IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF NORTH CAROLINA CHARLOTTE DIVISION. Civil Action No.

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1 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF NORTH CAROLINA CHARLOTTE DIVISION Civil Action No. CHARLOTTE PLASTIC SURGERY ) CENTER, P.A., ) ) Plaintiff, ) ) v. ) ) C O MPL A IN T PREMIER PLASTIC SURGERY ) CENTER, P.L.L.C., ) (JUR Y T RI A L D E M A ND E D) ) Defendant. ) ) Plaintiff Charlotte Plastic Surgery Center, P.A., Plaintiff, by and through its undersigned counsel, for its Complaint against Defendant Premier Plastic Surgery Center, P.L.L.C. N A T UR E O F T H E A C T I O N 1. This is an action for injunctive and monetary relief based on Premier infringement and unfair competition in violation of federal and state law. Plaintiff is bringing this action to redress the willful and systematic violation of rights in its name and trademark CHARLOTTE PLASTIC SURGERY by a direct competitor, Premier. With full knowledge of rights in its name and trademark Premier is intentionally using the exact, full, registered, composite mark as the caption for Google sponsored link advertisements use of ark in captioning for its online Google ads and on its websites improperly diverts and confuses consumers and is intended and calculated to exploit the goodwill that Plaintiff has built into its trademark. In order to prevent irreparable harm, CPS seeks an injunction 1 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 1 of 15

2 to restrain infringement and unfair competition, as well as appropriate monetary relief. PA R T I ES 2. Plaintiff is a North Carolina professional association with its principal place of business located in Charlotte, North Carolina. 3. Defendant Premier is, upon information and belief, a North Carolina professional limited liability company, with its principal place of business in Matthews, North Carolina. 4. Upon sole owner of Premier. 5. Upon information and belief, Premier does substantial business in the State of North Carolina and this judicial district, in that it advertises, offers its services and provides its services in the State of North Carolina and this judicial district. 6. Upon information and belief, Premier has offered and provided cosmetic and plastic surgery services from its Matthews, North Carolina location since JURISDI C T I O N A ND V E NU E 7. This Court has subject matter jurisdiction over the federal claims in this case pursuant to 28 U.S.C and 1338, in that they arise under Sections 32 and 43 of the Lanham Act. 15 U.S.C and This Court has subject matter jurisdiction over the state claims in this case (i) pursuant to 28 U.S.C. 1338(b), in that they are claims of unfair competition joined with substantial and related claims under the federal trademark laws and (ii) pursuant to U.S.C. 1367(a) and the principles of supplemental jurisdiction. 2 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 2 of 15

3 8. Venue is proper in this district under 28 U.S.C. 1391(b). F A C TS C O M M O N T O A L L C L A I MS 9. Plaintiff is the owner of a United States trademark registration for the mark CHARLOTTE PLASTIC SURGERY, registered on the Principal Register of the United States Trademark Office, Registration Number , for Registration Registration is attached hereto as Exhibit A and incorporated by reference herein. The Mark was registered under Section 2(f) of 15 U.S.C. 1052(f) on the basis of acquired distinctiveness or secondary meaning. The Registration disclaims the exclusive right 10. The Registration is valid and subsisting and constitutes prima facie evidence of the Mark and the Registrations, the validity of the Mark and and in connection with the goods and services recited in the Registration. The Registration is incontestable in accordance with 15 U.S.C and 1115(b) and connection with cosmetic and plastic surgery. 11. Plaintiff has made a substantial investment in the promotion and protection of the Mark and considers it among its most important and valuable assets. Through extensive and continuous use of the Mark in connection with the provision of services since 1977, the Mark has come to be associated with Plaintiff and identifies Plaintiff as the source of the services offered in connection with the Mark. The Mark is today well-known and widely recognized among consumers, has frequently been featured in advertising over the years, and has become famous and distinctive among the relevant consuming public, serving to distinguish services from those of its competitors and to identify Plaintiff as the source of those services. Plaintiff has enjoyed significant and prolonged success in offering its plastic surgery and cosmetic 3 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 3 of 15

