throbber
Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA359766
`ESTTA Tracking number:
`07/23/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91189629
`Defendant
`Multi Media Exposure, Inc.
`Robert Raskopf / Claudia Bogdanos
`Quinn Emanuel Urquhart & Sullivan, LLP
`51 Madison Avenue 22nd Floor
`New York, NY 10010
`UNITED STATES
`robertraskopf@quinnemanuel.com, claudiabogdanos@quinnemanuel.com,
`trademark@quinnemanuel.com
`Motion to Suspend for Civil Action
`Ulana Holubec, Esq.
`ulanaholubec@quinnemanuel.com, claudiabogdanos@quinnemanuel.com
`/ulanaholubec/
`07/23/2010
`MME-Motion to Suspend-Part 1.pdf ( 8 pages )(169203 bytes )
`MME-Motion to Suspend-Part 2.pdf ( 8 pages )(229408 bytes )
`MME-Motion to Suspend-Part 3.pdf ( 8 pages )(206127 bytes )
`MME-Motion to Suspend-Part 4.pdf ( 8 pages )(127617 bytes )
`MME-Motion to Suspend-Part 5.pdf ( 8 pages )(103002 bytes )
`MME-Motion to Suspend-Part 6.pdf ( 8 pages )(214551 bytes )
`MME-Motion to Suspend-Part 7.pdf ( 8 pages )(335687 bytes )
`MME-Motion to Suspend-Part 8.pdf ( 13 pages )(464256 bytes )
`MME-Motion to Suspend-Cert Service.pdf ( 1 page )(14259 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`...................................................--X
`
`Borghese Trademarks, Inc.
`
`Opposition No.: 91189629
`
`V.
`
`Opposer,
`
`Mark: PRINCE LORENZO
`BORGHESE’S LA DOLCE VITA
`
`Multi Media Exposure, Inc.
`
`Appl. Serial No.: 77/435,171
`
`Applicant.
`...................................................--X
`
`MOTION TO SUSPEND THE PROCEEDING
`
`Pursuant to 37 CFR § 2.117(a) and TBMP § 5l0.02(a), Applicant Multi Media Exposure,
`
`Inc. (“Applicant”) hereby requests that the Trademark Trial and Appeal Board (the “T.T.A.B.” or
`
`Trademarks Inc. v. Borghese, Civil Action No. 10 CIV 5552 (“Civil Action”), ongoing between
`
`the parties and involving Applicant's mark PRINCE LORENZO BORGI-[ESE’S LA DOLCE
`
`VITA ("Applicant's Mark"), because this action will have a direct bearing on the instant
`
`proceeding.
`
`FACTUAL BACKGROUND
`
`Applicant filed Application Serial No. 77/435,171 for the mark PRINCE LORENZO
`
`BORGHESE’S LA DOLCE VITA on March 20, 2008, and began using a substantially similar
`
`version of that mark as early as November, 2008. On April 8, 2009, Opposer initiated the
`
`present proceeding alleging, inter alia, a likelihood of confusion between Applicant's Mark and
`
`Opposer's various registered marks.
`
`

`
`On July 21, 2010, Opposer filed a Complaint with the United States District Court for the
`
`Southern District of New York (“S.D.N.Y.”) alleging, inter alia, that Applicant's use of the LA
`
`DOLCE VITA BY PRINCE LORENZO BORGHESE mark constitutes federal and common-law
`
`trademark infringement. (Attached hereto as Exhibit 1.) In the Complaint, Opposer seeks,
`
`among other relief, an order that Applicant's Mark -— the subject of the instant proceeding — be
`
`withdrawn, and enjoining Applicant from using or registering the Applicant's Mark.
`
`ARGUMENT
`
`The Determinations in Borghese Trademarks Inc. v. Borghese Will Have
`A Direct Bearing On The Issues Before The Board.
`
`Where a party to a case pending before the Board is also involved in a civil action that
`
`may have a bearing on the T.T.A.B. matter, the Board may suspend the proceeding until the final
`
`determination of the civil action. 37 CFR § 2.117(a); TBMP § 510.02(a). This is because "a
`
`decision by the United States District Court would be binding on the Patent Office whereas a
`
`determination by the Patent Office as to respondent's right to retain its registration would not be
`
`binding or res judicata in respect to the proceeding before the federal district court." Whopper-
`
`Burger, Inc. v. Burger King Corp, 171 U.S.P.Q. 805, 807 (T.T.A.B. 1971). A court's decision
`
`regarding the right to registration is binding on the T.T.A.B. The Seven- Up Co. v. Bubble Up
`
`Co., 136 U.S.P.Q. 210, 214 (C.C.P.A. 1963); see also In re Alfred Dunhill Ltd, 224 U.S.P.Q.
`
`501, 503 (T.T.A.B. 1984); J. Thomas McCarthy, 6 McCarthy on Trademarks and Unfair
`
`Competition § 32:94 (4th ed. 2009) (hereinafter "McCarthy").
`
`Applicant and Opposer are both parties to the Civil Action, which is currently pending
`
`before the S.D.N.Y. and involves Applicant's PRINCE LORENZO BORGHESE’S LA DOLCE
`
`VITA mark and similar legal issues related to trademark—infringement and unfair-competition. In
`
`that case, the District Court will determine the respective rights of Applicant and Opposer with
`
`

