Case 3:16-cv-00229-TJM-DEP Document 1 Filed 02/24/16 Page 1 of 10

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF NEW YORK

COOPERSTOWN BAT COMPANY, INC.,

a New York corporation,
Plaintiff,

Civil Action No.

3:16-cv-229 (TJM/DEP)

V.

DIAMOND BASEBALL COMPANY,

INC., a California corporation d/b/a
Diamond Sports Company, Inc.,
Defendant.

COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT

For its complaint, Plaintiff Cooperstown Baseball Company, Inc. (Cooperstown), by
and through its attorneys, alleges as follows:
NATURE OF ACTION
1.

This is an action for declaratory judgment arising under the Federal Declaratory

Judgment Act (28 U.S.C. 2201 and 2202).

2.

Plaintiff Cooperstown seeks declaratory judgment of non-infringement of alleged

trademarks asserted against Plaintiff Cooperstown by Defendant Diamond Baseball Co., Inc.,
d/b/a Diamond Sports Company, Inc. (Diamond Sports)
THE PARTIES
3.

Cooperstown is a corporation organized under the laws of the State of New York,

with its principal place of business located at 118 Main Street, Cooperstown, New York 13326,
which is within the Northern District of New York. Cooperstown designs and manufactures
collector and professional quality wooden baseball bats at its factory located in Otsego County,
New York.
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4.

Diamond Sports is a corporation organized under the laws of the State of

California with its principal place of business located at 1880 East Saint Andrew Place, Santa
Ana, California. Based on information and belief, Diamond Sports is engaged in the business of
manufacturing sporting goods, including baseballs, softballs and catchers gear.
VENUE AND JURISDICTION
5.

This is an action for declaratory judgment arising under federal law, namely the

Lanham Act, 15 U.S.C. 1051 et seq. The Court has subject matter jurisdiction over this action
under 28 U.S.C. 1331 (federal question), 28 U.S.C. 1338(a) (trademarks) and 28 U.S.C.
2201 (Declaratory Judgment Act).
6.

Defendant Diamond Sports is subject to the personal jurisdiction of this Court

because Diamond Sports regularly and continuously conducts business in the State of New York
and this Judicial District. In addition, Diamond Sports allegations of trademark infringement
were directed to Cooperstown in the State of New York and this Judicial District.
7.

Venue of this action is proper in the Northern District of New York under 28

U.S.C. 1391(b)(1) and (2) because Diamond Sports is subject to the personal jurisdiction of
this Court in this Judicial District and thus qualifies as a resident of this Judicial District under 28
U.S.C. 1391(c)(2). In addition, a substantial part of the events giving rise to Cooperstowns
claims has occurred and will continue to occur in the Northern District of New York.
GENERAL ALLEGATIONS
Cooperstowns PRO DIAMOND Trademarks
8.

Cooperstown Bat Company, Inc. was established in Cooperstown, New York, the

Home of Baseball, in 1981 and is currently one of the oldest bat companies in the United
States. Cooperstowns first bats were for the collector or hand personalized for the

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fan. Cooperstown worked, and still does, with Hall of Famers to create amazing pieces of art to
be autographed and collected.
9.

Cooperstown is the owner of U.S. Trademark Registration No. 1,755,515 for the

composite mark COOPERSTOWN BAT COMPANY for sporting goods, namely, bats used in
baseball related games and bat racks.
10.

In a previous decision issued by U.S. District Court Judge Scullin in 1992, it was

determined that the mark COOPERSTOWN BAT COMPANY has acquired secondary
meaning for bats and bat racks. Cooperstown Bat Company, Inc. v. Florczak, Case No. 92-CV0510 (N.D.N.Y. June 26, 1992) (unreported decision).
11.

Cooperstown also makes professional quality, wooden game use bats for players

of all ages and levels. Cooperstown professional model bats are made from hand split maple,
ash, and yellow birch all harvested from within a 350-mile radius of Cooperstown, New York.
12.

Several professional baseball players affiliated with Major League Baseball

(MLB) use Cooperstowns professional quality wooden baseball bats. As such, the bats are
designed and manufactured to comply with the MLBs strict requirements.
13.

In 2009, as a safety and quality control measure, the MLB began requiring that all

maple and birch bats receive an ink dot on the handle to show the slope of the grain. The
straighter the slope of the grain from bat handle to barrel, the less risk of the bat breaking or
shattering, which can injure players, on-field personnel or fans.
14.

