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Paul W. Garrity
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
30 Rockefeller Plaza
New York, NY 10112-0015
Telephone:
(212) 653-8700
Facsimile:
(212) 653-8701
pgarrity@sheppardmullin.com
Lisa M. Martens (pro hac vice to be filed)
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12275 El Camino Real, Suite 200
San Diego, CA 92130
Telephone:
(858) 720-8900
Facsimile:
(858) 509-3691
lmartens@sheppardmullin.com
Attorneys for Plaintiff Outthink, LLC
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
OUTTHINK, LLC,
Case No.:
Plaintiff,
COMPLAINT
v.
INTERNATIONAL BUSINESS
MACHINES CORPORATION,
Defendant.
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Plaintiff Outthink, LLC (Outthink) for its Complaint against defendant International
Business Machines Corporation (Defendant) respectfully alleges as follows:
NATURE OF ACTION
This action seeks remedy for federal trademark infringement, unfair competition, and
false designation of origin in violation of the Lanham Act, 15 U.S.C. 1114 and 1125(a), and
Section 349 of the New York General Business Law and New York State common law for
trademark infringement, unfair competition, and deceptive trade practices. Defendants
unauthorized use and exploitation of the OUTTHINK trademark is likely to cause confusion as
to the affiliation, connection, association, origin, sponsorship, or approval of its services with
those of Outthink. Outthink seeks, without limitation, actual damages, profits, attorneys fees,
costs, punitive and exemplary damages, and injunctive relief.
THE PARTIES
1.
Corporation is a New York corporation and has its principal place of business in New York.
JURISDICTION AND VENUE
3.
This action arises under the trademark infringement, unfair competition, and false
designation of origin laws of the United States, 15 U.S.C. 1114 and 1125(a), and the trademark
infringement, unfair competition, and deceptive trade practices laws under Section 349 of the
New York General Business Law and New York State common law.
4.
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5.
This Court has personal jurisdiction over Defendant because, on information and
belief: (a) Defendant transacts and solicits business within this judicial district; (b) Defendant has
continuous and ongoing business contacts with residents within this judicial district; (c)
Defendant has committed tortious acts within this judicial district which it knew or should have
known would cause injury to Outthink within this judicial district; and/or (d) Defendant has
purposefully availed itself of the privilege of conducting business within this judicial district.
6.
and belief, Defendant resides in and conducts business in New York County, and a substantial
part of the acts or omissions giving rise to the claims asserted herein occurred and/or had effects
in this district.
FACTUAL BACKGROUND
A.
digital marketing campaigns, developing marketing and advertising strategies, creating brand
identities, and offering public relations services under its OUTTHINK trade name and
trademark.
8.
Outthink has offered and provided these creative marketing services for the past
Outthink was created by John Visgilio and Ralph Guardiano who shared a single
vision to create a marketing firm to provide its clients with strategies to surpass its competitors
while promoting their brand.
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10.
and data relevant to its customers and their fields of business to effectively reach its customers
target audience.
11.
services to clients across a broad range of industries such as banking, insurance, healthcare,
retail, travel and leisure, business-to-business, and education.
12.
The OUTTHINK mark is strong and distinctive when used in connection with
Outthink has used the distinctive OUTTHINK mark in connection with its
consulting services since at least as early as June 1, 2002 and in commerce since at least as early
as July 1, 2002 and, as a result, has developed longstanding common law trademark rights in the
OUTTHINK mark.
14.
As a company that depends upon both the quality of its services and the reputation
of its brand, Outthink has devoted substantial amounts of time and resources to protect its
intellectual property interests in and to the OUTTHINK mark.
15.
Outthink has obtained two federal trademark registrations to protect the value of
its OUTTHINK mark in connection with providing strategic marketing services; public
relations; developing advertising and marketing strategies for others, creating brand identity for
others and television production (collectively referred to herein as the OUTTHINK
Services).
16.
