Opinion
23 Civ. 8963 (AT)
10-18-2023
BURBERRY LIMITED; GIANNI VERSACE, S.R.L.; HERMES INTERNATIONAL; LOUIS VUITTON MALLETIER; AND MICHAEL KORS, L.L.C., Plaintiffs, v. VARIOUS JOHN DOES, JANE DOES, and XYZ COMPANIES, Defendants.
FILED UNDER SEAL
TEMPORARY RESTRAINING ORDER, SEIZURE ORDER, SUBSTITUTE CUSTODIAN ORDER, EXPEDITED DISCOVERY ORDER, AND ORDER TO SHOW CAUSE BRINGING ON MOTION FOR PRELIMINARY INJUNCTION
ANALISA TORRES, DISTRICT JUDGE:
On October 12, 2023, Plaintiffs Burberry Limited (“Burberry”), Gianni Versace, S.r.l. (“Versace”), Hermes International (“Hermes”); Louis Vuitton Malletier (“LV”); and Michael Kors, L.L.C. (“MK”) (collectively, “Plaintiffs”) commenced this action and sought entry of an ex parte temporary restraining order (the “TRO”), an order to show cause for a preliminary injunction, and an order permitting expedited discovery (collectively, the “TRO Application”). Upon the Complaint herein and the exhibit annexed thereto, the Declaration of Robertson D. Beckerlegge (“Beckerlegge Decl.”), the Declarations of Plaintiffs Burberry Limited, Gianni Versace, S.r.l., Hermes International, Louis Vuitton Malletier, and Michael Kors, L.L.C. (the “Plaintiffs' Declarations”), the Affidavit of Raymond Dowd (the “Dowd Affidavit”), and the Memorandum of Law submitted in support of this Motion, Plaintiffs' motion is GRANTED, subject to the following findings of fact and conclusions of law:
Where a defined term is referred but not defined in this order, the defined term should be understood as it is defined in the Complaint.
The Court makes the following findings of fact and conclusions of law based on Plaintiffs' submissions to date without prejudice to any subsequent findings after a full preliminary injunction hearing. See Energybrands, Inc. v. Beverage Mktg. USA, Inc., No. 02 Civ. 3227, 2002 WL 826814, at *1 (S.D.N.Y. May 1, 2002).
FINDINGS OF FACT
1. Plaintiffs are the owners of numerous trademark registrations with the United States Patent and Trademark Office, including but not limited to:
BURBERRY
TRADEMARK
REGISTRATIONNUMBER
REGISTRATION DATE
GOODS
BURBERRY
260,843
27-Aug-1929
Clothing - namely, coats and topcoats for men, women, and children; jackets for men, women, and children; breeches for boys; suits for men and boys; waistcoats for men, women, and children; overalls for women and children; skirts for outer wear for women and children; capes for men, women, and children; hats and caps for men, women, and children;bonnets for children, hoods and toques for men, women, children; neckties for men, women, and children; stockings and socks for men, women, and children; braces and suspenders for men and children; belts for outer wear for men, women, and children; boots of rubber and fabric or combinations of these materials for men, women, and children; shoes and slippers of leather, rubber, and fabric or combinations of these materials for men, women, and children; gloves for men, women, and children, of leather and fabric.
BURBERRY
1,133,122
15-Apr-1980
Handbags, travelling bags, leather travelling cases, attache cases, leather briefcases, purses, pocket wallets, umbrellas.
BURBERRY
1,607,316
24-Jul-1990
Spectacles, sunglasses, fitted cases, frames and lenses, all for sunglasses or for spectacles.
BURBERRY
1,747,765
19-Jan-1993
Wrist watches and straps and bracelets therefor, and cuff links.
BURBERRY
2,624,684
24-Sep-2002
Retail store services featuring clothing, watches, sunglasses, accessories, shoes, luggage, leather goods, and fragrance.
BURBERRY
2,629,931
8-Oct-2002
Fragrance; non-medicated toilet preparations, namely, perfumes, eau de cologne, and toilet water, cosmetic preparations for the hair, namely, shampoos, soaps for the body, shower gels and bath gels and bath foams; antiperspirants and deodorants; shaving preparations.
BURBERRY
2,875,336
17-Aug-2004
Sunglasses, combined sunglasses, spectacles, optical glasses, fitted frames and lenses for the aforesaid goods; cases and holders for the aforesaid goods; parts and fittings for all the aforesaid goods; cases and holders for portable computers and mobile telephones; watches, clocks and parts and fittings for all the aforesaid goods, wrist watches and straps and bracelets therefor and pocket watches, jewelry, imitation jewellery, tie-pins and cuff links; and jewelry boxes, hat and shoe ornaments all made of precious metal or coated therewith.
BURBERRY
3,879,249
23-Nov-2010
Articles of outer clothing, namely, coats, jackets, rainwear, ponchos, gilets, detachable coat linings, raincoats; blousons; casual coats; polo shirts; blouses; dresses; pyjamas; knitwear, namely, jerseys, jumpers, cardigans, sweaters, knitted leggings; shorts; trousers; suits; skirts; jackets; articles of underclothing, namely, boxer shorts, lingerie, loungewear, nightwear, underwear, undergarments; hosiery; headwear; footwear; sports clothing, namely, sweat pants, sweat shirts, swimwear; sports footwear; tracksuits; ready-made linings, namely, finished textile linings for garments; ties; clothing belts; wraps; scarves; shawls and stoles; gloves.
BURBERRY
3,898,440
4-Jan-2011
Articles made from material and textile, namely, bed blankets, blanket throws, children's blankets, lap blankets, towels, handkerchiefs, cushion covers.
BURBERRY
4,004,568
2-Aug-2011
Cosmetics; aftershave preparations; non-medicated preparations for the bath and shower, body care preparations, skin care preparations, nail care preparations and accessories; room fragrances; baby creams, lotions, shampoos.
BURBERRY
4,212,001
25-Sep-2012
Visual and audio recordings featuring music, video, animation, voice, still photography; digital music downloadable from the internet; custom manufacture of clothing, custom manufacture of accessories, namely, bags, briefcases, handbags, wallets, purses, document holders, bags and cases for makeup, key rings, luggage, umbrellas, cases and holders for electronic devices, eyewear and cases for eyewear, belts; entertainment services, namely, production and online distribution of sound, music, and video recordings in the fields of music and fashion; providing non- downloadable music and video recordings in the fields of music and fashion for others via a global computer network; production and distribution of videos in the fields of music and fashion; design of clothing and fashion accessories for others.
BURBERRY
510,077
24-May-1949
Clothing - namely, coats and topcoats for men, women, and children; jackets for men, women, and children; breeches for boys; suits for men and boys; waistcoats for men, women, and children; skirts for outer wear for women and children; capes for men, women, and children; hats and caps for men, women, and children; bonnets for children; hoods and toques for men, women, and children; neckties for men, women, and children; stockings and socks for men, women, and children; braces and suspenders for men and children; belts for outer wear for men, women, and children; boots for men, women, and children, of leather and rubber or combinations of these materials; shoes and slippers for men, women, and children; of leather, rubber, and fabric or combinations of these materials; gloves for men, women, and children of leather and fabric.
BURBERRY
6,331,235
27-Apr-2021
Protective industrial respiratory masks; Protective clothing for medical purposes; respiratory masks for medical use; sanitary masks for medical purposes; disposable sanitary masks for virus isolation purposes; sanitary masks made of cloth for medical purposes; face protection shields for medical purposes
BURBERRY BRIT
3,029,220
13-Dec-2005
Non-medicated toilet preparations, namely, perfumes, eau de cologne, and toilet water, shower gels and bath gels and bath foams; antiperspirants and deodorants; shaving preparations.
BURBERRY CHECK
1,241,222
7-Jun-1983
Coats, top coats, jackets, trousers, slacks, waistcoats, skirts, capes, hats, bonnets, berets, shirts, scarves, shawls and blouses.
BURBERRY CHECK
1,855,154
20-Sep-1994
Watches and parts therefor; straps, bracelets for wrist watches; cuff links.
BURBERRY CHECK
2,015,462
12-Nov-1996
Socks.
BURBERRY CHECK
2,022,789
17-Dec-1996
Suitcases, traveling bags, holdalls, suit and garment carriers for travel, attache cases, document cases, briefcases, purses, drawstring pouches, wallets, billfolds, passport holders, key cases, handbags, shoulder bags, credit card cases, business card cases, toilet bags sold empty, toilet cases sold empty, shaving bags sold empty, tie cases for travel, umbrellas and parasols; traveling comforter, namely, fabric blanket-like articles for keeping warm, e.g., when traveling in cold climates, or for use as a stadium blanket; clothing for men and women, namely, scarves, pullovers, cardigans, sweaters, overcoats, raincoats, shirts, belts; slippers for men.
BURBERRY CHECK
2,845,852
25-May-2004
Sunglasses, spectacles, optical glasses; fitted frames and lenses for the aforesaid goods; cases and holders for the aforesaid goods; carrying cases and holders for portable computers and mobile telephones.
BURBERRY CHECK
3,529,814
11-Nov-2008
Non-metal key fobs; blankets, throws, handkerchiefs, textile used as linings for clothing and accessories, fabrics for use in the manufacture of clothing, footwear, headwear, hosiery, belts, bags, cases, holders and key rings, umbrellas, watches, jewelry, towels, blankets, throws; Coats, detachable coat linings, rainwear, ponchos, jackets, gilets, jerseys, jumpers, sweaters, blouses, shirts, polo shirts, t-shirts, vests, dresses, skirts, trousers, jeans, shorts, ski wear, sports shirts, sports trousers, sweat shirts, waterproof clothing, namely, coats, jackets, bikinis, sarongs, swimwear, bathrobes, boxer shorts, loungewear, nightwear, undergarments, ties, cravats, footwear, shoes, boots, athletic footwear, slippers, ballet slippers, socks, leggings, caps, hats, head scarves, belts, gloves, mufflers, scarves, shawls, stoles, pashminas, children's and infant's clothing, namely, coats, jackets, ponchos, jerseys, sweaters, blouses, shirts, t-shirts, singlets, vests, tank tops, waistcoats, suits, dresses, skirts, trousers, jeans, shorts, children's headwear, children's swimwear, children's nightwear, children's under garments, and one-piece clothing, headwear, footwear; cloth bibs; teddy bears; retail store services in the fields of clothing, accessories, footwear, headgear, luggage, leather goods, timepieces, jewelry, eyewear and fragrances.
BURBERRY CHECK
4,123,508
10-Apr-2012
Telephones, mobile telephones, mobile electronic devices, namely, PDAs (personal digital assistants), smart phones, personal entertainment devices, namely, electronic book readers, tablet computers, netbooks, electronic notebooks, handheld computers, portable digital audio and/or video players, and accessories for the foregoing, namely, headsets, headphones, covers, fascia, lanyards specially designed for mobile electronic devices and mobile telephones, stylus, battery chargers, phone jewelry and accessory charms for mobile electronic devices; cases and holders for telephones, mobile telephones and mobile electronic devices, namely, for PDAs (personal digital assistants), smart phones, personal entertainment devices in the nature of electronic book readers, tablet computers, netbooks, electronic notebooks, handheld computers and portable digital audio and/or video players.
