complaint kpmg kbmg

8/7/2019 Complaint Kpmg Kbmg

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Case 1:11-cv-01583-MGC Document 1 Filed 03/08/11 Page 1 of 28


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3. KPMG LLP provides to its clients, inter alia, professional services in interstatecommerce in the fields of accounting, auditing, tax, management, and financial and business

consulting under its famous name and mark KPMG.

4. Upon information and belief, Defendants offer similar professional services ininterstate commerce, including accounting, auditing, tax, management and financial and business

consulting services. Defendants advertise and promote those services at their website

WWW.KBLLC.COM.

5. Upon information and belief, the Individual Defendants control and direct thebusiness and operations of KBMG, derive financial benefit from the use of the name and mark

KBMG and were instrumental in Defendants selection of the name and mark KBMG.

6. Plaintiffs bring this action seeking, inter alia, a judgment that Defendants have:(i) infringed the federally registered KPMG Marks by, inter alia, using the name and mark

KBMG, which is likely to cause confusion, mistake and deception in violation of 32 of the

Lanham Act, 15 U.S.C. 1114; (ii) violated Plaintiffs rights under the federal unfair competition

law codified at 43(a) of the Lanham Act, 15 U.S.C. 1125(a) by, inter alia, using false

designations of origin, including KBMG, that are likely to cause confusion, mistake or deception

as to the affiliation, connection or association with Plaintiffs; (iii) diluted the distinctive quality

of Plaintiffs valuable rights in the KPMG Marks in violation of 43(c) of the Lanham Act, 15

U.S.C. 1125(c); (iv) diluted the distinctive quality of Plaintiffs valuable rights in the KPMG

Marks in violation of New York General Business Law 360-I; and (v) engaged in unfair

competition and trademark infringement in violation of the common law of New York.

7. Defendants acts have caused and continue to cause irreparable damage and injuryto Plaintiffs for which Plaintiffs have no adequate remedy at law. Plaintiffs seek injunctive



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relief, compensatory damages, Defendants profits, and other appropriate relief as set forth more

fully below.

PARTIES

8. KPMG International is a Swiss cooperative organized and existing under the lawsof Switzerland with a registered office address at Stadlin Advokatur, Baarerstrasse 12, 6300 Zug,

Switzerland. KPMG International carries on business activities for the overall benefit of the

KPMG network of member firms but does not provide professional services to clients, which

services are provided by member firms.

9. KPMG LLP is a limited liability partnership, duly organized under the laws of theState of Delaware, with its headquarters located at 345 Park Avenue, New York, New York,

10154-0102. KPMG LLP is the United States member firm of KPMG International. KPMG

LLP is one of the Big 4, the name often used to collectively describe the four largest national

accounting and auditing firms in the United States. KPMG LLP has offices throughout the

United States, including five offices in the State of New York and two offices in the City of New

York. KPMG LLP provides to its clients throughout the United States the highest quality

professional services in the fields of accounting, auditing, tax, and management, financial and

business consulting (among others), including in the areas of mergers and acquisitions, financial

transactions and restructuring (collectively, KPMG Services).

10. Upon information and belief, KBMG is a limited liability company organizedunder the laws of the State of New Jersey, with regular places of business at 6 East 45th Street,

10th Floor, New York, New York 10017 and at 106 Apple Street, Suite 101D, Tinton Falls, NJ

07724. KBMG competes with KPMG LLP in the United States by offering, in interstate

commerce, under the KBMG name and mark, professional services that are the same as or

substantially similar to the KPMG Services.



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11. Upon information and belief, Howard S. Krant is a founder and principal ofKBMG. Upon information and belief, Krant resides in New Jersey.

12. Upon information and belief, Scott H. Bialick is a founder and principal ofKBMG. Upon information and belief, Bialick resides in New Jersey.

13. Upon information and belief, Lawrence Scott Gitlitz is a founder and principal ofKBMG. Upon information and belief, Gitlitz resides in New Jersey.

14. Upon information and belief, Michael H. Hoffman is a founder and principal ofKBMG. Upon information and belief, Hoffman resides in New Jersey.

15. Upon information and belief, the Individual Defendants direct and control thebusiness and operations of KBMG, derive financial benefit from the use of name and mark

KBMG and were instrumental in Defendants selection of the name and mark KBMG.