Cooperstown applies a signature ink dot to all its maple and birch bats.

Cooperstowns signature ink dot, shown below, is diamond-shaped.

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15.

The word diamond has been used generically to refer to a baseball field, and

more specifically, the four-cornered part of a baseball field in which the corners are the three
bases and the home plate, for well over 100 years.
16.

Because of the well-known association between the word diamond and the

sport of baseball, and because of the diamond-shape of Cooperstowns ink spot, Cooperstown
decided to market its professional quality baseball bats under the mark PRO DIAMOND.
17.

Cooperstown also uses the following composite version of the mark PRO

DIAMOND:

Cooperstowns word mark PRO DIAMOND and the above composite version of the mark
PRO DIAMOND are hereinafter collectively referred to as the PRO DIAMOND Marks.
18.

The PRO DIAMOND Marks are preceded by the source identifier/trademark

COOPERSTOWN BAT, and is used in conjunction with the dominant and stylized CB
trademark, as shown below:

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Controversy between Diamond Sports and Cooperstown

19.

On December 1, 2015, Diamond Sports sent Cooperstown a cease and desist letter

asserting that it owns a number of registered US and international trademarks for numerous
baseball-related products and that Cooperstowns display of the PRO DIAMOND trademark
constitutes an infringement of [Diamond Sports] registered and common law trademark rights.
A true and accurate copy of the December 1, 2015 cease and desist letter is attached hereto as
Exhibit A.
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20.

Attached hereto as Exhibit B is a true and accurate summary of Diamond Sports

portfolio of registered U.S. trademarks and pending applications according to the online database
of the U.S. Patent and Trademark Office.
21.

In its December 1, 2015 cease and desist letter, Diamond Sports failed to identify

any specific trademarks they are enforcing, and instead broadly accused Cooperstown of
infringing Diamond Sports registered and common law trademark rights, thereby creating a
case and controversy with respect to every trademark set forth in Exhibit B.
22.

On December 9, 2015, counsel for Cooperstown responded to Diamond Sports

December 1, 2015 cease and desist letter with an offer to resolve the matter amicably. A true
and accurate copy of the letter sent on behalf of Cooperstown to Diamond Sports on December
9, 2015 is attached hereto as Exhibit C.
23.

Cooperstown did not receive a response to its December 9, 2015 letter to

Diamond Sports, prompting Cooperstowns counsel to follow-up with Diamond Sports by letter
on January 5, 2016 and again by email on January 14, 2016. True and accurate copies of the
correspondence sent on behalf of Cooperstown to Diamond Sports on January 5, 2016 and
January 14, 2016 is attached hereto as Exhibit D.
24.

Cooperstown eventually received a response from Diamond Sports attorney on

February 8, 2016. The letter expressly rejected Cooperstowns prior offer to resolve the matter
amicably and renewed Diamond Sports demand that Cooperstown cease all use of the PRO
DIAMOND trademark. A true and accurate copy of the letter sent from Diamond Sports
attorney to Cooperstown on February 8, 2016 is attached hereto as Exhibit E.
25.

The attorney for Diamond Sports clarified in subsequent correspondence dated

February 23, 2016, that Diamond Sports preference to resolve this matter amicably merely
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indicates its desire to resolve this matter without the need for judicial intervention. Diamond
maintains its demand that Cooperstown cease all use of the PRO DIAMOND trademark. A true
and accurate copy of the letter sent from Diamond Sports attorney to Cooperstown on February
22, 2016 is attached hereto as Exhibit F.
26.

Based upon Diamond Sports allegations of trademark infringement against

Cooperstown outlined above, there exists an actual controversy between Diamond Sports and
Cooperstown that is causing harm to Cooperstown in this District.
27.

Because the word diamond is commonly associated with the sport of baseball,

other companies have long been marketing and selling goods and services related to the field of
baseball using marks that include the word diamond.
28.

Below is a mere sampling of third party use of marks that include the word

diamond in association with baseball-related goods and services:

1.

2.
3.
4.

5.
6.
7.
8.

