in the united states district court for the middle … · a principal place of business at 900...

IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF PENNSYLVANIA

UBU CLOTHING CORPORATION and : ALAN BLAU, : Plaintiffs :

v. : CIVIL ACTION - LAW : SEARS BRANDS, LLC, and : SEARS, ROEBUCK AND CO., : Filed Electronically Defendants :

COMPLAINT

Plaintiffs UBU Clothing Corporation and Alan Blau, by and through their

attorney, Mitchell A. Smolow, for their Complaint against the Defendants Sears

Brands, LLC and Sears, Roebuck and Co., allege as follows:

THE PARTIES

1. UBU Clothing Corporation (“UBU”), is a Pennsylvania corporation with

a principal place of business at 900 Rutter Avenue, Forty Fort, Pennsylvania

18704.

2. Alan Blau (“Blau”) is and individual with a principal place of residence

at 1913 Firethorn Lane, Villanova, PA 19085.

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Case 3:07-cv-01424-ARC Document 1 Filed 08/03/2007 of 16

3. Upon information and belief, Defendant Sears Brands, LLC (“Sears

Brands”) is an Illinois limited liability corporation with its principal place of

business at 3333 Beverly Road, Hoffman Estates, IL 60179.

4. Upon information and belief, Defendant Sears, Roebuck and Co. (“Sears

Roebuck”) is a New York corporation with a principal place of business at 3333

Beverly Road, Hoffman Estates, IL 60179.

5. Sears Brands and Sears Roebuck henceforth are collectively referred to

as “the Defendants”.

BACKGROUND AND FACTUAL AVERMENTS COMMON TO ALL

COUNTS

6. UBU designs, markets and distributes clothing and accessories labeled

with its UBU trademark.

7. UBU distributes its UBU labeled goods to over three thousand (3,000)

specialty stores and exclusively to the Nordstrom department store chain.

8. Upon information and belief, the Nordstrom department store chain is

frequently located within the same retail shopping mall as the Defendants.

9. Blau is the owner of U.S. Trademark Registration No. 1,989,387 for

U.B.U. INTERNATIONAL (the “ ‘387 Registration”) issued July 30, 1996 for

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garment dyed and washed, cotton knit and woven clothing, namely, pants, shirts,

vests, blouses and jackets.

10. Blau is the owner of U.S. Trademark Registration No. 2,424,291 for

U.B.U. (the “ ‘291 Registration”) issued January 30, 2001 for garment dyed and

washed, cotton knit and woven clothing, namely, pants, shirts, vests, blouses and

jackets.

11. Both registrations are based on use since at least as early as January 5,

1992 and are both valid and subsisting and remain in full force and effect.

12. Both registrations have become incontestable pursuant to 15 U.S.C.

§1065. A copy of said registrations are attached hereto as Exhibit “A”.

13. On June 7, 2007, a “Section 7” amendment was filed with the U.S.

Trademark Office seeking to amend the ‘291 Registration to UBU. The request to

remove the periods is pending.

14. UBU is the exclusive licensee of the UBU and UBU INTERNATIONAL

marks (collectively, “the UBU marks”).

15. UBU is a close corporation of which Blau is a shareholder.

16. Since at least 1992, Blau, UBU or a corporation exclusively licensed by

Blau has conducted business using the UBU marks.

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17. As a result of extensive advertising and use, the UBU marks have come

to be identified with plaintiffs as the source of origin of their goods. As a result of

this recognition, the UBU marks and their attendant goodwill are extremely

valuable to plaintiffs.

18. Upon information and belief, Defendants are also marketers and sellers of

clothing and accessories.

19. Upon information and belief, Defendants have and are continuing to

market and sell their “Back to School” clothing collection under a UBEU

trademark both within Pennsylvania and nationwide.

20. Defendants have designated their UBEU mark with a “TM”.

21. Defendants have marketed and sold their UBEU marked Back to School

clothing collection in both print catalogue and web advertising. A sample of such

advertising is attached as Exhibit B.

