CVG-SAB, LLC v. Facebook, Inc.

Filing 1

COMPLAINT filed by CVG-SAB, LLC against CVG-SAB, LLC. Plaintiff requests summons issued. Receipt No: 0645-3761423 - Fee: $ 350. County of 1st Plaintiff: Oakland - County of 1st Defendant: Out of State. [Previously dismissed case: No] [Possible companion case(s): None] (Attachments: # 1 Index of Exhibits Index of Exhibits, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F) (Cleland, James) Modified on 10/15/2012 (PMil).[COMPLAINT FILED AGAINST FACEBOOK, INC.]

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN

CVG-SAB, LLC,
Case No.: 2:12-cv-14521

Plaintiff,
v.
FACEBOOK INC.
Defendant.

COMPLAINT
Plaintiff CVG-SAB, LLC, for its complaint against Defendant Facebook Inc., alleges as
follows:
INTRODUCTION
1.

Plaintiff uses and owns WANT as a trademark in connection with services that

allow Internet users to express their purchase intent for products and services offered on the sites
of Plaintiff’s customers and on Plaintiff’s site. Plaintiff’s WANT services are activated when
Internet users click on Plaintiff’s WANT Button near a desired product and/or service. By doing
so, consumers create and add to a comprehensive list of their preferred products and services.
Plaintiff has spent substantial time, money, and effort developing its WANT Button services and
in creating, maintaining, and strengthening the source-identifying goodwill associated with its
WANT Button services.
2.

Just days ago, Facebook introduced a WANT Button for services that are

effectively the same as, or at least closely related to, Plaintiff’s WANT Button services.
Facebook’s unauthorized use of Plaintiff’s WANT mark has already caused actual confusion in

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the marketplace, to Plaintiff’s substantial and irreparable harm. Facebook’s conduct is
intentional, as it had prior knowledge of Plaintiff’s use of, and superior rights in, Plaintiff’s
WANT mark. Despite such knowledge, Facebook forged ahead in disregard of Plaintiff’s
trademark rights.
3.

This Complaint seeks full legal and equitable redress for Facebook’s violations of

the Lanham Act, the Common Law of the State of Michigan, and the Michigan Consumer
Protection Act.
PARTIES
4.

Plaintiff is a limited liability company organized under the laws of the state of

Michigan, with a principal place of business in Farmington Hills, Michigan.
5.

On information and belief, Facebook is a corporation organized under the laws of

the State of Delaware, with its principal place of business in Palo Alto, California.
JURISDICTION AND VENUE
6.

This Court has subject matter jurisdiction under 15 U.S.C. § 1121, 28 U.S.C.

§ 1331, 28 U.S.C. § 1338, and 28 U.S.C. § 1367.
7.

This Court has personal jurisdiction over Defendant Facebook in that Facebook

has engaged in, and continues to engage in, the transaction of business and in the commission of
tortious acts in interstate commerce and in Michigan. Facebook’s business and acts have caused,
and continue to cause, injury to Plaintiff within the State of Michigan.
8.

Venue is proper under 28 U.S.C. § 1391(a) and/or (b).

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PLAINTIFF’S BUSINESS AND ITS ‘WANT’ MARK
9.

Plaintiff is a social media company that contracts with Internet retail merchants,

and does business directly with Internet users, to allow users to express their purchasing intent
for products and services offered by Internet merchants. Plaintiff does business under the trade
names Want Technologies, WantButton, Want, TheWantlist, and The Want List.
10.

Since at least as early as September 16, 2010, Plaintiff has used WANT as a mark

in connection with an electronic button that is placed on the website of Plaintiff’s customers
(Internet merchants) next to their products and services. Internet merchants who are interested in
Plaintiff’s WANT Button services can contract with Plaintiff through Plaintiff’s website
http://www.wantbutton.com. Upon agreeing to Plaintiff’s Terms of Services, Plaintiff’s
customers can place Plaintiff’s WANT Button on their websites for use by visitors. An example
of Plaintiff’s WANT Button on one of its customers’ sites (Tommy Bahama) is shown below:

3

11.

When a visitor sees a product or service of interest, the visitor can click on

Plaintiff’s nearby WANT Button to indicate a preference or purchasing intent for the product or
service. Every item added by clicking on Plaintiff’s WANT Button can be posted to the user’s
profile on www.wanttt.com and on Facebook’s Timeline. Thus, Plaintiff’s WANT Button
services allow consumers to keep a universal list of desired products and services in a central
location.
12.