BURBERRY CHECK
2,689,921
25-Feb-2003
Perfumes, eau de toilettes, body lotion; soaps; personal deodorants; eau de parfums; aftershaves; shampoo for the body; shower gels; bath gels.
BURBERRY CHECK (No Color)
2,728,709
24-Jun-2003
Fabrics for use in the manufacture of clothing, underclothes, swimwear, headwear, footwear, hosiery, socks; and belts; fabrics for use in the manufacture of cosmetic cases and bags, toiletry cases and bags, and shaving cases and bags; fabrics for use in the manufacture of purses, pouches, bags, luggage, carriers, travel bags, and suit and garment bags; fabrics for use in the manufacture of cases and holders for money, documents, keys, glasses, and ties; fabrics for use in the manufacture of umbrellas and parasols and cases thereof; fabrics for use in the manufacture of straps and bracelets for watches, and straps for shoes and bags; fabrics for use in the manufacture of lining for all the foregoing goods; comforters and blankets.
BURBERRY CHECK (No Color)
2,612,272
27-Aug-2002
Retail store services in the fields of clothing, accessories, shoes, luggage, leather goods and fragrances.
BURBERRY CHECK (No Color)
2,732,617
1-Jul-2003
Perfumes, eau de toilettes, eau de parfums; body lotion, soaps; personal deodorants; aftershave; shampoo for the hair and for the body; shower gels; bath gels; articles of luggage, namely, suitcases, athletic and sport bags, beach bags, carry-on bags, clutch bags; duffel and gym bags; overnight bags; school book bags, shoulder bags, tote bags, garment bags for travel, carryall bags, traveling bags, hand bags, leather bags for computers and cameras; wallets and purses; toiletry bags sold empty and cosmetics bags sold empty; brief cases, satchels and portfolios; parasols, umbrellas, walking sticks; leather key fobs, leather key holders; articles of outerclothing, namely, coats, overcoats, trench coats, casual coats, raincoats, jackets and blousons, poloshirts, blouses, dresses, pyjamas, knitwear namely, jumpers, sweaters, gilets, knitted shirts, knitted skirts and knitted scarves; and shorts, trousers, suits, skirts, underclothes, hosiery, headwear, footwear, sports clothing namely, sports trousers, sports shorts, sports shirts, sports jackets, sports footwear; tracksuits, garments that can be attached to or detached from coats, raincoats, trench coats, or casual coats for additional warmth; ties, belts, wraps, serapes, scarves, shawls and stoles, gloves.
BURBERRY CHECK (No Color)
4,441,542
26-Nov-2013
Sunglasses, camera cases, spectacles, optical glasses, mobile phone accessories, namely, mobile phone covers charms and lanyards for mobile phones; fitted frames and lenses for the aforesaid goods; cases and holders for the aforesaid goods; parts and fittings for all the aforesaid goods; cases and holders for portable electronic devices, namely, PDAs (personal digital assistants), smart phones, electronic book readers, tablet computers, netbooks, electronic notebooks, handheld computers and portable digital audio and/or video players, mobile telephones, portable audio and video systems and computers; Watches, watch straps and bracelets therefor; jewelry, imitation jewelry, tie-pins, tie clips and cuff links; articles made of precious metals or coated therewith, namely, key rings.
BURBERRY LONDON
3,202,484
23-Jan-2007
Articles of outerclothing, namely, coats, trench coats, casual coats, jackets; shirts, dresses; ties.
EQUESTRIAN KNIGHT DEVICE
2,512,119
27-Nov-2001
Non-medicated toilet preparations, namely, perfumes, eau de cologne, and toilet water, shampoos, shower gels and bath gels; shaving preparations; articles of luggage, namely, suitcases, athletic and sport bags, beach bags, carry-on bags, clutch bags, overnight bags, shoulder bags, tote bags, carryall bags, traveling bags, hand bags, leather bags for computers and cameras; wallets and purses; toiletry bags sold empty and cosmetic bags sold empty; brief cases, satchels and portfolios; cases for personal organizers and for mobile telephones; umbrellas, leather key fobs, leather key holders, and dog coats.
EQUESTRIAN KNIGHT DEVICE w/ B PRORSUM
863,179
7-Jan-1969
Coats, topcoats, jackets, suits, trousers, slacks, shorts, overalls, skirts, capes, hats, caps, bonnets, hoods, berets, neckties, stockings, socks, belts, boots, shoes, slippers, sandals, gloves, shirts, collars, pajamas, dressing gowns, cardigans, sweaters, pullovers, scarves, blouses, beach robes, dresses, skiwear, and handkerchiefs.
EQUESTRIAN KNIGHT DEVICE w/ B PRORSUM
1,622,186
13-Nov-1990
Sunglasses; spectacles; frames and lenses.
EQUESTRIAN KNIGHT DEVICE w/ B PRORSUM
2,952,399
17-May-2005
Sunglasses, combined sunglasses, spectacles, optical glasses, fitted frames and lenses for the aforesaid goods; cases and holders for the aforesaid goods; parts and fittings for all the aforesaid goods; computer carrying cases and specialty holsters and cases for carrying mobile telephones; watches, and parts and fittings for all the aforesaid goods, wrist watches and straps and bracelets therefor and jewelry, imitation jewelry, tie-pins and cuff links; and jewelry boxes, all made of precious metal or coated therewith.
EQUESTRIAN KNIGHT DEVICE w/ B PRORSUM
4,036,908
11-Oct-2011
Accessories for covers, and accessory charms for mobile electronic devices; cases and holders for telephones, mobile telephones and mobile electronic devices, namely, smart phones, personal entertainment devices, tablet computers.
EQUESTRIAN KNIGHT DEVICE w/ BB PRORSUM
1,903,508
4-Jul-1995
Watches and parts therefor; bracelets for wrist watches; jewelry; costume jewelry; tie pins and cuff links.
EQUESTRIAN KNIGHT DEVICE w/ BB PRORSUM
3,766,097
30-Mar-2010
Textiles and textile goods, namely, household linen, bed linen, bath linen, bed blankets, blanket throws, children's blankets, beach towels, handkerchiefs, unfitted fabric furniture covers, fabrics for textile use and textile used as lining for clothing, cushion covers.
TB DEVICE
6,376,182
08-Jun-2021
Leather and imitations of leather bags, namely, handbags, shoulder bags, tote bags, clutch bags, holdalls, travel bags, waist bags, weekend bags, school bags, overnight bags; articles of luggage, namely, trunks being luggage, trunks being travelling trunks; valises, suitcases, travelling bags, garment bags for travel, vanity cases sold empty; allpurpose carrying bags, athletic and sports bags, beach bags, carry-on bags, duffel and gym bags, overnight bags, school book bags, satchels, bum-bags; textile, string, leather, reusable, canvas, and mesh shopping bags; baby bags, namely, baby carrying bags, bags for carrying babies' accessories, nappy bags; baby carriers worn on the body, pouch baby carriers; baby harnesses being baby carriers worn on the body, baby harnesses being leashes for guiding children; wheeled shopping bags, trolleys in particular general purpose sport trolley bags; purses; drawstring, felt, leather, textile, and cloth pouches; wallets; cosmetic cases and bags sold empty, cases for manicure sets sold empty; key holders being key cases made of leather or imitations of leather, key holders being pouches for holding keys; card holders being credit card holders, business card holders in the nature of card cases, and business cardholders in the nature of wallets; labels of leather for luggage, and luggage labels made of leather and imitations of leather, leather tags; pochettes; tie cases; leather boxes; umbrellas, parasols; clothing for pets; horse blankets; collars and leashes for animals; clothing, namely, coats, finished detachable coat linings, rainwear, ponchos, jackets, gilets, jerseys, jumpers, sweaters, blouses, shirts, polo shirts, t-shirts, vests, tank tops, waistcoats, dresses, skirts, trousers, jeans, shorts, ski wear, ski gloves, sports shirts, sports trousers, sports singlets, sweat shirts; waterproof clothing, namely, bathing trunks, swimming trunks, trunks being clothing; bikinis, sarongs, swimwear, bathrobes, boxer shorts, loungewear, nightwear, undergarments, ties as clothing, cravats, leggings, pashmina shawls; children's and infant's clothing, namely, coats, jackets, ponchos, jerseys, sweaters, blouses, shirts, t-shirts, vests, dresses, skirts, trousers, jeans, shorts, children's headwear, children's swimwear, children's nightwear, children's under garments, and one-piece clothing; cloth bibs; footwear, shoes, boots, athletic footwear, slippers, ballet slippers; headwear, namely, caps, baseball caps, hats, head scarves; belts, gloves, mufflers as neck scarves, scarves, shawls, stoles, pocket squares; belts being clothing
TB MONOGRAM
6,513,734
12-Oct-2021
Non-medicated toilet preparations, namely, cosmetics; glitter for cosmetic purposes; non-medicated toilet preparations, namely, cosmetics; glitter for cosmetic purposes; cosmetic preparations for the bath and shower; non-medicated body and skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; cosmetic preparations for the care of teeth and for hair; nail care preparations and nail polish, false nails; non-medicated soaps; antiperspirants, deodorants for personal use; perfumes, eau de cologne, eau de toilette, toilet water and aftershave; essential oils, massage oil; pot pourri, room fragrances and incense; cleaning preparations for leather goods and care preparations for leather goods, namely, conditioners, balms, creams, waxes and polish; sunglasses, spectacles, optical glasses, fitted frames and lenses for sunglasses, spectacles and optical glasses; cases and holders for sunglasses, spectacles and optical glasses; parts and fittings for sunglasses, spectacles and optical glasses,
namely, frames; cases and holders for portable electronic devices, namely, mobile phones, tablets, electronic book readers, and digital book readers; mobile telephones, portable audio and video systems and computers; mouse mats; camera cases; portable electronic devices, electronic book readers, portable music readers and tablets; mobile phone accessories, namely, mobile phone covers and skins, lanyards for mobile phones, mobile phone fascias; watches, clocks and parts, fittings and cases for all the aforesaid goods; watch straps and bracelets therefor; jewellery, imitation jewellery, tiepins, tie clips and cuff links; articles made of precious metals or coated therewith, namely key rings, jewellery charms, badges, shoe jewellery; jewellery boxes and cases; models figures being ornaments and figures of precious metal; jewellery rolls; key holders and key rings of precious and semi-precious metals; key chains and charms therefor; jewellery rolls; cufflink cases; leather and imitation leather; bags, namely, holdalls, handbags, shoulder bags; trunks being luggage, valises, suitcases, travelling bags, garment bags for travel, bumbags, vanity cases sold empty, baby carrying bags, baby carriers worn on the body, baby harnesses, namely, harnesses for guiding children, rucksacks, satchels; canvas, textile, leather or mesh shopping bags, wheeled shopping bags and general purpose sport trolleys bags; purses, pouches made out of cloth; wallets, credit card holders, pochettes; labels of leather and luggage labels, leather baggage tags; cosmetic cases and bags sold empty, cases for manicure sets sold empty; tie cases; leather boxes; umbrellas, parasols; clothing for pets; horse blankets; collars and leashes for animals; textiles and textile items, namely, fabrics, namely, bed blankets; bed covers; bed linen; cot linen; duvets; mattress covers; pillowcases; quilts and eiderdowns; bed sheets; curtains; towels; face cloths; table linen; plastic table covers; placemats of textile; unfitted fabric furniture covers,
curtains, textile wall hangings, cushion covers; textile handkerchiefs; travelling rugs, picnic blankets; pet blankets; textile labels; clothing articles and outer clothing articles, namely, coats, jackets, rainwear, ponchos, gilets, detachable coat linings, raincoats, blousons; casual coats; polo shirts; blouses; t-shirts; dresses; pajamas; knitwear, namely, jerseys, jumpers, cardigans, sweaters, knitted leggings; shorts; trousers; suits for men women and children; skirts; jackets; jackets containing microprocessors; articles of underclothing, namely, boxer shorts, lingerie, loungewear, nightwear, underwear, undergarments, hosiery; sports clothing, namely, ski wear, sports jackets, sports jerseys, sports shirts, sports trousers, sweat pants, sweat shirts, sweat shorts, tracksuits, tennis wear, swimwear; sports footwear; tracksuits, ready-made linings, namely, finished textile linings for garments; ties; clothing belts; clothing wraps; serapes; scarves; shawls and stoles; gloves, footwear, headgear in the nature of headwear, belts, shirts, jeans; retail store and wholesale store services for clothing, footwear, headgear, bags, vanity cases sold empty, satchels, bumbags, purses, pouches, wallets, key holders, card holders, pochettes, labels and luggage labels, leather tags, leather belts, cosmetic cases and bags not fitted, cases for manicure sets sold empty, card cases, card holders, tie cases, cufflink cases, leather boxes, umbrellas, cases and holders for sunglasses and eyewear, cases and holders for portable electronic devices, cases and holders for mobile telephones, camera cases, phone covers and skins, charms and lanyards for mobile phones, mobile phone fascias, key rings and charms, diaries, notebooks, pen and pencil cases, pen holders, passport covers, paperweights, keyrings, homeware, perfumes, toiletries and cosmetics, watches, jewellery, eyewear and sunglasses.
