american girl v barbizon inner star

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					       Case: 3:12-cv-00546-wmc Document #: 1 Filed: 08/03/12 Page 1 of 14



                                UNITED STATES DISTRICT COURT
                                WESTERN DISTRICT OF WISCONSIN


AMERICAN GIRL, LLC and
AMERICAN GIRL BRANDS, LLC,
                                                           Case No. 12-CV-546
                   Plaintiff,

       vs.

BARBIZON INTERNATIONAL, LLC

                   Defendant.


                                         COMPLAINT


       Plaintiffs American Girl, LLC and American Girl Brands, LLC for their Complaint

against Barbizon International, LLC allege as follows:

                                            PARTIES

       1.      American Girl, LLC (“AGLLC”) is a Delaware limited liability company with its

principal place of business at 333 Continental Boulevard, El Segundo, California               90245.

AGLLC is the owner of certain intellectual property rights, including the trademark rights

asserted herein.

       2.      American Girl Brands, LLC (“AGBrands”) is a Delaware limited liability

company having a principal place of business at 8400 Fairway Place, Middleton, Wisconsin

53562. AGBrands is the exclusive licensee of the trademark rights asserted herein.

       3.      Upon    information    and   belief,   Defendant   Barbizon    International,    LLC

(“Barbizon”) is a Florida limited liability company with its principal place of business at 3111 N.

University Drive, Suite 1002, Coral Springs, Florida 33065. Barbizon is in the business of

providing modeling and acting training and instruction.
       Case: 3:12-cv-00546-wmc Document #: 1 Filed: 08/03/12 Page 2 of 14



                                 JURISDICTION AND VENUE

       4.      This Court has original jurisdiction over the subject matter of this action pursuant

to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1338(a) and (b). Because the parties are citizens of

different states and the matter in controversy exceeds the sum or value of seventy-five thousand

dollars ($75,000.00), exclusive of interest and costs, this Court also has jurisdiction under 28

U.S.C. § 1332. Jurisdiction over the state law claims is also appropriate under 28 U.S.C. §

1367(a) and principles of pendent jurisdiction.

       5.      Venue is proper in this judicial district pursuant to 28 U.S.C. §§1391(b) and (c) as

Barbizon does business in this district. In addition, a substantial portion of the activity about

which American Girl complains has taken place in this district, and the damages suffered by

American Girl were suffered, at least in part, in this judicial district. Venue is also proper

because Barbizon is subject to personal jurisdiction in this district.

                             AMERICAN GIRL’S TRADEMARKS

       6.      AGLLC and AGBrands (collectively “American Girl”) sell dolls, doll clothing

and related accessories, historical books and videos as well as a wide variety of other products

under the widely known and well recognized AMERICAN GIRL and AMERICAN GIRL Star

Logo marks (collectively, the “AMERICAN GIRL Marks”). American Girl has also widely used

the tagline, FOLLOW YOUR INNER STAR, since 2005, as depicted below with the

AMERICAN GIRL Star Logo mark:




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         7.    American Girl’s FOLLOW YOUR INNER STAR trademark (“FOLLOW YOUR

INNER STAR Mark” or “the Mark”) is a symbol that embodies the spirit and passion of the

company, and its mission of promoting and empowering young girls. American Girl displays the

FOLLOW YOUR INNER STAR Mark in combination with the star-within-a-star motif (which it

calls the “inner star” design) shown above and in close combination with its AMERICAN GIRL

Marks.

         8.    The Mark is used online, in catalogs, in stores, and in connection with other

marketing and point-of-sale materials.

         9.    American Girl’s use of the FOLLOW YOUR INNER STAR brand has expanded

along with its business into its INNERSTAR UNIVERSITY online world found at

www.innerstaru.com. At the INNERSTARU.COM website, girls can interact and play games

utilizing a doll avatar. The FOLLOW YOUR INNER STAR, INNERSTAR UNIVERSITY and

INNERSTARU.COM marks will hereafter be collectively referred to as “the INNER STAR

Marks.”

