the year.
84. Mattel’s failure to adequately produce and supply authorized MONSTER
JAM® trucks in the licensed territory represents a breach of the MLA and further indicates
that Mattel did not act in good faith as FMS’s exclusive licensee for the remainder of the term
of the MLA.
85. Indeed, it is clear that although Mattel, as FMS’s exclusive licensee, was
required to use commercially reasonable efforts to manufacture and supply authorized
MONSTER JAM® products to retailers until the end of the MLA term, it was instead focused
on manufacturing and promoting its own Hot Wheels Monster Trucks Line, through both its
introduction of infringing and directly competitive products and its creation of a directly
competitive monster truck show in conflict with its obligations under the MLA.
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86. Mattel’s actions reflect a deliberate course of conduct to deceive consumers and
undersupply retailers in an attempt to replace the licensed MONSTER JAM® products with
the Hot Wheels Monster Trucks Line products in the minds and shopping carts of consumers.
87. Upon learning of Mattel’s breaches of the MLA, FMS notified Mattel of the
breaches by letter on September 10, 2018. The MLA requires that notice be sent, followed by
a 30-day cure period be allowed, which FMS provided.
88. Mattel failed to cure these breaches within the specified time period in the MLA
and continues to engage in its unlawful activities.
89. Mattel refused to provide information confirming whether it was using
commercially reasonable efforts to supply retailers, despite repeated requests by FMS.
90. For example, on October 5, 2018, FMS requested that Mattel provide an
inventory of how many MONSTER JAM® products were on hand, which Mattel refused to
provide. This failure constitutes a breach of the MLA, which requires Mattel, upon request, to
provide a statement showing the number of licensed articles sold, on hand or in process.
91. Similarly, on at least on October 1, October 29, November 5, and November 21,
2018, Mattel affirmatively represented to FMS that it was using commercially reasonable
efforts, despite the fact that, upon information and belief, it was aware by that time that it had
intentionally not done so.
92. Similarly, on October 4, 2018, Mattel falsely represented that a retailer was
simply voluntarily managing its own inventory, despite, upon information and belief, being
aware at that time that Mattel had refused to supply the retailer with the requested inventory
(as discussed in paragraph 72).
25
93. By failing to use commercially reasonable efforts to supply retailers, while
misrepresenting to FMS that it was, in fact, doing so, Mattel caused FMS to lose sales during
the Term, including the holiday season (which is FMS’s most important quarter for the sale of
licensed toys).
94. Moreover, while Mattel secretly and deliberately undersupplied MONSTER
JAM® products to retailers, it simultaneously insisted that it had not breached the agreement,
and as such, should be entitled to remain the exclusive licensee of FMS MONSTER JAM®
toy vehicles through the remainder of the term, thereby unlawfully blocking market access to
FMS for its MONSTER JAM® toy product line.
95. The parties engaged in settlement discussions regarding FMS’s trade dress
claims until Mattel failed to respond in early December 2018.
H. EFFECT OF MATTEL’S UNLAWFUL ACTIVITIES
96. Mattel’s acts complained of herein have been willful and deliberate.
97. Mattel’s unauthorized use of the Infringing Designs is likely to cause confusion,
to cause mistake, and/or to deceive customers and potential customers of the parties, at least
as to some affiliation, connection, or association of Mattel with FMS, or as to the origin,
sponsorship, or approval of Mattel’s Hot Wheels Monster Trucks Line with FMS’s authorized
MONSTER JAM® trucks.
98. Mattel’s unauthorized use of the Infringing Designs falsely designates the
origin of its products, and falsely and misleadingly describes and represents facts with respect
to Mattel and its goods and services.
26
99. Mattel’s unauthorized use of the Infringing Designs enables Mattel to trade on
and receive the benefit of goodwill built up at great labor and expense by FMS over many
years, and to gain acceptance for its products not solely on its own merits, but on the reputation
and goodwill of FMS and its trade dresses and products.
100. Mattel’s unauthorized use of the Infringing Designs unjustly enriches Mattel at
FMS’s expense. Mattel has been and continues to be unjustly enriched by obtaining a benefit
from FMS by taking undue advantage of FMS and its goodwill. Specifically, Mattel has taken
undue advantage of FMS by trading on and profiting from the goodwill in the trade dress
developed and owned by FMS, resulting in Mattel wrongfully obtaining a monetary and
reputational benefit for its own business and goods and services.
101. By substituting and selling its own Hot Wheels Monster Trucks Line for that of
its licensor, FMS, to at least one retailer, Mattel further harmed FMS by avoiding royalties that
would have been owed to FMS for the sale of monster trucks.
102. Mattel’s unauthorized use of the Infringing Designs removes from FMS the
ability to control the nature and quality of the products and services provided under the trade
dress of FMS’s MONSTER JAM® trucks, and places the valuable reputation and goodwill of
FMS in the hands of Mattel, over whom FMS has no control.
103. Unless these acts of Mattel are restrained by this Court, they will continue, and
they will continue to cause irreparable injury to FMS and to the public for which there is no
adequate remedy at law.
27
COUNT I: BREACH OF CONTRACT
104. FMS repeats the allegations contained in paragraphs 1-103 as if fully set forth
herein.
105. Mattel’s sale of the Infringing Designs, its failure to use commercially
reasonable efforts to manufacture, distribute, and sell authorized MONSTER JAM® trucks
during the licensed term, and its failure to provide the requested inventory of products violates
the terms of the MLA.
106. The acts of Mattel complained of herein constitute material breaches of contract
in violation of New York common law.
107. Mattel’s breaches of contract have damaged FMS.
COUNT II: BREACH OF IMPLIED COVENANT