GIANNI VERSACE
TRADEMARK
REGISTRATION DATE
REG. NO.
GOODS and SERVICES
VERSACE
Dec. 16, 1997
2121984
Class 3: cosmetics, namely, day cream, bathfoam, after-shave, deodorants for men and women, perfumed, unperfumed (natural) and hypoallergenic perfumes, cologne, toilet water, fragrances, namely, perfume, toilet water and essence oils for personal use for men and women Class 18: leather or imitations of leather, namely, animal skins and hides, handbags, wallets, luggage, attache cases, tote bags, briefcases, all purpose sport bags, travelling trunks and carry-on bags, shoulder bags, garment bags for travelling, keycases, umbrellas Class 25: clothing for men, women and children, namely belts, coats, raincoats, waistcoats, blouses and pullovers, jackets, trousers, skirts, dresses, suits, shirts and chemises, T-shirts, sweaters, underwear, socks and stockings, gloves, ties, scarves, hats and caps, boots, shoes and slippers
VERSACE
Jun. 30, 2020
6088586
Protective cases for cell phones; Protective cases for laptop computers; Protective cases for portable media players
(Image Omitted) “Medusa Head Design”
Aug. 2, 2005
2980455
Class 3: Cosmetics, namely night and day creams, cleaning preparations for the care of the face and body, bath-foam, shaving foam, aftershaves, foundation makeup, nail polish, deodorants for men and women, hand and body soaps, hair shampoos and rinses, hair spray, toothpaste and fragrances, namely perfume, toilet water and essential oils for personal use for men and women
TRADEMARK
REGISTRATION DATE
REG. NO.
GOODS and SERVICES
Class 8: Tableware, namely cutlery; forks, knives and spoons; sterling silver table forks, knives and spoons; domestic fireplace bellows Class 9: Optical instruments, apparatus and equipments, namely eyeglasses; reading glasses, and optical glasses; sunglasses; spectacles; spectacles frames; monocles; lorgnettes Class 11: Apparatus for lighting, namely, electric lighting fixtures for use on ceilings, chandeliers, electric, incandescent, and halogen light bulbs, safety lamps, candle, electric, oil, and portable paper lanterns, standard lamps; fireplaces; decorative water fountains; lamps Class 14: Articles made of precious metals and alloys of precious metals with or without precious stones, namely rings, necklaces, bracelets, brooches, earrings, tie clips, cuff-links, diamonds, jewelry cases made of precious metal, watches, clocks, chronometers, watch cases, costume jewelry Class 18: Leather and imitation of leather sold in bulk, handbags, wallets, luggage, attache cases, tote bags, briefcases, sport bags, traveling trunks, carry-on bags, shoulder bags, garment bags for traveling, key cases, umbrellas, parasols, walking sticks, whips, harnesses, saddlery; leather key chains Class 19: Fireplace surround; floor tiles; wood tile floors; glass tiles; parquet flooring; statuettes of stone, concrete, or marble; nonmetal wall panels
TRADEMARK
REGISTRATIONDATE
REG. NO.
GOODS and SERVICES
Class 20: Furniture; mirrors, namely looking glasses; picture frames; chairs; cupboards; cushions; desks; divans; plastic and wood doorknobs; figures of bone, ivory, plaster, plastic, wax and wood; plastic and wood furniture handles for doors, plastic key chains; magazine racks; office furniture; pillows; fitted furniture covers Class 21: Household or kitchen utensils and containers, namely, dinnerware; beverage-ware; glassware; sugar bowls; beer mugs; bottle openers; bowls; candle holders not of precious metal; china ornaments; cookware, namely nonelectric frying pans; corkscrews; soap dispensers; figurines in China, crystal, earthenware, glass, porcelain and terracotta; holders for flowers and plants; perfume atomizers sold empty; plates; pots; soapboxes; soap holders; vases; flower baskets; porcelain and earthenware doorknobs and furniture handles for doors Class 24: Fabric for textile use, fabric of imitation animal skins, fabric for boots and shoes, bath linen; bed linen; blankets; curtains; unfitted furniture covers; handkerchiefs; kitchen towels; textile wall hangings Class 25: Clothing for men, women and children, namely belts, coats, raincoats, waistcoats, blouses and pullovers, jackets, trousers, skirts, dresses, suits, shirts and chemises, T-shirts, sweaters, underwear, socks and stockings, gloves, ties, scarves, hats and caps, boots, shoes and slippers
TRADEMARK
REGISTRATION DATE
REG. NO.
GOODS and SERVICES
Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; non-textile wall hangings; non-textile wall decorations
(Image Omitted) “Medusa Head Design”
Dec. 17, 2019
5937934
Class 9: Protective cases for cell phones; Protective cases for laptop computers; Protective cases for portable media players
(Image Omitted) “Greca Design”
Jan. 2, 2007
3194501
Class 3: bath foam, deodorants for men and women, fragrances, namely, perfume, toilet water Class 9: glasses, sunglasses, spectacles, spectacle frames, and cases Class 14: Articles made of precious metals and alloys of precious metals, with or without precious stones, namely, rings, necklaces, bracelets, earrings, tie clips, cuff-links, watches, costume jewelry Class 16: writing and marking instruments, namely, pens Class 18: Leather and imitation leather goods, namely, handbags, wallets, luggage, attache cases, tote bags, briefcases, sport bags, traveling trunks, carry-on bags, shoulder bags, garment bags for traveling
TRADEMARK
REGISTRATION DATE
REG. NO.
GOODS and SERVICES
Class 24: Fabric for textile use, fabric for boots and shoes, bath linen, bed linen; bed blankets; unfitted fabric furniture covers Class 25: Clothing for men, women and children, namely belts, coats, raincoats, waistcoats, blouses and pullovers, jackets, trousers, skirts, dresses, suits, shirts and chemises, t-shirts, sweaters, underwear, socks and stockings, gloves, ties, scarves, hats and caps, boots, shoes and slippers
(Image Omitted) “Greca Element Design”
Jun. 24, 2008
3453992
Class 3: bath foam, after shaves, deodorants for men and women, fragrances, perfume Class 9: glasses, sunglasses, spectacles Class 18: Leather and imitation leather goods, namely, handbags, wallets, luggage, tote bags, key cases Class 20: Furniture; mirrors, namely, looking glasses; cushions; desks; divans; office furniture; pillows; parts and fittings for the aforesaid furniture goods, namely, fitted furniture covers not of paper Class 24: bath linen; bed linen; bed blankets
TRADEMARK
REGISTRATION DATE
REG. NO.
GOODS and SERVICES
Class 25: Clothing for men, women and children, namely, belts, coats, waistcoats, blouses and pullovers, jackets, trousers, skirts, dresses, shirts and chemises, T-shirts, underwear, socks and stockings, gloves, ties, scarves, hats and caps, shoes and slippers Class 26: clothing buttons
(Image Omitted) “Lion Head Design”
Apr. 4, 2017
5173618
Class 3: Cosmetics, including night and day creams; preparations for cleaning the face and body; bath foam; shaving foam after shave; make-up foundations; lip gloss; shoe wax; mascara; cosmetic masks; eyebrow pencils; pencils for cosmetic purposes, nail varnish; deodorants for men and women, hand and body soap, shampoo and hair coloring preparations in the nature of tints; hair lotions and lotions for cosmetic purposes; hair lacquers; dentifrices, fragrances; perfumery, eau de Cologne, lavender water, scented water being perfumery and essential oils for personal use, for men and women; bases for flower perfumes in the nature of essential oils; sun-tanning preparations being cosmetics; cosmetic preparations for baths; feminine hygiene cleansing towelettes; feminine deodorant sprays; skincare cosmetics; make-up preparations; cleaning agents for household purposes; shaving preparations; non-medicated toiletries; make-up removing preparations; talcum powder, for toilet use Class 9: Optics, namely, spectacles; sunglasses, optical glasses; goggles for sports; optical frames; monocles; theatre glasses; optical goods, namely, glasses and lenses; containers for contact lenses; eyeglasses cases; pince-nez cords; optics, namely, magnifying glasses; correcting optical lenses; optical lenses; lenses for eyeglasses; frames for glasses; electronic schedulers in the nature of electronic agendas; computers, handheld computers; data processing equipment in the nature of a computer mouse; mouse mats; computer keyboards; portable telephones; downloadable ring tones for mobile phones; cell phone straps
TRADEMARK
REGISTRATION DATE
REG. NO.
GOODS and SERVICES
Class 14: Jewelry, precious stones; horological and chronometric instruments; rings being jewelry; cuff links; bracelets being jewelry; watch bands; watch cases; clock cases; watch chains; jewelry chains; pendants; necklaces being jewelry; chronographs for use as timepieces; timepieces; stopwatches; chronoscopes; diamonds; tie pins; figurines in the nature of statuettes of precious metal; gold thread jewelry; wire of precious metal, namely, precious metal jewelry chains; silver thread jewelry; cloisonne jewelry; badges of precious metal; clock hands for clock- and watchmaking; alloys of precious metal; ingots of precious metals; movements for clocks and watches; medals; lockets being jewelry; earrings; jewelry of yellow amber, ivory jewelry; jewelry ornaments; ornaments of jet; shoe ornaments of precious metal; hat ornaments of precious metal; pendulum clocks; atomic clocks; wristwatches; pocket watches; master clocks; electric clocks and watches; jewelry stones; trinkets or fobs, namely, key rings of precious metal; dials for clock and watch making; boxes of precious metal; cases for clock- and watchmaking; jewelry cases, namely, jewelry caskets and boxes; presentation cases for watches, namely, cases adapted for holding watches; pins being jewelry; ornamental pins; jewelry brooches; statuettes of precious metal; paste jewelry being costume jewelry; time instruments, namely, watches, clocks; alarm clocks; watch crystals
TRADEMARK
REGISTRATION DATE
REG. NO.
