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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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