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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
PLAINTIFFS
Malgazorta Madej, Suite 94, 22 Notting Hill Gate, London, W11 3JE, UK
Kingsley Ventures Corp., 309 N Huber Drive, Casper WY 82609
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(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)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
Yes
NATURE OF SUIT
TORTS
PERSONAL INJURY
CONTRACT
&Case No.
PERSONAL INJURY
FORFEITURE/PENALTY
BANKRUPTCY
OTHER STATUTES
[ ] 422 APPEAL
[ ] 400 STATE
[ ] 367 HEALTHCARE/
11110
[]120
[]130
[ 1140
[ ]150
INSURANCE
MARINE
MILLER ACT
[ J 310 AIRPLANE
[ ] 315 AIRPLANE PRODUCT
LIABILITY
NEGOTIABLE
INSTRUMENT
RECOVERY OF
[ ] 330 FEDERAL
SLANDER
OVERPAYMENT &
ENFORCEMENT
OF JUDGMENT
[ ] 151
[ ] 152
MEDICARE ACT
EMPLOYERS'
STUDENT LOANS
LIABILITY
(EXCL VETERANS)
[ 1153
OVERPAYMENT
OF VETERAN'S
SOCIAL SECURITY
INJURY
REAPPORTIONMENT
[
[
[
[
[
] 410
] 430
] 450
] 460
] 470
MED MALPRACTICE
LABOR
PROPERTY DAMAGE
[1195
CONTRACT
CONTRACT
PRODUCT
PRODUCT LIABILITY
STANDARDS ACT
[ ] 720 LABOR/MGMT
VACATE SENTENCE
28 USC 2255
LIABILITY
CIVIL RIGHTS
LAND
CONDEMNATION
[ ] 441 VOTING
[ ] 442 EMPLOYMENT
[ ] 443 HOUSING/
ACCOMMODATIONS
FORECLOSURE
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/
PRISONER PETITIONS
[ ] 290
[ ] 820 COPYRIGHTS
[ ] 830 PATENT
fc] 840 TRADEMARK
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
28 USC 158
LIABILITY
[ ] 340 MARINE
[ ] 345 MARINE PRODUCT
RECOVERY OF
DEFAULTED
PHARMACEUTICAL PERSONAL
INJURY/PRODUCT LIABILITY
] 861
] 862
] 863
] 864
] 865
HIA (1395ff)
BLACK LUNG (923)
DIWC/DIWW (405(g))
SSID TITLE XVI
RSI (405(g))
EXCHANGE
RELATIONS
[ ] 462 NATURALIZATION
[ ] 550 CIVIL RIGHTS
[ ] 555 PRISON CONDITION
[ ] 560 CIVIL DETAINEE
[
[
[
[
[
APPLICATION
[ ] 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:
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
NOTE: You must also submit at the time of filing the Statement of Relatedness form (Form IH-32).
(PLACEANxINONEBOXONLY)
E 1 Original
Proceeding
ORIGIN
II 3 Remanded d 4 Reinstated or
state Court
from
ADDellate
II ~
LJ
a. all parties represented
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
IFDIVERSITY, INDICATE
4 DIVERSITY
CITIZENSHIP BELOW.
PTF
DEF
[]1
[]1
PTFDEF
CITIZEN OR SUBJECT OF A
[ ]3 [ ]3
FOREIGN COUNTRY
[]2
[]2
PTF
DEF
[]5
[]5
[]6
[]6
[]4[]4
FOREIGN NATION
Gregory A. Lewis and Britannica Capital Partners, LLC, 6 Broadway, Suite 934, New York, NY 10004
(New York County)
Malgazorta Madej, Suite 94, 22 Notting Hill Gate, London, W11 3JE, UK
Kingsley Ventures Corp., 309 N Huber Drive, Casper WY 82609
Sanjay Gupta
Check one:
WHITE PLAINS
\x\ MANHATTAN
(DO NOT check either box if this a PRISONER PETITION/PRISONER CIVIL RIGHTS
COMPLAINT.)
DATE 4/7/2015
RECEIPT #
M l/j
1/1/
'
<-^~-
l^""^
'"^"^
is so Designated.
Yr. 1997 )
JUDGE COTE
UNITED STATES DISTRICT COURT
fh
15
9 fx-ajf
-cv-
Plaintiffs,
COMPLAINT
en
v.
The Parties
1.
Plaintiff Britannica Capital Partners, LLC is a New York State LLC with an
Kingdon with an address of Suite 94, 22 Notting Hill Gate, London, Wl 1 3JE, UK.
4.
6.
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
This is further and/or in the alternative an action for Prima Facie Tort under New
9.
This is further and/or in the alternative an action for civil conspiracy under New
10.
11.
12.
Personal jurisdiction is proper under CPLR 301 and 302(a)(i) and (ii).
13.
1391(c)(3).
Facts
14.
15.
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.
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.
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
22.
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.
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
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.
28.
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.
30.