4 services. Plaintiff has built a reputation among consumers for quality and excellence, and has been featured extensively in news media. 12. Search engines such as Google, in addition to listing search results based on on search results pages. Sponsored Link Ads are a form of advertising which caption and text along with an accompanying link to a website specified by the advertiser. Sponsored Link Ads are triggered by the entry of certain keywords that may be entered by computer users. 13. When an advertiser initiates a Sponsored Link Ads campaign through Google AdWords, the advertiser purchase keywords which serve to trigger the paid advertisement. The advertiser also has the ability to specify the precise title that will appear as the caption for the Sponsored Link Ad. Caption designation is a separate and distinct component of Google AdWords. 14. Plaintiff relies extensively on the internet to help market and promote its services. Unlike other areas of medicine where specialty practices often rely primarily on physician referrals, cosmetic and plastic surgery services are typically marketed directly to potential consumers of these services. Accordingly, online marketing activities are of great importance to cosmetic and plastic surgery practices, as a means of effectively competing in the marketplace and generating business. Plaintiff maintains an internet website at which domain is owned by Plaintiff and through which it promotes its services. website describes the various services that it offers. Plaintiff advertises extensively on the internet, including employment of Google Sponsored Link Ads employing the caption website. 4 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 4 of 15

5 15. T Plaintiff as the single source for cosmetic and plastic surgery services, and the Mark is entitled to trademark protection through acquisition of secondary meaning. 16. Plaintiff has vigorously policed the Mark, particularly with regard to online marketing activities. Several of direct competitors offering plastic and cosmetic surgery services in the Charlotte area have changed their online marketing practices in response to being contacted by Plaintiff. Direct competitors of Plaintiff have agreed to refrain, after being contacted by Plaintiff, from Plastic Surger either as a visible caption on their websites or in Sponsored Link Ads. 17. Through a simple adjustment in a Google Sponsored Link Ads campaign, a competitor-advertiser of Plaintiff can easily adopt an alternative captioned title such as, NC Plastic Surgery, Charlotte-Area Plastic Surgery, etc., instead of using the Mark in captioning. These alternative captions permit specification of the nature and geographic location of services without adoption and display of the Mark in a misleading manner. 18. Premier is a direct competitor of Plaintiff. Premier maintains websites through which Premier promotes the sale of its services. The Premier websites are the focus of current marketing and advertising cam accessed through a number of different URL addresses, including and 5 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 5 of 15

6 19. In September 2009, Plaintiff became aware that Premier had begun marketing its services through employment of Google Sponsored Link Ads containing the the Infringing Sponsored Link Ads. The Infringing Sponsored Link Ads contained a link to website. 20. In response to a cease and desist notification from Plaintiff to Premier, Dr. Ferrari, on behalf of Premier, tendered a handwritten faxed note, which stated in pertinent part, 21. However, the Infringing Sponsored Link Ads persisted. Thereafter, Plaintiff contacted reply letter dated December -lookingresultsnc.com, 22. employment of Infringing Sponsored Link Ads responsibility. Dr. Ferrari, on behalf of Premier, replied by , writing in pertinent part: I spoke to yellowpages.com a couple of weeks ago and they said their legal dept. was going to put something in writing for me. They changed it so my listing would appear working on it 23. In July 2010, Plaintiff became aware that Premier had begun employing numerous website, such as Charlotte Charl 6 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 6 of 15

7 24. Plaintiff again contacted Premier, and Dr. Ferrari, on behalf of Premier, replied by of the problem (see below) and they're working on it. Let me know if everything else is OK. Thanks. 25. d the following forwarded exchange between Dr. Ferrari and David Phillips, Chief Executive Officer of NKP Medical Marketing, INC: David A lawyer for a group called " Charlotte Plastic Surgery" wrote me a letter saying that because " Charlotte Plastic Surgery" is a registered trademark, I can't use those 3 words together in that order in my website. For example, when you click the "Blog" button on my site, it shows up as " Charlotte Plastic Surgery Blog" as the title. Can you please go through all the pages of my website and change this. You can use "Plastic Surgery Charlotte", but just not " CPS". Thanks. Victor Ferrari Wow. I am very surprised they could trademark that, we will start the changes have them done within 2 days at the latest, likely much sooner. Sincerely, David Phillips Chief Executive Officer NKP Medical Marketing, INC 26. In November 2010, Plaintiff became aware that Premier had resumed marketing its services through employment of (i) Infringing Sponsored Link Ads and (ii) captioned references website. A representative example of a Google Infringing Sponsored Link Ad from Premier is as follows: Charlotte Plastic Surgery Call our Plastic Surgery Clinic For Cosmetic Surgery Procedures 7 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 7 of 15

