Gotham Licensing Group, LLC v. 7525419 Canada Inc.

Filing 1

COMPLAINT against 7525419 Canada Inc.. (Filing Fee $ 350.00, Receipt Number 465401025260)Document filed by Gotham Licensing Group, LLC.(rdz)

4. Upon information and belief, Defendant 7525419 Canada Inc. d/b/a Beyond
the Rack is a corporation organized and existing under the laws of Canada, maintaining
a place of business at 368 Isabey Street, St-Laurent, Canada H4T 1W1.
5. Upon information and belief, Defendant also has a place of business in this
judicial district at 1001 Avenue of the Americas, New York, New York 10018.
6. Defendant conducts its business over the internet through its website at
http://www.beyondtherack.com/, through which it sells products to its members
throughout the country.
7. Defendant transacts business within this district, derives revenue from
intrastate and interstate commerce, and has committed tortious acts within this district
and also without this district having consequences within this district, and said
Defendant is otherwise within the jurisdiction of this Court.
FACTS COMMON TO ALL COUNTS
GOTHAM AND ITS TRADEMARKS
8. Gotham is a well-known designer of clothing and related fashion accessories.
Gotham designs, manufactures, promotes, licenses and sells clothing under various
trademarks in the U.S. and throughout the world, including the marks set below.
9. On or about January 21, 1997, the DOLLHOUSE mark was registered as a
trademark for use in connection with pants, jeans, leggings, stirrup pants, shorts, skirts,
split shorts, split skirts, vests, shirts, t-shirts, blouses, sweaters and jackets with the
United States Patent and Trademark Office. Gotham’s registration for the
DOLLHOUSE mark, No. 2,032,709, remains in full force and effect and is incontestable.
A copy of this registration is attached as Exhibit A.

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10. On or about November 3, 1998, the DOLLHOUSE mark was registered as a
trademark for use in connection with eyeglasses and sunglasses, jewelry and watches,
and leather goods with the United States Patent and Trademark Office. Gotham’s
registration for the DOLLHOUSE mark, No. 2,201,406, remains in full force and effect
and is incontestable. A copy of this registration is attached as Exhibit B.
11. On or about November 3, 1998, the DOLLHOUSE mark was registered as a
trademark for use in connection with retail store services in the field of apparel,
footwear, bags, jewelry and cosmetics and perfumes with the United States Patent and
Trademark Office. Gotham’s registration for the DOLLHOUSE mark, No. 2,201,405,
remains in full force and effect and is incontestable. A copy of this registration is
attached as Exhibit C.
12. On or about November 12, 2002, the DOLLHOUSE mark was registered as
a trademark for use in connection with underwear, robes, sleepwear, briefs, string
bikinis, camisoles, tank tops, bras, panties, socks, panty hose, tights, stocking, slipper
socks, dresses, rompers, jumpsuit, swim suits, scarves, hats and gloves with the United
States Patent and Trademark Office. Gotham’s registration for the DOLLHOUSE mark,
No. 2,648,406, remains in full force and effect and is incontestable. A copy of this
registration is attached as Exhibit D.
13. On or about April 11, 2006, the DOLLHOUSE mark was registered as a
trademark for use in connection with footwear and shoes with the United States Patent
and Trademark Office. Gotham’s registration for the DOLLHOUSE mark, No.
3,079,142, remains in full force and effect. A copy of this registration is attached as
Exhibit E.

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14. On or about January 10, 2006, the “Dollhouse Girl Head” design shown
below

was registered as a trademark for use in connection with pants, jeans, shorts, skirts,
dresses, rompers, tops, shirts, sweat pants, sweat shirts, t-shirts, sweaters, jackets,
underwear, robes, sleepwear, briefs, camisoles, bras, panties, socks, tights, pantyhose,
slipper socks, swimsuits, scarves, gloves, hats; and shoes with the United States Patent
and Trademark Office. Gotham’s registration for the “Dollhouse Girl Head” design, No.
3,040,388, remains in full force and effect. A copy of this registration is attached as
Exhibit F.
15. On or about November 25, 2008, the “Dollhouse Silhouette” design shown
below

was registered as a trademark for use in connection with cargo pants; denim jackets;
jeans; knit shirts; leather jackets; pants; footwear; hosiery; long sleeved and short
sleeved t-shirts; t-shirts and vests with the United States Patent and Trademark Office.

