Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA563779 Filing date: 10/08/2013 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92057318 Party Defendant Federated Retail Holdings, Inc. Correspondence ANTHONY F LO CICERO Address AMSTER ROTHSTEIN & EBENSTEIN LLP 90 PARK AVENUE NEW YORK, NY 10016 UNITED STATES Submission Motion to Suspend for Civil Action Filer's Name Anthony F. Lo Cicero Filer's e-mail [email protected] Signature /Anthony F. Lo Cicero/ Date 10/08/2013 Attachments Motion Kaufmann's.pdf(2678893 bytes ) In the Matter of: 33765/1212
Registration No.: 1,994,579 Registered: August 20, 1996 Service Mark: KAUFMANN'S International Class: 42
UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
------x Strategic Marks, LLC,
Petitioner, Cancellation No. 92057318
v. MOTION TO SUSPEND Macy's Retail Holdings, Inc.,
Registrant. ------x
Pursuant to 37 C.F.R. § 2.117(a) and T.B.M.P. § 510.02(a), registrant Macy's Retail
Holdings, Inc. ("Macy's") hereby moves to suspend Cancellation No. 92057318 until final resolution of a civil action currently pending in San Francisco in the U.S. District Court for the
Northern District of California among Petitioner, Macy's parent company Macy's, Inc., and
Macys.com, Inc. ("the Civil Action").! The Civil Action, entitled Macy 's, Inc. and Macys. com,
Inc. v. Strategic Marks, LLC, No. 11-6198 SC, is expected to have a bearing on this proceeding.
Background
This proceeding between Macy's and petitioner Strategic Marks, LLC ("Strategic
Marks") is one piece of a wide-ranging dispute contesting ownership and use of more than twenty (20) well-known department store marks that Macy's, its related companies, and its
1 The plaintiffs in the Civil Action, Macy's, Inc. and Macys.com, Inc., are related companies to registrant Macy's. Registrant Macy's and Macys.com, Inc. are both wholly-owned subsidiaries ofMacy's, Inc. under Sections 5 and 45 of the Trademark Act, 15 U.S.C. §§ 1055, 1127.
1 556765.1 predecessors-in-interest have used for decades, and indeed, many for well over a century. The dispute began when Strategic Marks filed eight federal trademark applications for certain department store brands, all of which are the subject of proceedings before this Board, and all of which are in suspension pending the outcome of the Civil Action. This proceeding relates to one of twelve (12) additional department store brands that Strategic Marks filed for after issue in the
Civil Action was joined, and so is not directly included in the Civil Action.
The Civil Action
The Civil Action involves eight of the disputed marks: ABRAHAM & STRAUS, A&S,
THE BROADWAY, JORDAN MARSH, BULLOCK'S, ROBINSONS-MA Y, FILENE'S, and
THE BON MARCHE,
Macy's brought the Civil Action against Strategic Marks in December 2011 as a result of
Strategic Marks' attempted misappropriation of those eight (8) well-known retail store marks, attempted misappropriation of the goodwill associated with those marks, and false advertising as to Strategic Marks' connection with those venerable stores. Activities complained of by Macy's include the wrongful filing of intent-to-use applications by Strategic Marks, filing of false statements of use, and creation of a website at www.retrodepartmentstores.com where Strategic
Marks misappropriates the names, logos and histories of the famous stores-even
misappropriating vintage television commercials and the fonts and logos the brands were known
for-all in violation of Macy' s rights.
Strategic Marks countered that Macy's had abandoned the marks, that Strategic Marks
now owns all of the marks by virtue of its applications, and that Macy's is infringing its rights in
those of the marks in which it has obtained registrations. Copies of Macy' s Complaint and
2 556765.1 Strategic Marks' First Amended Answer and Counterclaims are annexed hereto as Exhibits A and B respectively.
The Civil Action will resolve key issues of use and ownership of the marks, and those determinations will have a bearing on this proceeding. In particular, the Civil Action includes an assessment of the parties' respective uses of the marks and a determination of whether Macy's activities constitute abandonment of the marks. Although the KAUFMANN'S mark is not at issue in the Civil Action, the very same determinations of use and abandonment of the marks in the Civil Action will be directly relevant to whether Strategic Marks or Macy's has rights in and to the KAUFMANN'S mark at issue in this proceeding.
The Civil Action is currently in its final stages; discovery is complete, and trial is scheduled to begin on January 6,2014. A copy of the case docket is annexed hereto as Exhibit
C.
Additional Proceedings
Numerous Trademark Trial and Appeal Board proceedings relating to the marks at issue in the Civil Action already have been suspended. These proceedings include cancellation proceedings relating to existing registrations for FILENE'S (T.T.A.B. No. 92053634), THE
BROADWAY (T.T.A.B. No. 92055739), THE BON MARCHE (TT.A.B. No. 92055742), and
ROBINSON'S (T.T.A.B. No. 92056018), and opposition proceedings relating to pending applications for JORDAN MARSH (T.T.A.B. No. 91200637), MAY COMPANY eTTA.B. No.
91200638), and BULLOCK'S DEPARTMENT STORE eTTA.B. No. 91200640).
In mid-May 2013, after the Civil Action had been pending for approximately one-and one-half (1 Yz) years, Strategic Marks filed applications to register an additional twelve Macy's marks (among them KAUFMANN'S) despite knowledge ofMacy's pre-existing rights
3 556765.1 (including product sales and pending federal trademark applications). Shortly thereafter,
Strategic Marks filed numerous additional petitions to cancel Macy's registrations not directly at issue in the Civil Action.
In addition to filing this cancellation proceeding, Strategic Marks has filed petitions to cancel Macy's registrations for: HECHT'S (T.T.A.B. No. 92057277); BURDINE'S (T.T.A.B.
No. 92057283); MARSHALL FIELD'S (T.T.A.B. Nos. 92057315 and 92057773); MEIER &
FRANK (T.T.A.B. No. 92057278); 1. MAGNIN (T.T.A.B. No. 92057364); GOLDSMITH'S
(T.T.A.B. No. 92057473); and FOLEY'S (T.T.A.B. No. 92057474). Issues of ownership, use and abandonment of the marks are common to each of these cases, and simultaneously with this motion, Macy's is filing similar motions to suspend each of these proceedings pending final disposition of the Civil Action.
Legal Argument
Pursuant to the rules governing practice in trademark cases before the T.T.A.B., the
Board has authority to suspend this proceeding in view of the pending Civil Action. Rule
2.117(a) provides:
Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a civil action or another Board proceeding which may have a bearing on the case, proceedings before the Board may be suspended until termination of the civil action or the other Board proceeding.
37 C.F.R. § 2.117(a) (emphasis added); see also T.B.M.P. § 510.02(a); 6 McCarthy on
Trademarks and Unfair Competition § 32:47 (4th ed. updated June 2011) ("It is standard procedure for the Trademark Board to stay administrative proceedings pending the outcome of court litigation between the same parties involving related issues."); New Orleans Louisiana
Saints LLC v. Who Dat?, Inc., 2011 TTAB LEXIS 208, at *6-8 (T.T.A.B. July 22, 2011) ("[T]he
4 556765.1 civil action does not have to be dispositive of the Board proceeding to warrant suspension, it need only have a bearing on the issues before the Board.").
In this instance, key issues in the Civil Action will likely have a bearing on this cancellation proceeding. The determination of which party owns the marks and associated goodwill, and whether Macy's abandoned the marks, will all be relevant to ownership of the
KAUFMANN'S mark as many of the operative facts are similar or the same, including the facts surrounding Macy's development of its Macy's "Heritage Shops" on the macys.com website (at which Macy's sells t-shirts and tote bags bearing all of the marks, including KAUFMANN'S), and Strategic Marks' creation of its www.retrodepartmentstores.com website. During the initial conference regarding discovery issues in this cancellation proceeding, the parties reached a tentative agreement regarding use of discovery from the Civil Action because much of it is expected to be duplicative.
Finally, suspension of this cancellation proceeding would not be prejudicial since it is now in a very preliminary stage. The discovery period has recently opened, but no discovery has been served or noticed by either party. The Civil Action, on the other hand, is nearing conclusion, with trial scheduled to begin on January 6, 2014. Thus, suspension pending disposition of the Civil Action will not cause undue delay or prejudice.
During the Rule 26(f) conference in this proceeding, counsel for Macy's sought agreement to suspend this proceeding. Counsel for Strategic Marks refused.
/
/
/
/
5 556765.1 Conclusion
For the foregoing reasons, it is respectfully requested that this motion be granted and that this cancellation proceeding be suspended pending final disposition of the Civil Action.
Respectfully submitted,
AMSTER, ROTHSTEIN & EBENSTEIN LLP Attorneys for Macy's Retail Holdings, Inc. 90 Park A venue New York, New York 10016 (212) 336-8000
Dated: New York, New York By: ...... """--h~-'--______October 8, 2013 Chester Rothstein David P. Goldberg
6 556765.1 CERTIFICATE OF SERVICE
The undersigned hereby certifies that he is one of the attorneys for Registrant Macy's
Retail Holdings, Inc. in the above-captioned Cancellation proceeding and that, on the date which appears below, he caused a copy of the foregoing MOTION TO SUSPEND to be served on the attorneys for Petitioner Strategic Marks, LLC bye-mail, by having a scanned copy sent to [email protected], and by courier, by causing a copy thereof to be placed in the care and custody of Federal Express, postage prepaid, in a wrapper addressed as follows:
Benjamin Ashurov, Esq. KB-Ash Law Group 7011 Koll Center Parkway, Suite 160 Pleasanton, CA 94566.
Dated: New York, New York October 8, 2013
556765.1 Exhibit A Case3:11-cv-06198-JSC Document1-2 Filed 12/09/11 Page1 of 44 t. , .. -:-~~~.JI' #">-r'.. ,./., -.. ~" f r , .. ". ~ --1 1-<~~( <~:~, ('~:'~)., , .... ~ ' ' .. /, . ~ - I ~-:( ~.'; (,.. ~ ... ,J '9 -7 1 AMSTER, ROTHSTEIN & EBENSTEIN llP '. "'(',) .e:.- ANTHONY F. lO CICERO, NY SBN1084698 .'/ . ' ~ [email protected] ' .r~' "", \-=! (!) 2 CHESTER ROTHSTEIN, NY SBN2382984 <" ," " ..' .f' , 3 [email protected] :;- " /.' - ' ,~ 0::: HOllY PEKOWSKY, NY SBN2776532 ," ~ 0 4 [email protected] JESSICA CAPASSO, NY SBN 4766283 5 [email protected] ~ 90 Park Avenue 6 New York, NY 10016 Telephone: (212) 336-8000 7 Facsimile: (212) 336-800 1 (Pro Hac Vice Applications Forthcoming) \ 8 \ HANSON BRIDGETT llP 9 GARNER K. WENG, SBN191462 gweng~hansOnbridgett.com 10 CHRIS OPHER S. WALTERS, SBN267262 [email protected] 11 425 Market Street, 26th Floor San Francisco, California 94105 f,:,. elephone: (415) 777-3200 : Facsimile: (415) 541-9366 ' "
Attorneys for Plaintiffs MACY'S, INC. and 14 MACYS.COM, INC.
15 UNITED STATES DISTRICT COURT
16 NORTHERN DISTRICT OF CALIFORNIA
17 SAN FRANCISCO DIVISION 18 C)Vl1 19 MACY'S, INC. and MACYS.COM, INC., Case No. 6198 20 Plaintiffs, COMPLAINT FOR TRADEMARK INFRINGEMENT, FALSE DESIGNATION 21 v. OF ORIGIN, DILUTION, AND UNFAIR COMPETITION 22 STRATEGIC MARKS, llC, DEMAND FOR JURY TRIAL 23 Defendant.______.. ___J 24
25
26 Plaintiffs Macy's. Inc. and Macys.com, Inc. (collectively and individually "Macy's" or
27 "Plaintiffs"), by their attorneys, for their complaint against Defendant Strategic Marks, llC
28 ("Strategic Marks" or "Defendant") allege as follows:
3928385.3 ~ __-1...::.. ____. ______COMPLAINT Case3:11-cv-06198-JSC Document1-2 Filed12/09J11 Page2 of 44 i II
1 NATURE OF THE ACTION
2 This is an AcUon for trademark infringement, false designation of origin,
3 unfair competition, and dilution arising under the Lanham Act, 15 S.C. § 1051 et seq.,
4 and federal and State common law. Defendant has willfully and unlawfully infringed the
5 Heritage Marks (as defined below) with the clear and unmistakable intent and effect of
6 causing confusion, mistake, and deception among customers and potential customers.
7 2. Macy's is the owner and user of the following world famous marks for retail
8 store online retail store services, clothing and related products: ABRAHAM &
9 STRAUS, A&S, THE BROADWAY, JORDAN MARSH, BULLOCK'S, ROBINSONS-MAY,
10 FILENE'S, and THE BON MARCHE (collectively and individually, the "Heritage Marks").
11 3. The Heritage Marks have been used, inter alia, in the following stylized
12 formats (collectively and individually, the "Macy's Famous Stylized Nameplates"):
13 I 14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
3928385.3 , II Case3:11-cv-06198-JSC Document1-2 Filed 12/09/11 Page3 of 44 ~ ....,
1
2 3 4
5 6 BULLOCK'S 7 8 9 ROBINSONS· MAY 10
11 (: B t: 1\1 I C Q fi l IL I~ E ...:J 12 13
14 4. This Complaint asserts claims against Defendant arising from Defendant's 15 trademark infringement, unfair competition, and dilution of the Heritage Marks and Macy's
16 Famous Stylized Nameplates.
17 5. Macy's asks this Court to enjOin the infringement, dilution, and unfair 18 competition caused by Defendant's wrongful activities and to compensate Macy's for the
19 damages which Defendant has caused and the unjust enrichment it has received.
20 THE PARTIES 21 6. Plaintiff Macy's, Inc. is a corporation organized and existing under the laws 22 of the State of Delaware with a principal place of business at 7 West Seventh Street,
23 Cincinnati, OH 45202 and operates several Macy's department stores within this judicial
24 District.
25 7. Plaintiff Macys.com, Inc. is a corporation organized and existing under the
26 laws of the State of New York with a principal place of business at .685 Market Street, 8th
27 Floor, San Francisco, CA 94105 and operates the online department store
28 www.macys.com.
3928385.3 -3- COMPLAINT , I Case3: 11-cv-06198-JSC Document1-2 Filed 12/09/11 Page4 of 44
1 8. Upon information and belief, Defendant Strategic Marks is a limited liability
2 company organized and existing under the laws of the State of California, with a place of
3 business at 25 Ridgeview, Irvine, CA 92603.
4 JURISDICTION AND VENUE 5 9. This is an action for trademark infringement, false designation of origin, 6 trademark dilution, and unfair competition ariSing under the Trademark Act of 1946, 15
7 U.S.C. § 1051 et. seq.; trademark infringement, false designation of origin, and unfair
8 competition arising under the common law of the State of California; and statutory dilution
9 and unfair competition under the laws of the State of California. This Court has
10 jurisdiction over the subject matter of this action under the Trademark Act of 1946, 15
11 U,S,C. § 1121 and the Judicial Code, 28 U.S.C. §§ 1331 and 1338. This Court has 12 supplemental jurisdiction over the state law claims pursuant to 28 U.S.C. § 1367, which
13 arise out of the same nucleus of operative fact as the substantial Federal law claims to
14 which they are joined.
15 10. Defendant Strategic Marks is subject to this Court's personal jurisdiction
16 pursuant to Local Rule 3-5 and Rule 4 of the Federal Rules of Civil Procedure because it
17 does business in this Judicial District, including offering infringing products that contain
18 the Heritage Marks within this State and in this District, and expressly aiming the acts
19 alleged in this Complaint at this District.
20 11. Venue is proper in this judicial district under 28 U.S.C. § 1391, among other
21 things because the injury caused by the acts alleged in this Complaint was felt in this
22 District.
23 INTRADISTRICT ASSIGNMENT
24 12. Intradistrict ASSignment of this intellectual property action (trademark) is
25 proper on a district-wide basis pursuant to Local Rule 3-2ec) and General Order No. 44.
26 FACTUAL BACKGROUND
27 13. Macy's, by itself and through related entities and predecessor entities, is a
28 leading operator of retail department stores in the United States. Macy's operates, inter
3928385.3 ~~~~=-______4~-______COMPLAINT Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page5 of 44 ·'.
1 alia, numerous MACY'S retail department stores throughout the country, including in this
2 State. Macy's also operates an online retail store at www.macys.com.
3 14. Macy's is the owner of various retail stores under marks other than
4 MACY'S, including but not limited to the Heritage Marks, which are described as follows:
5 a) JORDAN MARSH, a prominent New England department store
6 initially located in Boston was founded by Benjamin L. Marsh and Eben Jordan in
7 approximately 1851. 8 b) BULLOCK'S, a prominent west coast department store initially 9 located in Los Angeles was founded by John G. Bullock in 1907.
