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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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Case: 3:12-cv-00546-wmc Document #: 1 Filed: 08/03/12 Page 3 of 14
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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Case: 3:12-cv-00546-wmc Document #: 1 Filed: 08/03/12 Page 4 of 14
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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Case: 3:12-cv-00546-wmc Document #: 1 Filed: 08/03/12 Page 6 of 14
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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Case: 3:12-cv-00546-wmc Document #: 1 Filed: 08/03/12 Page 7 of 14
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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Case: 3:12-cv-00546-wmc Document #: 1 Filed: 08/03/12 Page 8 of 14
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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Case: 3:12-cv-00546-wmc Document #: 1 Filed: 08/03/12 Page 9 of 14
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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Case: 3:12-cv-00546-wmc Document #: 1 Filed: 08/03/12 Page 10 of 14
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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Case: 3:12-cv-00546-wmc Document #: 1 Filed: 08/03/12 Page 11 of 14
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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Case: 3:12-cv-00546-wmc Document #: 1 Filed: 08/03/12 Page 12 of 14
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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Case: 3:12-cv-00546-wmc Document #: 1 Filed: 08/03/12 Page 13 of 14
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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