`
`respect to Applicant's Mark. It is clear that this type of determination will directly affect the
`
`resolution of the issues before the Board. See The Other Tel. Co. v. Conn. Nat ’l Tel. Co., Inc.,
`
`181 U.S.P.Q. 125, 126-7 (T.T.A.B. 1974).
`
`Based on the foregoing, Applicant respectfully requests that the Board stay this
`
`proceeding pending the final determination of the Civil Action.
`
`Dated:
`
`New York, New York
`July 23, 2010
`
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`
`By:
`
`A
`
`AKDS W
`
`/
`
`Robert Raskopf
`robertraskopf@quinnemanuel.com
`Claudia Bogdanos
`claudiabogdanos@quinnemanuel.com
`Jolie Apicella
`jolie.apice11a@quinnemanue1.com
`
`51 Madison Avenue, 22nd Floor
`
`New York, New York 10010-1601
`
`(212) 849-7000
`
`Attorneysfor Applicant Multimedia Exposure, Inc.
`
`

`
`EXHIBIT 1
`
`

`
`Mark N. Mutterperl
`Jessica S. Parise
`Joshua C. Foster
`
`Fulbright & Jaworski L.L.P.
`666 Fiflh Avenue, 31“ Floor
`New York, New York 10103
`Telephone: (212) 318-3000
`Fax: (212) 318-3400
`mmuttei-per1@fi11bright. com
`jparise@fulbright.com
`j foster@fi1lbright.com
`
`Attorneys for Plaintififs Borghese Trademarks Inc.,
`Borghese Inc. and Borghese International Ltd.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`.......................................................--x
`
`BORGHESE TRADEMARKS INC.,
`
`BORGHESE INC. and
`
`BORGHESE INTERNATIONAL LIMITED :
`
`2
`
`»
`
`''
`
`5 5 5 2
`
`I
`
`P
`
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`
`3
`
`Civil Action No.
`
`COMPLAINT
`
`.
`
`*
`
`‘,5
`‘y
`c_,
`
`f‘
`
`In
`
`\
`" L‘
`
`7:»
`
`IE5:
`
`Plaintififs,
`
`-against-
`
`FRANCESCO BORGHESE, AMANDA
`
`BORGHESE, SCIPIONE BORGHESE,
`LORENZO BORGHESE,
`KATIE BORGHESE, MULTIMEDIA
`EXPOSURE, INC, GT PARTNERS
`LIMITED, PERLIER, INC., EBPD, LLC,
`ORLANE, INC. and HSN, INC.
`
`:
`
`:
`:
`:
`:
`:
`:
`
`2
`Defendants.
`.......................................................--x
`
`Plaintiffs Borghese Trademarks Inc., Borghese Inc. and Borghese International Limited
`
`(“Plaintiffs”) for their complaint against defendants Francesco Borghese, Amanda Borghese,
`
`Scipione Borghese, Lorenzo Borghese, Katie Borghese, Multimedia Exposure, Inc., GT Partners
`
`

