Download - Britannica trademark complaint.pdf
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JUDGE COTEJS 44C/SDNYREV. 4/2014
CIVIL COVEl15 a 02676: 7 2015The JS-44 civilcover sheet and the information contained herein neither replace nor supplement the filing and sefvice of' "
pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by theJudicial Conference of the United States in September 1974, is required for use of the Clerk of Court for the purpose ofinitiating the civil docket sheet.
PLAINTIFFSGregory A. Lewis and Britannica Capital Partners, LLC26 Broadway, Suite 934, New York, NY 10004
ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBERJeffrey Sonnabend, SonnabendLaw, 600 Prospect Avenue, Brooklyn, NY11215
DEFENDANTSMalgazorta Madej, Suite 94, 22 Notting Hill Gate, London, W11 3JE, UKKingsley Ventures Corp., 309 N Huber Drive, Casper WY 82609Sanjay Gupta (address unknown)ATTORNEYS (IF KNOWN)
CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE A BRIEFSTATEMENT OF CAUSE)(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
Trademark infringement/invalidity
Has this action, case, or proceeding, or one essentially the same been previously filed in SDNY atany time? NoZjVesLJjudge Previously AssignedIf yes,wasthis case Vol. fj Invol. fj Dismissed. No fj Yes fj] If yes, give date &Case No.
No 0 Yes IS THIS AN INTERNATIONAL ARBITRATION CASE?(PLACE AN [x] IN ONE BOXONLY)
TORTS
NATURE OF SUIT
ACTIONS UNDER STATUTES
CONTRACT PERSONAL INJURY PERSONAL INJURY[ ] 367 HEALTHCARE/
FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
[ 1375 FALSE CLAIMS[ ]400 STATE11110 INSURANCE [ J 310 AIRPLANE PHARMACEUTICAL PERSONAL [ ] 625 DRUG RELATED [ ] 422 APPEAL[]120 MARINE [ ] 315 AIRPLANE PRODUCT INJURY/PRODUCT LIABILITY SEIZURE OF PROPERTY 28 USC 158 REAPPORTIONMENT[]130 MILLER ACT LIABILITY [ ] 365 PERSONAL INJURY 21 USC 881 [ ] 423 WITHDRAWAL [ ] 410 ANTITRUST[ 1140 NEGOTIABLE [ ] 320 ASSAULT, LIBEL& PRODUCT LIABILITY [ ] 690 OTHER 28 USC 157 [ ] 430 BANKS & BANKING
INSTRUMENT SLANDER [ ] 368 ASBESTOS PERSONAL [ ] 450 COMMERCE[ ]150 RECOVERY OF [ ] 330 FEDERAL INJURY PRODUCT [ ] 460 DEPORTATION
OVERPAYMENT & EMPLOYERS' LIABILITY PROPERTY RIGHTS [ ] 470 RACKETEER INFLUENFORCEMENT LIABILITY ENCED & CORRUPTOF JUDGMENT [ ] 340 MARINE PERSONAL PROPERTY [ ] 820 COPYRIGHTS ORGANIZATION ACT
[ ] 151 MEDICARE ACT [ ] 345 MARINE PRODUCT [ ] 830 PATENT (RICO)[ ] 152 RECOVERY OF LIABILITY [ ] 370 OTHER FRAUD fc] 840 TRADEMARK [ ] 480 CONSUMER CREDIT
DEFAULTED [ ] 350 MOTOR VEHICLE [ ] 371 TRUTH IN LENDING [ ] 490 CABLE/SATELLITE TVSTUDENT LOANS [ ] 355 MOTOR VEHICLE(EXCL VETERANS) PRODUCT LIABILITY SOCIAL SECURITY [ ] 850 SECURITIES/
[ 1153 RECOVERY OF [ ] 360 OTHER PERSONAL COMMODITIES/OVERPAYMENT INJURY [ ] 380 OTHER PERSONAL LABOR [ ] 861 HIA (1395ff) EXCHANGEOF VETERAN'S [ ] 362 PERSONAL INJURY- PROPERTY DAMAGE [ ] 862 BLACK LUNG (923)BENEFITS MED MALPRACTICE [ ] 385 PROPERTY DAMAGE [ ] 710 FAIR LABOR [ ] 863 DIWC/DIWW (405(g))
[1160 STOCKHOLDERS PRODUCT LIABILITY STANDARDS ACT [ ] 864 SSID TITLE XVISUITS [ ] 720 LABOR/MGMT [ ] 865 RSI (405(g)) [ ] 890 OTHER STATUTORY
[ 1190 OTHER PRISONER PETITIONS RELATIONS ACTIONSCONTRACT [ ] 463 ALIEN DETAINEE [ ] 740 RAILWAYLABOR ACT [ ]891 AGRICULTURAL ACTS
[1195 CONTRACT [ ] 510 MOTIONS TO [ ] 751 FAMILYMEDICAL FEDERAL TAX SUITSPRODUCT ACTIONS UNDER STATUTES VACATE SENTENCE LEAVE ACT (FMLA)LIABILITY 28 USC 2255 [ ] 870 TAXES (U.S. Plaintiff or [ ] 893 ENVIRONMENTAL
[ ] 196 FRANCHISE CIVIL RIGHTS [ ] 530 HABEAS CORPUS [ ] 790 OTHER LABOR Defendant) MATTERS[ ] 535 DEATH PENALTY LITIGATION [ ]871 IRS-THIRD PARTY [ ] 895 FREEDOM OF
[ ] 440 OTHER CIVIL RIGHTS(Non-Prisoner)
[ ] 540 MANDAMUS & OTHER [ ] 791 EMPL RET INC 26 USC 7609 INFORMATION ACTSECURITY ACT [ ] 896 ARBITRATION
REAL PROPERTY [ ] 899 ADMINISTRATIVE[J 210 LAND
CONDEMNATION
[ ] 441 VOTING[ ] 442 EMPLOYMENT[ ] 443 HOUSING/
PRISONER CIVIL RIGHTSIMMIGRATION
[ ] 462 NATURALIZATIONPROCEDURE ACT/REVIEW ORAPPEAL OF AGENCY DECISION
[ ] 220 FORECLOSURE ACCOMMODATIONS [ ] 550 CIVIL RIGHTS APPLICATION [ ] 950 CONSTITUTIONALITY OF[ I 230 RENT LEASE & [ ] 445 AMERICANS WITH [ ] 555 PRISON CONDITION [ ] 465 OTHER IMMIGRATION STATE STATUTES
EJECTMENT DISABILITIES - [ ] 560 CIVIL DETAINEE ACTIONS[ I 240 TORTS TO LAND EMPLOYMENT CONDITIONS OF CONFINEMENT[ I 245 TORT PRODUCT
LIABILITY
[ ] 446 AMERICANS WITHDISABILITIES -OTHER
[ ] 290 ALL OTHERREAL PROPERTY
[ ] 448 EDUCATION
Checkifdemanded in complaint:
CHECK IF THIS IS ACLASS ACTIONUNDER F.R.C.P. 23
DEMAND $_ OTHER
Check YES onlyifdemandedincomplaintJURY DEMAND: M YES LhlO
DO YOU CLAJM THIS CASE IS RELATED TO A CIVIL CASE NOW PENDING IN S.D.N.Y.?
