IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Prof. Meowingtons, Ltd.,
Petitioner,
v.
Meowingtons LLC,

Cancellation No.
Mark: MEOWINGTONS
Reg. No.: 4,711,265
Reg. Date: March 31, 2015
Registrant: Meowingtons LLC

Registrant.

PETITION FOR CANCELLATION OF REG. NO. 4,711,265
This action arises out of Meowingtons LLC (“Registrant”)’s blatant attempts to exploit for
its own commercial benefits the iconic “MEOWINGTONS” mark of internationally-renowned and
respected progressive electronic music artist and producer, Joel Zimmerman, whose stage name is
“deadmau5” (pronounced “dead mouse”). Over the course of his storied career, deadmau5 has
released scores of critically acclaimed and chart-topping albums and singles, garnered millions of
fans, won multiple prestigious music industry awards, and given record-breaking performances at
some of the world’s most legendary venues, festivals, and awards ceremonies.
As a result of deadmau5’s fame, his cat – whom he named and is commonly referred to as
“Prof. Meowingtons,” “Prof. Meowingtons, PhD,” and “Meowingtons” – has become widely
recognized in his own right and gained substantial fans and followers on social media. deadmau5
adopted the MEOWINGTONS mark in 2010, and first used the mark in commerce in the United
States at least as early as 2011 – years before Registrant’s first use in commerce, which according
to the Subject Registration was not until April 1, 2014. Registrant’s unauthorized use of the
MEOWINGTONS mark has already caused actual confusion in the marketplace, chilling
Petitioner’s licensing program and depriving Petitioner of the ability to control the use of its
valuable intellectual property. Despite Petitioner’s repeated requests to limit Registrant’s use and
registration, Registrant refuses to comply, thereby necessitating this action.
PETITION FOR CANCELLATION OF REG. NO. 4,711,265

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Petitioner Prof. Meowingtons, Ltd., a Canadian corporation with an address at 16000
Ventura Boulevard, Suite 600, Encino, California 91436, believes that it is being and will continue
to be damaged by the registration of the MEOWINGTONS mark shown in Registration No.
4,711,265 (“Subject Registration”) registered on March 31, 2015 and owned by Registrant
Meowingtons LLC.
Petitioner hereby petitions to cancel the Subject Registration under Section 14 of the
Trademark Act of 1947, 15 U.S.C. § 1064, and as grounds for its petition, alleges as follows:
1.

Petitioner, the owner of the MEOWINGTONS mark, is a corporation that is

wholly-owned and controlled by Joel Zimmerman p/k/a deadmau5.
2.

deadmau5 has invested years and significant resources in developing, designing,

promoting, and protecting his products, services, business, and brand throughout the United States.
As a result of his widespread use of his trademarks and extensive promotional efforts, public
exposure, and commercial success, deadmau5 has built valuable goodwill in the “deadmau5”
marks and brand. As set forth below, on information and belief, Registrant sought to trade on this
valuable goodwill and began using the MEOWINGTONS mark without deadmau5’s consent or
authorization. On information and belief, Registrant was aware of deadmau5’s right to the
MEOWINGTONS mark when Registrant adopted the MEOWINGTONS mark and filed the
application for the Subject Registration, and despite such awareness, fraudulently procured the
Subject Registration by intentionally and knowingly making false and material statements to the
United States Patent and Trademark Office (“USPTO”).
3.

Registrant’s use of the MEOWINGTONS mark in the manner described below is

causing actual confusion in the marketplace, chilling Petitioner’s licensing program, and depriving
Petitioner of the ability to control the use of its valuable intellectual property. Accordingly, the
Subject Registration should be cancelled in its entirety.

PETITION FOR CANCELLATION OF REG. NO. 4,711,265

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I.

deadmau5’s Widespread Fame
A.

Origin of the “deadmau5” Brand

4.

The “deadmau5” brand was born in or around early 2002, when Mr. Zimmerman

took his computer apart to make repairs and found a dead mouse inside. After he posted this story
on an Internet Relay Chat (IRC) channel he frequented, other users began referring to him as the
“dead mouse guy.” At that point, Mr. Zimmerman tried to change his IRC username to
“deadmouse,” but because the IRC protocol only allowed for usernames that were 8 characters
long, he trimmed it down to “deadmau5.” Mr. Zimmerman also adopted deadmau5 as his stage
name and has openly, continuously, and extensively used it in connection with the provision of
entertainment services and consumer products ever since.
5.