`
`Limited, Perlier,
`
`Inc., EBPD LLC., Orlane,
`
`Inc. and the HSN,
`
`Inc.
`
`(“HSN”)
`
`(together,
`
`“Defendants”), allege as follows:
`
`THE PARTIES
`
`1.
`
`Borghese Trademarks Inc. is, and at all relevant times has been, a corporation
`
`organized and existing under the laws of the State of Delaware with its principal place of
`
`business in Wilmington, Delaware.
`
`2.
`
`Borghese Inc. is, and at all relevant times has been, a corporation organized and
`
`existing under the laws of the State of Delaware with its principal place of business in New
`
`York, New York.
`
`3.
`
`Borghese International Limited is, and at all
`
`relevant
`
`times has been, a
`
`corporation organized and existing under the laws of the British Virgin Islands.
`
`4.
`
`On information and belief, Francesco Borghese is an individual who resides in
`
`New Jersey.
`
`5.
`
`On information and belief, Amanda Borghese is an individual who resides in New
`
`Jersey.
`
`6.
`
`On information and belief, Scipione Borghese is an individual who resides in
`
`New Jersey.
`
`7.
`
`On information and belief, Katie Borghese is an individual who resides in New
`
`Jersey.
`
`8.
`
`On information and belief, Lorenzo Borghese is an individual who resides in New
`
`York, New York.
`
`. 9.
`
`On information and belief, Multimedia Exposure, Inc. is, and at all relevant times
`
`has been, a corporation organized and existing under the laws of the State of New Jersey with its
`
`principal executive offices in Bernardsville, New Jersey.
`
`-2-
`
`

`
`10.
`
`On information and belief, GT Partners Limited is, and at all relevant times has
`
`been, a corporation organized and existing under the laws of the State of New Jersey with its
`
`principal ofiice in Sayreville, New Jersey.
`
`11.
`
`On information and belief, Perlier, Inc. is, and at all relevant times has been, a
`
`corporation organized and existing under the laws of the State of Delaware with its principal
`
`office in Sayreville, New Jersey.
`
`12.
`
`On infonnation and belief, EBPD LLC is, and at all relevant times has been, a
`
`corporation organized and existing under the laws of Italy with a place of business in the United
`
`States in Sayreville, New Jersey.
`
`13.
`
`On infomiation and belief, Orlane, Inc. is, and at all relevant times has been, a
`
`corporation organized and existing under the laws of the State of New York with its principal
`
`office in Sayreville, New Jersey.
`
`14.
`
`On information and belief, HSN is, and at all relevant
`
`times has been, a
`
`corporation organized and existing under the laws of the State of Delaware with its principal
`
`ofiice in St. Petersburg, Florida.
`
`15.
`
`On information and belief, defendant Francesco Borghese is, and at all relevant
`
`times has been, an owner, director, oflicer or member of Multimedia Exposure, Inc., GT Partners
`
`Limited, Perlier, Inc., EBPD, Inc. and Orlane, Inc. Defendants Francesco Borghese, Multimedia
`
`Exposure, Inc., GT Partners Limited, Perlier, Inc., EBPD, Inc. and Orlane, Inc. are referred to
`
`herein as the “Bound Defendants.”
`
`16.
`
`On information and belief, defendant Francesco Borghese exercises control, and
`
`at all relevant times has exercised control, over Multimedia Exposure, Inc., GT Partners Limited,
`
`

`
`Perlier, Inc., EBPD, Inc. and Orlane, Inc. by and through his positions as owner, officer, director,
`
`member or otherwise.
`
`JURISDICTION AND VENUE
`
`17.
`
`This Court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331, 1338
`
`and 1367, and 15 U.S.C. § 1121, because it involves an action arising under the laws of the
`
`United States and claims sufficiently related thereto such that supplemental jurisdiction exists
`
`over them.
`
`18.
`
`This Court has personal jurisdiction over defendant Lorenzo Borghese because he
`
`is a citizen of the state of New York and resides in this judicial district.
`
`19.
`
`This Court also has personal jurisdiction over defendants Lorenzo Borghese,
`
`Francesco Borghese, Amanda Borghese, Scipione Borghese, Katie Borghese, Multimedia
`
`Exposure, Inc., GT Partners Limited, Perlier, Inc., EBPD, LLC and Orlane, Inc. because they are
`
`located within 100 miles of the courthouse.
`
`20.
`
`
`
`21.
`
`This Court also has personal
`
`jurisdiction over all defendants because all
`
`defendants transact business within the state of New York by marketing, promoting, advertising,
`
`

