voguevert v vogue

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					     Case: 1:12-cv-00727-SSB-KLL Doc #: 1 Filed: 09/21/12 Page: 1 of 8 PAGEID #: 1



                           IN THE UNITED STATES DISTRICT COURT
                         FOR THE SOUTHERN DIVISION OF OHIO
                                 CINCINNATI DIVISION

Voguevert, LLC
909 Riverview Place
Cincinnati, OH 45202

        Plaintiff,                                                      Case No.

        v.                                                              Judge

Advance Magazine Publishers, Inc.
Four Times Square
New York, NY 10036

        Defendant.

                                           COMPLAINT

        Plaintiff, by its attorneys, complaining of Defendant, alleges as follows:

                                          Nature of Action

1.      This is an action for Declaratory Judgment declaring that that Plaintiff's use of the

trademark and designator VOGUEVERT does not constitute trademark infringement, and that

Plaintiff is legally entitled to continue all of its past and present activities in connection with the

use of the trademark and designation VOGUEVERT, and the use of the formative

VOGUEVERT in connection with the Uniform Resource Locator ("URL")

VOGUEVERT.COM.

                                             The Parties

2.      Plaintiff, Voguevert, LLC ("Voguevert") is an Ohio limited liability company with its

principal place of business at 909 Riverview Place, Cincinnati, Ohio 45202. Voguevert operates

a website operating under the URL www.voguevert.com, and sells various luxury goods,

including handbags, jewelry and accessories designed by "green" or environmentally conscious



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designers for environmentally conscious women. These goods are sold under the trademark and

trade designation VOGUEVERT.

3.      Upon information and belief, Defendant, Advance Magazine Publishers, Inc. ("AMP") is

a New York corporation with its principal place of business at Four Times Square, New York,

New York 10036. Upon information and belief, Advance Magazine Publishers, Inc. does

business under the name Condé Nast, and is the publisher of Vogue magazine, a magazine that is

regularly sold throughout the United States, including within this judicial district. AMP is

subject to the jurisdiction of this Court pursuant to ORC 2307.382, as applied through Rule 4 of

the Federal Rules of Civil Procedure.

                                     Jurisdiction and Venue

4.      Jurisdiction is proper in this court because this lawsuit arises under federal law, namely

17 U.S.C. § 1051 et seq. (Lanham Act). The Court has jurisdiction over this action under 28

U.S.C. § 1331 (federal question), 28 U.S.C. § 1338(a) (trademarks), and 28 U.S.C. § 2201

(Declaratory Judgment Act).

5.      Venue is proper in this district under 28 U.S.C. § 1391(b) and 1391(c).

6.      An actual case or controversy has arisen between the parties. AMP has threatened

litigation against Voguevert, and has asserted that Voguevert's VOGUEVERT mark infringes

and dilutes the trademark rights of AMP.

                                  GENERAL ALLEGATIONS

7.      Voguevert has, since August, 2011, used its website, www.voguevert.com, to sell

women's handbags, jewelry, and women's accessories under the trademark and designation

Voguevert. As its name suggests, the goods advertised and sold by Voguevert are highly




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fashionable and trendy, and are created by "green" designers, that is designers who are

environmentally and socially conscious.

8.      After selecting a trademark to reflect the trendy, socially conscious products it intended

to sell, Voguevert filed an application for federal registration of the VOGUEVERT mark with

the United States Patent and Trademark Office on July 7, 2011.

9.      After conducting a search of the records of the United States Patent and Trademark

Office (USPTO), the USPTO determined that the VOGUEVERT mark did not so resemble any

registered mark(s) as to be likely to cause confusion or mistake, when used in connection with

the goods identified in Voguevert's application.

10.     After concluding that Voguevert mark VOGUEVERT was not likely to cause confusion

or mistake with any other registered, including the registered marks of Defendant, the

VOGUEVERT was published of opposition on December 6, 2011.

