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Case 7:11-cv-00355-GLS -GHL Document 1 Filed 03/31/11 Page 1 of 15

IN THE UNITED STATES DISTRICT COURT


FOR THE NORTHERN DISTRICT OF NEW YORK

:
CAR-FRESHNER CORPORATION, :
:
and :
:
JULIUS SÄMANN LTD., :
:
Plaintiffs, : Civil Action No.:7:11-CV-355 (GLS/GHL)
:
v. :
: COMPLAINT AND JURY DEMAND
STANISLAWSKI MARKETING :
VENTURES, LLC, D/B/A BECK & CALL :
:
Defendant. :

Plaintiffs, CAR-FRESHNER Corporation (“CFC”) and Julius Sämann Ltd. (“JSL”)

(collectively, “Plaintiffs”) allege as follows:

JURISDICTION AND VENUE

1. This action arises under the federal Trademark Act, 15 U.S.C. § 1051 et seq., and

related state statutes and the common law. This Court has jurisdiction under 15 U.S.C. § 1121,

28 U.S.C. § 1338(a) and (b), and 28 U.S.C. § 1367(a).

2. Venue is proper in this judicial district.

PARTIES

3. Plaintiff CFC is a Delaware corporation that has its principal place of business at

21205 Little Tree Drive, Watertown, New York 13601-0719.

4. Plaintiff JSL is a Bermuda corporation that has a place of business at Victoria

Place, 31 Victoria Street, Hamilton HM10, Bermuda.


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5. Upon information and belief, Defendant Stanislawski Marketing Ventures, LLC

d/b/a/ Beck & Call (“Beck & Call”) is a California limited liability company that has a place of

business at 831 Monterey Pass Road, Monterey Park, California 91754.

6. Upon information and belief, Beck & Call markets, distributes and offers for sale

promotional goods through the web sites located at http://www.beckandcall.com and

http://www.shopbeckandcall.com (the “Beck & Call Web Sites”).

7. Upon information and belief, Beck & Call markets, distributes and offers for sale

promotional goods through the Beck & Call Web Sites to customers located in the State of New

York.

8. Upon information and belief, Beck & Call markets, distributes and offers for sale

promotional goods through the Beck & Call Web Sites to customers located in this judicial

district.

9. Upon information and belief, Beck & Call has been, and presently is, regularly

doing business in the State of New York, and in this judicial district.

PLAINTIFFS’ BUSINESS AND TRADEMARKS

10. For over 55 years, directly and/or by license from JSL and its predecessors, CFC

and its predecessors have manufactured and marketed products using distinctive Tree designs as

trademarks and corporate identifiers. As a result of this long and extensive use on quality

products and this long and extensive use as corporate identifiers, the distinctive Tree designs are

well known and well received.

11. Plaintiffs’ products are sold in most countries throughout the world and appear

frequently on television, in movies, and in popular culture as a symbol of high-quality goods.

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12. As a result of the long, extensive and widespread use of the distinctive Tree

designs, the general consuming public in the United States recognizes these designs as

exclusively associated with Plaintiffs.

13. The association between Plaintiffs and their distinctive Tree designs is so well

recognized and understood that the general consuming public in the United States associates the

use of stylized pine trees for air fresheners with Plaintiffs.

14. Plaintiffs’ distinctive Tree designs are famous throughout the United States.

15. JSL owns the following federal trademark registrations for distinctive Tree

designs:

Mark Registration No. Registration Date Goods/Services

719,498 August 8, 1961 Absorbent body impregnated with a


perfumed air deodorant, in Class 5

1,131,617 March 11, 1980 Absorbent body impregnated with a


perfumed air deodorant, in Class 5

1,781,016 July 13, 1993 Air fresheners, in International Class 5

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Mark Registration No. Registration Date Goods/Services

1,791,233 September 7, 1993 Air fresheners, in International Class 5

2,741,364 July 29, 2003 Travel bags, in International Class 18;


and shirts, sweatshirts, t-shirts and
caps, in International Class 25

3,766,310 March 30, 2010 Air fresheners, in Class 5; ornamental


magnets and downloadable computer
graphics, in Class 9; clocks, in Class
14; pens, stationery, note cards, paper
folders and stickers, in Class 16;
luggage tags, in Class 18; non-metal
key chains, in Class 20; and shirts,
hats and costumes for Halloween and
Masquerades, in Class 25

16. Registration numbers 719,498; 1,131,617; 1,781,016; 1,791,233; and 2,741,364

are incontestable pursuant to 15 U.S.C. § 1065.