         10.   AGLCC owns the following trademark registrations and application for the

INNER STAR Marks:




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Trademark     Status        Goods and Services                                  Date of
              Status Date                                                       First Use
FOLLOW        Registered    (Int’l Class: 35)                                   July 11,
YOUR INNER    December      Direct mail catalog services, retail store          2005
STAR          26, 2006      services and on-line retail services all
                            featuring dolls, doll clothing, doll accessories,
              Reg. No.      doll furniture, toys, children’s party games,
              3,188,726     stuffed toy animals, clothing and accessories
                            for stuffed toy animals, children’s fiction and
                            non-fiction books and other publications for
                            children, school supplies, namely notebooks,
                            pencils, and pens, luggage, handbags, wallets,
                            purses, backpacks, tote bags, duffel bags, hair
                            ornaments, barrettes, hair clips, hairbrushes,
                            bath and shower gels, bar soaps for hands face
                            and body, bath crystals, hair shampoo,
                            shampoo conditioners, hair conditioners, skin
                            moisturizers, skin lotion, non-medicated lip
                            balm.
FOLLOW        Registered    (Int’l Class: 16)                                   November
YOUR INNER    August 7,     Children’s publications, namely books and           30, 2005
STAR          2007          booklets featuring fictional and non-fictional
                            stories and characters and advice to parents,
              Reg. No.      advice books, activity books, craft books,
              3,276,604     puzzle books, address books, bookmarks,
                            maps, posters, note paper and envelopes,
                            pens, markers, daily planners and personal
                            planners, notebooks, printed scripts and
                            screenplays, printed invitations and thank you
                            notes, rubber stamps, stationary, stickers, and
                            trading cards, children’s magazines featuring
                            contemporary issues for children.
FOLLOW        Registered    (Int’l Class: 28)                                   November
YOUR INNER    August 5,     Dolls, doll clothing, doll accessories, toys,       30, 2006
STAR          2008          namely, stuffed toys, clothing and accessories
                            for stuffed toys; paper dolls, children’s
              Reg. No.      games, namely children’s party games, board
              3,482,098     games and puzzles.
INNERSTAR     Registered    (Int’l Class: 16)                                   September
UNIVERSITY    April 12,     Series of children’s fiction books; bookmarks.      2, 2010
              2011

              Reg. No.
              3,944,359




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 INNERSTAR          Registered     (Int’l Class: 41)                             August 30,
 UNIVERSITY         October 25,    Entertainment services, namely, providing on- 2011
                    2011           line games.

                    Reg. No.
                    4,046,139
                    Registered     (Int’l Class 35)                                    July 13,
                    March1,        Retail store services, mail order catalog           2010
                    2011           services, and online retail store services all
                                   featuring dolls, doll clothing, doll accessories,
                    Reg. No.       doll furniture, toys and playthings, charms,
                    3,924,986      bracelets, necklaces, children’s fiction and
                                   non-fiction books, children’s clothing,
                                   namely, baseball caps, dresses, jackets,
                                   nightgowns, pajamas, pants, robes, shirts,
                                   shorts, skirts, slippers, swimwear, tank tops
                                   and t-shirts.
                    Registered     (Int’l Class 28)                                    July 13,
                    October 4,     Toys and plaything, namely, dolls, doll             2010
                    2011           clothing, and doll accessories.

                    Reg. No.
                    4,035,824
                    Registered     (Int’l Class: 25)                                   July 13,
                    October 25,    Clothing and footwear for girls, namely,            2010
                    2011           pajamas, nightgowns, robes, slippers, t-shirts,
                                   shirts, dresses, skirts, jackets, coats, berets,
                    Reg. No.       hats, pants, tights, swimsuits, sweaters,
                    4,046,226      sweatshirts, tank tops, shorts and vests.

       11.    The registrations for the marks identified above constitute prima facie evidence of

AGLLC’s exclusive right to control use of the marks shown therein in interstate commerce.

       12.    AGBrands is the exclusive licensee of the INNER STAR Marks and is the entity

that markets and sells products and services under these marks. AGBrands and AGLLC’s rights

with respect to the INNER STAR Marks are squarely aligned.

       13.    American Girl has used the FOLLOW YOUR INNER STAR Mark since at least

2005. The Mark was carefully chosen by American Girl as a symbol to further its mission of

promoting and empowering young girls. The phrase is represented visually, with the star motif


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shown above, and reference to the “inner star” is made in American Girl’s “Whisper Statement,”

which appears on the back of most AMERICAN GIRL books, and in connection with materials

to advertise and promote AMERICAN GIRL fashion shows and events:

       American Girl celebrates a girl’s inner star—that little whisper inside that encourages her
       to stand tall, reach high, and dream big. We take pride and care in helping girls become
       their very best today, so they’ll grow up to be the women who make a difference
       tomorrow.

