Macy's Inc. et al v. Strategic Marks, LLC

Filing 37

Plaintiffs Macy's, Inc. and Macys.com, Inc.'s ANSWER to Counterclaim of Defendant Strategic Marks, LLC byMacy's Inc., Macys.com, Inc.. (Walters, Christopher) (Filed on 4/23/2012)

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1 AMSTER, ROTHSTEIN & EBENSTEIN LLP ANTHONY F. LO CICERO, NY SBN1084698 2 alocicero@arelaw.com CHESTER ROTHSTEIN, NY SBN2382984 3 crothstein@arelaw.com HOLLY PEKOWSKY, NY SBN2776532 4 hpekowsky@arelaw.com JESSICA CAPASSO, NY SBN4766283 5 jcapasso@arelaw.com 90 Park Avenue 6 New York, NY 10016 Telephone: (212) 336-8000 7 Facsimile: (212) 336-8001 (Admitted Pro Hac Vice) 8 HANSON BRIDGETT LLP 9 GARNER K. WENG, SBN191462 gweng@hansonbridgett.com 10 CHRISTOPHER S. WALTERS, SBN267262 cwalters@hansonbridgett.com 11 425 Market Street, 26th Floor San Francisco, California 94105 12 Telephone: (415) 777-3200 Facsimile: (415) 541-9366 13 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 MACY'S, INC. and MACYS.COM, INC., Case No. CV 11-6198 SC 19 PLAINTIFFS MACY'S, INC. AND MACYS.COM, INC.'S ANSWER TO DEFENDANT STRATEGIC MARKS, LLC'S COUNTERCLAIMS 20 Plaintiffs, v. 21 STRATEGIC MARKS, LLC, 22 Defendant. Judge: Honorable Samuel Conti 23 STRATEGIC MARKS, LLC, 24 Counter-Claimant, 25 v. 26 MACY'S, INC. and MACYS.COM, INC. 27 Counter-Defendants. 28 4270228.1 -1PLTFS' ANSWER TO DFT'S COUNTERCLAIMS Case No. 11-6198 SC 1 Plaintiffs and Counter-Defendants Macy’s, Inc. and Macys.com, Inc. (collectively, 2 “Macy’s”) object to Defendant's filing of a purported Answer and Counterclaims as 3 procedurally improper because Defendant was in default at the time of its filing (and still 4 is in default as of this filing) without having obtained relief from default or otherwise 5 having sought leave of the Court to file. Out of an abundance of caution and in the event 6 the Court is inclined to grant Defendant's pending motion to set aside default, Macy's 7 responds to Defendant and Counter-Claimant Strategic Marks, LLC’s (“Strategic Marks” 8 or “Defendant”) Counterclaims as follows: 9 10 NATURE OF THE ACTION 1. Macy’s admits that Defendant purports to assert claims of trademark 11 infringement and unfair competition arising under 15 U.S.C. § 1051 and federal and State 12 common law. Macy’s denies the remaining allegations of Paragraph 1 of Defendant 13 Strategic Marks’ Counterclaims. 14 2. Macy’s denies the allegations of Paragraph 2 of Defendant Strategic Marks’ 15 Counterclaims. 16 3. Macy’s denies the allegations of Paragraph 3 of Defendant Strategic Marks’ 17 Counterclaims. 18 4. Macy’s denies that Defendant is entitled to the relief requested in 19 Paragraph 4 of Defendant Strategic Marks’ Counterclaims. THE PARTIES 20 21 5. Macy’s admits that Macy’s, Inc. is a corporation organized and existing 22 under the laws of the State of Delaware with a principal place of business at 7 West 23 Seventh Street, Cincinnati, OH 45202 and operates several Macy’s department stores 24 within this Judicial District. 25 6. Macy’s admits that Macys.com, Inc. is a corporation organized and existing 26 under the laws of the State of New York with a principal place of business at 685 Market 27 Street, 8th Floor, San Francisco, CA 94105 and operates the online department store 28 www.macys.com. 4270228.1 -2PLTFS' ANSWER TO DFT'S COUNTERCLAIMS Case No. 11-6198 SC 1 7. Macy’s lacks knowledge or information sufficient to form a belief as to the 2 allegations contained in Paragraph 7 of Defendant Strategic Marks’ Counterclaims, and 3 therefore denies the same. 4 JURISDICTION AND VENUE 5 8. Macy’s admits that Defendant purports to assert claims that arise under the 6 laws contained in Paragraph 8 and that this Court has jurisdiction over the subject matter 7 of this action, but denies the remaining allegations of Paragraph 8 of Defendant Strategic 8 Marks’ Counterclaims. 9 9. Macy’s admits that Macy’s, Inc. and Macys.com, Inc. are subject to the 10 personal jurisdiction of this Court, but denies that its products containing THE 11 BROADWAY mark are infringing. 12 10. Macy’s admits that venue is proper, but denies there is any injury caused to 13 Defendant. 14 FACTUAL BACKGROUND 11. 15 Macy’s lacks knowledge or information sufficient to form a belief as to the 16 allegations contained in Paragraph 11 of Defendant Strategic Marks’ Counterclaims, and 17 therefore denies the same. 12. 