SUBJECT MATTER JURISDICTION

16. This Court has subject matter jurisdiction pursuant to 15 U.S.C. 1121(a),28 U.S.C. 1331, 28 U.S.C. 1338(a) and 28 U.S.C. 1338(b). This Court has supplemental

jurisdiction over the state law claims herein pursuant to 28 U.S.C. 1367. This Court may grant

Plaintiffs requested relief pursuant to the Lanham Act, 15 U.S.C. 1051 et seq.,and pursuant to

the relevant statutory and common law of the State of New York.

PERSONAL JURISDICTION

17. Defendant KBMG is subject to jurisdiction in New York because it has an officefor conduct of business in the State of New York where it regularly does and transacts business

under the name and mark KBMG. In addition, Defendant KBMG has committed, and continues

to commit, (i) the complained-of tortious acts of trademark infringement, dilution and unfair

competition within the State of New York, and (ii) the complained-of tortious acts of trademark

infringement, dilution and unfair competition outside of New York State causing injury to



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Plaintiffs within New York State while regularly doing and soliciting business and engaging in a

persistent course of conduct within New York State, deriving substantial revenue for services

rendered within New York State, expecting the tortious conduct to have consequences in the

State of New York and deriving substantial revenue from interstate commerce.

18. Defendant Krant is subject to jurisdiction in New York because, upon informationand belief, he regularly does and transacts business in the State of New York using the name and

mark KBMG. In addition, upon information and belief, Defendant Krant has committed, and

continues to commit, (i) the complained-of tortious acts of trademark infringement, dilution and

unfair competition within the State of New York, and (ii) the complained-of tortious acts of

trademark infringement, dilution and unfair competition outside of New York State causing

injury to Plaintiffs within New York State while regularly doing and soliciting business and

engaging in a persistent course of conduct within New York State, deriving substantial revenue

for services rendered within New York State, expecting the tortious conduct to have

consequences in the State of New York and deriving substantial revenue from interstate

commerce.

19. Defendant Bialick is subject to jurisdiction in New York because, uponinformation and belief, he regularly does and transacts business in the State of New York using

the name and mark KBMG. In addition, upon information and belief, Defendant Bialick has

committed, and continues to commit, (i) the complained-of tortious acts of trademark

infringement, dilution and unfair competition within the State of New York, and (ii) the

complained-of tortious acts of trademark infringement, dilution and unfair competition outside of

New York State causing injury to Plaintiffs within New York State while regularly doing and

soliciting business and engaging in a persistent course of conduct within New York State,

deriving substantial revenue for services rendered within New York State, expecting the tortious



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conduct to have consequences in the State of New York and deriving substantial revenue from

interstate commerce.

20. Defendant Gitlitz is subject to jurisdiction in New York because, uponinformation and belief, he regularly does and transacts business in the State of New York using

the name and mark KBMG. In addition, upon information and belief, Defendant Gitlitz has









21. Defendant Hoffman is subject to jurisdiction in New York because, uponinformation and belief, he regularly does and transacts business in the State of New York using

the name and mark KBMG. In addition, upon information and belief, Defendant Hoffman has











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VENUE

22. Venue is proper in the Southern District of New York pursuant to 28 U.S.C. 1391(b) and (c) because, inter alia, a substantial part of the events giving rise to Plaintiffs

claims occurred in this district and KBMG resides in this district as it is subject to personal

jurisdiction in this district.

FACTUAL BACKGROUND

Plaintiffs Rights

23. The KPMG Marks are famous and immediately recognizable throughout theUnited States and are used and closely associated with the KPMG Services. Comprehensive

descriptions of the KPMG Services are available at WWW.US.KPMG.COM. KPMG

International and KPMG member firms, including KPMG LLP, have continuously and

extensively used the KPMG Marks since 1987. Through this continuous use, Plaintiffs have

acquired strong statutory and common law rights in the KPMG Marks.

24. KPMG International owns several United States Trademark Registrations for theKPMG Marks on the Principal Register, including Reg. Nos. 2,339,547 and 2,386,745. Each of

these registrations has become incontestable under 15 of the Lanham Act(15 U.S.C. 1065),

and, as a result, is conclusive evidence of the validity of the KPMG Marks and of the registration

of the KPMG Marks, KPMG Internationals ownership of the KPMG Marks, and of its exclusive

right to use the KPMG Marks in commerce. Copies of records of these registrations,

downloaded from the U.S. Patent and Trademark Office, are attached hereto as Exhibit A and are

made part of this Complaint.