17. Pursuant to 15 U.S.C. § 1115, JSL’s registrations are evidence of the validity of

the marks, of JSL’s ownership of the marks, and of JSL’s exclusive right to use and license the

marks throughout the United States.

18. JSL also has common law trademark rights to its Tree design marks, which are

used in commerce in connection with various goods and services. JSL’s registered and common

law trademark rights are collectively referred to as the “Tree Design Marks.”

19. CFC is a licensee of the Tree Design Marks.

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20. The Tree Design Marks are used extensively on a wide variety of air fresheners

and related products. Plaintiffs have spent, and continue to spend, significant amounts of time

and money developing, testing and promoting their goods. Due to the significant expenditure of

time and money, Plaintiffs’ goods associated with the Tree Design Marks are recognized by the

general consuming public as high-quality products.

21. Plaintiffs license the Tree Design Marks to third parties for various goods and

services generally in connection with advertising and promotional activities. Such third party

licensed users include MasterCard International Inc., Samsung Electronics of America, Inc.,

Carnival Cruise Lines and Buffalo Wild Wings, Inc.

22. The Tree Design Marks are famous, inherently distinctive and/or have acquired

distinctiveness, represent valuable goodwill, have gained a reputation for quality belonging

exclusively to JSL, and are widely recognized by the general consuming public of the United

States as designations of the source for Plaintiffs’ products.

BECK & CALL’S ACTIVITIES

Beck & Call’s Business

23. Upon information and belief, Beck & Call is a promotional goods company that

procures goods and then markets, distributes and offers for sale those goods, via the internet, to

companies and individuals located throughout the United States.

24. Beck & Call claims to have the ability to help customers obtain a wide-variety of

promotional goods: “Whether you are looking for a specific item or just browsing for ideas, we

are your one-stop promotional source…Just choose the item, select the size, shape, ink color and

item color and quantity. If you don’t see what you are looking for we can get it. Or, call us and

we’ll do the work for you.”

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Beck & Call’s Sale of Infringing Air Fresheners

25. Prior to filing this action, CFC and JSL learned that Beck & Call was procuring,

marketing, distributing and offering for sale a number of promotional air fresheners that include

a tree design that is virtually indistinguishable from and/or confusingly similar to one or more of

Plaintiffs’ distinctive Tree Design Marks (the “Promotional Air Fresheners”).

26. Beck & Call offers for sale these Promotional Air Fresheners on the Beck & Call

Websites.

27. The following images from the Beck & Call Websites are, or include,

representative samples of the Promotional Air Fresheners:

Beck & Call’s Customized Infringing Air Fresheners

28. Upon information and belief, in addition to the products offered on the Beck &

Call Websites, Beck & Call manufactures and/or sources customized air fresheners.

29. For example, on or about July, 2010, CFC and JSL learned that DirecTV, Inc.

(“DirecTV”) was giving customers a promotional air freshener that used the Tree Design Marks.

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30. The following are reproductions of images of the infringing air fresheners

distributed by DirecTV (the “Customized Air Freshener”):

31. Because the Tree Design Marks and the Customized Air Freshener are

confusingly similar, CFC and JSL filed a civil action in the Northern District of New York

against DirecTV relating to the procurement and distribution of the Customized Air Freshener

(Civil Action No. 7:10-CV-950 (GTS) (GHL) (the “DirecTV Action”).

32. During the course of the DirecTV Action, which has now been settled, CFC and

JSL learned DirecTV had purchased the Customized Air Freshener from Beck & Call.

