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)
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
Dockets.Justia.com
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, Tuggles.net, 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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