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15 a

JUDGE COTE

02676

CIVIL COVEl

JS 44C/SDNY
REV. 4/2014

The 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 the
Judicial Conference of the United States in September 1974, is required for use of the Clerk of Court for the purpose of

"

: 7 2015

initiating the civil docket sheet.


DEFENDANTS

PLAINTIFFS

Malgazorta Madej, Suite 94, 22 Notting Hill Gate, London, W11 3JE, UK
Kingsley Ventures Corp., 309 N Huber Drive, Casper WY 82609

Gregory A. Lewis and Britannica Capital Partners, LLC


26 Broadway, Suite 934, New York, NY 10004

Sanjay Gupta (address unknown)

ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER


Jeffrey Sonnabend, SonnabendLaw, 600 Prospect Avenue, Brooklyn, NY

ATTORNEYS (IF KNOWN)

11215

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(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)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 Assigned
If yes,wasthis case Vol. fj Invol. fj Dismissed. No fj Yes fj]
IS THIS AN INTERNATIONAL ARBITRATION CASE?

No 0

If yes, give date

Yes
NATURE OF SUIT

(PLACE AN [x] IN ONE BOXONLY)

ACTIONS UNDER STATUTES

TORTS

PERSONAL INJURY

CONTRACT

&Case No.

PERSONAL INJURY

FORFEITURE/PENALTY

BANKRUPTCY

OTHER STATUTES

[ ] 625 DRUG RELATED

[ ] 422 APPEAL

[ ] 400 STATE

[ ] 367 HEALTHCARE/
11110
[]120
[]130
[ 1140
[ ]150

INSURANCE
MARINE
MILLER ACT

[ J 310 AIRPLANE
[ ] 315 AIRPLANE PRODUCT
LIABILITY

NEGOTIABLE

[ ] 320 ASSAULT, LIBEL &

INSTRUMENT
RECOVERY OF

[ ] 330 FEDERAL

SLANDER

OVERPAYMENT &
ENFORCEMENT
OF JUDGMENT

[ ] 151
[ ] 152

MEDICARE ACT

EMPLOYERS'

STUDENT LOANS

LIABILITY

[ ] 350 MOTOR VEHICLE


[ ] 355 MOTOR VEHICLE

(EXCL VETERANS)
[ 1153

[ ] 365 PERSONAL INJURY


PRODUCT LIABILITY

[ ] 368 ASBESTOS PERSONAL

[ ] 360 OTHER PERSONAL

OVERPAYMENT
OF VETERAN'S

[ ] 362 PERSONAL INJURY -

SOCIAL SECURITY

INJURY

REAPPORTIONMENT

[
[
[
[
[

] 410
] 430
] 450
] 460
] 470

MED MALPRACTICE

LABOR

PROPERTY DAMAGE

[ ] 385 PROPERTY DAMAGE

[1195

CONTRACT
CONTRACT
PRODUCT

[ ] 463 ALIEN DETAINEE


[ ] 510 MOTIONS TO

[ ] 710 FAIR LABOR

PRODUCT LIABILITY

STANDARDS ACT

[ ] 720 LABOR/MGMT

ACTIONS UNDER STATUTES

VACATE SENTENCE

28 USC 2255

LIABILITY
CIVIL RIGHTS

[ ] 440 OTHER CIVIL RIGHTS


(Non-Prisoner)