10 c) ROBINSONS-MAY stores from the west coast trace their history
11 back to the opening of the J .W. Rob,inson Company in 1881. The Los Ange!es-based
12 store catered to an upscale clientele and quickly branched out to multiple locations.
13 d) FILENE'S, a prominent New England department store initially
14 located in Boston was established in 1852 by William Filene.
15 e) ABRAHAM & STRAUS, also known as A&S, was founded in
16 Brooklyn in 1893 and quickly grew from a small dry goods shop to a prominent
17 department store.
18 f) THE BROADWAY, a southwest store, was initially established in Los 19 Angeles in 1896 and transformed into one of the most successful department store 20 chains in Southern California.
21 g) THE BON MARCHt: was initially established in Seattle in 1890 and
22 expanded throughout the Northwest becoming a staple in malls and shopping centers.
23 15. The Heritage Marks, by reason of the high quality retail and other services
24 provided under them and the quality of design and workmanship of the wearing apparel
25 and other goods sold, have come to be known to the purchasing public as representing
26 products and services of the highest quality, which are provided under the best
27 merchandising and customer service conditions. As a result thereof, the Heritage Marks
28 and the goodwill associated therewith are well-known to the public and of inestimable
3928385.3 :::-:::::-::-:=--::-::-;;;;;:------'"'---~."~------~---.--"-- COMPLAINT ,I Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page6 of 44
1 value to Macy's.
2 16. Plaintiff Macy's, Inc. is the owner of, inter alia, the following U.S. trademark
3 and service mark registrations for the Heritage Marks (collectively and individually,
4 "Macy's Registrations"):
5 a) FILENE'S, U.S. Trademark Registration No.1 ,960,415, issued 6 March 5, 1996, for retail department store services. 7 b) ROBINSONS-MAY, U.S. Trademark Registration No.1 ,793,132, 8 issued September 14, 1993, forretail department store services. 9 c) MAY, U.S. Trademark Registration No.1 ,728,405, issued October
10 27, 1992, for retail department store services.
11 True and correct copies of Macy's Registrations are attached hereto as Exhibit A
12 17. The Heritage Marks, by virtue of their wide renown, have developed a
13 secondary meaning and significance in the minds of the trade and the purchasing public,
14 such that the retail department store services, online retail stofe services, and related
15 goods and services offered thereunder are immediately identified with Plaintiffs by the
16 purchasing public.
17 18. Macy's has not abandoned its Heritage Marks.
18 19. Macy's is using its Heritage Marks in United States commerce, including but
19 not limited to within its Macys.com website.
20 20. Macy's has taken active, affirmative, and successful steps to retain and
21 foster the goodwill of the Heritage Marks.
22 21. The relevant consuming public recognizes that the Heritage Marks are
23 trademarks and ser.lice marks indicating a single source of origin.
24 22. With the transition of the Heritage Marks stores, the goodwill in the Heritage
25 Marks transferred to Macy's.
26 23. Based on the fame of, and existing goodwill in the Heritage Marks for retail
27 department store services, online retail store services, and related goods and services,
28 Defendant seeks to usurp that goodwill and dilute those marks.
3928385.3 ______-6------COMPLAINT Case3: 11-cv-06198-JSC Document1-2 Filed 12/09/11 Page 7 of 44 ., -- . ""'"
1 24. Long after Plaintiffs' adoption and use of the Heritage Marks for retail 2 department store services, online retail store services, and related goods and services, 3 Defendant applied to federally register marks identical to the Heritage Marks for identical 4 services (the "Infringing Marks").
5 25. Defendant has applied for the following U.S. registrations for the Infringing 6 Marks:
7 a) U.S. Trademark Application Serial No. 85137185, filed September
8 24,2010, for the Infringing Mark ROBINSON'S for, inter alia, retail department store and 9 on-line retail department store services.
10 b) U.S. Trademark Application Serial No. 85137191, filed September
11 24, 2010, for the Infringing Mark THE BROADWAY for, inter alia, retail department store 12 and on-line retail department store services. 13 c) U.S. Trademark Application Serial No. 85137181, filed September
14 24,2010, for the Infringing Mark MAY COMPANY for, inter alia, retail department store 15 and on-line retail department store services.
16 d) U.S. Trademark Application Serial No. 85137194, filed September
17 24,2010, for the Infringing Mark ABRAHAM AND STRAUS for, inter alia, retail 18 department store and on-line retail department store services.
19 e) U.S. Trademark Application Serial No. 85137183, filed September
20 24, 2010, for the Infringing Mark JORDAN MARSH for, inter alia, retail department store 21 and on-line retail department store services. 22 f) U.S. Trademark Application Serial No. 85136164, filed September
23 23, 2010, for the Infringing Mark BULLOCK'S DEPARTMENT STORE for, inter alia, retail 24 department store and on-line retail department store services. 25 g) U.S. Trademark Application Serial No. 85137196, filed September
26 24,2010, for the Infringing Mark FILENE'S for, inter alia, retail department store and on- 27 line retail department stofe services. 28
3928385.3 -7- I COMPLAINT Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page8 of 44
1 h) U,S. Trademark Application Serial No. 85137193, filed September
2 24,2010, the Infringing Mark THE BON MARCHE for, inter alia, retail department
3 and on-line retail department store services.
4 26. Defendant offers for and sells products bearing the Infringing Marks on
5 its website, www.retrodepartmentstores.com.using typestyles which are intentionally
6 identical to those by Macy's its corresponding Heritage Attached to this
7 Complaint as Exhibit B is a true and correct copy of the home page of Defendant's
8 www.retrodepartmentstores.com website showing use of the Infringing Marks in
9 infringing typestyles.
10 27. typestyles include are not limited the following:
11
12
13
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18 19
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26 N 27 28
3928385.3 Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page9 of 44 , I W ,.",
1 2 3 4 5
6 Abraham & Straus 7 8 28. Defendant has indicated its intent to use the Infringing Marks for services
9 which are identical to services Macy's provides - i.e., retail department store services and
10 online retail store services featuring clothing and clothing accessories, cosmetics and
11 fragrances, jewelry and home furnishings.
12 29. Defendant has stated that its intention is to use Heritage Marks precisely
13 because they are famous. Defendant wrote:
14 Strategic Mark LLC's goal is to bring back the old shopping experiences and brands you remember. 15
16 30. Defendant has advertised the Infringing Marks using Macy's most iconic
17 historic flagship stores, in an apparent attempt to clothe themselves in the associated
18 goodwill. Attached to this Complaint as Exhibit C is a representative page from
19 Defendant's www.retrodepartmentstores.com website which advertises BULLOCK'S and
20 shows a movie entitled "Bullock's Wilshire, Los Angeles 1930's", with actual footage of
21 the famous Bullock's location.
22 31. The use by Defendant of the Infringing Marks has been willful and without
23 the consent of Macy's.
24 32. Defendant has used Macy's actual television commercials to advertise its
25 services. Exhibits D, F, G, and H are pages from Defendant's
26 www,retrodepartmentstores.com website using early television commercials.
27 33. Defendant's use of the Infringing Marks is likely to cause confusion and
28 mistake in the minds of the purchasing public, and in particular, tends to and does falsely
3928385.3 -9- COMPLAINT .. Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page10 of 44 ~ vJ " 1 create the impression that Defendant's goods and services are conducted by or in
2 association with Macy's (e.g., Defendant may have become part of Plaintiffs' store
3 family).
4 34. Upon information and belief, Defendant was aware of Macy's proprietary
5 rights in the Heritage Marks before Defendant began using the Infringing Marks. 6 35. Upon information and belief, Defendant is intentionally trying to usurp the 7 existing and residual goodwill and secondary meaning of the Heritage Marks. 8 Defendant's web site states:
9 Now, through Retro Departmentstores.com, we will bring back nine of the great department stores of the 10 20th century: Joseph Magnin, Bullock's, May. Robinson's May, Jordan Marsh, Filene's, The 11 Broadway, The BonMarche, and Abraham & Strauss, 12 and re-build and restore these well-loved brands.
13 See Exhibit D attached hereto.
14 FIRST CLAIM FOR RELIEF
15 INFRINGEMENT OF FEDERALLY REGISTERED TRADEMARKS 15 U.S.C. § 1114 16 17 36. Macy's incorporates by reference as if fully set forth herein the averments
18 contained within the preceding paragraphs 1 through 35, inclusive.
19 37. Defendant infringes trademarks registered in the United States Patent and
20 Trademark Office, in violation of the Trademark Act of 1946,15 U.S.C. § 1051, et. seq., 21 particularly under 15 U.S.C. § 1114(1).
22 38. Defendant's use of the Infringing Marks is likely to cause confusion and
23 mistake in the minds of the purchasing public, and in particular, tends to and does falsely 24 .create the impression that Defendant's goods and services are conducted by or in 25 · association with Macy's (e.g., Defendant may have become part of Plaintiffs' store family)
26 and therefore constitutes a violation of Plaintiffs' registered trademarks within the terms of
27 Section 32 of the Trademark Act, 15 U.S.C. § 1114. 28 39. Upon information and belief, Defendant's infringement has been willful and
3928385.3 COMPLAINT Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page11 of 44 ~ wi
1 intentional.
2 40. As a direct and proximate result of Defendant's illegal activities as alleged
3 above, Macy's has been severely damaged. Defendant's acts in infringing Plaintiffs'
4 Registrations have caused, and will continue to cause, irreparable harm to Plaintiffs
5 unless enjoined by this Court. 6 SECOND CLAIM FOR RELIEF 7 FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION 15 U.S.C. § 1125(a} 8 9 41. Macy's incorporates by reference as if fully set forth herein the averments
10 contained within the preceding paragraphs 1 throughAO, inclusive.
11 42. This Claim arises under the provisions of the Trademark Act of 1946, 15
12 U.S.C. § 1051 et. seq., particularly under U.S.C. § 1125(a), and alleges the use in
13 commerce of false designations of origin and false descriptions and representations.
14 43. Defendant's use of the Infringing Marks is likely to create confusion and to
15 deceive consumers as to the source of origin, sponsorship and/or authorization of
16 Defendant's business.
17 44. As more fully set forth above, the Heritage Marks have come to have a
18 secondary meaning indicative of origin, relationship, sponsorship, and/or association with
19 Plaintiffs. The purchasing public is likely to mistakenly attribute to Plaintiffs the use by
20 Defendant of the Infringing Marks as a source of origin, authorization, affiliation, and/or
21 sponsorship for Defendant's retail department store services, online retail store services,
22 and related goods and services and, therefore, to use Defendant's services and purchase
23 Defendant's products in that erroneous belief.
24 45. Defendant's adoption and continued willful use of a mark confusingly similar
25 to that of Macy's as herein above alleged, constitutes a use in interstate commerce and a
26 false designation of origin or false and misleading description or representation of goods
27 and/or services in commerce, with knowledge of the falsity, and deceptive misdescription,
28 which is likely to cause confusion, mistake and deception, and in commercial advertising
3928385,3 -11- COMPLAINT Case3:11-cv-06198-JSC Document1-2 Filed 12/09/11 Page12 of 44 " \w' ...",.,
1 and promotion, misrepresents the nature, characteristics, qualities and origin of 2 Defendant's retail department store services, online retail store services, and related 3 goods and services and commercial activities, within the meaning and in violation of 15
4 U,S.C. §1125(a). 5 46. As a direct and proximate result of Defendant's illegal activities as alleged 6 above, Macy's has been severely damaged. Defendant's aforesaid acts have caused, 7 and will continue to cause, irreparable harm to Macy's unless enjoined by this Court. 8 THIRD CLAIM FOR RELIEF 9 FEDERAL TRADEMARK DILUTION 15 U.S.C. § 1125(c) 10 11 47. Macy's incorporates by reference as if fully set forth herein the averments 12 contained within the preceding paragraphs 1 through 46, inclusive. 13 48. This Claim arises under the provisions of the Trademark Act of 1946, 15 14 U.S.C. § 1051 et. seq., particularly under 15 U.S.C. § 1125(c), and alleges the 15 commercial use in commerce by Defendant of the Heritage Marks, resulting in dilution
16 thereof. 17 49. As a result of Macy's extensive advertising and promotional efforts, the 18 Heritage Marks are recognized nationwide by the trade and purchasing public as
19 synonymous with the highest quality goods and services. 20 50. The Heritage Marks are famous marks that are of inestimable value to 21 Macy's and are relied upon by the. trade and the purchasing public to identify and 22 designate Macy's retail department store services, online retail store services, and 23 related goods and services and to distinguish them from the goods and services of 24 others. 25 51. Defendant's use in commerce of the Infringing Marks is likely to cause 26 dilution of the distinctive quality of the Heritage Marks. 27 52. Defendant began its use of the Infringing Marks in commerce after the 28 Heritage Marks became famous. Such use of the Infringing Marks commenced recently.
3928385.3 -12- COMPLAINT \0 • Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page13 of 44 ,II ~ .."
1 in each case many decades after Macy's began use of the corresponding Heritage
2 Marks. 3 53. Defendant's store services are of inferior quality, and therefore tarnish
4 Macy's goodwill in the Heritage Marks.
5 54. Upon information and belief, Defendant's commercial use of the Infringing
6 Marks is continuing with the willful intent to trade upon Plaintiffs' reputation and to cause
7 dilution of the Heritage Marks, all to the detriment and damage of Plaintiffs. 8 55. Defendant's use of the Infringing Marks has caused and/or is likely to cause 9 dilution by blurring and/or dilution by tamishment of the Heritage Marks.
10 56. As a direct and proximate result of Defendant's illegal activities as alleged
11 above, Plaintiffs have been severely damaged. Defendant's aforesaid acts in diluting the
12 Heritage Marks have caused, and will continue to cause, irreparable harm to Plaintiffs
13 unless enjoined by this Court.
14 FOURTH CLAIM FOR RELIEF
15 COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
16 57. Macy's incorporates by reference as if fully set forth herein the averments
17 contained within the preceding paragraphs 1 through 56, inclusive.
18 58. This Claim arises under the common law of the State of California and
19 alleges willful and intentional common law trademark infringement and unfair competition 20 by Defendant.
21 59. As more fully alleged above, the use by Defendant of the Infringing Marks
22 constitutes passing off, unfair methods of competition, unconscionable acts and 23 practices, and unfair and deceptive acts and practices wherein Defendant's conduct is
24 likely to cause confusion in the trade as to the source of Defendant's department store 25 services, online retail store services, related goods and services and/or is likely to lead
26 the public to believe that Defendant and its department store services, online retail store 27 services, and related goods and services are in some way connected with Plaintiffs
28 when, in fact, they are not, all to the detriment of Plaintiffs and in violation of the common
3928385.3 -13- COMPLAINT .. II Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page14 of 44 .' ~ .,.,
1 law of the State of California.
2 60. As a direct and proximate result of Defendant's illegal activities as alleged
3 above, Plaintiffs have been severely damaged. Defendant's aforesaid acts of unfair 4 competition have caused, and will continue to cause, irreparable harm to Plaintiffs unless
5 enjoined by this Court. 6 FIFTH CLAIM FOR RELIEF 7 STATE STATUTORY DILUTION California Business and Professions Code § 14247 8 61. Macy's incorporates by reference as if fully set forth herein the averments 9 10 contained within the preceding paragraphs 1 through 60, inclusive.
62. The above-described acts and conduct by Defendant-including without 11 12 limitation its use of the Infringing Marks-are likely to injure the reputation of Macy's and
13 dilute the distinctive quality of its famous marks in violation of Section 14247 of the
14 California Business & Professions Code. 63. By reason of these wrongful acts and conduct Defendant, Macy's has 15 16 suffered and will suffer damage. Additionally, these wrongful acts and omissions by
17 Defendant have caused, and unless restrained and enjoined by this Court will continue to
18 cause, serious irreparable injury and damage to Macy's, the goodwill associated with its
19 marks, and to the public. Macy's is therefore entitled to injunctive relief, as requested in
20 this action. SIXTH CLAIM FOR RELIEF 21 STATE STATUTORY UNFAIR COMPETITION 22 California Business and Professions Code § 17200 et seg. 23
24 64. Macy's incorporates by reference as if fully set forth herein the averments
25 contained within the preceding paragraphs 1 through 63, inclusive. 26 65. This Claim arises under California Business and Professions Code § 17200 27 et seq. and alleges willful and intentional unfair competition by Defendant.
