et browne even tone by martyschwimmer

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       2.     This court has original jurisdiction over this action pursuant to 28 U.S.C. §§ 1331,

and 1338(a)-(b) and 15 U.S.C. §§ 1116 and 1121.

       3.     This court has jurisdiction to the principles of supplemental jurisdiction and 28

U.S.C. § 1367 over Plaintiff’s claim for trademark infringement, trademark dilution, unfair

competition, and deceptive acts and practices under the laws of the state of New York and

common law.

       4.     This court has personal jurisdiction over Defendant L’Oreal USA, Inc. because

Defendant has a principal place of business in New York, New York.

       5.     Venue is proper pursuant to 28 U.S.C. § 1391(b) and (c) because Defendant is

doing and transacting business in this Judicial District; has substantial contacts with this Judicial

District; and Defendant has advertised in this Judicial District and has caused many of the

tortious acts complained of herein in this Judicial District.

                                             PARTIES

       6.     Plaintiff E.T. Browne Co., Inc. is a corporation duly organized and existing under

the laws of the State of New Jersey, with its principal place of business located in the State of

New Jersey.

       7.     Upon information and belief, Defendant L’Oreal USA, Inc. (“Defendant” or

“L’oreal”), is a corporation duly organized and existing under the laws of the State of Delaware,

with its principal place of business located in the State of New York.


                                  GENERAL ALLEGATIONS


       8.     For well over 150 years, E.T. Browne has specialized in the development,

production and marketing of proprietary branded skin care and hair care products. Since 1986,

Plaintiff has offered a wide variety of skin care products under its EVENTONE mark (the


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“EVENTONE Mark”). Today, Plaintiff’s well-known EVENTONE line includes BB creams,

cleansing products, day and night creams, fade creams, body milks, facial masks, and lotions, as

the photograph below illustrates:




                                    The EVENTONE Mark

       9.    Plaintiff’s continuous, widespread advertisement, use and promotion of the

EVENTONE Mark have created substantial secondary meaning for the mark, which has come to


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symbolize invaluable goodwill. The EVENTONE Mark is extremely strong and famous.

          10.   Plaintiff owns the following federal trademark registrations for the EVENTONE

Mark (copies of which are attached as Exhibit A to the Complaint, as set forth in the following

table):



                Mark        Registration No.    Registration Date        Goods & Services

           EVENTONE            2,794,808        December 16, 2003   Skin moisturizing lotion and
                                                                    cream, fade cream, skin
                                                                    whitening cream, medicinal
                                                                    and pilot soaps, and skin
                                                                    toners; astringent cleaner,
                                                                    and antiseptic cleansing
                                                                    lotion.



           EVENTONE            1,449,160          July 28, 1987      Fade cream for use on the
                                                                              skin.




           EVENTONE            1,488,092          May 17, 1988          Medicated ointment.




          11.   These registrations are valid, unrevoked, and subsisting, and constitute prima facie

evidence of Plaintiff’s exclusive ownership of the mark EVENTONE for the above-referenced

goods.

          12.   Moreover, because the registrations for the EVENTONE Mark are incontestable,

they are conclusive evidence of the mark’s validity and of Plaintiff’s exclusive ownership of the

mark.




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        24.    Since becoming aware of the Infringing BB Cream, Plaintiff has repeatedly sought

to have Defendant remove the Infringing BB Cream from the marketplace. By letter of March

15, 2013, Defendant advised that it would modify the accused packaging.

        25.    However, Defendant has refused to cease its infringing use of the EVEN TONE

designation, despite its knowledge of Plaintiff’s prior and superior rights in the EVENTONE

Mark.

        26.    To make matters worse, shortly after receiving Defendant’s March 15th letter, it

came to Plaintiff’s attention that Defendant’s adoption and use of the EVEN TONE designation

expanded to its “Ideal Moisture Even Tone” day lotion and day/night cream (collectively, the

“Infringing Moisture Product”). As displayed below, Defendant’s use of the EVEN TONE

designation is so prominent that it appears to be the dominant mark on the Infringing Moisture

Product.      As the photographs below reveal, the Infringing Moisture Product’s packaging



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incorporates a confusingly similar pale pink and white color scheme as used by Plaintiff for

many years.




