Google Inc. v. American Blind & Wallpaper Factory, Inc.

Filing 14

Attachment 1
DECLARATION of Rose A. Hagan in Opposition to 13 Defendant's Motion to Dismiss or, Alternatively, to Stay filed by Google Inc.. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D# 5 Exhibit E# 6 Exhibit F)(Related document(s)13) (Page, Michael) (Filed on 3/15/2004)

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Google Inc. v. American Blind & Wallpaper Factory, Inc. Doc. 14 Att. 1 Case 5:03-cv-05340-JF Document 14-2 Filed 03/15/2004 Page 1 of 4 EXHIBIT A Case 5:03-cv-05340-JF Document 14-2 Filed 03/15/2004 KELLEY DRYE & WARREN LLP A LIMITED LIABILITY PARTNERSHIP Page 2 of 4 333 WEST WACKER DRIVE NEW YORK, NY WASHINGTON, DC TYSONS CORNER, VA CHICAGO, ILLINOIS 60606 (312) 857- 7070 LOS ANGELES, CA , STAMFORD, CT PARSIPPANY , NJ 8RUSSELS, BELGIUM SUSAN J. GREENSPON DIRECT LINE: (312) 857- 7080 HONG KONG AFFILIATE OFFICES EMAIL: sgreenspDniS!kelieydrye. cDm BANGKOK , THAILAND JAKARTA, INDONESIA MUMBAI , INDIA TOKYO, JAPAN July 23 , 2002 VIA FACSIMILE 650.618. 1499 AND MAIL Ms. Alana Karen AdWords Trademark Complaints Google 2400 Bayshore Parkway Mountain View, CA 94043 Re: Dear Ms. Karen: American Blind and Wallpaper Factory Trademark Complaints We are trademark counsel to American Blind and Wallpaper Factory, Inc. d/b/a decoratetoday. com , Inc. ("ABWF"). In connection therewith, it has come to our attention that several of ABWF' s competitors have purchased advertising keywords from Google that are identical or substantially similar to ABWF' s registered trademarks. We understand that ABWF contacted Google to resolve this issue and was informed that Google would rectify this situation only if such competitors purchased ABWF' s "full" trademark. As you probably know, federal and state trademark law protects a trademark owner commercial identity (goodwill, reputation and investment in advertising) by giving such owner the exclusive right to use the trademark for its goods or services. What you may not know is that trademark law also protects the trademark owner from any person or entity that uses a trademark resembles a trademark already in use as to keyword, word, name, symbol or device) that so (i.e. in the marketplace. Furthermore, federal law protects be likely to cause confusion or mistake trademarks that are unregistered. ABWF is the owner of and has the exclusive rights to use the following trademarks registered with the United States Patent and Trademark Office ("USPTO" CHO2/CARTSIl1O163 ... Case 5:03-cv-05340-JF Document 14-2 Filed 03/15/2004 Page 3 of 4 KELLEY DRYE & WARREN LLP Ms. Alana Karen July 23 , 2002 Page Two Mark AMERICAN BLIND & W ALLP APER FACTORY Re2. Number 022 925 Re2. Date 12/1 7/96 AMERICAN BLIND FACTORY 1,463 548 2,4 70 542 11/3/87 7/17/01 DECORATETODAY (See enclosed web site pages from the USPTO). ABWF is recognized and well known in the home decorating industry and to consumers nationwide as "American Blind" and "decoratetoday." Many of ABWF' s competitors have exploited the notoriety and success of ABWF, and flagrantly attempted to confuse consumers and capitalize illegally on ABWF goodwill and reputation by purchasing identical or substantially similar keywords from search engines. ABWF has been vigilant in defending its marks from infringement and dilution at all costs. As an example, ABWF was awarded in the matter of Decoratetoday. com, Inc. (d/b/a American Blind and Wallpaper Factory, Inc.) American Blind Accessory Co. , Inc. and Directory One, Inc. Case No. 01-CV-70804,a permanent injunction by the United States District Court for the Eastern District of Michigan permanently enjoining the defendants from using ABWF' s "trademarks, service marks or the word ' American ' in any variation or combination with the word ' Blinds ' either singular or We would be glad to send you a copy of the Permanent Injunction Order if you would pluraL like to read it in its entirety. Please note that ABWF was successful in defending not only its registered marks, but marks that were confusingly similar thereto. Consequently based upon federal law and precedent, use of the following similar marks by Google s advertisers constitutes infringement of ABWF' s registered marks: american blind american blind and wall covering american blind and wallpaper american blind and wallpaper co american blind and wallpaper company american blind and wallpaper discount american blind and wallpaper factory american blind and wallpaper factory discount american blind and wallpaper outlet american blind company american blind discount american blind factory american blind wallpaper american blind wallpaper company american blind wallpaper factory american home decorating american wall covering american wallpaper american wallpaper and blind american wallpaper company american wallpaper discount american wallpaper factory americanblind americanb lindfactory. com am eri canb lindand w allp aperfac tory CHO2/CARTS/IIO163 Case 5:03-cv-05340-JF Document 14-2 Filed 03/15/2004 Page 4 of 4 KELLEY DRYE & WARREN LLP Ms. Alana Karen July 23 , 2002 Page Two americanhom edecorating. com americanwallpaper ameri canwallpaperfactory. com decorate today decorate today discount decoratetoday decorate today. com decoratetoday . com decoratetoday com decoratetodaycom decoratetoday. com In light of the foregoing, we request Google to immediately (a) cease selling ABWF' proprietary marks and marks similar thereto (as set forth above), (b) remove such marks from all campaigns , and (c) remove all advertisers who have purchased such marks (including Wallpaper Wholesaler,, ezblinds, USA Wallpaper, Window Designer, and Blinds Galore). Please contact the undersigned at (312) 857-7080 with regard to how you wish to proceed with this matter. Sincerely, Susan Greenspon SG/sec Enclosures cc: Steve Katzman CHO2/CARTS/llO16.

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