IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF PENNSYLVANIA

Transcription

1 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 1 of 16 IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF PENNSYLVANIA UBU CLOTHING CORPORATION and : ALAN BLAU, : Plaintiffs : v. : CIVIL ACTION - LAW : SEARS BRANDS, LLC, and : SEARS, ROEBUCK AND CO., : Filed Electronically Defendants : COMPLAINT Plaintiffs UBU Clothing Corporation and Alan Blau, by and through their attorney, Mitchell A. Smolow, for their Complaint against the Defendants Sears Brands, LLC and Sears, Roebuck and Co., allege as follows: THE PARTIES 1. UBU Clothing Corporation ( UBU ), is a Pennsylvania corporation with a principal place of business at 900 Rutter Avenue, Forty Fort, Pennsylvania Alan Blau ( Blau ) is and individual with a principal place of residence at 1913 Firethorn Lane, Villanova, PA

2 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 2 of Upon information and belief, Defendant Sears Brands, LLC ( Sears Brands ) is an Illinois limited liability corporation with its principal place of business at 3333 Beverly Road, Hoffman Estates, IL Upon information and belief, Defendant Sears, Roebuck and Co. ( Sears Roebuck ) is a New York corporation with a principal place of business at 3333 Beverly Road, Hoffman Estates, IL Sears Brands and Sears Roebuck henceforth are collectively referred to as the Defendants. BACKGROUND AND FACTUAL AVERMENTS COMMON TO ALL COUNTS 6. UBU designs, markets and distributes clothing and accessories labeled with its UBU trademark. 7. UBU distributes its UBU labeled goods to over three thousand (3,000) specialty stores and exclusively to the Nordstrom department store chain. 8. Upon information and belief, the Nordstrom department store chain is frequently located within the same retail shopping mall as the Defendants. 9. Blau is the owner of U.S. Trademark Registration No. 1,989,387 for U.B.U. INTERNATIONAL (the 387 Registration ) issued July 30, 1996 for - 2 -

3 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 3 of 16 garment dyed and washed, cotton knit and woven clothing, namely, pants, shirts, vests, blouses and jackets. 10. Blau is the owner of U.S. Trademark Registration No. 2,424,291 for U.B.U. (the 291 Registration ) issued January 30, 2001 for garment dyed and washed, cotton knit and woven clothing, namely, pants, shirts, vests, blouses and jackets. 11. Both registrations are based on use since at least as early as January 5, 1992 and are both valid and subsisting and remain in full force and effect. 12. Both registrations have become incontestable pursuant to 15 U.S.C A copy of said registrations are attached hereto as Exhibit A. 13. On June 7, 2007, a Section 7 amendment was filed with the U.S. Trademark Office seeking to amend the 291 Registration to UBU. The request to remove the periods is pending. 14. UBU is the exclusive licensee of the UBU and UBU INTERNATIONAL marks (collectively, the UBU marks ). 15. UBU is a close corporation of which Blau is a shareholder. 16. Since at least 1992, Blau, UBU or a corporation exclusively licensed by Blau has conducted business using the UBU marks

4 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 4 of As a result of extensive advertising and use, the UBU marks have come to be identified with plaintiffs as the source of origin of their goods. As a result of this recognition, the UBU marks and their attendant goodwill are extremely valuable to plaintiffs. 18. Upon information and belief, Defendants are also marketers and sellers of clothing and accessories. 19. Upon information and belief, Defendants have and are continuing to market and sell their Back to School clothing collection under a UBEU trademark both within Pennsylvania and nationwide. 20. Defendants have designated their UBEU mark with a TM. 21. Defendants have marketed and sold their UBEU marked Back to School clothing collection in both print catalogue and web advertising. A sample of such advertising is attached as Exhibit B. 22. Upon information and belief, Defendants market and sell using their UBEU mark within their retail stores. 23. Upon information and belief, Defendants market and sell using their UBEU mark in their television advertising