33. The Tree Design Marks and the design of the Promotional Air Fresheners and the

Customized Air Freshener (collectively the “Infringing Air Fresheners”) are nearly identical or

similar in appearance and connotation, are offered for the same purpose, and consumer confusion

will inevitably occur again.

34. Given the similar design of the Tree Design Marks and the Infringing Air

Fresheners, customers familiar with Plaintiffs’ goods will assume, incorrectly, that the Infringing

Air Fresheners originated from Plaintiffs, or that there is an affiliation between the parties or that

Plaintiffs have approved the Infringing Air Fresheners.

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35. Beck & Call’s use of the Infringing Air Fresheners improperly trades off the

goodwill established in Plaintiffs’ quality products.

36. Beck & Call, by its acts complained of herein, has infringed and continues to

infringe the Tree Design Marks, diluted and continues to dilute the unique commercial

impression of the Tree Design Marks, unfairly competed and continues to unfairly compete with

Plaintiffs in the marketplace, and otherwise improperly used and continues to use the reputation

and goodwill of Plaintiffs to promote its goods and services, which are not connected with, or

approved by, Plaintiffs.

37. As a result of Beck & Call’s acts set forth herein, the consuming public and trade

will likely be confused, as to the source and origin of the Infringing Air Fresheners, mistakenly

associating the goods offered by Beck & Call with those of Plaintiffs.

38. The aforesaid acts of Beck & Call have caused and, unless restrained and enjoined

by this Court, will continue to cause irreparable damage, loss and injury to CFC and JSL, for

which Plaintiffs have no adequate remedy at law.

CLAIMS FOR RELIEF

CLAIM I
INFRINGEMENT OF A REGISTERED TRADEMARK (FEDERAL)

39. Plaintiffs repeat and reallege the allegations of paragraphs 1 through 38 as if set

forth herein.

40. Beck & Call’s unlawful and improper actions, as set forth above, are likely to

cause confusion, mistake, or deception as to the source, origin, affiliation, association or

sponsorship of Beck & Call’s goods and services and falsely mislead consumers into believing

that Beck & Call’s Infringing Air Fresheners originate from, are affiliated or connected with, or

approved by, Plaintiffs.

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41. Accordingly, Beck & Call’s Infringing Air Fresheners constitute infringement of

JSL’s registered trademarks, in violation of the Lanham Act, 15 U.S.C. § 1114.

42. Beck & Call’s acts of infringement have caused CFC and JSL to sustain monetary

damage, loss and injury, in an amount to be determined at trial.

43. Beck & Call has engaged and continues to engage in these activities willfully, so

as to justify the assessment of treble damages and attorneys’ fees under 15 U.S.C. § 1117.

44. Beck & Call’s acts of infringement, unless enjoined by this Court, will continue to

cause CFC and JSL to sustain irreparable damage, loss and injury, for which CFC and JSL have

no adequate remedy at law.

CLAIM II
TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION (FEDERAL)

45. Plaintiffs repeat and reallege the allegations of paragraphs 1 through 44 as if set

forth herein.

46. Beck & Call’s unlawful and improper actions, as set forth above, are likely to

cause confusion, mistake or deception as to the source, origin or sponsorship of Beck & Call’s

Infringing Air Fresheners, and to falsely mislead consumers into believing that Beck & Call’s

Infringing Air Fresheners originate from, are affiliated or connected with, or are approved by,

Plaintiffs.

47. Accordingly, Beck & Call’s activities constitute an infringement of the Tree

Design Marks and unfair competition in violation of 15 U.S.C. § 1125(a).

48. Beck & Call’s acts of infringement and unfair competition have caused CFC and

JSL to sustain monetary damage, loss, and injury, in an amount to be determined at trial.

49. Beck & Call has engaged and continues to engage in these activities willfully, so

as to justify the assessment of treble damages under 15 U.S.C. § 1117.