`
`offering for sale and selling products identified herein throughout the United States, including
`
`the State of New York and this judicial district, including on interactive websites which are
`
`accessible in this judicial district.
`
`22.
`
`This Court also has personal jurisdiction over all defendants because the conduct
`
`and products complained of herein that all defendants market, promote, advertise, offer for sale
`
`and sell harm Borghese Inc., whose principal place of business is New York, New York, and its
`
`related affiliates.
`
`23.
`
`Venue is proper in this district pursuant to 28 USC. § 1391 because a substantial
`
`part of the events or omissions giving rise to the claims herein occurred in this judicial district.
`
`24.
`
`STATEMENT OF THE CLAIM
`
`25.
`
`This case involves Defendants’ use of Plaintiffs’ trademarks in connection with
`
`Defendants’ offer to sell, sale, advertising, marketing and promotion of allegedly high-end
`
`luxury bath, body and skin care products for humans and pets and home fragrances (the
`
`“Defendants’ Products”) including on various websites such as defendant HSN’s website.
`
`26.
`
`Plaintiffs manufacture and distribute a renowned high-end luxury brand of
`
`products including cosmetics, skin, hair and nail care products, and other consumer goods,
`
`including eyewear and bedding sold under the distinctive BORGHESE name (the “BORGHESE
`
`Products”).
`
`

`
`30.
`
`Defendants’ present unlawful conduct
`
`is not, however, an isolated event.
`
`Defendant Lorenzo Borghese has, on prior occasions, impermissibly used the BORGHESE name
`
`

`
`in connection with his attempts to open a spa under the name “Borghese Spa” and exploit the
`
`BORGHESE name in connection with an appearance on a popular reality television show.
`
`In
`
`each instance, Plaintiffs asserted their rights in the BORGHESE name before Mr. Borghese
`
`relented.
`
`31.
`
`This action seeks preliminary and permanent injunctive and monetary relief for
`
`(a) trademark infiingement in violation of the Trademark Act of 1946, 15 U.S.C. § 1114; (b)
`
`trademark infringement, false designation of origin and unfair competition in violation of the
`
`Trademark Act of 1946, 15 U.S.C. § 1125(a); (c) state trademark infringement and unfair
`
`competition under the common law of the State of New York; (d) deceptive trade practices in
`
`violation of New York General Business Law § 349; (e) breach of contract under New York
`
`common law; (t) trademark dilution under New York General Business Law § 360-1; and (g)
`
`unjust enrichment under the common law of the State of New York. Plaintiffs also seek a
`
`declaratory judgment that the application to register PRINCE LORENZO BORGHESE’S LA
`
`DOLCE VITA with the USPTO breaches the terms of the Settlement Agreement.
`
`FACTS
`
`History Of Plaintiffs’ BORGHESE Brand
`
`32.
`
`The Borghese family’s rich history has been publicized extensively in connection
`
`with their legacy of political and religious prominence throughout the centuries. The Borghese
`
`family history is traced to at least the 13th Century, when the Borghese family began its rise to
`
`nobility. The Borghese family has boasted prominent figures such as Pope Paul V, Cardinal
`
`Scipione Borghese, and numerous princes and princesses.
`
`In the 15th century, the Holy Roman
`
`Emperor granted the Borghese family permission to add an eagle to its family coat of arms. The
`
`

`
`eagle is featured prominently on the BORGHESE crest logo.
`
`In the 19th century, Camillio
`
`Borghese married Pauline Bonaparte, sister of Napoleon Bonaparte.
`
`33.
`
`For generations, the Borghese family had their cosmetics specially made for them,
`
`mainly from fruits and other natural ingredients from Italy.
`
`34.
`
`Princess Marcella Borghese began the family legacy in the beauty industry.
`
`In
`
`1956, Princess Borghese partnered with Charles Revson,
`
`founder of Revlon Overseas
`
`Corporation, C.A. (“Revlon”), to create her own line of cosmetics from the secret recipe for
`
`cosmetics and skin creams she had commissioned. Princess Borghese began selling her products
`
`under the BORGHESE name, beginning the long tradition of excellence associated with the
`
`BORGHESE Products. This continued with Revlon, which acquired the brand and then,
`
`eventually, Plaintiffs who purchased the brand from Revlon.
`
`35.
`
`In part, Princess Borghese’s
`
`rich family history described above
`
`(the
`
`“BORGHESE History”) gives allure and cache to the BORGHESE Brand, as defined below.
`
`Plaintiffs have used and continue to use the BORGHESE History in connection with the sale of
`
`BORGHESE Products.
`
`For example, on Plaintiffs website, www.borgl_1esenailcare.com,
`
`Plaintiffs provide a link called “The Borghese Heritage” which traces the BORGHESE History.
`
`A printout of “The Borghese Heritage” found on Plaintiffs website www.borgl_1esenailcare.com
`
`is attached hereto as Exhibit B.
`
`Plaintiffs’ Ownership Of The BORGHESE Brand
`
`36.
`
`Plaintiffs own common law rights, one federal trademark registration and one
`
`federal trademark application, which has been allowed, in and to the Borghese logo, which
`
`consists of a highly stylized crest:
`
`