11.     Any party that believed it might be damaged by the registration of Voguevert's

VOGUEVERT mark was then permitted to file a notice of opposition to such registration up

until January 6, 2012. Neither Defendant nor any other party filed such an opposition, and,

following the submission of appropriate specimens demonstrating actual use of the

VOGUEVERT mark by Voguevert, the USPTO awarded Voguevert United States Trademark

Registration 4,169,234 on July 3, 2012.

                                   THE PRESENT DISPUTE

12.     On May 21, 2012, Voguevert received a letter from Pamela A. Rask, an attorney at Sabin,

Bermant & Gould LLP, counsel for AMP. A copy of that letter is attached as Exhibit A hereto.

Ms. Rask claimed that use of the VOGUEVERT mark by Voguevert constituted trademark

infringement and unfair competition under federal law, and demanded that Voguevert



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immediately stop use of the VOGUEVERT mark, and to take steps to change the domain name

of Voguevert's website. Ms. Rask claimed that AMP was the registered owner of the following

trademarks listed with the United States Patent and Trademark Office ("USPTO"): Registration

Nos. 125542, 306976 and 504006. Ms. Rask further claimed that if Voguevert did not comply

with AMP's written demands, AMP would "pursue its available remedies."

13.    Following additional correspondence with counsel for Voguevert, on September 5,

2012Voguevert received a letter from Stacy A. Cole, an attorney at Gradon Head, counsel for

AMP. A copy of that letter is attached as Exhibit B hereto. Ms. Cole's letter was accompanied

with a draft Petition for Cancellation of Voguevert's trademark registration and a draft complaint,

alleging that Voguevert activities constituted trademark infringement, unfair competition, and

that Voguevert's use of the VOGUEVERT mark constituted trademark dilution. The draft

complaint sought preliminary and permanent injunctions, damages and attorneys fees.

14.    The draft complaint accompanying Ms. Cole's September 5, 2012 letter identified 21

federal trademark registrations which it referred to as "the VOGUE Marks," namely:

       (a) Reg. No. 0069530 for the mark VOGUE for magazines;

       (b) Reg. No. 0103770 for the mark VOGUE for pattern

       (c) Reg. No. 0125542 for the mark VOGUE for magazines

       (d) Reg. No. 0201144 for the mark VOGUE PATTERNS for publication published every

       two months

       (e) Reg. No. 0504006 for the mark VOGUE for magazines

       (f) Reg. No. 1336659 for the mark VOGUE for magazines

       (g) Reg. No. 1622489 for the mark VOGUE PELLE for fashion magazines

       (h) Reg. No. 1629133 for the mark VOGUE SPOSA for magazines of interest to brides



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   (i) Reg. No. 1659761 for the mark VOGUE for tote bags

   (j) Reg. No. 1684413 for the mark VOGUE GIOIELLO for magazines focusing on

   jewels and jewelry

   (k) Reg. No. 1706659 for the mark VOGUE BAMBINI for magazines directed to

   children's fashions

   (l) Reg. No. 1863179 for the mark VOGUE NOVIAS for magazines pertaining to

   weddings and brides

   (m) Reg. No. 1984874 for the mark VOGUEINDEX for magazine section or columns

   concerning fashion for women

   (o) Reg. No. 2568246 for the mark TEEN VOGUE for periodic publications, namely a

   fashion and entertainment magazine geared toward a teen audience

   (p) Reg. No. 2592452 for the mark VOGUE.COM for providing fashion and beauty

   information distributed over television, satellite, wireless, and global computer networks

   (q) Reg. No. 2701928 for the mark VOGUE for clothing, namely T-shirts and

   sweatshirts

   (r) Reg. No. 3069976 for the mark VOGUE for providing information about beauty via a

   global computer network

   (s) Reg. No. 3134461 for the mark TEENVOGUECHICCLIQUE for periodically

   published column in a fashion magazine on the subject of style and fashion

   (t) Reg. No. 3185408 for the mark VOGUE HOMMES INTERNATIONAL                       for

   magazines featuring men's fashion and style




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       (u) Reg. No. 3303228 for the mark VOGUE FASHION ON DEMAND for transmission

       of voice, data, video, and information content via computer networks, wireless devices,