The OUTTHINK word mark enjoys registration on the Principal Register of the
United States Patent and Trademark Office (U.S.P.T.O.) at Registration No. 3,646,391 for the
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Outthink also owns a federal trademark registration for its OUTTHINK logo, as
shown below, on the Principal Register of the U.S.P.T.O. at Registration No. 3,084,613 for the
OUTTHINK Services.
A copy of the certificate of registration and a trademark assignment cover sheet are attached
hereto as Exhibit B. Collectively, Outthinks federal trademark registrations for the
OUTTHINK word mark and logo shall be referred to as OUTTHINK Registrations.
Hereinafter, Outthinks common law trademark rights and OUTTHINK Registrations shall be
referred to as the OUTTHINK Marks.
18.
The OUTTHINK Registrations are valid, subsisting, and in full force and effect.
19.
presumption that the OUTTHINK Registrations are valid and that Outthink has the exclusive
right to use the registered marks in commerce. The OUTTHINK Registrations also provide
constructive notice of Outthinks claim of ownership of the marks.
20.
Since its first use of the OUTTHINK Marks 14 years ago, Outthink has invested
substantial resources to advertise and promote the OUTTHINK Marks. For example, Outthink
prominently displays the OUTTHINK Marks and provides information about its services on
various online platforms, including, but not limited to, its web site at http://outthink.com/,
Instagram, Facebook, and LinkedIn.
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21.
Outthink has expended substantial amounts of time, effort, and money to ensure
that the relevant public associates the OUTTHINK Marks with the OUTTHINK Services. As a
result, Outthink and the OUTTHINK Marks have achieved a reputation for excellence.
22.
The OUTTHINK Marks have come to symbolize extraordinary good will and are
advertising campaign prominently using the name and mark OUTTHINK (the Defendants
Mark) to promote its consulting services to develop marketing and advertising campaigns and
strategies to help businesses gain a competitive advantage in the market (Defendants
Services).
25.
On information and belief, on or about January 28, 2016, Defendant issued a news
release announcing its intent to acquire a leading, United States-based digital marketing and
creative agency, Resource/Ammirati. Defendants January 28, 2016 news release can be found
on Defendants web site at https://www-03.ibm.com/press/us/en/pressrelease/48893.wss.
27.
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28.
On information and belief, Outthink and Defendant both offer consulting services
relating to marketing and creative to help their customers gain a competitive advantage in
business.
29.
Defendants Vice President of Branded Content and Global Creative, Ms. Ann
Rubin, stated in an AdWeek article that with Defendants Services, one can outthink risk,
outthink doubt, outthink competitors . . . . The AdWeek article was posted on the AdWeek
website on October 7, 2015 and can be found at http://www.adweek.com/news/advertisingbranding/ad-day-ibms-watson-talks-love-and-loss-bob-dylan-advertisings-oddest-pairing167420.
30.
The article also noted that Defendant states that industries such as banking,
insurance, healthcare, and retail can all benefit from Defendants Services.
31.
Defendants Mark to the same customers and industries to which Outthink offers the
OUTTHINK Services under the OUTTHINK Marks.
32.
October 2015 is well after Outthinks first use in commerce of its OUTTHINK Marks for the
OUTTHINK Services on July 1, 2002.
33.
On information and belief, since Defendant began its use of Defendants Mark in
or about October 2015 by taking out an eight-page ad in the Wall Street Journal, Defendants use
of Defendants Mark has exponentially increased.
34.
On information and belief, Defendant has flooded the marketplace with its
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35.
36.
On information and belief, the last frame of Defendants promotional videos and
television broadcast commercials prominently display Defendants Mark alone, as shown below.
A representative sampling of Defendants promotional videos and television broadcast
commercials can be found on Defendants website as well as Defendants YouTube page at
https://www.youtube.com/watch?v=6SNs9kvRWSA;
https://www.youtube.com/watch?v=sR7kyIxQ000;
https://www.youtube.com/watch?v=iRlpj5qNVGI; https://www.youtube.com/watch?v=dumbokNLGQ; https://www.youtube.com/watch?v=TMuCVz0EMPs;
https://www.youtube.com/watch?v=pwh1INne97Q;
https://www.youtube.com/watch?v=vqjndtS8jQU; and
https://www.youtube.com/watch?v=lszB8muRqQA.