Plaintiff’s customers include well-known companies with some of the most

highly-trafficked sites on the web today, including: Tommy Bahama; Burlington Coat Factory;
Sharper Image; Calico Corners; Dermstore; frederick’s of Hollywood; acer; and Plow & Hearth.
Screen shots of these companies’ use of Plaintiff’s WANT Button are collected at Exh. A.
13.

Plaintiff also operates http://www.wanttt.com, where Internet users can click on

Plaintiff’s WANT Button to indicate a preference or purchasing intent for products or services
offered by Plaintiff’s customers. A representative screen shot from Plaintiff’s site is shown
below:

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14.

Plaintiff and its customers have used Plaintiff’s WANT Button as a mark

continuously since the date of first use. Since Plaintiff introduced its WANT Button services,
Plaintiff’s WANT Button services have enjoyed substantial commercial success and exposure.
For example:
a. Over 160 million WANT Button views;
b. Over 40 million consumer visits to merchant sites that include Plaintiff’s WANT
Button; and
c. Over 28 million unique consumer visits to merchant sites that include Plaintiff’s
WANT Button.
15.

Because of (among other things) the length of time of Plaintiff’s and its

customers’ exclusive, continuous, and prominent use of its WANT Button, and the great number
of commercial impressions of the WANT Button, Plaintiff’s WANT Button service mark is a
source-identifying symbol that enjoys substantial goodwill among Plaintiff’s customers and
Internet users. Plaintiff uses, and permits its customers to use, its WANT Button service mark as
a source-indicating vehicle to distinguish Plaintiff’s services from others. Such use vests in
Plaintiff substantial common-law rights in its WANT Button service mark.
PLAINTIFF’S FEDERAL TRADEMARK REGISTRATIONS
AND APPLICATIONS FOR ITS ‘WANT’ MARK
16.

Plaintiff owns two US trademark registrations for WANT, in standard characters,

for use in connection with various aspects of e-commerce that directly relate to and support
Plaintiff’s business. The marks are registered on the Principal Register. More specifically:
a. On September 4, 2012, the US Patent & Trademark Office issued US Trademark
No. 4,200,861 (Exh. B) for WANT for use in connection with the goods and/or
services listed therein, including: “managing a computer-based system that

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enable the existen of a com
es
nce
mmercial-bas on-line c
sed
community o retail
of
consu
umers where users can cr
reate virtual lists of desir goods an services b
red
nd
based
upon their consum
t
mer-based in
nterests and o
opinions;” an “providin mobile ac
nd
ng
ccess
to on-line commu
unities for pro
oviding and sharing con
nsumer-based opinions a
d
and
interests and for accessing the consumer-b
a
e
based opinio and inter
ons
rests of other
rs.”
Plaint owns the Registration
tiff
e
n.
b. On Fe
ebruary 22, 2011, the US Patent & T
2
S
Trademark O
Office issued US Tradem
mark
No. 3,
,923,229 (Ex C) for WANT for us in connect
xh.
W
se
tion with the goods and/
e
/or
servic listed the
ces
erein. Plaintif owns the R
ff
Registration
n.
17.

Plaint owns two US tradem
tiff
o
mark registrat
tions for WA
ANT in stylized versions for
s

use in connection wit various as
th
spects of e-c
commerce th directly re
hat
elate to and support
Plaintiff’s business. The marks are registered on the Prin
T
a
d
ncipal Regist More spe
ter.
ecifically:
a. On Se
eptember 25, 2012, the US Patent & Trademark Office issue US Tradem
,
U
ed
mark

No. 4,
,212,509 (Ex D) for
xh.

or
nnection with the goods
h
fo use in con

and/or services lis therein, including: “
r
sted
“managing a computer-b
based system that
m
enable the existen of a com
es
nce
mmercial-bas on-line c
sed
community o retail
of
consu
umers where users can cr
reate virtual lists of desir goods an services b
red
nd
based
upon their consum
t
mer-based in
nterests and o
opinions;” an “providin mobile ac
nd
ng
ccess
to on-line commu
unities for pro
oviding and sharing con
nsumer-based opinions a
d
and
interests and for accessing the consumer-b
a
e
based opinio and inter
ons
rests of other
rs.”.
Plaint owns the Registration
tiff
e
n.

6

b. On March 8, 2011 the US Pat & Trade
M
1,
tent
emark Office issued US Trademark No.
3,928,751 (Exh. E) for
E

for use in connecti with the goods and/o
e
ion
or

ces
erein. Plaintif owns the R
ff
Registration
n.
servic listed the
18.