JUDGE DOCKET NUMBER
NOTE: You must also submit at the time of filing the Statement of Relatedness form (Form IH-32).
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f(PLACEANxINONEBOXONLY) ORIGIN
E 1 Original L"] 2 Removed from II 3 Remanded d 4 Reinstated or Q 5 Transferred from 6 Multidistrict 7 Appeal to DistrictProceeding state Court from Reopened (Specify District) Litigation Judgefrom
II ~ ADDellate Magistrate JudgeLJ a. all parties represented Court Judgment| | b. At least one
party is pro se.
(PLACEANxINONEBOXONLY) BASIS OF JURISDICTION IFDIVERSITY, INDICATE 1 U.S. PLAINTIFF 2 U.S. DEFENDANT [x] 3 FEDERAL QUESTION 4 DIVERSITY CITIZENSHIP BELOW.
(U.S. NOT A PARTY)
CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)(Place an [X] in one box for Plaintiff and one box for Defendant)
PTF DEF PTFDEF PTF DEFCITIZEN OF THIS STATE []1 []1 CITIZEN OR SUBJECT OF A [ ] 3 [ ] 3 INCORPORATED and PRINCIPAL PLACE []5 []5
FOREIGN COUNTRY OF BUSINESS IN ANOTHER STATE
CITIZEN OF ANOTHER STATE []2 []2 INCORPORATED or PRINCIPAL PLACE []4[]4 FOREIGN NATION []6 []6OF BUSINESS IN THIS STATE
PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)Gregory A. Lewis and Britannica Capital Partners, LLC, 6 Broadway, Suite 934, New York, NY 10004(New York County)
DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)Malgazorta Madej, Suite 94, 22 Notting Hill Gate, London, W11 3JE, UKKingsley Ventures Corp., 309 N Huber Drive, Casper WY 82609
DEFENDANT(S) ADDRESS UNKNOWNREPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN
RE91BENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:
Sanjay Gupta
Check one: THIS ACTION SHOULD BE ASSIGNED TO: WHITE PLAINS \x\ MANHATTAN(DO NOT check either box if this a PRISONER PETITION/PRISONER CIVIL RIGHTSCOMPLAINT.)
DATE 4/7/2015 SIGNATjfoE OF ATTORNEY OF RECORD ADMITTED TO PRACTICE IN THIS DISTRICTM l/j
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JUDGE COTE
UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF NEW YORK15GREGORY A. LEWIS AND BRITANNICACAPITAL PARTNERS, LLC,
Plaintiffs,
v.
MALGORZATA MADEJ, KINGSLEYVENTURES CORP. AND SANJAY GUPTA,
Defendants.
fh9 fx-ajf
-cv-
COMPLAINT
Jury Trial Demanded
en
" -\.
The Parties
1. Plaintiff Gregory A. Lewis is an individual with an address of c/o Britannica
Capital Partners, LLC, 26 Broadway, Suite 934, New York, NY 10004.
2. Plaintiff Britannica Capital Partners, LLC is a New York State LLC with an
address of 26 Broadway, Suite 934, New York, NY 10004.
3. Defendant Malgazorta Madej is an individual stated to be domiciled in the United
Kingdon with an address of Suite 94, 22 Notting Hill Gate, London, Wl 1 3JE, UK.
4. Defendant Kingsley Ventures Corp. is a Wyoming corporation with a stated place
of business at 309 N Huber Drive, Casper WY 82609.
5. Defendant Sanjay Gupta is an individual of unknown domicile.
Nature Of Action
6. This is an action for declaratory judgment of trademark invalidity and
cancellation under 15 U.S.C. 1063, brought pursuant to the Declaratory Judgment Act, 28
U.S.C. 2201-2202.
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7. This is further and/or in the alternative an action for trademark infringement under
section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
8. This is further and/or in the alternative an action for Prima Facie Tort under New
York common law.
9. This is further and/or in the alternative an action for civil conspiracy under New
York common law.
Jurisdiction And Venue
10. Subject matter jurisdiction is proper pursuant to 28 U.S.C. 1331 and 1338.
11. Subject matter jurisdiction is further proper pursuant to 28 U.S.C. 1332(a)(1),
(2) and (3).
12. Personal jurisdiction is proper under CPLR 301 and 302(a)(i) and (ii).
13. Venue is proper pursuant to 28 U.S.C. 1391(b)(1) and (2) and 28 U.S.C.
1391(c)(3).
Facts
14. plaintiffs' use of the BRITANNICA mark
15. Plaintiffs provide investment consulting and management services.
16. No later than December, 2011, Plaintiffs1 began licensing and other preparatory
actions necessary for providing such services under the mark BRITANNICA CAPITAL
PARTNERS LLC and/or BRITANNICA CAPITAL.
1 Prior to and in preparation of formation, Plaintiff Britannica Capital Partners, LLC, operatedvia its principal, Plaintiff Gregory A. Lewis. Thus, Mr. Lewis has been included as co-plaintiff here. All references to "Plaintiffs" contemplates the actions of Mr. Lewis prior to theLLC formation and the LLC thereafter, unless expressly stated to the contrary.
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17. Among other preparation, Plaintiffs contacted the Financial Industry Regulatory
Authority ("FINRA"), the largest independent regulator for all securities firms doing business in
the United States. As part of the registration process with FINRA, Plaintiffs requested on
January 24, 2012, that FINRA check the availability of and if available reserve the name
BRITANNICA CAPITAL PARTNERS LLC.
18. On February 9, 2012, FINRA Registration & Disclosure Manager Damian
Williams wrote to Plaintiffs confirming that the name BRITANNICA CAPITAL PARTNERS
LLC was available for registration with FINRA (i.e., no other firm was registered with FINRA
having a confusingly similar name), and the name would be reserved for 120 days by FINRA.