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37.
Upon information and belief, on or about January 24, 2016, during the AFC
Championship game between the New England Patriots and the Denver Broncos, Defendant
promoted its broadcast commercial three different times.
38.
Upon information and belief, each time the broadcast commercial was shown, the
Officer, Ginni Rometty, delivered a keynote address at the Consumer Technology Associations
CES trade show in Las Vegas, Nevada.
40.
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41.
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42.
with the Google, Yahoo, and Bing search engines. The screen captures shown below are the
results for the search term OUTTHINK in the Google, Yahoo, and Bing search engines as
searched on January 31, 2016.
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43.
Mark as a search term with the Google, Yahoo, and Bing search engines, Defendants ad will
appear above or next to the search results, as illustrated below.
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44.
Defendants Mark is intended to cause, and in fact has caused, consumers to associate
Defendants Mark with Defendant.
45.
it is likely that consumers will be confused and deceived as to the source, affiliation, or
sponsorship of Defendants Mark and are likely to believe that Defendant is actually the senior
user and owner of Defendants Mark, when, in fact, it is Outthink.
46.
Services through a variety of marketing channels that overlap with Outthinks marketing
channels, including without limitation on the Internet, social media platforms like LinkedIn and
Instagram, and the CES trade show.
47.
advertising and promoting Defendants Services under Defendants Mark, including using
celebrity endorsements from singer-songwriter Bob Dylan and tennis extraordinaire Serena
Williams.
48.
Defendants Services, consumers who encounter Defendants use of Defendants Mark have
been and are likely to continue to be confused as to the source of Defendants Services, or as to
their connection to or affiliation with Outthink and the OUTTHINK Services.
50.
Mark, numerous third parties, including Outthinks customers, potential customers, members of
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the general public, and the press, contacted Outthink mistakenly believing that the advertisement
was for Outthink, that Outthink had created the advertising campaign for Defendant, that
Defendant had acquired Outthink, or that there was some other relationship, source, sponsorship
or affiliation between Defendant and Outthink because the marks and the manner in which the
marks are shown are so similar.
51.
On October 14, 2015, Outthink provided actual notice to Defendant of its rights in
the OUTTHINK Marks when it sent a letter to Defendant alerting Defendant to Outthinks
trademark rights and demanding that Defendant cease all use of Defendants Mark.
53.
As of the filing of this Complaint, Defendant has not ceased use of Defendants
Mark. Defendants proliferation of its use of Defendants Mark, even after being put on notice
of Outthinks rights, is knowing, intentional and willful.
FIRST CLAIM FOR RELIEF
Trademark Infringement
[Section 32(1) of the Lanham Act, 15 U.S.C. 1114(1)]
54.
55.
Marks are strong and distinctive and designate Outthink as the source of all services advertised,
marketed, sold or used in connection with the marks.
56.
Outthink is the senior user of the OUTTHINK Marks, as it began using the marks
in interstate commerce long before Defendant commenced use of its confusingly similar mark.
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57.
before adopting and using Defendants Mark for Defendants Services. Thus, Defendants
unauthorized use of Defendants Mark was and is knowing, intentional and willful.
58.
to, and did in fact, confuse and mislead consumers into believing that Outthink somehow
authorized, sponsored, approved, licensed or participated in Defendants use of Defendants
Mark.
59.
advertise, market or sell its services under Defendants Mark, which is used in connection with
services that are identical and/or substantially similar to the OUTTHINK Services.
60.
caused and will continue to cause confusion as to the origin of Defendants Services, whether
there is a relationship between Outthink and Defendant, or whether Defendants Services have
been sponsored, approved, licensed by or associated with Outthink, or are in some way
connected to or affiliated with Outthink.
61.
On information and belief, Defendants use of Defendants Mark will likely cause
U.S.C. 1114(1).