       PDA's, MP3 players, and other devices; providing fashion information via the internet

       (v) Reg. No. 4127001 for the mark VOGUEPEDIA for providing an online interactive

       encyclopedia in the field of fashion, style, people, and entertainment

       (w) Reg. No. 4138408 for the mark VOGUE for downloadable computer software

       applications for use in connection with smartphones, PDA devices, tablet computers, and

       other portable and handheld digital electronic devices, namely, downloadable software

       for accessing viewing, interacting with, and downloading content and information from

       magazines and websites in the field of fashion, style, and beauty

15.    The draft complaint accompanying Ms. Cole's September 5, 2012 letter also appears to

include 4 trademark applications within its definition of VOGUE Marks, namely:

       (a)    Appln. SN: 85021942 for the mark VOGUEPEDIA for computer application

       software for mobile phones, namely, software for accessing, viewing, interacting with

       and downloading digital content from magazines and websites; electronic publications,

       namely, books featuring fashion, style, people, and entertainment recorded on computer

       media, encyclopedias and reference books in the field of fashion, style, people, and

       entertainment

       (b)    Appln. SN: 85269222 for the mark TEEN VOGUE for cases for mobile phones

       and tablet computers; laptop bags; Jewelry, namely costume jewelry items, namely,

       bracelets, necklaces, earrings, rings, key chains as jewelry; handbags, tote bags,

       backpacks, travel bags, cosmetic bags sold empty, wristlet bags, wallets, and T-shirts,

       scarves, gloves, belts



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        (c)     Appln. SN: 85686052 for the mark VOGUE for fragrances

        (d)     Appln. SN: 85686052 for the mark VOGUE for body creams, scented candles

15.     In awarding United States Trademark Registration No. 4,169,234 to Voguevert, the

United States Patent and Trademark Office found that the mark VOGUEVERT for handbags,

was not confusingly to any of the VOGUE Marks, and did not resemble any of the VOGUE

Marks so as to be likely to cause confusion or mistake.

16.     Voguevert is legally entitled to continue of its VOGUEVERT mark, and to continue it

use of the URL www.voguevert.com, and Voguevert's activities do not infringe or legally dilute

any trademark rights of AMP. As a result of AMP threats against Voguevert, there is an actual

controversy between the parties as to Voguevert's use of its VOGUEVERT mark and the use of

the URL www.voguevert.com.

17.     Voguevert seeks declaratory judgment from this Court that its use of the VOGUEVERT

mark and its use of the URL www.voguevert.com does not constitute trademark infringement or

unfair competition, and does not legally dilute any trademark rights of AMP.

                                    PRAYER FOR RELIEF

        WHEREFORE, Voguevert respectfully requests that the Court:

1.      Enter judgment according to the declaratory relief sought;

2.      Award Voguevert its costs in this action;

3.      Enter such other further relief to which Voguevert may be entitled as a matter of law or

equity, or which the Court determines to be just and proper.

                                DEMAND FOR JURY TRIAL

        Pursuant to Federal Rule of Civil Procedure 38, Voguevert hereby demands a jury trial on

all issues so triable.



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                                       Respectfully submitted,



                                                      /James D. Liles
                                       James D. Liles (0005547)
                                       PORTER, WRIGHT, MORRIS & ARTHUR LLP
                                       250 East Fifth Street, Suite 2200
                                       Cincinnati, Ohio 45202-5188
                                       (513) 369-4209 (telephone)
                                       (513) 421-0991 (facsimile)
                                       jliles@porterwright.com
                                       Attorneys for Plaintiff

CINCINNATI/197721v.1




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