Beruflich Dokumente
Kultur Dokumente
JURY DEMAND
ANASTASIA BEVERLY
HILLS, INC. a California
Corporation,
Defendant.
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COMPLAINT FOR (1) FEDERAL TRADEMARK INFRINGEMENT;
(2) FEDERAL UNFAIR COMPETITION; (3) COMMON LAW TRADEMARK
INFRINGEMENT; AND (4) COMMON LAW UNFAIR COMPETITION
Plaintiff, HARD CANDY, LLC (Plaintiff or Hard Candy, LLC), by its undersigned
attorneys, hereby sues Defendant, ANASTASIA BEVERLY HILLS, INC. (Defendant or
ABH), a California corporation, and alleges as follows:
JURISDICTION AND VENUE
1.
Hard Candy, LLC is a limited liability company organized and existing under the
laws of the state of Florida and has its principal place of business in Hollywood, Florida.
2.
principal place of business in California. Defendant conducts substantial business in this district
by selling its products and/or services in this district via the Internet and/or in traditional brick
and mortar stores. Defendant also maintains employees in this district and in other parts of
Florida.
3.
This is a civil action for federal and common law trademark infringement, federal
and common law unfair competition, dilution arising under the Trademark Act of 1946, as
amended, 15 U.S.C. 1051-1127, and declaratory judgment.
4.
This Court has subject matter jurisdiction pursuant to 15 U.S.C. 1121 (Lanham
Act), 28 U.S.C. 1331 (federal question), and 28 U.S.C. 1338 (trademark and unfair
competition).
5.
This Court has personal jurisdiction over Defendant under Floridas long-arm
statute, as Defendant has (1) engaged in tortious conduct of trademark infringement in this state,
(2) caused injury to Plaintiff, a resident of this judicial district, and (3) offered its infringing
goods for sale in this State, through the Internet and traditional brick and mortar stores in this
district. Defendant is further engaged in substantial and not isolated activity within the state of
Florida, carrying on business in this state, including maintaining employees in this district and in
other parts of the state, thus warranting the exercise of jurisdiction by this Court.
6.
(c)(2) as this controversy arises in this district, where Plaintiff Hard Candy, LLC resides, where
inter alia Defendants infringing actions have occurred, and where Defendant conducts business.
GENERAL ALLEGATIONS
Plaintiffs use of the Hard Candy trademark
7.
beauty and fashion industry primarily for teenage girls and young female adults, including but
not limited to cosmetics, under the federally registered trademark of Hard Candy. Hard
Candy, LLCs products are currently sold in the United States through Wal-Mart retail stores,
and on Wal-Marts website, www.walmart.com. Hard Candy, LLC maintains an internet
website at www.hardcandy.com where Hard Candy, LLCs products are displayed with a link
to Wal-Marts website for customers interested in purchasing them.
8.
Cosmetics were the initial, and are the primary, products marketed by Plaintiff
under the Hard Candy marks when the company was founded in 1995. At that time, Plaintiffs
predecessor filed a U.S. trademark application, which matured into Federal Trademark
Registration No. 1987262, issued July 16, 1996. The next year, Plaintiffs predecessor filed
another application under the name Hard Candy for cosmetics, including lipstick, lipliner,
mascara, etc., which matured into Federal Trademark Registration No. 2150397. Plaintiff
owns these Registrations and marks, and they are still valid and effective today.
9.
Since then, Hard Candy, LLC and its predecessors have adopted and
continuously used in interstate commerce the Hard Candy trademark or, in certain instances,
HC.
10.
Under Plaintiffs control, the Hard Candy brand and marks have flourished and
expanded. In fact, since 1995, Hard Candy, LLC has obtained at least fourteen (14) federal
trademark registrations in International Class 03. Hard Candy, LLCs federal trademarks
include Registration Nos. 1,987,262; 2,343,732; 2,552,029; 2,666,792; 3,695,602; 2,362,340;
2,567,186; 2,150,397; 2,666,793; 4,218,371; 4,735,879; 4,818,389; 2,059,480; 4,713,229.
(Collectively the Hard Candy Marks)
11.
Hard Candy, LLC currently offers for sale a broad range of cosmetics and
beauty products including, but not limited to, nail polish, eye shadow, concealer, lip gloss,
foundation, face powder, lipstick, blush, eyeliner, mascara, makeup primer and bronzer.
12.
as early as July 6, 1997 at http://www.hardcandy.com. Plaintiff has used this domain name
consistently since that time and through the present to sell and advertise Hard Candy products.
See, Registration no. 4247789 (filed March 4, 2010).
13.
In any event, Plaintiffs trademarks are fanciful marks or at least suggestive marks, and as such
are inherently distinctive.
trademarks have acquired a secondary meaning from its continuous use of the trademarks in
interstate commerce, and the publics association of the Hard Candy name with its business.