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50. Beck & Call’s acts of infringement and unfair competition, unless enjoined by

this Court, will continue to cause CFC and JSL to sustain irreparable damage, loss and injury, for

which CFC and JSL have no adequate remedy at law.

COUNT III
TRADEMARK DILUTION (FEDERAL)

51. Plaintiffs repeat and reallege the allegations of paragraphs 1 through 50 as if set

forth herein.

52. The Tree Design Marks have become famous in accordance with the standard set

forth in 15 U.S.C. § 1125(c), and the Tree Design Marks became famous long before Beck &

Call adopted the Infringing Air Fresheners.

53. Beck & Call’s adoption of the Infringing Air Fresheners and their use in

commerce is likely to dilute, and has diluted, the distinctive quality of the famous Tree Design

Marks in violation of 15 U.S.C. § 1125(c).

54. Beck & Call’s acts of dilution have caused CFC and JSL to sustain monetary

damage, loss, and injury, in an amount to be determined at trial.

55. Beck & Call has engaged and continues to engage in these activities willfully, so

as to justify the assessment of treble damages under 15 U.S.C. § 1117.

56. Beck & Call’s acts of dilution, unless enjoined by this Court, will continue to

cause CFC and JSL to sustain irreparable damage, loss and injury, for which CFC and JSL have

no adequate remedy at law.

COUNT IV
VIOLATION OF NEW YORK GENERAL BUSINESS LAW § 360-l

57. Plaintiffs repeat and reallege the allegations of paragraphs 1 through 56 as if set

forth herein.

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58. Beck & Call’s acts are diluting and are likely to continue diluting Plaintiffs’

distinctive trademarks. Beck & Call’s acts also injure the business reputation of Plaintiffs, in

violation of Plaintiffs’ rights under New York General Business Law § 360-l.

59. Beck & Call’s violations of New York General Business Law § 360-l have caused

CFC and JSL to sustain monetary damage, loss and injury, in an amount to be determined at trial.

60. Beck & Call’s violations of New York General Business Law § 360-l, unless

enjoined by this Court, will continue to cause CFC and JSL to sustain irreparable harm, for

which CFC and JSL have no adequate remedy at law.

COUNT V
UNFAIR COMPETITION (COMMON LAW)

61. Plaintiffs repeat and reallege the allegations of paragraphs 1 through 60 as if set

forth herein.

62. Beck & Call’s activities complained of herein constitute forms of unfair

competition under New York State common law.

63. Beck & Call’s aforesaid violations of New York State common law have caused

CFC and JSL to sustain monetary damage, loss and injury, in an amount to be determined at trial.

64. Beck & Call fraudulently engaged, and continues to engage, in this activity

willfully and wantonly with morally culpable behavior, so as to justify the assessment of punitive

damages against it, in an amount to be determined at trial.

65. Beck & Call’s aforesaid violations of New York State common law, unless

enjoined by this Court, will continue to cause CFC and JSL to sustain irreparable damage, loss

and injury, for which CFC and JSL have no adequate remedy at law.

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COUNT VI
CONTRIBUTORY INFRINGEMENT, UNFAIR COMPETITION AND DILUTION

66. Plaintiffs repeat and reallege the allegations of paragraphs 1 through 65 as if set

forth herein.

67. Beck & Call’s conduct — i.e., intentionally inducing others (i.e., Beck & Call’s

customers) to infringe, unfairly compete with and/or dilute the Tree Design Marks, by procuring,

creating, distributing and/or selling Infringing Air Fresheners for commercial use by others —

constitutes contributory trademark infringement, unfair competition and/or dilution under federal

and state law.

68. Beck & Call’s acts of contributory infringement, unfair competition and dilution

have caused CFC and JSL to sustain monetary damage, loss and injury, in an amount to be

determined at trial.

69. Beck & Call’s acts of contributory infringement, unfair competition and dilution,

unless enjoined by this Court, will continue to cause CFC and JSL to sustain irreparable damage,

loss and injury, for which CFC and JSL have no adequate remedy at law.

