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Plaintiff,
- against - COMPLAINT
NEW BALANCE ATHLETICS, INC.
Defendant.
Jury Trial Demanded
Plaintiff, ABG Collective, LLC (“Plaintiff”), by its attorneys, for its Complaint
counterfeiting, false designation of origin, and unfair competition arising under the
Lanham Act, 15 U.S.C. § 1051, et seq., and for related claims of trademark infringement,
unfair competition, dilution, injury to business reputation and deceptive trade practices
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THE PARTIES
its principal place of business at 1411 Broadway, New York, New York, 10018.
Massachusetts corporation with its principal place of business at 100 Guest Street,
4. This Court has jurisdiction over the subject matter of this action pursuant to
28 U.S.C. §§ 1331, 1332 and 1338 and 15 U.S.C. § 1121 because Plaintiff’s claims arise
under the Trademark Act of 1946, as amended, 15 U.S.C. §§ 1051, et seq. The Court has
supplemental jurisdiction over the state law claims under 28 U.S.C. § 1338(b) and 28
U.S.C. § 1367(a).
5. This Court may exercise personal jurisdiction over Defendant because, upon
information and belief, Defendant: (i) engages in continuous and systematic business
activities in this Judicial District; and/or (ii) regularly solicits business in New York and
this Judicial District and derives substantial revenue from interstate commerce; and/or
(iii) has purposely directed substantial activities at the residents of New York and this
Judicial District and derives substantial revenue from interstate commerce; and/or (iv)
has committed tortious acts (namely, the acts of trademark infringement and unfair
competition alleged herein) directed at persons located in this State and this Judicial
District.
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7. Plaintiff is the exclusive owner of all right, title and interest in and to the
“VISION Trademarks”), a popular skater and board-culture brand established more than
forty years ago. The VISION Trademarks are recognized as one of the original and most
respected street wear brands, renowned for bridging the gap between the worlds of
fashion, skating, and music. The VISION Trademarks have enjoyed a highly successful
licensing and merchandising program for apparel and footwear products in the United
continuously used on footwear products and a variety of related goods and services by
Plaintiff, its predecessors, and/or their affiliated and related entities, licensees and/or
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9. Plaintiff’s VISION Trademarks have been registered with the U.S. Patent and
Trademark Office (“PTO”), as well as around the world, for use in connection with
10. Plaintiff is the exclusive owner of the following valid and subsisting
with footwear and related goods in International Class 25 (collectively, the “VISION
Trademark Registrations”):
PTO, for the word mark VISION for use in connection with “footwear,
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PTO, for the word mark VISION for use in connection with “clothing,
namely, t-shirts, shirts, shorts, and bathing suits, sold in shops selling
PTO, for the word mark VISION STREET WEAR for use in
PTO, for the word mark VISION STREET WEAR for use in
PTO, for the composite word & design mark VISION STREET
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shorts, bathing suits and footwear, including casual and athletic shoes”
(Copies of the PTO Registration Certificates for the VISION Trademarks are attached
12. Plaintiff’s VISION Trademarks are inherently distinctive to the public and the
trade with respect to its wide array of goods and services (including but not limited to
13. Plaintiff has promoted, marketed, advertised, and used the VISION
Trademarks extensively, and has made substantial sales of products and services
(including but not limited to footwear) offered under and/or bearing the VISION
Trademarks.
14. As a result of the promotion, marketing, advertising and use of the VISION
Trademarks during the past 30+ years, the public and the trade have come to recognize
the VISION Trademarks as exclusively identifying high quality products and services
emanating from a single source of origin, and the VISION Trademarks have gained
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distributed, offered for sale, and/or sold footwear products bearing identical and
16. Plaintiff has never licensed or authorized Defendant to use the VISION
Trademarks in any manner, including but not limited to in connection with the Infringing
Products.
offered for sale, and sold by and/or at the direction of Defendant have not been licensed,
18. The Infringing Products bear designs and symbols that are substantially and
19. The Infringing Products are identical to goods identified in Plaintiff’s ‘010
TM Registration for the VISION Trademark, namely footwear, and bear spurious
designations that are identical to the VISION Trademark, and are, therefore, counterfeit.