5 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 5 of Upon information and belief, Defendants did not market and sell using their UBEU mark prior to the 2007 Back To School clothing collection. 25. Upon information and belief, Defendants are planning to continue to market and sell using their UBEU mark. 26. Plaintiffs became aware of Defendants use of their UBEU mark on or about July 18, 2007 when inquiry by a relative was made of one of UBU s officers as to when Sears began selling UBU s clothing. 27. Since that date, plaintiffs have received additional inquiries from multiple sources as to when Defendants began selling UBU s goods. COUNT I Trademark Infringement Under The Lanham Act Jurisdiction and Venue 28. This claim arises under the provisions of the Trademark Act of 1946, 15 U.S.C. 1051, et. seq., particularly under 15 U.S.C. 1114(1), and is for the infringement of trademarks registered in the United States Patent and Trademark Office. 29. The Court has jurisdiction over the subject matter of this claim pursuant to 15 U.S.C and 28 U.S.C

6 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 6 of Venue is proper in this judicial district pursuant to 28 U.S.C Background and Factual Averments 31. Plaintiff repeats and realleges the allegations contained in Paragraphs 1-26 hereof as is fully set forth herein. 32. Defendants use of their UBEU mark has been without the consent of plaintiffs, has caused confusion and is likely to continue to cause confusion as to source, sponsorship, or affiliation and, in particular, tends to and does falsely create the impression that the clothing marketed under their UBEU mark is authorized, approved, or sponsored by plaintiffs when, in fact, it is not. 33. Plaintiffs have no control over the presentation, or appearance of Defendants facilities, have no control over the presentation, format, or content of Defendants advertisements, nor any control over how UBEU is used, and because of the confusion as to the source created by Defendants, plaintiff s goodwill with its UBU marks is at the mercy of Defendants. 34. On or about August 3, 2007, counsel for plaintiffs sent a letter to Defendants requesting that Defendants abandon the use of the UBEU mark. 35. Defendants activities complained of herein constitute willful and intentional infringement of plaintiffs UBU marks, have disregarded plaintiffs - 6 -

7 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 7 of 16 rights, and have continued in spite of Defendants knowledge that the use of their UBEU mark is in direct contravention of plaintiffs rights. 36. Plaintiffs have no adequate remedy at law and are suffering irreparable harm and damage as a result of the acts of Defendants complained of herein. COUNT II False Designations of Origin And False Descriptions And Representations Jurisdiction and Venue 37. This claim arises under the provisions of the Trademark Act of 1946, 15 U.S.C. 1051, et. seq., particularly under 15 U.S.C. 1125(a), and alleges the use in commerce of false designations of origin and false descriptions and representations. 38. The Court has jurisdiction over the subject matter of the claim pursuant to 15 U.S.C and 28 U.S.C Venue is proper in this judicial district pursuant to 28 U.S.C Background and Factual Averments 40. Plaintiff repeats and realleges the allegations contained in Paragraphs 1-35 hereof as is fully set forth herein

8 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 8 of Upon information and belief, Defendants have used in conjunction with their UBEU mark, false designations of origin and false descriptions and representations, including words, terms, names, or symbols which tend to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendants with plaintiffs, or as to the origin, sponsorship, or approval of Defendants goods, services, or commercial activities by plaintiffs and has caused such to enter into commerce with full knowledge of the falsity of such designations of origin and such descriptions and representations, all to the detriment of plaintiffs; in particular, the displaying of their UBEU mark in conjunction with the sale of clothing constitutes false descriptions and representations with the express intent to falsely describe or represent such goods offered, to trade upon the reputation of plaintiffs, and to improperly appropriate the valuable trademark rights of plaintiffs. 42. Upon information and belief, Defendants have used in conjunction with their UBEU mark, false designations of origin and false descriptions and representations, including words, terms, names, or symbols which in commercial advertising and promotion tend to misrepresent the nature, characteristics, and qualities of Defendants goods and commercial activities and has caused such to - 8 -

9 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 9 of 16 enter into commerce with full knowledge of the falsity of such designations of origin and such descriptions and representations, all to the detriment of plaintiffs; in particular, the displaying of their UBEU mark in conjunction with print, web, and television advertisements constitute false descriptions and representations with the express intent to falsely describe or represent such goods offered in conjunction with Defendants name, to trade upon the reputation of plaintiffs, and to improperly appropriate the valuable trademark rights of plaintiffs. 43. Upon information and belief, Defendants activities complained of herein constitute federal unfair competition. 44. Plaintiffs have no adequate remedy at law and is suffering irreparable harm and damage as a result of the acts of Defendants complained of herein. COUNT III Common Law Trademark Infringement and Unfair Competition Jurisdiction And Venue 45. This claim arises under the common laws of this Commonwealth relating to trademark infringement and unfair competition. 46. This Court has jurisdiction over the subject matter of this claim pursuant to the provisions of 28 U.S.C. 1338(b), thus being a claim of unfair competition - 9 -

