Bombshells trademark declaratory judgment complaint.pdf

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK --------------------------------------------------------------------------x AMERICAN BOMBSHELLS PATRIOT SERVICES, INC.,: Plaintiff, v. AERO MARKETING GROUP, INC., Defendant. -------------------------------------------------------------------------x CIVIL ACTION NO. JURY TRIAL DEMANDED COMPLAINT FOR DECLARATORY JUDGMENT Plaintiff, American Bombshells Patriot Services, Inc. ("Plaintiff') by and through its attorneys, brings this action for declaratory judgment and alleges against Defendant, Aero Marketing Group, Inc. ("Defendant"), the following: NATURE OF THE ACTION 1. Plaintiff seeks declaratory relief from this Court in order to prevent Defendant from monopolizing the commonly used term "BOMBSHELLS" to refer to "very attractive women" for its own exclusive use. Specifically, Defendant claims that Plaintiffs use of its trademark and trade name AMERICAN BOMBSHELLS, which is registered for charitable fundraising services and a wide variety of apparel (U.S. Registration Nos. 3,997,625 and 4,466,933), use on calendars in connection with its charitable fundraising services infringes and dilutes Defendant's trademark rights in its Registration No. 3,434,220 for the mark BOMBSHELLS and Airplane Design for printed matter, including calendars. Plaintiff brings this action to clarify the rights of the parties. Plaintiff thus seeks a declaratory judgment that the use of its name and mark AMERICAN BOMBSHELLS for its fundraising calendars does not Case 1:15-cv-01352 Document 1 Filed 03/16/15 Page 1 of 8 PageID #: 1

Transcript of Bombshells trademark declaratory judgment complaint.pdf

  • UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK

    --------------------------------------------------------------------------x

    AMERICAN BOMBSHELLS PATRIOT SERVICES, INC.,:

    Plaintiff,

    v.

    AERO MARKETING GROUP, INC.,

    Defendant.

    -------------------------------------------------------------------------x

    CIVIL ACTION NO.

    JURY TRIAL DEMANDED

    COMPLAINT FOR DECLARATORY JUDGMENT

    Plaintiff, American Bombshells Patriot Services, Inc. ("Plaintiff') by and through its

    attorneys, brings this action for declaratory judgment and alleges against Defendant, Aero

    Marketing Group, Inc. ("Defendant"), the following:

    NATURE OF THE ACTION

    1. Plaintiff seeks declaratory relief from this Court in order to prevent Defendant

    from monopolizing the commonly used term "BOMBSHELLS" to refer to "very attractive

    women" for its own exclusive use. Specifically, Defendant claims that Plaintiffs use of its

    trademark and trade name AMERICAN BOMBSHELLS, which is registered for charitable

    fundraising services and a wide variety of apparel (U.S. Registration Nos. 3,997,625 and

    4,466,933), use on calendars in connection with its charitable fundraising services infringes and

    dilutes Defendant's trademark rights in its Registration No. 3,434,220 for the mark

    BOMBSHELLS and Airplane Design for printed matter, including calendars. Plaintiff brings

    this action to clarify the rights of the parties. Plaintiff thus seeks a declaratory judgment that the

    use of its name and mark AMERICAN BOMBSHELLS for its fundraising calendars does not

    Case 1:15-cv-01352 Document 1 Filed 03/16/15 Page 1 of 8 PageID #: 1

  • infringe upon or dilute any trademark rights that Defendant may hold with respect to the mark

    BOMBSHELLS and Design.

    AMERICAN BOMBSHELLS v.

    THE PARTIES

    2. Plaintiff, American Bombshells Patriot Services, Inc. is a 501(c) 3 non-profit

    organization with the mission to serve and honor our nation's defenders, veterans and their

    families, qualified to do business and is doing business in the State of New York and in this

    judicial district.

    3. Upon information and belief, Defendant, Aero Marketing Group, Inc., is a Texas

    corporation, with offices at 2716 Ranchview Drive, Richardson, Texas 75082, and is transacting

    business in the State of New York and in this judicial district.

    JURISDICTION AND VENUE

    4. The Court has jurisdiction over this declaratory judgment action pursuant to the

    Federal Declaratory Judgments Act, 28 U.S.C. 2201(a) and 2202, as well as under 28 U.S.C.