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Gotham’s registration for the “Dollhouse Silhouette” design, No. 3,537,556, remains in
full force and effect. A copy of this registration is attached as Exhibit G.
16. On or about July 9, 2002, the BLUE JEANS AND ROCK & ROLL mark was
registered as a trademark for use in connection with jeans, jackets and shirts with the
United States Patent and Trademark Office. Gotham’s registration for the BLUE JEANS
AND ROCK & ROLL mark, No. 2,591,388, remains in full force and effect and is
incontestable. A copy of this registration is attached as Exhibit H.
17. On or about January 23, 2007, the YOU ARE BEAUTIFUL mark was
registered as a trademark for use in connection with jeans, jackets and shirts with the
United States Patent and Trademark Office. Gotham’s registration for the YOU ARE
BEAUTIFUL mark, No. 3,202,169, remains in full force and effect. A copy of this
registration is attached as Exhibit I.
18. Herein, the foregoing DOLLHOUSE, “Dollhouse Girl Head” design;
Dollhouse Silhouette design; BLUE JEANS AND ROCK & ROLL and YOU ARE
BEAUTIFUL marks are collectively referred to as the “DOLLHOUSE Marks”.
19. Since at least as early as 1995, apparel and related goods bearing the
DOLLHOUSE mark have been widely advertised, offered for sale and sold throughout
the United States.
20. DOLLHOUSE branded products are offered for sale at retailers such as
Macy’s, Charlotte Russe, Wet Seal, Deb Shops, TJ Maxx and Marshall’s, online
retailers such as www.thedenimshop.com, and has been featured in publications such
as Nylon, Seventeen, Lucky, Teen Vogue, Women’s Wear Daily, Cosmo Girl and
InStyle.

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21. DOLLHOUSE branded apparel and related goods are also promoted and
offered for sale on the website at www.dollhouse.com. DOLLHOUSE products are, in
part, offered on the www.dollhouse.com website as part of “flash sales,” or sales of
limited duration announced with little notice.
22. As a result of Gotham’s exclusive and extensive use and promotion of the
DOLLHOUSE Marks, these trademarks have acquired enormous value and recognition
in the United States and throughout the world. The DOLLHOUSE Marks are wellknown to the consuming public and trade as identifying and distinguishing Gotham as
the source of the high quality products to which the DOLLHOUSE Marks are applied.
The DOLLHOUSE Marks are both distinctive and famous.
DEFENDANT AND ITS WRONGFUL ACTS
23. Defendant is a so-called “flash retailer” of apparel and accessories. Upon
information and belief, each day Defendant offers approximately fifteen new sales
events featuring various apparel and accessory items. During the sales events,
products are offered at deep discounts. These sales events are open only to members
of Defendant’s website and last for about forty-eight hours.
24. Upon information and belief, Defendant has over five million members, many
of whom are located in this judicial district.
25. Defendant, without the consent of Gotham, designed, manufactured,
distributed, advertised, offered for sale and sold, throughout the United States, apparel
bearing infringements and or counterfeits of the DOLLHOUSE Marks (the “Counterfeit
Goods”). The Counterfeit Goods are apparel not designed or manufactured by Gotham

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or with Gotham’s permission, bearing identical reproductions of the DOLLHOUSE
Marks.
26. Attached as Exhibits J through N are photographs of Counterfeit Goods
purchased through Defendant’s website. Also included are photographs of the tags and
packaging for the Counterfeit Goods. The DOLLHOUSE Marks appear on the
Counterfeit Goods themselves, as well as the tags and packaging therefor.
27. The Counterfeit Goods bear Gotham’s RN number. Gotham has not
authorized the use of its RN number on the Counterfeit Goods.
28. Attached as Exhibit O are packing slips for orders for the Counterfeit Goods
placed with Defendant.
29. Defendant distributed, advertised, offered for sale and sold the Counterfeit
Goods through its website at www.beyondtherack.com.
30. Defendant has sold and continues to sell the aforementioned counterfeit
products in New York and throughout the United States.

COUNT I [TRADEMARK COUNTERFEITING]
31. Plaintiff repeats and realleges each allegation in paragraphs 1-30 as if set
forth in full herein.
32. Plaintiff has never authorized Defendant to use any of Plaintiff’s trademarks,
to apply any of Plaintiff’s trademarks to products or to sell products bearing any of
Plaintiff’s trademarks.