GOODS and SERVICES
Class 18: Leather and imitations of leather; animal skins, hides; women's handbags; pocket wallets; luggage; garment carriers in the nature of garment bags for travel; rucksacks; document cases; sports bags; trunks being luggage; travelling trunks; carry-on bags; sling bags; clothing bags in the nature of garment bags for travel; valises; suitcases; attache cases; purses; travelling handbags; notecases, namely, business card cases; key cases; umbrellas; parasols; beach parasols; walking sticks; alpenstocks; whips; harness for horses; saddlery Class 25: Clothing, namely shirts, pants, jeans, sweaters, skirts, dresses; footwear; headgear, namely, headwear; clothing of imitations of leather, namely, pants, jackets; clothing of leather, namely, pants, jackets; motorists' clothing, namely, motorists' jackets, driving gloves; cyclists' clothing, namely, biking shorts, athletic shirts, cycling gloves; clothing for gymnastics, namely, leotards, leggings; gowns; bath robes; bandanas being scarves; berets; underclothing; smocks, boas being necklets; teddies being undergarments; garters; sports shoes; stockings; slippers; socks; jodhpurs; short-sleeve shirts; stuff jackets being clothing; top hats; coats; hoods being clothing; belts for clothing; money belts being clothing; tights; collars being clothing; detachable collars; suits; beachwear; ties; ascots; headbands for clothing; pocket squares; dress handkerchiefs in the nature of pocket squares; jackets being clothing; jumper dresses; girdles; gloves being clothing; arm length gloves; mackintoshes; knitwear, namely knit shirts, knit skirts, knit dresses, knit sweaters, knit jackets; jersey clothing, namely, shirts, pants, dresses; leg warmers; leggings being trousers; liveries; sports jerseys; hosiery; swimsuits; pullovers; muffs being clothing; maniples; pelerines; mantillas; sleep masks; miniskirts; cowls being clothing; boxer shorts; bathing drawers; vests, trousers; parkas; pelisses; furs, namely, fur cloaks, fur coats; shirt yokes; pajamas; wristbands being clothing; ponchos; sock suspenders; brassieres; sandals; bath sandals; shoes; bath slippers; gymnastic shoes; beach shoes; shawls; sashes for wear, underpants; wimples; topcoats; outer clothing, namely, jackets, coats, vests; petticoats; slips being undergarments; shirt fronts; ankle boots; boots; fur stoles; T-shirts; combinations being clothing; uniforms; veils being clothing; visors being headwear; wooden shoes
TRADEMARK
REGISTRATION DATE
REG. NO.
GOODS and SERVICES
Class 26: Lace and embroidery, ribbons and braids; buckles for clothing; shoe fasteners; blouse fasteners, namely, snaps and buttons for blouses; shoe buckles; frills for attachment to clothing; lace for edgings for clothing; hook and eye fastening tape; clothing hooks; hooks for corsets; shoe hooks; tinsels as trimmings for clothing; buttons; stud buttons for duvets; stud buttons for shoes; collar studs, namely collar stays; snap fasteners; pins, namely bonnet pins, hair pins, hat pins and needles; borders and edgings for clothing; hem tape for clothing Class 35: Advertising services; business management; business administration services; providing office functions; dissemination of advertisements; dissemination of advertising matter; rental of advertising space; commercial and industrial business management assistance and consultancy; professional business consulting; modelling for advertising or sales promotion; franchising, namely, services rendered by a franchisor, that is transfer of business and organizational consultancy assistance in the development and management of a commercial enterprise; provision of information concerning commercial sales of fashion goods; retail store services and on-line retail store services for others featuring cosmetics, spectacles, mobile telephones, jewelry, clocks and watches, bags, accessories of leather, clothing, footwear, haberdashery articles; presentation of goods on communications media, namely, providing television home shopping services in the field of general consumer merchandise; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; online retail store services featuring cosmetics, spectacles, mobile telephones, jewelry, clocks and watches, bags, accessories of leather, clothing, footwear, haberdashery articles; retail store services and wholesale store services featuring cosmetics, spectacles, mobile telephones, jewelry, clocks and watches, bags, accessories of leather, clothing, footwear, haberdashery articles
TRADEMARK
REGISTRATION DATE
REG. NO.
GOODS and SERVICES
(Image Omitted) “Lion Head Design”
Aug. 1, 2017
5253199
Class 14: Jewellery, precious stones; horological and chronometric instruments; jewelry, namely, rings; cuff links; jewelry, namely, bracelets; watch bands; watch cases being parts of watches; clock cases being parts of clocks; watch chains; jewelry chains; pendants; jewelry, namely, necklaces; chronographs as watches; timepieces; stopwatches; chronoscopes; diamonds; tie pins; figurines, namely, statuettes of precious metal; gold thread jewelry; jewelry, namely, wire in the nature of threads of precious metal; jewelry, namely, silver thread; jewellery; jewelry, namely, cloisonne jewellery; badges of precious metal; clock- and watchmaking items, namely, clock hands; alloys of precious metal; ingots of precious metals; movements for clocks and watches; medals; jewelry, namely, lockets; earrings; jewellery of yellow amber; ivory jewelry; jewelry, namely, ornaments; ornaments of jet; shoe ornaments of precious metal; hat ornaments of precious metal; pendulum clocks; atomic clocks; wristwatches; pocket watches; master clocks; electric clocks and watches; jewellery stones; key rings in the nature of trinkets and fobs of precious metal; dials for clock-and-watch-making; boxes of precious metal; cases for clock- and watchmaking, namely, cases being parts of watches and clocks; jewelry cases in the nature of caskets or boxes; presentation cases for watches being parts of watches; pins being jewelry; ornamental pins; jewelry, namely, brooches; statuettes of precious metal; costume jewelry, namely, paste jewelry; time instruments, namely, watches, clocks; alarm clocks; watch crystals
TRADEMARK
REGISTRATION DATE
REG. NO.
GOODS and SERVICES
Class 18: Leather and imitations of leather; animal skins and hides; women's handbags; pocket wallets; luggage; garment carriers, namely, garment bags for travel; rucksacks; document cases; sports bags; luggage, namely, trunks; travelling trunks; carry-on bags; sling bags; garment bags for travel; valises; suitcases; attache cases; purses; travelling handbags; business card cases; key cases, umbrellas; parasols; beach parasols; walking sticks; alpenstocks; whips; harness for horses; saddlery Class 25: Clothing, namely, shirts, pants, jeans, sweaters, dresses; footwear; headgear, namely, headwear, hats, caps; clothing of imitations of leather, namely, pants, jackets; clothing of leather, namely, pants, jackets; motorists' clothing, namely, motorists' jackets; cyclists' clothing, namely, biking shorts, athletic shirts, bicycling gloves; clothing for gymnastics, namely, leotards, leggings, gymnastic shoes; gowns; bath robes; scarves, namely, bandanas; berets; underclothing; smocks; necklets, namely, boas; undergarments, namely, teddies; garters; sports shoes; stockings; slippers; socks; jodhpurs; short-sleeve shirts; shirts; clothing,
TRADEMARK
REGISTRATION DATE
REG. NO.
GOODS and SERVICES
namely, stuff jackets; top hats; coats; clothing, namely, hoods; belts for clothing; clothing, namely, money belts; tights; clothing, namely, collars; detachable collars; suits; beachwear; ties; ascots; headbands for clothing; pocket squares; dress handkerchiefs, namely, pocket squares; clothing, namely, jackets; skirts; jumper dresses; girdles; clothing, namely, gloves; arm length gloves; mackintoshes in the nature of raincoats; knitwear, namely, knit shirts, knit skirts, knit dresses, knit sweaters, knit jackets; clothing, namely, jerseys; leg warmers; trousers, namely, leggings; liveries; sports jerseys; hosiery; swimsuits; pullovers; clothing, namely, muffs; maniples; pelerines; mantillas; sleep masks; miniskirts; clothing, namely, cowls; boxer shorts; bathing drawers; vests; trousers; parkas; pelisses; fur clothing, namely, fur jackets, fur coats, fur cloaks; shirt yokes; pyjamas; clothing, namely, wristbands; ponchos; sock suspenders; brassieres; sandals; bath sandals; shoes; bath slippers; gymnastic shoes; beach shoes; shawls; sashes for wear; underpants; wimples; topcoats; outerclothing, namely, jackets, coats, vests; petticoats; undergarments, namely, slips; shirt fronts; ankle boots; boots; fur stoles; T-shirts; clothing, namely, combinations; uniforms; clothing, namely, veils; headwear, namely, visors; wooden shoes Class 26: Lace and embroidery, ribbons and braids; clothing accessories, namely, clothing buckles; shoe fasteners; blouse fasteners; shoe buckles; frills for attachment to clothing; lace for edgings; hook and eyes; haberdashery, namely, clothing hooks; hooks for corsets; shoe hooks; tinsels in the nature of lace as trimmings for clothing; buttons; press buttons for duvets; press buttons for shoes; snap fasteners; pins, namely, bonnet pins, hair pins, hat pins and needles; borders and edgings for clothing; items for hems on clothing, namely, hem tape
HERMÈS INTERNATIONAL
OWNER
TRADEMARK
Reg. Date
Reg. No.