<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>
advisory firm founded in 2012." Defendants' website bears and/or bore a copyright notice of
2012.
32.
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.
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
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.
the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL at all
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.
by Plaintiffs. As a result of the analogous use, Plaintiffs has priority to the applied-for mark over
Defendants.
39.
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.
declaration:
his/her own knowledge are true; and that all statements made on
information and belief are believed to be true.
41.
that, at the time of filing, Defendants were not the owner of the trademark/service mark sought to
be registered.
42.
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.
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.
the aforementioned statement with the intent to deceive the Trademark Office and procure
47.
48.
specimen to the Trademark Office was material because the application would not be allowed
without such submission.
49.
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.
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.
56.
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.
first use of February 12, 2012, the same day as that application's filing.
59.
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.
advisory firm founded in 2012." Defendants' website bears and/or bore a copyright notice of
2012.
62.
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.
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.
the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL at all
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.
by Plaintiffs. As a result of the analogous use, Plaintiffs has priority to the applied-for mark over
Defendants.
69.
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.
71.
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.
that, at the time of filing, Defendants were not the owner of the trademark/service mark sought to
be registered.
74.
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.
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.
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.
79.
80.
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.
specimen to the Trademark Office was material because the application would not be allowed
without such submission.
82.
portion of a brochure (or similar publication) knowing that no such brochure (or similar
publication) ever existed.
13
84.
submission to the Trademark Office with the specific intent to deceive the Trademark Office and
obtain registration of the applied-for mark.
85.
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.
BRITANNICA
90.
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.
BRITANNICA"
93.
The mark of the instant application as shown in the drawing and described in the
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.
96.
Defendants are not and have not actually used in commerce the applied-for mark
97.
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.
99.
<britannicacapital.com> on February 24, 2012, twelve days after its stated date of first use. At
15
advisory firm founded in 2012." Defendants' website bears and/or bore a copyright notice of
2012.
101.
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.
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;
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.
105.
the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL at all
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.
by Plaintiffs. As a result of the analogous use, Plaintiffs has priority to the applied-for mark over
Defendants.
108.
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.
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.
that, at the time of filing, Defendants were not the owner of the trademark/service mark sought to
be registered.
112.
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.
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.
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.
118.
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.
specimen to the Trademark Office was material because the application would not be allowed
without such submission.
120.
portion of a brochure (or similar publication) knowing that no such brochure (or similar
publication) ever existed.
122.
submission to the Trademark Office with the specific intent to deceive the Trademark Office and
obtain registration of the applied-for mark.
19
123.
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.
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.
129.
<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.
advisory firm founded in 2012." Defendants' website bears and/or bore a copyright notice of
2012.
20
131.
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.
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;
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.
the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL at all
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.
by Plaintiffs. As a result of the analogous use, Plaintiffs has priority to the applied-for mark over
Defendants.
138.
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.
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.
that, at the time of filing, Defendants were not the owner of the trademark/service mark sought to
be registered.
22
142.
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.
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.
the aforementioned statement with the intent to deceive the Trademark Office and procure
148.
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.
specimen to the Trademark Office was material because the application would not be allowed
without such submission.
150.
151.
portion of a brochure (or similar publication) knowing that no such brochure (or similar
publication) ever existed.
152.
submission to the Trademark Office with the specific intent to deceive the Trademark Office and
obtain registration of the applied-for mark.
153.
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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157.
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.
159.
<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.
advisory firm founded in 2012." Defendants' website bears and/or bore a copyright notice of
2012.
161.
mark BRITANNIA.
162.
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.
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.
the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL at all
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.
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by Plaintiffs. As a result of the analogous use, Plaintiffs has priority to the applied-for mark over
Defendants.
169.
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.
171.
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.
that, at the time of filing, Defendants were not the owner of the trademark/service mark sought to
be registered.
174.
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.
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.
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.
179.
180.
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.
specimen to the Trademark Office was material because the application would not be allowed
without such submission.
182.
183.
portion of a brochure (or similar publication) knowing that no such brochure (or similar
publication) ever existed.
184.
submission to the Trademark Office with the specific intent to deceive the Trademark Office and
obtain registration of the applied-for mark.
185.
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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189.
filed applications for registration of the mark BRITANNICA, serial nos. 85/820123, 85/816239,
abd 85/815398.
190.
191.
192.
193.
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.
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.
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197.
Trademark Infringement
199.
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.
202.
trademark infringement of Plaintiffs' marks in violation of section 43(a) of the Lanham Act, 15
U.S.C. 1125(a).
203.
204.
fully herein.
205.
intentionally and withoutjustification or right, for the malicious purpose of interfering with
Plaintiffs' business, further with the specific intention to harm Plaintiffs.
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206.
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
WHEREFORE, Plaintiffs respectfully request that the Court enter judgment in favor
Plaintiffs:
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;
d. awarding Plaintiffs their costs and attorney's fees pursuant to section 35 of the
Lanham Act 15 U.S.C. 1117(a);
32
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
33