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33. Defendant has sold the Counterfeit Goods which bear the DOLLHOUSE
Marks in a manner that is identical to or substantially indistinguishable from the
registered DOLLHOUSE Marks.
34. Upon information and belief, Defendant’s acts have been done willfully and
intentionally, with full knowledge of Plaintiff’s trademark rights.
35. Defendant’s continuation of its infringing acts has caused and will cause
Plaintiff irreparable harm and injury.
36. Defendants have improperly sold the Counterfeit Goods with the intent to
cause confusion and mistake, to deceive and mislead the trade and the purchasing
public and to improperly appropriate Plaintiff’s valuable trademark rights.
37. Defendant’s said acts violate Section 32 of the Lanham Act, 15 U.S.C. §
1114.
38. Defendant’s wrongful acts have injured Plaintiff in an amount thus far not
determined, but if continued will result in damages of at least $5 million. Further,
Defendant’s wrongful acts have caused and will continue to cause Plaintiff to suffer
irreparable harm for which it has no adequate remedy at law.

COUNT II [TRADEMARK INFRINGEMENT]
39. Plaintiff repeats and realleges each allegation in paragraphs 1-38 as if set
forth in full herein.
40. Plaintiff has never authorized Defendant to use any of Plaintiff’s trademarks,
to apply any of Plaintiff’s trademarks to products or to sell products bearing any of
Plaintiff’s trademarks.

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41. Upon information and belief, Defendant’s acts have been done willfully and
intentionally, with full knowledge of Plaintiff’s trademark rights.
42. Defendant’s continuation of its infringing acts has caused and will cause
Plaintiff irreparable harm and injury.
43. Defendants have improperly sold the Counterfeit Goods with the intent to
cause confusion and mistake, to deceive and mislead the trade and the purchasing
public and to improperly appropriate Plaintiff’s valuable trademark rights.
44. Defendant’s said acts violate Section 32 of the Lanham Act, 15 U.S.C. §
1114.
45. Defendant’s wrongful acts have injured Plaintiff in an amount thus far not
determined, but if continued will result in damages of at least $5 million. Further,
Defendant’s wrongful acts have caused and will continue to cause Plaintiff to suffer
irreparable harm for which it has no adequate remedy at law.

COUNT III [FALSE DESIGNATION OF ORIGIN]
46. Plaintiff repeats and realleges each allegation in paragraphs 1-45 as if set
forth in full herein.
47. Defendants’ efforts to misrepresent themselves as a legitimate source of the
items bearing the DOLLHOUSE Marks takes control of the reputation and goodwill of
those products away from Gotham, which owns and is responsible for the goodwill of
the DOLLHOUSE Marks in the United States and elsewhere in the world.
48. Defendants have improperly sold goods bearing the DOLLHOUSE Marks
that are the subject of Gotham’s trademark registrations with the intent to cause

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confusion and mistake, to deceive and mislead trade and the purchasing public and to
improperly appropriate Plaintiff’s valuable trademark rights.
49. Defendants’ said acts violate Section 43 (a) of the Lanham Act, 15 U.S.C. §
1125 (a).
50. Defendant’s wrongful acts have injured Plaintiff in an amount thus far not
determined, but if continued will result in damages of at least $5 million. Further,
Defendant’s wrongful acts have caused and will continue to cause Plaintiff to suffer
irreparable harm for which it has no adequate remedy at law.

COUNT IV [COMMON LAW UNFAIR COMPETITION]
51. Plaintiff repeats each allegation in paragraphs 1-50 as if set forth in full
herein.
52. As a result of Defendants’ improper sale of goods bearing Gotham’s
registered DOLLHOUSE Marks, the purchasing public is likely to buy the Counterfeit
Goods in the erroneous belief that they are authorized by Gotham or are otherwise
associated with Gotham.
53. Upon information and belief, Defendants have intentionally misappropriated
the DOLLHOUSE Marks that are the subject of Gotham’s trademark registrations with
the intention of causing confusion, mistake and deception among consumers and the
trade as to the source of the goods and with the intent to unfairly profit from Plaintiff’s
goodwill at Plaintiff’s expense.

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54. As a result of the foregoing, Defendant’s actions constitute unfair competition
and misappropriation which have had and will continue to have a detrimental effect on
the general consuming public in violation of the common law of the State of New York.
55. Defendant’s wrongful acts have injured Plaintiff in an amount thus far not
determined, but if continued will result in damages of at least $5 million. Further,
Defendant’s wrongful acts have caused and will continue to cause Plaintiff to suffer
irreparable harm for which it has no adequate remedy at law.

COUNT V [INJURY TO BUSINESS REPUTATION AND DILUTION]
56.

Plaintiff repeats and realleges each allegation of paragraphs 1-55 hereof,

as if fully set forth herein.
57.

By reason of the practices and acts set forth above, Defendant is likely to

injure Gotham’s business reputation and dilute the distinctive quality of Gotham’s
marks, in violation of Section 360-l of the New York General Business Law.
58.