The FOLLOW YOUR INNER STAR Mark and other references to “inner star” provide

American Girl with a perfect tool to reinforce this message time and time again.

       14.       All the INNER STAR Marks, and specifically the FOLLOW YOUR INNER

STAR Mark, are strongly associated with American Girl, the AMERICAN GIRL Marks, and all

aspects of American Girl’s business. American Girl offers and licenses to third parties to offer

many forms of entertainment that enhance the American Girl experience, including the

performance of live plays and fashion shows, live musical performances and production of

feature films.    These on-screen and live performances require actors, and American Girl’s

catalogs and website require models. Indeed, American Girl, its modeling agencies and its

licensees regularly host casting calls and seek applications for models and actors nationwide.

American Girl also holds photo shoots at various locations throughout the United States,

engaging models for photography and videography.

       15.       AGLLC also owns the following registrations and pending application for its

AMERICAN GIRL Marks that specifically reference its entertainment services that include live

entertainment, such as fashion shows:




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Trademark         Status        Goods and Services                                Date of
                  Status Date                                                     First Use
AMERICAN          Registered    (Int’l Class: 41)                                 September
GIRL              November      Conducting educational programs, namely,          7, 1998
                  21, 2000      classes, seminars, workshops, and lectures in
                                the fields of American history and
                  Reg. No.      contemporary issues; entertainment in the
                  2,407,376     nature of live musical concerts, fashion shows,
                                live theatrical performances, live interpretive
                                performances, and dance performances; party
                                planning.
                  Registered    (Int’l Class: 41)                                 August 1,
                  November      Educational and entertainment services in the     1999
                  28, 2000      nature of conducting educational programs,
                                namely, classes, seminars, workshops and
                  Reg. No.      lectures in the fields of American history and
                  2,408,939     contemporary issues; entertainment in the
                                nature of live musical concerts, fashion shows,
                                live theatrical performances, live interpretive
                                performances, and dance performances; party
                                planning.
AMERICAN          Registered    (Int’l Class: 41)                                 November
GIRL              May 10,       Entertainment services, namely, live theatrical   19, 1998
                  2005          performances, live theatrical plays, live
                                interpretive performances, and live musical
                  Reg. No.      performances for children; entertainment,
                  2,948,949     namely, production, touring, and presentation
                                of live theatrical plays, live theatrical
                                performances, and live musicals; organizing
                                and providing entertainment in the nature of
                                touring live theatrical performances, live
                                theatrical plays and live musicals, all for
                                children.
AMERICAN          Registered    (Int’l Class: 41)                                 November
GIRL              May 17,       Motion picture film development, production,      23, 2004
                  2005          and distribution.

                  Reg. No.
                  2,952,415
                  Registered    (Int’l Class: 41)                                 November
And Color Claim   August 28,    Entertainment in the nature of live musical       19, 1998
                  2007          concerts and dance performances,
                                entertainment in the nature of live theatrical
                                performances and live interpretive
                  Reg. No.      performances, and for conducting educational


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                     3,284,084       programs, namely classes and workshops in
                                     the fields of cooking, manners and etiquette,
                                     dance, music, opera, singing, drawing, writing,
                                     how to audition, performing arts and parenting
                                     skills.
 THE                 Pending         (Int’l Class: 41)
 AMERICAN            Application     Educational and entertainment services,
 GIRLS REVUE         Filed           namely, live theatrical performances, live
                     February        interpretive performances and live musical
                     19, 2011        performances featuring fictional stories and
                                     non-fictional stories of American History
                     Serial No.
                     85,246,017
                     Registered      (Int’l Class: 41)                                  April 25,
                     May 30,         Entertainment services, namely, live theatrical    2005
                     2006            performances, live theatrical plays, live
                                     interpretive performances, and live musical
                     Reg. No.        performances for children; educational and
                     3,097,657       entertainment services, namely, conducting
                                     programs consisting of classes, seminars,
                                     workshops, lectures, live musical concerts,
                                     fashion shows, parties, dances, tours, and
                                     festivals featuring fictional stories and non-
                                     fictional stories of American history and
                                     contemporary issues; educational and
                                     entertainment services, namely, party planning
                                     and conducting classes for children in the field
                                     of etiquette, manners, and social behavior;
                                     production and distribution of television
                                     programs for children; motion picture film
                                     development, production, and distribution


        16.    American Girl has invested considerable time and expense in securing, protecting

and enforcing its intellectual property rights in the Mark.