28 66. As more fully alleged above, Defendant's acts and conduct as alleged
3928385.3 -:::-::-,:-:=::--:-:-:-:-=:-______.--'--14-'-.- ______COMPLAINT Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page15 of 44 ,. ~ .,
1 above also constitute "unlawful, unfair, or fraudulent business act[s] or practicers] and
2 unfair, deceptive, untrue, or misleading advertising" within the meaning of California
3 Business and Professions Code § 17200 et seq. Defendant's acts and conduct are 4 wrongful, knowing, willing, and malicious and constitute unfair competition under
5 California State law. 6 67. As a direct and proximate result of Defendant's illegal activities as alleged
7 above. Plaintiffs have been severely damaged. Defendant's aforesaid acts of unfair
8 competition have caused, and will continue to cause, irreparable harm to Plaintiffs unless
9 enjoined by this Court.
10 PRAYER FOR RELIEF
11 VVHEREFORE, Plaintiffs demand judgment as follows:
12 1. That a preliminary and permanent injunction be issued enjoining Defendant
13 and its agents, servants, employees, attorneys, and all persons in active concert or
14 participation with them:
15 (a) from using the Heritage Marks or any marks confusingly similar
16 thereto in connection with sale or offering of goods and services;
17 (b) from using any logo, trade name, trademark, or service mark, which
18 may be calculated to falsely represent or which has the effect of
19 falsely representing that goods and/or services of Defendant are
20 sponsored by, authorized by or in any way associated with Plaintiffs;
21 (c) from using the Infringing Marks or from otherwise infringing or
22 diluting the Heritage Marks; and
23 (d) from otherwise unfairly competing with Plaintiffs or infringing
24 Plaintiffs' rights in and to the Heritage Marks.
25 2. That Defendant be required to remove from use any interior and exterior
26 signage, web sites, in-store display, business cards, mailers, and any other physical or
27 electronic advertisements, collateral, or promotional materials bearing the Infringing
28 Marks.
3928385.3 -j 5"---______COMPLAINT Case3: 11-cv-06198-JSC Document1-2 Filed12/09/11 Page16 of 44
1 3. That Defendant be from any use of the Infringing Marks on goods 2 which are offered for or sold.
3 4. That Defendant be required to pay to Plaintiffs damages as Plaintiffs
4 have sustained as a consequence of Defendant's unfair competition of
5 Plaintiffs' registered and common law Heritage Marks, and to account Plaintiffs all
6 and derived by Defendant by virtue of its infringement and/or
7 that Plaintiffs be awarded Defendant's profits pursuantto 15 U.S.C. § 1117
8 common and statutory law.
9 5. the award to Plaintiffs be increased on willful
10 infringement 15 U.S.C. § 111
11 the
12 damages to three times the amount found as actual
13 damages, as speCifically provided in 15 U.S.C. § 1117.
7. find this case exceptional and reasonable
Plaintiffs.
8. and further relief as to the may just
the
18
19 DATED: December 1 HANSON BRIDGETT
21 22
23 INC. 24
27
28
3928385.3 Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page17 of 44 II
1 DEMAND FOR JURY TRIA!:: 2 Plaintiffs Macy's, Inc. and Macys,com, Inc. hereby demand a trial by jury of all
3 claims so triable.
4 DATED: December 2011 HANSON BRIDGED LLP
5 6
7
8 INC. and
9
10 ..... II
12
13
14 15 16
17
181
19
23
24
25
26
27
28
3928385,3 COMPLAINT Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page18 of 44 EXHIBIT A Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page190f44 , . '-' ..."
Int. Cl.: 42 Prior U.S. CIs.: 100 and 101 Reg. No. 1,960,415 United States Patent and Trademark Office Registered Mar. 5, 1996
SERVICE MARK PRINCIPAL REGISTER
FILENE'S
MAY DEPARTMENT STORES COMPANY, THE OWNER OF U.S. REO. NOS. 124,527. 1.517.257 (NEW YORK CORPORATION) AND OTHERS. 6li OLIVE STREET. 8TE. 1750 ST. LOUIS. MO 63101 SER. NO. 14-668.816. FILED 5-1-1995. FOR: RETAIL DEPARTMENT STORE SERVo ICES. IN CLASS 42 (U.S. CLS. 100 AND 101). FIRST USE 5-6-1894; IN COMMERCE RUDY R. SINGLETON, EXAMINING ATTOR· 5-6-1894. NEY Case3: 11-cv-06198-JSC Document1-2 Filed 12/09/11 Page20 of 44 , 4 ~ ..""
Int. CI.: 42 Prior U.S. Cl.: 101 Reg. No. 1,793,132 United States Patent and Trademark Office Registered Sep. 14, 1993
SERVICE MARK PRINCIPAL REGISTER
ROBINSONS·MAY
MA Y DEPARTMENT STORES COMPANY, THE FIRST USE 1-31-1993; IN COMMERCE (NEW YORK CORPORATION) 1-31-1993. 611 OLiVE STREET ST. LOUIS, MO 63101 SER. NO. 74-355.439. FILED 2-4-1993. FOR: RETAIL DEPARTMENT STORE SERV ICES, IN CLASS 42 (U.S. CL. (01). ERIN FALK, EXAMINING ATTORNEY Case3: 11-cv-06198-JSC Document1-2 Filed 12/09/11 Page21 of 44 ~ ...,
Int. Ct.: 42 Prior U.S. CI.: 101 Reg. No. 1,728,405 United States Patent and Trademark Office Registered Oct. 27, 1992
SERVICE MARK PRINCIPAL REGISTER
MAY COMPANY
MA Y DEPARTMENT STORES COMI'ANY, TIm NO CLAIM IS MADE TO THE EXCLUSIvE (NEW YORK CORPORATION) RIGHT TO USE "COMPANY", APART FROM 611 OLIVE STREET. SUITE 1750 THE MARK AS SHOWN. ST. LOUIS, MO 63101
FOR: RETAIL DEPARTMENT STORE SERV SER. NO. 74-186,035, FILED 7-18-1991. ICES, IN CLASS 42 (U.S. CL. 101). FIRST USE 7-7-1899; IN COMMERCE 7-7-1899. SUSAN LEE, EXAMINING ATrORNEY Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page22 of 44 EXHIBITB Retro ).>n"rfrrlt'nt Stores Page J of I
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EXHIBIT C Retro Stores lof2
IOSEPII MAGNIN 0 ru en CD eN ->. ->. I (')
. (0 co c:....I (f) 0 0 0 (') c :3 CD Bullock's .-::l ->. I Bullock', was rounded in 1907 at Sevemh &: Broadway in downtown Lo;: 1'0 John G flul10ck Tn 1944 Bullock's acquired Magnin &: Co Ihe of the then In by Federated (n d,tlcrentiate itself from the fuJI-line stores, the very "CD 1fat4tif 0.. cxdu,h" Wilslme location mopped its ap(lslropne. became Bullocks ->. Wilshire, and negan ils <)\\ n cX[lansion 1'0 0 (0-- retained their ilutonom)lllndcr niche. with I. Magnln -" --->. into the Chicago and Washing!on, D C melropolilan areas and opcnmg SIOles in Phoenix, Las and Northern Califurnia tn 1983 IS -0 however, Federated shllt!he NOr1h division and sold most Of;lS F ru locatIOns to a Seat!le, Washmgton upstart. Nordstrom In 1996·--following co the acquisition of Broadway Stores, Inc ~-Fed¢l'ated consolidated all its CD 1'0 traditional department-store buslIless ill California under the Miley'S (J1 nameplate, ending 89 velllS or Bullock's .....0 Add to C«rt +>- +>-
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JOSEPII MAGNIN o Q) (J) CD eN --\. ->., (") <, [~~] o en ->. <0 (Xl, L (f) o o o (") c 3 CD Abrahan1 & Strauss ::J...... -->., Abraham & SfTaus (Of A&S) WilS a N ,rNe, based in Rrookiyn Founded Federated Stores" which ellmmak:d tllc \&S 11 after it;; & Compnny Mos! A&S stores CD took the ofSlern's, another Q. Federatcd did M~c)" or A&S lAS ->. N o --<0 ->. --->. ""'0 s Q) CO CD N (Xl o AddIoCart -» ~ ~
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IOSEPII MAGNIN () 0) (Jl CD W -" -" I () < gI , -'" r'<.0 co, L (f) ()
0 0 () c :3 CD Jordan Marsh :::l --~, Jordan \1arsh & N Boston, Ma;;sachuserts, ;\Jew area 0 f the Marsh stOre~ were converted to Macy's, The store was ronnerly part of ::!1 Allied STOres and then Federated Department Stores (now Mac)'s. Inc) CD 0.. Allied also "perated a scoarmcefnup of stores in Florida called jordan ->. were disbanded in 1991 N 7\,0--- Ci~ -"
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= Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page33 of 44
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. I The Rohin,nns-May name was creattd in 199J when the fonner middle-to N -low-brow May Co;npany California consolidated with their c1trria
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Exhibit H Rctro ... "r1n''''nt Stores I of2
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1217/201 I Case3:11-cv-06198-JSC Document1-2 Filed12/09/11 Page44 of 44 ~. Exhibit B Case3:ll-cv-06l98-SC Document50 Filedll/02/l2 Pagel of 24
l BENJAMIN ASHUROV (SBN# 271716) [email protected] 2 KB ASH Law Group 3 5674 Sonoma Drive, Suite A Pleasanton, CA 94566 4 Telephone: (415) 754-9346 Facsimile: (925) 734-8125 5
6 Attorneys for Defendant STRATEGIC MARKS, LLC 7
8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 SAN FRANCISCO DIVISION 11
12 MACY'S, INC. and MACYS.COM, INC., CASE NO. 3:11-cv-06198-SC 13 Plaintiffs, DEFENDANT'S 14 v. (1) FIRST AMENDED ANSWER AND 15 STRATEGIC MARKS, LLC, COUNTERCLAIMS; AND 16 Defendant. (2) SUPPLEMENTAL 17 COUNTERCLAIM
18 DEMAND FOR JURY TRIAL 19 Assigned Judge: Honorable Samuel Conti 20 Complaint Filed: December 9,2011
21 STRATEGIC MARKS, LLC, 22 Counter-Claimant, 23 v.
24 MACY'S, INC. and MACYS.COM, INC., 25 Counter-Defendants. 26
27
28 1- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page2 of 24
1 DEFENDANT'S FIRST AMENDED ANSWER 2 Defendant Strategic Marks, LLC ("Strategic Marks" or "Defendant"), by and through its
3 attorney, submits Defendant's First Amended Answer and Counterclaims to Plaintiffs Macy's, Inc. and 4 Macys.com, Inc. (collectively, "Macy's," "Plaintiffs" or "Counter-Defendants") Complaint for 5 Trademark Infringement, False Designation of Origin, Dilution, and Unfair Competition
6 ("Complaint") as follows: 7 Defendant was not served properly by Plaintiffs. However, due to the Notice of Default issued 8 in this case and the corresponding motion associated therewith, Defendant has made an appearance in
9 this case. Defendant continues to hold that service was defective. 10 NATURE OF THE ACTION
11 1. Responding to ~ 1 of the Complaint, Defendant admits this action is purportedly one for 12 trademark infringement, false designation of origin, unfair competition, and dilution arising under the 13 Lanham Act, 15 U.S.C. § 1051 et seq., and federal and state common law. Defendant lacks sufficient
14 information to form a belief regarding the truth of the allegation set forth in ~ 1 of the Complaint that 15 Defendant has caused "confusion, mistake, and deception among customers and potential customers,"
16 and therefore denies said allegation. Defendant denies the remaining allegations set forth in ~ 1 of the
17 Complaint.
18 2. Responding to ~ 2 of the Complaint, Defendant admits the following:
19 a. Macy's, Inc. (located at 7 West Seventh Street, Cincinnati, Ohio 45202) is 20 identified as the last listed owner of the Trademark "ABRAHAM & STRAUS", U.S. Trademark
21 Registration No. 204,692, registered October 20,1925 and cancelled February 9,2011, which is 22 identified on the U.S. Patent and Trademark Office website as a "Dead" mark.
23 b. Macy's, Inc. (located at 7 West Seventh Street, Cincinnati, Ohio 45202) is 24 identified as the last listed owner of the Service Mark "A&S" (for Retail Department Store Services), 25 U.S. Trademark Registration No. 1,253,265, registered October 4, 1983.
26 c. Macy's, Inc. (located at 7 West Seventh Street, Cincinnati, Ohio 45202) is 27 identified as the last listed owner of the Service Mark "THE BROADWAY" (for Retail DepaIiment 28 Store Services), U.S. Trademark Registration No. 861,820, registered December 10,1968 and 2- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page3 of 24
I I
1 cancelled December 14,2010, which is identified on the U.S. Patent and Trademark Office website as
2 a "Dead" mark.
3 d. Federated Department Stores, Inc. (located at 7 West Seventh Street, Cincinnati,
4 Ohio 45202) is identified as the last listed owner of the Service Mark "JORDAN MARSH" (for Retail
5 Department Store Services), U.S. Trademark Registration No. 2,022,118, registered December 10,
6 1996 and cancelled September 15,2007, which is identified on the U.S. Patent and Trademark Office
7 website as a "DEAD" mark.
8 e. Macy & Co., Inc. (located at 151 West 34th Street, New York, New York lOOOl)
9 is identified as the last listed owner of the Service Mark "BULLOCK'S (for Retail Department Store lO Services), U.S. Trademark Registration No. 898,464, registered September 8, 1970 but currently
11 expired, which is identified on the U.S. Patent and Trademark Office website as a "DEAD" marIe
12 f. Macy's, Inc. (located at 7 West Seventh Street, Cincinnati, Ohio 45202) is
13 identified as the last listed owner of the Service Mark "ROBINSONS-MA Y" (for Retail Department
14 Store Services), U.S. Trademark Registration No. 1,793,132, registered September 14, 1993.
15 g. Macy's, Inc. (located at 7 West Seventh Street, Cincinnati, Ohio 45202) is
16 identified as the last listed owner of the Service Mark "FILENE'S" (for Retail Department Store
17 Services), U.S. Trademark Registration No. 1,960,415, registered March 5, 1996.
18 Defendant is informed and believes and on that basis denies Macy's makes bona fide use of these
19 marks in commerce. Defendant lacks sufficient infonnation to form a belief regarding the truth of the
20 remaining allegations therein and therefore denies the remaining allegations in ~ 2 of the Complaint.
21 3. Defendant lacks sufficient information to form a belief regarding the truth of the
22 allegations therein and therefore denies the allegations in ~ 3 of the Complaint.
23 4. Responding to ~ 4 of the Complaint, Defendant admits this action is purportedly one for
24 trademark infringement, false designation of origin, unfair competition, and dilution of the Heritage
25 Marks. Defendant lacks sufficient information to form a belief regarding the truth of the remaining
26 allegations therein and therefore denies the remaining allegations in ~ 4 of the Complaint.
27 5. Responding to ~ 5 of the Complaint, Defendant admits Macy's prays for a monetary
28 award and the issuance of preliminary and permanent injunctions against Defendant in this action. 3- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:1l-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page4 of 24
1 Defendant lacks sufficient infonnation to fonn a belief regarding the truth of the remaining allegations
2 therein and therefore denies the remaining allegations in ,-r 5 of the Complaint.
3 THE PARTIES
4 6. Defendant lacks sufficient infonnation to fonn a belief regarding the truth of the
5 allegations therein and therefore denies the allegations in,-r 6 of the Complaint.
6 7. Defendant lacks sufficient infonnation to fonn a belief regarding the truth of the
7 allegations therein and therefore denies the allegations in ,-r 7 of the Complaint.
8 8. Defendant admits the allegations in,-r 8 of the Complaint.
9 JURISDICTION AND VENUE
10 9. Responding to,-r 9 of the Complaint, Defendant admits that this action purports to arise
11 under the trademark laws of the United States and statutory and common law trademark and unfair
12 competition laws of the state of California, and that this Court has jurisdiction over the subj ect matter
13 of this action. Defendant also admits that this Court has jurisdiction over the subject matter of this
14 action. Defendant lacks sufficient infonnation to form a belief regarding the truth of the remaining
15 allegations therein and therefore denies the remaining allegations set forth in,-r 9 of the Complaint.
16 10. Responding to ,-r 10 of the Complaint, Defendant admits that it does business in this
17 Judicial District and is subject to the personal jurisdiction of this Court. Defendant denies the
18 remaining allegations set forth in,-r 10 of the Complaint.
19 11. Defendant admits that venue is proper, but denies the remaining allegations in,-r 11 of
20 the Complaint.
21 INTRADISTRICT ASSIGNMENT
22 12. Defendant admits the allegations in,-r 12 of the Complaint.