These acts of Defendant are without the permission, license or consent of

Plaintiff and, unless enjoined by this Court, Defendant will continue these practices and
acts, thereby harming Plaintiff’s business reputation and causing Plaintiff immediate and
irreparable injury.
59.

Defendant’s wrongful acts have injured Plaintiff in an amount thus far not

determined, but if continued will result in damages of at least $5 million. Further,
Defendant’s wrongful acts have caused and will continue to cause Plaintiff to suffer
irreparable harm for which it has no adequate remedy at law.
WHEREFORE, Plaintiff demands:

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A. An injunction permanently enjoining and restraining Defendant, its directors,
officers, agents, servants, employees, successors, assigns, subsidiaries, related
companies, parent companies, licensees, assigns, and all persons in active concert or
participation with it:
1.

From imitating, copying or making unauthorized use of the

DOLLHOUSE Marks;
2.

From manufacturing, importing, exporting, distributing, offering for

sale, marketing or selling the Counterfeit Goods or any other products bearing any
unauthorized reproduction, counterfeit, copy or colorable imitation of any of the
DOLLHOUSE Marks, either individually or in conjunction with other words, marks or
designs;
3.

From using any mark confusingly similar to any of the

DOLLHOUSE Marks in connection with the manufacture, promotion, advertisement,
display, sale, offering for sale, production, import, export, or distribution of any product
in such a manner as to relate or connect, or tend to relate or connect, such product in
any way with Gotham or to any goods sold, sponsored, approved by or connected with
Gotham;
4.

From passing off or otherwise representing to the apparel trade or

the public in any way that the Counterfeit Goods sold by Defendant emanates from, are
related in source or sponsorship to, or are in any way related to Plaintiff, or that Plaintiff
has in any way authorized Defendant to sell the Counterfeit Goods;
5.

From injuring Plaintiff’s business reputation by diluting the

distinctive quality of Plaintiff’s products; and

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6.

From engaging in misappropriation, deceptive trade practices or

acts in the conduct of Defendant’s business by means of selling products bearing
Plaintiff’s trademarks or any trademark confusingly similar thereto;
7.

From engaging in any other activity constituting unfair competition

with Gotham or constituting an infringement of any of the DOLLHOUSE Marks or of
Gotham’s rights in, or its rights to use or exploit such trademarks and the goodwill
associated with the DOLLHOUSE Marks;
8.

From engaging in any other activity, including the effectuation of

assignments or transfers of their interests in marks confusingly similar to any of the
DOLLHOUSE Marks, the formation of other corporations, partnerships, associations or
other entities or the utilization of any other devices, for the purpose of circumventing,
evading, avoiding or otherwise violating the prohibitions set forth herein;
B. Directing Defendant to deliver to Plaintiff for destruction all items in its
possession bearing any of Plaintiff’s trademarks and/or any unauthorized reproductions,
counterfeits, copies or colorable imitations thereof;
C. Directing Defendant to immediately recall and destroy all of its catalogs
showing, advertising or promoting any items bearing Plaintiff’s trademarks;
D. Directing Defendant to remove all references to or images of the Counterfeit
Goods, the DOLLHOUSE Marks and/or Gotham from Defendant’s internet website;
E. Directing Defendant to account to Plaintiff for all profits resulting from
Defendant’s infringing activities;
F. Awarding Plaintiff its damages from Defendant’s wrongful acts;

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G. Awarding Plaintiff three times the amount of Plaintiff’s damages or
Defendant’s profits, whichever is greater;
H. Awarding Plaintiff the cost of this action, as well as reasonable attorneys’
fees;
I. Awarding Plaintiff punitive damages as a result of Defendant’s wrongful acts;
and;
J. Awarding Plaintiff, at its election, statutory damages in the amount of
$2,000,000 per mark for each type of good in connection with which Defendant used
counterfeits of the DOLLHOUSE Marks;
K. Directing that this Court retain jurisdiction of this action for the purpose of
enabling Gotham to apply to the Court at any time for such further orders and
interpretation or execution of any order entered in this action, for the modification of any
such order, for the enforcement or compliance therewith and for the punishment of any
violations thereof; and

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EXHIBIT A

EXHIBIT B

EXHIBIT C

EXHIBIT D

EXHIBIT E

EXHIBIT F

EXHIBIT G

EXHIBIT H

EXHIBIT I

EXHIBIT J

EXHIBIT K

EXHIBIT L

EXHIBIT M

EXHIBIT N

EXHIBIT O