10 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 10 of 16 joined with substantial and related claims under the Trademark Laws of the United States as set forth in Counts I and II, and under the Doctrine of Pendant Jurisdiction as embodied in 28 U.S.C Venue is proper in this judicial district pursuant to 28 U.S.C Background and Factual Averments 48. Plaintiff repeats and realleges the allegations contained in Paragraphs 1-43 as is fully set herein. 49. As more fully set forth above, the UBU marks have acquired a recognition in the minds of the public as identifying plaintiffs and is indicative of origin, sponsorship, and/or association with plaintiffs. The public is likely to attribute to plaintiffs the use by Defendants of their UBEU mark as a source of origin, authorization, and/or sponsorship for Defendants marketing of clothing and, therefore, to lead the public to Defendants facilities in that erroneous belief. 50. Upon information and belief, Defendants have intentionally appropriated the goodwill associated with the UBU marks and have used it in association with marketing of clothing with the intent of causing confusion, mistake, and deception as to the source of goods, and with the intent to present their clothing as that of

11 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 11 of 16 plaintiffs, and as such, Defendants have committed trademark infringement and unfair competition under the common law. 51. Upon information and belief, Defendants conduct complained of herein constitutes common law trademark infringement and unfair competition. 52. Plaintiffs have no adequate remedy at law and have suffered irreparable harm and damage as a result of Defendants acts as aforesaid. COUNT IV Federal Dilution Under The Lanham Act Jurisdiction and Venue 53. This claim arises under the provisions of the Trademark Act of 1946, 15 U.S.C. 1125(c), and is for the dilution of trademarks. 54. This Court has jurisdiction over the subject matter of this claim pursuant to 15 U.S.C and 28 U.S.C Venue is proper in this judicial district pursuant to 28 U.S.C Background and Factual Averments 56. Plaintiff repeats and realleges the allegations contained in contained in Paragraphs 1-51 hereof as is fully set herein

12 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 12 of The UBU marks have been used in commerce for over fifteen (15) years and due to such use and widespread advertising, have become famous and have gained a distinctive quality in the minds of the public. 58. Defendants engage in interstate commerce. 59. Upon information and belief, Defendants market and sell to a less affluent, less discriminating customer of clothing than does Nordstrom. 60. Upon information and belief, such marketing and selling occurs within the same mall as Nordstrom s, UBU s exclusive mall retailer. 61. Defendants use of their UBEU mark has been without the consent of plaintiffs and has caused dilution of the UBU mark. 62. Plaintiffs have no adequate remedy at law and are suffering irreparable harm and damages as a result of the acts of Defendants complained of herein. COUNT V State Law Dilution Jurisdiction and Venue 63. This claim arises under 54 Pa. C.S.A and the common law of this Commonwealth relating to injury to business reputation and dilution of trademarks

13 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 13 of This Court has jurisdiction over the subject matter of this claim pursuant to the provisions of 28 U.S.C. 1338(b), this being a claim of dilution joined with substantial and related claims under the Trademark Laws of the United States, to wit: Counts I, II, and IV and under the Doctrine of Pendant Jurisdiction as embodied in 28 U.S.C Venue is proper in this judicial district pursuant to 28 U.S.C Background and Factual Averments 66. Plaintiff repeats and realleges the allegations contained in Paragraphs 1-61 hereof as is fully set herein. 67. Defendants intended to willfully appropriate the goodwill of the UBU marks when Defendants chose to market and sell using their UBEU mark. 68. Defendants use of their UBEU mark weakens the commercial value of the UBU marks. 69. Defendants use of their UBEU mark has diluted the distinctive quality of the UBU marks. 70. Plaintiffs have no adequate remedy at law and are suffering irreparable harm and damages as a result of the acts of Defendants complained of herein

14 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 14 of 16 WHEREOF, plaintiffs demand: 1. That a permanent injunction be issued enjoining Defendants: A. From using their UBEU mark; B. From using any logo, trademark, or trade name which may be calculated to falsely represent or which has the effect of falsely representing that the goods of Defendants or of third parties are sponsored by, authorized by, or in any way associated with plaintiffs; C. From infringing the UBU marks; D. From otherwise unfairly competing with plaintiffs; E. From falsely representing themselves as being connected with plaintiffs, or sponsored by or associated with plaintiffs, or engaging in any act which is likely to falsely cause the public to believe that Defendants are associated with plaintiffs; and F. From affixing, applying, annexing, or using in connection with their marketing of clothing, a false designation or description or representation, including words, terms, name, or other symbols,