In 2007, deadmau5 founded his own record label, “mau5trap” (pronounced

“mousetrap”). Since its inception, mau5trap has released albums, EPs, and singles for deadmau5
and various other acclaimed electronic music artists, including Skrillex, Sofia Toufa a.k.a. SOFI,
Sydney Blu, Feed Me, Excision, Tommy Lee & DJ Aero, Foreign Beggars, and Noisia. In 2013,
mau5trap teamed up with Universal Music Group, the largest record company in the world, and
was distributed through the electronic music label Astralwerks, which is owned by Capitol Music
Group/Universal. mau5trap is now a fully independent label.
6.

deadmau5’s prolific career as an artist, composer, performer, and producer has been

both ground- and record-breaking. Today, deadmau5 is universally recognized as one of the most
dominant figures in the electronic dance music (EDM) movement that has swept the United States
and the globe over the past decade and a half. As noted by well-known publications such as USA
Today and Your EDM magazine, over the past 14 years, deadmau5 has “dominate[d]” the EDM
scene in large part due to his efforts to “painstakingly curat[e] and develop[]” an “iconic,
recognizable brand.” Attached as Exhibit 1 are true and correct copies of the aforementioned USA
Today and Your EDM articles.

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B.

deadmau5 Works

7.

Since 2002, deadmau5 has released over 100 solo and collaborative albums, EPs,

and singles, and has had his works featured in dozens more compilation albums. His album
while(1<2) debuted atop Billboard magazine’s Dance/Electronic Albums chart in the summer of
2014 as deadmau5’s second consecutive No. 1 album following >album title goes here<.
while(1<2) also rose to number 9 in the top 20 of Billboard’s Top 200 and number 4 on Billboard’s
Digital Albums chart, and was nominated for a Grammy in the Best Dance/Electronic Album
category.
8.

deadmau5’s 2010 album, 4x4=12, spent more than 100 weeks on Billboard’s album

chart and was certified gold for selling over 500,000 units in the United States alone. deadmau5’s
single, “Ghosts ‘n’ Stuff,” has sold nearly 1.3 million copies in the United States alone, and has
been streamed over 60 million times on the Spotify digital music service. Attached as Exhibit 2
are printouts from www.discogs.com and iTunes listing deadmau5’s works to date.
9.

On December 2, 2016, deadmau5 released his eighth studio album,

W:/2016ALBUM/, which had over 15 million streams in its first week and debuted at number 1 on
Billboard’s Dance/Electronic Album’s chart.
10.

In addition to audio works, deadmau5 has released for sale DVDs containing

footage from two of his more momentous performances to date: deadmau5 – live @ earl’s court,
and Meowingtons Hax 2k11 TORONTO, which he named after his cat, Prof. Meowingtons.
11.

The first DVD – deadmau5 – live @ earl’s court – memorializes deadmau5’s

groundbreaking 2010 performance as the first electronic music artist to headline the legendary
19,000-person venue at Earls Court in London, following in the footsteps of the likes of Madonna,
Oasis, and Pink Floyd.
12.

The second DVD – Meowingtons Hax 2k11 TORONTO – contains footage from

the final stop of deadmau5’s record-setting Meowingtons Hax North American tour, which
launched on August 5, 2011 at Lollapalooza in Chicago and concluded on November 5, 2011 with
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a sold-out show at Toronto’s Rogers Centre. During this tour, deadmau5 became the first electronic
music artist to headline the Lollapalooza music festival as well as the stadium-sized Rogers Centre
(formerly known as the SkyDome). Attached hereto as Exhibit 3 are true and correct copies of the
cover of the Meowingtons Hax 2k11 TORONTO DVD, a printout of the iTunes product page for
the DVD, and articles from the Toronto Star and Examiner.com reviewing the Rogers Centre
concert.

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C.

Notable Live Performances

13.

Over the course of his career, deadmau5 has performed at prestigious venues and

festivals all over the world, from North and South America to Europe, Asia, Africa, and Australia.
14.

Internationally, deadmau5 has headlined the Sonar festival in Barcelona and the

Creamfields festival in the UK. In 2010, deadmau5 played at the Winter Olympics in Vancouver,
and he also became the first electronic music artist to headline and sell out Earls Court in London.
In 2011, he became the first electronic music artist to headline and sell out Rogers Centre in
Toronto. In September 2014, deadmau5 performed at the iTunes Festival in London, which was
live-streamed to fans in the United States and the rest of the world via iTunes and Apple TV. In
July 2016, deadmau5 headlined the sold-out Tomorrowland festival in Belgium, which was
estimated to draw some 180,000 attendees.
15.

Within the United States, deadmau5 has headlined music festivals including

Outside Lands, Virgin Mobile FreeFest, Coachella, Ultra Music Festival, and in 2011, he became
the first electronic act to headline Lollapalooza. He has headlined and sold out Petco Park in San
Diego, as well as multiple consecutive nights at legendary venues like the Roseland Ballroom in
New York City and the Palladium in Los Angeles. In December 2016, deadmau5 is set to embark
on another tour across the United States, with multiple shows already sold out in New York City,
Los Angeles, Chicago, Seattle, Oakland, and Detroit.
16.

