Case 1:15-cv-00341 Document 1 Filed 08/24/15 Page 1 of 7

IN THE UNITED STATES DISTRICT COUKI'

li'OR THE DISTRICT OF NEW HAMPSHIRE

NAKED UNDIES, LLC,

Plaintiff,

Civil Action No.

v.
,JURY TRIAL REQUI1;SlTF:n
NAKED BRAND GROUP, INC.,
Defendant.

COMPLAINT
Plaintiff Naked Undies, LLC, by its attorneys Saunders & Silverstein LLP, herein sues
Defendant Naked Brand Group, Inc. ("Defendant"). As grounds for its complaint, Plaintiff alleges
the following, upon actual knowledge with respect to itself and its own acts, and upon information and
belief as to other matters:

NATURE OF THE ACTION

1.

This action is brought pursuant to the Declaratory Judgment Act, 28 U.S.c.

2201 and 2202.

2.

Plaintiff seeks a declaratory judgment pursuant to the Lanham Act, 15 U.S.C.

1051 et seq., that it does not infringe any trademark rights of Defendant which Defendant
contends it has in the mark NAKED.
PARTIES
3.

Plaintiff Naked Undies, LLC, is a New Hampshire limited liability company with

its principal place of business at 10700 Wilshire Boulevard, Unit 202, Los Angeles, California

Case 1:15-cv-00341 Document 1 Filed 08/24/15 Page 2 of 7

90024. Plaintiff also operates its business from its offices in New Hampshire at 73 Perkins Road,
Madbury, New Hampshire 03823.
4.

Defendant Naked Brand Group, Inc. is a Nevada company with its principal place

at 311 S. Division Street, Carson City, Nevada 89703.

JURISDICTION AND VENUE
5.

This Court possesses subject matter jurisdiction over this case under 28 U.S.C.

1331 and 1338, because this action involves a federal question arising under the United States
Trademark Act of 1946, commonly known as the Lanham Act, 15 U.S.C. 1051 et seq.
6.

This Court possesses personal jurisdiction over Defendant pursuant to N.H. Rev.

Stat. Ann. 510:4 because Defendant does business within the State of New Hampshire and
operates an interactive e-commerce website available for access within the State. Further,
Defendant has asserted claims that Plaintiff is violating Defendant's alleged federally protected
trademark within this judicial district.
7.

Venue is proper under 28 U.S.C. 1391(b)(2) and l391(c)(2).

BACKGROUND

8.

Plaintiff hereby incorporates by reference paragraphs 1 through 6 as if fully set

forth herein.
9.

In or before May, 2012, Plaintiffs launched their NAKED UNDIES brand of

apparel products. The establishment of the brand included launching the NAKED UNDIES
website, located at <www.nakedundies.com>, on or around June 13,2013.
10.

Since launching the NAKED UNDIES brand, Plaintiff has amassed a great deal

of goodwill associated with the NAKED UNDIES mark. Plaintiff has continuously sold
loungewear and underwear for men and women under the NAKED UNDIES trademark.

Case 1:15-cv-00341 Document 1 Filed 08/24/15 Page 3 of 7

Plaintiffs NAKED UNDIES branded products have been featured

III

vanous publications,

including Daily News, Fab, 0 the Oprah Magazine, and Esquire.

11.

On October 24, 2014, nearly two years after Plaintiff began using the NAKED

UNDIES trademark, Plaintiff received an email from counsel for Defendant stating that it
considered Plaintiff's use of the mark NAKED UNDIES infringing of Defendant's NAKED
trademark. Defendant stated that it is the owner, by assignment, of U.S. Trademark Registration
No. 3,669,650 for the mark NAKED and uses the NAKED mark on its website. A copy of said
email is attached hereto as Exhibit A.
12.

The October 24,2014 email from counsel for Defendant further stated, "in lieu of

formally demanding that your company agree to cease all use of the Naked Undies name,
[Defendant] would first like to propose that the parties have a discussion to determine whether
there may be an alternative business solution that would enable both parties to secure a mutually
beneficial resolution to this matter."
13.

From November 2104 through March 2015, Plaintiff attempted to arrange

conference calls and videoconferences with Defendant to discuss the suggested joint venture.
However, no discussions ever took place because Defendant was continually unresponsive and
unavailable. On March 6, 2015, Defendant missed a scheduled conference call with Plaintiff.
Defendant stated it would reschedule the conference call, yet Defendant never did so. From that
point forward, Defendant stopped all communication with Plaintiff.
14.

Given the history of relatively amicable interaction between the parties and four

months of silence from Defendant, Plaintiff was surprised to receive a demand letter from
counsel for Defendant on July 16, 2015 (the "Demand Letter"). A copy of said letter is attached
hereto as Exhibit B.

Case 1:15-cv-00341 Document 1 Filed 08/24/15 Page 4 of 7

15.

In the Demand Letter, Defendant demanded that Plaintiff "discontinue its use of

the NAKED UNDIES name", and stated that " ... because the marks contain the identical
dominant term NAKED and cover identical goods (underwear), confusion in the marketplace is
inevitable and our client must take action to protect its brand and enforce its rights." (emphasis
added).
16.

Moreover, Defendant demanded that in order to "avoid any further dispute and/or

a litigious resolution", Plaintiff agree never to "use and/or apply for registration of any
trademark/service mark consisting ofor incorporating the term NAKED". (emphasis added).
17.