22. Upon information and belief, Defendants market and sell using their

UBEU mark within their retail stores.

23. Upon information and belief, Defendants market and sell using their

UBEU mark in their television advertising.

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24. Upon information and belief, Defendants did not market and sell using

their UBEU mark prior to the 2007 Back To School clothing collection.

25. Upon information and belief, Defendants are planning to continue to

market and sell using their UBEU mark.

26. Plaintiffs became aware of Defendants’ use of their UBEU mark on or

about July 18, 2007 when inquiry by a relative was made of one of UBU’s officers

as to when “Sears” began selling UBU’s clothing.

27. Since that date, plaintiffs have received additional inquiries from multiple

sources as to when Defendants began selling UBU’s goods.

COUNT I

Trademark Infringement Under The Lanham Act Jurisdiction and Venue

28. This claim arises under the provisions of the Trademark Act of 1946, 15

U.S.C. §1051, et. seq., particularly under 15 U.S.C. §1114(1), and is for the

infringement of trademarks registered in the United States Patent and Trademark

Office.

29. The Court has jurisdiction over the subject matter of this claim pursuant

to 15 U.S.C. §1121 and 28 U.S.C. §1338.

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30. Venue is proper in this judicial district pursuant to 28 U.S.C. §1391.

Background and Factual Averments

31. Plaintiff repeats and realleges the allegations contained in Paragraphs 1-

26 hereof as is fully set forth herein.

32. Defendants’ use of their UBEU mark has been without the consent of

plaintiffs, has caused confusion and is likely to continue to cause confusion as to

source, sponsorship, or affiliation and, in particular, tends to and does falsely

create the impression that the clothing marketed under their UBEU mark is

authorized, approved, or sponsored by plaintiffs when, in fact, it is not.

33. Plaintiffs have no control over the presentation, or appearance of

Defendants’ facilities, have no control over the presentation, format, or content of

Defendants’ advertisements, nor any control over how UBEU is used, and because

of the confusion as to the source created by Defendants, plaintiff’s goodwill with

its UBU marks is at the mercy of Defendants.

34. On or about August 3, 2007, counsel for plaintiffs sent a letter to

Defendants requesting that Defendants abandon the use of the UBEU mark.

35. Defendants’ activities complained of herein constitute willful and

intentional infringement of plaintiffs’ UBU marks, have disregarded plaintiffs’

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rights, and have continued in spite of Defendants’ knowledge that the use of their

UBEU mark is in direct contravention of plaintiffs’ rights.

36. Plaintiffs have no adequate remedy at law and are suffering irreparable

harm and damage as a result of the acts of Defendants complained of herein.

COUNT II

False Designations of Origin And False Descriptions And Representations Jurisdiction and Venue


U.S.C. §1051, et. seq., particularly under 15 U.S.C. §1125(a), and alleges the use

in commerce of false designations of origin and false descriptions and

representations.

38. The Court has jurisdiction over the subject matter of the claim pursuant

to 15 U.S.C. §1121 and 28 U.S.C. §1391.




35 hereof as is fully set forth herein.

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41. Upon information and belief, Defendants have used in conjunction

with their UBEU mark, false designations of origin and false descriptions and

representations, including words, terms, names, or symbols which tend to cause

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or

association of Defendants with plaintiffs, or as to the origin, sponsorship, or

approval of Defendants’ goods, services, or commercial activities by plaintiffs and

has caused such to enter into commerce with full knowledge of the falsity of such

designations of origin and such descriptions and representations, all to the

detriment of plaintiffs; in particular, the displaying of their UBEU mark in

conjunction with the sale of clothing constitutes false descriptions and

representations with the express intent to falsely describe or represent such goods

offered, to trade upon the reputation of plaintiffs, and to improperly appropriate the

valuable trademark rights of plaintiffs.