23 FACTUAL BACKGROUND
24 13. Responding to ,-r 13 of the Complaint, Defendant admits several retail department stores
25 operate in the United States under the name "Macy's." Defendant is without knowledge or
26 infonnation sufficient to fonn a belief as to the truth or falsity of the remaining allegations in,-r 13 of
27 the Complaint and on that basis denies them.
28 III 4- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:1l-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page5 of 24
1 14. Responding to ~ 14 of the Complaint, Defendant denies Macy's owns any retail stores
2 in the United States named "Jordan Marsh," "Bullock's," "Robinsons-May," "Filene's," "Abraham &
3 Straus," "The Broadway," or "The Bon Marche." Defendant is without knowledge or information
4 sufficient to form a belief as to the truth or falsity of the remaining allegations in ~ 14 of the Complaint
5 and on that basis denies them.
6 15. Responding to ~ 15 of the Complaint, Defendant admits "Jordan Marsh," "Bullock's,"
7 "Robinsons-May," "Filene's," "Abraham & Straus," "The Broadway" and "The Bon March6" were
8 well-known names of well-loved department stores of the 20th century. Defendant is without
9 knowledge or information sufficient to fonn a belief as to the truth or falsity of the remaining
10 allegations in ~ 15 of the Complaint and on that basis denies them.
11 16. Responding to ~ 16 of the Complaint, Defendant admits the following:
12 a. Macy's, Inc. (located at 7 West Seventh Street, Cincinnati, Ohio 45202) is
13 identified as the last listed owner of the Service Mark "ROBINSONS-MAY" (for Retail Department
14 Store Services), U.S. Trademark Registration No. 1,793,132, registered September 14, 1993.
15 b. Macy's, Inc. (located at 7 West Seventh Street, Cincinnati, Ohio 45202) is
16 identified as the last listed owner of the Service Mark "FILENE'S" (for Retail Department Store
17 Services), U.S. Trademark Registration No. 1,960,415, registered March 5, 1996.
18 c. Macy's, Inc. (located at 7 West Seventh Street, Cincinnati, Ohio 45202) is
19 identified as the last listed owner of the Service Mark "MAY" (for Retail Department Store Services),
20 U.S. Trademark Registration No. 1,728,405, registered October 27, 1992.
21 Defendant denies the remaining allegations in ~ 16 of the Complaint.
22 17. Responding to ~ 17 ofthe Complaint, Defendant admits "Jordan Marsh," "Bullock's,"
23 "Robin sons-May," "Filene's," "Abraham & Straus," "The Broadway" and "The Bon March6" were
24 well-known names of well-loved department stores of the 20th century. Defendant denies the
25 remaining allegations in ~ 17 of the Complaint.
26 18. Defendant denies the allegations in ~ 18 of the Complaint.
27 19. Responding to ~ 19 of the Complaint, Defendant is informed and believes and on that
28 basis denies that Macy's makes bona fide or authorized use of the "Jordan Marsh," "Bullock's," 5- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:U-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page6 of 24
1 "Robinsons-May," "Filene's," "Abraham & Straus," "The Broadway" and "The Bon March6" marks
2 in commerce in the United States or within its Macys.com website. Defendant is without knowledge
3 or information sufficient to from a belief as to the truth or falsity of the remaining allegations in ~ 19 of
4 the Complaint and on that basis denies them ..
5 20. Defendant denies the allegations in ~ 20 of the Complaint.
6 21. Responding to ~ 21 of the Complaint Defendant admits that the relevant consuming
7 public recognizes the "Jordan Marsh," "Bullock's," "Robinsons-May," "Filene's," "Abraham &
8 Straus," "The Broadway" and "The Bon Marche" marks as indicating the Retro Department Stores
9 chain owned and operated by Strategic Marks as a single source of origin. Defendant denies the
10 remaining the allegations in ~ 21 of the Complaint.
11 22. Defendant is without knowledge or information sufficient to form a belief as to the truth
12 or falsity of the allegations in ~ 22 of the Complaint and on that basis denies them.
13 23. Responding to ~ 23 of the Complaint, Defendant admits "Jordan Marsh," "Bullock's,"
14 "Robinsons-May," "Filene's," "Abraham & Straus," "The Broadway" and "The Bon March6" were
15 well-known names of well-loved department stores of the 20th century. Defendant denies that it seeks
16 to usurp goodwill associated with any marks that are owned and/or enforceable by Macy's, or to dilute
17 any such marks. Defendant is without knowledge or information sufficient to form a belief as to the
18 truth or falsity of the allegations in ~ 23 of the Complaint and on that basis denies them.
19 24. Responding to ~ 24 of the Complaint, Defendant admits that it applied in September,
20 2010 for the U.S. registrations referenced in ~ 25 (applications to register the "Allegedly Infringing
21 Marks"), but denies the remaining allegations in ~ 24 of the Complaint.
22 25. Responding to ~ 25 of the Complaint, Defendant admits that it applied for the U.S.
23 trademark registrations listed in ~ 25 of the Complaint, but denies that the scope of the goods and
24 services listed in ~ 25 accurately reflects the scope of goods and services identified in Defendant's
25 applications. Defendant also denies the Allegedly Infringing Marks are infringing.
26 26. Responding to ~ 26 of the Complaint, Defendant admits that it offers T-shirts for sale in 27 its virtual stores (which can be accessed through links on its website, www.retrodepartmentstores.com)
28 which bear upon them stylized versions of the names of the virtual stores by which they are offered, 6- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page? of 24
1 i.e.: "Bullock's TM," "May Company TM," "Robinsons TM," "Jordan Marsh TM'" "Filene'sTM," "The
2 Broadway ®," "The Bon Marche TM," and "Abraham & Straus TM." Defendant also admits the
3 typestyles used for printing the names of the virtual stores herein referenced on the T-shirts are similar
4 to some of the con-elating typestyles reflected in ~ 27 of the Complaint. Defendant also admits that the
5 document attached to the Complaint as Exhibit B accurately reflects content from an old version of the
6 home page for Defendant's www.retrodepartmentstores.com website. Defendant denies all remaining
7 allegations in ~ 26 of the Complaint.
8 27. Responding to ~ 27 of the Complaint, Defendant admits it has used all the typestyles
9 included therein, except for the "A&S" typestyle shown at 8:11-13 of the Complaint and the "Filene's"
10 typestyle shown at 9:01-05 of the Complaint. Defendant denies all remaining allegations in ~ 27 of the
11 Complaint.
12 28. Defendant is without knowledge or information sufficient to form a belief as to the truth
13 or falsity of the allegations in ~ 28 of the Complaint and on that basis denies them.
14 29. Responding to ~ 29 of the Complaint, Defendant admits "Jordan Marsh," "Bullock's,"
15 "Robinsons-May," "Filene's," "Abraham & Straus," "The Broadway" and "The Bon March6" were
16 well-known names of well-loved department stores of the 20th century. Defendant also admits the
17 following content appears on the "Home" page of its www.retrodepartmentstores.com website:
18 "Strategic Mark LLC's goal is to bring back the old shopping experiences and brands you remember."
19 Defendant is without know ledge or information sufficient to form a belief as to the truth or falsity of
20 the remaining allegations in ~ 29 of the Complaint and on that basis denies them.
21 30. Responding to ~ 30 of the Complaint, Defendant admits "Jordan Marsh," "Bullock's,"
22 "Robinsons-May," "Filene's," "Abraham & Straus," "The Broadway" and "The Bon March6" were
23 well-known names of well-loved department stores of the 20th century. Defendant also admits that the
24 document attached to the Complaint as Exhibit C accurately reflects content from an old version of
25 Defendant's "Bullock's" virtual store. Defendant denies that it seeks to usurp goodwill associated with
26 any marks that are owned and/or enforceable by Macy's, or to dilute any such marks. Defendant is
27 without knowledge or information sufficient to form a belief as to the truth or falsity of the remaining
28 allegations in ~ 30 of the Complaint and on that basis denies them. 7- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM II Case3:11-cv-06198-SC Document50 Filedll/02/12 Page8 of 24
1 31. Responding to,; 31, Defendant admits Macy's has not expressly consented to
2 Defendant's use of any of the Allegedly Infringing Marks, but denies the remaining allegations in'; 31
3 of the Complaint.
4 32. Defendant denies the allegations in'; 32 of the Complaint.
5 33. Defendant denies the allegations in'; 33 of the Complaint.
6 34. Defendant denies the allegations in ,; 34 of the Complaint.
7 35. Responding to,; 35 of the Complaint, Defendant admits the following content appears
8 on the "About" page of its www.retrodepartmentstores.com website:
9 Bringing Back Nine Stores
10 Now, through Retro Departmentsores.com, we brought back nine of the great th 11 department stores of the 20 century: Joseph Magnin, Bullock's, May, Robinson's May, Jordan Marsh, Filene's, The Broadway, The Bon Marche, and 12 Abraham & Strauss, and re-build and restore these well-loved brands. 13 Defendant denies that it seeks to usurp goodwill and secondary meaning of any marks that are owned
14 and/or enforceable by Macy's. Defendant is without knowledge or information sufficient to form a
15 belief as to the truth or falsity of the remaining allegations in'; 35 of the Complaint and on that basis
16 denies them.
17 FIRST CLAIM FOR RELIEF
18 INFRINGEMENT OF FEDERALLY REGISTERED TRADEMARKS
19 36. Defendant incorporates herein by references, its responses to paragraphs 1 trliough 35
20 as if fully set forth and reinstated herein.
21 37. Defendant denies the allegations in'; 37 of the Complaint.
22 38. Defendant denies the allegations in'; 38 of the Complaint.
23 39. Defendant denies the allegations in'; 39 of the Complaint.
24 40. Defendant denies the allegations in'; 40 of the Complaint.
25 SECOND CLAIM FOR RELIEF
26 FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION
27 41. Defendant incorporates herein by references, its responses to paragraphs 1 through 40
28 as if fully set forth and reinstated herein. 8- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page9 of 24
1 42. Responding to '1142 of the Complaint, Defendant admits Plaintiffs are asserting in this
2 action provisions of the Trademark Act of 1946, 15 U.S.C. § 1051 et seq., and in particular 15 U.S.C. §
3 1125(a), and are alleging the use in commerce of false designations of origin and false descriptions and
4 representations.
5 43. Defendant denies the allegations in '1143 of the Complaint.
6 44. Defendant denies the allegations in'll 44 of the Complaint.
7 45. Defendant denies the allegations in '1145 of the Complaint.
8 46. Defendant denies the allegations in '1146 of the Complaint.
9 THIRD CLAIM FOR RELIEF
10 FEDERAL TRADEMARK DILUTION
11 47. Defendant incorporates herein by references, its responses to paragraphs 1 through 46
12 as if fully set forth and reinstated herein.
13 48. Responding to 'II 48 of the Complaint, Defendant admits Plaintiffs are asserting in this
14 action provisions of the Trademark Act of 1946,15 U.S.c. § 1051 et seq., and in particular 15 U.S.C. §
15 1125(a), and are alleging the use in commerce by Defendant of the Heritage Marks and dilution
16 thereof.
17 49. Defendant denies the allegations in'll 49 of the Complaint.
18 50. Responding to '1150, Defendant admits "Jordan Marsh," "Bullock's," "Robinsons-May,"
19 "Filene's," "Abraham & Straus," "The Broadway" and "The Bon March6" were well-known names of
20 well-loved department stores of the 20th century. Defendant is without knowledge or information
21 sufficient to form a belief as to the truth or falsity of the remaining allegations in'll 50 of the Complaint
22 and on that basis denies them.
23 51. Defendant denies the allegations in 'II 51 of the Complaint.
24 52. Responding to '1152, Defendant admits "Jordan Marsh," "Bullock's," "Robinsons-May,"
25 "Filene's," "Abraham & Straus," "The Broadway" and "The Bon March6" were well-known names of
26 well-loved depatiment stores of the 20th century. Defendant also admits that its first use in commerce
27 of the Allegedly Infringing Marks occurred with the launch of its www.retrodepartmentstores.com
28 website, which occurred in 2011. Defendant denies that the "Heritage Marks" are famous (as that term 9- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Pagel0 of 24
1 is defined in 15 U.S.C. § 1125(c)(2)(A). Defendant also denies that Macy's made continuous bona
2 fide use of the "Heritage Marks" in commerce after first making use of such marks. Defendant is
3 without knowledge or information sufficient to form a belief as to the truth or falsity of the allegations
4 in,-r 52 of the Complaint and on that basis denies them.
5 53. Defendant denies the allegations in,-r 53 of the Complaint.
6 54. Defendant denies the allegations in ,-r 54 of the Complaint.
7 55. Defendant denies the allegations in,-r 55 of the Complaint.
8 56. Defendant denies the allegations in,-r 56 of the Complaint.
9 FOURTH CLAIM FOR RELIEF
10 COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
11 57. Defendant incorporates herein by references, its responses to paragraphs 1 through 56
12 as if fully set forth and reinstated herein.
13 58. Responding to,-r 58 of the Complaint, Defendant admits Plaintiffs are asserting common
14 law trademark infringement and unfair competition in this action.
15 59. Defendant denies the allegations in,-r 59 of the Complaint.
16 60. Defendant denies the allegations in ,-r 60 of the Complaint.
17 FIFTH CLAIM FOR RELIEF
18 STATE STATUTORY DILUTION
19 61. Defendant incorporates herein by references, its responses to paragraphs 1 through 60
20 as if fully set forth and reinstated herein.
21 62. Defendant denies the allegations in ,-r 62 of the Complaint.
22 63. Defendant denies the allegations in,-r 63 of the Complaint.
23 SIXTH CLAIM FOR RELIEF
24 STATE STATUTORY UNFAIR COMPETITION
25 64. Defendant incorporates herein by references, its responses to paragraphs 1 through 63
26 as if fully set forth and reinstated herein.
27 65. Responding to ,-r 65 of the Complaint, Defendant admits Plaintiffs are asserting statutory
28 unfair competition pursuant to California Business and Professions Code § 17200 et seq. in this action 10- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:1l-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Pagell of 24
1 66. Defendant denies the allegations in,-r 66 of the Complaint.
2 67. Defendant denies the allegations in,-r 67 of the Complaint. 3 AFFIRMATIVE DEFENSES 4 Defendant, while reserving the right to assert all other applicable defenses in this action, asserts 5 the following affirmative defenses to the Complaint: 6 FIRST AFFIRMATIVE DEFENSE 7 [Statutory Bar Under 15 U.S.C. 1125(c)(6)(A)] 8 Plaintiffs' Fourth, Fifth and Sixth Claims for Relief are barred by 15 U.S.C. 1125( c )(6)(A) in 9 connection with Defendant's use of the following marks: "The Broadway" and "The Bon Marche." 10 SECOND AFFIRMATIVE DEFENSE 11 [Statutory Bar Under 15 U.S.c. 1125(c)(6)(B)] 12 Plaintiffs' Third, Fourth, Fifth and Sixth Claims for Relief is barred by 15 U.S.C. 1125(c)(6)(B) 13 in connection with Defendant's use of the following marks: "The Broadway" and "The Bon Marche." 14 THIRD AFFIRMATIVE DEFENSE 15 [Failure to State a Claim] 16 Plaintiffs' Complaint, and each purported claim asserted therein, fails to allege facts sufficient 17 to state a claim for relief against Defendant. 18 FOURTH AFFIRMATIVE DEFENSE 19 [Fair Use] 20 Plaintiffs' Complaint, and each purported claim asserted therein, is barred in whole or in part 21 on the grounds that Defendant's use of the allegedly infringing marks is protected under the doctrine of 22 nominative fair use. 23 FIFTH AFFIRMATIVE DEFENSE 24 [Good Faith] 25 Plaintiffs' Complaint, and each purported claim asserted therein, is barred in whole or in part 26 on the grounds that Defendant at all times relevant hereto used the allegedly infringing marks in good 27 faith. 28 III 11- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedl1102/12 Page12 of 24
1 SIXTH AFFIRMATIVE DEFENSE 2 [Waiver] 3 Plaintiffs have engaged in conduct and activates sufficient to constitute a waiver and/or a 4 release of any and all claims that Plaintiffs may have or may have had against Defendant arising from 5 the transactions and occurrences set forth in the Complaint. 6 SEVENTH AFFIRMATIVE DEFENSE 7 [Estoppel] 8 Plaintiffs' claims are barred by the doctrine of estoppel. 9 EIGHTH AFFIRMATIVE DEFENSE 10 [Laches] 11 Plaintiffs' claims are barred by the doctrine of laches. 12 NINTH AFFIRMATIVE DEFENSE 13 [Unclean Hands] 14 Plaintiffs' claims are barred by the doctrine of unclean hands. 15 TENTH AFFIRMATIVE DEFENSE 16 [Abandonment] 17 Plaintiffs have abandoned the alleged marks andlor the goodwill associated therewith, and have 18 no rights in the alleged marks. Therefore, Defendant is free to register and use the alleged marks. 19 ELEVENTH AFFIRMATIVE DEFENSE 20 [Invalidity] 21 Macy's has no rights in the marks FILENE'S, ROBINSONS-MAY, or MAY. As such, 22 Registration Nos. 1,960,415, 1,793,132 and 1,728,405 are invalid. 23 TWELFTH AFFIRMATIVE DEFENSE 24 [Invalidity] 25 The federally registered marks allegedly owned by Macy's are invalid for failure to comply 26 with the Trademark Act, 15 U.S.c. § 1051 et seq. 27 III 28 III 12- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3: ll-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page13 of 24
1 THIRTEENTH AFFIRMATIVE DEFENSE
2 [Prosecution Estoppel]
3 Plaintiffs' claims are barred as they rest on an assertion of scope of its alleged mark that is
4 inconsistent with its representations to the United States Patent and Trademark Office in prosecution of
5 the claimed marks.