19. Plaintiffs understands that FINRA has responsibility for certifying and registering
every financial services firm in the United States, and therefore has record of the name if every
such firm. As a result, by confirming the availability of the name BRITANNICA CAPITAL
PARTNERS LLC, FINRA was necessarily confirming that Defendants were not operating under
that name in the United States at that time.
20. In the December, 2011 and early 2012 time period, Plaintiffs had conversations
with prior clients (i.e., clients of Plaintiffs from previous engagements) in which Plaintiffs
informed the clients that Plaintiffs would be providing investment related services under the
mark BRITANNICA in the near future, once all regulatory compliance had been completed.
21. In the December 2011 and early 2012, Plaintiffs enlisted the services of Luxor
Financial Group ("Luxor") to assist Plaintiffs in meeting Plaintiffs' regulatory compliance
requirements. In connection with this effort, Plaintiffs disclosed to Luxor Plaintiffs' intention to
use the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL in
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connection with Plaintiffs' services. Luxor undertook to provide services to Plaintiffs to
establish Plaintiffs' business under that name.
22. On or about March 28,2012, Plaintiffs established BRITANNICA CAPITAL
PARTNERS, LLC and BRITANNICA HOLDINGS, LLC as New York State limited liability
companies.
23. Shortly after forming the above mentioned LLC's, Plaintiffs entered into a lease
for office space under the name BRITANNICA CAPITAL PARTNERS, LLC.
24. Plaintiffs have been providing investment related services under the
BRITANNICA mark since the firm's registration with FINRA.
25. Plaintiffs applied for registration of the mark BRITANNICA in application serial
no. 85/680188. The examining attorney identified Defendants' trademark application as being an
"earlier filed application^ that may bar registration." The examining attorney concluded that
"there may be a likelihood of confusion between Defendants' [i.e., the present Plaintiffs'] mark
and" the present Defendants' mark.
26. The registration process through FINRA (and accordingly through the SEC) under
the name BRITANNICA CAPITAL PARTNERS, LLC and/or BRITANNICA CAPITAL,
continued, and final approval and registration was completed by June 21, 2013.
27. Based in part upon Plaintiffs' review of the FINRA registration process and the
timing and nature of Defendants' activities detailed below, Plaintiffs understands that Defendants
learned of Plaintiffs' 2011 and early 2012 efforts to establish a financial services business under
the marks BRITANNICA, BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA
CAPITAL and has undertaken to frustrate Plaintiffs' ability to use and register those marks.
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Defendants' Fraudulent BRITANNICA Mark
28. Defendants filed the trademark application for registration of the mark
BRITANNICA, serial no. 85/540559, on February 12, 2012. The application claimed a date of
first use of February 12, 2012, the same day as the application filing.
29. The trademark application was signed by Sanjay Gupta.
30. According to whois records, Defendants obtained the domain
on February 24, 2012, twelve days after its stated date of first use. At
some time thereafter, Defendants began operating a website at
advertising and promoting investment related services.
31. Defendants' website states and/or stated that "Britannica is an investment
advisory firm founded in 2012." Defendants' website bears and/or bore a copyright notice of
2012.
32. On September 7, 2012, an attorney for Defendants wrote to Plaintiffs demanding
that Plaintiffs cease use of the mark BRITANNICA and that Plaintiffs abandon his pending
application for registration of that mark. In that letter, the attorney for Defendants represented
that Defendants "began using the trademark BRITANNICA at least as early as 2004 in the
United States."
33. Subsequent to the September 7, 2012 letter, Plaintiffs' attorney responded to the
Plaintiffs' attorney requesting (a) explanation for the discrepancy between the date of first use
stated in the letter and the claims made on Defendants' website regarding date of formation; (b)
explanation for the discrepancy between the date of first use stated in the letter and the date of
registration of the domain ; (c) explanation for the discrepancy between
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the date of first use stated in the letter and the date of first use stated in the trademark
application; and (d) documentation of Plaintiffs' alleged use dating to 2004.
34. Defendants' counsel did not provide any explanation for foregoing requests (a),
(b) and (c), supporting the aforementioned allegations concerning Defendants' knowledge and
intent underlying its activities.
35. Defendants' counsel provided purported documentation of Plaintiffs' use dating to
2004, such documentation appearing to be fabricated, supporting the aforementioned allegations
concerning Defendants' knowledge and intent underlying its activities.
36. Defendants were aware of Plaintiffs' activities surrounding Plaintiffs' adoption of
the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL at all
relevant times, including as of the filing date of Defendants' trademark application.
37. Defendants believed that its use of the applied-for mark would likely cause
confusion with Plaintiffs' use of the mark BRITANNICA, as evidenced by the aforementioned
correspondence from Defendants' attorney to Plaintiffs.
38. Plaintiffs' aforementioned activities constitute analogous use of the marks
BRITANNICA, BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL
by Plaintiffs. As a result of the analogous use, Plaintiffs has priority to the applied-for mark over
Defendants.
39. There is a likelihood of confusion between the marks BRITANNICA,
BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL as used and owned
by Plaintiffs and the applied-for mark as allegedly used and applied-for by Defendants.
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40. In connection with the trademark application, Defendants made the following
declaration:
The undersigned, being hereby warned that willful false statementsand the like so made are punishable by fine or imprisonment, orboth, under 18 U.S.C. Section 1001, and that such willful falsestatements, and the like, may jeopardize the validity of theapplication or any resulting registration, declares that he/she isproperly authorized to execute this application on behalf of theDefendants; he/she believes the Defendants to be the owner of thetrademark/service mark sought to be registered, or, if theapplication is being filed under 15 U.S.C. Section 1051(b), he/shebelieves Defendants to be entitled to use such mark in commerce;to the best of his/her knowledge and belief no other person, firm,corporation, or association has the right to use the mark incommerce, either in the identical form thereof or in such nearresemblance thereto as to be likely, when used on or in connectionwith the goods/services of such other person, to cause confusion,or to cause mistake, or to deceive; and that all statements made ofhis/her own knowledge are true; and that all statements made oninformation and belief are believed to be true.
41. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing, Defendants were not the owner of the trademark/service mark sought to
be registered.
42. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing, Plaintiffs was using the mark BRITANNICA at the time Defendants
filed the aforementioned oath with the Trademark Office in the manner described herein, such
use creating in Plaintiffs rights to the mark that were superior to Defendants' rights to the
applied-for mark.
43. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing that its use of the applied-for mark was likely to cause confusion with
Plaintiffs' BRITANNICA mark.
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44. As a result of the foregoing, Defendants knew at the time of filing the falsity of
the statement that "no other person, firm, corporation, or association has the right to use the mark
in commerce, either in the identical form thereof or in such near resemblance thereto as to be
likely, when used on or in connection with the goods/services of such other person, to cause
confusion, or to cause mistake, or to deceive."
45. As evidenced in part by the foregoing specifically alleged facts, Defendants made
the aforementioned statement with the intent to deceive the Trademark Office and procure
registration of the applied-for mark, to which Defendants were not entitled.
46. Defendants therefore fraudulently executed the declaration submitted with the
filing of the trademark application.
47. In connection with the trademark application, Defendants has submitted specimen
which is or are fabrications.
48. In connection with the trademark application, the submission of the fabricated
specimen to the Trademark Office was material because the application would not be allowed
without such submission.
49. In connection with the trademark application, Defendants made the foregoing
submission to the Trademark Office knowing of its falsity.
50. In connection with the trademark application, Defendants made the foregoing
submission to the Trademark Office with the specific intent to deceive the Trademark Office and
obtain registration of the applied-for mark.
51. For the foregoing reasons, Defendants has committed fraud in connection with the
trademark application.
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52. Defendants are not and have not actually used in commerce the applied-for mark.
53. Defendants were not using the applied-for mark in commerce as of the filing date
of the application.
Defendants' Fraudulent BRITANNICA With Illustration Mark
54. Defendants filed the trademark application for registration of the mark
BRITANNICA with illustration, serial no. 85730110, on September 16, 2012. The application
alleged a date of first use in commerce no later than June 1, 2004.
55. The application was signed by Malgorzata Madej.
56. Defendants are owner of copending application 85/540559 for the mark
BRITANICA.
57. Both the trademark application and application 85/540559 include the literal
BRITANNICA and no other literal element. Both the trademark application and application
85/540559 are for financial and investment related services.
58. Application filed application 85/540559 on February 12, 2012, claiming a date of
first use of February 12, 2012, the same day as that application's filing.
59. The entirety of the mark of application 85/540559 is contained in the trademark
application; that is, the literal element of the trademark application is identical to and co
extensive with the entire mark applied-for in application 85/540559. Thus, based on this identity
of literal elements and substantive identity of the claimed services of each application, the date of
first use of application 85/540559, the date of first use of the instant application and application
85/540559 must be the same.
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60. According to whois records, Defendants obtained the domain
on February 24, 2012. At some time thereafter, Defendants began
operating a website at advertising and promoting investment related
services.
61. Defendants' website states and/or stated that "Britannica is an investment
advisory firm founded in 2012." Defendants' website bears and/or bore a copyright notice of
2012.
62. On September 7, 2012, an attorney for Defendants wrote to Plaintiffs demanding
that Plaintiffs cease use of the mark BRITANNICA and that Plaintiffs abandon his pending
application for registration of that mark. In that letter, the attorney for Defendants represented
that Defendants "began using the trademark BRITANNICA at least as early as 2004 in the
United States."
63. Subsequent to the September 7, 2012 letter, Plaintiffs' attorney responded to the
Plaintiffs' attorney requesting (a) explanation for the discrepancy between the date of first use
stated in the letter and the claims made on Defendants' website regarding date of formation; (b)
explanation for the discrepancy between the date of first use stated in the letter and the date of
registration of the domain ; (c) explanation for the discrepancy between
the date of first use stated in the letter and the date of first use stated in the instant application;
and (d) documentation of Plaintiffs' alleged use dating to 2004.
64. Defendants' counsel did not provide any explanation for foregoing requests (a),
(b) and (c), supporting the aforementioned allegations concerning Defendants' knowledge and
intent underlying its activities.
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65. Defendants' counsel provided purported documentation of Defendants' use dating
to 2004, such documentation appearing to be fabricated, supporting the aforementioned
allegations concerning Defendants' knowledge and intent underlying its activities.
66. Defendants were aware of Plaintiffs' activities surrounding Plaintiffs' adoption of
the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL at all
relevant times, including as of the filing date of Defendants' instant application.
67. Defendants believed that its use of the applied-for mark would likely cause
confusion with Plaintiffs' use of the mark BRITANNICA, as evidenced by the aforementioned
correspondence from Defendants' attorney to Plaintiffs.
68. Plaintiffs' aforementioned activities constitute analogous use of the marks
BRITANNICA, BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL
by Plaintiffs. As a result of the analogous use, Plaintiffs has priority to the applied-for mark over
Defendants.
69. There is a likelihood of confusion between the marks BRITANNICA,
BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL as used and owned
by Plaintiffs and the applied-for mark as allegedly used and applied-for by Defendants.
70. As a result, Defendants are not entitled to registration of the applied-for mark.
71. In connection with the instant application, Defendants made the following
declaration:
72. The undersigned, being hereby warned that willful false statements and the like somade are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and thatsuch willful false statements, and the like, may jeopardize the validity of the application or anyresulting registration, declares that he/she is properly authorized to execute this application onbehalf of the Defendants; he/she believes the Defendants to be the owner of thetrademark/service mark sought to be registered, or, if the application is being filed under 15
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U.S.C. Section 1051(b), he/she believes Defendants to be entitled to use such mark in commerce;to the best of his/her knowledge and belief no other person, firm, corporation, or association hasthe right to use the mark in commerce, either in the identical form thereof or in such nearresemblance thereto as to be likely, when used on or in connection with the goods/services ofsuch other person, to cause confusion, or to cause mistake, or to deceive; and that all statementsmade of his/her own knowledge are true; and that all statements made on information and beliefare believed to be true.
73. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing, Defendants were not the owner of the trademark/service mark sought to
be registered.
74. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing, Plaintiffs was using the mark BRITANNICA at the time Defendants
filed the aforementioned oath with the Trademark Office in the manner described herein, such
use creating in Plaintiffs rights to the mark that were superior to Defendants' rights to the
applied-for mark.
75. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing that its use of the applied-for mark was likely to cause confusion with
Plaintiffs' BRITANNICA mark.
76. As a result of the foregoing, Defendants knew at the time of filing the falsity of
the statement that "no other person, firm, corporation, or association has the right to use the mark
in commerce, either in the identical form thereof or in such near resemblance thereto as to be
likely, when used on or in connection with the goods/services of such other person, to cause
confusion, or to cause mistake, or to deceive."