       17.     Through the efforts of American Girl and as a result of considerable funds

invested in advertising and marketing, the products and services offered on and in connection

with the Mark have enjoyed wide acceptance and popularity in the marketplace.

        18.    The Mark represents and embodies the enviable reputation and very valuable

goodwill of American Girl among members of the trade and purchasing public.


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                             BARBIZON’S WRONGFUL ACTS

        19.    On information and belief, Barbizon uses the trademark FIND YOUR INNER

STAR for educational services, specifically modeling and acting courses, that Barbizon offers for

sale.

        20.    Barbizon owns U.S. Trademark Application No. 85/315,860 (“Barbizon’s

Application”) for the mark FIND YOUR INNER STAR, covering “educational services, namely

offering courses of instruction in modeling and acting” in International Class 41.

        21.    Barbizon displays the FIND YOUR INNER STAR mark with a star in a manner

very similar to the way in which American Girl displays the FOLLOW YOUR INNER STAR

Mark with the star-within-a-star motif:




        22.    On information and belief, American Girl provides services that overlap with, or

are closely related to, those of Barbizon. American Girl offers entertainment services, conducts

casting calls on its own or through its modeling agencies or third party licensees, and otherwise

hires models and actresses in connection with providing entertainment services and advertising

and marketing materials. As a result, consumers are likely to believe that Barbizon’s services are



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offered by American Girl, or licensed by American Girl, when in fact they are not. Furthermore,

American Girl offers a wide variety of goods and services under its INNER STAR Marks,

including online entertainment services and educational products like books, such that consumers

are likely to believe that Barbizon’s services are merely an extension of American Girl’s INNER

STAR brand.

       23.    On information and belief, at the time that Barbizon began using the FIND YOUR

INNER STAR mark, and applied to register the FIND YOUR INNER STAR mark, it had actual

knowledge of American Girl and American Girl’s rights in the Mark, and Barbizon adopted the

FIND YOUR INNER STAR mark in bad faith to take advantage of the tremendous reputation

and goodwill of American Girl and its Mark.

       24.    Barbizon’s actions described above have irreparably damaged and injured and, if

permitted to continue, will further damage and injure American Girl, its Mark, American Girl’s

reputation and goodwill associated with the Mark, and American Girl’s reputation for

exceedingly high-quality products and services. Barbizon’s actions also significantly damage the

public interest in being free from confusion as to the source, sponsorship, or affiliation of

Barbizon’s products.

       25.    Barbizon’s use of the trademark FIND YOUR INNER STAR is likely to cause

confusion, mistake, or deception as to the source or origin of Barbizon’s products and

commercial activities, and is likely to falsely suggest a sponsorship, connection, license, or

association of Barbizon and its products and services with American Girl, thereby injuring

American Girl, consumers, and the public in general.




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                                 FIRST CAUSE OF ACTION
                         Trademark Infringement Under Section 32(a)
                            of the Lanham Act, 15 U.S.C. § 1114(a)

       26.     American Girl realleges and incorporates by reference paragraphs 1-24 of this

Complaint as though fully set forth herein.

       27.     Barbizon’s actions described above are likely to cause confusion, mistake, or

deception as to the origin, sponsorship, or approval of Barbizon’s products and commercial

activities, and thus constitute infringement of American Girl’s federally registered marks in

violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114.

       28.     Upon information and belief, the actions of Barbizon described above have at all

times relevant to this action been willful.

       29.     As a direct and proximate result of the actions of Barbizon alleged above,

American Girl has been damaged and will continue to be damaged.

                              SECOND CAUSE OF ACTION
                        Trademark Infringement, False Designation
                             of Origin, and Unfair Competition
                 Under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)

       30.     American Girl realleges and incorporates by reference paragraphs 1-29 of this

Complaint as though fully set forth herein.

       31.     Barbizon’s actions described above are likely to cause confusion, mistake, or

deception as to the origin, sponsorship, or approval of Barbizon’s products and commercial

activities, and thus constitute trademark infringement, false designation of origin, and unfair

competition with respect to the FOLLOW YOUR INNER STAR Mark in violation of Section

43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A).

       32.     Upon information and belief, the actions of Barbizon described above have at all

times relevant to this action been willful.



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       33.     As a direct and proximate result of the actions of Barbizon alleged above,

American Girl has been damaged and will continue to be damaged.