In 2010, deadmau5 was named House Artist at the MTV Video Music Awards.

17.

In February 2012, deadmau5 performed at the 54th annual Grammy Awards

ceremony as part of the show’s first-ever telecast highlighting electronic music.
18.

In March 2012, deadmau5 hosted a widely publicized event called “mau5hax”

(pronounced “mouse hacks”) at the Winter Music Conference in Miami, live-streaming a daylong
production session featuring deadmau5 and other mau5trap artists collaborating with fans.
19.

In June 2015, deadmau5 headlined the Governor’s Ball music festival in New York

with the likes of Bjork, as well as the Bonnaroo music festival in Tennessee along with the likes
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of Billy Joel. He also performed at the Summer Set Festival in Wisconsin in August 2015, the
Allentown Fair in Pennsylvania in September 2015, the Austin City Limits and Treasure Island
festivals in Texas and California, respectively, in October 2015, and the Voodoo Music & Arts
Festival in Louisiana in November 2015.
20.

deadmau5 has also held residencies at several high-end day and night clubs in Las

Vegas, including XS, Encore Beach Club, Wet Republic, and Hakkasan. Las Vegas mayor Carolyn
Goodman officially proclaimed January 2, 2012 “deadmau5 Day” to commemorate the launch of
his residency at the Wynn Hotel. Attached hereto as Exhibit 4 is a true and correct copy of the
deadmau5 Day proclamation issued by Ms. Goodman.
D.

Awards and Accolades

21.

Between 2009 and present, deadmau5 received numerous Juno Award nominations

and won 3 times – once for Artist of the Year in 2013, and twice for Dance Recording of the Year
in 2009 and 2010. During the same timeframe, he also received 6 Grammy nominations, 3
Billboard Music Awards nominations, 2 World Music Awards nominations, and 2 Teen Choice
Awards nominations.
22.

In 2008, deadmau5 won #1 Electro House Artist, #1 Progressive House Artist, and

#1 Beatport Single at the Beatport Music Awards. He went on to win #1 Electro House Artist and
#1 Progressive House Artist in 2009 as well. And in 2010, he won #1 Electro House Artist for the
third consecutive year.
23.

In 2010, deadmau5 won 3 International Dance Music Awards (IDMAs) for Best

Artist (Solo), Best Electro Track, and Best American DJ. In 2011, he again won IDMAs for Best
Artist (Solo) and Best American DJ, in addition to winning Best Dubstep/DnB/Jungle Track.
24.

At the famed Coachella music festival in 2010, deadmau5 debuted his signature

“Cube” stage, which consists of a three-dimensional partial or fractured W-shaped cube covered
in LED panels used to display images during his performances. The Cube quickly became iconic
in its own right, touted as “revolutionary” and “by far the most visually stunning stage installation
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at the time.” In 2014, Time Out Magazine, which has a monthly audience of 6.5 million, described
deadmau5’s stage show revolving around his “jaw-dropping” Cube as one of the “greatest live
productions in electronic music.” Attached as Exhibit 5 is a true and correct copy of the Time Out
Magazine article and other articles about deadmau5 and his famous Cube setup.
25.

On July 1, 2014, deadmau5 served as Grand Marshal in the Canada Day parade put

on by his hometown of Niagara Falls, Ontario, and was given the key to the city.
E.

Unsolicited Media and Fan Coverage

26.

Unsolicited media coverage and consumer blog postings about deadmau5 further

evidence the widespread fame enjoyed by deadmau5 and his brand.
27.

deadmau5 has been featured in literally hundreds of articles and blogs ranging from

Vanity Fair to dedicated deadmau5 fan blogs created by his diehard fans, such as
www.mau5itup.blogspot.com. Attached as Exhibit 6 are true and correct copies of a small
sampling of articles about deadmau5.
28.

deadmau5 has also graced the cover of a number of illustrious magazines, including

VIBE and Rolling Stone. Indeed, when deadmau5 appeared on Rolling Stone’s cover in his “cheese
head” mau5head mask/headdress in July 2012, this marked the first time in history that an
electronic music artist had been given this honor. Attached as Exhibit 7 are true and correct copies
of various magazine covers showcasing deadmau5, including the July 2012 Rolling Stone cover.
F.

Extensive Licensing and Promotional Efforts

29.

deadmau5, through his wholly-owned and controlled holding companies, owns

several trademarks related to the deadmau5 name and brand, and has sought to exploit the reach
of his brand through a highly successful and profitable licensing and merchandising program using
his music and intellectual property in or on a wide range of goods. deadmau5 is extremely selective
in choosing licensees, and carefully controls and monitors the quality of the licensed products and
services produced by these licensees as they are a reflection on deadmau5 and his business.

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30.

