case 1:10-cv-04590-kmw document 1 filed 06/11/10 ... - rpx insight

Case 1:10-cv-04590-KMW Document 1 Filed 06/11/10 of 26

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4. Upon information and belief, Defendant Max & Chloe, Inc. is a New York

corporation with its principal place of business located at 122 W 26th Street, New York, New

York.

5. Max & Chloe is an Internet-based business which sells jewelry and accessories on

their website, maxandchloe.com. Max & Chloe also does business under the name Blu Bijoux.

JURISDICTION AND VENUE

6. This action arises under the Patent Act of 1952, 35 U.S.C. §§ 101 et seq., and the

Lanham Act 15 U.S.C. §§ 1051 et seq. This Court has jurisdiction of the claims asserted herein

pursuant to 28 U.S.C. §§ 1331 and 1338(a).

7. This Court has in personam jurisdiction over Max & Chloe because Max & Chloe

resides and has distributed or sold infringing merchandise within this State, has manufactured or

distributed products used or consumed within this State in the ordinary course of trade, or has

otherwise made or established contacts within the State, sufficient to permit the exercise of

personal jurisdiction.

8. Venue is proper in this District under 38 U.S.C. §§ 1391(b) and (c) and § 1400(b)

because the Defendant resides and/or may be found in this judicial district and acts of

infringement were committed in this judicial district. Venue is also proper in this District

pursuant to 28 U.S.C. § 1391(b)(2) because a substantial part of the events or omissions giving

rise to Plaintiff‟s claims occurred in this District.


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THE PATENT AND TRADE DRESS

9. Alex and Ani is a designer, manufacturer, and seller of jewelry and accessories.

Carolyn Rafaelian is one of the principals of Alex and Ani.

10. Ms. Rafaelian invented a particular ornamental design for an expandable bangle

bracelet for sale by Alex and Ani.

11. Ms. Rafaelian‟s bracelet design has enjoyed great commercial success and has

become the cornerstone of Alex and Ani‟s business.

12. The unique and distinctive bracelet design identifies to consumers that Alex and

Ani is the source of the product, such that the design constitutes protectable trade dress.

13. Alex and Ani has extensively and continuously promoted and used the trade dress

and its associated goodwill throughout the United States and world, and the trade dress has

thereby become a famous and well-known indicator of the origin of Alex and Ani‟s goods and

has achieved significant secondary meaning.

14. To further protect her invention, Ms. Rafaelian applied for and received United

States Letters Patent No. D498,167 entitled “Expandable Wire Bracelet” (the “„167 Patent”).

15. The „167 Patent was duly and legally issued by the United States Patent and

Trademark Office on November 9, 2004 to Carolyn Rafaelian, who has assigned all right, title,

and interest in the patent to Alex and Ani.

16. A true and correct copy of the „167 Patent is attached hereto as Exhibit A.


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DEFENDANT‟S KNOWLEDGE OF AND INFRINGEMENT OF

THE PATENT AND TRADE DRESS

17. Max & Chloe has been selling Alex and Ani‟s patented signature bangle since

approximately July 2008.

18. Each Alex and Ani bangle is marked with a tag clearly identifying the patent

number.

19. On the Max & Chloe web pages advertising Alex and Ani‟s bangle, Max & Chloe

admits that the bangle is Alex and Ani‟s “Signature patented expandable design” or is an “Alex

and Ani trademark.” A true and correct copy of representative Max & Chloe web pages is

attached hereto as Exhibit B.

20. In or around December of 2009, Max & Chloe, under the name Blu Bijoux,

brazenly copied the Alex and Ani patented bangle and sold the infringing knockoff on the Max

& Chloe website, virtually side-by-side with the Alex and Ani patented bangles.

21. Upon information and belief, the Blu Bijoux knockoffs were manufactured in

China and imported into the United States for sale by Max & Chloe.

22. Alex and Ani demanded by letter on or about January 5, 2010 that Defendant

cease and desist from selling the infringing bangles (the “January 5 Letter”). A copy of the „167

Patent was attached to the January 5 Letter.

23. After the January 5 Letter was delivered by electronic and regular mail, follow-up

phone calls were to Max and Chloe‟s principal Jennifer Rubin, again notifying Defendant of its

infringements of Alex and Ani‟s patent and trade-dress.


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24. Defendant continued to sell the infringing bangles until approximately May 2010.

Alex and Ani has no assurance that Defendant will not resume selling infringing bangles unless

enjoined by the Court.

25. Alex and Ani used the expandable bangle trade dress extensively and

continuously before Defendant began importing and selling their confusingly similar knockoffs.

26. The knockoffs were sold in competition with Alex and Ani‟s genuine products.

27. The knockoffs were likely to deceive, confuse, and mislead prospective

purchasers into believing that the knockoffs were manufactured by, authorized by, or in some

manner associated with Alex and Ani, causing harm to the goodwill associated with the trade

dress.