LAND

CONDEMNATION

[ ] 441 VOTING
[ ] 442 EMPLOYMENT
[ ] 443 HOUSING/
ACCOMMODATIONS

FORECLOSURE

RENT LEASE &


EJECTMENT

[ ] 445 AMERICANS WITH


DISABILITIES EMPLOYMENT

TORTS TO LAND

TORT PRODUCT

[ ] 446

LIABILITY
ALL OTHER
REAL PROPERTY

[ ] 448 EDUCATION

ANTITRUST
BANKS & BANKING
COMMERCE
DEPORTATION
RACKETEER INFLU
ENCED & CORRUPT
ORGANIZATION ACT

(RICO)
[ ] 480 CONSUMER CREDIT
[ ] 490 CABLE/SATELLITE TV
[ ] 850 SECURITIES/
COMMODITIES/

[ ] 380 OTHER PERSONAL

PRISONER PETITIONS

[ ] 290

[ ] 820 COPYRIGHTS
[ ] 830 PATENT
fc] 840 TRADEMARK

[ ] 370 OTHER FRAUD


[ ] 371 TRUTH IN LENDING

OTHER

[ I 240
[ I 245

28 USC 157

PROPERTY RIGHTS

LIABILITY

[ 1190

[ ] 220
[ I 230

[ ] 423 WITHDRAWAL

[ ] 690 OTHER

PERSONAL PROPERTY

[1160

[J 210

21 USC 881

INJURY PRODUCT

BENEFITS
STOCKHOLDERS
SUITS

REAL PROPERTY

SEIZURE OF PROPERTY

PRODUCT LIABILITY

RECOVERY OF

[ ] 196 FRANCHISE

[ 1 375 FALSE CLAIMS

28 USC 158

LIABILITY

[ ] 340 MARINE
[ ] 345 MARINE PRODUCT

RECOVERY OF
DEFAULTED

PHARMACEUTICAL PERSONAL
INJURY/PRODUCT LIABILITY

[ ] 530 HABEAS CORPUS


[ ] 535 DEATH PENALTY
[ ] 540 MANDAMUS & OTHER

] 861
] 862
] 863
] 864
] 865

HIA (1395ff)
BLACK LUNG (923)
DIWC/DIWW (405(g))
SSID TITLE XVI
RSI (405(g))

EXCHANGE

[ ] 890 OTHER STATUTORY


ACTIONS

RELATIONS

[ ]891 AGRICULTURAL ACTS

[ ] 740 RAILWAY LABOR ACT


[ ] 751 FAMILYMEDICAL
LEAVE ACT (FMLA)
[ ] 790 OTHER LABOR
LITIGATION

[ ] 791 EMPL RET INC


SECURITY ACT
IMMIGRATION

PRISONER CIVIL RIGHTS

[ ] 462 NATURALIZATION
[ ] 550 CIVIL RIGHTS
[ ] 555 PRISON CONDITION
[ ] 560 CIVIL DETAINEE

[
[
[
[
[

APPLICATION

[ ] 465 OTHER IMMIGRATION

FEDERAL TAX SUITS

[ ] 870 TAXES (U.S. Plaintiff or


Defendant)
[ ]871 IRS-THIRD PARTY

[ ] 893 ENVIRONMENTAL
MATTERS

[ ] 895 FREEDOM OF
INFORMATION ACT

26 USC 7609

[ ] 896 ARBITRATION
[ ] 899 ADMINISTRATIVE
PROCEDURE ACT/REVIEW OR
APPEAL OF AGENCY DECISION

[ ] 950 CONSTITUTIONALITY OF
STATE STATUTES

ACTIONS

CONDITIONS OF CONFINEMENT

AMERICANS WITH
DISABILITIES -OTHER

Checkifdemanded in complaint:

CHECK IF THIS IS ACLASS ACTION

DO YOU CLAJM THIS CASE IS RELATED TO A CIVIL CASE NOW PENDING IN S.D.N.Y.?

UNDER F.R.C.P. 23

DEMAND $_

OTHER

JUDGE

DOCKET NUMBER

Check YES onlyifdemandedin complaint

JURY DEMAND: M YES LhlO

NOTE: You must also submit at the time of filing the Statement of Relatedness form (Form IH-32).

(PLACEANxINONEBOXONLY)

E 1 Original

Proceeding

ORIGIN

L"] 2 Removed from

II 3 Remanded d 4 Reinstated or

state Court

from
ADDellate

II ~
LJ
a. all parties represented

Q 5 Transferred from 6 Multidistrict

Reopened

(Specify District)

Litigation

7 Appeal to District

Judgefrom
Magistrate Judge

Court

Judgment

| | b. At least one
party is pro se.

(PLACEANxINONEBOXONLY)

1 U.S. PLAINTIFF

BASIS OF JURISDICTION

2 U.S. DEFENDANT [x] 3 FEDERAL QUESTION

IFDIVERSITY, INDICATE

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)
CITIZEN OF THIS STATE

PTF

DEF

[]1

[]1

PTFDEF

CITIZEN OR SUBJECT OF A

[ ]3 [ ]3

FOREIGN COUNTRY

CITIZEN OF ANOTHER STATE

[]2

[]2

INCORPORATED and PRINCIPAL PLACE

PTF

DEF

[]5

[]5

[]6

[]6

OF BUSINESS IN ANOTHER STATE

INCORPORATED or PRINCIPAL PLACE

[]4[]4

FOREIGN NATION

OF 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, UK
Kingsley Ventures Corp., 309 N Huber Drive, Casper WY 82609

DEFENDANT(S) ADDRESS UNKNOWN


REPRESENTATION 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 RIGHTS
COMPLAINT.)

DATE 4/7/2015
RECEIPT #

SIGNATjfoE OF ATTORNEY OF RECORD

M l/j

1/1/

'

<-^~-

ADMITTED TO PRACTICE IN THIS DISTRICT

l^""^

Hi YES (DATE ADMITTED Mo.5

Attorney Bar Code #JS1243

Magistrate Judge is to be designated by the Clerk of the Court.


Magistrate Judge

Ruby J. Krajick, Clerk of Court by

'"^"^

Deputy Clerk, DATED

UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)

is so Designated.