14.
marketing, promotion, advertising and sales activity, Plaintiffs distinctive Hard Candy Marks
have achieved widespread renown and recognition by the general public and have become
famous marks prior to Defendants efforts to use the mark Hard Candy.
15.
Indeed, in the wake of Hard Candy, LLCs recent 20th anniversary, popular
fashion and beauty publications such as InStyle Magazine, Glamour Magazine and Refinery 29
have expressed excitement over the Hard Candy brands continued success and growth,
describing the Hard Candy megabrand, and in particular, its cosmetics, as iconic, a
classic, and a staple, and even having a cult following.
Defendants Infringing Use of the mark Hard Candy.
16.
services and sells brow-shaping tools and other cosmetics products over the Internet and in
brick and mortar retailers including www.anastasiabeverlyhills.com, Sephora, Macys, ULTA,
18.
products:
19.
Defendant is currently selling and promoting its Glow Kit bearing the mark
Hard Candy across the United States of America via the Internet and in brick and mortar
stores.
20.
At the time of the drafting of this Complaint the Glow Kit bearing the mark
Hard Candy was available for purchase at various locations including but not limited to,
Macys stores in this district, including but not limited to: Dadeland, South Beach, the Falls
and Miami International Mall; Sephora stores in this district, including but not limited to:
Merrick Park in Coral Gables; and Ulta stores in this district, including but not limited to
Fountain Square and Pembroke Crossing.
21.
The Glow Kit bearing the mark Hard Candy is also available on various
Defendants actions in using the mark Hard Candy in connection with its
display, marketing, advertising, promotion, and/or sale of its cosmetics products has caused
and will cause Hard Candy, LLC irreparable harm for which money damages and other legal
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continue and/or expand the improper activities alleged in this Complaint and otherwise
continue to cause great and irreparable harm and injury to Hard Candy, LLC, through, inter
alia:
a.
Depriving Hard Candy, LLC of its statutory rights to use and control use
of its exclusive Hard Candy Marks;
b.
c.
Causing the public falsely to associate the Defendant with Plaintiffs Hard
Candy Marks;
d.
23.
preliminary and permanent injunctive relief against Defendant and against all persons acting in
concert with it.
COUNT I.
FEDERAL TRADEMARK INFRINGEMENT
(15 U.S.C. 1114 1117; Lanham Act 32)
24.
Without Hard Candy, LLCs consent, Defendant has used the mark Hard Candy
to promote its cosmetics, including by placing the mark on its Glow Kit and promotional
material associated therewith, which infringes on the Hard Candy Marks previously registered
and brought to the marketplace by Hard Candy, LLC.
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26.
Defendants use of the mark Hard Candy on its products is likely to cause
Further, Defendants activities are likely to lead the buying public to conclude,
incorrectly, that Defendants goods originate with, are authorized by, or are associated with
Plaintiffs Hard Candy brand, which Plaintiff has been building since 1995.
28.
As a result of its wrongful conduct, Defendant is liable to Hard Candy, LLC for
trademark infringement under 15 U.S.C. 1114(1). Hard Candy, LLC has suffered, and will
continue to suffer monetary damages, which it is entitled to recover under 15 U.S.C. 1117(a),
including any and all profits Defendant has made as a result of its wrongful conduct, as
minimal as they may be.
29.
Hard Candy, LLC is further entitled to recover its attorneys fees and costs
32.
Because Hard Candy, LLC advertises, markets, distributes and licenses its
products under the Hard Candy Marks, those Marks are the means by which Hard Candy,
LLCs products are distinguished from those of others in the same or related fields.
33.
Plaintiff has spent substantial sums in promotion and has generated substantial
revenues in association with its products provided under the Hard Candy Marks.
The
distinctive Hard Candy Marks have become impressed upon the minds of the trade and public
as identifying Plaintiffs beauty and fashion industry-related products, and as indicating the
source of origin of such products provided in association with the Hard Candy Marks as
emanating from Plaintiff. Plaintiff has built-up a large and valuable business in the use of the
Hard Candy Marks, and the reputation and goodwill in the marks is of great value to Plaintiff.
35.
As described above, Defendant is using and has used, marketed and offered for
sale its goods bearing the mark Hard Candy with the purpose of misleading, deceiving or
confusing customers and the public as to the affiliation, sponsorship, and/or origin of its goods
and is trading upon Hard Candy, LLCs goodwill and reputation. Defendants conduct as
described herein also constitutes an attempt to trade on the goodwill that Plaintiff has
developed in the Hard Candy Marks, all to the damage of Plaintiff.
36.
37.
enjoined.