    1331and1338(a) and 15 U.S.C. 1121.

    5. The Court has personal jurisdiction over Defendant because, upon information

    and belief, Defendant transacts and solicits business in the State of New York and within this

    judicial district.

    6. Venue is proper in this judicial district under 28 U.S.C. 1391(b) and (c) and

    1400(a),

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  • FACTS

    Defendant's Allegations of Infringement

    7. On December 8, 2014, Defendant, through its counsel, sent a letter to Plaintiff.

    The letter demanded that Plaintiff"promptly cease and desist its use of the 'BOMBSHELLS'

    designation in connection with the sale of any of Plaintiffs printed materials, including, but not

    limited to, its annual calendars, and remove all such infringing articles and products from the

    marketplace".

    8. The letter concluded with the following threat: "I trust that this letter makes

    Defendant's position clear and that no further action by Defendant will be necessary to remedy

    this infringement".

    9. On January 9, 2015, the undersigned counsel for Plaintiff in a telephone

    conversation with Defendant's counsel followed by a written response set forth Plaintiffs

    position disagreeing with Defendant's claims of infringement. Specifically, Plaintiff does not

    believe that its use of AMERICAN BOMBSHELLS on its fundraising calendars is likely to

    cause confusion with Defendant's use of its BOMBSHELLS and Airplane Design or dilute

    Defendant's said trademark, or that Defendant can monopolize the common term

    BOMBSHELLS. Plaintiffs counsel also included in his response six copies of calendars that

    use the BOMBSHELLS name: Bombshells Galore Calendar; Girls of Sport Bombshells

    Calendar; Bianca Bombshell Pinup Calendar; The Atomic Bombshells Calendar; Pinup

    Bombshells Calendar; and 2012 American Bombshells Modem Pinup Wall Calendar.

    10. Defendant's counsel did not respond to Plaintiffs counsel's response until March

    6, 2015. However, this time counsel not only continued to claim exclusive trademark rights in

    the word BOMBSHELLS for calendars, but also alleged that Plaintiffs use and registrations of

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  • AMERICAN BOMBSHELLS for clothing (Registration No. 4,466,933) also infringes

    Defendant's alleged prior use of BOMBSHELLS for apparel.

    11. Despite further communications between counsel, it does not appear that this

    matter can be resolved without resorting to litigation. As a result, Plaintiff has a real and

    reasonable apprehension oflitigation based on Defendant's statements and conduct. Moreover,

    Defendant's allegations that Plaintiff is manufacturing, marketing and selling goods that

    infringe its intellectual property have created an actual, substantial and justiciable controversy

    between Plaintiff and Defendant concerning the right of Plaintiff to continue to use its

    AMERICAN BOMBSHELLS mark not only in connection with its fundraising services in the

    form of an annual calendar, but also its use and registration of its mark for clothing.

    The Use of AMERICAN BOMBSHELLS Does Not Infringe Any of Defendant's Claimed Rights in the BOMBSHELLS Name Alone

    12. First, Defendant's mark uses an airplane design in a distinctly different style

    along with the BOMBSHELLS name together forming a completely different look and feel.

    13. In Plaintiffs mark, the words AMERICAN BOMBSHELLS is taken directly

    from the name of its organization and to the women who run the organization and are

    affectionately referred to as "BOMBSHELLS".

    14. As a result, the parties' respective uses of the word BOMBSHELLS are plainly

    different, and not likely to cause confusion.

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  • COUNT 1

    DECLARATORY JUDGMENT FOR NON-INFRINGEMENT OF TRADEMARK

    15 U.S.C. 1114(a)

    15. Plaintiff repeats and incorporates herein by reference each and every one of the

    allegations contained in paragraphs 1 through 14, inclusive, of this complaint with the same

    force and effect as if hereinagain set forth in full.

    16. The use of AMERICAN BOMBSHELLS in connection with the manufacture,

    marketing and sale of fundraising calendars and/or clothing through Plaintiff's own distinct

    channels of trade, is not likely to cause confusion of sponsorship or affiliation with Defendant's

    BOMBSHELLS and Airplane Design.