Goods bearing deadmau5’s marks have been offered through nationwide chains

such as Target, Forever 21, Party City, Tillys, and Torrid, as well as through music merchandising
companies that specialize in selling artists’ merchandise to fans and novelty stores. For example,
until very recently, major music merchandiser LiveNation and its subsidiaries operated
deadmau5’s official online store, handled merchandise sales at deadmau5’s concerts, and were the
largest sellers of deadmau5 merchandise through other outlets. deadmau5 now handles his
merchandise in-house.
31.

In addition to physical merchandise and music recordings, deadmau5 has released

several apps for the iOS and Android platforms, including deadmau5, Deadmau5 Mix, and
Deadmau5 Remix, which enable fans to remix some of his songs on their devices.
32.

deadmau5’s music and marks have also been featured in many popular video

games, including, among others, Grand Theft Auto: Chinatown Wars, Grand Theft Auto IV,
GoldenEye 007, Sims 3, Sound Shapes, and Project Cars. Additionally, the game DJ Hero 2 not
only features several deadmau5 tracks, but also features deadmau5 in his full mau5head regalia as
a playable avatar. Likewise, the iPhone game Shred Neffland: featuring deadmau5 showcases a
deadmau5 audio track and a deadmau5 cartoon as the main character.
33.

As part of his continuous efforts to promote and advertise his goods and services,

deadmau5 uses a professional public relations firm to issue press releases highlighting his album
releases and major live performances. deadmau5 also advertises his album releases on billboards
in major cities in the United States and around the world.
G.

Social Media

34.

deadmau5 has gained a staggering following on the web and social media, and he

uses this platform to further promote his works and performances and extend the reach of his brand.
35.

By no later than November 2002, deadmau5 registered his original official website,

www.deadmau5.com, which boasted more than 18 million visits and 32.5 million page views
between November 2002 and the fall of 2014. In 2015, deadmau5 merged www.deadmau5.com
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with www.live.deadmau5.com, a subscription-based site that he launched in December 2013.
Certain public content, such as tour dates, official deadmau5 music videos, and the latest news
stories, are publicly accessible to all fans, while those with subscriptions have exclusive access to
premium content and intimate experiences with deadmau5, including the opportunity to live chat
with deadmau5, view extra live streams, and download full-length tracks. In 2015 alone,
www.live.deadmau5.com had around 1.3 million visits and 2.6 million page views.
36.

In 2006, deadmau5 created a YouTube account where he posts candid video clips

and videos of his own works, as well as the works of other artists on his mau5trap label.
deadmau5’s YouTube channel has over 1 million subscribers and boasts over 130 million views
to date. deadmau5’s record label, mau5strap, joined YouTube in 2008 and has over 158,000
subscribers and nearly 38 million views to date.
37.

Since 2008, deadmau5 has also promoted his musical works and performances

through his verified Facebook account, which has nearly 9 million “likes.” His Twitter account,
created in 2009, has approximately 3.7 million followers, his Instagram account has 2 million
followers, and he has maintained a tumblr blog entitled “united we fail – deadmau5” since 2011.
Additionally, deadmau5 streams his music to hundreds of thousands of fans through the revamped
music site, www.myspace.com, and the deadmau5 channel on the Spotify music streaming service
has over 1.5 million followers and over 3.9 million monthly listeners.
II.

Deadmau5’s First Use of the MEOWINGTONS Mark
A.

Origin of the “Meowingtons” Brand

38.

In January 2010, deadmau5 adopted a black and white cat from the Toronto

Humane Society. Because of the cat’s incessant meowing, deadmau5 came up with the name “Prof.
Meowingtons, PhD,” or “Meowingtons” for short.
39.

Prof. Meowingtons instantly became an internet sensation. Several videos of Prof.

Meowingtons dating back to January 2010 are on YouTube, many of them with hundreds of
thousands of views.
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40.

In or about April 2010, deadmau5 created a separate Facebook account for Prof.

Meowingtons that has over 95,000 “likes,” and in June 2010, deadmau5 posted a photo album
titled “me ow ing tons” on his deadmau5 Facebook page (which has nearly 9 million likes)
containing photos of Prof. Meowingtons. In November 2010, deadmau5 created a separate Twitter
account for “Prof. Meowingtons” under username @meowingtons_pHd. The Prof. Meowingtons
Twitter account has approximately 31,000 followers and is a “verified” account – a status reserved
only for celebrities, public figures, and other accounts of public interest. In fact, Prof.
Meowingtons is the only animal with a verified Twitter account. Prof. Meowingtons also has a
second Twitter account, @meowingtons, as well as his own verified Instagram account,
@meowingtons, which has over 18,000 followers. Attached hereto as Exhibits 8-10 are true and
correct copies of Prof. Meowingtons’ Facebook, Twitter, and Instagram account profiles,
respectively. Attached hereto as Exhibit 11 is a true and correct copy of the search results for Prof.
Meowingtons on YouTube.
41.