By vir of 15 U.S.C. §1072, Plaintiff’s R
rtue
,
Registration on the Pri
ns
incipal Regi
ister

constitut constructi notice of Plaintiff’s claim of ow
te
ive
f
wnership of the register marks. In
red
n
addition, as will be seen below, Facebook had actual k
,
s
h
knowledge o Plaintiff’s use and cla
of
s
aim
of owner
rship in WA
ANT as a ma for (at le
ark
east) those g
goods and/or services listed in
r
Plaintiff’ Registrati
’s
ions.
19.

Plaint owns thre US tradem
tiff
ee
mark applica
ations for W
WANT, in sta
andard charac
cters,

for use in connection with variou aspects of e-commerce that directly relate to a support
n
n
us
f
and
Plaintiff’s business. More specifi
M
ically:
a. Serial No. 854505 for WAN for use in connection with the go
l
500
NT
n
n
oods and/or
servic listed the
ces
erein. The ap
pplication is p
pending.
b. Serial No. 857378 for WAN for use in connection with the go
l
849
NT
n
n
oods and/or
servic listed the
ces
erein. The ap
pplication is p
pending.
c. Serial No. 857378 for WAN for use in connection with the go
l
835
NT
n
n
oods and/or
servic listed the
ces
erein. The ap
pplication is p
pending.
20.

Plaint owns fou US tradem
tiff
ur
mark applicat
tions for WA
ANT in styli
ized versions for
s

th
spects of e-c
commerce th directly re
hat
elate to and support
use in connection wit various as
Plaintiff’s business. More specifi
M
ically:
a. Serial No. 857378 for
l
889

for u in connec
use
ction with th goods and
he
d/or

servic listed the
ces
erein. The ap
pplication is p
pending.

7

b. Serial No. 857378 for
l
881

for u in connec
use
ction with th goods and
he
d/or

servic listed the
ces
erein. The ap
pplication is p
pending.
c. Serial No. 857378 for
l
865

for u in connec
use
ction with th goods and
he
d/or

servic listed the
ces
erein. The ap
pplication is p
pending.

d. Serial No. 854501 for
l
160

for u in connec
use
ction with th goods and
he
d/or

servic listed the
ces
erein. The ap
pplication is p
pending.
FACEBOOK’S UNAUT
THORIZED U SE OF ‘WA
ANT’
AS A MARK FOR CLOSELY-REL
A
L
LATED SERV
VICES
21.

On inf
formation an belief, on or about Oc
nd
n
ctober 8, 201 Facebook began usin a
12,
k
ng

WANT Button that users on Face
B
u
ebook’s web site can cli ck on to exp
b
press their pu
urchasing int
terest
in the ret
tailer’s produ or service. Upon clic
uct
cking the WA
ANT Button that is place near the
n
ed
product or service of interest, the article is ad
o
f
e
dded to the u
user’s Facebo wish lis
ook
st.
22.

Exam
mples of how Facebook, through one of its merch custome product feeds
t
hant
er’s

on Faceb
book (Pottery Barn), uses the WANT Button is s hown below
y
s
T
w:
(continued on nex page)
xt

8

23.

Anoth example of Facebook use of its WANT Button is on Neiman Marc
her
k’s
s
u
cus’

product feed on Face
f
ebook:

9

24.

Other retailers through which Facebook uses a WANT Button are: Wayfair.com;

Victoria’s Secret, Michael Kors, Smith Optics, and Fab.com.
25.

Plaintiff has not consented to, licensed, permitted, or authorized Facebook’s use

of the WANT Button.
26.

On information and belief, Facebook adopted and uses its WANT Button to

mislead and confuse consumers into believing that either: (a) by virtue of its size and market
penetration, Facebook is the senior user of the WANT Button and that all others are unauthorized
junior users; or (b) the services offered by Facebook under the WANT Button originate from
Plaintiff, are affiliated, connected, or associated with Plaintiff, or are sponsored or approved by
Plaintiff.
FACEBOOK’S UNLAWFUL CONDUCT HAS ALREADY CAUSED ACTUAL CONFUSION
27.

Despite the fact that Facebook has only recently launched a WANT Button, there

have already been instances of actual confusion in the marketplace. For example:
a. On October 8, 2012, Plaintiff received an email from an individual who included
a link to an article on huffingtonpost.com about Facebook’s introduction of a
WANT Button. The subject of the email was “WANT button in the news!” The
author of the email wrote:
I saw that the WANT button ended up in the Huffington Post today, but
they’re calling it Collections? Is this something different than your
platform?
The article is at http://www.huffingtonpost.com/2012/10/08/facebook-wantbutton_n_1949366.html?utm_hp_ref=technology.