Third Party
TRNLWS, LLC

Old Hickory Bat

Company
New Era Cap Co., Inc.
Diamond Minds
Baseball Academy,
LLC
Diamond Star Sports,
Inc.
The Dow Chemical
Company
The Upper Deck
Company, Inc.
Panini America, Inc.

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Mark
Diamond Pro
U.S. Registration No. 2,180,917
Diamond Series

Goods/Services
Baseball field
grounds keeping
products
Baseball bats

Diamond Era
U.S. Registration No. 4,456,418
Diamond Minds Baseball Academy
U.S. Registration No. 4,597,590

Baseball caps

Diamond Star Sports

Baseball instruction
services
Baseball fields

Dow Diamond
U.S. Registration No. 3,374,381
Black Diamond
U.S. Registration No. 2,701,810
Diamond Kings
U.S. Registration No. 1,255,294

Baseball training
services

Baseball trading
cards
Baseball trading
cards

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29.

Because the word diamond is generic and/or descriptive when used in

association with baseball-related goods and services, and used extensively by third parties in the
baseball industry, it is not a strong or distinctive mark in the field of baseball.
30.

Cooperstowns PRO DIAMOND Marks are sufficiently dissimilar from all

trademarks purportedly owned by Diamond Sports such that there is no likelihood of consumer
confusion.
31.

The addition of the word PRO in Cooperstowns PRO DIAMOND Marks

clearly differentiates the Cooperstown PRO DIAMOND Marks from all trademarks purportedly
owned by Diamond Sports.
32.

Cooperstowns use of its house marks Cooperstown Baseball and its CB logo

in conjunction with the PRO DIAMOND Marks further renders the marks dissimilar from all
trademarks purportedly owned by Diamond Sports.
33.

Upon information and belief, none of the U.S. trademark registrations or pending

registrations purportedly owned by Diamond Sports for the mark Diamond include baseball
bats in the identification of goods and services.
34.

Cooperstowns PRO DIAMOND baseball bats are primarily marketed and sold to

sophisticated customers, namely, professional baseball players, baseball bat collectors and
aficionados.
35.

Upon information and belief, there are no bona fide instances of actual confusion

between Cooperstowns PRO DIAMOND Marks for professional grade wooden baseball bats
and any registered or common law trademark owned by Diamond Sports that is used in
conjunction with sporting goods.

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36.

There is no likelihood of consumer confusion, mistake or error between

Cooperstowns PRO DIAMOND Marks and any trademark purportedly owned by Diamond
Sports.
FIRST CLAIM FOR RELIEF
(Declaratory Judgment of Non-Infringement)
37.

Cooperstown incorporates by reference the allegations contained in paragraphs 1

through 36 above.
38.

Cooperstowns use of its PRO DIAMOND mark does not infringe any existing

and valid trademark right of Diamond Sports under the Lanham Act (15 U.S.C. 1114).
39.

Cooperstowns use of its PRO DIAMOND mark does not infringe any existing

and valid trademark right of Diamond Sports under the Lanham Act (15 U.S.C. 1125).
PRAYER FOR RELIEF
WHEREFORE, Cooperstown seeks judgment awarding it the following relief:
(a)

That the Court declare that Cooperstowns use of its PRO DIAMOND Marks

does not infringe any existing and valid trademark right of Diamond Sports under the Lanham
Act.
(b)

That the Court order that Diamond Sports, its directors, officers, employees,

servants, attorneys, agents, representatives, distributors, licensees, and all persons in active
concert or participation with them, be enjoined and restrained permanently from interfering with
Cooperstowns use and/or registration of the PRO DIAMOND Marks, and from opposing,
seeking to cancel, or otherwise objecting to any federal registration applications to the PRO
DIAMOND Marks.

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(c)

That Cooperstown be awarded its reasonable attorneys fees and costs.

(d)

For such other and further relief as the Court deems appropriate.
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Respectfully Submitted,

February 24, 2016

s/ Susan E. Farley______________
Susan E. Farley, Esq. (NDNY BRN 101883)
Shanna K. Sanders, Esq. (NDNY BRN 513685)
HESLIN ROTHENBERG FARLEY & MESITI P.C.
5 Columbia Circle
Albany, NY 12203
Telephone: (518) 452-5600
Fax: (518) 452-5579
Email: sef@hrfmlaw.com
sks@hrfmlaw.com
Attorneys for Plaintiff Cooperstown Bat Company, Inc.

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