15 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 15 of 16 tending falsely to describe or represent the items displayed as being those of plaintiffs. 2. That Defendants be required to account to plaintiffs for all of Defendants profits and the actual damages suffered by plaintiffs as a result of Defendants acts of infringement, dilution, and unfair competition. 3. That plaintiffs have a recovery from Defendants of three times the amount of actual damages, pursuant to 15 U.S.C That plaintiffs have a recovery from Defendants of the costs of this action and plaintiffs reasonable counsel fees pursuant to 15 U.S.C

16 Case 3:07-cv ARC Document 1 Filed 08/03/2007 Page 16 of That plaintiffs be granted all other relief and further relief as the Court may deem just and proper. Respectfully submitted, Mitchell A. Smolow PA Hampton Road Shavertown, PA (O) (F) msmolow@smolowlaw.com Attorney for Plaintiffs Date: August 3,

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18 Trademark Electronic Search System (TESS) Case 3:07-cv ARC Document 1-3 Filed 08/03/2007 Page 2 of 14 United States Patent and Trademark Office Home Site Index Search FAQ Glossary Guides Contacts ebusiness ebiz alerts News Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Wed Aug 1 04:08:45 EDT 2007 Logout Start Please logout when you are done to release system resources allocated for you. List At: OR Jump to record: Record 57 out of 107 Internet Browser to return to TESS) ( Use the "Back" button of the Typed Drawing Word Mark Goods and Services U.B.U. IC 025. US G & S: garment dyed and washed, cotton knit and woven clothing, namely, pants, shirts, vests, blouses and jackets. FIRST USE: FIRST USE IN COMMERCE: Mark Drawing Code (1) TYPED DRAWING Serial Number Filing Date January 17, 1997 Current Filing Basis 1A Original Filing Basis 1A Published for Opposition June 30, 1998 Registration Number Registration Date January 30, 2001 Owner (REGISTRANT) BLAU, ALAN INDIVIDUAL UNITED STATES 1913 Firethorne Lane Villanova PENNSYLVANIA Prior Registrations Type of Mark TRADEMARK (1 of 2) [8/1/2007 8:59:04 PM]

19 Trademark Electronic Search System (TESS) Register Affidavit Text Live/Dead Indicator Case 3:07-cv ARC Document 1-3 Filed 08/03/2007 Page 3 of 14 PRINCIPAL SECT 15. SECT 8 (6-YR). LIVE.HOME SITE INDEX SEARCH ebusiness HELP PRIVACY POLICY (2 of 2) [8/1/2007 8:59:04 PM]

20 Trademark Electronic Search System (TESS) Case 3:07-cv ARC Document 1-3 Filed 08/03/2007 Page 4 of 14 United States Patent and Trademark Office Home Site Index Search FAQ Glossary Guides Contacts ebusiness ebiz alerts News Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Wed Aug 1 04:08:45 EDT 2007 Logout Start Please logout when you are done to release system resources allocated for you. List At: OR Jump to record: Record 74 out of 107 Internet Browser to return to TESS) ( Use the "Back" button of the Typed Drawing Word Mark Goods and Services U.B.U. INTERNATIONAL IC 025. US G & S: garment dyed and washed, cotton knit and woven clothing, namely, pants, shirts, vests, blouses and jackets. FIRST USE: FIRST USE IN COMMERCE: Mark Drawing Code (1) TYPED DRAWING Serial Number Filing Date July 23, 1993 Current Filing Basis 1A Original Filing Basis 1A Published for Opposition May 7, 1996 Registration Number Registration Date July 30, 1996 Owner (REGISTRANT) Blau, Alan TA U.B.U. International INDIVIDUAL UNITED STATES 1913 Firethorn Lane Villanova PENNSYLVANIA Attorney of Record MITCHELL SMOLOW, ESQ. (1 of 2) [8/1/2007 9:00:07 PM]