REGISTRAR
Classes
HERMES INTERNATIONAL
HERMES
2/29/1972
930149
USA
03
HERMES INTERNATIONAL
1/22/2013
4278653
USA
3, 6, 8, 9, 11, 12, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 34, 35, 41
HERMES INTERNATIONAL
HERMES INTERNATIONAL
12/29/1998
2213940
USA
08, 09, 21, 28, 34
HERMES INTERNATIONAL
6/27/1939
368785
USA
08, 14
HERMES INTERNATIONAL
7/18/1939
369271
USA
14
HERMES INTERNATIONAL
8/1/1939
369681
USA
18
HERMES INTERNATIONAL
8/4/1987
1450841
USA
20
HERMES INTERNATIONAL
8/15/1939
370082
USA
21
HERMES INTERNATIONAL
3/9/1971
909653
USA
24
HERMES INTERNATIONAL
8/8/1939
369944
USA
25
HERMES INTERNATIONAL
10/8/1968
858299
USA
25
HERMES INTERNATIONAL
1/16/2007
3198963
USA
35
12/27/2005
3036116
USA
35
HERMES INTERNATIONAL
8/15/1978
1099896
USA
42
HERMES INTERNATIONAL
(Image Omitted) HERMES
5/1/2001
2447278
USA
08, 09, 16, 20, 24, 28, 34
HERMES INTERNATIONAL
10/8/1985
1364533
USA
21
HERMES INTERNATIONAL
1/6/1970
883588
USA
03, 14, 18, 25
HERMES INTERNATIONAL
1/16/2007
3198973
USA
35
HERMES INTERNATIONAL
12/27/2005
3036117
USA
35
HERMES INTERNATIONAL
9/24/2002
2623070
USA
37, 40, 41
HERMES INTERNATIONAL
8/15/1978
1099897
USA
42
HERMES INTERNATIONAL
(Image Omitted)
9/4/1984
1292597
USA
03, 09, 14, 16, 18, 24, 25, 28, 34
HERMES INTERNATIONAL
5/27/1975
1011908
USA
14
HERMES INTERNATIONAL
(Image Omitted)
11/23/1993
1806107
USA
18
HERMES INTERNATIONAL
(Image Omitted)
3/20/2001
2436099
USA
03, 08, 09, 14, 16, 18, 20, 24, 25, 28, 34
HERMES INTERNATIONAL
BIRKIN
9/6/2005
2991927
USA
16, 18
HERMES INTERNATIONAL
(Image Omitted)
12/4/2007
3348789
USA
06, 08, 14, 16, 18, 21, 24, 25, 26, 28, 34
HERMES INTERNATIONAL
(Image Omitted)
1/20/2009
3564868
USA
06, 08, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 34
HERMES INTERNATIONAL
TERRE D'HERMES
4/11/2006
3079963
USA
03
HERMES INTERNATIONAL
(Image Omitted)
4/27/2007
3233558
USA
06, 14, 18, 25, 26
HERMES INTERNATIONAL
(Image Omitted)
4/27/2007
3233557
USA
06, 14, 18, 25, 26
HERMES INTERNATIONAL
LINDY
48/5/2008
3480825
USA
18
HERMES INTERNATIONAL
(Image Omitted)
1/13/2009
3561331
USA
06, 14, 16, 18, 21, 25, 26, 34
HERMES INTERNATIONAL
(Image Omitted)
3/29/2011
3936105
USA
18
HERMES INTERNATIONAL
(Image Omitted)
4/5/2011
3939358
USA
18
HERMES INTERNATIONAL
(Image Omitted)
7/26/11
4000067
USA
3, 14, 18, 25, 35
HERMES INTERNATIONAL
(Image Omitted)
2/17/2015
4687132
USA
25, 26
HERMES INTERNATIONAL
(Image Omitted)
7/21/2020
6105385
USA
14, 18, 25, & 26
LOUIS VUITTON
TRADEMARK
REGISTRATION DATE
REGISTRATION NUMBER
GOODS and SERVICES
(Image Omitted) Damier Trademark
2/17/2009
3576404
IC 018. G & S: Boxes of leather or imitation leather for packaging and carrying goods, trunks, suitcases, traveling sets comprised of matching luggage, traveling bags, luggage, garment bags for travel, toiletry cases sold empty, rucksacks, satchels, handbags, beach bags, leather shopping bags, sling bags, suit carriers, shoulder bags, waist bags, purses, travel cases, briefcases, briefcase-type portfolios, leather pouches, wallets, change purses, key cases, business card cases, calling card cases.
(Image Omitted) Decor Floral
6/28/1994
1841850
IC 018. G & S: trunks; travelling trunks; suitcases; bags; namely, traveling bags; bags for climbers; bags for campers; rucksacks; haversacks; shopping bags; handbags; vanity cases; attache cases, satchels; pouches; briefcases; wallets; pocket wallets; card cases; bill and card holders; key holders; change purses; portfolios; and umbrellas.
(Image Omitted) Decor Floral
6/20/2006
3107072
IC 09. G & S: Spectacles, sunglasses and spectacle cases. IC 018. G & S: Leather and imitation leather products, namely, traveling bags, traveling sets comprised of bags or luggage, trunks and suitcases, garment bags for travel purposes; vanity cases sold empty, rucksacks, shoulder bags, handbags, attache cases, document wallets and briefcases made of leather, pouches made of leather, wallets, purses, business card cases, credit card cases; umbrellas. IC 025. G & S: Clothing and undergarments, namely, belts, scarves shawls, jackets, sashes for wear, shoes, boots.
TRADEMARK
REGISTRATION DATE
REGISTRATION NUMBER
GOODS and SERVICES
(Image Omitted) Flower
8/4/1998
2177828
IC 014. G & S: goods made of precious metals, namely, shoe ornaments, ornamental pins; jewelry, namely, rings, ear rings, cufflinks, bracelets, charms, necklaces,; horological instruments, straps for watches, watches and wrist-watches, cases for watches IC 018. G & S: goods made of leather or imitations of leather are not included in other classes, namely, boxes made from leather, trunks, valises, traveling bags, luggage for travel, garment bags for travel, vanity cases sold empty, rucksacks, hand bags, beach bags, shopping bags, shoulder bags, attache cases, briefcases, and fine leather goods, namely, pocket wallets, purses, leather key holders, business card cases, calling card cases, and credit card cases, umbrellas. IC 025. G & S: clothing and underwear, namely shawls, stoles, belts, shoes, boots and sandals.
(Image Omitted) Flower in circle
8/18/1998
2181753
IC 014. G & S: jewelry, namely, rings, ear rings, bracelets, charms, necklaces, horological instruments, straps for watches, watches and wrist-watches, cases for watches IC 018. G & S: goods made of leather or imitations of leather are not included in other classes, namely, boxes made from leather; trunks, valises, traveling bags, luggage for travel, garment bags for travel, vanity cases sold empty, rucksacks, hand bags, beach bags, shopping bags, shoulder bags, attache cases, briefcases, and fine leather goods, namely, pocket wallets, purses, leather key holders, business card cases, calling card cases, credit card cases, and umbrellas. IC 025. G & S: clothing and underwear, namely, shirts, waistcoats, raincoats, skirts,
TRADEMARK
REGISTRATION DATE
REGISTRATION NUMBER
GOODS and SERVICES
coats, pullovers, trousers, dresses, jackets, shawls, stoles, scarves, neckties, pocket squares, belts shoes, boots and sandals.
(Image Omitted) Flower in Rhombus
10/14/2003
2773107
IC 014. G & S: Jewelry including rings, earrings, cuff links, bracelets, charms, necklaces, and medallions; horological and chronometric instruments and apparatus, namely, watches IC 018. G & S: Travel bags, travel bags made of leather; luggage trunks and valises, garment bags for travel, vanity-cases sold empty; rucksacks, shoulder bags, handbags; attache-cases, briefcases, drawstring pouches, pocket wallets, purses, umbrellas, business card cases made of leather or of imitation leather, credit card cases made of leather or of imitation leather; key holders made of leather or of imitation. IC 025. G & S: Clothing, namely, shirts, T-shirts, belts, scarves, neck ties, shawls, raincoats, overcoats, high-heeled shoes, low-heeled shoes, boots, tennis shoes.
LOUIS VUITTON
8/6/1996
1990760
IC 018. G & S: trunks; traveling trunks; suitcases; traveling bags; luggage; garment bags for travel; hat boxes for travel; shoe bags for travel; umbrellas; animal carriers; rucksacks; haversacks; leather or textile shopping bags; beach bags; handbags; vanity cases sold empty; attache cases; tote bags, travel satchels; clutch bags; briefcases; wallets; pocket wallets; credit card cases; business card cases; bill and card holders; checkbook holders; key cases; change purses; briefcase-type portfolios. IC 025. G & S: shirts; sweatshirts; polo shirts; T-shirts; headwear; jackets; ties; belts; shawls; scarves.
LOUIS VUITTON
8/10/1976
1045932
IC 018 Luggage and ladies' handbags.
TRADEMARK
REGISTRATION DATE
REGISTRATION NUMBER
GOODS and SERVICES
LOUIS VUITTON
8/10/1976
4530921
IC 009 G & S: sunglasses; accessories for telephones, mobile phones, smart phones, namely, covers, neck straps, neck cords, and bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories. IC 016 G & S: Paper bags; boxes of cardboard or paper; cardboard and paperboard envelopes and pouches for packaging; posters; postcards; catalogs featuring luggage, travel accessories, bags, small leather goods, and clothing; printed publications, namely, books, and magazines featuring luggage, travel accessories, purses, small leather goods, and clothing; photograph albums; stationery, namely, note pads, note books; diaries; office requisites, namely, paper weights, pencil holders, pen holders, pen cases IC 025. G & S: Clothing, namely, pullovers, vests, shirts, tee-shirts, trousers, jackets, suits, coats, rain coats, waterproof jackets, waterproof pants, overcoats, parkas, skirts, dresses, pajamas, dressing gowns, nightgowns, robe, gloves, neck ties, belts for clothing, leather belts, scarves, pocket squares, sashes for wear, shawls, stockings, socks, tights, braces for clothing, suspenders, stoles, underwear, lingerie, bathing suits; headwear; shoes; slippers; boots; half-boots.
LOUIS VUITTON
12/7/2004
2909003
IC 009 G & S: Optical instruments and apparatus, namely, spectacles, eyeglasses, spectacle cases.
TRADEMARK
REGISTRATION DATE
REGISTRATION NUMBER
GOODS and SERVICES
LOUIS VUITTON (Image Omitted)
10/2/1990
1615681
IC 018. G & S: traveling bags, trunks, valises, satchels, hat boxes and shoe boxes for travel, pouches and shoulder bags used for luggage, travel kits and vanity cases sold empty and used for luggage, rucksacks, shopping bags and beach bags in the nature of luggage, hand bags, pocketbooks, briefcases, briefcase-type portfolios, wallets, billfolds, passport cases, key cases, credit card cases, business card cases, change purses.
LOUIS VUITTON PARIS
5/2/2000
2346373
IC 014. G & S: jewelry, namely, rings, belt buckles, cufflinks, bracelets, charms, brooches, necklaces, horological instruments, watches, cases for watches IC 018. G & S: Goods made of leather or of imitations of leather not included in other classes, namely, boxes of leather, trunks, valises, travelling bags, traveling sets for containing cosmetics, garment bags for travel, rucksacks, handbags, beach bags, shopping bags, shoulder bags, briefcases, pouches; fine leather goods, namely, pocket wallets, purses, key cases, card holders, checkbook holders. IC 025. G & S: Clothing and underwear, namely, sweaters, shirts, suits, waistcoats, skirts, coats, pullovers, trousers, dresses, clothing jackets, shawls, stoles, scarves, neckties, clothing belts, bathing suits, footwear; head wear and waterproof clothing, namely, raincoats.
(Image Omitted) LV Logo
9/30/2014
4614736
IC 009. G & S: sunglasses; spectacle cases; accessories for telephones, mobile phones, smart phones, tablet devices, PDAs, and MP3 players, namely, covers, neck straps, neck cords, and bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories.
TRADEMARK
REGISTRATION DATE
REGISTRATION NUMBER
GOODS and SERVICES
(Image Omitted) LV Logo
9/28/1993
1794905
IC 025. G & S: clothing for men and women; namely belts, shawls, sashes, scarves; footwear headgear.
(Image Omitted) LV Logo
1/10/1989
1519828
IC 018. G & S: trunks, valises, traveling bags, satchels, hat boxes and shoe boxes used for luggage, hand bags, pocketbooks.
(Image Omitted) LV Logo
6/27/2000
2361695
IC 025. G & S: Clothing, namely, sweaters, shirts, sweatshirts, polo shirts, t-shirts, suits, waistcoats, raincoats, skirts, coats, pullovers, trousers, dresses, jackets, shawls, stoles, scarves, neckties, pocket squares, pocket handkerchief squares for wear, gloves, ties, belts, bathing suits, shoes, boots and sandals, hats.
(Image Omitted) LV Logo
12/7/2002
2909002
IC 009 G & S: Optical instruments and apparatus, namely, spectacles, eyeglasses, spectacle cases.