6 FOURTEENTH AFFIRMATIVE DEFENSE
7 [Failure to Mitigate Damages]
8 Any amount of recovery must be offset for Plaintiffs' failure to mitigate its damages. Because
9 Plaintiffs knew or should have known about the alleged infringement years ago, they should have
10 taken action to stop the alleged misconduct at the time. If Plaintiffs had done so, their alleged damages
11 would be reduced.
12 FIFTEENTH AFFIRMATIVE DEFENSE
13 [Reservation of Defenses]
14 Defendant presently has insufficient knowledge or information on which to form a belief as to
15 whether there may be additional as yet unstated affinnative defenses. Thus, subject to discovery in this
16 action, Defendant expressly reserves its right to assert additional affirmative defenses.
17 STRATEGIC MARKS' FIRST AMENDED COUNTERCLAIMS
18 NATURE OF THE ACTION
19 1. This is an action for trademark infringement, false designation of origin and unfair
20 competition arising under the Lanham Act, 15 U.S.C. § 1051 et seq. and federal and state common
21 law, as well as an action for statutory unfair competition arising under California Business and
22 Professions Code § 17200. Counter-Defendants have willfully and unlawfully infringed Defendant's
23 Service Marks (as defined below) with the clear and unmistakable intent and effect of causing
24 confusion, mistake and deception among customers and potential customers.
25 2. Strategic Marks is the owner and user of the following service marks for retail
26 department store and on-line retail department store services, retail and on-line retail clothing
27 boutiques and stores for clothing, apparel, and related products: ABRAHAM AND STRAUS,
28 ABRAHAM & STRAUS, THE BON MARCHE, THE BON MARCHE, THE BROADWAY, 13- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02112 Page14 of 24
1 BULLOCK'S DEPARTMENT STORE, BULLOCK'S, FILENE'S, JORDAN MARSH, MAY
2 COMPANY, ROBINSON'S and ROBINSON'S MAY (collectively and individually, the "Defendant's
3 Service Marks").
4 3. Macy's is using the following marks in commerce ("Macy's Infringing Marks") without
5 Strategic Marks' consent: BULLOCK'S, BULLOCKS, BULLOCK'S WILSHIRE, JORDAN
6 MARSH, ROBINSONS-MAY, ROBINSONS, THE BON MARCHE, ABRAHAM & STRAUS,
7 FILENE'S, AND THE BROADWAY. These marks are all either are identical to, or confusingly
8 similar to, the Defendants' Service Marks.
9 4. These counterclaims assert claims against the Counter-Defendants arising from their
10 trademark infringement and unfair competition related to Defendant's Service Marks.
11 5. Strategic Marks asks this Court to enjoin the infringement, false designation of origin
12 and unfair competition caused by Counter-Defendants' wrongful use of the Macy's Infringing Marks,
13 and to compensate Strategic Marks for the damages which Counter-Defendants have caused and the
14 unjust enrichment they have received.
15 THE PARTIES
16 6. Strategic Marks is informed and believes, and on that basis alleges Counter-Defendant
17 Macy's, Inc. is a corporation organized and existing under the laws of the state of Delaware with a
18 principal place of business at 7 West Seventh Street, Cincinnati, OH 45202 and operates several
19 Macy's department stores within this Judicial District.
20 7. Strategic Marks is informed and believes, and on that basis alleges Counter-Defendant
21 Macys.com, Inc. is a corporation organized and existing under the laws of the state of New York with
22 a principal place of business at 685 Market Street, 8th Floor, San Francisco, CA 94105 and operates the
23 online department store www.macys.com.
24 8. Counterclaimant Strategic Marks, LLC is a limited liability company organized and
25 existing under the laws of the state of Califomi a, with a place of business as 25 Ridgeview, Irvine, CA
26 92603.
27 III
28 III 14- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:ll-cv-06l98-SC Document50 Filedll!02/l2 Page15 of 24
1 JURISDICTION AND VENUE
2 9. This is an action for trademark infringement, false designation of origin and unfair
3 competition arising under the Lanham Act, 15 U.S.C. § 1051 et seq.et seq. and the federal common
4 law; trademark infringement, false designation of origin and unfair competition arising under the
5 common law of the state of California; and unfair competition arising under the laws of the state of
6 California. This Court has jurisdiction over the subject matter of this action under the Trademark Act
7 of 1946,15 U.S.C. § 1121 and the Judicial Code, 28 U.S.C. §§ 1331 and 1338. This Court has
8 supplemental jurisdiction over the state law claims pursuant to 28 U.S.C. § 1367, which arise out of the
9 same nucleus of operative fact as the substantial federal law claims to which they are joined.
10 10. Counter-Defendants are subject to this Court's personal jurisdiction by virtue of their 11 filing of the Complaint in this action and pursuant to Local Rule 3-5 and Rule 4 of the Federal Rules of
12 Civil Procedure because they do business in this judicial district, including conducting business which
13 makes infringing and unfair use of Defendant's Service Marks in commerce within this state and in
14 this district.
15 11. Venue is proper in this judicial district under, inter alia, 28 U.S.C. § 1391, because the
16 injury caused by the Counter-Defendants' acts was felt in this district.
17 FACTUAL BACKGROUND
18 12. Strategic Marks, founded by Ellia Kassoff, is one of multiple companies founded by
19 Mr. Kassoffthat focus on providing new products and services under old, abandoned, and long-lost
20 brand names. In addition to the marks at issue in this action, Mr. Kassoff s companies have adopted
21 and used abandoned trademarks from a cross-section of industries, including inter alia Leaf Brands
22 Candy, Gottschalks, Newport Ski Company, Astro Pop, Leaf, and Wacky Wafers.
23 13. Strategic Marks owns and operates various on-line retail stores (the "On-line Retro
24 Department Stores") bearing names which pay homage to several of the now defunct, but once great,
25 department stores from the 20th century. Strategic Marks' On-line Retro Department Stores include,
26 but are not limited to, on-line department stores bearing the following names: ABRAHAM &
27 STRAUS, THE BON MARCHE, THE BROADWAY, BULLOCK'S, FILENE'S, JORDAN MARSH,
28 MAY COMPANY and ROBINSONS. The names of its On-line Retro Department Stores (and their 15- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:1l-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page16 of 24
1 respective "brick and mortar" locations which Strategic Marks is working toward opening (the "Brick
2 and Mortar Retro Department Stores")) evoke nostalgia in the minds of American consumers for
3 something that can no longer be found in today's nation-wide department store chains - a shopping
4 experience that is highly personalized and localized, with an old-world and opulent feel (the "Old
5 World Shopping Experience"). Strategic Marks seeks to provide new retail and on-line retail store
6 services using these long-abandoned retail department store brands, with the intent of offering its
7 customers high quality, contemporary products through its On-line Retro Department Stores and Brick
8 and Mortar Retro Department Stores in a manner consistent with the shopping experiences that could
9 once be found in the great retail department stores from America's past.
10 14. Strategic Marks is the owner and user of, inter alia, the following U.S. service mark
11 registration ("Defendant's Registered Service Mark") for one of Defendant's Service Marks:
12 a. THE BROADWAY, U.S. Trademark Registration No. 4,099,878, issued
13 February 14,2012 for retail department store and on-line retail department store services, retail and on-
14 line retail clothing boutiques and stores for clothing, apparel, and related products.
15 15. Strategic Marks has also filed the following applications for U.S. service mark
16 registrations for the following Defendant's Service Marks (collectively and individually, Strategic
17 Mark's Pending Applications") for retail department store and on-line retail department store services,
18 and retail and on-line retail clothing boutiques and stores for clothing, apparel, and related products:
19 a. ABRAHAM AND STRAUS, U.S. Trademark Application Serial Number
20 85,137,194, filed September 24,2010;
21 b. BULLOCK'S DEPARTMENT STORE, U.S. Trademark Application Serial
22 Number 85,136,164, filed September 23,2010;
23 c. FILENE'S, U.S. Trademark Application Serial Number 85,137,196, filed
24 September 24,2010;
25 d. JORDAN MARSH, U.S. Trademark Application Serial Number 85,137,183,
26 filed September 24,2010; and
27 e. MAY COMPANY, U.S. Trademark Application Serial Number 85,137,181,
28 filed September 24,2010. 16- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:1l-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:ll-cv-06l98-SC Document50 Filedll/02/l2 Page17 of 24
1 16. Strategic Marks is using the Defendant's Service Marks in commerce in the United
2 States, including but not limited to within its www.retrodepartmentstores.com website.
3 17. Defendant's Service Marks naturally bring to mind the Old World Shopping
4 Experience associated in American lore with the great department stores of the 20th century.
5 Defendant's Service Marks, by reason of Strategic Marks' use and promotion of Defendant's Service
6 Marks, have also come to be known to the purchasing public as retail stores within the new "Retro
7 Department Stores" family, a chain which seeks to differentiate itself from other nation-wide retail
8 chains by providing its customers with high quality, cutting edge products in an atmosphere designed
9 to emulate the Old World Shopping Experience traditionally associated with the great department
10 stores of the past.
11 18. The Defendant's Service Marks, by virtue of their ability to bring to the minds of the
12 relevant purchasing public the Old World Shopping Experience that used to be had at the great
13 department stores of the 20th century, and by virtue of their association with the "Retro Department
14 Stores" family and Strategic Marks' efforts to differentiate its retails stores from other modem-day
15 nation-wide retail chains (including Macy's), have developed a secondary meaning and significance in
16 the minds of the relevant trade and the purchasing public, such that the retail services and products
17 I provided by Strategic Marks in connection with the Defendant's Service Marks are immediately
18 identified with Strategic Marks and its "Retro Department Stores" family.
19 19. As a result of the above, the Defendant's Service Marks and the goodwill associated
20 therewith are very valuable to Strategic Marks.
21 20. Strategic Marks has taken active, affirmative, and successful steps to foster the good
22 will of the Defendant's Service Marks.
23 21. The relevant purchasing public recognizes that the Defendant's Service Marks are 24 service marks indicating a single source of origin - the Retro Depm1ment Stores chain owned and
25 operated by Strategic Marks.
26 22. Strategic Marks has not abandoned the Defendant's Service Marks.
27 23. Subsequent to Strategic Marks' first use of Defendant's Service Marks, Macy's began
28 using in commerce the Macy's Infringing Marks, and offering for sale and selling products bearing the 17- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3: ll-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:ll-cv-06l98-SC Document50 Filedll/02/l2 Page18 of 24
1 Macy's Infringing Marks. This use of the Macy's Infringing Marks has occurred without Strategic
2 Marks' consent.
3 24. Macys' use of the Macy's Infringing Marks in commerce is likely to cause confusion
4 and mistake in the minds of the purchasing public.
5 25. On February 27,2012, Strategic Marks made a demand to Counter-Defendants' counsel
6 that Counter-Defendants cease using the Defendant's Service Marks.
7 26. Macy's use of the Macy's Infringing Marks nonetheless continues.
8 FIRST CLAIM FOR RELIEF
9 INFRINGEMENT OF FEDERALLY REGISTERED TRADEMARK - 15 U.S.C. § 1114
10 27. Strategic Marks incorporates by reference as if fully set forth herein the averments
11 contained within the preceding paragraphs 1 through 26, inclusive.
12 28. Macy's infringes Defendant's Registered Service Mark in violation of the Trademark
13 Act of 1946, 15 U.S.C. § 1051, et seq., particularly under 15 U.S.c. § 1114(1).
14 29. Macy's use in commerce of Defendant's Registered Service Mark is likely to deceive,
15 and/or to cause confusion and mistake in the minds of the purchasing public, and in particular, tends to
16 and does falsely creates the impression that Macy's is associated with certain of Strategic Marks' On-
17 line Retro Department Stores, and that Macy's goods and services are conducted by or in association
18 with Strategic Marks and/or its On-Line Retro Department Stores.
19 30. Upon information and belief, Macy's infringement has been willful and intentional.
20 31. As a direct and proximate result ofMacy's illegal activities as alleged above, Strategic
21 Marks has been severely damaged. Macy's infringement of Strategic Marks' Registered Service Mark
22 has caused and will continue to cause, irreparable harm to Strategic Marks unless enjoined by this
23 Court.
24 SECOND CLAIM FOR RELIEF
25 FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION -15 U.S.C. § 1125(a)
26 32. Strategic Marks incorporates by reference as if fully set forth herein the averments
27 contained within the preceding paragraphs 1 through 31, inclusive.
28 III 18- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page19 of 24
33. This Claim arises under the provisions of the Trademark Act of 1946, 15 V.S.c. § 1051 2 et seq., particularly under V.S.C. § 1125(a), and alleges the use in commerce of false designations of
3 origin and false descriptions and representations.
4 34. Macy's use of the Macy's Infringing Marks is likely to create confusion, or to cause
5 mistake, or to deceive the consumers in regards to whether Macy's is affiliated, connected, or 6 associated with Strategic Marks.
7 35. Macy's use of the Macy's Infringing Marks is likely to create confusion, or to cause
8 mistake, or to deceive the consumers as to the source of origin, sponsorship and/or authorization of 9 certain of Macy's products.
10 36. Macy's use of the Macy's Infringing Marks in its commercial advertising misrepresents 11 the nature of Strategic Marks' goods, services and commercial activities in that it suggests Strategic
12 Marks is associated and cooperating with Macy's, one of the national retail chains which Strategic 13 Marks expressly differentiates itself from.
14 37. As more fully set forth above, Defendant's Service Marks have come to have a
15 secondary meaning indicative of origin, relationship, sponsorship, and/or association with Strategic
16 Marks. The purchasing public is likely to infer from Macy's use of the Macy's Infringing Marks an
17 affiliation, connection and/or association between Strategic Marks and Macy's which belies Strategic
18 Marks' attempts to distinguish itself and its Retro Department Stores from such national retail chains,
19 and to, therefore, discourage consumers from using Strategic Marks' services and/or purchasing
20 Strategic Marks' products in that erroneous belief. The purchasing public is also likely to mistakenly
21 attribute to Strategic Marks the use by Macy's of the Macy's Infringing Marks as an indication of
22 source of origin, authorization, affiliation, and/or sponsorship for Macy's certain retail department
23 store services, online retail store services, and related goods and services and, therefore, to use Macy's 24 services and purchase Macy's products in that erroneous belief.
25 38. Macy's adoption and continued willful use ofthe Macy's Infringing Marks as herein
26 above alleged, constitutes (i) a use in interstate commerce, (ii) a false designation of origin and/or false
27 and misleading description and/or representation of facts and/or goods and/or services in commerce,
28 with knowledge of falsity, and deceptive misdescription, which is likely to cause confusion, mistake 19- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:1l-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/o2/12 Page20 of 24
1 and deception as to the relationship between Strategic Marks and Macy's, and as to the source of
2 origin, sponsorship andlor authorization of certain ofMacy's products, and (iii) in commercial
3 advertising andlor promotion, a misrepresentation of the nature, characteristics, qualities and origin of
4 Macy's and Strategic Marks' retail store services and commercial activities, within the meaning of and
5 in violation of 15 U.S.C. § 1125(a).
6 39. As a direct and proximate result of Defendant's illegal activities as alleged above,
7 Strategic Marks has been severely damaged. Macy's complained of acts have caused, and will
8 continue to cause, irreparable harm to Strategic Marks unless enjoined by this Court.
9 THIRD CLAIM FOR RELIEF
10 COMMON LA W TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
11 40. Strategic Marks incorporates by reference as if fully set forth herein the averments
12 contained within the preceding paragraphs 1 through 39, inclusive.
13 41. This Claim arises under the common law of the state of California and alleges willful 14 and intentional common law trademark infringement and unfair competition by Macy's.