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20. The Infringing Products are similar to and compete with authorized footwear
products bearing the VISION Trademarks sold by Plaintiff and its affiliated and related
21. The Infringing Products and authorized goods bearing the VISION
22. Upon information and belief, Defendant’s aforementioned use of the VISION
distributing, and selling the Infringing Products has been directed at consumers located in
for sale, and sale of the Infringing Products, and use of identical and confusingly similar
knowingly facilitated by Defendant is likely to deceive, confuse, and mislead actual and
prospective purchasers before, during, and after purchase into falsely believing that the
Infringing Products are manufactured by, licensed by, authorized by, or otherwise
approved by Plaintiff. As such, Defendant’s actions are likely to cause initial interest,
point-of-sale and/or post-sale confusion to the irreparable harm and detriment of Plaintiff
24. Upon information and belief, Defendant had actual knowledge of the VISION
Trademarks and Plaintiff’s rights with respect thereto when it began manufacturing,
advertising, marketing, promoting, distributing, offering for sale, and/or selling the
25. Upon information and belief, Defendant was aware or should have been aware
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that the marketing, distribution and sale of the Infringing Products would likely cause
Products.
and maliciously adopted and used identical and confusingly similar imitations of the
VISION Trademarks on the Infringing Products to mislead and deceive consumers into
believe that the Infringing Products are licensed or authorized by, or emanate from,
Plaintiff, and to free-ride and otherwise trade on the substantial marketplace goodwill and
27. Defendant has acted in bad faith, with malicious intent, and in knowing
disregard of Plaintiff’s rights in and to the VISION Trademarks, with the intent of free-
riding on the substantial marketplace reputation and goodwill associated with the
VISION Trademarks.
28. The likelihood of confusion, mistake, and deception caused by the above-
Defendant has made substantial profits and gains to which it is not entitled in law or
equity.
activities, protect the reputation and marketplace goodwill of Plaintiff and its VISION
Trademarks from further harm, and prevent further consumer confusion, by enjoining
Defendant from engaging in further marketing, sales, and distribution of the Infringing
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Products.
31. Plaintiff repeats and reincorporates the allegations contained in the preceding
32. Defendant has used in commerce spurious marks that are counterfeits of,
registered under the ‘010 TM Registration, in connection with goods identical to goods
33. Defendant has used such marks knowing that they are counterfeit in
connection with the promotion and/or sale of goods identical to the goods of Plaintiff
Trademark is likely to mislead and cause consumers and/or the general public to falsely
Registration
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38. Upon information and belief, Defendant has intentionally used and continues
to intentionally use spurious marks that are counterfeits of, identical to, and substantially
distribution, and sale of goods identical to goods offered by and/or with the authority of
Plaintiff under its VISION Trademark and identified in its ‘010 TM Registration.
39. Because Defendant has caused, and is likely to continue causing, substantial
injury to the public and to Plaintiff for which Plaintiff has no adequate remedy at law,
and because this is an exceptional case, Plaintiff is entitled to statutory damages and
reasonable attorneys’ fees under 15 U.S.C. § 1117(c), as well as seizure of the Infringing
amount that is as yet undetermined. If the aforementioned acts of Defendant are allowed
to continue, Plaintiff will continue to suffer irreparable injury for which it has no
41. Plaintiff repeats and reincorporates the allegations contained in the preceding
42. Defendant has used in commerce marks that are confusingly similar to
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creating the false and misleading impression that the Infringing Products are
44. Defendant’s illicit activities have caused and, unless enjoined by this Court,
will continue to cause a likelihood of confusion and deception among members of the
trade and public, and, additionally, irreparable injury to Plaintiff’s goodwill and
intent to trade on the goodwill associated with Plaintiff’s federally registered VISION
46. Because Defendant has caused and is likely to continue causing substantial
injury to the public and to Plaintiff, and because this is an exceptional case, 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 §§ 1114,
47. Plaintiff repeats and reincorporates the allegations contained in the preceding
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similar imitations thereof has caused and is likely to cause confusion, deception, and
mistake by creating the false and misleading impression that the Infringing Products are
1125(a). Defendant’s illicit activities have caused and, unless enjoined by this Court, will
continue to cause a likelihood of confusion and deception among members of the trade
and public, and, additionally, injury to Plaintiff’s goodwill and reputation as symbolized
by the VISION Trademarks, for which Plaintiff has no adequate remedy at law.