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77. As evidenced in part by the foregoing specifically alleged facts, Defendants made
the aforementioned statement with the intent to deceive the Trademark Office and procure
registration of the applied-for mark, to which Defendants were not entitled.
78. Defendants therefore fraudulently executed the declaration submitted with the
filing of the trademark application.
79. In connection with the instant application, Defendants has submitted specimen
which is or are fabrications.
80. The specimen purports to be portions of a brochure (or similar publication);
however, no such brochure was ever created nor distributed by Defendants. Instead, Defendants
created the alleged brochure (or similar publication) portions solely for the purpose of
submission with the instant application. The entirety of the specimen is therefore a fabrication as
it never formed a part of any brochure (or similar publication) as alleged by Defendants.
81. In connection with the instant application, the submission of the fabricated
specimen to the Trademark Office was material because the application would not be allowed
without such submission.
82. In connection with the instant application, Defendants made the foregoing
submission to the Trademark Office knowing of its falsity.
83. Defendants new of the falsity because it created a document purporting to be a
portion of a brochure (or similar publication) knowing that no such brochure (or similar
publication) ever existed.
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84. In connection with the instant application, Defendants made the foregoing
submission to the Trademark Office with the specific intent to deceive the Trademark Office and
obtain registration of the applied-for mark.
85. Defendants must have intended to deceive the Trademark Office because is
submitted a document purporting to be a portion of a brochure (or similar publication) knowing
that no such brochure (or similar publication) ever existed.
86. For the foregoing reasons, Defendants has committed fraud in connection with the
trademark application.
87. Defendants are not and have not actually used in commerce the applied-for mark.
88. Defendants were not using the applied-for mark in commerce as of the filing date
of the application.
89. The mark of the instant application is:
BRITANNICA
90. The mark of the instant application is described as:
91. The mark consists of the wording "BRITANNICA", and to the left of the wordingis the design of a lion-like animal with a spear-shaped tail with a flame coming from its mouth.
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92. The specimen shows the mark:
BRITANNICA"
93. The mark of the instant application as shown in the drawing and described in the
application differs substantially from the mark appearing in the specimen.
94. The mark on the drawing of the trademark application is not a substantially exact
representation of the mark on the specimen, and is thus not proper to show use pursuant to 37
C.F.R. 2.51(a).
95. Defendants has provided no specimen showing the applied-for mark.
96. Defendants are not and have not actually used in commerce the applied-for mark
as shown and described in the application.
Defendants' Fraudulent BRITANNICA CAPITAL Mark
97. Defendants filed the trademark application for registration of the mark
BRITANNICA CAPITAL, serial no. 85/659514, on June 22, 2012. The application claimed a
date of first use of February 12, 2012, the same date as the application filing date for Defendants'
copending application for registration of the mark BRITANNICA , serial no. 85/540559.
98. The application was signed by Malgorzata Madej.
99. According to whois records, Defendants obtained the domain
on February 24, 2012, twelve days after its stated date of first use. At
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some time thereafter, Defendants began operating a website at
advertising and promoting investment related services.
100. Defendants' website states and/or stated that "Britannica is an investment
advisory firm founded in 2012." Defendants' website bears and/or bore a copyright notice of
2012.
101. On September 7, 2012, an attorney for Defendants wrote to Plaintiffs demanding
that Plaintiffs cease use of the mark BRITANNICA and that Plaintiffs abandon his pending
application for registration of that mark. In that letter, the attorney for Defendants represented
that Defendants "began using the trademark BRITANNICA at least as early as 2004 in the
United States."
102. Subsequent to the September 7, 2012 letter, Plaintiffs' attorney responded to the
Plaintiffs' attorney requesting (a) explanation for the discrepancy between the date of first use
stated in the letter and the claims made on Defendants' website regarding date of formation; (b)
explanation for the discrepancy between the date of first use stated in the letter and the date of
registration of the domain ; (c) explanation for the discrepancy between
the date of first use stated in the letter and the date of first use stated in the instant application;
and (d) documentation of Plaintiffs' alleged use dating to 2004.
103. Defendants' counsel did not provide any explanation for foregoing requests (a),
(b) and (c), supporting the aforementioned allegations concerning Defendants' knowledge and
intent underlying its activities.
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104. Defendants' counsel provided purported documentation of Defendants' use dating
to 2004, such documentation appearing to be fabricated, supporting the aforementioned
allegationsconcerning Defendants' knowledge and intent underlying its activities.
105. Defendants were aware of Plaintiffs' activities surrounding Plaintiffs' adoption of
the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL at all
relevant times, including as of the filing date of Defendants' instant application.
106. Defendants believed that its use of the applied-for mark would likely cause
confusion with Plaintiffs' use of the mark BRITANNICA, as evidenced by the aforementioned
correspondence from Defendants' attorney to Plaintiffs.
107. Plaintiffs' aforementioned activities constitute analogous use of the marks
BRITANNICA, BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL
by Plaintiffs. As a result of the analogous use, Plaintiffs has priority to the applied-for mark over
Defendants.
108. There is a likelihood of confusion between the marks BRITANNICA,
BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL as used and owned
by Plaintiffs and the applied-for mark as allegedly used and applied-for by Defendants.
109. In connection with the instant application, Defendants made the following
declaration:
110. The undersigned, being hereby warned that willful false statements and the like somade are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and thatsuch willful false statements, and the like, may jeopardize the validity of the application or anyresulting registration, declares that he/she is properly authorized to execute this application onbehalf of the Defendants; he/she believes the Defendants to be the owner of thetrademark/service mark sought to be registered, or, if the application is being filed under 15U.S.C. Section 1051(b), he/she believes Defendants to be entitled to use such mark in commerce;to the best of his/her knowledge and belief no other person, firm, corporation, or association has
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the right to use the mark in commerce, either in the identical form thereof or in such nearresemblance thereto as to be likely, when used on or in connection with the goods/services ofsuch other person, to cause confusion, or to cause mistake, or to deceive; and that all statementsmade of his/her own knowledge are true; and that all statements made on information and beliefare believed to be true.
111. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing, Defendants were not the owner of the trademark/service mark sought to
be registered.
112. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing, Plaintiffs was using the mark BRITANNICA at the time Defendants
filed the aforementioned oath with the Trademark Office in the manner described herein, such
use creating in Plaintiffs rights to the mark that were superior to Defendants' rights to the
applied-for mark.
113. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing that its use of the applied-for mark was likely to cause confusion with
Plaintiffs' BRITANNICA mark.
114. As a result of the foregoing, Defendants knew at the time of filing the falsity of
the statement that "no other person, firm, corporation, or association has the right to use the mark
in commerce, either in the identical form thereof or in such near resemblance thereto as to be
likely, when used on or in connection with the goods/services of such other person, to cause
confusion, or to cause mistake, or to deceive."
115. As evidenced in part by the foregoing specifically alleged facts, Defendants made
the aforementioned statement with the intent to deceive the Trademark Office and procure
registration of the applied-for mark, to which Defendants were not entitled.
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116. Defendants therefore fraudulently executed the declaration submitted with the
filing of the trademark application.
117. In connection with the instant application, Defendants has submitted specimen
which is or are fabrications.
118. The specimen purports to be portions of a brochure (or similar publication);
however, no such brochure was ever created nor distributed by Defendants. Instead, Defendants
created the alleged brochure (or similar publication) portions solely for the purpose of
submission with the instant application. The entirety of the specimen is therefore a fabrication as
it never formed a part of any brochure (or similar publication) as alleged by Defendants.
119. In connection with the instant application, the submission of the fabricated
specimen to the Trademark Office was material because the application would not be allowed
without such submission.
120. In connection with the instant application, Defendants made the foregoing
submission to the Trademark Office knowing of its falsity.
121. Defendants new of the falsity because it created a document purporting to be a
portion of a brochure (or similar publication) knowing that no such brochure (or similar
publication) ever existed.
122. In connection with the instant application, Defendants made the foregoing
submission to the Trademark Office with the specific intent to deceive the Trademark Office and
obtain registration of the applied-for mark.
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123. Defendants must have intended to deceive the Trademark Office because is
submitted a document purporting to be a portion of a brochure (or similar publication) knowing
that no such brochure (or similar publication) ever existed.
124. For the foregoing reasons, Defendants has committed fraud in connection with the
trademark application.
125. Defendants are not and have not actually used in commerce the applied-for mark.
126. Defendants were not using the applied-for mark in commerce as of the filing date
of the application.
Defendants' Fraudulent BRITTANIC Mark
127. Defendants filed the trademark application for registration of the BRITANNIC
mark, serial no. 85/671115, on July 8, 2012. The application claimed a date of first use of
February 12, 2012, the same date as the application filing date for Defendants' copending
application for registration of the mark BRITANNICA, serial no. 85/540559 . The date of first
use was later amended to reflect an earlier date of first use of March 1, 2008.
128. The application was signed by Malgorzata Madej.
129. According to whois records, Defendants obtained the domain
on February 24, 2012, twelve days after its stated date of first use. At
some time thereafter, Defendants began operating a website at
advertising and promoting investment related services.
130. Defendants' website states and/or stated that "Britannica is an investment
advisory firm founded in 2012." Defendants' website bears and/or bore a copyright notice of
2012.
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131. On September 7, 2012, an attorney for Defendants wrote to Plaintiffs demanding
that Plaintiffs cease use of the mark BRITANNICA and that Plaintiffs abandon his pending
application for registration of that mark. In that letter, the attorney for Defendants represented
that Defendants "began using the trademark BRITANNICA at least as early as 2004 in the
United States."
132. Subsequent to the September 7, 2012 letter, Plaintiffs' attorney responded to the
Plaintiffs' attorney requesting (a) explanation for the discrepancy between the date of first use
stated in the letter and the claims made on Defendants' website regarding date of formation; (b)
explanation for the discrepancy between the date of first use stated in the letter and the date of
registration of the domain ; (c) explanation for the discrepancy between
the date of first use stated in the letter and the date of first use stated in the instant application;
and (d) documentation of Plaintiffs' alleged use dating to 2004.
133. Defendants' counsel did not provide any explanation for foregoing requests (a),
(b) and (c), supporting the aforementioned allegations concerning Defendants' knowledge and
intent underlying its activities.
134. Defendants' counsel provided purported documentation of Defendants' use dating
to 2004, such documentation appearing to be fabricated, supporting the aforementioned
allegations concerning Defendants' knowledge and intent underlying its activities.
135. Defendants were aware of Plaintiffs' activities surrounding Plaintiffs' adoption of
the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL at all
relevant times, including as of the filing date of Defendants' instant application.
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136. Defendants believed that its use of the applied-for mark would likely cause
confusion with Plaintiffs' use of the mark BRITANNICA, as evidenced by the aforementioned
correspondence from Defendants' attorney to Plaintiffs.
137. Plaintiffs' aforementioned activities constitute analogous use of the marks
BRITANNICA, BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL
by Plaintiffs. As a result of the analogous use, Plaintiffs has priority to the applied-for mark over
Defendants.
138. There is a likelihood of confusion between the marks BRITANNICA,
BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL as used and owned
by Plaintiffs and the applied-for mark as allegedly used and applied-for by Defendants.
139. In connection with the instant application, Defendants made the following
declaration:
140. The undersigned, being hereby warned that willful false statements and the like somade are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and thatsuch willful false statements, and the like, may jeopardize the validity of the application or anyresulting registration, declares that he/she is properly authorized to execute this application onbehalf of the Defendants; he/she believes the Defendants to be the owner of thetrademark/service mark sought to be registered, or, if the application is being filed under 15U.S.C. Section 1051(b), he/she believes Defendants to be entitled to use such mark in commerce;to the best of his/her knowledge and belief no other person, firm, corporation, or association hasthe right to use the mark in commerce, either in the identical form thereof or in such nearresemblance thereto as to be likely, when used on or in connection with the goods/services ofsuch other person, to cause confusion, or to cause mistake, or to deceive; and that all statementsmade of his/her own knowledge are true; and that all statements made on information and beliefare believed to be true.
141. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing, Defendants were not the owner of the trademark/service mark sought to
be registered.
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142. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing, Plaintiffs was using the mark BRITANNICA at the time Defendants
filed the aforementioned oath with the Trademark Office in the manner described herein, such
use creating in Plaintiffs rights to the mark that were superior to Defendants' rights to the
applied-for mark.
143. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing that its use of the applied-for mark was likely to cause confusion with
Plaintiffs' BRITANNICA mark.
144. As a result of the foregoing, Defendants knew at the time of filing the falsity of
the statement that "no other person, firm, corporation, or association has the right to use the mark
in commerce, either in the identical form thereof or in such near resemblance thereto as to be
likely, when used on or in connection with the goods/services of such other person, to cause
confusion, or to cause mistake, or to deceive."