15 42. On information and belief, Macy's began making use in commerce of the Macy's
16 Infringing Marks in 2011 after discovering Strategic Marks was using Defendant's Service Marks in
17 commerce, and for the sole purpose of trying to strip Strategic Marks of its rights in marks Macy' shad
18 long-ago abandoned.
19 43. The use by Macy's of the Macy's Infringing Marks constitutes passing off, unfair
20 methods of competition, unconscionable acts and practices, and unfair and deceptive acts and practices
21 wherein Macy's conduct is likely to cause confusion in commerce as to the source of Strategic Marks'
22 goods and services. Macy's acts are in violation of the common law of the state of California.
23 44. As a direct and proximate result of Macy' s illegal activities as alleged above, Strategic 24 Marks has been severely damaged. Macy's aforesaid acts of unfair competition have caused, and wiIl
25 continue to cause, irreparable harm to Strategic Marks unless enjoined by this Court.
26 III
27 III
28 III 20- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3: ll-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page21 of 24
1 FOURTH CLAIM FOR RELIEF
2 STATE STATUTORY UNFAIR COMPETITION
3 rCalifornia Business and Professions Code § 17200 et seq.]
4 45. Strategic Marks incorporates by reference as if fully set forth herein the averments 5 contained within the preceding paragraphs 1 through 44, inclusive.
6 46. This Claim arises under California Business and Professions Code § 17200 et seq. and 7 alleges willful and intentional unfair competition by Macy's.
8 47. Macy's acts and conduct and use of the Macy's Infringing Marks as alleged above also
9 constitute "unlawful, unfair or fraudulent business act[s] or practice[s] and unfair, deceptive, untrue, or 10 misleading advertising" within the meaning of California Business and Professions Code § 17200 et 11 seq. Macy's acts complained of are wrongful, knowing, willing and malicious and constitute unfair 12 competition under California state law.
13 48. As a direct and proximate result ofMacy's illegal activities, Strategic Marks has been 14 severely damaged. Macy's aforesaid acts of unfair competition have caused, and will continue to 15 cause, irreparable harm to Strategic Marks unless enjoined by this Court. 16 STRATEGIC MARKS' SUPPLEMENTAL COUNTERCLAIM 17 SUPPLEMENTAL FACTUAL BACKGROUND 18 49. Strategic Marks incorporates by reference as if fully set forth herein the averments
19 contained within the preceding paragraphs 1 through 48, inclusive.
20 50. Strategic Marks is the owner and user of, inter alia, the following U.S. service mark 21 registrations (collectively and individually, Defendant's New Registered Service Marks") for certain of 22 Defendant's Service Marks:
23 a. THE BON MARCHE, U.S. Trademark Registration No. 4,136,284, issued May 24 1,2012 for retail department store and on-line retail department store services, and retail and on-line 25 retail clothing boutiques and stores for clothing, apparel, and related products. 26 b. ROBINSON'S, U.S. Trademark Registration No. 4,165,969, issued June 26, 27 2012 for retail department store and on-line retail department store services, retail and on-line retail 28 clothing boutiques and stores for clothing, apparel, and related products. 21- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedl1102/12 Page22 of 24
1 FIFTH CLAIM FOR RELIEF
2 INFRINGEMENT OF FEDERALLY REGISTERED TRADEMARK - 15 U.S.C. § 1114
3 51. Strategic Marks incorporates by reference as if fully set forth herein the averments
4 contained within the preceding paragraphs 1 through 50, inclusive.
5 52. Macy's infringes Defendant's New Registered Service Marks in violation of the
6 Trademark Act of 1946, 15 U.S.C. § 1051, etseq., particularly under 15 U.S.c. § 1114(1).
7 53. Macy's use in commerce of Defendant's New Registered Service Marks is likely to
8 deceive, and/or to cause confusion and mistake in the minds of the purchasing public, and in particular,
9 tends to and does falsely creates the impression that Macy's is associated with certain of Strategic
10 Marks' On-line Retro Department Stores, and that Macy's goods and services are conducted by or in
11 association with Strategic Marks and/or its On-Line Retro Department Stores.
12 54. Upon information and belief, Macy's infringement has been willful and intentional. l3 55. As a direct and proximate result ofMacy's illegal activities as alleged above, Strategic
14 Marks has been severely damaged. Macy's infringement of Strategic Marks' New Registered Service
15 Marks has caused and will continue to cause, irreparable harm to Strategic Marks unless enjoined by
16 this Court.
17 DEMAND FOR JUDGMENT
18 WHEREFORE, Strategic Marks demands judgment in its favor, including the following:
19 A. Dismissal of all of Macy' s claims against Strategic Marks, in their entirety and with
20 prejudice.
21 B. A declaration that Strategic Marks does not infringe and has not infringed any of the
22 Heritage Marks, whether directly or indirectly.
23 C. A declaration that the Heritage Marks have been abandoned.
24 D. A declaration that Macy's take nothing by way of their Complaint.
25 E. That a preliminary and permanent injunction be issued enjoining Macy's and its agents,
26 servants, employees, and all persons in active concert or participation with them:
27 (1) From using the Defendant's Service Marks, or any marks confusingly similar
28 thereto, in connection with sale or offering for sale of goods or services, including on goods which are 22- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page23 of 24
1 offered for sale or sold;
2 (2) From using any logo, trade name, trademark, or service mark, which may be
3 calculated to falsely represent or which has the effect of falsely representing that Macy' s is associated
4 in any with Strategic Marks, or that goods andlor services ofMacy's are sponsored by, authorized by
5 or in any way associated with Strategic Marks;
6 (3) From using the Macy's Infringing Marks or from otherwise infringing the
7 Defendant's Service Marks; and
8 (4) From otherwise unfairly competing with Strategic Marks or infringing Strategic
9 Marks' rights in and to the Defendant's Service Marks.
10 F. That Macy's be required to remove from use any interior, exterior, physical, and
11 electrical display of the Defendant's Service Marks, including in-store and website/online display(s).
12 G. That Macy's be required to pay to Strategic Marks such damages as Strategic Marks has
13 sustained as a consequence ofMacy's infringement, false designation and unfair competition, and to
14 account to Strategic marks for all gains, profits and advantages derived by them by virtue of their
15 infringement, andlor that Strategic Marks be awarded profits pursuant to 15 U.S.C. § 1117 and state
16 common and statutory law.
1,., 1 I H. That the monetary award to Strategic Marks be increased based on willful infringement
18 pursuant to 15 U.S.C. § 1117.
19 1. That the Court find this case to be exceptional and award reasonable attorneys' fees to
20 Strategic Marks.
21 J. For such other and further relief as the Court may deem just and proper.
22
23 DATED: October 4,2012. KB ASH LAW GROUP 24 25 By lsi 26 BENJAMIN ASHUROV Attorneys for Defendant 27 STRATEGIC MARKS, LLC 28 23- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Case3:11-cv-06198-SC Document50 Filedll/02/12 Page24 of 24
1 DEMAND FOR JURY TRIAL
2 Defendant and Counter-Claimant Strategic Marks, LLC, hereby demands a trial by jury of all
3 claims so triable. 4
5
6 DATED: October 4, 2012. KB ASH LAW GROUP 7
8 By lsi 9 BENJAMIN ASHUROV Attorneys for Defendant 10 STRATEGIC MARKS, LLC
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27 28 24- DEFENDANT'S (1) FIRST AMENDED ANSWER AND Case No. 3:11-cv-06198-SC COUNTERCLAIMS, and (2) SUPP. COUNTERCLAIM Exhibit C CAND-ECF Page 1 of 18
ADRMOP,A0279,MEDTERM,PROTO,REFDIS
U.s. District Court California Northern District (San Francisco) CIVIL DOCKET FOR CASE #: 3:11-cv-06198-SC
Macy's Inc. et al v. Strategic Marks, LLC Date Filed: 12/09/2011 Assigned to: Hon. Samuel Conti Jury Demand: Both Refened to: Magistrate Judge Donna M. Ryu Nature of Suit: 840 Trademark Cause: 15: 1051 Trademark Infringement Jurisdiction: U.S. Government Plaintiff Plaintiff Macy's Inc. represented by Anthony Francis Lo Cicero Attorney at Law 90 Park Avenue New York, NY 10016 212-336-8110 Fax: 212-336-8001 Email: [email protected] PRO HAC VICE ATTORNEY TO BE NOTICED
Chester Rothstein, Amster Rothstein Ebenstein LLP 90 Park Avenue New York, NY 10016
212-336-8000 Fax: 212-338-8001 Email: [email protected] ATTORNEY TO BE NOTICED
Christopher S Walters Hanson Bridgett LLP 425 Market Street 26th Floor San Francisco, CA 94105 415-777-3200 Email: [email protected] ATTORNEY TO BE NOTICED
Garner Kimleon Weng Hanson Bridgett LLP 425 Market Street 26th Floor San Francisco, CA 94105 415-777-3200 Fax: 415-541-9366 Email: [email protected]
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ATTORNEY TO BE NOTICED
Holly Pekowsky Amster, Rothstein Ebenstein LLP 90 Park Avenue New York, NY 10016 212-336-8000 Fax: 212-336-8001 Email: [email protected] ATTORNEY TO BE NOTICED
Jessica Capasso, Amster Rothstein Ebenstein LLP 90 Park Avenue New York, NY 10016
212-336-8000 Fax: 212-336-8001 Email: [email protected] ATTORNEY TO BE NOTICED
Plaintiff Macys.com, Inc. represented by Anthony Francis Lo Cicero (See above for address) PRO HAC VICE ATTORNEY TO BE NOTICED
Chester Rothstein, (See above for address) ATTORNEY TO BE NOTICED
Christopher S Walters (See above for address) ATTORNEY TO BE NOTICED
Garner Kimleon Weng (See above for address) ATTORNEY TO BE NOTICED
Holly Pekowsky (See above for address) ATTORNEY TO BE NOTICED
Jessica Capasso, (See above for address) ATTORNEY TO BE NOTICED
V. Defendant
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Strategic Marks, LLC represented by Ashwin K. Anand 94 Renato Court Apt. 3 Redwood City, CA 94061 949-683-8280 Email: [email protected] TERMINATED: 0711012012 LEAD ATTORNEY ATTORNEY TO BE NOTICED
Benjamin Ashurov KB Ash Law Group 5674 Sonoma Dr Suite A Pleasanton, CA 94566 415-754-9346 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED
Kuscha Hatami Fard Raj Abhyanker P.C. 1580 W EI Camino Real suite 14 Mountain View, CA 94040 United Sta 650-965-8731 Fax: 650-989-2131 Email: [email protected] TERMI1VATED: 0711012012 ATTORNEY TO BE NOTICED
Kymberleigh N. Korpus Kymberleigh Korpus, Attorney at Law 432 Deerfield Drive Moraga, CA 94556 925-388-6555 Email: [email protected] ATTORNEY TO BE NOTICED
Lynn M. Terrebonne Raj Abhyanker, PC 1580 W. EI Camino Real Suite 13 Mountain View, CA 94040 650-965-8731 Fax: 650-989-2131 Email: [email protected] TERMINATED: 0711012012 ATTORNEY TO BE NOTICED
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Counter-claimant Strategic Marks, LLC represented by Ashwin K. Anand (See above for address) TERMINATED: 0711012012 LEAD ATTORNEY ATTORNEY TO BE NOTICED
Benjamin Ashurov (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED
Kuscha Hatami Fard (See above for address) TERMINATED: 0711012012 ATTORNEY TO BE NOTICED
Kymberleigh N. Korpus (See above for address) ATTORNEY TO BE NOTICED
Lynn M. Terrebonne (See above for address) TERMINATED: 0711012012 ATTORNEY TO BE NOTICED
v. Counter-defendant Macy's Inc. represented by Anthony Francis Lo Cicero (See above for address) ATTORNEY TO BE NOTICED
Chester Rothstein, (See above for address) ATTORNEY TO BE NOTICED
Christopher S Walters (See above for address) ATTORNEY TO BE NOTICED
Garner Kimleon Weng (See above for address) ATTORNEY TO BE NOTICED
Holly Pekowsky (See above for address) ATTORNEY TO BE NOTICED
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Jessica Capasso, (See above for address) ATTORNEY TO BE NOTICED
Counter-defendant Macys.com, Inc. represented by Anthony Francis Lo Cicero (See above for address) ATTORNEY TO BE NOTICED
Chester Rothstein, (See above for address) ATTORNEY TO BE NOTICED
Christopher S Walters (See above for address) ATTORNEY TO BE NOTICED
Garner Kimleon Weng (See above for address) ATTORNEY TO BE NOTICED
Holly Pekowsky (See above for address) ATTORNEY TO BE NOTICED
Jessica Capasso, (See above for address) ATTORNEY TO BE NOTICED Counter-claimant Strategic Marks, LLC represented by Ashwin K. Anand (See above for address) TERMINATED: 0711012012 LEAD ATTORNEY ATTORNEY TO BE NOTICED
Benjamin Ashurov (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED
Kuscha Hatami Fard (See above for address) TERMINATED: 0711012012 ATTORNEY TO BE NOTICED
Kymberleigh N. Korpus (See above for address) ATTORNEY TO BE NOTICED
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Lynn M. Terrebonne (See above for address) TERMINATED: 0711012012 ATTORNEY TO BE NOTICED
V. Counter-defendant Macy's Inc. represented by Anthony Francis Lo Cicero (See above for address) ATTORNEY TO BE NOTICED
Chester Rothstein, (See above for address) ATTORNEY TO BE NOTICED
Christopher S Walters (See above for address) ATTORNEY TO BE NOTICED
Garner Kimleon Weng (See above for address) ATTORNEY TO BE NOTICED
Holly Pekowsky (See above for address) ATTORNEY TO BE NOTICED
Jessica Capasso, (See above for address) A TTORNEY TO BE NOTICED Counter-defendant Macys.com, Inc. represented by Anthony Francis Lo Cicero (See above for address) ATTORNEY TO BE NOTICED
Chester Rothstein, (See above for address) ATTORNEY TO BE NOTICED
Christopher S Walters (See above for address) ATTORNEY TO BE NOTICED
Garner Kimleon Weng (See above for address) ATTORNEY TO BE NOTICED
Holly Pekowsky
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(See above for address) ATTORNEY TO BE NOTICED
Jessica Capasso, (See above for address) ATTORNEY TO BE NOTICED
Date Filed # Docket Text 12/09/2011 1 COMPLAINT lissued summons against Strategic Marks, LLC (Filing fee $ 350, receipt number 34611067988.). Filed byMacy's Inc., Macys.com, Inc .. (ga, COURT STAFF) (Filed on 12/9/2011) (Additional attachment(s) added on 12/13/2011: # 1 Summons, # 2 Complaint) (ga, COURT STAFF). (Entered: 12/13/2011) 12/09/2011 2 Certificate of Interested Entities by Macy's Inc., Macys.com, Inc. re 1 Complaint, (ga, COURT STAFF) (Filed on 12/9/2011) (Entered: 12/13/2011) 12/09/2011 l ADR SCHEDULING ORDER: Case Management Statement due by 4/19/2012. Case Management Conference set for 4/26/201201 :30 PM in Courtroom F, 15th Floor, San Francisco .. Signed by Judge Jacqueline Scott Corley on 12/9/11. (Attachments: # 1 Standing Order)(ga, COURT STAFF) (Filed on 12/9/2011) (Entered: 12113/2011)