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b. On October 9, 2012, Plaintiff received an email with the Subject heading
“Facebook Begins Testing ‘Want’ Button,” and a link to an article on
Dailytech.com. The author asked:
Is this you??? If so, WOW!!
The article is at
http://www.dailytech.com/Facebook+Begins+Testing+Want+Button/article27885
.htm.
c. On October 9, 2012, Plaintiff received an email that included a link to an article
on businessinsider.com that had come out earlier that day. The author of the email
said:
[S]aw this come out earlier. What’s the future of wantbutton.com? Looks
similar to what FB just launched.

The article is at: http://www.businessinsider.com/what-facebooks-want-buttonwill-look-like-2012-10.
FACEBOOK HAS EMBARKED ON ITS UNLAWFUL CONDUCT WITH ACTUAL KNOWLEDGE
OF PLAINTIFF’S USE OF, AND SUPERIOR RIGHTS IN, PLAINTIFF’S ‘WANT’ BUTTON
28.

On information and belief, Facebook had actual knowledge of Plaintiff’s use of,

and superior rights in, Plaintiff’s WANT Button services at least as early as September 2011. In
that month, Facebook announced its Timeline Integration. That same month, Plaintiff promptly
applied with Facebook for integration of its WANT Button services, and in the process, notified
Facebook of Plaintiff’s WANT Button services. Facebook approved Plaintiff’s application in
February 2012.
29.

Moreover, on December 8, 2011, a representative of Facebook’s Legal

Department contacted Plaintiff to address Plaintiff’s use of Facebook’s “

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” logo near

Plaintiff’s WANT Button services. (See Exh. F.) She wrote: “I write regarding your promotion
of your ‘Want’ button using our highly recognizable F logo.” (Emphasis added.) Facebook
expressed its concern that Plaintiff’s use of the logo made it look as if Plaintiff’s WANT Button
service was “an official Facebook application[] or endorsed or sponsored by Facebook.”
Facebook continued, “It is in both our interest that you develop your own distinctive branding.”
She then advised (among other things) that “you may not combine our F logo with your logo, or
incorporate our logo into the lockups for your ‘want’ button.” (Emphasis added.)
30.

Later that day, within just hours after receiving Facebook’s communication,

Plaintiff explained that it used Facebook’s logo in the good faith believe that the use complied
with Facebook’s guidelines but that the guidelines had apparently changed. Regardless, Plaintiff
immediately and fully complied with Facebook’s request.
31.

Facebook responded favorably five days later, on December 13, 2011: “Thank

you very much for your message and your prompt action to resolve this matter.”
32.

Therefore, at least as early as December 8, 2011, Facebook – and Facebook’s

Legal Department, no less – had actual knowledge of Plaintiff’s then-existing use of Plaintiff’s
WANT Button services. Moreover, Facebook’s knowledge resulted from an evaluation of the
intellectual property issues raised by Plaintiff’s use of Facebook’s trademark.

COUNT I:
TRADEMARK INFRINGEMENT, IN VIOLATION OF 15 U.S.C. § 1114(1)
33.

Plaintiff re-alleges and incorporates paragraphs 1 through 32 above as though

fully set forth herein.
34.

Facebook’s unlawful conduct set forth above is likely to cause confusion (forward

or reverse), to cause mistake, and/or to deceive the public, in violation of 15 U.S.C. § 1114(1).

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35.

Facebook’s unlawful conduct set forth above in disregard of Plaintiff’s superior

rights has been knowing, intentional, and willful.
36.

Plaintiff has suffered, and is likely to continue suffering, financial and other harm

and injury, including irreparable harm and injury, if Facebook is not temporarily, preliminarily ,
and permanently enjoined from continuing its unlawful conduct set forth above.
COUNT II:
FALSE DESIGNATION OF ORIGIN, IN VIOLATION OF 15 U.S.C. § 1125(A)
37.

Plaintiff re-alleges and incorporates paragraphs 1 through 36 above as though

fully set forth herein.
38.

Facebook has used, and is using, a false designation or origin that is likely to

cause confusion, to cause mistake, and/or to deceive the relevant public as to the affiliation,
connection, or association of Facebook with Plaintiff, or as to the origin, sponsorship, or
approval of its WANT services by Plaintiff, in violation of 15 U.S.C. § 1125(a).
39.

Facebook’s unlawful conduct set forth above in disregard of Plaintiff’s superior

rights has been knowing, intentional, and willful.
40.

Plaintiff has suffered, and is likely to continue suffering, financial and other harm

and injury, including irreparable harm and injury, if Facebook is not temporarily, preliminarily ,
and permanently enjoined from continuing its unlawful conduct set forth above.
COUNT III:
COMMON LAW UNFAIR COMPETITION
41.

Plaintiff re-alleges and incorporates paragraphs 1 through 40 above as though

fully set forth herein.
42.