8 27. Meet Dr. Victor Ferrari Charlotte Plastic Surgery 28. CPS again contacted Premier about the foregoing, which now asserted for the first time, through counsel, that Premier was under no legal obligation to discontinue these uses and would not discontinue these uses. 29. is likely to cause confusion and mistake and to deceive the consuming public as to the source, origin or sponsorship of services. Actual and potential clientele for cosmetic and plastic surgery services are likely to believe that services, or originate from Plaintiff, or that are endorsed, sponsored by or approved by Plaintiff, or that there is some affiliation or connection between the two practices. 30. customers on the reputation built up by Plaintiff due to either the belief that there is a connection initial credibility through the use of the Mark and even once any confusion is dissipated, the potential client is now considering or using the services of Premier, rather than those of Plaintiff. 31. As set forth above, Plaintiff has notified Premier that adoption and use of the Mark is likely to cause confusion and has requested that Premier halt its infringing conduct and take steps to prevent such confusion in the future. Despite such requests, Premier has failed and refused to fully alter its conduct, and Premier continuing, despite its promises to do so. 8 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 8 of 15

9 32. Premier has adopted and is intentionally using the Mark to trade upon the reputation and goodwill and consumer trust associated with services, and to give s services customer appeal and salability which they would not otherwise have in the absence of the confusing similarity to the Mark. F IRST C L A I M F O R R E L I E F (Service Mark Infringement) 33. The allegations of paragraphs 1 through 32 above are realleged and incorporated by this reference. 34. Plaintiff is the owner of the Mark and has actually and continuously used the Mark in interstate commerce in connection with cosmetic and plastic surgery services since The Mark has acquired secondary meaning. 36. Without the authorization or consent of Plaintiff, Premier has used and continues to use the Mark to advertise services to consumers that directly compete with the services offered and provided by Plaintiff, in or affecting interstate commerce. 37. the Mark constitutes use in interstate commerce and trademark infringement in violation of Section 32(a) of the Lanham Act, 15 U.S.C. 1114(a). services is without permission and is likely to cause confusion and mistake, and to deceive, all to the detriment of Plaintiff. 38. has suffered damages and will continue to suffer damages Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 9 of 15

10 40. Accordingly, Plaintiff is entitled to recover all damages sustained by it, all of s profits as a result of the infringement, and all costs of the action, including 41. Plaintiff has been irreparably damaged is enjoined, Plaintiff will continue to suffer damages Accordingly, Plaintiff is entitled to injunctive relief pursuant to 15 U.S.C. 1116(a). SE C O ND C L A I M F O R R E L I E F (False Designation of O rigin Lanham Act 43(a), 15 U.S.C. 1125(a)) 42. The allegations of paragraphs 1 through 41 above are realleged and incorporated by this reference. 43. conduct as alleged above constitutes false designation of origin in violation of Lanham Act 43(a), 15 U.S.C. 1125(a), in that consumers are likely to believe that are provided by Plaintiff, or originate from Plaintiff, or are licensed, sponsored, or approved by Plaintiff, or that there is some affiliation or connection between Plaintiff and Premier. 44. As a direct and proximate result of conduct as alleged above, CPS has suffered harm and damage, in that Plaintiff has lost, is likely to lose, and is continuing to lose sales and profits that Plaintiff otherwise would have earned, and its reputation with consumers and the trade has been impaired and damaged. 45. Premier above is ongoing, and will cause continuing and irreparable damage to Plaintiff unless and until Premier is enjoined by this Court. 10 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 10 of 15

11 T H IRD C L A I M F O R R E L I E F (Common Law Service Mark Infringement and Unfair Competition) 46. The allegations of paragraphs 1 through 45 above are realleged and incorporated by this reference. 47. In addition to the Registration, through continuous and exclusive use of the Mark, Plaintiff has acquired common law service mark rights in the Mark as it has been used in connection with cosmetic and plastic surgery. 48. Plaintiff acquired its common law rights in the Mark many years prior to the acts of Premier complained of herein. 49. Premier above constitutes trademark infringement and unfair methods of competition in violation of federal common law and the common law of the State of North Carolina. 50. As a direct and proximate result of Premier Plaintiff has suffered damages and will continue to suffer damages. 51. Premier irreparable damage to business and reputation unless and until Premier is enjoined by this Court. 52. Premier knew or should have known that its conduct was reasonably likely to result in injury, damage, or other harm, thus warranting the award of punitive or other exemplary damages. 11 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 11 of 15