42. Upon information and belief, Defendants have used in conjunction with

their UBEU mark, false designations of origin and false descriptions and

representations, including words, terms, names, or symbols which in commercial

advertising and promotion tend to misrepresent the nature, characteristics, and

qualities of Defendants goods and commercial activities and has caused such to

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enter into commerce with full knowledge of the falsity of such designations of

origin and such descriptions and representations, all to the detriment of plaintiffs;

in particular, the displaying of their UBEU mark in conjunction with print, web,

and television advertisements constitute false descriptions and representations with

the express intent to falsely describe or represent such goods offered in

conjunction with Defendants’ name, to trade upon the reputation of plaintiffs, and

to improperly appropriate the valuable trademark rights of plaintiffs.

43. Upon information and belief, Defendants’ activities complained of herein

constitute federal unfair competition.

44. Plaintiffs have no adequate remedy at law and is suffering irreparable

harm and damage as a result of the acts of Defendants complained of herein.

COUNT III

Common Law Trademark Infringement and Unfair Competition Jurisdiction And Venue

45. This claim arises under the common laws of this Commonwealth relating

to trademark infringement and unfair competition.

46. This Court has jurisdiction over the subject matter of this claim pursuant

to the provisions of 28 U.S.C. §1338(b), thus being a claim of unfair competition

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joined with substantial and related claims under the Trademark Laws of the United

States as set forth in Counts I and II, and under the Doctrine of Pendant

Jurisdiction as embodied in 28 U.S.C. §1367.




43 as is fully set herein.

49. As more fully set forth above, the UBU marks have acquired a

recognition in the minds of the public as identifying plaintiffs and is indicative of

origin, sponsorship, and/or association with plaintiffs. The public is likely to

attribute to plaintiffs the use by Defendants of their UBEU mark as a source of

origin, authorization, and/or sponsorship for Defendants’ marketing of clothing

and, therefore, to lead the public to Defendants’ facilities in that erroneous belief.

50. Upon information and belief, Defendants have intentionally appropriated

the goodwill associated with the UBU marks and have used it in association with

marketing of clothing with the intent of causing confusion, mistake, and deception

as to the source of goods, and with the intent to present their clothing as that of

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plaintiffs, and as such, Defendants have committed trademark infringement and

unfair competition under the common law.

51. Upon information and belief, Defendants’ conduct complained of herein

constitutes common law trademark infringement and unfair competition.

52. Plaintiffs have no adequate remedy at law and have suffered irreparable

harm and damage as a result of Defendants’ acts as aforesaid.

COUNT IV

Federal Dilution Under The Lanham Act Jurisdiction and Venue


U.S.C. §1125(c), and is for the dilution of trademarks.


to 15 U.S.C. §1121 and 28 U.S.C. §1338.



56. Plaintiff repeats and realleges the allegations contained in contained in

Paragraphs 1-51 hereof as is fully set herein.

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57. The UBU marks have been used in commerce for over fifteen (15) years

and due to such use and widespread advertising, have become famous and have

gained a distinctive quality in the minds of the public.

58. Defendants engage in interstate commerce.

59. Upon information and belief, Defendants’ market and sell to a less

affluent, less discriminating customer of clothing than does Nordstrom.

60. Upon information and belief, such marketing and selling occurs within

the same mall as Nordstrom’s, UBU’s exclusive mall retailer.

61. Defendants’ use of their UBEU mark has been without the consent of

plaintiffs and has caused dilution of the UBU mark.


harm and damages as a result of the acts of Defendants complained of herein.

COUNT V

State Law Dilution Jurisdiction and Venue

63. This claim arises under 54 Pa. C.S.A. §1124 and the common law of this

Commonwealth relating to injury to business reputation and dilution of trademarks.

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to the provisions of 28 U.S.C. §1338(b), this being a claim of dilution joined with

substantial and related claims under the Trademark Laws of the United States, to

wit: Counts I, II, and IV and under the Doctrine of Pendant Jurisdiction as

embodied in 28 U.S.C. §1367.




61 hereof as is fully set herein.

67. Defendants intended to willfully appropriate the goodwill of the UBU

marks when Defendants chose to market and sell using their UBEU mark.

68. Defendants’ use of their UBEU mark weakens the commercial value of

the UBU marks.