OF GOOD FAITH AND FAIR DEALING
108. FMS repeats the allegations contained in paragraphs 1-103 as if fully set forth
herein.
109. Alternatively, Mattel’s failure to adequately stock retailers during the licensed
term of the MLA was a conscious and deliberate act which unfairly frustrated the agreed
common purpose of the MLA and undermined the reasonable expectations of FMS, thereby
depriving FMS of the benefits of the agreement during the remainder of the term.
110. Mattel’s actions constitute a breach of the implied covenant of good faith and
fair dealing under common law.
COUNT III: VIOLATION OF LANHAM ACT SECTION 43(a)
111. FMS repeats the allegations contained in paragraphs 1-46, 48-67, 85-86, 88,
and 96-103 as if fully set forth herein.
28
112. The acts of Mattel complained of herein constitute trade dress infringement,
false designation of origin, false or misleading descriptions or representations of fact, and
unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
113. FMS has been damaged by Mattel’s acts of trade dress infringement, false
designation or origin, false or misleading descriptions or representations of fact, and unfair
competition.
COUNT IV: COMMON LAW TRADE DRESS INFRINGEMENT

AND UNFAIR COMPETITION
115. The acts of Mattel complained of herein constitute trade dress infringement and
unfair competition in violation of Florida common law.
COUNT V: UNJUST ENRICHMENT
117. The acts of Mattel complained of herein constitute unjust enrichment of Mattel
at the expense of FMS.
COUNT VI: DECEPTIVE AND UNFAIR TRADE PRACTICES ACT
119. Mattel’s acts of false designation or origin, false or misleading descriptions or
representations of fact, and unfair competition caused damage to FMS.
29
120. Mattel’s actions constitute a violation of the Deceptive and Unfair Trade
Practices Act, Fla. Stat. § 501.201 et seq..
COUNT VII: FRAUD
121. FMS repeats the allegations contained in paragraphs 1-32, and 69-95 as if fully
set forth herein.
122. Upon information and belief, Mattel’s actions in falsely representing to FMS
on at least October 1, October 29, November 5, and November 21, 2018 that it was using
commercially reasonable efforts to supply retailers despite the fact that it was diverting
production resources and molds, and knew that retailers were running out of stock, as well as
its material omissions and failure to supply information regarding retailer supply constitute
false statements of fact that Mattel knew to be false at the time they were made.
123. Upon information and belief, Mattel’s representation to FMS that a retailer had
voluntarily chosen to manage its own inventory, despite knowing that Mattel had refused to
supply that retailer with the requested inventory and that the retailer was running out of stock,
constitutes a false statement of fact that Mattel knew to be false at the time it was made.
124. Mattel made these false statements in order to induce FMS to continue the
license term while Mattel created its own line of competing products and competing live show.
125. In reliance on these statements and omissions, FMS continued the license until
it became clear that these statements were false, at which point it filed this suit.
126. Mattel’s actions have resulted in significant damage to FMS, including
significantly reduced sales at the least during the third and fourth quarter of 2018.
127. Mattel’s actions complained of herein were willful and deliberate.
30
128. The acts of Mattel complained of herein constitute fraud in violation of Florida
common law.
REQUEST FOR RELIEF
WHEREFORE, FMS requests that:
(a) Mattel, its officers, agents, servants, employees, and attorneys, and
other persons who are in active concert or participation with any of them, be permanently
enjoined and restrained from using the Infringing Designs and any other mark, name, or design