18 Macy’s denies the allegations of Paragraph 12 of Defendant Strategic 19 Marks’ Counterclaims. Strategic Marks has never owned rights in THE BROADWAY 20 mark. 21 13. Macy’s admits the allegations of Paragraph 13 of Defendant Strategic 22 Marks’ Counterclaims. 23 14. Macy’s admits the allegations of Paragraph 14 of Defendant Strategic 24 Marks’ Counterclaims. 25 15. Macy’s denies the allegations of Paragraph 15 of Defendant Strategic 26 Marks’ Counterclaims. 27 28 4270228.1 -3PLTFS' ANSWER TO DFT'S COUNTERCLAIMS Case No. 11-6198 SC 1 FIRST CLAIM FOR RELIEF 2 INFRINGEMENT OF FEDERALLY REGISTERED TRADEMARK - 15 U.S.C. § 1114 3 16. Macy’s repeats and realleges its answers to the allegations of paragraphs 1 4 through 15 above as if fully set forth herein. 5 17. Macy’s denies the allegations of Paragraph 17 of Defendant Strategic 6 Marks’ Counterclaims. 7 18. Macy’s denies the allegations of Paragraph 18 of Defendant Strategic 8 Marks’ Counterclaims. 9 19. Macy’s denies the allegations of Paragraph 19 of Defendant Strategic 10 Marks’ Counterclaims. 11 20. Macy’s denies the allegations of Paragraph 20 of Defendant Strategic 12 Marks’ Counterclaims. 13 SECOND CLAIM FOR RELIEF 14 COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 15 21. Macy’s repeats and realleges its answers to the allegations of paragraphs 1 16 through 20 above as if fully set forth herein. 17 22. Macy’s admits that Defendant purports to assert claims of trademark 18 infringement and unfair competition arising under the common law of the State of 19 California. Macy’s denies the remaining allegations of Paragraph 22 of Defendant 20 Strategic Marks’ Counterclaims. 21 23. Macy’s denies the allegations of Paragraph 23 of Defendant Strategic 22 Marks’ Counterclaims. 23 24. Macy’s denies the allegations of Paragraph 24 of Defendant Strategic 24 Marks’ Counterclaims. 25 THIRD CLAIM FOR RELIEF 26 CALIFORNIA BUSINESS AND PROFESSIONS CODE § 17200 et seq. 27 25. Macy’s repeats and realleges its answers to the allegations of paragraphs 1 28 through 24 above as if fully set forth herein. 4270228.1 -4PLTFS' ANSWER TO DFT'S COUNTERCLAIMS Case No. 11-6198 SC 1 26. Macy’s admits that Defendant purports to assert claims of unfair 2 competition arising under California Business and Professions Code Section 17200 et 3 seq. Macy’s denies the remaining allegations of Paragraph 26 of Defendant Strategic 4 Marks’ Counterclaims. 5 27. Macy’s denies the allegations of Paragraph 27 of Defendant Strategic 6 Marks’ Counterclaims. 7 28. Macy’s denies the allegations of Paragraph 28 of Defendant Strategic 8 Marks’ Counterclaims. 9 10 DEMAND FOR JUDGMENT Macy’s denies that Defendant Strategic Marks is entitled to any relief sought in its 11 demand for judgment. 12 13 AFFIRMATIVE DEFENSES Macy’s asserts the following affirmative defenses to Defendant Strategic Marks’ 14 Counterclaims: 15 FIRST AFFIRMATIVE DEFENSE 16 FAILURE TO STATE A CLAIM 17 1. Macy’s alleges that Defendant Strategic Marks has failed to state a claim 18 upon which relief may be granted. 19 SECOND AFFIRMATIVE DEFENSE 20 EQUITABLE ESTOPPEL 21 2. Defendant Strategic Marks is estopped by reason of its conduct, acts, and 22 omissions from recovering on any claims that it may have had against Macy’s. 23 THIRD AFFIRMATIVE DEFENSE 24 INVALIDITY 25 3. Defendant Strategic Marks has no rights in the mark THE BROADWAY. As 26 such, Registration No. 4099878 for THE BROADWAY is invalid. 27 28 4270228.1 -5PLTFS' ANSWER TO DFT'S COUNTERCLAIMS Case No. 11-6198 SC 1 FOURTH AFFIRMATIVE DEFENSE 2 RESERVATION OF DEFENSES 3 4. Macy’s has insufficient information upon which to form a belief as to 4 whether it may have additional unstated Affirmative Defenses. Macy’s reserves the right 5 to assert additional Affirmative Defenses in the event discovery indicates that they are 6 appropriate. 7 PRAYER FOR RELIEF 8 WHEREFORE, Macy’s requests judgment as follows: 9 A. That Defendant Strategic Marks’ Counterclaims be dismissed and that 10 Defendant Strategic Marks takes nothing from them. 11 B. That Macy’s be awarded the relief requested in its Complaint. 12 C. That the Court award such other and further relief as the Court deems just 13 and proper. 14 15 DATED: April 23, 2012 HANSON BRIDGETT LLP 16 17 18 19 20 By: /s/ Christopher S. Walters GARNER K. WENG CHRISTOPHER S. WALTERS Attorneys for Plaintiffs MACY'S, INC. and MACYS.COM, INC. 21 22 23 24 25 26 27 28 4270228.1 -6PLTFS' ANSWER TO DFT'S COUNTERCLAIMS Case No. 11-6198 SC

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