(Image Omitted) LV Logo in Circle
5/29/2018
5477535
IC 014. G & S: Jewelry; fashion jewelry, especially precious or semi-precious stones, pearls, rings, earrings, cuff links, bracelets, charms, brooches, necklaces, pendants, key rings of precious metal, tie pins, medallions, jewelry rolls for travel; jewelry boxes; trophies of precious metal; timepieces, watches, wristwatches, watch straps, alarm clocks, stop watches, clock and watch making pendulums and cases or presentation cases for timepieces
TRADEMARK
REGISTRATION DATE
REGISTRATION NUMBER
GOODS and SERVICES
(Image Omitted) Toile Monogram
9/20/1932
0297594
IC 018. G & S: trunks, valises, traveling bags, satchels, hat boxes and shoe boxes used for luggage, hand bags, and pocketbooks.
(Image Omitted) Toile Monogram
10/31/2000
2399161
IC 025. G & S: Clothing and underwear, namely, shirts, polo shirts, t-shirts, waistcoats, raincoats, skirts, coats, trousers, dresses, jackets, shawls, stoles, scarves, neckties, gloves, ties, belts, bathing suits, shoes, boots and sandals, hats.
(Image Omitted) Toile Monogram
08/21/2012
4192541
IC 009 G & S: Sunglasses; spectacles; optical lenses; spectacle cases; accessories for telephones, mobile telephones, smart phones, PC tablets, personal digital assistants, and MP3 players, namely, hands-free kits for telephones, covers, housings, facades, hand straps, and neck straps IC 014. G & S: Jewelry; key rings of precious metal; tie pins; medallions; jewelry boxes; watches; watch bands; alarm clocks; cases for timepieces IC 018. G & S: Boxes of leather or imitation leather for packaging and carrying goods; traveling bags; leather traveling sets of luggage; trunks; suitcases; garment bags for travel; vanity cases sold empty; toiletry bags sold empty; backpacks; handbags; attache cases; leather document cases; wallets; purses; leather key cases. IC 025. G & S: Clothing, namely, underwear, shirts, tee-shirts, pullovers, skirts, dresses, trousers, coats, jackets, belts for clothing, scarves, sashes for wear, gloves, neckties, socks, bathing suits; footwear; headwear.
MICHAEL KORS
TRADEMARK
REGISTRATION DATE
REGISTRATION NUMBER
GOODS and SERVICES
MICHAEL KORS
June 4, 1996
1977507
25: Ladies' clothing; namely, dresses, jackets, pants, skirts, shirts, blouses, shorts, sweaters, coats, swimwear.
MICHAEL KORS
April 1, 1997
2049326
25: clothing for use by women; namely, anoraks; ascots; bandanas; belts; blazers; blousons; bodysuits; boleros; boots; caftans; camisoles; capes; caps; cardigans; chemises; clogs; fur coats; suit coats; culottes; earmuffs; gloves; halter tops; hats; headbands; jeans; jogging suits; jumpers; jumpsuits; kerchiefs; kimonos; leggings; loungewear; mittens; moccasins; mufflers; neckerchiefs; neckties; neckwear; pantsuits; parkas; pedal pushers; ponchos; pullovers; raincoats; sandals; scarves; shawls; shorts; undershirts; athletic shoes; gym shorts; sweat shorts; slacks; socks; sport coats; sport shirts; stoles; suits; sweat pants; sweat shirts; T-shirts; trousers; vests; vested suits; and warm-up suits; and, clothing for use by men; namely, anoraks; belts; blazers; cardigans; fur coats; suit coats; gloves; hats; neckties; neckwear; parkas; pocket squares; pullovers; raincoats; scarves; shorts; undershirts; slacks; sport coats; sport shirts; suits; sweat pants; sweat shirts; T-shirts; trousers; tuxedos; vests; vested suits;
MICHAEL KORS
December 18, 2001
2520757
18: Handbags, billfolds, credit card cases, key cases, and tote bags.
MICHAEL KORS
December 18, 2001
2520758
9: Eyeglasses, eyeglass cases.
MICHAEL KORS
April 22, 2003
2708259
3: Cosmetics; namely, body lotion, cologne, perfume, and shower gel.
MICHAEL MICHAEL KORS
April 11, 2006
3080631
9: Eyeglass frames, eyeglasses, sunglasses, eyeglass cases
TRADEMARK
REGISTRATION DATE
REGISTRATION NUMBER
GOODS and SERVICES
14: carrying cases, namely, attache cases; bags, namely, tote bags; luggage; suitcases; handbags; purses; wallets; 25: Men's and women's clothing, namely, dresses, skirts, blouses, pants, jackets, blazers, coats, raincoats, capes, ponchos, scarves, hats, gloves, sweaters, belts, bathing suits, halter tops, jeans, warm up suits, sweatshirts, sweatpants, leggings, shorts, slacks, sport coats, sport shirts, suits, t-shirts, vests, ties; undergarments for women, namely, camisoles; footwear and headwear; belts
MICHAEL KORS
October 17, 2006
3160981
14: Watches.
(Image Omitted)
December 18, 2007
3356080
18: Handbags
MK MICHAEL KORS
May 27, 2008
3438412
18: handbags 25: Men's and women's clothing, namely, dresses, skirts, blouses, pants, jackets, blazers, coats, sweaters, belts, jeans, sweatshirts, shorts, slacks, sport coats, T-shirts; footwear and headwear; belts
MK MICHAEL KORS
November 18, 2008
3535310
14: Watches.
MICHAEL KORS
November 8, 2011
4052748
14: Jewelry.
TRADEMARK
REGISTRATION DATE
REGISTRATION NUMBER
GOODS and SERVICES
MICHAEL MICHAEL KORS
November 8, 2011
4052752
14: Jewelry and watches.
MICHAEL KORS
May 14, 2013
4334410
9: Protective cases, covers and carrying cases for mobile phones, portable media players, personal digital assistants, laptops and tablet computers.
MICHAEL MICHAEL KORS
May 14, 2013
4334409
9: Protective cases, covers and carrying cases for mobile phones, portable media players, personal digital assistants, laptops and tablet computers.
MICHAEL KORS
February 23, 2016
4905517
3: Non-medicated skin care preparations; fragrances and perfumery; Cosmetics; non-medicated sun care preparations; non-medicated toiletries; deodorants for personal use; nail care preparations
(hereinafter “Plaintiffs' Federally Registered Trademarks”). Compl. Exh. A.
2. Plaintiffs are industry leaders in the design, manufacturing, marketing, and distribution of a variety of merchandise including but not limited to apparel, belts, cosmetics, eyewear, footwear, handbags, jackets, jewelry, perfumes, wallets, and watches bearing Plaintiffs' Federally Registered Trademarks. Compl. ¶ 14.
3. For decades, Plaintiffs have developed their reputations and distinctive images across expanding product lines in both domestic and international markets. Id. ¶ 15.
4. Plaintiffs market and sell their merchandise through numerous distribution channels including but not limited to exclusive retail stores, department stores, and online through Plaintiffs' websites. Id. ¶ 16.
5. Plaintiffs annually expend millions of dollars advertising their products. Id. ¶ 17.
6. Plaintiffs are the exclusive distributors in the United States of their merchandise, all of which bear one or more of Plaintiffs' Federally Registered Trademarks. Id. ¶ 19.
7. Plaintiffs are responsible for designing and/or licensing, manufacturing, assembling, finishing, marketing and selling in interstate commerce high quality apparel, belts, cosmetics, eyewear, footwear, handbags, jackets, jewelry, perfumes, wallets, watches, and many other products. Id. ¶ 20.
8. Plaintiffs' Federally Registered Trademarks are in full force and effect, and many have become incontestable pursuant to 15 U.S.C. § 1065. Id. ¶ 21.
9. Plaintiffs have used Plaintiffs' Federally Registered Trademarks for many years, and in some instances decades, on and in connection with their merchandise. Id. ¶ 22.
10. Plaintiffs' Federally Registered Trademarks identify high quality merchandise originating with Plaintiffs. Id. ¶ 23.
11. Plaintiffs have gone and continue to go to great lengths to protect their names and enforce Plaintiffs' Federally Registered Trademarks. Id. ¶ 24.
12. Defendants allegedly have counterfeited and infringed, continue to counterfeit and infringe, and threaten to further counterfeit and infringe Plaintiffs' Federally Registered Trademarks by manufacturing, distributing and selling unauthorized merchandise, including but not limited to high quality apparel, belts, handbags, perfumes and other merchandise. The unauthorized products, which are being manufactured, distributed, and/or sold by Defendants, bear unauthorized copies of Plaintiffs' Federally Registered Trademarks. Defendants' counterfeiting and infringing activities constitute unauthorized public display and distribution of products bearing Plaintiffs' Federally Registered Trademarks. Id. ¶ 25.
13. Defendants manufacture, distribute, and/or sell this counterfeit merchandise at locations around the city, specifically: 35 West 31st Street (Block 833/Lot 20), Ground Floor, New York, New York 10001; Gotham Mini Storage, 50110th Avenue (Block 710/Lot 29), Rooms 5-1-334 and 5-1-252 and rooms rented by the same lessor, “Abbas”, New York, New York 10018; White Graffiti Truck (N.Y. License Plate No. ZWX 1388) and Sidewalks on 46th through 53rd Streets from Broadway to 6th Avenue, New York, New York, 10036; and Sidewalks on 42nd through 45th Streets on 5th Avenue, New York, New York 10036-10176. Id. ¶ 11; see also Dowd Affidavit.
14. These Defendants have been the targets of police action by the New York Police Department, and observations by trained undercover investigators. Dowd Affidavit ¶¶ 10-41.
15. Specifically, between May and September 2023, Plaintiffs' undercover investigators carried out the following investigations at 35 West 31st Street, Ground Floor, New York, New York 10001:
a. On May 31, 2023, Plaintiffs dispatched an investigator to this location to assess whether counterfeit merchandise bearing Plaintiffs' Federally Registered Trademarks was being manufactured, distributed, and/or sold. The investigator entered the left side of the ground floor of the building and observed counterfeit perfumes bearing the Federally Registered Trademarks of Burberry, Hermes, MK, LV, and Versace. The investigator then made an evidential purchase of counterfeit Hermes and Versace perfumes for one hundred twenty U.S. Dollars ($120). Compl. ¶ 31.
b. On May 31, 2023, Plaintiffs dispatched an investigator to this location to assess whether counterfeit merchandise bearing Plaintiffs' Federally Registered
Trademarks was being distributed, and/or sold. The investigator entered the ground floor of the building and observed dozens of packages received from China. The investigator then observed the seller retrieve a wallet bearing the Federally Registered Trademarks of LV, which appeared to be counterfeit, from one of these packages. The investigator then made an evidential purchase of the counterfeit LV wallet for one hundred twenty U.S. Dollars ($120). Id. ¶ 32.
c. On July 6, 2023, Plaintiffs dispatched an investigator to this location to assess whether counterfeit merchandise bearing Plaintiffs' Federally Registered Trademarks was continuing to be distributed, and/or sold. The investigator observed an individual enter the above-named building and retrieve fifty (50) boxes of handbags and wallets bearing the Federally Registered Trademarks of LV and others, all of which appeared to be counterfeit. Id. ¶ 33.
d. On August 6, 2023, Plaintiffs dispatched an investigator to this location to once again assess whether counterfeit merchandise bearing Plaintiffs' Federally Registered Trademarks was continuing to be distributed and/or sold. The investigator entered the ground floor of the building and observed dozens of packages. The investigator then observed the seller retrieve a wallet bearing the Federally Registered Trademarks of LV, which appeared to be counterfeit, from one of these packages. The investigator then made an evidential purchase of the counterfeit LV wallet for one hundred twenty U.S. Dollars ($120). Id. ¶ 34.
e. On September 27, 2023, Plaintiffs dispatched an investigator to this location to once again assess whether counterfeit merchandise bearing Plaintiffs' Federally Registered Trademarks was continuing to be distributed and/or sold. The
investigator entered the ground floor of the building and observed forty-five (45) packages containing counterfeit merchandise. The investigator also observed perfumes bearing the trademarks of Burberry and Versace. These perfumes appeared to be counterfeits bearing the trademarks of these Plaintiffs. Id. ¶ 35.