145. As evidenced in part by the foregoing specifically alleged facts, Defendants made
the aforementioned statement with the intent to deceive the Trademark Office and procure
registration of the applied-for mark, to which Defendants were not entitled.
146. Defendants therefore fraudulently executed the declaration submitted with the
filing of the trademark application.
147. In connection with the instant application, Defendants has submitted specimen
which is or are fabrications.
148. The specimen purports to be portions of a brochure (or similar publication);
however, no such brochure was ever created nor distributed by Defendants. Instead, Defendants
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created the alleged brochure (or similar publication) portions solely for the purpose of
submission with the instant application. The entirety of the specimen is therefore a fabrication as
it never formed a part of any brochure (or similar publication) as alleged by Defendants.
149. In connection with the instant application, the submission of the fabricated
specimento the Trademark Office was material because the application would not be allowed
without such submission.
150. In connection with the instant application, Defendants made the foregoing
submission to the Trademark Office knowing of its falsity.
151. Defendants new of the falsity because it created a document purporting to be a
portion of a brochure (or similar publication) knowing that no such brochure (or similar
publication) ever existed.
152. In connection with the instant application, Defendants made the foregoing
submission to the Trademark Office with the specific intent to deceive the Trademark Office and
obtain registration of the applied-for mark.
153. Defendants must have intended to deceive the Trademark Office because is
submitted a document purporting to be a portion of a brochure (or similar publication) knowing
that no such brochure (or similar publication) ever existed.
154. For the foregoing reasons, Defendants has committed fraud in connection with the
trademark application.
155. Defendants are not and have not actually used in commerce the applied-for mark.
156. Defendants were not using the applied-for mark in commerce as of the filing date
of the application.
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Defendants' Fraudulent BRITANNIA Mark
157. Defendants filed the trademark application for registration of the mark
BRITANNIA, serial no. 85/671118, on July 8, 2012. The application claimed a date of first use
of February 12, 2012, the same date as the application filing date for Defendants' copending
application for registration of the mark BRITANNICA, serial no. 85/540559. The date of first
use was subsequently amended to state a date of first use of June 1, 2004.
158. The application was signed by Malgorzata Madej.
159. According to whois records, Defendants obtained the domain
on February 24, 2012, twelve days after its stated date of first use. At
some time thereafter, Defendants began operating a website at
advertising and promoting investment related services.
160. Defendants' website states and/or stated that "Britannica is an investment
advisory firm founded in 2012." Defendants' website bears and/or bore a copyright notice of
2012.
161. Defendants operate and/or previously operated no website in connection with the
mark BRITANNIA.
162. On September 7, 2012, an attorney for Defendants wrote to Plaintiffs demanding
that Plaintiffs cease use of the mark BRITANNICA and that Plaintiffs abandon his pending
application for registration of that mark. In that letter, the attorney for Defendants represented
that Defendants "began using the trademark BRITANNICA at least as early as 2004 in the
United States."
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163. Subsequent to the September 7, 2012 letter, Plaintiffs' attorney responded to the
Plaintiffs' attorney requesting (a) explanation for the discrepancy between the date of first use
stated in the letter and the claims made on Defendants' website regarding date of formation; (b)
explanation for the discrepancy between the date of first use stated in the letter and the date of
registration of the domain ; (c) explanation for the discrepancy between
the date of first use stated in the letter and the date of first use stated in the instant application;
and (d) documentation of Plaintiffs' alleged use dating to 2004.
164. Defendants' counsel did not provide any explanation for foregoing requests (a),
(b) and (c), supporting the aforementioned allegations concerning Defendants' knowledge and
intent underlying its activities.
165. Defendants' counsel provided purported documentation of Defendants' use dating
to 2004, such documentation appearing to be fabricated, supporting the aforementioned
allegations concerning Defendants' knowledge and intent underlying its activities.
166. Defendants were aware of Plaintiffs' activities surrounding Plaintiffs' adoption of
the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL at all
relevant times, including as of the filing date of Defendants' instant application.
167. Defendants believed that its use of the applied-for mark would likely cause
confusion with Plaintiffs' use of the mark BRITANNICA, as evidenced by the aforementioned
correspondence from Defendants' attorney to Plaintiffs.
168. Plaintiffs' aforementioned activities constitute analogous use of the marks
BRITANNICA, BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL
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by Plaintiffs. As a result of the analogous use, Plaintiffs has priority to the applied-for mark over
Defendants.
169. There is a likelihood of confusion between the marks BRITANNICA,
BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL as used and owned
by Plaintiffs and the applied-for mark as allegedly used and applied-for by Defendants.
170. As a result, Defendants are not entitled to registration of the applied-for mark.
171. In connection with the instant application, Defendants made the following
declaration:
172. The undersigned, being hereby warned that willful false statements and the like somade are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and thatsuch willful false statements, and the like, may jeopardize the validity of the application or anyresulting registration, declares that he/she is properly authorized to execute this application onbehalf of the Defendants; he/she believes the Defendants to be the owner of thetrademark/service mark sought to be registered, or, if the application is being filed under 15U.S.C. Section 1051(b), he/she believes Defendants to be entitled to use such mark in commerce;to the best of his/her knowledge and belief no other person, firm, corporation, or association hasthe right to use the mark in commerce, either in the identical form thereof or in such nearresemblance thereto as to be likely, when used on or in connection with the goods/services ofsuch other person, to cause confusion, or to cause mistake, or to deceive; and that all statementsmade of his/her own knowledge are true; and that all statements made on information and beliefare believed to be true.
173. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing, Defendants were not the owner of the trademark/service mark sought to
be registered.
174. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing, Plaintiffs was using the mark BRITANNICA at the time Defendants
filed the aforementioned oath with the Trademark Office in the manner described herein, such
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use creating in Plaintiffs rights to the mark that were superior to Defendants' rights to the
applied-for mark.
175. As evidenced in part by the foregoing specifically alleged facts, Defendants knew
that, at the time of filing that its use of the applied-for mark was likely to cause confusion with
Plaintiffs' BRITANNICA mark.
176. As a result of the foregoing, Defendants knew at the time of filing the falsity of
the statement that "no other person, firm, corporation, or association has the right to use the mark
in commerce, either in the identical form thereof or in such near resemblance thereto as to be
likely, when used on or in connection with the goods/services of such other person, to cause
confusion, or to cause mistake, or to deceive."