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64.
committing the unlawful acts alleged herein, including the unauthorized use in commerce of
Defendants Mark, Outthink will continue to suffer irreparable harm. Accordingly, Outthink is
entitled to injunctive relief pursuant to 15 U.S.C. 1116 restraining Defendant, its officers,
agents and employees, and all persons acting in concert with them, from engaging in any further
such acts of trademark infringement in violation of the Lanham Act.
65.
has sustained and will sustain as a result of Defendants wrongful conduct, and the gains, profits
and advantages that Defendant has obtained as a result of its wrongful conduct. At present,
Outthink is unable to ascertain the full extent of its damages, or the gains, profits and advantages
that Defendant has obtained by reason of its wrongful conduct described herein.
66.
Defendants willful acts make this an exceptional case under 15 U.S.C. 1117(a),
69.
Marks are incontestable and designates Outthink as the source of all services advertised,
marketed, sold or used in connection with the OUTTHINK Marks.
70.
Outthink is the senior user of the OUTTHINK Marks as it began using the marks
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71.
On information and belief, Defendant was aware of Outthink and the OUTTHINK
Marks prior to adopting and/or using Defendants Mark for Defendants Services. Thus,
Defendants unauthorized use of Defendants Mark was and is knowing, intentional and willful.
72.
On information and belief, through its use of the identical OUTTHINK mark,
Defendant intended to, and did in fact, confuse and mislead consumers into believing that
Outthink somehow authorized, sponsored, approved, licensed or participated in Defendants use
of the confusingly similar mark or was related to or affiliated with Defendant.
73.
Defendant, nor has Outthink authorized, licensed or given permission to Defendant to use
Defendants Mark in any manner.
74.
On information and belief, Defendants use of Defendants Mark has caused and
will likely continue to cause confusion as to the origin of Defendants Services, as well as
whether there is a relationship between Outthink and Defendant.
75.
enjoined from committing the unlawful acts alleged herein, including the unauthorized use in
commerce of Defendants Mark, Outthink will continue to suffer irreparable harm. Accordingly,
Outthink is entitled to injunctive relief pursuant to 15 U.S.C. 1116 restraining Defendant, its
officers, agents and employees, and all persons acting in concert with them, from engaging in
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any further such acts of unfair competition and false designation of origin in violation of the
Lanham Act.
78.
has sustained and will sustain as a result of Defendants wrongful conduct, and the gains, profits
and advantages that Defendant has obtained as a result of Defendants wrongful conduct. At
present, Outthink is unable to ascertain the full extent of its damages, or the gains, profits and
advantages that Defendant has obtained by reason of Defendants wrongful conduct described
herein.
79.
Defendants willful acts make this an exceptional case under 15 U.S.C. 1117(a),
82.
Outthink has valid and protectable common law rights in the OUTTHINK Marks.
83.
84.
similar services is likely to cause confusion as to the origin of Defendants Services, and/or as to
Outthinks association with them.
85.
OUTTHINK Marks.
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86.
87.
Defendants wrongful acts have permitted and will continue to permit Defendant
willful.
to receive substantial profits based upon the strength of Outthinks reputation and the substantial
goodwill built up in the OUTTHINK Marks.
88.
As a result of Defendants infringing actions, Outthink has been and will continue
to be irreparably harmed.
89.
committing the unlawful acts described herein, including without limitation, use of Defendants
Mark, Outthink will continue to suffer irreparable harm. Thus, Outthink is entitled to an
injunction restraining Defendant, its officers, agents and employees, and all persons acting in
concert with them, from engaging in any further such acts of trademark infringement in violation
of New York common law.
FOURTH CLAIM FOR RELIEF
Unfair Competition
[New York Common Law]
90.
91.
intended to trade on the strength and reputation of Outthink and/or the OUTTHINK Marks that
caused injury to Outthink.
92.
Services has caused and is likely to cause confusion, mistake and deception as to the affiliation,
connection and association of Defendant with Outthink and/or as to the origin, sponsorship and
approval of Defendants Services offered under Defendants Mark.