1211212011 ~ MOTION for attorney Anthony F. Lo Cicero leave to appear in Pro Hac Vice (Filing fee $ 305, receipt number 34611068056.) filed by Macy's Inc., Macys.com, Inc .. (Attachments: # 1 Proposed Order)(ga, COURT STAFF) (Filed on 12112/2011) (Entered: 12/13/2011)
12112/2011 § MOTION for attorney Holly Pekowsky leave to appear in Pro Hac Vice (Filing fee $ 305, receipt number 34611068058.) filed by Macy's Inc., Macys.com, Inc .. (Attachments: # 1 Proposed Order)(ga, COURT STAFF) (Filed on 12/12/2011) (Entered: 12/1312011) 12112/2011 1 MOTION for attorney Chester Rothstein leave to appear in Pro Hac Vice (Filing fee $ 305, receipt number 34611068061.) filed by Macy's Inc., Macys.com, Inc .. (Attachments: # 1 Proposed Order)(ga, COURT STAFF) (Filed on 12112/2011) (Entered: 12/1312011)
12112/2011 MOTION for attorney Jessica Capasso leave to appear in Pro Hac Vice (Filing fee $ 305, receipt number 34611068059.) filed by Macy's Inc., Macys.com, Inc .. (Attachments: # 1 Proposed Order)(ga, COURT STAFF) (Filed on 1211212011) (Entered: 12/1312011) 12/1312011 1 REPORT on the filing of an action regarding TRADEMARK INFRINGEMENT (cc: form mailed to register). (ga, COURT STAFF) (Filed on 12/13/2011) (Entered: 12113/2011)
12114/2011 2 ORDER by Magistrate Judge Jacqueline Scott Corley granting ~ Motion for Pro Hac Vice (ahm, COURT STAFF) (Filed on 1211412011) (Entered: 12114/2011)
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12/14/2011 ORDER by Magistrate Judge Jacqueline Scott Corley granting Q Motion for Pro Hac Vice (ahm, COURT STAFF) (Filed on 1211412011) (Entered: 12114/2011) 12114/2011 ORDER by Magistrate Judge Jacqueline Scott Corley granting 1 Motion for Pro Hac Vice (ahm, COURT STAFF) (Filed on 12114/2011) (Entered: 12114/2011)
12114/2011 12 ORDER by Magistrate Judge Jacqueline Scott Corley granting ~ Motion for Pro Hac Vice (ahm, COURT STAFF) (Filed on 12114/2011) (Entered: 12114/2011) 12/22/2011 SUMMONS Returned Executed by Macy's Inc., Macys.com, Inc .. Strategic Marks, LLC served on 12120/2011, answer due 1110/2012. (Weng, Gamer) (Filed on 12/2212011) (Entered: 12/22/2011) 0112312012 Declination to Proceed Before a U.S. Magistrate Judge by Macy's Inc., Macys.com, Inc .. (Walters, Christopher) (Filed on 1123/2012) (Entered: 01123/2012)
01124/2012 CLERK'S NOTICE ofImpending Reassignment to U.S. District Judge (ahm, COURT STAFF) (Filed on 1124/2012) (Entered: 01124/2012) 0112412012 16 ORDER REASSIGNING CASE. Case reassigned to Judge Hon. Samuel Conti for all further proceedings. Judge Magistrate Judge Jacqueline Scott Corley no longer assigned to the case. Signed by Executive Committee on 1/24/12. (mab, COURT STAFF) (Filed on 1124/2012) (Entered: 01124/2012)
~~-~~~--~--~-"~~---;----- 02115/2012 CLERKS NOTICE Case Management Conference set for 5/412012 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. (tdm, COURT STAFF) (Filed on 2115/2012) (Entered: 02115/2012) 02/27/2012 lli MOTION for Entry of Default filed by Macy's Inc., Macys.com, Inc .. (Attachments: # 1 Declaration of Christopher S. Walters, # ~ Exhibit 1, # 1 Exhibit 2, #:1 Exhibit 3)(Walters, Christopher) (Filed on 2/27/2012) (Entered: 02127/2012)
"~---~-~""""""~""---~"~-"~~ 02/29/2012 Clerks Notice ENTRY OF DEFAULT as to Defendant Strategic Marks, LLC. All parties noticed via e-mail or U.S. mail. (Related documents(s) )(aaa, COURT STAFF) (Filed on 2/29/2012) (Entered: 02/29/2012)
03/0612012 20 MOTION for Default Judgment by the Court as to Defendant Strategic Marks, LLC filed by Macy's Inc., Macys.com, Inc .. Motion Hearing set for 4/20/2012 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Responses due by 3120/2012. Replies due by 3/27/2012. (Walters, Christopher) (Filed on 3/612012) (Entered: 03106/2012)
"--~------~------~-~"---~~--"-".--- 03/0612012 Declaration in Support of 20 MOTION for Default Judgment by the Court as to Defendant Strategic Marks, LLC filed byMacy's Inc., Macys.com, Inc .. (Attachments: # 1 Exhibit 1 - 7)(Related document(s) 20 ) (Walters, Christopher) (Filed on 3/6/2012) (Entered: 03106/2012) 03/06/2012 Proposed Order re MOTION for Default Judgment by the Court as to Defendant Strategic Marks, LLCby Macy's Inc., Macys.com, Inc .. (Walters,
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Christopher) (Filed on 3/6/2012) (Entered: 03/06/2012) 03/28/2012 ANSWER to Complaint with Jury Demand, COUNTERCLAIM against All Plaintiffs byStrategic Marks, LLC. (Attachments: # 1 Certificate/Proof of Service)(Anand, Ashwin) (Filed on 3/28/2012) (Entered: 03/28/2012) MOTION to Set Aside Default filed by Strategic Marks, LLC. Motion Hearing set for 4/20/2012 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Responses due by 4/18/2012. Replies due by 4/25/2012. (Attachments: # 1 Notice of Motion, # ~ Proposed Order, # 1 Certificate/Proof of Service)(Anand, Ashwin) (Filed on 4/4/2012) (Entered: 04/04/2012) 04/04/2012 MOTION to Shorten Time on Motion to Set Aside Default filed by Strategic Marks, LLC. (Attachments: # 1 Declaration, # ~ Proposed Order, # 1 Certificate/Proof of Service)(Anand, Ashwin) (Filed on 4/4/2012) (Entered: 04/04/2012) 04/04/2012 RESPONSE (re MOTION for Default Judgment by the Court as to Defendant Strategic Marks, LLC ) filed byStrategic Marks, LLC. (Attachments: # 1 Proposed Order, # ~ Certificate/Proof of Service)(Anand, Ashwin) (Filed on 4/4/2012) (Entered: 04104/2012) 04/05/2012 Order by Hon. Samuel Conti granting Motion to Shorten Time. (sclc1 , COURT STAFF) (Filed on 4/5/2012) (Entered: 04/05/2012) 04/11/2012 REPLY (re MOTION for Default Judgment by the Court as to Defendant Strategic Marks, LLC ) filed byMacy's Inc., Macys.com, Inc .. (Attachments: # Declaration of Christopher S. Walters in Support of Plaintiffs Macy's, Inc. and Macys.Com, Inc.'s Reply in Support of its Motion for Default Judgment) (Walters, Christopher) (Filed on 411112012) (Entered: 04111/2012) 04/13/2012 RESPONSE (re MOTION to Set Aside Default) filed byMacy's Inc., Macys.com, Inc .. (Walters, Christopher) (Filed on 4/13/2012) (Entered: 04113/2012)
04113/2012 Declaration of Christopher S. Walters in Support of 29 Opposition/Response to Motion to Defendant Strategic Marks, LLC's Motion to Set Aside Default filed byMacy's Inc., Macys.com, Inc .. (Attachments: # 1 Exhibit A - I) (Related document(s) ) (Walters, Christopher) (Filed on 4113/2012) (Entered: 04113/2012)
04113/2012 Declaration of Frank Harrigan in Support of29 Opposition/Response to Motion to Set Aside Default filed byMacy's Inc., Macys.com, Inc .. (Attachments: # 1 Exhibit A - C)(Related document(s) ) (Walters, Christopher) (Filed on 4/13/2012) (Entered: 04/13/2012) ,~-~~-~------~,---~~~------04113/2012 32 ADR Certification (ADR L.R. 3-5 b) of discussion of ADR options Filed by Plaintiffs (Walters, Christopher) (Filed on 4113/2012) (Entered: 04/13/2012) 04117/2012 REPLY (re MOTION to Set Aside Default) filed byStrategic Marks, LLC. (Anand, Ashwin) (Filed on 4117/2012) (Entered: 04117/2012) 04117/2012 CLERKS NOTICE: Plaintiffs Motion for Default Judgment and Defendants
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Motion to Set Aside the Default set for hearing on Friday, April 20, 2012 at 10:00 a.m. before the Honorable Samuel Conti are submitted for a decision on the pleadings. Parties are hereby informed that there will be no appearance and no oral argument on these matters. (tdm, COURT STAFF) (Filed on 4117/2012) (Entered: 04117/2012) ADR Celiification (ADR L.R. 3-5 b) of discussion of ADR options (Anand, Ashwin) (Filed on 4/19/2012) (Entered: 04119/2012) Certificate of Interested Entities by Strategic Marks, LLC (Anand, Ashwin) (Filed on 4/20/2012) (Entered: 04/2012012)
04/23/2012 37 Plaintiffs Macy's, Inc. and Macys.com, Inc. ~') ANSWER to Counterclaim of Defendant Strategic Marks, LLCbyMacy's Inc., Macys.com, Inc .. (Walters, Christopher) (Filed on 4/23/2012) (Entered: 04/23/2012) 04126/2012 ORDER by Judge Samuel Conti denying Motion for Default Judgment; granting Motion to Set Aside Default (sclc1, COURT STAFF) (Filed on 4126/2012) (Entered: 04/26/2012) 04/26/2012 Set/Reset Trial Management Order Deadlines: Jury Selection set for 611812012 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Jury Trial set for 6118/2012 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. (sclc1S, COURT STAFF) (Filed on 4/26/2012) (Entered: 04/26/2012) 04/27/2012 Set Deadlines/Hearings: Pretrial Conference set for 6/8/2012 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. (tdmS, COURT STAFF) (Filed on 4/2712012) (Entered: 04/27/2012)
~~ ..--.- ...-~---- ..~---~---.--- 04/27/2012 JOINT CASE MANAGEMENT STATEMENT AND RULE 26(f) REPORT; [PROPOSED] ORDER filed by Macy's Inc .. (Walters, Christopher) (Filed on 4127/2012) (Entered: 04/27/2012) 05/0412012 Minute Entry: Status Conference - Held (Date Filed: 5/412012). Discovery due by 9/26/2012. Jury Selection set for 11126/2012 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Jury Trial set for 11126/201209:30 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Motion Hearing set for 10/26/2012 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Pretrial Conference set for 11116/2012 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. (Court Reporter Connie Kuhl.) (tdm, COURT STAFF) (Date Filed: 5/4/2012) (Entered: 05104/2012) 05/0412012 STATUS CONFERENCE ORDER:. Signed by Judge Samuel Conti on 5/4/12. (tdm, COURT STAFF) (Filed on 5/4/2012) (Entered: 05/0412012)
06118/2012 MOTION to Withdraw as Attorney Request for Order Permitting Withdrawal ofLynn M. Terrebonne as Attorney ofRecord for Defendant Strategic Marks, LLC filed by Strategic Marks, LLC. Responses due by 7/2/2012. Replies due by 7/9/2012. (Attachments: # 1 Proposed Order, # 6. Certificate/Proof of Service)(Terrebonne, Lynn) (Filed on 6/1812012) (Entered: 0611812012)
..- ....-.-.--.-.---~------.-.-.-.- .. -- 07/0212012 NOTICE of Change In Counsel by Kuscha Hatami Fard (Hatami Fard,
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Kuscha) (Filed on 7/2/2012) (Entered: 07102/2012) 07109/2012 First MOTION to Substitute Attorney Benjamin Ashurov filed by Strategic Marks, LLC. (Attachments: # 1 CertificatelProof of Service)(Ashurov, Benjamin) (Filed on 7/9/2012) (Entered: 0710912012) 0711012012 ORDER by Judge Samuel Conti granting Motion to Substitute Attorney. Attorney Lynn M. Terrebonne; Ashwin K. Anand and Kuscha Hatami Fard terminated (tdm, COURT STAFF) (Filed on 7110/2012) (Entered: 07110/2012)
08/13/2012 Joint MOTION to Continue Trial and [Proposed} Order filed by Strategic Marks, LLC. (Ashurov, Benjamin) (Filed on 8113/2012) (Entered: 08113/2012)
-'-'-----~,' ..'----~'-'.' ..- .. 08/24/2012 STIPULATION AND ORDER Discovery due by 2/22/2013. Final Pretrial Conference set for 4112120 l3 10: 00 AM in Courtroom 1, 17th Floor, San Francisco. Jury Selection set for 4/22/2013 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Jury Trial set for 4/22/2013 09:30 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Motion Hearing set for 3/2212013 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuei Conti .. Signed by Judge Samuel Conti on 8/24112. (tdm, COURT STAFF) (Filed on 8/24/2012) (Entered: 08/24/2012) •..."., ... _.,_ •. ',.. ... ' ..... ,.,.. ,, , ...,., .. ",., .. , ,...... ,.,., .. , ...,., ..... , ,_. -",""-.'-" ..., .• 10/10/2012 STIPULATION WITH PROPOSED ORDER filed by Strategic Marks, LLC. (Ashurov, Benjamin) (Filed on 10110/2012) (Entered: 10110/2012) 10115/2012 ORDER by Judge Samuel Conti granting Stipulation: DEFENDANT STRATEGIC MARKS is to e-file the attached First Amended Answer and Counterclaims and Supplemental Counterclaim by November 5, 2012. (tdm, COURT STAFF) (Filed on 10115/2012) (Entered: 10115/2012) 11102/2012 AMENDED ANSWER to 1 Complaint, and, Amended COUNTERCLAIM against All Plaintiffs by Strategic Marks, LLC. (Ashurov, Benjamin) (Filed on 1112/2012) (Entered: 11102/2012) 11119/2012 Plaintiffs Macy's, Inc. and Macys.com, Inc.'s First Amended ANSWER to Counterclaim byMacy's Inc., Macys.com, Inc .. (Walters, Christopher) (Filed on 11119/2012) (Entered: 1111912012) 01l08/20l3 CLERKS NOTICE Pretrial Conference set for 4112113 is advanced to 4110/2013 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. (tdm, COURT STAFF) (Filed on 1/8/2013) (Entered: 01108/2013) 0111412013 53 STIPULATION WITH PROPOSED ORDER to Continue Trial Date filed by Strategic Marks, LLC. (Ashurov, Benjamin) (Filed on 1114/2013) (Entered: 01l14/20l3)
01114/2013 ORDER by Judge Samuel Conti denying Stipulation to continue trial date. (tdm, COURT STAFF) (Filed on 1114/2013) (Entered: 0111412013) 02/0112013 55 MOTION for Partial Summary Judgment filed by Macy's Inc., Macys.com,
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Inc .. Motion Hearing set for 311512013 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Responses due by 2115/2013. Replies due by 2/22/2013. (Attachments: # 1 Proposed Order) (Walters , Christopher) (Filed on 2/1/2013) (Entered: 02/0112013)
""""""""""«"<"<""""«"""~"""""< 02/0 1120 l3 Declaration of Anthony F. Lo Cicero in Support of 55 MOTION for Partial Summary Judgment filed byMacy's Inc., Macys.com, Inc .. (Attachments: # 1 Exhibit A - H, # Z Exhibit I - O)(Related document(s) ) (Walters, Christopher) (Filed on 2/1/2013) (Entered: 02/0112013)
02108/2013 57 MOTION for Protective Order filed by Macy's Inc., Macys.com, Inc .. Motion Hearing set for 3115/2013 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Responses due by 2/2212013. Replies due by 3/1/2013. (Attachments: # 1 Proposed Order) (WaIters , Christopher) (Filed on 2/8/20l3) (Entered: 02/08/20l3)
'""~<""-«""<-""""«""""« 02/08/2013 Declaration of Anthony F. Lo Cicero in Support of 57 MOTION for Protective Order filed byMacy's Inc., Macys.com, Inc .. (Attachments: # 1 Exhibit A - I, # Z Exhibit J - T)(Related document(s) ) (Walters, Christopher) (Filed on 2/8120l3) (Entered: 02/08/20l3)
02/11/2013 ORDER REFERRING CASE to Magistrate Judge for Discovery purposes. Signed by Judge Samuel Conti on 2111113. (tdm, COURT STAFF) (Filed on 2/11/2013) (Entered: 0211112013)
0211212013 CASE REFERRED to Magistrate Judge Donna M. Ryu for Discovery (ahm, COURT STAFF) (Filed on 2112/20l3) (Entered: 02112/20l3)