       27.    In light of Defendant’s expanding infringement of Plaintiff’s EVENTONE Mark,

on April 5, 2013, Plaintiff attempted to resolve the dispute over Defendant’s use of the

EVENTONE designation without litigation by sending Defendant another letter requesting that it

cease use of the EVENTONE Mark. A true and correct copy of Plaintiff’s April 5, 2013 letter is

attached at Exhibit E.

       28.    To date, Defendant has not responded to Plaintiff’s April 5, 2013 letter.

       29.    Upon information and belief, Defendant from late 2012 through the date hereof,

continues to offer to sell and sell the Infringing BB Cream and Infringing Moisture Product both



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at retail locations and via Internet web sites available to consumers in this District, and

throughout the nation.

       30.      Many actual and potential purchasers and consumers, upon encountering

Defendant’s Infringing BB Cream and Infringing Moisture Product, are likely to mistakenly

believe that Plaintiff has in some way licensed, approved, or sponsored Defendant’s products, or

that Defendant’s products with, or are in some way affiliated with or related to, Plaintiff or its

products sold under the EVENTONE Mark.

       31.      In addition, Defendant’s use of the EVEN TONE designation has caused, and

unless immediately enjoined will continue to cause, dilution of the distinctive quality of

Plaintiff’s distinctive EVENTONE Mark because the mark’s capacity to identify and distinguish

Plaintiff’s products will be diminished.

       32.      Defendant’s activities constitute unfair competition under both federal and state

common law. Unless Defendant’s acts of false designation of origin, trademark infringement,

dilution, and unfair competition are temporarily, preliminarily and permanently enjoined,

Defendant will suffer irreparable injury for which there is no adequate remedy at law.


                                      CLAIMS FOR RELIEF

                                              CLAIM I

             INFRINGEMENT OF A REGISTERED TRADEMARK (FEDERAL)

       33.      Plaintiff repeats and realleges the allegations of paragraphs 1 through 32 as if set

forth herein.

       34.      Defendant’s unlawful actions, as set forth above, are likely to cause confusion,

mistake, or deception as to the source, origin, affiliation, association or sponsorship of

Defendant’s goods and falsely mislead consumers into believing that Defendant and/or its goods

originate from, are affiliated or connected with, or approved by, Plaintiff.



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       35.      Accordingly, Defendant’s unlawful and illegal actions, as set forth above,

constitutes infringement of Plaintiff’s registered trademarks, in violation of the Lanham Act, 15

U.S.C. § 1114.

       36.      Defendant’s acts of infringement have caused Plaintiff to sustain monetary damage,

loss and injury, in an amount to be determined by the Court.

       37.      Defendant has engaged in these activities willfully and deliberately, so as to justify

the assessment of treble damages and attorneys’ fees under 15 U.S.C. § 1117.

       38.      Defendant’s acts of infringement, unless permanently enjoined by this Court, will

continue to cause Plaintiff to sustain irreparable damage, loss and injury, for which it has no

adequate remedy at law.

                                              CLAIM II
     TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION (FEDERAL)

       39.      Plaintiff repeats and realleges the allegations of paragraphs 1 through 38 as if set

forth herein.

       40.      Defendant’s unlawful and illegal actions, as set forth above, are likely to cause

confusion, mistake, or deception as to the source, origin, affiliation, association or sponsorship of

Defendant’s goods and falsely mislead consumers into believing that Defendant and/or its goods

originate from, are affiliated or connected with, or approved by, Plaintiff.

       41.      Accordingly, Defendant’s activities constitute an infringement of the EVENTONE

Mark and unfair competition in violation of 15 U.S.C. § 1125(a).