    17. Plaintiff seeks a declaratory judgment from this Court that its manufacture,

    marketing, sale and use of AMERICAN BOMBSHELLS on calendars for its fundraising

    activities and/or clothing does not infringe Defendant's claimed BOMBSHELLS and Airplane

    Design mark.

    COUNT II

    DECLARATORY JUDGMENT - NO UNFAIR COMPETITION 15 U.S.C. 1125(a)

    18. Plaintiff repeats and incorporates herein by reference each and every one of the

    allegations contained in paragraphs 1through14, inclusive, of this complaint with the same

    force and effect as if hereinagain set forth in full.

    19. Plaintiff seeks a declaratory judgment from this Court that the use of

    AMERICAN BOMBSHELLS for its fundraising calendars and/or clothing does not unfairly

    compete with Defendant's claimed BOMBSHELLS and Airplane Design mark.

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  • COUNT III

    DECLARATORY JUDGMENT FOR DETERMINATION OF NO FALSE DESIGNATION OF ORIGIN

    15 U.S.C. 1125(a)

    20. Plaintiff repeats and incorporates herein by reference each and every one of the

    allegations contained in paragraphs 1 through 14, inclusive, of this complaint with the same force

    and effect as if hereinagain set forth in full.

    21. Plaintiffs AMERICAN BOMBSHELL calendars and/or clothing clearly

    originate from Plaintiff and do not promote any connection or association with Defendant.

    22. Plaintiff seeks a declaratory judgment from this Court that the use of

    AMERICAN BOMBSHELLS on Plaintiffs annual calendars and/or clothing does not constitute

    false designations of origin.

    COUNT IV

    DECLARATORY JUDGMENT FOR DETERMINATION OF NON-DILUTION OF TRADEMARK

    15 U.S.C. 1125(c) AND NEW YORK LAW

    23. Plaintiff repeats and incorporates herein by reference each and every one of the

    allegations contained in paragraphs 1 through 14, inclusive, of this complaint with the same force

    and effect as if hereinagain set forth in full.

    24. Defendant's BOMBSHELLS mark is not famous as defined by 15 U.S.C.

    1125(c), i.e., it is not widely recognized by the general consuming public as a designation of

    source of the goods or services of the mark's owner.

    25. Plaintiffs AMERICAN BOMBSHELLS mark is not substantially similar to any

    claimed mark of Defendant that includes the word "BOMBSHELLS".

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  • 26. Plaintiffs use of the AMERICAN BOMBSHELLS mark for fundraising

    calendars and/or clothing is not likely to dilute the distinctive quality or harm the reputation of

    Defendant's claimed BOMBSHELLS and Airplane Design.

    27. Plaintiff seeks a declaratory judgment from this Court that the use of

    AMERICAN BOMBSHELLS on its fundraising calendars and/or clothing does not constitute

    trademark dilution under the Lanham Act or under New York law.

    PRAYER FOR RELIEF

    WHEREFORE, Plaintiff prays for a declaratory judgment that:

    A. The past, present and continued manufacture, marketing and sale by Plaintiff of

    its AMERICAN BOMBSHELLS fundraising calendars and/or clothing do not infringe, unfairly

    compete with, or dilute Defendant's BOMBSHELLS and Airplane Design mark or falsely

    designate the origin of Plaintiffs calendars and/or clothing or otherwise constitute a violation of

    any of Defendant's rights.

    B. Defendant, its officers, agents, servants, employees and attorneys, and those

    persons in active concert or participation or otherwise in privity with it, be permanently enjoined

    and restrained from instituting, prosecuting or threatening any action against Plaintiff, or any of

    its affiliates, or anyone in privity with them with respect to the manufacture, marketing and sale

    of Plaintiffs AMERICAN BOMBSHELLS calendars and/or clothing.

    C. Plaintiff have and recover from Defendant its reasonable attorneys' fees, costs and

    disbursements of this civil action, pursuant to Section 35 of the Lanham Act, 15 U.S.C. 1117;

    and

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  • D. Plaintiff have such other and further relief as the Court may deem just and proper.

    Dated: New York, New York March 16, 2015

    Respectfully submitted

    COLUCCI & UMANS

    By:.i~J-~ FrankJ: ~cci (8441)

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    Attorneys for Plaintiff 218 East 501h Street New York, New York 10022 212-935-5700 [email protected]

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