confusingly similar to or likely to cause dilution of FMS’s GRAVE DIGGER Trade Dress,
MONSTER MUTT ROTTWEILER Trade Dress, including the REV TREDZ STARS &
STRIPES designs, and BLIZZARD BASHERS designs, and from any attempt to retain any
part of the goodwill misappropriated from FMS;
(b) Mattel, its officers, agents, servants, employees, and attorneys, and
other persons who are in active concert or participation with any of them, be required to deliver
up and destroy all signage, products, molds, promotional material, internet postings and
advertisements, and any other materials bearing or using the Infringing Designs and/or any
other mark, name, or design that is confusingly similar to or likely to cause dilution of FMS’s
GRAVE DIGGER Trade Dress, MONSTER MUTT ROTTWEILER Trade Dress, including
the REV TREDZ STARS & STRIPES designs, and BLIZZARD BASHERS designs;
(c) Mattel, its officers, agents, servants, employees, and attorneys, and
other persons who are in active concert or participation with any of them, be permanently
enjoined and restrained from making, distributing, selling, or otherwise referring to Licensed
Articles featuring the Property or Property Elements (as defined in the MLA);
31
(d) Mattel, its officers, agents, servants, employees, and attorneys, and
other persons who are in active concert or participation with any of them, be required to deliver
up and destroy all signage, products, molds, promotional material, internet postings and
advertisements, and any other materials bearing, using, or advertising the Property or Property
Elements (as defined in the MLA), or Licensed Articles bearing the Property or Property
Elements;
(e) Mattel be ordered to file with this Court and to serve upon FMS, within
thirty (30) days after the entry and service on Mattel of an injunction, a report in writing and
under oath setting forth in detail the manner and form in which Mattel has complied with the
injunction;
(f) FMS recover all damages it has sustained as a result of Mattel’s
unlawful activities, and that said damages be trebled;
(g) An accounting be directed to determine Mattel’s profits resulting from
its unlawful activities and that such profits be paid over to FMS, increased as the Court finds
to be just under the circumstances of this case;
(h) FMS recover punitive damages as a result of Mattel’s fraudulent
conduct;
(i) FMS recover its reasonable attorneys’ fees;
(j) FMS recover its costs of this action and prejudgment and post-judgment
interest; and
(k) FMS recover such other relief as the Court may deem appropriate.
32
JURY DEMAND
FMS demands a jury trial in accordance with Federal Rule of Civil Procedure 38(b).
Respectfully submitted,
Dated: /s/ A. Brian Albritton

A. Brian Albritton
Florida Bar No. 0777773
brian.albritton@phelps.com
Michael S. Hooker
Florida Bar No. 0330655
michael.hooker@phelps.com
PHELPS DUNBAR LLP
100 South Ashely Drive, Suite 2000
Tampa, Florida 33602
ph: (813) 472-7550; fax: (813) 472-7570
TRIAL COUNSEL
William G. Barber
(pro hac vice pending)
bbarber@pirkeybarber.com
Alexandra H. Bistline
(pro hac vice pending)
abistline@pirkeybarber.com
PIRKEY BARBER PLLC
600 Congress Avenue, Suite 2120
Austin, Texas 78701
ph: (512) 322-5200; fax: (512) 322-5201
ATTORNEYS FOR PLAINTIFF FELD

MOTOR SPORTS, INC.
33
PD.25128583.1
Case 8:18-cv-03092-JSM-AAS Document 1-1 Filed 12/26/18 Page 1 of 3 PageID 34
EXHIBIT A
EXHIBIT B
EXHIBIT C
EXHIBIT D
12/26/2018 Trademark Electronic
Case 8:18-cv-03092-JSM-AAS Document 1-4 Filed Search12/26/18
System (TESS)Page 2 of 5 PageID 43
United States Patent and Trademark Office
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Trademarks > Trademark Electronic Search System (TESS)
TESS was last updated on Wed Dec 26 05:21:48 EST 2018
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TESS)
Word Mark GRAVE DIGGER BAD TO THE BONE