       42.      Defendant’s acts of infringement and unfair competition have caused Plaintiff to

sustain monetary damage, loss, and injury, in an amount to be determined by the Court.

       43.      Defendant has engaged these activities willfully, so as to justify the assessment of

treble damages under 15 U.S.C. § 1117.

       44.      Defendant’s acts of infringement and unfair competition, unless immediately and

permanently enjoined by this Court, will continue to cause Plaintiff to sustain irreparable

damage, loss and injury, for which it has no adequate remedy at law.


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                                              CLAIM III

                             TRADEMARK DILUTION (FEDERAL)
          45.   Plaintiff repeats and realleges the allegations of paragraphs 1 to 44 as if set forth

herein.

          46.   The EVENTONE Mark is distinctive and famous within the meaning of 15 U.S.C.

§ 1125(c), and was distinctive and famous prior to the date of Defendant’s conduct challenged

herein.

          47.   Defendant’s conduct alleged violates 15 U.S.C. § 1125(c) in that it is likely to dilute

and is diluting the distinctive quality of the EVENTONE Mark. Defendant’s use of the EVEN

TONE designation on its skin care products and on marketing and advertising materials is likely

to create and has created an association between Defendant’s products and the EVENTONE

Mark owned by Plaintiff, which impairs the distinctiveness of Plaintiff’s EVENTONE Mark and

lessens the capacity of the mark to identify and distinguish products marketed and sold by

Plaintiff under the EVENTONE Mark.

          48.   On information and belief, Defendant willfully and in bad faith intended to profit

from the EVENTONE Mark by trading on the valuable reputation of the EVENTONE Mark and

causing dilution of distinctive quality of this famous mark.

          49.   Defendant’s violations of 15 U.S.C. § 1125(c) entitle Plaintiff to recover damages,

including, without limitation, Defendant’s profits from the sale of all infringing goods, actual

damages, treble damages, and attorneys’ fees.

          50.   Defendant’s willful and deliberate acts described above have caused irreparable

injury to Plaintiff’s goodwill and reputation, and, unless enjoined will cause further irreparable

injury, whereby it has no adequate remedy at law.




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                                              CLAIM IV

                              UNFAIR COMPETITION (FEDERAL)
       51.      Plaintiff repeats and realleges the allegations of paragraphs 1 through 50 as if set

forth herein.

       52.      The willful and illegal conduct of Defendant constitutes unfair competition in that it

offends public policy and is deceptive, oppressive, unethical, morally culpable, unscrupulous and

causes injury to consumers.

       53. Defendant’s willful and deliberate acts described above have caused irreparable

injury to Plaintiff, and, unless enjoined will cause further irreparable injury, whereby it has no

adequate remedy at law.
                                              CLAIM V

                               TRADEMARK DILUTION (STATE)
       54.      Plaintiff repeats and realleges the allegations of paragraphs 1 through 53 as if set

forth herein.

       55.      This claim is for injury to goodwill and business reputation pursuant to New York

General Business Law Section 360-l.

       56.      The EVENTONE Mark is distinctive within the meaning of New York General

Business Law Section 360-l.

       57.      Defendant’s conduct alleged above causes injury to the 26-year goodwill and

business reputation of Plaintiff and its EVENTONE Mark and creates a likelihood of dilution of

the distinctive quality of the mark in violation of New York General Business Law Section 360-l.

       58.      Defendant’s willful and deliberate acts described above have caused irreparable

injury to Plaintiff’s goodwill and reputation, and, unless enjoined will cause further irreparable

injury, whereby it has no adequate remedy at law.




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                                             CLAIM VI

       TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION (STATE)

       59.      Plaintiff repeats and realleges the allegations of paragraphs 1 through 58 as if set

forth herein.

       60.      Defendant’s use of the EVEN TONE designation, as alleged above, constitutes

trademark infringement and unfair competition in violation of common law.