to trade on the goodwill associated with the VISION Trademarks to the substantial and
51. Because Defendant has caused, and is likely to continue causing, substantial
injury to the public and to Plaintiff, and because this is an exceptional case, Plaintiff is
entitled to injunctive relief and to recover Defendant’s profits, actual damages, enhanced
profits and damages, costs, and reasonable attorneys’ fees under 15 U.S.C §§ 1125(a),
52. Plaintiff repeats and reincorporates the allegations contained in the preceding
53. Defendant’s illicit activities with respect to the VISION Trademarks alleged
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Plaintiff’s goodwill under the common law of the State of New York.
54. Defendant is directly liable for its illicit activities with respect to the VISION
55. Defendant’s illicit activities with respect to the VISION Trademarks alleged
56. As a direct and proximate result of Defendant’s illicit activities with respect to
the VISION Trademark alleged herein, Plaintiff has been and, unless Defendant’s illicit
activities with respect to the VISION Trademarks are enjoined by this Court, will
58. Plaintiff repeats and reincorporates the allegations contained in the preceding
59. Defendants’ acts as above alleged are misleading in a material respect, and
Section 349-350 of the General Business Law of the State of New York.
61. Plaintiff repeats and reincorporates the allegations contained in the preceding
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marketing, promoting, distributing, and selling the Infringing Products to persons located
in the State of New York violates N.Y. General Business Law § 360-L.
WHEREFORE, Plaintiff prays that this Court enter judgment in its favor on each
and every cause of action set forth above and award it relief including, but not limited to,
the following:
and all persons and entities in active concert or participation with, through, or under any
of the foregoing:
Trademarks, or any other marks, words, names or symbols confusingly similar to the
false designation or origin, false description, or false representation with respect to the
VISION Trademarks;
off any goods or services as authorized by, associated with, sponsored by, endorsed by,
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others to falsely pass off any goods or services as authorized, associated with, sponsored
by, endorsed by, affiliated with, related to, or otherwise connected to Plaintiff;
circulating, selling, offering for sale, advertising, marketing, promoting or displaying any
product bearing the VISION Trademarks, any unauthorized colorable imitation of the
VISION Trademark, or any other marks, words, names or symbols confusingly similar to
(physical and/or digital), or other materials (physical and/or digital) bearing the VISION
other marks, words, names or symbols confusingly similar to the VISION Trademarks, in
promotional materials for any of Defendant’s goods or services which are false or
or any other marks, words, names or symbols confusingly similar to the VISION
Trademarks;
promotional materials for any of Defendant’s goods or services which are false or
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purchasing public to falsely believe that any of Defendant’s goods or services are
Plaintiff’s goods or services, or are authorized by, associated with, sponsored by,
B. Ordering that Defendant use its best efforts to recall from the trade,
including any and all distributors, wholesalers, dealers, retailers and all other third
parties, any and all unauthorized products bearing the VISION Trademarks, any
unauthorized colorable imitation of the VISION Trademarks, or any other marks, words,
C. Ordering that Defendant deliver to Plaintiff any and all containers, signs,
and any materials used in the preparation of any of the foregoing, which in any way use
the VISION Trademarks, or any other marks, words, names or symbols confusingly
D. Ordering that Defendant, within thirty (30) days after service of notice in
entry of judgment or issuance of an injunction pursuant thereto, file with the Court and
serve upon Plaintiff’s counsel a written report under oath setting forth details of the
manner in which Defendant has complied with the Court’s order pursuant to Paragraphs
derived from its acts of infringement, false designation, unfair competition and other
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according to proof and all profits realized by Defendant by reason of the unlawful acts by
account of its willful, intentional and bad faith conduct pursuant to 15 U.S.C. § 1117.
$ 2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or
L. Awarding Plaintiff such other and further relief as the Court may deem
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Respectfully submitted,
By:___________________________
Edmund J. Ferdinand, III, Esq. (EF 9885)
Alexander R. Malbin, Esq. (AM 9385)
John F. Olsen, Esq. (JO 8553)
450 Seventh Avenue, Suite 450
New York, New York 10123
(p) (212) 220-0523
JFerdinand@FIPLawGroup.com
AMalbin@FIPLawGroup.com
JOlsen@FIPLawGroup.com
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