177. As evidenced in part by the foregoing specifically alleged facts, Defendants made
the aforementioned statement with the intent to deceive the Trademark Office and procure
registration of the applied-for mark, to which Defendants were not entitled.
178. Defendants therefore fraudulently executed the declaration submitted with the
filing of the trademark application.
179. In connection with the instant application, Defendants has submitted specimen
which is or are fabrications.
180. The specimen purports to be portions of a brochure (or similar publication);
however, no such brochure was ever created nor distributed by Defendants. Instead, Defendants
created the alleged brochure (or similar publication) portions solely for the purpose of
submission with the instant application. The entirety of the specimen is therefore a fabrication as
it never formed a part of any brochure (or similar publication) as alleged by Defendants.
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181. In connection with the instant application, the submission of the fabricated
specimen to the Trademark Office was material because the application would not be allowed
without such submission.
182. In connection with the instant application, Defendants made the foregoing
submission to the Trademark Office knowing of its falsity.
183. Defendants new of the falsity because it created a document purporting to be a
portion of a brochure (or similar publication) knowing that no such brochure (or similar
publication) ever existed.
184. In connection with the instant application, Defendants made the foregoing
submission to the Trademark Office with the specific intent to deceive the Trademark Office and
obtain registration of the applied-for mark.
185. Defendants must have intended to deceive the Trademark Office because is
submitted a document purporting to be a portion of a brochure (or similar publication) knowing
that no such brochure (or similar publication) ever existed.
186. For the foregoing reasons, Defendants has committed fraud in connection with the
trademark application.
187. Defendants are not and have not actually used in commerce the applied-for mark.
188. Defendants were not using the applied-for mark in commerce as of the filing date
of the application.
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Defendants' Additional Fraudulent BRITANNICA Marks
189. In addition to the aforementioned fraudulent BRITANNICA marks, Defendants
filed applications for registration of the mark BRITANNICA, serial nos. 85/820123, 85/816239,
abd 85/815398.
190. The applications were signed by Malgorzata Madej.
191. Each of these additional fraudulent marks suffered the same fraudulent
deficiencies of the aforementioned BRITANNICA marks.
192. Each of these additional fraudulent marks concerned investment related services.
First Cause Of ActionDeclaratory Judgment Of Trademark Invalidity
193. Plaintiffs reallege the allegations contained in the above paragraphs as if stated
fully herein.
194. For each and every aforementioned trademark in which Defendants claim legally
cognizable rights, Defendants have failed to use such marks, in commerce and otherwise, in
connection with the provision of any goods and/or services, sufficient to give rise to trademark
rights therein.
195. In connection with each and every aforementioned trademark in which
Defendants claim legally cognizable rights, Defendants have sought to obtain federal registration
of such trademarks through fraud and deceit, with the intention of deceiving the Trademark
Office.
196. Defendants' assertion of trademark rights in the aforementioned marks against
Plaintiffs has given rise to an actual controversy between the parties.
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197. Plaintiffs have been and continue to be damaged by Defendants' assertion of the
aforementioned trademark rights.
198. Second Cause Of ActionTrademark Infringement
199. Plaintiffs reallege the allegations contained in the above paragraphs as if stated
fully herein.
200. To the extent that Defendants have used the aforementioned marks, in commerce
and otherwise, in connection with the provision of any goods and/or services, such use is junior
to Plaitniffs' use of its BRITANNICA marks. Plaintiffs' rights in its BRITANNICA marks are
therefore senior to any rights Defendants' may have in the aforementioned marks.
201. Any use by Defendants of Defendants' aforementioned marks is likely to cause
confusion between Plaintiffs and Defendants.
202. Any us by Defendants of Defendants' aforementioned marks constitutes
trademark infringement of Plaintiffs' marks in violation of section 43(a) of the Lanham Act, 15
U.S.C. 1125(a).
203. Plaintiffs have been and continue to be damaged by such infringement.
Third Cause Of ActionPrima-Facie Tort/Civil Conspiracy
204. Plaintiffs reallege the allegations contained in the above paragraphs as if stated
fully herein.
205. Defendants, jointly and severally, undertook the aforementioned acts,
intentionally and withoutjustification or right, for the malicious purposeof interfering withPlaintiffs' business, further with the specific intention to harm Plaintiffs.
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206. Defendants, jointlyand severally, conspired andagreed to undertake theaforementioned acts in concert, and did in fact act in furtherance ofthe agreement by filing the
fraudulent documents previously described, as well as additional documents in connection with
the proceedings before the Trademark Trial and Appeal Board, all ofwhich resulted in damages
to Plaintiffs.
207. The facts alleged herein support an inference that Defendants knowingly agreed
to cooperate in a fraudulent scheme, and shared a perfidious purpose.
208. Plaintiffs have been and continue to be harmed by Plaintiffs' acts.
Prayer For Relief
WHEREFORE, Plaintiffs respectfully request that the Court enter judgment in favorPlaintiffs:
a. declaring Defendants' aforementioned trademarks invalid;
b. ordering that Defendants' pending applications for trademark registration, serial nos.:
85/820123; 85/816239; 85/815398; 85/730110; 85/671118; 85/671115; 85/659514; and
85/540559 be canceled and/or abandoned with prejudice;
c. awarding actual damages to Plaintiffs for each Defendants' trademark infringement
under 15 U.S.C. 1125(a), pursuant to section 35 of the Lanham Act, 15 U.S.C. 1117(a), in anamount to be determined;
d. awarding Plaintiffs their costs and attorney's fees pursuant to section 35 of the
Lanham Act 15 U.S.C. 1117(a);
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e. ordering the destruction ofinfringing articles, including without limitation websites,
promotional materials, and printed materials, pursuant to section 34 ofthe Lanham Act, 15
U.S.C. 1116(a);
f. permanently enjoining further infringement by Defendants pursuant to section 34 ofthe Lanham Act, 15 U.S.C. 1116(a);
g. awarding actual damages to Plaintiffs for Defendants' prima facia tort and civil
conspiracy;
h. permanently enjoining Defendants and all parties acting in concert therewith fromfurther interference with Plaintiffs' business; and
i. providing all other equitable relief that the Court deems just and proper.Dated: April 7,2015
Respectfully submitted,
JerfreJy SonnaoendJonnabendLaw
600 Prospect AvenueBrooklyn, NY 11215
Attorney for PlaintiffsGregory A. Lewis andBritannica CapitalPartners, LLC
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