The Smitten Kitten, Inc. v. Fernandez

Filing 2

COMPLAINT with JURY DEMAND against Mike Fernandez (Filing fee $350 paid - receipt number: 0648-2799190), filed by Smitten Kitten, Inc. (Attachments: # 1 Summons Form, # 2 Civil Cover Sheet, # 3 Exhibit A, # 4 Exhibit B, # 5 Exhibit C) (Ita, Amy) Modified to edit text for party name on 9/27/2010 (mr1).

THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION

The Smitten Kitten, Inc., a Minnesota
corporation,
3010 Lyndale Avenue S.
Minneapolis, MN 55408,

Case No. 1:10-cv-00663

Plaintiff,

COMPLAINT

v.

JURY TRIAL DEMANDED

Mike Fernandez, an individual, d/b/a
Sex Toys Revolutions,
5622 Ridge Road,
Cincinnati, OH 45213,
Defendant.

Plaintiff The Smitten Kitten, Inc., for its claims against the defendant, Mike Fernandez,
d/b/a Sex Toys Revolutions, states and alleges as follows:
THE PARTIES
1.

Plaintiff The Smitten Kitten, Inc. (“TSK”) is a Minnesota corporation with its

principal place of business in Minneapolis, Minnesota.
2.

Defendant Mike Fernandez, d/b/a Sex Toys Revolutions (“Fernandez”), is an

individual citizen of Ohio, residing at 5622 Ridge Road, Cincinnati, OH 45213.
JURISDICTION
3.

This Court has jurisdiction over this federal cause of action under 28 U.S.C.

§ 1331 and § 1338.
4.

Venue is proper in this district under 28 U.S.C. § 1391(b) and § 1391(c).

FACTS
A.

TSK’S OWNERSHIP OF THE SMITTEN KITTEN® TRADEMARK
5.

TSK is in engaged in business of selling high quality adult sex toys and related

goods to a national and international retail market, and since June 2, 2003, its traditional and
online retail outlets have been continuously branded, promoted, advertised and identified with
the “Smitten Kitten®” trademark.
6.

As a result of such continuous and exclusive use, the Smitten Kitten® trademark

has served to identify and distinguish TSK’s adult sex toy outlets from other traditional and
online retail adult sex toy establishments, and said mark has acquired a secondary and distinctive
association with TSK’s traditional and online retail outlets.
7.

On or about November 21, 2006, the United States Patent and Trademark Office

granted TSK the sole and exclusive use of the Smitten Kitten® trademark for retail sex toy stores
in International Class 35. A true and correct copy of Trademark Registration No. 78680549 is
attached as Exhibit A and incorporated by reference. TSK’s first use of the Smitten Kitten®
trademark in commerce was June 2, 2003.
8.

The above Trademark Registration remains in full force and effect.

9.

Since 2003, TSK has expended approximately $675,000 in the promotion and

advertisement of the Smitten Kitten® trademark.
10.

As a result of substantial sales and advertising by TSK of its products, the Smitten

Kitten® trademark has become favorably known to the public and the trade, and identifies and
distinguishes the source of origin of TSK’s products. TSK’s registered trademark and the
substantial goodwill attained represent a valuable and irreplaceable asset of TSK. As a result,

2

TSK’s products have earned commercial success, recognition, and acceptance in the
marketplace.
11.

Since 2003, TSK has received unsolicited media coverage, including:

Minneapolis City Pages awards for “Best Store for Sex Toys” in 2007, 2008 and 2009 and for
“Best Adult Video Store” in 2005; Lavender Magazine’s The Fab 50 in 2007 for “Best Place to
Buy Adult Toys’” recommendation in Valentine’s Day 2009 gift guide by The Rake – Secrets of
the Sweethearts; Minneapolis-St. Paul Magazine’s “The Best of the Twin Cities Award” for
“Best Sex Store” in 2007 and 2009; and Vita.mn’s “Top 10 User Pick” on its List of Lists for
“Best Place to Find Sex Toys” in 2009; and has been featured in various trade publications and
websites, including Janes Guide, Xbiz, StorErotica, AVN, Glamour Magazine, Marie Claire
Magazine, Go Magazine, Curve Magazine, and www.feministing.com, all of which have served
to promote and strengthen its “Smitten Kitten®” trademark.
12.