                            THIRD CAUSE OF ACTION
              Common law Trademark Infringement, Unfair Competition and
                       Misappropriation Under Wisconsin Law

       34.     American Girl realleges and incorporates by reference paragraphs 1-33 of this

Complaint as though fully set forth herein.

       35.     Barbizon’s actions described above constitute common law trademark

infringement, unfair competition, and misappropriation of American Girl’s goodwill under the

common law of Wisconsin and other states.

       36.     Upon information and belief, the actions of Barbizon described above have at all

times relevant to this action been willful.

       37.     As a direct and proximate result of the actions of Barbizon alleged above,

American Girl has been damaged and will continue to be damaged.

                                         JURY DEMAND

       Plaintiff demands a trial by jury on all matters and issues triable by jury.

                                     PRAYER FOR RELIEF

       WHEREFORE, American Girl, LLC and American Girl Brands, LLC (collectively

“American Girl”) demand judgment in their favor on each and every claim for relief set forth

above and an award for relief including, but not limited to, the following:

       1.      An injunction preliminarily and permanently enjoining Barbizon and its

               employees, agents, partners, officers, directors, owners, shareholders, principals,

               subsidiaries, related companies, affiliates, joint ventures, distributors, dealers, and

               all persons in active concert or participation with any of them:



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      a.      From using or registering the trademark FIND YOUR INNER STAR, any
              variations of that mark, and any other marks or names that are confusingly
              similar to American Girl’s FOLLOW YOUR INNER STAR Mark,
              including, but not limited to, use as or as part of trademarks, logos, trade
              names, business names, domain names, e-mail addresses, URLs, metatags,
              or other identifiers;

      b.      From representing by any means whatsoever, directly or indirectly, that
              Barbizon, any products or services offered by Barbizon, or any activities
              undertaken by Barbizon, are sponsored or licensed by American Girl or
              otherwise associated or connected in any way with American Girl; and

      c.      From passing off any of its products or services as originating with,
              associated with or sponsored by American Girl.

2.    An Order requiring Barbizon to deliver up to American Girl for destruction all

      goods, advertisements, literature and other written or printed material which bear

      the FIND YOUR INNER STAR Mark and any other mark owned by American

      Girl.

3.    An Order directing Barbizon to file with this Court and serve on American Girl’s

      attorneys, thirty (30) days after the date of entry of any injunction, a report in

      writing and under oath setting forth in detail the manner and form in which it has

      complied with the injunction.

4.    An Order requiring the Director of the United States Patent and Trademark Office

      to refuse registration of Barbizon’s U.S. Trademark Application No. 85/315,860

      for the mark FIND YOUR INNER STAR pursuant to 15 U.S.C. § 1119.

5.    An Order requiring Barbizon to account for and pay to American Girl any and all

      profits arising from the foregoing acts of infringement, false designation of origin,

      and unfair competition, and trebling such profits in accordance with 15 U.S.C. §

      1117 and other applicable statutes and laws.




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         6.        An Order requiring Barbizon to pay to American Girl compensatory damages in

                   an amount as yet undetermined caused by the foregoing acts of infringement,

                   false designation of origin, and unfair competition, and trebling such

                   compensatory damages in accordance with 15 U.S.C. § 1117 and other applicable

                   statutes and laws.

         7.        An Order requiring Barbizon to pay to American Girl punitive damages in an

                   amount as yet undetermined caused by the foregoing acts of Barbizon.

         8.        An Order requiring Barbizon to pay American Girl’s costs and attorney fees in

                   this action pursuant to 15 U.S.C. § 1117 and other applicable statutes and laws.

         9.        Interest, costs and such other relief as this Court deems just and equitable.



Dated this 3rd day of August, 2012.            MICHAEL BEST & FRIEDRICH LLP


                                               _s/Amy L. Vandamme______________________
                                               Amy L. Vandamme, SBN 1029784
                                               Email: alvandamme@michaelbest.com
                                               100 East Wisconsin Avenue
                                               Suite 3300
                                               Milwaukee, WI 53202-4108
                                               Telephone: (414) 271-6560
                                               Facsimile: (414) 277-0656

                                               Lori S. Meddings, SBN 1037741
                                               Email: lsmeddings@michaelbest.com
                                               One South Pinckney Street
                                               P.O. Box 1806
                                               Madison, Wisconsin 53701-1806
                                               Telephone: (608) 257-3501
                                               Fax: (608) 283-2275

                                               Attorneys for Plaintiffs
                                               American Girl, LLC and American Girl Brands, LLC

063942-9109\11691464.1




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