25. KPMG International has used an active website on the Internet under the domainname WWW.KPMG.COM since 1992.



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26. KPMG LLPs website, WWW.US.KPMG.COM, provides information aboutKPMG LLP, including its services, educational materials and seminars, office locations, contact

information, and recruiting information, among other things.

27. KPMG LLP employs more than 22,000 people delivering audit, tax and advisoryservices in offices around the United States. Annual revenues of KPMG LLP from its services

rendered in the United States total in the billions of dollars. KPMG LLP spends millions of

dollars each year on marketing, advertising, recruiting, and community outreach programs in the

United States, all under or in connection with the KPMG Marks. As a result, the KPMG Marks

are famous and widely recognized by the general consuming public of the United States as a

designation of the source of KPMG services and in connection with KPMG LLPs community

and philanthropic activities.

28. The KPMG Marks have acquired fame, secondary meaning and substantialgoodwill in the United States and worldwide, and are invaluable assets.

Defendants Willful Infringement of the KPMG Marks

29. Upon information and belief and unbeknownst to Plaintiffs, in 2004, theIndividual Defendants organized KBMG, which, according to the KBMG website at

WWW.KBLLC.COM, provides traditional accounting and tax services, business consulting,

financial and estate planning as well as a variety of other services. Upon information and

belief, Defendants provide many of the same services under the KBMG name and mark that

KPMG LLP provides under the KPMG Marks.

30. Upon information and belief, Defendants deliberately chose the name and markKBMG (the Infringing Name) to create confusion and the false appearance of endorsement or

sponsorship by, or affiliation with, Plaintiffs. Defendants further this confusion by displaying a

website at WWW.KBLLC.COM that resembles the color and style of Plaintiffs websites at



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WWW.KPMG.COM and WWW.US.KPMG.COM (i.e., a blue and white color scheme, with the

KBMG name and logo prominently displayed in the upper left corner). Defendants thus enhance

the false impression that KBMG is affiliated with or sponsored by Plaintiffs.

31. On information and belief, Defendants purposefully selected the Infringing Namein bad faith to trade off the goodwill of Plaintiffs famous KPMG Marks.

32. Plaintiffs first became aware of Defendants use of the Infringing Name recently.33. Defendants are not and have never been licensed or otherwise authorized by

Plaintiffs to use the Infringing Name, or any other name, mark or domain name confusingly

similar to the KPMG Marks.

KPMG LLPs and Defendants Services Compete

34. As noted above, KPMG LLP (under the famous KPMG Marks) and Defendants(under the Infringing Name) offer, in interstate commerce, many of the same or substantially the

same professional services, including accounting, auditing, tax and management and financial

consulting services. KPMG LLP and Defendants are thus competitors in the marketplace for

these services.

35. In addition, the above-noted U.S. Trademark Registrations owned by KPMGInternational specifically cover the following services, which are the same as or substantially the

same as the services offered by Defendants: accounting, auditing, tax and management

consulting services, and financial consulting. (See Ex. A, trademark registrations).

Plaintiffs Communication with Defendants

36. On or about January 24, 2011,counsel for KPMG LLP sent a letter via FederalExpress to Defendants informing them of their infringing and otherwise improper conduct.

Plaintiffs attempted to reach an amicable resolution, but were unable to do so.



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Plaintiffs Are Being Irreparably Harmed

37. As a consequence of Defendants use of the Infringing Name, the public is likelyto believe mistakenly and to be confused into thinking that Defendants and their services

originate with, are affiliated with or are approved by Plaintiffs.

38. Such confusion and mistake have caused and will cause irreparable harm toPlaintiffs. For example, dissatisfaction with Defendants or their services will mistakenly be

attributed to Plaintiffs, and any adverse publicity associated with Defendants will reflect

negatively upon Plaintiffs.

39. Plaintiffs will continue to be irreparably harmed as long as Defendants areallowed to continue their use of the Infringing Name, or any other name, mark or domain name

including the initials KBMG, or any other word, term, phrase or combination or letters or

symbols confusingly similar to the KPMG Marks.