Goods and IC 028. US 022 023 038 050. G & S: Toy trucks, model trucks, and die-cast collectible trucks
Services
IC 041. US 100 101 107. G & S: Entertainment services, namely, performing and competing in monster truck
events
Mark
Drawing (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Code
Design 01.15.03 - Fire (flames), other than emanating from objects, words, numbers, fireplaces or candles; Flames, other
Search Code than flames emanating from objects, words, numbers, fireplaces or candles
01.15.05 - Smoke; Steam; Vapor
02.11.10 - Bones, human; Human skeletons, parts of skeletons, bones, skulls; Skulls, human
05.01.05 - Leafless trees and bushes
07.01.06 - Other houses
07.09.25 - Gravestones; Leaning Tower of Pisa; Space needle; Tombstones; Totem poles
18.05.05 - Armored trucks; Cabs, tractor-trailer; Garbage trucks; Pickup trucks; Tanker trucks; Tow trucks; Trucks,
heavy hauling; Trucks, pick-up; Trucks, tanker; Vans
26.17.12 - Angles (geometric); Chevrons
Serial
86862926
Number
Filing Date December 31, 2015
Current
1B
Basis
Original
1A
Filing Basis
Published for
January 10, 2017
Opposition
Owner (APPLICANT) Feld Motor Sports, Inc. CORPORATION DELAWARE 8607 Westwood Center Drive Vienna
VIRGINIA 22182
Attorney of
Tara M. Vold
Record
Prior 2375181;2390991;3526976
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4802:vh86kz.2.1 1/2
12/26/2018 Trademark Electronic
Case 8:18-cv-03092-JSM-AAS Document 1-4 Filed Search12/26/18
System (TESS)Page 3 of 5 PageID 44
Registrations
Description The color(s) black, white, red, purple, green, grey and yellow is/are claimed as a feature of the mark. The mark
of Mark consists of a design applied to the exterior of a performance truck, including the elements contained on the front,
top and both sides of the truck for the applied-for goods and services. The broken lines depicting the outline of the
body, chassis and the headlight portions of the truck indicate placement of the mark and are not claimed as part of
the mark. The artwork on the entire exterior of the truck has a black background; with the same artwork on each
side; i.e., the top left of side panel artwork contains the wording "GRAVE DIGGER" in white lettering with red
outline with purple vapor in the background next to a ghost-like skull in purple and leafless trees with waving
branches in black. The side panel artwork which appears under the passenger door contains a white full moon
surrounded by purple concentric circles. In the center of the white moon is a black leafless tree and green and red
haunted house. The bottom right of the side panel artwork contains a series of black tombstones in a pattern of
swirling green vapor. The side of the hood is visible from the side and includes green, red and yellow flames on
the black background. The artwork on the hood of the truck contains a grey chevron column outlined in red flanked
on both sides with green and yellow flames on the hood of the truck. The front end of the top truck artwork also
contains green and yellow flames with the arched wording "GRAVE DIGGER" in white lettering with red outline
underneath the flames. The angled back end of the top truck artwork contains the wording "BAD TO THE BONE"
in white lettering with red outline. The headlights are represented in red, surrounded with red, black and yellow
flames, and the chassis is represented in green.
Type of Mark TRADEMARK. SERVICE MARK
Register PRINCIPAL
Live/Dead
LIVE
Indicator
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http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4802:vh86kz.2.1 2/2
From: TMOfficialNotices@USPTO.GOV
Sent: Wednesday, March 8, 2017 04:45 PM
To: testing_tram@uspto.gov
Cc: tmvirginia@pirkeybarber.com
Subject: Official USPTO Notice of Allowance: U.S. Trademark SN 86862926: GRAVE DIGGER BAD TO THE BONE (Stylized/Design): Docket/Reference No.
FELD006USF1
NOTICE OF ALLOWANCE (NOA)
ISSUE DATE: Mar 7, 2017
U.S. Serial Number: 86862926

Mark: GRAVE DIGGER BAD TO THE BONE (Stylized/Design)
Docket/Reference Number: FELD006USF1
No opposition was filed for this published application. The issue date of this NOA establishes the due date for the filing of a Statement of Use (SOU) or a Request
for Extension of Time to file a Statement of Use (Extension Request). WARNING: An SOU that meets all legal requirements must be filed before a registration
certificate can issue. Please read below for important information regarding the applicant's pending six (6) month deadline.
SIX (6)-MONTH DEADLINE: Applicant has six (6) MONTHS from the NOA issue date to file either:
- An SOU, if the applicant is using the mark in commerce (required even if the applicant was using the mark at the time of filing the application, if use basis was not
specified originally); OR
- An Extension Request, if the applicant is not yet using the mark in commerce. If an Extension Request is filed, a new request must be filed every six (6)
months until the SOU is filed. The applicant may file a total of five (5) extension requests. WARNING: An SOU may not be filed more than thirty-six (36) months from
when the NOA issued. The deadline for filing is always calculated from the issue date of the NOA.
How to file SOU and/or Extension Request:

Use the Trademark Electronic Application System (TEAS). Do NOT reply to this e-mail, as e-mailed filings will NOT be processed. Both the SOU and Extension Request have
many legal requirements, including fees and verified statements; therefore, please use the USPTO forms available online at https://www.uspto.gov/trademarks-application-
process/filing-online (under the "INTENT-TO-USE (ITU) FORMS" category) to avoid the possible omission of required information. If you have questions about this notice,
please contact the Trademark Assistance Center at 1-800-786-9199.
For information on how to (1) divide an application; (2) delete goods/services (or entire class) with a Section 1(b) basis; or (3) change filing basis, see
https://www.uspto.gov/trademarks-getting-started/process-overview/additional-information-post-notice-allowance-process.
FAILURE TO FILE A REQUIRED DOCUMENT OUTLINED ABOVE DURING THE APPROPRIATE TIME PERIOD WILL RESULT IN THE ABANDONMENT OF THIS
APPLICATION.
REVIEW APPLICATION INFORMATION FOR ACCURACY
If you believe this NOA should not have issued or correction of the information shown below is needed, you must submit a request to the Intent-to-Use Unit. Please use the
"Post-Publication Amendment" form under the "POST-APPROVAL/PUBLICATION/POST NOTICE OF ALLOWANCE (NOA) AMENDMENT FORMS" category, available at
https://www.uspto.gov/trademarks-application-process/filing-online/post-approvalpublicationpost-notice-allowance-noa. Do NOT reply to this e-mail, as e-mailed filings will NOT
be processed.
Serial Number: 86862926

Mark: GRAVE DIGGER BAD TO THE BONE (Stylized/Design)
Docket/Reference Number: FELD006USF1
Owner: Feld Motor Sports, Inc.
8607 Westwood Center Drive
Vienna , VIRGINIA 22182
Correspondence Address: TARA M. VOLD
PIRKEY BARBER PLLC
8251 Greensboro Drive, Suite 340
McLean VA 22102
This application has the following bases, but not necessarily for all listed goods/services:
Section 1(a): NO Section 1(b): YES Section 44(e): NO
GOODS/SERVICES BY INTERNATIONAL CLASS
028 - Toy trucks, model trucks, and die-cast collectible trucks -- FIRST USE DATE: NONE; -- USE IN COMMERCE DATE: NONE
041 - Entertainment services, namely, performing and competing in monster truck events -- FIRST USE DATE: NONE; -- USE IN COMMERCE DATE: NONE
ALL OF THE GOODS/SERVICES IN EACH CLASS ARE LISTED.
Appropriate Specimens for Goods and/or Services: A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods. See
TMEP §§904.03 et seq. A service mark specimen should be an advertisement, sign, brochure, website printout or other image that shows the mark used in the actual sale or
advertising of the services. See TMEP §§1301.04 et seq. For an instructional video on what is an appropriate trademark or service mark specimen for a good and/or service,
click here.
Fraudulent statements may result in registration being cancelled: Applicants must ensure that statements made in filings to the USPTO are accurate, as inaccuracies may
result in the cancellation of any issued trademark registration. The lack of a bona fide intention to use the mark with ALL goods and/or services listed in an application or the
lack of actual use on all goods and/or services for which use is claimed could jeopardize the validity of the registration, possibly resulting in its cancellation.
Additional information: For information on filing and maintenance requirements for U.S. trademark applications and registrations and required fees, please consult the USPTO
website at https://www.uspto.gov or call the Trademark Assistance Center at 1-800-786-9199.
Checking status: To check the status of this application, go to

https://tsdr.uspto.gov/#caseNumber=86862926&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=statusSearch or contact the Trademark
Assistance Center at 1-800-786-9199. Please check the status of any application at least every three (3) months after the application filing date.
To view this notice and other documents for this application on-line, go to
https://tsdr.uspto.gov/#caseNumber=86862926&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=documentSearch. NOTE: This notice will only be
available on-line the next business day after receipt of this e-mail.
EXHIBIT E
EXHIBIT F

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Case 8:18-cv-03092-JSM-AAS Document 1 Filed 12/26/18 Page 1 of 33 PageID 1

IN THE UNITED STATES DISTRICT COURT

FELD MOTOR SPORTS, INC., §

COMPLAINT FOR BREACH OF CONTRACT, BREACH OF IMPLIED

NATURE OF ACTION AND JURISDICTION

fraud under common law.

law claims under 28 U.S.C. § 1367(a).