69. Defendants’ use of their UBEU mark has diluted the distinctive quality of

the UBU marks.


harm and damages as a result of the acts of Defendants complained of herein.

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WHEREOF, plaintiffs demand:

1. That a permanent injunction be issued enjoining Defendants:

A. From using their UBEU mark;

B. From using any logo, trademark, or trade name which may be

calculated to falsely represent or which has the effect of falsely

representing that the goods of Defendants or of third parties are

sponsored by, authorized by, or in any way associated with

plaintiffs;

C. From infringing the UBU marks;

D. From otherwise unfairly competing with plaintiffs;

E. From falsely representing themselves as being connected with

plaintiffs, or sponsored by or associated with plaintiffs, or

engaging in any act which is likely to falsely cause the public to

believe that Defendants are associated with plaintiffs; and

F. From affixing, applying, annexing, or using in connection with

their marketing of clothing, a false designation or description or

representation, including words, terms, name, or other symbols,

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tending falsely to describe or represent the items displayed as

being those of plaintiffs.

2. That Defendants be required to account to plaintiffs for all of Defendants’

profits and the actual damages suffered by plaintiffs as a result of

Defendants’ acts of infringement, dilution, and unfair competition.

3. That plaintiffs have a recovery from Defendants of three times the

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

4. That plaintiffs have a recovery from Defendants of the costs of this action

and plaintiffs’ reasonable counsel fees pursuant to 15 U.S.C. §1117.

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5. That plaintiffs be granted all other relief and further relief as the Court

may deem just and proper.

Respectfully submitted,

Mitchell A. Smolow PA 80307 720 Hampton Road Shavertown, PA 18708 570-714-4000 (O) 570-696-3320 (F) [email protected] Attorney for Plaintiffs Date: August 3, 2007

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Case 3:07-cv-01424-ARC Document 1-3 Filed 08/03/2007 Page 1 of 14

Trademark Electronic Search System (TESS)

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Typed Drawing

Word Mark U.B.U.Goods and Services IC 025. US 022 039. G & S: garment dyed and washed, cotton knit and woven clothing,

namely, pants, shirts, vests, blouses and jackets. FIRST USE: 19920105. FIRST USE IN COMMERCE: 19920105

Mark Drawing Code (1) TYPED DRAWINGSerial Number 75227125Filing Date January 17, 1997Current Filing Basis 1AOriginal Filing Basis 1APublished for Opposition June 30, 1998Registration Number 2424291Registration Date January 30, 2001Owner (REGISTRANT) BLAU, ALAN INDIVIDUAL UNITED STATES 1913 Firethorne Lane

Villanova PENNSYLVANIA 19085Prior Registrations 1989387Type of Mark TRADEMARK

http://tess2.uspto.gov/bin/showfield?f=doc&state=nq3046.2.57 (1 of 2) [8/1/2007 8:59:04 PM]

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Typed Drawing

Word Mark U.B.U. INTERNATIONALGoods and Services IC 025. US 022 039. G & S: garment dyed and washed, cotton knit and woven clothing,

namely, pants, shirts, vests, blouses and jackets. FIRST USE: 19920105. FIRST USE IN COMMERCE: 19920105

Mark Drawing Code (1) TYPED DRAWINGSerial Number 74416269Filing Date July 23, 1993Current Filing Basis 1AOriginal Filing Basis 1APublished for Opposition May 7, 1996Registration Number 1989387Registration Date July 30, 1996Owner (REGISTRANT) Blau, Alan TA U.B.U. International INDIVIDUAL UNITED STATES 1913

Firethorn Lane Villanova PENNSYLVANIA 19085Attorney of Record MITCHELL SMOLOW, ESQ.


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Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "INTERNATIONAL" APART FROM THE MARK AS SHOWN

Type of Mark TRADEMARKRegister PRINCIPALAffidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20051205.Renewal 1ST RENEWAL 20051205Live/Dead Indicator LIVE

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in the united states district court for the middle … · a principal place of business at 900...

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