Prof. Meowingtons’ fame has been recognized by media outlets such as Toronto

Life magazine, who in November 2011 published an article about deadmau5 noting that Prof.
Meowingtons “has become a starring character in Zimmerman’s online universe,” and further
noting that the cat has his own Facebook page with tens of thousands of fans. A photo of deadmau5
wearing his iconic mau5head and holding Prof. Meowingtons is featured prominently at the top of
the article, a true and correct copy of which is attached hereto as Exhibit 12.
42.

Like deadmau5, Prof. Meowingtons has also gained his fair share of unsolicited

media and fan attention. For example, in 2012, photos of “celebrity” cat Prof. Meowingtons were
featured on poshpetsblog.com. Also in 2012, a fan created a tumblr fanblog dedicated to Prof.
Meowingtons titled Fuck Yeah Meowingtons, which features hundreds of photos of Prof.
Meowingtons along with deadmau5. True and correct copies of these blog posts are attached hereto
as Exhibits 13 and 14.

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43.

Adding to Prof. Meowingtons’ fame, the cover of deadmau5’s 2012 hit album

>album title goes here< features Prof. Meowingtons wearing a partial mau5head, as depicted
below. This album debuted at number 6 on the Billboard 200 and at number 1 on Billboard
magazine’s Dance/Electronic Albums chart. The album also peaked at number 1 on the UK Dance
Albums chart.

B.

Use in Commerce

44.

Prof. Meowingtons’ name and image has been featured on a variety of deadmau5’s

works, merchandise, and marketing materials. In the fall of 2011, deadmau5 launched a
groundbreaking North American music tour named after his famous cat – the Meowingtons Hax
Tour. As discussed above, the Meowingtons Hax Tour began on August 5, 2011 at Lollapalooza
in Chicago and concluded with a sold-out show at Toronto’s Rogers Centre on November 5, 2011.
During this tour, deadmau5 became the first electronic music artist to headline both Lollapalooza
and the stadium-sized Rogers Centre (formerly the SkyDome). Promotional materials and
merchandise (e.g., posters, t-shirts, etc.) for the tour, examples of which are depicted below, bear
the MEOWINGTONS mark as well as cartoon images of Prof. Meowingtons wearing a mau5head,
together with deadmau5 himself.

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45.

To promote the Meowingtons Hax Tour, on August 25, 2011, deadmau5 released a

compilation album on his mau5trap label titled Meowingtons Hax Tour Trax, which includes tracks
from renowned music artists including himself, Skrillex, Tommy Lee, DJ Aero, and Feed Me. The
front and back cover of the album prominently bear the MEOWINGTONS mark and images of
Prof. Meowingtons and deadmau5 similar to the artwork used on the tour’s promotional materials.

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46.

Additionally, on March 19, 2013, deadmau5, through Ultra Records, released for

sale a DVD titled Meowingtons Hax 2k11 TORONTO, which features live footage from the final
stop of the momentous Meowington Hax Tour. The DVD cover bearing the MEOWINGTONS
mark is depicted below.

47.

deadmau5 has also licensed and sold or offered for sale a variety of merchandise

bearing the MEOWINGTONS mark, including garments and accessories for men, women, and
children, novelty figurines, posters, artwork, keychains, magnets, bags, glasses, mugs, and cell
phone and tablet accessories. The first sale of such merchandise bearing the MEOWINGTONS
mark was at least as early as August 2011. Examples of this MEOWINGTONS merchandise are
attached hereto as Exhibit 15.

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48.

In August 2012, deadmau5 collaborated with Sol Republic, an audio equipment

company, to design and sell limited edition high-end “Meowingtons” headphones – the first ever
headphones designed specifically for cats. The marketing materials bear the MEOWINGTONS
mark and an image of Prof. Meowingtons wearing the headphones as depicted below.

49.

The headphones themselves also bear the MEOWINGTONS mark as depicted

below. The commercial for the Meowingtons headphones, in which Prof. Meowingtons appears
(available at https://www.youtube.com/watch?v=isie2VF3VGw), was published on YouTube on
August 1, 2012 and has over 321,000 views. The Meowingtons headphones have also been
featured on several news sites and blogs, including articles on businesswire.com,
huffingtonpost.com, and gizmodo.com. Attached here to as Exhibit 16 are true and correct copies
of a sampling of these articles.

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III.

Registrant and the Subject Registration
A.

Registrant’s Knowledge of deadmau5’s Right to the Mark

50.

On August 8, 2015, Petitioner, wholly-owned and controlled by deadmau5, filed

U.S. Trademark Application Serial No. 86/719,048 for the mark PROF. MEOWINGTONS,
covering certain goods in International Classes 9, 16, 18, 21, 24, 25, 28, and 41. On May 19, 2016,
the USPTO issued an Office action refusing registration of the mark PROF. MEOWINGTONS
because of a likelihood of confusion with the mark in the Subject Registration. Petitioner was
shocked to learn that the MEOWINGTONS mark had been hijacked by an unknown entity whose
name also bears MEOWINGTONS.
51.