The Smitten Kitten® trademark has become associated with TSK’s high quality

products and TSK’s distinct programs and activities, including: (a) TSK’s education-based retail
programs (world class educational programming in-store and off-site; highly trained sex
education instructors with backgrounds in sexual health, gender and women’s studies; one-onone customer interaction; venue for out-of-town sex educators; regional workshops and lectures
on sex related topics; and an integration of educational content into all marketing activities); (b)
TSK’s Coalition Against Toxic Toys program (first sex toy store to bring awareness to toxicity
issues in toys; promotion of consumer advocacy regardless of where people shop; provision of
free online resources for safer shopping practices; workshops and lectures on sex toy toxicity and
safer shopping practices; promotion of industry-wide change; and resource for other independent
sex toy stores); (c) TSK’s community development activities (offering space to like-minded

3

community organizations for events and meetings; sponsorship of local community arts, theater
and sports teams; donations to charity – over $75,000 since 2003; provision of living wage,
benefits and continuing education for employees; and active members of local and national
chambers of commerce); (d) TSK’s store philosophy and aesthetics (space that is
gender/orientation free and affirming of all types of people and all sexual orientations;
maintenance of body and sex positive ethics; open, well-lit and comfortable environment;
commitment to sell only well-made, nontoxic and functional products; and promotion of local
artists and artisans); and (e) TSK’s nontoxic party program (the only party program to offer all
nontoxic products and provide attendees with education and information as well as products;
parties conducted in a nonbiased, sex-positive and diversity-affirming manner; and educators are
paid a living wage).
B.

FERNANDEZ’ TRADEMARK INFRINGEMENT
13.

Fernandez is engaged in the business of retail adult sex toy sales, doing business

as “Sex Toy Revolutions.”
14.

Since December 19, 2008, Fernandez has operated online Sex Toy Revolutions

adult sex toy outlets doing business throughout the United States and the world that are identified
and accessed by consumers through the Internet URL Domain name identifiers:
“www.smittenkittenlingerieboutique.com,” “www.talksex-asksmittenkitten.com,” and
“www.myspace.com/smittenkittens_blog.”
15.

TSK has never authorized, licensed or consented to Fernandez’ use of the Smitten

Kitten® trademark or any similar marks.
16.

At all relevant times, Fernandez had both constructive and actual knowledge of

TSK’s exclusive rights to the Smitten Kitten® trademark, and he knew that he was not

4

authorized, licensed or permitted by TSK to use said trademark in any manner connected with
the sale of adult sex toys.
C.

ACTUAL AND LIKELY CONFUSION
17.

Both TSK and Fernandez sell adult sex toys online.

18.

TSK’s online stores are accessed by consumers on the Internet at the URL

Domain Name www.smittenkittenonline.com. A true and correct copy of a page from TSK’s
online catalog of products at www.smittenkittenonline.com is attached as Exhibit B and
incorporated by reference.
19.

Fernandez’ online stores are accessed by consumers on the Internet at or by links

from the URL Domain Names www.smittenkittenlingerieboutique.com, www.talksexasksmittenkitten.com, and www.myspace.com/smittenkittens_blog.
20.

A true and correct copy of the first page from Fernandez’ online catalog of

products at, or accessed by link from www.smittenkittenlingerieboutique.com, www.talksexasksmittenkitten.com, and www.myspace.com/smittenkittens_blog is attached as Exhibit C and
incorporated by reference.
21.

Because Internet search engines locate business references by key words and

phrases, consumers shopping for adult sex toys by searching for various combinations of the
words “Smitten,” “Kitten,” “Adult,” “Sex” or “Sex Toys,” on popular Internet search engines,
including Google, Yahoo!, Bing, Yelp, Ask.com and others will be directed not only TSK’s online
store at www.smittenkittenonline.com, but will also will be directed to Fernandez’ online retail
outlets at www.smittenkittenlingerieboutique.com, www.talksex-asksmittenkitten.com, and
www.myspace.com/smittenkittens_blog.

5

22.

As a result of the similarity of products, URL domain names and online retailing

and Internet search terms, and the commonality of current and prospective customers,
Fernandez’ unauthorized and unlawful user of TSK”s “Smitten Kitten®” trademark is likely to
cause confusion, mistake and/or deception in the marketplace.
23.

Fernandez’ unauthorized and unlawful use of TSK’s Smitten Kitten® trademark

has also caused actual confusion in the marketplace, as reported to TSK by one vendor who
expressed a belief that there was an affiliation between Fernandez’ online retail outlets and TSK.
D.

DAMAGES CAUSED BY FERNANDEZ’ INFRINGEMENT
24.

Fernandez’ continued unauthorized and unlawful use of TSK’s Smitten Kitten®

trademark creates the false and misleading impression that TSK sponsors or otherwise approves
of his use of the mark, and/or endorses or profits from the products and services marketed,
advertised, and sold in interstate commerce, all of which constitute a false designation of origin,
create a substantial likelihood of confusion and deceive as to the affiliation, association or
connection of the true owner of the mark.
25.

Fernandez’ continued unauthorized and unlawful use of TSK’s Smitten Kitten®

trademark has been, and is trading on the good will associated with TSK’s trademark and
deceiving the public in furtherance of Fernandez’s business.
26.

Fernandez has willfully infringed and sought to appropriate the Smitten Kitten®

trademark.
27.