<"-""~~<-«""--~<-<-<"""-""""< 02/12/2013 STIPULATION WITH PROPOSED ORDER TO EXTEND DISCOVERY DEADLINE FOR A LIMITED PURPOSE filed by Strategic Marks, LLC. (Ashurov, Benjamin) (Filed on 2112/2013) (Entered: 02/12/20l3)
0211312013 Order by Magistrate Judge Donna M. Ryu denying 57 Motion for Protective Order. Any joint letter due 2/27/20l3.(dmrlcl, COURT STAFF) (Filed on 2113/20l3) (Entered: 02/l3120l3)
-"""<""~--~-"---"~~-<-"<"-<-"--<---"-"" 02113/2013 ORDER by Judge Samuel Conti granting 60 Stipulation Extending Discovery Deadline for a Limited Purpose. (tdm, COURT STAFF) (Filed on 2113/2013) (Entered: 02113/2013)
02116/2013 RESPONSE (re 55 MOTION for Partial Summary Judgment) filed byStrategic Marks, LLC. (Ashurov, Benjamin) (Filed on 2116/20l3) (Entered: 02116/2013 )
02116/2013 Declaration of Benjamin Ashurov in Support of 63 Opposition/Response to Motionfor Partial Summary Judgment filed byStrategic Marks, LLC. (Related document(s) ) (Ashurov, Benjamin) (Filed on 2116/2013) (Entered: 02116/20 l3)
0211612013 Declaration of Ellia Kassoff in Support of 63 Opposition/Response to Motion for Partial Summary Judgment filed byStrategic Marks, LLC. (Related document(s) ) (Ashurov, Benjamin) (Filed on 2/16/20l3) (Entered: 02116/2013)
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02116/2013 RESPONSE (re MOTION for Partial Summary Judgment) filed byStrategic Marks, LLC. (Ashurov, Benjamin) (Filed on 2116/2013) (Entered: 02116/2013)
02/16/2013 67 Declaration of Benjamin Ashurov in Support of 66 Opposition/Response to Motionfor Partial Summary Judgment [corrected] filed byStrategic Marks, LLC. (Related document(s) ) (Ashurov, Benjamin) (Filed on 2/1612013) (Entered: 02/16/2013) 02116/2013 Declaration of Ellia Kassoff in Support of 66 Opposition/Response to Motion for Partial Summary Judgment [corrected] filed byStrategic Marks, LLC. (Related document(s) ) (Ashurov, Benjamin) (Filed on 2116/2013) (Entered: 02116/2013) 02119/2013 Ex Parte Application For Order Shortening Time to Hear Defendant's Motion to Continue filed by Strategic Marks, LLC. (Attachments: # 1 Declaration of Kymberleigh Korpus ISO Ex Parte Application, # 2: Exhibit 1 to Korpus Decl. ISO Ex Parte Application, # 1 Exhibit 2 to Korpus Decl. ISO Ex Parte Application, # .1 Exhibit 3 to Korpus Decl. ISO Ex Parte Application, # l Exhibit 4 to Korpus Decl. ISO Ex Parte Application, # 2. Appendix ONE to Exh 4 of Korpus Decl. ISO Ex Parte Application, # 1 Appendix TWO to Exh 4 of Korpus Decl. ISO Ex Parte Application, # .?i Appendix THREE to Exh 4 of Korpus Decl. ISO Ex Parte Application)(Ashurov, Benjamin) (Filed on 2/19/2013) (Entered: 02120/2013) 02120/2013 Proposed Order re Ex Parte Application For Order Shortening Time to Hear Defendant's Motion to Continue by Strategic Marks, LLC. (Ashurov, Benjamin) (Filed on 2120/2013) (Entered: 02120/2013) 02/22/2013 RESPONSE (re Ex Parte Application For Order Shortening Time to Hear Defendant's Motion to Continue) filed byMacy's Inc., Macys.com, Inc .. (Attachments: # 1 Declaration of Christopher S. Walters)(Walters, Christopher) (Filed on 2/22/2013) (Entered: 02/22/2013) 02/22/2013 REPL Y (re MOTION for Partial Summary Judgment) filed byMacy's Inc., Macys.com, Inc .. (Attachments: # 1 Supplemental Declaration of Anthony F. Lo Cicero)(Walters, Christopher) (Filed on 2/22/2013) (Entered: 02/22/2013 ) 0212512013 Order by Hon. Samuel Conti continuing trial and denying 69 Ex Parte Application as moot. (sclc 1, COURT STAFF) (Filed on 2/2512013) (Entered: 02/25/2013 ) 02/25/2013 Set/Reset Hearing Final Pretrial Conference set for 7119/2013 10:00 AM in Courtroom 1, 17th Floor, San Francisco. (sclc1, COURT STAFF) (Filed on 2/25/2013) (Entered: 02/25/2013) 02/26/2013 Set Deadlines/Hearings: Jury Selection set for 7/2312012 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Jury Trial set for 7/23/2013 09:30 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. (tdm, COURT STAFF) (Filed on 2/26/2013) (Entered: 02/26/2013)
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02/26/2013 Set Deadlines/Hearings: Jury Selection set for 7/23/2013 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. (tdm, COURT STAFF) (Filed on 2/26/2013) (Entered: 02/26/2013) 02/26/2013 Set Deadlines/Hearings: Motion Hearing set for 6/7/2013 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. (tdm, COURT STAFF) (Filed on 2/26/2013) (Entered: 02/26/2013) 02/27/2013 74 Joint Discovery Letter Brief filed by Macy's Inc., Macys.com, Inc .. (Attachments: # 1 Exhibit 1)(Walters, Christopher) (Filed on 2/27/2013) (Entered: 02/27/2013) 03/06/2013 75 ORDER Setting Hearing on Joint Discovery Letter Brief: Motion Hearing set for 4118/2013 11 :00 AM before Magistrate Judge Donna M. Ryu. Signed by Magistrate Judge Donna M. Ryu on 03/06/2013. (dmrlcl, COURT STAFF) (Filed on 3/6/2013) (Entered: 03/06/2013) 03112/2013 CLERK'S NOTICE Vacating Motion Hearing Scheduled for Friday, 03115/2013. (tmi, COURT STAFF) (Filed on 3/12/2013) (Entered: 03112/2013) 03/19/2013 Order by Hon. Samuel Conti denying 55 Plaintiffs }\,1acy's, Inc. and Macys.com, Inc.'s Motion for Partial Summary Judgment.(sclc2, COURT STAFF) (Filed on 3/19/2013) (Entered: 03/19/2013) 03/25/2013 STIPULATION WITH PROPOSED ORDER Stipulated Protective Order filed by Macy's Inc., Macys.com, Inc .. (Walters, Christopher) (Filed on 3/25/2013) (Entered: 03/25/2013) 03/26/2013 Order by Hon. Samuel Conti entering Stipulated Protective Order.(sclc2, COURT STAFF) (Filed on 3/26/2013) (Entered: 03/26/2013) ORDER to Submit Supplement to Joint Discovery Letter Brief filed by Macys.com, Inc., Macy's Inc. Signed by Magistrate Judge Donna M. Ryu on 04/03/2013. (drnrlcl, COURT STAFF) (Filed on 4/3/2013) (Entered: 04/03/2013 ) 04/04/2013 M Letter from STRATEGIC MARKS LLC RE SUPPLEMENTAL FILING IN SUPPORT OF THE PARTIES' JOINT DISCOVERY LETTER PER THE COURT'S APRIL 3, 2013 ORDER. (Ashurov, Benjamin) (Filed on 4/4/2013) (Entered: 04/04/2013) 04112/2013 MOTION To Confinn Passage of Expert Report Disclosure Deadline filed by Strategic Marks, LLC. Responses due by 4116/2013. Replies due by 4/22/2013. (Attachments: # 1 Declaration, # 2: Proposed Order)(Ashurov, Benjamin) (Filed on 4112/2013) (Entered: 04112/2013) ,...... __...... ·•···•·· ....· .. i-·· .. ~· .. ~- 04115/2013 ORDER to Submit Statement re Joint Discovery Letter Brief filed by Macys.com, Inc., Macy's Inc. Signed by Magistrate Judge Donna M. Ryu on 04/15/2013. (dmrk1, COURT STAFF) (Filed on 4/15/2013) (Entered: 04/15/2013)
04116/2013 RESPONSE (re MOTION To Confim1 Passage of Expert Report Disclosure Deadline) Plaintiffs' Opposition to Defendant's Motionfor
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Administrative RelieJfiled byMacy's Inc., Macys.com, Inc .. (Attachments: # 1 Proposed Order)(Weng, Gamer) (Filed on 4116/2013) (Entered: 04116/2013) 04/1612013 Letter Brief re Joint Discovery Letter Brief, 2nd Supplemental Filing per Court's April 15, 2013 Order filed byStrategic Marks, LLC. (Attachments: # ; 1 Exhibit Attachment 1 to Defs' 2nd Supplemental Filing Re [DOC 74], #;f. Exhibit Attachment 2 to Defs' 2nd Supplemental Filing Re [DOC 74], # 1. Exhibit Attachment 3 to Defs' 2nd Supplemental Filing Re [DOC 74]) (Related document(s) ) (Ashurov, Benjamin) (Filed on 4/16/2013) (Entered: 04/1612013) 0411712013 86 ORDER to Submit Additional Information Regarding Joint Discovery Letter in Advance of 4118/13 hearing. Signed by Magistrate Judge Donna M. Ryu on 04/1712013. (dmrlc1, COURT STAFF) (Filed on 4/17/2013) (Entered: 04/17/2013)
,~ """"'''''- 04117/2013 87 Order by Hon. Samuel Conti denying Motion to Clarify Order re: Expert Report Deadline. The Expert Report Deadline remains set per Rule 26 at April 24, 2013, given the trial date of July 23, 2013.(sclc2, COURT STAFF) (Filed on 4/17/2013) (Entered: 0411712013) 0411712013 NOTICE of Appearance by Kymberleigh N. Korpus (Korpus, Kymberleigh) (Filed on 4117/2013) (Entered: 04117/2013) 04117/2013 Letter from STRATEGIC MARKS LLC IN RESPONSE TO 411712013 ORDER IDENTIFYING ADDITIONAL REQUESTS FOR ADMISSION WITHDRAWN BY STRATEGIC MARKS. (Ashurov, Benjamin) (Filed on 4117/2013) (Entered: 04117/2013) 04118/2013 Minute Entry: Motion Hearing HELD on 4118/2013 before Donna M. Ryu re Joint Discovery Letter Brief filed by Macys.com, Inc., Macy's Inc. Plaintiffs' Motion for Protective Order Granted in Part. (Court Reporter Diane Skillman) (ig, COURT STAFF) (Date Filed: 4/18/2013) (Entered: 04119/2013) 04/22/2013 Order by Magistrate Judge Donna M. Ryu granting in part Discovery Letter Brief.(dmrlc1, COURT STAFF) (Filed on 4/2212013) (Entered: 04/22/2013) 05/0312013 STIPULATION and Proposed Order selecting Mediation by Macy's Inc., Macys.com, Inc. and Strategic Marks, LLC filed by Macy's Inc., Macys.com, Inc .. (Lo Cicero, Anthony) (Filed on 5/3/2013) (Entered: 05/03/2013)
"~""""""'" 05/0612013 STIPULATION AND ORDER Selecting ADR Process, Case referred to mediation. Signed by Judge Samuel Conti on 05/06/2013. (tmi, COURT STAFF) (Filed on 5/6/2013) (Entered: 05106/2013) 05/07/2013 ADR Clerk's Notice Setting ADR Phone Conference on 5/9/2013 at 11 :30 a.m. Pacific Time. Please note that you must be logged into an ECF account of counsel of record in order to view this document. (cmf, COURT STAFF) (Filed on 5/7/2013) (Entered: 05/07/2013) 05/07/2013 95 ADR Clerk's Notice Setting ADR Phone Conference on 5/1 0/2013 at 11 :30 a.m. Please note the amended date of 511012013. Call-in information remains
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the same. (cmf, COURT STAFF) (Filed on 5/7/2013) (Entered: 05/07/2013)
------.-~.------.--.-.------05/0812013 96 ADR Clerk's Notice Appointing Mark LeHocky as Mediator. (cmf, COURT STAFF) (Filed on 5/8/2013) (Entered: 05108/2013) 05/09/2013 Pre MED phone conference scheduled on 5113/2013 at 8:30 a.m. PST (cmf, COURT STAFF) (Filed on 5/9/2013) (Entered: 05/09/2013) 05/1 0/2013 ADR Remark: ADR Phone Conference held 5/1 0/20 13 by Howard Herman, ADR Program Director. (cmf, COURT STAFF) (Filed on 5/1012013) (Entered: 05/10/2013) 05/1 0/2013 STIPULATION WITH PROPOSED ORDER Re: Joint Stipulation and Request by All Parties to Extend Discovery Deadline for Limited Purposes, filed by Strategic Marks, LLC. (Ashurov, Benjamin) (Filed on 5/1012013) (Entered: 05/1012013) 05113/2013 Order by Hon. Samuel Conti granting Stipulation to Extend Discovery Deadline for Limited Purposes.(tmi, COURT STAFF) (Filed on 5/13/2013) (Entered: 05/13/2013) 0511312013 SetlReset Hearing Mediation Hearing set for 6/5/2013 at 09:00 AM at the Hanson Bridgett offices located at 425 Market Street, 26th Floor, San Francisco, CA. (cmf, COURT STAFF) (Filed on 5/13/2013) (Entered: 05/13/2013) 05115/2013 Transcript of Proceedings held on April 18, 2013, before Judge Donna M. Ryu. Court Reporter Diane E. Skillman, Telephone number 510-451-2930, [email protected]. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Release of Transcript Restriction set for 8113/2013. (Skillman, Diane) (Filed on 511512013) (Entered: 05/15/2013) _._ .... _.. _...... 05/3112013 JURY TRIAL PREPARATION ORDER. Signed by Judge Samuel Conti on 05/3112013. (tmi, COURT STAFF) (Filed on 5/3112013) (Entered: 05/3112013) 06/0412013 ADR Remark: Mediation session scheduled on 6/512013 will commence at 10:00 a.m. (instead of9:00 a.m.). (cmf, COURT STAFF) (Filed on 6/4/2013) (Entered: 06104/2013) 06/11/2013 CERTIFICATION OF MEDIATION Session dated 6/1112013 by Mediator, Mark LeHocky; Mediation session held 6/5/2013; Case did not settle; No further facilitated discussions are expected. (cmf, COURT STAFF) (Filed on 6/11/2013) (Entered: 06/11/2013) 06114/2013 102 Discovery Letter Brief filed by Macy's Inc., Macys.com, Inc .. (Walters, Christopher) (Filed on 6114/2013) (Entered: 06114/2013) 06/15/2013 Discovery Letter Brief filed by Strategic Marks, LLC. (Ashurov, Benjamin)
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(Filed on 6115/2013) (Entered: 06115/2013) 06117/2013 104 ORDER re Discovery Letter Brief filed by Macys.com, Inc., Macy's Inc., Discovery Letter Brief filed by Strategic Marks, LLC. Signed by Magistrate Judge Donna M. Ryu on 611712013. (dmrk1, COURT STAFF) (Filed on 6/17/2013) (Entered: 0611712013) 06/17/2013 Supplemental Brief re Order, filed byStrategic Marks, LLC. (Attachments: # 1 Exhibit, # ~ Exhibit)(Related document(s) ) (Ashurov, Benjamin) (Filed on 611712013) (Entered: 06117/2013) 06117/2013 106 Supplemental Brief re Supplemental Brief filed byStrategic Marks, LLC. (Related document(s) 105) (Ashurov, Benjamin) (Filed on 611712013) (Entered: 06117/2013) 06118/2013 ORDER by Magistrate Judge Donna M. Ryu re , Discovery Letter Briefs. (dmrk1, COURT STAFF) (Filed on 6/18/2013) (Entered: 06/1812013) 06/27/2013 CLERK'S NOTICE Continuing Trial. Jury Selection set for 7/30/2013 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Jury Trial set for 7/30/2013 09:30 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. (tmi, COURT STAFF) (Filed on 6/27/2013) (Additional attachment(s) added on 6/27/2013: # 1 Corrected Notice (tmi, COURT STAFF). (Entered: 06127/2013) 06128/2013 STIPULATION WITH PROPOSED ORDER Re: 2nd Joint Stipulation and Request by All Parties to Extend Discovery Deadline for Limited Purposes, filed by Strategic Marks, LLC. (Ashurov, Benjamin) (Filed on 6/28/2013) (Entered: 06128/2013) 07/0112013 Order by Hon. Samuel Conti granting Stipulation to Extend Discovery Deadline for Limited Purposes.(tmi, COURT STAFF) (Filed on 7/112013) (Entered: 07/0112013) 07/0112013 STIPULATION WITH PROPOSED ORDER Re: Joint Stipulation and Request by All Parties to Continue Trial Date filed by Strategic Marks, LLC. (Ashurov, Benjamin) (Filed on 7/1/2013) (Entered: 07/0112013)
07/0112013 Stipulation is ORDERED AS MODIFIED. The pretrial conference will be held on December 20, 2013, at 10:00 AM.(sclc2, COURT STAFF) (Filed on 7/112013) (Entered: 0710112013)
------~--~------07102/2013 Set Deadlines/Hearings: Jury Selection and Jury Trial set for 1/6/2014 09:30 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. Pretrial Conference set for 12/20/2013 10:00 AM in Courtroom 1, 17th Floor, San Francisco before Hon. Samuel Conti. (tmi, COURT STAFF) (Filed on 7/2/2013) (Entered: 07/02/2013)
PACER Service Center _...... _. __ .._ .... -.-.---.. -----_._----_. Transaction Receipt
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