Plaintiff is currently planning the launch of a new brand, NAKED TRUTH. Under

the trademark NAKED TRUTH, Plaintiff will sell apparel for men and women and will render
online retail store services selling the same. Plaintiff has filed an application to register the mark
NAKED TRUTH, Serial No. 86704328. As of today, Plaintiff is prepared to launch its NAKED
TRUTH website and begin offering goods and services under its NAKED TRUTH trademark but
has not done so in fear of anticipated litigation by Defendant.
18.

NAKED-formative trademarks are commonly used in connection with apparel,

including underwear, and online retail store services selling said apparel. For example, the
brands NAKED PRINCESS, located at <http://www.nakedprincess.com> (last visited August
21, 2015); B'NAKED, located at <http://www.jlintimates.com> (last visited August 21, 2015);
NAKED WARDROBE, located at <http://www.nakedwardrobe.com> (last visited (August 21,
2015); NAKED COTTON, located at <http://www.nakedcotton.com> (last visited August 21,
2015); NAKED AND FAMOUS DENIM, located at <http://www.nakedandfamousdenim.com>
(last

visited

August

21,

2015);

and

ALMOST

NAKED,

located

at

<http://www.andrewchristian.com/index.php/collections/almost-naked.html> (last visited August

Case 1:15-cv-00341 Document 1 Filed 08/24/15 Page 5 of 7

21, 2015) all sell apparel for men or women. Screenshots of each of these websites are attached
hereto as Exhibit C.
19.

As a trademark used in connection with apparel and related online-retail store

services, the term NAKED is weak. Use of the term NAKED as part of trademarks used in
connection with apparel, including underwear, and online retail store services selling said apparel
is so common that there are currently 76 live coexisting NAKED-formative trademarks federally
registered with the United States Patent and Trademark Office ("USPTO") (The USPTO, an
agency charged with determining whether a likelihood of confusion exists between trademarks,
does not consider these NAKED-formative marks to conflict.). A spreadsheet listing these
registrations is attached hereto as Exhibit D.
20.

Indeed, use of the term NAKED is particularly fitting in connection with apparel,

and particularly underwear. In that context, the word NAKED is suggestive of the idea that the
apparel is so comfortable that the wearer feels like he or she is not wearing anything at all. It is
thus no wonder that so many NAKED-formative marks currently coexist without conflict.
COUNT I
Declaratory Judgment Of Non-Infringement 21.

NAKED UNDIES

Plaintiff hereby incorporates by reference paragraphs 1 through 21 above as if

fully set forth herein.

22.

Plaintiff's use of NAKED UNDIES in connection with apparel and related online

retail store services is not likely to cause confusion or mistake with Defendant's use of NAKED,
because NAKED is a weak term when used in connection with apparel and related online retail
store services.
23.

Plaintiff's use of NAKED UNDIES in connection with apparel and related online

retail store services does not infringe any protectable trademark rights Defendant may have in
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Case 1:15-cv-00341 Document 1 Filed 08/24/15 Page 6 of 7

NAKED under federal or state trademark laws, including any of Defendant's rights that may
flow from its NAKED registration, because NAKED is a weak term when used in connection
with apparel and related online retail store services.
COUNT II
Declaratory Judgment Of Non-Infringement 24.

NAKED TRUTH

Plaintiff hereby incorporates by reference paragraphs 1 through 21 above as if

fully set forth herein.

25.

Plaintiff's planned use of NAKED TRUTH in connection with apparel and related

online retail store services will not be not likely to cause confusion or mistake with Defendant's
use of NAKED, because NAKED is a weak term when used in connection with apparel and
related online retail store services.
26.

Plaintiff's planned use of NAKED TRUTH in connection with apparel and related

online retail store services will not infringe any protectable trademark rights Defendant may have
in NAKED under federal or state trademark laws, including any of Defendant's rights that may
flow from its NAKED registration, because NAKED is a weak term when used in connection
with apparel and related online retail store services.

RELIEF RI~QUESTED
For the above reasons, Plaintiff respectfully requests that this Court:
A.

Enter judgment in favor of Plaintiff and against Defendant;

B.

Issue an order declaring that Plaintiff's use of NAKED UNDIES does not infringe

on any federally or common law protected trademark rights of Defendant;

C.

Issue an order declaring that Plaintiffs planned use of NAKED TRUTH will not

infringe on any federally or common law protected trademark rights of Defendant;

Case 1:15-cv-00341 Document 1 Filed 08/24/15 Page 7 of 7

D.

Issue an order declaring that Plaintiff is not violating any federal or state law as a

result of its use of the NAKED UNDIES mark in commerce;

E.

Issue an order declaring that Plaintiff would not violate any federal or state law as

a result of its planned use of the NAKED TRUTH mark in commerce;

F.

Grant Plaintiff an award of its reasonable costs and attorneys' fees; and

G.

Grant Plaintiff all additional relief as this Court may deem just and proper.

Request for Jury Trial

Plaintiff requests a trial by jury on all issues so triable.

Respectfully submitted,
Naked Undies, LLC
By its attorneys,
Dated: August 24, 2015
/s/ Matthew Saunders
Matthew Saunders
(NH Bar No. 265178)
SAUNDERS & SILVERSTEIN LLP
14 Cedar Street, Suite 224
Amesbury, MA 01913
P: 978-463-9100
F: 978-463-9109
E: msaunders@massiplaw.com
/s/ Tim McLaughlin
Tim McLaughlin
(NH Bar No. 19570)
SHAHEEN & GORDON P.A.
107 Storrs Street
Concord, NH 03302
P: 603-225-7262
E: tmclaughlin@shaheengordon.com
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