Facebook has competed, and continues to compete, unfairly with Plaintiff by its

unlawful conduct set forth above, in violation of Michigan common law.

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43.

Facebook’s unlawful conduct set forth above in disregard of Plaintiff’s superior

rights has been knowing, intentional, and willful.
44.

Plaintiff has suffered, and is likely to continue suffering, financial and other harm

and injury, including irreparable harm and injury, if Facebook is not temporarily, preliminarily ,
and permanently enjoined from continuing its unlawful conduct set forth above.
COUNT IV:
COMMON LAW TRADEMARK INFRINGEMENT
45.

Plaintiff re-alleges and incorporates paragraphs 1 through 44 above as though

fully set forth herein.
46.

Facebook has infringed Plaintiff’s trademark rights, and continues to infringe

Plaintiff’s trademark rights, by its unlawful conduct set forth above, in violation of Michigan
common law.
47.

Facebook’s unlawful conduct set forth above in disregard of Plaintiff’s superior

rights has been knowing, intentional, and willful.
48.

Plaintiff has suffered, and is likely to continue suffering, financial and other harm

and injury, including irreparable harm and injury, if Facebook is not temporarily, preliminarily ,
and permanently enjoined from continuing its unlawful conduct set forth above.
COUNT V:
VIOLATION OF THE MICHIGAN CONSUMER PROTECTION ACT, MICH. COMP. LAWS § 445.903
49.

Plaintiff re-alleges and incorporates paragraphs 1 through 48 above as though

fully set forth herein.
50.

As a result of its unlawful actions set forth above, Facebook has violated, and

continues to violate, the Michigan Consumer Protection Act by engaging in unfair and deceptive
methods, acts, and practices in the conduct of trade or commerce.

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51.

Facebook’s unfair and deceptive methods, acts, and practices have the effects of

(1) causing a probability of confusion or misunderstanding as to the source, sponsorship,
approval, or certification of the WANT Button services offered by Facebook; and (2) falsely
representing that the WANT Button services offered by Facebook have the sponsorship or
approval of Plaintiff.
52.

Facebook’s unlawful conduct set forth above in disregard of Plaintiff’s superior

rights has been knowing, intentional, and willful.
53.

Plaintiff has suffered, and is likely to continue suffering, financial and other harm

and injury, including irreparable harm and injury, if Facebook is not temporarily, preliminarily ,
and permanently enjoined from continuing its unlawful conduct set forth above.
PRAYER FOR RELIEF
THEREFORE, Plaintiff respectfully requests that the Court enter judgment in its favor
and against Facebook:
A.

Temporarily, preliminarily, and permanently enjoining Facebook, its officers,

agents, servants, employees, attorneys, and all other persons who are in active concert or
participation with any of the above, from using as a mark Plaintiff’s WANT Button service mark
– including its WANT Button – or any variation thereof, or any other designation that is
confusingly similar to Plaintiff WANT mark;
B.

Temporarily, preliminarily, and permanently enjoining all entities that have

contracted with Facebook to use Facebook’s infringing use of WANT as a mark;
C.

Directing Facebook to destroy any and all physical and electronic copies

(including computer code) of the infringing WANT Button that is in Facebook’s possession,
custody, or control;

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D.

Directing Facebook to instruct its customers to return to Facebook any and all

physical and electronic copies of the infringing WANT Button that is in its customers’
possession, custody, or control for destruction by Facebook (as per C., above).
E.

Awarding Plaintiff its actual damages;

F.

Awarding Plaintiff the profits that Facebook has realized through its unlawful

conduct;
G.

Awarding Plaintiff its attorneys fees and increasing the award of Plaintiff’s

damages and/or Facebook’s profits by virtue of the exceptional nature of this case;
H.

Directing Facebook to pay all costs incurred by Plaintiff related to this

proceeding; and
I.

Awarding such other relief as the Court may deem just and proper.

Dated: October 12, 2012

/s/James K. Cleland
James K. Cleland (P68507)
[e-mail]
Michael N. Spink (P66527)
[e-mail]
Jon Beaupré (P66389)
[e-mail]
BRINKS HOFER GILSON & LIONE
524 S. Main Street, Suite 200
Ann Arbor, Michigan 48104
Tel: [phone]
John T. Gabrielides
[e-mail]
Jeffrey Catalano
[e-mail]
Andrew J. Avsec
[e-mail]
Danielle Cendrowski
[e-mail]
BRINKS HOFER GILSON & LIONE
455 N. Cityfront Plaza Drive

16

Suite 3600
Chicago, IL 60611
Tel: [phone]

Attorneys for Plaintiff

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