On information and belief, Registrant Meowingtons LLC is a Florida limited

liability with an address at 20 John Street, Suite 318, Toronto M5V0G5, Canada. On further
information and belief, Registrant was created on or about April 2014 by owner and CEO Emma
Bassiri, who is from Toronto and currently resides in Florida.
52.

On information and belief, in or about February 2014, Ms. Bassiri created the

website www.meowingtons.com. www.meowingtons.com is an online retailer of cat-themed
women’s apparel, bags, accessories, pillows, mugs and other home décor, and phone accessories.
A true and correct screenshot of the www.meowingtons.com homepage is attached hereto as
Exhibit 17.
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53.

On information and belief, Ms. Bassiri has been a long-time fan of deadmau5 and

his music and followed him on social media. On further information and belief, Ms. Bassiri has
been aware of Prof. Meowingtons and deadmau5’s use of the MEOWINGTONS mark since at
least before she and Registrant began using the MEOWINGTONS mark.
54.

On information and belief, Ms. Bassiri, having been a fan of deadmau5 and having

knowledge of the valuable goodwill associated with deadmau5’s brand and marks, including the
MEOWINGTONS mark, intentionally chose the MEOWINGTONS name for her business in order
to trade on this valuable goodwill and has been using the MEOWINGTONS mark without
deadmau5’s consent or authorization.
B.

Registrant’s Fraudulent Declaration to the USPTO

55.

On or about July 15, 2014, Registrant filed U.S. Trademark Application Serial No.

86338038 (“Application”) for the standard character mark MEOWINGTONS, covering the
following services in International Class 35: Retail store and online retail store services for men
and women featuring cat themed accessories and clothing, namely, t-shirts, tank tops, crop tops,
sweatshirts, hooded sweatshirts, bathing suits, cardigans, blouses, dresses, pants, pyjamas, shorts,
skirts, rompers, panties, bras, thongs, jumpers, leggings, sweatpants, knitted woven or knitted
underwear, lingerie, jackets, scarves, baseball hats, five panel hats, caps, socks, stockings,
pantyhose, rings, necklaces, earrings, bracelets, purses, handbags, shoulder bags, clutch bags, tote
bags, wallets, slippers, shoes, sandals, flats, boots, running shoes, ties, bows, bandanas, headbands,
gloves, sunglasses, belts, watches.
56.

According to the Application, Registrant’s first use of the MEOWINGTONS mark

in commerce was on April 1, 2014 – years after deadmau5’s first use of the mark in commerce.
Attached hereto as Exhibit 18 is a true and correct copy of the Application.
57.

On or about July 15, 2014, Ms. Bassiri, on behalf of Registrant in her capacity as

CEO, submitted a Declaration in support of said Application purporting to declare under oath
(emphasis added):
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The signatory believes that to the best of the signatory’s knowledge and belief, no other
person has the right to use the mark in commerce, either in the identical form or in such
near resemblance as to be likely, when used on or in connection with the goods/services
of such other person, to cause confusion or mistake, or to deceive. The signatory being
warned that willful false statements and the like are punishable by fine or imprisonment,
or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like
may jeopardize the validity of the application or any registration resulting therefrom,
declares that all statements made of his/her own knowledge are true and all statements
made on information and belief are believed to be true.
58.

On information and belief, at the time Ms. Bassiri submitted the foregoing

Declaration, she was aware of deadmau5’s right to use the MEOWINGTONS mark in commerce,
and that Registrant’s use of said mark in commerce in connection with the services covered in the
Subject Registration would be likely to cause confusion or mistake or to deceive. As such,
Registrant fraudulently procured the Subject Registration by intentionally making knowingly false
and material statements to the USPTO. Attached hereto as Exhibit 19 is a true and correct copy
of Ms. Bassiri’s Declaration submitted to the USPTO.
C.

Actual Confusion

59.

Registrant’s use of the MEOWINGTONS mark in the manner described above is

likely to cause confusion, mistake, and/or to deceive as to the origin, sponsorship, or approval of
the goods marketed and sold by Registrant, Registrant’s services, and commercial activities in that
the public, the trade, and others are likely to believe that Registrant’s goods are provided,
sponsored, approved, licensed, authorized or endorsed by, or affiliated with, or in some other way
legitimately connected to deadmau5 and Petitioner’s goods and services that are promoted,
offered, and/or sold in connection with the MEOWINGTONS mark.
60.

Indeed, there are several incidents where consumers have actually confused

Registrant’s goods and services as having originated with deadmau5 and Petitioner.
PETITION FOR CANCELLATION OF REG. NO. 4,711,265

PAGE 18 OF 24

61.