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93.
committing the unlawful acts described herein, Outthink will continue to suffer irreparable harm.
Thus, Outthink is entitled to an injunction restraining Defendant, its officers, agents and
employees, and all persons acting in concert with them, from engaging in any further such acts of
unfair competition in violation of New York common law.
95.
enriched at Outthinks expense and Outthink has suffered a competitive injury and damages in an
amount to be proven at trial.
96.
On information and belief, Defendant acted with oppression, fraud, malice and
willfully intended to trade on the strength, reputation and goodwill association with Defendants
Mark, to mislead the purchasing public, and to cause injury to Outthink. Thus, Outthink is
entitled to punitive damages.
FIFTH CLAIM FOR RELIEF
Deceptive Acts and Practices Unlawful
[New York General Business Law 349]
97.
98.
New York General Business Law, Section 349 states in relevant part that:
Deceptive acts or practices in the conduct of any business, trade or commerce or in the
furnishing of any service in this state are hereby declared unlawful.
99.
Defendants Mark, Defendant has engaged in consumer-oriented conduct that has affected the
public interest of New York and has resulted in injury to consumers in New York.
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100.
misleading. Such acts or practices have deceived or have a tendency to deceive a material
segment of the public to whom Defendant has directed its marketing activities, and Outthink has
been injured thereby.
101.
By the acts described above, Defendant has willfully engaged in deceptive acts or
practices in the conduct of its business in the furnishing of its services in violation of Section 349
of the New York General Business Law.
102.
Defendant has caused, and will continue to cause, irreparable injury to Outthink.
Outthink has no adequate remedy at law and is thus damaged in an amount not yet determined.
PRAYER FOR RELIEF
WHEREFORE, Outthink prays for judgment against Defendant as follows:
1.
competition, and false designation of origin in violation of the Lanham Act, 15 U.S.C. 1114
and 1125(a); trademark infringement, unfair competition, and deceptive trade practices in
violation of Section 349 of the New York General Business Law and New York State common
law;
2.
joint ventures, and/or anyone acting on behalf of, or in concert with Defendant from:
A.
Defendants Mark, or any colorable imitation(s) of Defendants Mark, including any mark that
incorporates the term OUTTHINK, or any other phrase, term, or logo that is likely to cause
confusion with Outthink or its OUTTHINK Marks.
B.
Marks, or any other phrase, term, mark, trade name, logo or design that falsely represents, or is
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likely to confuse, mislead, or deceive consumers, or members of the public to believe that
services advertised, marketed, sold and/or offered for sale by Defendant originate from Outthink,
or that such services have been sponsored, approved, or licensed by or associated with Outthink,
or are in some way connected to or affiliated with Outthink;
C.
infringement, false designation of origin, or unfair competition that would damage or injure
Outthink; and
E.
3.
Court and to serve on Outthink within thirty (30) days after service of an injunction order as
requested herein, a report in writing under oath setting forth in detail the manner and form in
which Defendant has complied with the Courts order.
4.
others acting in concert or participation with Defendant, from Defendants unauthorized use and
infringement of the OUTTHINK Marks.
5.
That Defendant be required to account for and pay Outthink all gains, profits, and
advantages derived from its acts of infringement and other unlawful conduct, as alleged herein.
6.
That all gains, profits and advantages derived by Defendant from its acts of
infringement and other unlawful conduct alleged herein be deemed to be in constructive trust for
the benefit of Outthink.
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7.
result of Defendants acts of infringement and other unlawful conduct alleged herein, and for any
additional profits attributable to Defendants wrongful conduct, according to proof.
8.
10.
11.
1117(a).
12.
14.
That Outthink be granted such other and further relief as the Court deems just and
proper.
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Respectfully submitted,
Dated: February 3, 2016
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JURY DEMAND
Plaintiff Outthink, LLC demands a trial by jury of all issues triable by jury.
Respectfully submitted,
Dated: February 3, 2016
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