Count I - Trademark Infringement

(Violation of 32(1) of the Lanham Act, 15 U.S.C. 1114(1))

(Against all Defendants)

40. Plaintiffs re-allege paragraphs 1-39 as though set forth in full herein.41. KPMG International owns and KPMG LLP is licensed to use the KPMG Marks in

the United States to identify its auditing, tax and advisory services, including on KPMG LLPs

website at WWW.US.KPMG.COM. KPMG Internationals federal registrations for the KPMG

Marks are valid, subsisting, and in full force and effect, and have become incontestable. Such

registrations constitute prima facie evidence of the validity of the KPMG Marks and of KPMG

LLPs right to use the KPMG Marks in the United States in connection with its services.

42. Such registrations provide constructive notice to Defendants and all others ofKPMG Internationals claim to ownership of the KPMG Marks pursuant to Section 22 of the

Lanham Act(15 U.S.C. 1072).



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43. Through KPMG LLPs extensive expenditure of time, money, labor, and otherefforts in marketing and promoting the KPMG Marks in the United States, KPMG LLP has

created a distinctive designation to the U.S. public that it is the source of the KPMG Services

associated with the KPMG Marks, and KPMG LLP has developed exceedingly valuable

goodwill and reputation for the KPMG Marks in the United States.

44. Despite Plaintiffs well known and established prior rights in the KPMG Marks,Defendants used and are using the Infringing Name in connection with the same or substantially

the same services that are provided by KPMG LLP in the United States under the KPMG Marks,

which services move through the same or similar channels of trade and are sold to the same or

similar classes of customers.

45. Defendants have continued their unauthorized and infringing use of the InfringingName even after receiving a demand from counsel for KPMG LLP that such activity cease.

46. Defendants use of the Infringing Name is likely to cause confusion, mistakeand/or deception. For example, by reason of Defendants use of the Infringing Name, the public

is likely to believe, contrary to fact, that Defendants are affiliated with Plaintiffs, that

Defendants website is approved by or connected with Plaintiffs, and that Defendants services

are approved by or associated with Plaintiffs.

47. Unless enjoined, Defendants will continue their unauthorized use of the InfringingName.

48. Defendants aforementioned uses of the Infringing Name constitute willful andknowing infringement of the KPMG Marks, in violation of Section 32(1) of the Lanham Act,

15 U.S.C. 1114(1).



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Count III - Trademark Dilution

(Violation of 43(c) of the Lanham Act, 15 U.S.C. 1125(c))


57. Plaintiffs re-allege paragraphs 1-56 as though fully set forth herein.58. KPMG LLP has extensively used the KPMG Marks in the United States for many

years to identify its services. By virtue of KPMG LLPs long, extensive and continuous use of

the KPMG Marks in interstate commerce, the KPMG Marks have acquired great recognition and

have become and continue to be famous within the meaning of Section 43(c) of the Lanham Act,

15 U.S.C. 1125(c).

59. The KPMG Marks were famous and distinctive in the United States years beforeDefendants commenced use of the Infringing Name.

60. Defendants aforementioned use of the Infringing Name is likely to cause dilutionby blurring in that such use impairs the distinctiveness of the famous KPMG Marks, and dilution

by tarnishment of the famous KPMG Marks in that such use by persons or entities not affiliated

with Plaintiffs harms the reputation of the famous KPMG Marks.

61. Defendants acts set forth above constitute trademark dilution in violation ofSection 43(c) of the Lanham Act, 15 U.S.C. 1125(c).

62. Defendants acts of dilution by blurring and dilution by tarnishment have causedirreparable injury and damage to Plaintiffs, and unless this Court enjoins Defendants from further

commission of said acts, Plaintiffs will continue to suffer irreparable injury and damage for

which they have no adequate remedy at law.

63. Plaintiffs are entitled to injunctive, monetary and other relief pursuant toSections 34, 35 and 36 of the Lanham Act, 15 U.S.C. 1116, 1117, 1118, and 1125(c).