       61.      Defendant’s willful and deliberate acts described above have caused irreparable

injury to Plaintiff, and, unless enjoined will cause further irreparable injury, whereby it has no

adequate remedy at law.
                                             CLAIM VII

                        DECEPTIVE ACTS AND PRACTICES (STATE)
       62.      Plaintiff repeats and realleges the allegations of paragraphs 1 through 61 as if set

forth herein.

       63.      This claim is for deceptive acts and practices under New York General Business

Law Sections 349 and 350, et seq.

       64.      Defendant’s use of the EVEN TONE designation, as alleged above, constitutes

deceptive acts and practices under New York General Business Law Sections 349 and 350, et
seq.

       65.      Defendant’s willful and deliberate acts described above have caused irreparable

injury to Plaintiff, and, unless enjoined will cause further irreparable injury, whereby it has no

adequate remedy at law.
                                      PRAYER FOR RELIEF

       WHEREFORE, Plaintiff prays for judgment against Defendant as follows:

       A.        For a temporary, preliminary and permanent injunction enjoining and restraining

Defendant and each of its officers, agents, servants, employees and attorneys, and those persons


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acting in concert or participation with them who receive actual notice of the Order by personal

service or otherwise, from:

               (1)       using   Plaintiff’s   EVENTONE       Mark    (however     spelled,   whether

capitalized, abbreviated, singular or plural, printed or stylized, whether used alone or in

combination with any word or words, and whether used in caption, text, orally or otherwise), or

any other reproduction, counterfeit, copy, colorable imitation or confusingly similar variation of

Plaintiff’s EVENTONE Mark, as a trade name, trademark or service mark, or in any other

manner which suggests in any way that Defendant and/or its activities, products or services

originate from, are affiliated with, or are sponsored, authorized, approved or sanctioned by

Plaintiff, or that Plaintiff and/or its activities, products or services are affiliated in any way with

Defendant;

               (3)       infringing or diluting the EVENTONE Mark;

               (4)       using in connection with Defendant’s activities, products or services any

false or deceptive designation, representation, description or advertisement of Defendant or of its

activities, products or services, whether by symbols, words or statements, which would damage

or injure Plaintiff or give Defendant an unfair competitive advantage in the marketplace;

               (5)       violating New York General Business Law Sections §§ 349-350, et seq.

and 360–l;

               (6)       engaging in acts of state or common law trademark infringement, unfair

competition, misappropriation or dilution, which would damage or injure Plaintiff; and

               (7)       inducing, encouraging, instigating, aiding, abetting or contributing to any

of the aforesaid acts.


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       B.      That all materials, packaging, labels, tags, pamphlets, brochures, signs, sales

literature, stationary, advertisements, contracts, documents, materials and the like in the

possession or under the control of Defendant, including, without limitation, all copies of its

packaging, and all plates, molds, matrices, negatives, masters and other means of making the

same, which might, if used, violate the Order herein granted, be recalled as the Court shall direct.

       C.      That all Internet sites, online social media platform, and any and all online or

electronic advertising and marketing materials, which might, if displayed or disseminated,

violate the Order, be revised as the Court shall direct.

       D.      That Defendant file with the Court and serve on counsel for Plaintiff within thirty

(30) days after service on Defendant of such Order, or within such extended time period as this

Court may direct, a report in writing and under oath, setting forth in detail the manner and form

in which Defendant has complied with the Order.

       E.      For an award of Defendant’s profits and Plaintiff’s damages resulting from

Defendant’s unlawful acts set forth herein, in an amount to be proven at the time of trial, together

with legal interest from the date of accrual thereof.

       F.      For an award of treble damages pursuant to 15 U.S.C. § 1117.

       G.      For an award of punitive damages, in an amount to be proven at the time of trial.

       H.      That Plaintiff be awarded the costs of this civil action, together with its reasonable

attorney fees, pursuant to 15 U.S.C. § 1116 and/or 15 U.S.C. § 1117, and the equity powers of

the Court.

       I.      That Defendant recall from publication, distribution or dissemination, and deliver




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