16. Between May and September 2023, Plaintiffs' undercover investigators carried out the following investigations at Gotham Mini Storage, Rooms 5-1-334 and 5-1-252 (rented by “Abbas”), New York, New York 10001:
a. On August 24, 2023, Plaintiffs dispatched an investigator to Gotham Mini Storage at the above address to assess whether counterfeit merchandise bearing Plaintiffs' Federally Registered Trademarks was being distributed and/or sold. The investigator entered the building and proceeded to two rooms rented by an individual identified as “Abbas,” rooms 5-1-334 and 5-1-252. The investigator observed hundreds of items bearing the trademarks of Burberry, Hermes, LV, and Versace, all of which appeared to be counterfeit. The investigator then made an evidential purchase of the counterfeit merchandise bearing the trademarks of Burberry, Hermes, LV, and Versace for eight hundred U.S. dollars ($800). Compl. ¶ 37.
b. On September 21, 2023, Plaintiffs again dispatched an investigator to Gotham Mini Storage at the above address to assess whether counterfeit merchandise bearing Plaintiffs' Federally Registered Trademarks was being distributed and/or sold. The investigator entered the building and proceeded to the two rooms rented by an individual identified as “Abbas” who was confirmed to still rent rooms 5-1-334 and 5-1-252. The investigator again observed hundreds of items bearing the
trademarks of all Plaintiffs, all of which appeared to be counterfeit. The investigator then made an evidential purchase of the counterfeit merchandise bearing the trademarks of LV for two hundred forty U.S. dollars ($240). Id. ¶ 38.
17. Between July and September 2023, working with the New York City Police Department, Plaintiffs' investigators observed and confirmed as counterfeit merchandise being sold bearing Plaintiffs' Federally Registered Trademarks on Sidewalks on 46th-53rd Streets from Broadway to 6th Avenue, in a White Graffiti Truck (N.Y. License Plate ZWX 1388) observed in this grid, and on Sidewalks on 42nd-45th Street on 5th Avenue. Id. ¶¶ 40-55.
18. Plaintiffs' investigator is an expert in the identification of counterfeit merchandise and concluded that all merchandise targeted during the police actions and undercover investigations was counterfeit based on: visual inconsistencies in the counterfeit merchandise, lower quality materials, inconsistencies in the packaging, discrepancies in the pricing, and that no Defendant is an authorized retailer of Plaintiffs' genuine merchandise. Dowd Affidavit ¶¶ 3, 12, 15, 19, 24, 27.
19. On Wednesday, October 11, 2023, pursuant to 15 U.S.C. § 1116(d)(2), Plaintiffs' counsel first contacted the United States Attorney's Office for the Southern District of New York (the “Office”) to notify the Office of the planned TRO Application. Beckerlegge Decl. ¶ 12.
20. Rule 65(b) of the Federal Rules of Civil Procedure authorizes courts to issue an ex parte TRO where immediate and irreparable injury, loss, or damage will result to the applicant before the adverse party or that party's attorney can be heard in opposition. Fed.R.Civ.P. 65(b).
21. A party seeking to obtain relief must show (1) a likelihood of success on the merits; (2) a likelihood of irreparable harm absent an injunction; (3) that the balance of hardships favors Plaintiffs; and (4) the public interest would not be disserved if an injunction is issued. See Coronel v. Decker, 449 F.Supp.3d 274, 280-81 (S.D.N.Y. 2020).
22. If a party requests an ex parte TRO, the “Court must also determine whether ‘(A) specific facts in an affidavit or a verified complaint clearly show that immediate and irreparable injury, loss, or damage will result to the movant before the adverse party can be heard in opposition,' and ‘(B) the movant's attorney certifies in writing any efforts made to give notice and the reasons why it should not be required.'” Cengage Learning, Inc. v. Doe 1, No. 18 Civ. 403, 2018 WL 2244461, at *1 (S.D.N.Y. Jan. 17, 2018) (quoting Fed.R.Civ.P. 65(b)(1)).
23. The Court finds first that Plaintiffs are likely to succeed on the merits of their claims. The Lanham Act provides that a defendant is liable for trademark infringement and counterfeiting if a defendant, “without the consent of the registrant, uses in commerce any reproduction, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods . . . which such use is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a). Courts examine: (1) whether the plaintiff's mark is entitled to protection and (2) whether defendant's use of the mark is likely to cause confusion. See, e.g., Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 37 (2d Cir. 2016); BBK Tobacco & Foods, LLP v. Galaxy VI Corp., 408 F.Supp.3d 508, 520 (S.D.N.Y. 2019).
24. Plaintiffs satisfy both prongs. Plaintiffs' marks are registered with the United States Patent and Trademark Office and are valid and subsisting. The registrations for the Plaintiffs' Federal Registered Trademarks are prima facie evidence of their validity and of Plaintiffs' exclusive right to use the marks under 15 U.S.C. § 1057(b). Moreover, Defendants' use of deceptive marks undercuts Plaintiffs' ability to control their reputation for providing high-quality products, which they maintained and built through considerable time and financial investments. The sale of goods differing in quality but confusingly similar in branding to Plaintiffs' renowned products is likely to confuse and deceive the consuming public into thinking Defendants' products are manufactured by Plaintiffs, which is sufficient to establish likelihood of confusion. See Spin Master Ltd. v. Alan Yuan's Store, 325 F.Supp.3d 413, 422 (S.D.N.Y. 2018). Counterfeit goods are assumed to cause a likelihood of consumer confusion under trademark infringement analysis because they, by their very nature and design, cause confusion. See Gucci Am., Inc. v. Duty Free Apparel, Ltd., 286 F.Supp.2d 284, 287 (S.D.N.Y. 2003).
25. Second, Plaintiffs have also shown that they will prevail under the common law of unfair competition. The test for unfair competition in New York common law is the same as trademark infringement under the Lanham Act, with an additional requirement of bad faith attributed to the infringer. See Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 149 (2d Cir. 1997); Vox Amplification Ltd. v. Meussdorffer, 50 F.Supp.3d 355, 366 (E.D.N.Y. 2014). Because Plaintiffs have established a likelihood of success on the merits of their trademark infringement and counterfeiting claim against Defendants, bad faith is presumed. See Salvatore Ferragamo S.p.A. v. Does 1-56, No. 18 Civ. 12096, 2020 WL 774237, at *4 (S.D.N.Y. Feb. 18, 2020).
26. Third, Plaintiffs are likely to succeed on their claim for false designation of origin under Section 43(a) of the Lanham Act. 15 U.S.C. § 1125(a). Defendants' uses of marks identical to Plaintiffs' Federally Registered Trademarks are false descriptions or representations of the source or origin of goods in violation of this statute and are a separate basis for granting a preliminary injunction. See Sears, Roebuck & Co. v. Sears Fin. Network, 576 F.Supp. 857, 861 (D.D.C. 1983); Apollo Distrib. Co v. Apollo Imports, Inc., 341 F.Supp. 455, 458 (S.D.N.Y. 1972).
27. Fourth, Plaintiffs have also demonstrated that they are entitled to relief under Section 43(c) of the Lanham Act and New York's Anti-Dilution Statute. Plaintiffs can demonstrate that they prevail under the Lanham Act by demonstrating: (1) the mark is famous and distinctive, (2) Defendants' use of the diluting marks in commerce after Plaintiffs' marks became famous, (3) Defendants used the marks after the marks became famous, and (4) a likelihood of dilution. See Diesel S.P.A. v. Does, No. 14-CV-4592 (KMW), 2016 WL 96171, at *5 (S.D.N.Y. Jan. 8, 2016); Gucci Am., Inc. v. Guess?, Inc., 868 F.Supp.2d 207, 241 (S.D.N.Y. 2012). Here, Plaintiffs' marks are famous and became famous before Defendants' use, and there is no question that Defendants' distribution or sale of counterfeit products constitutes commercial use. Further, Defendants' use of the marks for the sale or distribution of counterfeit goods is likely to dilute the quality of the marks by blurring or tarnishment as a matter of law. See Burberry Ltd. v. Euro Moda, Inc., No. 08 Civ. 5781, 2009 WL 1675080, at *13-15 (S.D.N.Y. June 10, 2009).
28. For similar reasons, Plaintiffs can also demonstrate that they prevail under New York's Anti-Dilution Statute by showing that: (1) they own distinctive marks and (2) a likelihood of dilution of the distinctive mark. See Sara Designs, Inc. v. A Classic Time Watch Co. Inc., 234 F.Supp.3d 548, 556 (S.D.N.Y. 2017); Kaplan, Inc. v. Yun, 16 F.Supp.3d 341, 352 (S.D.N.Y. 2014).
29. Plaintiffs have demonstrated that an ex parte seizure order is necessary pursuant to 15 U.S.C. § 1116(d)(4)(B)(i)-(vii), by demonstrating: (1) that an order other than an ex parte seizure order is not adequate to achieve the purposes and (2) the person against whom seizure would be ordered, or persons acting in concert with such person, would destroy, move, hide or otherwise make such matter inaccessible to the court if notice is given. See Moose Toys Pty Ltd. v. Thriftway Hylan Blvd. Drug Corp., No. 15 Civ. 4483, 2015 WL 4772173, at *3-4 (E.D.N.Y. Aug. 6, 2015); Tommy Hilfiger Licensing, Inc. v. Tee's Ave., Inc., 924 F.Supp. 17, 20 (S.D.N.Y. 1996).
30. Plaintiffs have satisfied the statutory criteria under 15 U.S.C.§ 1116(d)(4)(B) that must be met before the Court may grant an ex parte order of seizure:
a. The entry of any order other than a seizure order without notice will not serve to adequately achieve the objectives underlying the Trademark Counterfeiting Act and the common law of trademark infringement;
b. Plaintiffs have not publicized its proposed seizure;
c. Plaintiffs have given the United States Attorney for this District notice of Plaintiffs' application for a seizure order without notice pursuant to 15 U.S.C. § 1116(d)(2);
d. Plaintiffs are likely to succeed in showing that Defendants have used a counterfeit mark in connection with the sale, offering for sale or distribution of goods or services; and
e. Plaintiffs will incur immediate and irreparable harm if this Court declines to grant a seizure and/or impoundment order without notice.