PRAYER FOR RELIEF

WHEREFORE, Plaintiffs CAR-FRESHNER Corporation and Julius Sämann Ltd. demand

judgment against Defendant Stanislawski Marketing Ventures, LLC d/b/a/ Beck & Call:

A. For a preliminary and permanent injunction against Beck & Call and each of its

affiliates, officers, agents, servants, employees and attorneys, and all persons in active concert or

participation with it who receive actual notice of the Order, by personal service or otherwise:

1. Restraining and enjoining Beck & Call from using the Tree Design Marks,

or any other reproduction, counterfeit, copy, colorable imitation or confusingly similar variation

of the Tree Design Marks; in communications with public media distributed to or within the

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United States; or in any other manner suggesting in any way that Beck & Call and/or its

activities, services or products originate from, are affiliated with or authorized by Plaintiffs, or

that CFC and JSL and/or their activities, services or products are affiliated in any way with Beck

& Call.

2. Restraining and enjoining Beck & Call from using any other mark, term,

slogan, tagline or phrase which suggests or tends to suggest in any way that Beck & Call and/or

its activities, services or products originate from, are affiliated with, or authorized by, Plaintiffs,

or that CFC and JSL or their activities, services or products are affiliated in any way with Beck

& Call.

3. Restraining and enjoining Beck & Call from using in connection with any

goods or services, any false or deceptive designation, description or representation, whether by

words or symbols, which suggests or implies any relationship with Plaintiffs or gives Beck &

Call an unfair competitive advantage in the marketplace.

4. Restraining and enjoining Beck & Call from violating 15 U.S.C. §

1125(c).

5. Restraining and enjoining Beck & Call from engaging in any acts of

common law trademark infringement, unfair competition or misappropriation which would

damage or injure CFC or JSL.

6. Restraining and enjoining Beck & Call from inducing, encouraging,

instigating, aiding, abetting, or contributing in any third party usage of the Tree Design Marks.

B. That in accordance with 15 U.S.C. § 1118, all materials, packaging, labels, tags,

pamphlets, brochures, signs, sales literature, stationery, advertisements, billboards, banners,

posters, documents and the like in the possession or under the control of Beck & Call and its

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affiliates, and all plates, molds, matrices, negatives, masters and other means of making the

same, which might, if used, violate the Order herein granted, be delivered up and destroyed as

the Court shall direct.

C. That in accordance with 15 U.S.C. § 1116, Beck & Call files with the Court and

serves on counsel for Plaintiffs within thirty (30) days after service on Beck & Call of such

Order, or within such extended period as this Court may direct, a report in writing and under

oath, setting forth in detail the manner and form in which Beck & Call has complied with the

Order.

D. For an award of Beck & Call’s profits or other advantages and Plaintiffs’ damages

resulting from Beck & Call’s unlawful acts set forth herein, in an amount to be proven at the

time of trial, and/or a reasonable royalty for Beck & Call’s unlawful use of the Tree Design

Marks, together with legal interest from the date of accrual thereof.

E. For an award of treble damages, in an amount to be proven at the time of trial,

pursuant to 15 U.S.C. § 1117.

F. For an award of exemplary and punitive damages and/or increased profits, in an

amount to be proven at the time of trial.

G. For an award of attorneys’ fees and disbursements incurred by CFC and JSL in

this action.

H. For an award of costs of this action.

I. That CFC and JSL be awarded such other and further relief as the Court may

deem equitable and proper.

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JURY DEMAND

Plaintiffs demand trial by jury.

Respectfully submitted,

Dated: March 31, 2011 /s/ Nancy L. Pontius


Nancy L. Pontius (102379)
MACKENZIE HUGHES LLP
101 S. Salina Street, Suite 600
P.O. Box 4967
Syracuse, New York 13221-4967
Tel (315) 233-8281
Fax (315) 426-8358
npontius@mackenziehughes.com

Attorneys for Plaintiffs


CAR-FRESHNER Corporation and
Julius Sämann Ltd.

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