For example, one consumer directed the following Twitter message to deadmau5

and Prof. Meowingtons: “@meowingtons @deadmau5 You have a store?! Wow! Except I don’t
see your profile anywhere.. meowingtons.com.”
62.

Another consumer sent the following Twitter message to deadmau5, along with a

screenshot of a “kitty purse” for sale on www.meowingtons.com: “@deadmau5 ummmm?? Are
you behind this ‘meowingtons’ fashion site? Lol uh-oh I smell lawsuit.”
63.

Yet another consumer sent the following Twitter message to deadmau5 with a

screenshot of the www.meowingtons.com homepage: “Does Meowingtons has [sic] an online
shop? @deadmau5 looks like someone has another legal battle to fight lol.”
64.

There are also several instances of consumers “tagging” Prof. Meowingtons’

Twitter account (@meowingtons) in connection with goods sold on www.meowingtons.com. For
example, one consumer posted: “I <3 my new ring from @meowingtons!” Another consumer
Tweeted: “I got my kitty ring in from @meowingtons too.” Attached hereto as Exhibit 20 are true
and correct copies of the aforementioned Twitter posts, or “tweets,” in addition to several other
examples of actual consumer confusion.
65.

Further adding to the confusion, Registrant posted an image to its Instagram

account (@meowingtonsco) of the www.meowingtons.com logo on a photo of a cat that looks
identical to Prof. Meowingtons, and indeed one user tagged @deadmau5 in the comments.
Attached hereto as Exhibit 21 is a true and correct copy of this Instagram post and the
aforementioned comment.
66.

Registrant has an “F” rating on the Better Business Bureau website, where there are

several negative reviews and complaints about Registrant and www.meowingtons.com, including
complaints about poor customer service, false and misleading advertising, and poor product
quality. Attached hereto as Exhibit 22 are true and correct copies of these complaints from the
Better Business Bureau website.

PETITION FOR CANCELLATION OF REG. NO. 4,711,265

PAGE 19 OF 24

67.

Registrant’s use of the MEOWINGTONS mark falsely designates the origin of its

goods and services. Furthermore, Registrant’s use of the mark prevents deadmau5 and Petitioner
from controlling the nature and quality of goods and services provided thereunder and places the
valuable reputation and goodwill of deadmau5 and Petitioner in the hands of Registrant, over
whom deadmau5 and Petitioner have no control.
68.

On information and belief, Registrant’s actions were willful from the outset and

reflect an intent to confuse consumers and profit from the goodwill associated with deadmau5 and
his valuable intellectual property.
69.

Based on the foregoing, Petitioner believes that it has been and will continue to be

damaged by the continued registration of the Subject Registration.
COUNT I
(Likelihood of Confusion under Section 2(d) of the Lanham Act)
70.

Petitioner refers to and incorporates the foregoing allegations as if fully set forth

71.

The mark shown in Registration No. 4,711,265 is confusingly similar to Petitioner’s

herein.

prior common-law mark and its use is likely to cause confusion, mistake, or deception as to the
source, origin, sponsorship, or approval of Registrant’s goods, services, and commercial activities
in that consumers, potential licensees, and others are likely to believe that Registrant is associated
with or related to deadmau5 and Petitioner or that deadmau5 and Petitioner authorized and control
the sale of Registrant’s goods, services, and commercial activities in the United States.
72.

Registrant’s use of the mark shown in Registration No. 4,711,265 has also caused

actual confusion, mistake, or deception as to the source, origin, sponsorship, or approval of
Registrant’s goods, services, and commercial activities.
73.

Registration No. 4,711,265 is barred under Section 2(d) of the Lanham Act and

should be cancelled in its entirety.

PETITION FOR CANCELLATION OF REG. NO. 4,711,265

PAGE 20 OF 24

74.

Petitioner has been and will continue to be damaged by the continued registration

of Registration No. 4,711,265, including because it has caused actual confusion in the marketplace
as to the origin of Registrant’s goods and services and their association or affiliation with
deadmau5 and Petitioner, and prevents deadmau5 and Petitioner from controlling the nature and
quality of the goods and services provided thereunder and places the valuable reputation and
goodwill of deadmau5 and Petitioner in the hands of Registrant, over whom deadmau5 and
Petitioner have no control. Indeed, the USPTO has cited Registration No. 4,711,265 as a potential
bar to Petitioner’s registration of the mark PROF. MEOWINGTONS under U.S. Trademark
Application Serial No. 86/719,048.
COUNT II
(False Association under Section 2(a) of the Lanham Act)
75.

Petitioner refers to and incorporates the foregoing allegations as if fully set forth

76.