28. The knockoffs infringed the „167 Patent.

29. Defendant‟s practice of the invention of the '167 Patent is and was with full

knowledge of Alex and Ani‟s exclusive rights under the „167 Patent.

FIRST CLAIM FOR RELIEF

WILLFUL INFRINGEMENT OF U.S. PATENT NO. D498,167

30. Plaintiff repeats and realleges all of the proceeding paragraphs as if stated at

length herein.

31. In violation of 35 U.S.C. § 271(a), the Defendant has made, used, offered for sale,

distributed, imported, and/or sold in the United States, expandable bangle bracelets that infringe

the „167 Patent.

32. In violation of 35 U.S.C. §§ 271(b) and (c), the Defendant has actively induced

the infringement of, and/or contributed to the infringement of the „167 Patent.


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33. The infringement of the „167 Patent by the Defendant has occurred with

knowledge of the „167 Patent and has been willful and wanton.

34. Alex and Ani has suffered and will continue to suffer serious and irreparable

injury unless the Defendant‟s infringement of the „167 Patent is enjoined.

SECOND CLAIM FOR RELIEF

FEDERAL UNFAIR COMPETITION AS TO TRADE DRESS


length herein.

36. Defendant‟s manufacture, sale and/or distribution of knockoffs, duplicates or

confusingly similar imitations of Plaintiff‟s trade dress has caused and is likely to cause

confusion, deception, and mistake by creating the false and misleading impression that

Defendant‟s goods are manufactured or distributed by Plaintiff, or affiliated, connected, or

associated with Plaintiff or have the sponsorship, endorsement or approval of Plaintiff.

37. Defendant has made false representations or false descriptions and false

designations of origin of its goods in violation of 15 U.S.C. § 1125(a), and Defendant‟s activities

have caused and, unless enjoined by this Court, will continue to cause a likelihood of confusion

and deception of members of the trade and public and, additionally, injury to Plaintiffs goodwill

and reputation as symbolized by the trade dress, for which Plaintiff has no adequate remedy at

law.

38. Defendant‟s actions demonstrate an intentional, willful, and malicious intent to

trade on the goodwill associated with Plaintiff's trade dress to the great and irreparable injury of

Plaintiff.


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39. Defendant‟s conduct has caused, and is likely to continue causing, substantial

injury to the public and to Plaintiff, and Plaintiff is entitled to injunctive relief and to recover

Defendant‟s profits, actual damages, enhanced profits and damages, costs, and reasonable

attorneys' fees pursuant to 15 U.S.C. §§ 1125(a), 1116 and 1117.

THIRD CLAIM FOR RELIEF

UNFAIR AND DECEPTIVE TRADE PRACTICES


length herein.

41. Defendant has been and still is passing off its goods as those of Plaintiff, causing

the likelihood of confusion or of misunderstanding as to the source, sponsorship, or approval of

Defendant‟s goods, causing a likelihood of confusion as to Defendant‟s affiliation, connection,

or association with another, and otherwise damaging the public. Defendant‟s conduct constitutes

unfair and deceptive acts or practices in the course of a business, trade or commerce in violation

of N.Y. Gen. Business Law § 349; Defendant‟s unauthorized use of confusingly similar

imitations of Plaintiff‟s trade dress has caused and is likely to cause substantial injury to the

public and to Plaintiff, and Plaintiff is entitled to injunctive relief and to recover damages,

punitive damages, costs and reasonable Attorneys' fees.

JURY DEMAND

42. Plaintiff hereby demands a trial by jury of all issues and claims so triable.


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PRAYER FOR RELIEF

WHEREFORE, Plaintiff respectfully requests this Court enter judgment in its favor and

against the Defendant and grant the following relief:

A. A judgment that the Defendant has infringed the „167 Patent in violation of

35 U.S.C. §§ 271(a), (b), and/or (c);

B. A judgment that the Defendant‟s infringement of the „167 Patent has been willful

and wanton;

C. A permanent injunction, pursuant to 35 U.S.C. § 283, enjoining the Defendant,

and all persons in active concert or participation with the Defendant, from any further acts of

infringement, inducement of infringement, or contributory infringement of the „167 Patent;

D. An order, pursuant to 35 U.S.C. § 284, awarding Plaintiff damages adequate to

compensate for the Defendant‟s infringement of the „167 Patent, in an amount to be determined

at trial, but in no event less than a reasonable royalty;

E. An order, pursuant to 35 U.S.C. § 284, and based on the Defendant‟s willful and

wanton infringement of the „167 Patent, trebling all damages awarded to Plaintiff;

F. An order, pursuant to 35 U.S.C. § 284, awarding Plaintiff interest on the damages

and its costs incurred in this action;

G. An order, pursuant to 35 U.S.C. § 285, finding that this is an exceptional case and

awarding to Plaintiff its reasonable attorneys‟ fees and costs incurred in this action,


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H. An order permanently enjoining Defendant and all their agents, officers,

employees, representatives, successors, assigns, attorneys, and all other persons acting for, with,

by, through, or under authority from Defendant, or in concert or participation with Defendant,

and each of them, from:

1. using the trade dress, or any other copy, reproduction, or colorable imitation

or simulation of Plaintiff's trade dress on or in connection with Defendant‟s

goods or services;

2. using any trademark, service mark, name, logo, design or source designation

of any kind on or in connection with Defendant‟s goods or services that is a

copy, reproduction, colorable imitation, or simulation of, or confusingly

similar to, or in any way similar to the trademarks, service marks, names, or

logos of Plaintiff;

3. using any trademark, service mark, name, logo, design or source designation

of any kind on or in connection with Defendant‟s goods or services that is

likely to cause confusion, mistake, deception, or public misunderstanding that

such goods or services are produced or provided by Plaintiff, or are sponsored

or authorized by or in any way connected or related to Plaintiff;

4. passing off, palming off, or assisting in passing off or palming off,

Defendant‟s goods or services as those of Plaintiff, or otherwise continuing

any and all acts of unfair competition as alleged in this Complaint;

I. Defendant be ordered to recall all products bearing the trade dress or any other

confusingly similar mark, which have been shipped by Defendant or under its authority, to any

customer including, but not limited to, any wholesaler, distributor, retailer, consignor, or


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marketer and also to deliver to each customer a copy of this Court's order as it relates to said

injunctive relief against Defendant;

J. Defendant be ordered to deliver up for impoundment and for destruction all

bangles, tags, signs, packages, receptacles, advertising, sample books, promotional material,

stationery or other materials in the possession, custody, or under the control of Defendant that

are found to adopt or to infringe any of Plaintiff‟s trademarks or trade dress or that otherwise

unfairly compete with Plaintiff and their products and services; Defendant be compelled to

account to Plaintiff for any and all profits derived by Defendant from the sale or distribution of

infringing goods as described in this Complaint;

K. Based on Defendant‟s knowing and intentional use of confusingly similar

imitations of Plaintiff's trade dress, the damages award be trebled and the award of Defendant‟s

profits be enhanced as provided for by 15 U.S.C. § 1117(a);

L. Defendant‟s be required to pay to Plaintiff, the costs of this action and their

reasonable attorneys' fees pursuant to 15 U.S.C. § 1117(a);

M. Based on Defendant‟s willful and deliberate infringement of Plaintiffs marks and

trade dress, and to deter such conduct in the future, Plaintiff should be awarded punitive

damages; and


EXHIBIT A


EXHIBIT B


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Alex and Ani YellowGold ExpandableWire Bangles$68.00

Alex and AniAssortedExpandable WireBangles$138.00

Alex and Ani GoldNile BeadedExpandable WireBangles$158.00

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Alex and Ani Tree ofLife ExpandableWire Bangle Set$108.00

Alex and Ani SilverNile BeadedExpandable WireBangles$158.00

Alex and AniMalachite LustreBead 7 ExpandableBangles SetPrice: $118.00Sale: $75.00

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Alex and Ani - Max and Chloe http://www.maxandchloe.com/details/brandid/113/order/popular/sort/desc

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Alex and Ani AmberLustre Bead 7ExpandableBangles Set$118.00

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Alex and Ani Assorted Expandable Wire

BanglesAlex and Ani Assorted Expandable Wire Bangles are trendyand modern. This set includes 12 wire bangles, with yellowgold and Russian silver finishes and assorted textures. Alexand Ani trademark expandable wire bangles allow for aperfect fit at any size.

Metal: WireFinish: Yellow gold, Russian silverTexture: AssortmentSize: Expandable

Price: $138.00 Style No: S05EB14619T

Quantity: 1

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Alex and Ani Assorted Expandable Wire Bangles - Max and Chloe http://www.maxandchloe.com/fulldetails/2317/-1/113

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Dream Mullick


Gara Danielle

Genevive by CZC


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Alex and Ani Silver Expandable Wire

BanglesAlex and Ani Silver Expandable Wire Bangles are sleek andsophisticated. The bangle set comes with 7 silver-platedbangles, which feature a signature patented expandabledesign. A chic addition to any collection. Made in the USA.

Metal: Silver-platedSize: ExpandableSet: 7 textured bangles

Price: $78.00 Style No: SO5EB1462T

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Alex and Ani Silver Expandable Wire Bangles - Max and Chloe http://www.maxandchloe.com/fulldetails/2320/-1/113

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Jessica Elliot



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Kendra Scott


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Alex and Ani Yellow Gold Expandable

Wire BanglesAlex and Ani Yellow Gold Expandable Wire Bangles aresimple and elegant. These bangles make a wonderfuladdition to any formal or casual outfit. They are thinbangles with a smooth texture and come in a set of 7.Yellow gold plated. Signature patented expandable design.Made in the USA.

Metal: Gold platedSet: 7 smooth banglesSize: Expandable

Price: $68.00 Style No: EWB1060YG

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case 1:10-cv-04590-kmw document 1 filed 06/11/10 ... - rpx insight

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