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Count IV - Dilution

(Violation of New York General Business Law 360-I)


64. Plaintiffs re-allege paragraphs 1-63 as though set forth in full herein.65. The KPMG Marks are famous and are of a distinctive quality. KPMG LLP has

used the KPMG Marks in the United States, including in the State of New York, for many years

to identify its services. By virtue of KPMG LLPs long, extensive and continuous use of the

KPMG Marks throughout the United States, including in the State of New York, the KPMG

Marks have acquired great recognition and have become and continue to be famous.

66. The KPMG Marks were famous and distinctive in the State of New York yearsbefore Defendants commenced use of the Infringing Name.

67. Defendants aforementioned use of the Infringing Name in commerce in the Stateof New York is likely to dilute the distinctive quality of the KPMG Marks, and, among other

things, to diminish the KPMG Marks ability to serve as source identifiers.

68. As a direct and proximate consequence of Defendants willful violation ofPlaintiffs rights, Plaintiffs business reputation and the goodwill associated with their KPMG

Marks and the favorable associations that consumers and the public make with the KPMG Marks

have been diluted, impaired and diminished.

69. Defendants acts set forth above constitute trademark dilution in violation of NewYork General Business Law 360-I.

70. Defendants acts of dilution have caused irreparable injury and damage toPlaintiffs, and unless this Court enjoins Defendants from further commission of said acts,

Plaintiffs will continue to suffer irreparable injury and damage for which they have no adequate

remedy at law.



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71. On information and belief, because of Defendants knowledge and awareness ofthe fame and distinctiveness of the KPMG Marks at the time they adopted and used the

Infringing Name, Defendants actions were willful, and intentionally designed to trade off of and

dilute the fame of the KPMG Marks.

72. Plaintiffs are entitled to injunctive, monetary and other relief pursuant to NewYork General Business Law 360-I.

Count V - Common Law Trademark Infringement

(Violation of New York Unfair Competition Law)


73. Plaintiffs re-allege paragraphs 1-72 as though set forth in full herein.74. Defendants use in the State of New York of the Infringing Name as complained

of above capitalizes and trades upon and is intended to capitalize and trade upon the goodwill

and reputation of Plaintiffs and the KPMG Marks.

75. Defendants acts complained of above are designed with the intent to mislead anddeceive persons into believing that Defendants are sponsored, endorsed, licensed or authorized

by Plaintiffs or affiliated, connected or associated in some way with Plaintiffs, which they are

not.

76. Without Plaintiffs authorization, Defendants have intentionally and unlawfullycopied the KPMG Marks for the calculated purpose of passing off and/or palming off their

services as those of KPMG LLP, thereby trading upon the goodwill and reputation of Plaintiffs

KPMG Marks, thus deceiving the public as to the true nature and source of Defendants services,

and falsely suggesting a connection or associate with Plaintiffs, all to Defendants profit and to

the damage and detriment of Plaintiffs.

77. Defendants past and continued copying and imitation of the KPMG Marksfalsely designate the origin of Defendants services, and are likely to cause consumer confusion,



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mistake or deception. Defendants have committed unlawful predatory practices intended to

deceive consumers rather than engage in legitimate competition.

78. Defendants acts of trademark infringement and unfair competition complained ofherein have caused irreparable injury and damage to Plaintiffs, and unless enjoined will continue

to cause irreparable injury and damage to Plaintiffs for which Plaintiffs have no adequate remedy

at law.

79. For this unfair competition, Plaintiffs are entitled to injunctive, monetary andother relief pursuant to the common law of New York.

PRAYER FOR RELIEF

WHEREFORE, Plaintiffs pray the Court for its judgment:

1. Enjoining Defendants and Defendants officers, agents, servants, employees, andattorneys, and all others acting in active concert or participation with them, who receive actual

notice of the judgment, from using as or as part of any trademark, service mark, trade name,

company name, corporate name, domain name, or other indicia of origin: (a) KBMG, or (b) any

other word, term, phrase or combination of letters or symbols that is confusingly similar to any

of the KPMG Marks;

2. Directing Defendants to provide an accounting of all revenues and profits derivedfrom their activities under the Infringing Name, or any other word, term, phrase or combination

of letters or symbols that is confusingly similar to any of the KPMG Marks;

3. Directing Defendants to deliver up for destruction any and all promotionalmaterials, advertisements, brochures, letterhead, business cards, and all prints, mechanicals,

plates or means to produce any such promotional materials bearing the Infringing Name;

4. Awarding Plaintiffs:



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