12 F O UR T H C L A I M F O R R E L I E F (Unfair and Deceptive T rade Practices N.C. Gen. Stat ) 53. The allegations of paragraphs 1 through 52 above are incorporated by this reference. 54. Premier above, was and is in commerce and affects commerce in the State of North Carolina. 55. Premier above, constitutes unfair and deceptive acts and practices and unfair methods of competition in violation of the provisions of N.C. Gen. Stat , et seq. 56. As a direct and proximate result of Premier Plaintiff has suffered damages and will continue to suffer damages, in that Plaintiff has lost, is likely to use, and will continue to lose sales and profits that Plaintiff otherwise would have earned, and its reputation with consumers and the trade has been impaired and damaged. 57. Premier ongoing, and will cause continuing and irreparable damages to business and reputation unless and until Premier is enjoined by this Court. 58. Premier has willfully engaged in the unfair methods of competition and unfair and deceptive acts and practices alleged above, and there has been unwarranted refusal by Premier to fully resolve the matters which constitute the basis of this suit, warranting Plaintiff pursuant to N.C. Gen. Stat Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 12 of 15

13 PR A Y E R F O R R E L I E F WHEREFORE, Plaintiff prays that the Court enter judgment in their favor and against Premier as follows: 1. That this Court issue a permanent injunction enjoining Premier, its directors, officers, employees, representatives and agents, and any persons or entities in active concert or participation with them, from any further infringing use of the Mark, or any use of any other designation, symbol or device which is confusingly similar to the Mark, such an injunction to include an order requiring Premier specifically to refrain from any use of CHARLOTTE PLASTIC SURGERY, regardless of font, style or capitalization, (i) as the caption or text of any search engine sponsored link advertising, or (ii) as captioned, highlighted or hyperlinked text websites or elsewhere; 2. That Premier be ordered to undertake, or to compensate Plaintiff for the cost of, corrective advertising and other corrective measures reasonably calculated to attempt to mitigate the confusion engendered by infringing conduct; 3. That Premier be ordered to account for all revenues, and other economic benefits and advantages, derived from the offering and provision of goods and services using the Mark; 4. That Premier be ordered to file with the Court and serve upon counsel a written report under oath within thirty (30) days after service of notice of entry of judgment or issuance of an injunction pursuant thereto, setting forth details of the manner in which Premier 1 through 3 above; 13 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 13 of 15

14 5. That Plaintiff have and recover of Premier actual damages sustained by reason of Premier Section 32(a) of the Lanham Act, 15 U.S.C. 1114(a) and Section 43(a), 15 U.S.C. 1125(a), in such amounts as may be proved at trial, such damages to be trebled pursuant to the provisions of Lanham Act 43(a), 15 U.S.C. 1117; 6. acts of infringement pursuant to 15 U.S.C. 1117(a)(1); 7. That Plaintiff have and recover of Premier its damages sustained by reason of Premier violation of N.C.G.S ; 8. That Plaintiff have and recover of Premier its damages sustained by reason of Premier amounts as may be proved at trial, together with punitive damages pursuant to N.C.G.S. 1D-15 in such amounts as may be adequate to punish Premier wanton conduct and to deter such conduct on the part of others; 9. That the Court deem this to be an exceptional case, and award to Plaintiffs its reasonable attorney fees incurred in prosecuting its claims under the Lanham Act, pursuant to the provisions of Lanham Act Section 35, 15 U.S.C. 1117; 10. That Plaintiff have and recover its reasonable attorney fees incurred in prosecuting its claim for unfair and deceptive trade practices pursuant to N.C.G.S ; 11. That Plaintiff have and recover its reasonable attorney fees incurred in prosecuting any other claim hereunder for which may be awardable; 14 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 14 of 15

15 12. That all costs of this action be assessed against Premier; 13. That Plaintiff have a trial by jury of all issues properly so triable; and 14. That Plaintiff have such other and further relief as the Court may deem just and proper. This the 6th day of January, A L I C E C A R M I C H A E L RI C H E Y, PL L C s/alice Carmichael Richey Alice Carmichael Richey N.C. Bar No Selwyn Avenue, Suite 420 Charlotte, NC Telephone: 704/ alice@acrichey.com R O B E R T A. M O N A T H, A T T O RN E Y A T L A W s/robert A. Monath Robert A. Monath N.C. Bar No South Main Street, Suite 201 Salisbury, NC Telephone: 704/ rob@robmonath.com Attorneys for Plaintiff Charlotte Plastic Surgery Center, P.A. 15 Case 3:11-cv RLV -DCK Document 1 Filed 01/06/11 Page 15 of 15