Yr. 1997 )

JUDGE COTE
UNITED STATES DISTRICT COURT

fh

15

SOUTHERN DISTRICT OF NEW YORK

9 fx-ajf

GREGORY A. LEWIS AND BRITANNICA

CAPITAL PARTNERS, LLC,

-cv-

Plaintiffs,
COMPLAINT

en

v.

Jury Trial Demanded


MALGORZATA MADEJ, KINGSLEY
VENTURES CORP. AND SANJAY GUPTA,
Defendants.

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.

" -\.

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, operated
via its principal, Plaintiff Gregory A. Lewis. Thus, Mr. Lewis has been included as coplaintiff here. All references to "Plaintiffs" contemplates the actions of Mr. Lewis prior to the
LLC formation and the LLC thereafter, unless expressly stated to the contrary.

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

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.

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

<britannicacapital.com> on February 24, 2012, twelve days after its stated date of first use. At
some time thereafter, Defendants began operating a website at <britannicacapital.com>

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 <britannicacapital.com>; (c) explanation for the discrepancy between

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.

40.

In connection with the trademark application, Defendants made the following

declaration:

The undersigned, being hereby warned that willful false statements


and the like so made are punishable by fine or imprisonment, or
both, under 18 U.S.C. Section 1001, and that such willful false

statements, and the like, may jeopardize the validity of the


application or any resulting registration, declares that he/she is
properly authorized to execute this application on behalf of the
Defendants; he/she believes the Defendants to be the owner of the

trademark/service mark sought to be registered, or, if the


application is being filed under 15 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 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; and that all statements made of

his/her own knowledge are true; and that all statements made on
information 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.

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.

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.

60.

According to whois records, Defendants obtained the domain

<britannicacapital.com> on February 24, 2012. At some time thereafter, Defendants began


operating a website at <britannicacapital.com> 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 <britannicacapital.com>; (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.

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 so
made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that
such willful false statements, and the like, may jeopardize the validity of the application or any
resulting registration, declares that he/she is properly authorized to execute this application on
behalf of the Defendants; he/she believes the Defendants to be the owner of the

trademark/service mark sought to be registered, or, if the application is being filed under 15

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 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; and that all statements
made of his/her own knowledge are true; and that all statements made on information and belief
are 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."

12

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.

13

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 wording
is the design of a lion-like animal with a spear-shaped tail with a flame coming from its mouth.

14

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

<britannicacapital.com> on February 24, 2012, twelve days after its stated date of first use. At

15

some time thereafter, Defendants began operating a website at <britannicacapital.com>


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 <britannicacapital.com>; (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.

16

104.

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.

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 so
made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that
such willful false statements, and the like, may jeopardize the validity of the application or any
resulting registration, declares that he/she is properly authorized to execute this application on
behalf of the Defendants; he/she believes the Defendants to be the owner of the

trademark/service mark sought to be registered, or, if the application is being filed under 15
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 has

17

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; and that all statements
made of his/her own knowledge are true; and that all statements made on information and belief
are 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.

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.

19

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

<britannicacapital.com> on February 24, 2012, twelve days after its stated date of first use. At
some time thereafter, Defendants began operating a website at <britannicacapital.com>
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.

20

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 <britannicacapital.com>; (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.

21

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 so
made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that
such willful false statements, and the like, may jeopardize the validity of the application or any
resulting registration, declares that he/she is properly authorized to execute this application on
behalf of the Defendants; he/she believes the Defendants to be the owner of the

trademark/service mark sought to be registered, or, if the application is being filed under 15
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 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; and that all statements
made of his/her own knowledge are true; and that all statements made on information and belief
are 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.

22

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

23

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

specimen to 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.

24

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

<britannicacapital.com> on February 24, 2012, twelve days after its stated date of first use. At
some time thereafter, Defendants began operating a website at <britannicacapital.com>
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."

25

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 <britannicacapital.com>; (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

26

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 so
made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that
such willful false statements, and the like, may jeopardize the validity of the application or any
resulting registration, declares that he/she is properly authorized to execute this application on
behalf of the Defendants; he/she believes the Defendants to be the owner of the

trademark/service mark sought to be registered, or, if the application is being filed under 15
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 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; and that all statements
made of his/her own knowledge are true; and that all statements made on information and belief
are 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

27

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.

28

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.

29

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 Action

Declaratory 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.

30

197.

Plaintiffs have been and continue to be damaged by Defendants' assertion of the

aforementioned trademark rights.


198.

Second Cause Of Action

Trademark 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 Action

Prima-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 purpose of interfering with
Plaintiffs' business, further with the specific intention to harm Plaintiffs.

31

206.

Defendants, jointlyand severally, conspired and agreed to undertake the

aforementioned 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 favor
Plaintiffs:

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 an
amount 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);

32

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 of


the 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 from
further 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 Sonnaoend
JonnabendLaw

600 Prospect Avenue


Brooklyn, NY 11215
Attorney for Plaintiffs

Gregory A. Lewis and Britannica Capital


Partners, LLC

33

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