The mark shown in Registration No. 4,711,265 is confusingly similar to Petitioner’s

herein.

prior common-law mark and its use is likely to cause confusion, mistake, or deception as to the
source, origin, sponsorship, or approval of Registrant’s goods, services, and commercial activities
in that consumers, potential licensees, and others are likely to believe that Registrant is associated
with or related to deadmau5 and Petitioner or that deadmau5 and Petitioner authorized and control
the sale of Registrant’s goods, services, and commercial activities in the United States.
77.

Registrant’s use of the mark shown in Registration No. 4,711,265 falsely suggests

a connection with deadmau5 and/or Petitioner.
78.

On information and belief, Registrant intended to confuse consumers and profit

from the goodwill associated with deadmau5 and his valuable intellectual property.
79.

Registration No. 4,711,265 is barred under Section 2(a) of the Lanham Act and

should be cancelled in its entirety.

PETITION FOR CANCELLATION OF REG. NO. 4,711,265

PAGE 21 OF 24

80.

Petitioner has been and will continue to be damaged by the continued registration

of Registration No. 4,711,265, including because it has caused actual confusion in the marketplace
as to the origin of Registrant’s goods and services and their association or affiliation with
deadmau5 and Petitioner, and prevents deadmau5 and Petitioner from controlling the nature and
quality of the goods and services provided thereunder and places the valuable reputation and
goodwill of deadmau5 and Petitioner in the hands of Registrant, over whom deadmau5 and
Petitioner have no control. Indeed, the USPTO has cited Registration No. 4,711,265 as a potential
bar to Petitioner’s registration of the mark PROF. MEOWINGTONS under U.S. Trademark
Application Serial No. 86/719,048.
COUNT III
(Registrant’s Fraudulent Procurement of the Subject Registration)
81.

Petitioner refers to and incorporates the foregoing allegations as if fully set forth

82.

On or about July 15, 2014, Emma Bassiri, on behalf of Registrant in her capacity

herein.

as CEO, submitted a Declaration in support of U.S. Trademark Application Serial No. 86/338,038
declaring under penalty of perjury that “[t]he signatory believes that to the best of the signatory’s
knowledge and belief, no other person has the right to use the mark in commerce, either in the
identical form or in such near resemblance as to be likely, when used on or in connection with the
goods/services of such other person, to cause confusion or mistake, or to deceive.”
83.

The representations Registrant made to the USPTO in the July 15, 2014 Declaration

were false.
84.

On information and belief, Registrant knowingly made false and material

representations to the USPTO in order to procure Registration No. 4,711,265.
85.

The USPTO relied on those false representations in issuing Registration No.

4,711,265.

PETITION FOR CANCELLATION OF REG. NO. 4,711,265

PAGE 22 OF 24

86.

The USPTO would not have issued Registration No. 4,711,265 but for Registrant’s

false representations.
87.

Registrant’s actions in the procurement of Registration No. 4,711,265 constitute

fraud, thereby invalidating Registration No. 4,711,265. Accordingly, Registration No. 4,711,265
should be cancelled in its entirety.
88.

Petitioner has been and will continue to be damaged by the continued registration

of Registration No. 4,711,265, including because it has caused actual confusion in the marketplace
as to the origin of Registrant’s goods and services and their association or affiliation with
deadmau5 and Petitioner, and prevents deadmau5 and Petitioner from controlling the nature and
quality of the goods and services provided thereunder and places the valuable reputation and
goodwill of deadmau5 and Petitioner in the hands of Registrant, over whom deadmau5 and
Petitioner have no control. Indeed, the USPTO has cited Registration No. 4,711,265 as a potential
bar to Petitioner’s registration of the mark PROF. MEOWINGTONS under U.S. Trademark
Application Serial No. 86/719,048.
WHEREFORE, Petitioner Prof. Meowingtons, Ltd. requests that the present Petition for
Cancellation of Reg. No. 4,711,265 be sustained and Reg. No. 4,711,265 be cancelled.
Dated: December 28, 2016

Respectfully submitted,

Irene Y. Lee
Nathan D. Meyer
Shani M. Williams
RUSS AUGUST & KABAT
12th Floor
12424 Wilshire Boulevard
Los Angeles, California 90025
Telephone: 310.826.7474
Facsimile: 310.826.6991
Attorneys for Petitioner
Prof. Meowingtons, Ltd.
PETITION FOR CANCELLATION OF REG. NO. 4,711,265

PAGE 23 OF 24

CERTIFICATE OF SERVICE
I hereby certify that a true and complete copy of the foregoing PETITION FOR
CANCELLATION OF REG. NO. 4,711,265 has been served on Registrant via overnight Federal
Express, postage prepaid, to the following address:
Meowingtons LLC
c/o Emma Bassiri, CEO
20 John Street, Suite 318
Toronto M5V0G5, Canada
Dated: December 28, 2016

PETITION FOR CANCELLATION OF REG. NO. 4,711,265

/s/ Anne Zivkovic
Anne Zivkovic

PAGE 24 OF 24

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