21 Trademark Electronic Search System (TESS) Case 3:07-cv ARC Document 1-3 Filed 08/03/2007 Page 5 of 14 Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "INTERNATIONAL" APART FROM THE MARK AS SHOWN Type of Mark TRADEMARK Register PRINCIPAL Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) Renewal 1ST RENEWAL Live/Dead Indicator LIVE.HOME SITE INDEX SEARCH ebusiness HELP PRIVACY POLICY (2 of 2) [8/1/2007 9:00:07 PM]

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27 7/18/2007 Sears.com - Weekly Ad Page 1 of 1 Case 3:07-cv ARC Document 1-3 Filed 08/03/2007 Page 11 of 14 Sears: 160 N Gulph Rd Ste 4000, Plaza At King of Prussia Kng of Prussa, PA Tel: Map & Driving Directions Select Another Location Browse by Department: -- click for departments -- Search Ad Printable Shopping List 0 Specials on your list» Prices effective Sunday, Jul 15th - Saturday, Jul 21st (except as noted) Browse this Ad Browse Ad in dial-up (HTML) mode New Summer Survey

28 7/18/2007 Sears.com Page 1 of 3 Case 3:07-cv ARC Document 1-3 Filed 08/03/2007 Page 12 of 14 Order Status Customer Service My Profile Recently Viewed Cart - 0 items Search in All Departments for

29 7/18/2007 Sears.com Page 2 of 3 Case 3:07-cv ARC Document 1-3 Filed 08/03/2007 Page 13 of 14 Help links Customer Service Shipping & Delivery Order Status Site Map Return Policy Product Recalls Purchasing in Alaska, Hawaii and Puerto Rico Other Services Sears Card Gift Registry Gift Cards Weekly Ads Sign Up for Specials Store Locator Terms of Use California Privacy Rights License Information Privacy Policy (Revised 06/11/2007) Children's Privacy Policy (Revised 07/01/2004) Sears Brands, LLC. Shop by Offers For Boys Entire Stock of Kids Denim & Screen Tees on Sale 40% Off Entire Stock of Backpacks 30% Off Entire Stock of Kids' TKS Uniform Separates, New At Sears. Plus, Knit Tops & Pants & Under BOGO 50% off on Skechers & Reeboks for Kids! For Girls Entire Stock of Kids Denim & Screen Tees on Sale 40% Off Entire Stock of Backpacks 30% Off Entire Stock of Kids' TKS Uniform Separates, New At Sears. Plus, Knit Tops & Pants & Under BOGO 50% off on Skechers & Reeboks for Kids! Shop by Category Girls 4-6x Shop all Girls 4-6x Backpacks & Accessories Bottoms Denim School Uniforms Tops Underwear & Socks Shoes Girls 7-16 Shop all Girls 7-16 Backpacks & Accessories Collections Bottoms Denim Novelty T-Shirts School Uniforms Tops Underwear & Socks Shoes Girls Plus Shop all Girls Plus Backpacks & Accessories Collections Bottoms Denim School Uniforms Tops Shoes Juniors Shop all Juniors Dresses Pants Denim School Uniforms Skirts Screen Tees Tops Shoes Boys 4-7 Shop all Boys 4-7 Backpacks & Accessories Bottoms Denim School Uniforms Tops Underwear & Socks Shoes Boys 8-20 Shop all Boys 8-20 Backpacks & Accessories Bottoms Denim Novelty T-Shirts School Uniforms Tops Underwear & Socks Shoes Young Mens Shop all Young Mens Casual Shirts Denim Novelty T-Shirts Outfits Underwear & Socks Shoes Shop by Brand

30 7/18/2007 Sears.com Page 3 of 3 Case 3:07-cv ARC Document 1-3 Filed 08/03/2007 Page 14 of 14 Girls Apparel: Bobby Jack Canyon River Blues Levi's Personal Identity The Cheetah Girls TKS US Polo Assn. Vanilla Star Shoes: Reebok Skechers TKS Juniors Apparel: Angels Bobby Jack Bongo Glo Jerry Leigh Levi's Personal Identity Self Esteem Union Bay Shoes: Adidas Bongo K9 MUDD New Balance Personal Identity Reebok Skechers Boys Apparel: Canyon River Blues Levi's Southpole TKS US Polo Assn. Shoes: Adidas Reebok Skechers TKS US Polo Assn. Young Mens Apparel: Canyon River Blues Levi's Paco Southpole US Polo Assn. Shoes: Adidas Asics Avirex GBX Lugz New Balance Reebok Skechers Southpole US Polo Assn.