As a direct and proximate result of Fernandez’ unauthorized and unlawful use of

the Smitten Kitten® trademark, TSK has suffered and/or will suffer economic loss; Fernandez
has unjustly benefited and profited from the good will associated with the Smitten Kitten®
trademark; and TSK has suffered and will suffer irreparable harm. Unless Fernandez is enjoined,

6

the above-described acts of Fernandez will continue and will impair the value of the Smitten
Kitten® trademark and the good will associated therewith. TSK therefore has no adequate
remedy at law.
28.

Fernandez has been unjustly enriched by his infringing and unfair activities and

TSK is entitled to an accounting for all Fernandez’s profits derived from infringing sales.
COUNT I
TRADEMARK INFRINGEMENT
(LANHAM ACT §32, 15 U.S.C. §1114)
29.

TSK restates and incorporates by reference Paragraphs 1 through 28 above as if

fully set forth here.
30.

Fernandez’ unauthorized use of the Smitten Kitten® trademark constitutes a

violation of TSK’s exclusive trademark rights under 15 U.S.C. §1114, for which TSK is entitled
to compensatory and exemplary relief, including treble damages and attorneys’ fees, as set forth
in 15 U.S.C. §1117.
31.

Fernandez continues to do the acts complained of herein, and unless restrained or

enjoined will continue to do so, all to TSK’s irreparable damage. It would be difficult to
ascertain the amount of compensation which could afford TSK adequate relief for such
continuing acts, and a multiplicity of judicial proceedings would be required. TSK’s remedy at
law, as to continuing infringement, is therefore inadequate and TSK is entitled to injunctive relief
as set forth in 15 U.S.C. § 1116.

7

COUNT II
FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION
(LANHAM ACT §43(a), 15 U.S.C. §1125(a))
32.

TSK restates and incorporates by reference Paragraphs 1 through 31 above as if

fully set forth here.
33.

Fernandez’ unauthorized use of TSK’s Smitten Kitten® trademark constitutes a

false designation of origin, a false or misleading description of fact, a false representation, and/or
unfair competition in violation of 15 U.S.C. §1125(a), for which TSK is entitled to compensatory
and exemplary relief, including treble damages and attorneys fees, as set forth in 15 U.S.C.
§1117.
34.

Fernandez does not have authorization to use the Smitten Kitten® trademark. By

his use of the Smitten Kitten® trademark on his website, Fernandez has falsely designated,
described and/or represented that he has authorization to use the Smitten Kitten® trademark.
Fernandez has falsely designated and represented a connection, affiliation, association,
sponsorship, or approval of or between TSK and Fernandez.
35.

Fernandez has caused these goods associated with the false designation and false

representation to enter interstate commerce.
36.

Fernandez’s unauthorized use of the Smitten Kitten® trademark is likely to cause

confusion, to cause mistake, and to deceive as to an affiliation, connection, or association
between Fernandez and TSK, in violation of 15 U.S.C. § 1125.
37.

Fernandez continues to do the acts complained of herein, and unless restrained or

enjoined will continue to do so, all to TSK’s irreparable damage. It would be difficult to
ascertain the amount of compensation which could afford TSK adequate relief for such
continuing acts, and a multiplicity of judicial proceedings would be required. TSK’s remedy at

8

law, as to continuing unauthorized use, is therefore inadequate and TSK is entitled to injunctive
relief as set forth in 15 U.S.C. § 1116.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff TSK, respectfully requests that the Court:
(a)

Grant a permanent injunction pursuant to 15 U.S.C. §1116, enjoining and

restraining Fernandez and his agents, servants and employees from directly or indirectly using
the Smitten Kitten® trademark for the purpose of promoting, advertising or identifying adult sex
toy outlets or stores, including but not limited to all promotional materials or advertising, or any
similar marks or names which are likely to cause confusion, mistake or to deceive, specifically
including “Smitten Kitten;” and
(b)

Order, pursuant to 15 U.S.C. §1118, that all labels, signs, prints, packages,

wrappers, receptacles and advertisements in the possession or control of Fernandez, or those in
privity with him, bearing the Smitten Kitten® trademark, or any similar marks or names which
are likely to cause confusion, mistake or to deceive, specifically including “Smitten Kitten,” and
all plates, molds, matrices and other means of making same, shall be delivered up and destroyed;
and
(c)

Order, pursuant to 15 U.S.C.§1117, that Fernandez shall account to TSK for any

and all profits derived by him from the infringing use, and for all damages, costs and attorneys
fees incurred by TSK by reason of said acts of infringement, false designation of origin and
unfair competition complained of herein; and
(d)

Award, pursuant to 15 U.S.C. §1117, treble the amount of actual damages

suffered and/or punitive and exemplary damages in favor of TSK and against Fernandez by
reason of Fernandez’ willful and intentional infringement; and

9

(e)

Award TSK its costs and disbursement; and

(f)

Award all other relief which the Court deems to be just and equitable.

Respectfully submitted,

s/ Amy Ruth Ita
Amy Ruth Ita (0074520), Trial Attorney
Barnes and Thornburg LLP
21 East State Street, Suite 1850
Columbus, Ohio 43215-4219
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Plaintiff

10