WHEREFORE, Plaintiff seeks temporary and permanent injunctive relief, damages and
treble damages in an amount to be proven at trial, attorneys fees and costs, disgorgement of
any and all gains, profits and advantages derived from Defendants unlawful activities, and
such other relief as the Court deems just and proper, as further set forth in the Prayer for Relief
below.
COUNT III. COMMON LAW TRADEMARK INFRINGEMENT
38.
Through its use of the mark Hard Candy since 1995 to present, Plaintiff has
Without Plaintiff Hard Candy, LLCs consent, Defendant has used the mark
Hard Candy, to promote its cosmetics, including by placing the mark Hard Candy on its
Glow Kit and associated promotional material, which infringes on the Hard Candy Marks
previously brought to the marketplace by Hard Candy, LLC.
42.
Defendants infringing use of the mark Hard Candy in connection with its
cosmetics is likely to cause confusion, mistake, or deception as to its source, affiliation, origin
connection, association, or sponsorship.
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43.
Further, Defendants activities are likely to lead the buying public to conclude,
incorrectly, that its goods originate with, are authorized by, or are associated with Plaintiffs
Hard Candy brand, which Plaintiff has been building since 1995.
44.
As a result of its wrongful conduct, Defendant is liable to Hard Candy, LLC for
common law trademark infringement. Hard Candy, LLC has suffered, and will continue to
suffer monetary damages, which it is entitled to recover under common law, including any and
all profits Defendant has made as a result of its wrongful conduct.
WHEREFORE, Plaintiff requests that this Court enter judgment against Defendant as
further set forth in the Prayer for Relief below.
COUNT IV. COMMON LAW UNFAIR COMPETITION
45.
Because Hard Candy, LLC advertises, markets, distributes and licenses its
products under the Hard Candy Marks, those Marks are the means by which Hard Candy,
LLCs products are distinguished from those of others in the same or related fields.
47.
Plaintiff has spent substantial sums in promotion and has generated substantial
revenues in association with its products provided under the Hard Candy Marks.
The
distinctive Hard Candy Marks have become impressed upon the minds of the trade and public
as identifying Plaintiffs beauty and fashion industry-related products, and as indicating the
source of origin of such services provided in association with the Hard Candy Marks as
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emanating from Plaintiff. Plaintiff has built-up a large and valuable business in the use of the
Hard Candy Marks, and the reputation and goodwill in the marks is of great value to Plaintiff.
49.
As described above, Defendant is using and has used, marketed and offered for
sale its goods bearing the mark Hard Candy with the purpose of misleading, deceiving or
confusing customers and the public as to the affiliation, sponsorship, and/or origin of its
services and is trading upon Hard Candy, LLCs goodwill and reputation.
Defendants
conduct as described herein also constitutes an attempt to trade on the goodwill that Plaintiff
has developed in the Hard Candy Marks, all to the damage of Plaintiff.
50.
enjoined.
WHEREFORE, Plaintiff seeks temporary and permanent injunctive relief, damages and
treble damages in an amount to be proven at trial, attorneys fees and costs, disgorgement of
any and all gains, profits and advantages derived from Defendants unlawful activities, and
such other relief as the Court deems just and proper, as further set forth in the Prayer for Relief
below.
PRAYER FOR RELIEF
WHEREFORE, Hard Candy, LLC prays that this Court grant it the following relief:
A.
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B.
A judgment that Defendant has competed unfairly with Hard Candy, LLC in
violation of Hard Candy, LLCs rights under 15 U.S.C. 1125(a).
C.
2.
3.
Registering any domain name, which includes the Hard Candy Marks or
which is confusingly similar to the Hard Candy Marks;
4.
Further infringing the rights of Hard Candy, LLC in and to any of its
trademarks or otherwise damaging Hard Candy, LLCs goodwill or
business reputation;
5.
Otherwise competing unfairly with Hard Candy, LLC in any manner; and,
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6.
D.
A judgment requiring Defendant, within thirty (30) days after service of the
Judgment demanded herein, to destroy all advertisements and marketing materials
containing infringing materials.
E.
A judgment requiring Defendant, within thirty (30) days after service of the
Judgment demanded herein, to file with this Court and serve upon Hard Candy,
LLCs counsel a written report under oath setting forth in detail the manner in
which Defendant has complied with the Judgment.
F.
A judgment ordering that Defendant hold in trust, as constructive trustee for the
benefit of Hard Candy, LLC, its profits obtained from the infringement of Hard
Candy, LLCs Hard Candy Marks.
G.
A judgment ordering Defendant to provide Hard Candy, LLC with a full and
complete accounting of all amounts due and owing to Hard Candy, LLC as a
result of Defendants infringing activities.
H.
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I.
J.
K.
A judgment for all such other relief as this Court deems just and proper.
JURY DEMAND
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