Based on the foregoing facts and conclusions of law, Plaintiffs' Application is hereby GRANTED as follows:
ORDERED that Defendants shall appear before this Court a telephonic hearing on October 31 at 12 p.m., and show cause why a preliminary injunction, pursuant to Fed. R. Civ. P. 65, should not be issued enjoining Defendants, their agents, servants, employees, officers, and all persons in active concert and participation with them, pending the final hearing and determination of this action:
1. From using Plaintiffs' Federally Registered Trademarks;
2. From possessing, receiving, manufacturing, distributing, advertising, promoting, returning, offering for sale or otherwise disposing of in any manner, holding for sale or selling any goods including, but not limited to, clothing, labels, tags, handbags, logos, decals, emblems, signs, and other forms of markings, any packaging, wrappers, pouches, containers and receptacles, and any catalogs, price lists, promotional materials and the like bearing a copy or colorable imitation of Plaintiffs' Federally Registered Trademarks;
3. From using any logo, trade name, or trademark which may be calculated to falsely represent or which has the effect of falsely representing that the services or products of Defendants are sponsored by, authorized by, or in any way associated with Plaintiffs;
4. From infringing Plaintiffs' Federally Registered Trademarks;
5. From otherwise unfairly competing with Plaintiffs;
6. From falsely representing themselves as being connected with Plaintiffs or sponsored by or associated with Plaintiffs;
7. From using any reproduction, counterfeit, copy, or colorable imitation of Plaintiffs' Federally Registered Trademarks in connection with the publicity, promotion, sale, or advertising of goods sold by Defendants including, but not limited to, clothing, labels, tags, handbags, logos, decals, emblems, signs, and other forms of markings, any packaging, wrappers, pouches, containers and receptacles, and any catalogs, price lists, promotional materials and the like bearing a copy or colorable imitation of Plaintiffs' Federally Registered Trademarks;
8. From affixing, applying, annexing, or using in connection with the sale of any goods, a false description or representation, including words or other symbols tending to falsely describe or represent such goods as being those of Plaintiffs and from offering such goods in commerce;
9. From using any trademark or trade name in connection with the sale of any goods which may be calculated to falsely represent such goods as being connected with, approved by or sponsored by Plaintiffs; and
10. From destroying, altering, disposing of, concealing, tampering with or in any manner secreting any and all business records, invoices, correspondence, books of account, receipts or other documentation relating or referring in any manner to the manufacture, advertising, receiving, acquisition, importation, purchase, sale or offer for sale, or distribution of any merchandise bearing Plaintiffs' Federally Registered Trademarks; and it is further
ORDERED that pending the hearing and determination of Plaintiffs' motion for preliminary injunction, Defendants, their agents, servants, employees, officers, and all other persons in active concert or participation with them, be and hereby are, without prior written or oral notice, temporarily restrained and enjoined from in any manner, either directly or indirectly, committing any of the acts set forth above which are sought to be enjoined by Plaintiffs; and it is further
ORDERED, that the United States Marshal for the Southern District of New York, the City of New York, Office of the Sheriff, or a local law enforcement officer having jurisdiction (hereinafter jointly referred to as “Federal/Local Law Enforcement”), assisted by one or more attorneys or agents of Plaintiffs (jointly or severally referred to as “Plaintiffs' Representatives”), is directed to seize and sequester or impound the following in the possession, custody or control of Defendants:
1. All merchandise bearing any copy or counterfeit of Plaintiffs' Federally Registered Trademarks or any markings substantially indistinguishable therefrom;
2. All labels, tags, logos, emblems, signs, and other forms of markings, all packaging, wrappers, pouches, containers and receptacles, and all advertisements, catalogs, price lists, guarantees, promotional materials and the like bearing any copy or counterfeit of Plaintiffs' Federally Registered Trademarks or any markings substantially indistinguishable therefrom, and all plates, molds, dies, tooling, machinery, assembly equipment and other means of making the same; and
3. All books and records showing:
a. Defendants' manufacture, receipt, and sale of merchandise bearing the aforesaid trademarks either by reference to such trademarks or by style or code number or otherwise; and, b. Defendants' manufacture, receipt, and sale of any labels, tags, logos, decals, emblems, signs, and other forms of markings, any packaging, wrappers, pouches, containers and receptacles, and any catalogs, price lists, guarantees, promotional materials and the like bearing the aforesaid trademarks, either by reference to such trademarks or by style or code number or otherwise;
At the following locations:
1. 35 West 31st Street (Block 833/Lot 20), Ground Floor, New York, New York 10001
2. Gotham Mini Storage, 50110th Avenue (Block 710/Lot 29), Rooms 5-1-334 and 5-1-252, and other rooms rented by the same lessor “Abbas,” New York, New York 10018
3. Sidewalks and White Graffiti Truck (N.Y. License Plate No. ZWX 1388) on 46th through 53rd Streets from Broadway to 6th Avenue, New York, New York, 10036
4. Sidewalks on 42nd through 45th Streets on 5th Avenue, New York, New York 10036-10176.and it is further
ORDERED that, to the extent necessary to effect the seizure and sequestration ordered herein, Federal/Local Law Enforcement may use such force as may be reasonably necessary, including breaking any locks, to enter the premises of, or vehicle of, or facility in the possession, custody, or control of Defendants, and it is further
ORDERED that anyone interfering with the execution of this order may be subject to arrest by Federal/Local Law Enforcement; and it is further
ORDERED that Plaintiffs provide in advance of each and every execution of this Order an advance deposit to Federal/Local Law Enforcement of any and all estimated fees and costs, as determined by Federal/Local Law Enforcement, and that Plaintiffs shall be responsible to Federal/Local Law Enforcement for all fees and charges incurred in carrying out this order; and it is further
ORDERED that Plaintiffs shall provide a person or persons capable of determining whether or not an item is covered by the preceding paragraphs, and Federal/Local Law Enforcement shall follow such person or persons' determination in the seizure; and it is further
ORDERED that Federal/Local Law Enforcement shall transfer possession of all such seized merchandise and materials to Plaintiffs' Representatives at a secure facility as substitute custodians for the Court, upon their authorized signature on behalf of Plaintiffs on all proper receipts, pending further order of this Court; and it is further
ORDERED that Plaintiffs' Representatives shall promptly inspect the items seized, and if any items are found to be genuine products, such items are to be returned to Defendants within seven (7) business days of the date this Order is executed; and it is further
ORDERED that Defendants show cause before this Court on the date and place set forth above why an order should not be entered, pursuant to 15 U.S.C. § 1116(d)(1)(A), Fed.R.Civ.P. 65(b), and the common law of trademark, confirming the seizure authorized herein; and it is further
ORDERED that while Plaintiffs' counsel or its agents may photocopy and review any books and records seized pursuant to this Order, they may not disclose any trade secrets or other confidential information contained in such books and records to Plaintiffs or any other person pending the hearing of Plaintiffs' motion to confirm the seizure authorized herein; and it is further
ORDERED that the search, seizure, and sequestration ordered hereinabove may be photographed and/or videotaped for the purpose of authenticating and assisting in the obtaining of evidence and to prevent subsequent controversy concerning the events occurring during such search, seizure, sequestration and/or impoundment; and it is further
ORDERED that pursuant to 15 U.S.C. § 1116(d)(1)(B) and Rules 30 and 34 of the Federal Rules of Civil Procedure, Plaintiffs be given expedited discovery of Defendants with respect to the manufacture, receipt and sale of merchandise, containers, handbags, sunglasses, or other products and labels bearing Plaintiffs' Federally Registered Trademarks including discovery of the source thereof, the creation of such trademarks, the quantity of goods bearing such trademarks ordered, in inventory and sold by Defendants, and other matters relevant to this action and that such discovery shall take place no later than one (1) day prior to the show cause hearing scheduled herein; and it is further
ORDERED that a bond to be posted by Plaintiffs in the amount of $5,000 is deemed sufficient as security for the payment of such costs and damages as may be incurred or suffered by any party who is subsequently found to be wrongfully enjoined or restrained hereby, or as a result of a wrongful seizure and/or impoundment or wrongfully attempted seizure and/or impoundment; and it is further
ORDERED that personal service of the Summons and Complaint, of this Order, and Plaintiffs' Counsel's Declaration in support of this Order may be made on Defendants by hand-delivering a copy of the same to individuals at the locations specified above during the execution of this seizure order, and that such service shall be deemed sufficient service; and it is further
ORDERED that service of the documents referenced in the prior Paragraph shall be completed, either in accordance with the prior Paragraph or the Federal Rules of Civil Procedure, within one week of the date of this Order; and it is further
ORDERED that Plaintiffs may redact service copies of the Summons and Complaint, of this Order, and of Counsel's Declaration in support of this Order to remove information identifying any other Defendants, including but not limited to Defendants' addresses, to prevent premature disclosure of the locations identified in this Order and the papers filed in support of this Order; and it is further
ORDERED that Defendants may seek relief prior to the hearing to show cause scheduled above; and it is further
ORDERED that copies of the documents filed in this action in support of this Order, but not served, be furnished to Defendants or their counsel upon request; and it is further
ORDERED that Defendants' answering papers, if any, be filed with this Court and personally served upon Plaintiffs' counsel, Baker & Hostetler LLP, 45 Rockefeller Plaza, New York, New York 10111, Attn: Robertson D. Beckerlegge Esq., on or before two days prior to the show cause hearing scheduled herein; and it is further
ORDERED that upon each and every execution of this Order, Plaintiffs' Representatives shall prepare and sign, and Federal/Local Law Enforcement shall confirm and sign, an inventory of all items seized pursuant to this order, noting, inter alia, the date and location of each seizure, and a brief description of all items seized, and that Federal/Local Law Enforcement file a return to this Court upon each and every execution of this Order with a copy of the pertinent abovedescribed inventory signed by Plaintiffs' representatives and Federal/Local Law Enforcement; and it is further
ORDERED that Plaintiffs, on behalf of themselves, their officers, employees, principals and assigns (hereinafter individually and collectively known as “Plaintiffs' Group”), hereby release any and all claims, demands, rights, and causes of action of any kind, whether known or unknown, arising from any and all known or unknown, foreseen or unforeseen causes, which they may have or hereafter acquire against the United States of America, the State of New York, and/or the City of New York, whichever is involved in the execution of this Order, as well as its agencies, agents, officers, or employees, arising from the execution of this Order to the extent that the underlying acts or omissions were performed, precipitated, sanctioned or condoned by Plaintiffs' Group; and it is further
ORDERED that, pursuant to 15 U.S.C. § 1116(d)(5)(C), any seizures authorized under this Order shall be made within seven (7) days of the date of entry, and pursuant to Rule 65(b)(2) of the Federal Rules of Civil Procedure, all other relief authorized under this Order shall expire within fourteen (14) days of the date of the entry, unless before that time, the Court, for good cause, extends this period for an additional fourteen (14) days.
Defendants are hereby put on notice that failure to attend the show cause hearing scheduled herein may result in the confirmation of the seizure authorized herein and the immediate issuance of the preliminary injunction, which may be deemed to take effect immediately upon the expiration or dissolution of the order herein and shall extend during the pendency of this suit the same injunctive relief previously granted by the order. Defendants are hereby further notified that they may be deemed to have actual notice of the issuance and terms of such preliminary injunction, and that any act by them in violation of any of its terms may be considered and prosecuted as contempt of this Court.
SO ORDERED.