3. Plaintiff Feld Motor Sports, Inc. (“FMS”) is a Delaware corporation with a

principal place of business at 800 Feld Way, Palmetto, Florida 34221.

4. Upon information and belief, Defendant Mattel, Inc. (“Defendant”) is a

7. Mattel is an American toy manufacturing company founded in 1945 with

consumers through retailers, such as Walmart and Target.

8. In 1999, FMS (through its predecessors in interest) licensed its MONSTER

The facts supporting these allegations are detailed below.

affidavit of incontestability on November 4, 2003. A copy of Registration No. 2,116,431 is

attached hereto as Exhibit A.

affidavit of incontestability pursuant to 15 U.S.C. § 1065(3) at the USPTO. The USPTO

accepted the affidavit of incontestability on December 2, 2011. A copy of Registration

No. 3,150,449 is attached hereto as Exhibit B.

copy of Registration No. 3,526,976 is attached hereto as Exhibit C.

this application and the Notice of Allowance is attached hereto as Exhibit D.

an affidavit of incontestability pursuant to 15 U.S.C. § 1065(3) at the USPTO. The USPTO

accepted the affidavit of incontestability on October 17, 2009. A copy of Registration

No. 2,861,600 is attached hereto as Exhibit E.

to MONSTER JAM® shows to see live.

advertisement for its MONSTER JAM® services and products.

22. As a result of the popularity of MONSTER JAM®, FMS receives significant

ending December 2018.

C. MLA BETWEEN MATTEL AND FMS

numerous high-profile companies and organizations that sponsor MONSTER JAM®.

are FMS’s enormously popular GRAVE DIGGER®, MONSTER MUTT® ROTTWEILER,

JAM® trucks such as MAXIMUM DESTRUCTION®, EL TORO LOCO®, and MOHAWK

proprietary Style Guide).

under the MLA.

without limitation using or registering a name or mark which is identical to or confusingly

in the state of New York.

D. FMS’S TRADE DRESS RIGHTS

including GRAVE DIGGER®, MAXIMUM DESTRUCTION®, EL TORO LOCO®, and

UVA DIGGER®, GRAVE DIGGER THE LEGEND®, MONSTER MUTT® ROTTWEILER

and MONSTER MUTT DALMATION.

ROTTWEILER trucks (shown below):

DIGGER Trade Dress as used by Mattel are shown below:

the MONSTER JAM® line.

38. Additionally, due to FMS’s extensive promotional efforts, the consuming

public recognizes the distinctive, non-functional GRAVE DIGGER Trade Dress as an

Trade Dress has acquired distinctiveness.

40. FMS’s MONSTER MUTT® ROTTWEILER monster truck is also a well-

non-functional trade dress in connection with its MONSTER MUTT® ROTTWEILER

ROTTWEILER Trade Dress are shown below:

41. The MONSTER MUTT ROTTWEILER Trade Dress, particularly when

truck as part of the MONSTER JAM® line.

43. Additionally, due to FMS’s extensive promotional efforts, the consuming

public recognizes the distinctive, non-functional MONSTER MUTT ROTTWEILER Trade

MONSTER MUTT ROTTWEILER Trade Dress has acquired distinctiveness.

MONSTER MUTT ROTTWEILER Trade Dress.

E. INTRODUCTION TO MATTEL’S UNLAWFUL ACTIVITIES

its current term concludes on December 31, 2018.

46. After receiving this notification, Mattel embarked on a deliberate course to

without the knowledge or consent of FMS in breach of the MLA.

DIGGER® and MONSTER MUTT® ROTTWEILER), thereby infringing on FMS’s trade

F. MATTEL’S TRADE DRESS INFRINGEMENT

“HOTWEILER,” (the “Infringing Designs.”). These Infringing Designs are confusingly

Trade Dress, as shown by the side-by-side comparisons below:

FMS’S TRADE DRESS INFRINGING DESIGNS

GRAVE DIGGER® BONE SHAKER

FMS’S TRADE DRESS INFRINGING DESIGNS