`
`
`
`(the “BORGHESE Crest”). Plaintifis also own several federal trademark registrations and
`
`applications to identify, among other things, the BORGHESE Products, including PRINCESS
`
`MARCELLA BORGHESE and BORGHESE. These trademarks include:
`
`
`,13GHI§s
`3,810,009
`
`
`October
`June 29, 2010
`Consultation
`1 1, 1992 ‘
`services in the field
`»
`of makeup and skin
`care, namely in-
`person makeup
`consultation and
`
`BORGHESE
`
`‘L 3,703,691
`
`October, October 27, 2009
`1992
`
`BORGHESE
`
`4 3,506,702
`
`9
`
`May 3,
`
`1996
`
`}
`I geptmnber 23,
`
`2008
`
`Boiféfinsa
`
`3,3 87,M0M04t‘5“w
`
`October, February 19,
`1992
`2008
`
`-9-
`
`application
`services; facial
`
`treatment services;
`cosmetic
`makeovers.
`
`Skin care products,
`, among things, body
`and beauty care
`cosmetics,
`~ shampoo, creams,
`skin cleansers and
`
`1
`
`soaps
`Retail mail order
`
`services and retail
`
`store services in the
`field of cosmetics
`and skin care.
`
`Cosmetics and
`cleansers, including
`skin care roducts,
`
`

`
`
`
`A creams and lo ons.
`
`BORGHESE
`
`1,134,398
`
`May 6, 1980
`
`April
`30,
`1958
`
`i PRINCESS
`
`MARCELLA
`BORGHESE
`
`I 3,369,371
`
`-+May 30,
`
`1958
`
`January 15, 2005
`
`: Perfume, cologne,
`afier shave lotion,
`dusting powder,
`skin cream and
`
`lotion, facial make-
`up, eye shadow,
`suntan oil, nail
`enamel, lipstick,
`hair shampoo and
`conditioner.
`
`Skin care products,
`among other things
`face and body
`creams and lotions,
`hair cleaning
`preparations,
`cosmetics, shower
`and bath foam, skin
`cleansers and
`moisturizers.
`
`
`1 BORGHESE W
`
`78/916,993
`
`June 26, 2006
`
`Cosmetics and
`
`cleansers, including
`skin care products,
`creams and lotions,
`candles, candle
`extinguishers,
`stationary cases,
`bags and carrying
`cases, sponges and
`; bath gloves.
`
`I
`
`Eyeglass cases,
`eyeglass chains,
`eyeglass frames,
`eyeglass lenses,
`eyeglasses,
`spectacle cases,
`ectacle flames,
`
`
`
`
`BORGHESE
`
`’ 77/812,789
`
`E
`
`’ August 26, 2009
`
`-10-
`
`

`
`
`
`A BORGHESE
`
`~21»
`
`77/251,612
`
`August 9, 2007
`
`spectacle glasses,
`spectacle lenses,
`sunglass chains and
`‘ cords, sunglass
`lenses, sunglasses
`and spectacles.
`
`I
`
`Sinks, whirlpools,
`shower and shower
`
`accessories, facial
`smmas, fans,
`chandeliers, spa
`surrounds, spas in
`the nature of heated
`
`pools, whirlpools,
`wine coolers.
`
`VILLA DI
`BORGHESE
`
`77/237,319
`
`~‘l—
`
`July 24, 2007
`
`Cosmetics and
`
`VIEEA DI
`BORGHESE
`
`"77/251,622
`
`‘l
`
`August 975007
`
`cleansers, cosmetic
`
`preparations,
`creams, lotions,
`shampoo, soap,
`moisturizers,
`sponges, bath
`accessories, bath
`gloves, bath towels,
`candles, all-purpose
`
`l carryingbags.
`
`
`Sink pedestals,
`sinks, whirlpool
`baths, bath tubs,
`, toilet seats, faucets,
`hand held shower
`
`3 heads, hand
`showers, hand-held
`showers, shower
`doors, shower
`enclosures, shower
`g? heads, shower
`surrounds, shower
`tubs, showers,
`_.__——
`
`E
`
`-11-
`
`

`
`
`
`
`
`bathtub enclosures,
`bathtubs, spa
`surrounds, spas in
`the nature of heated
`
`1 1
`
`LV
`
`ILLA BORGHESE
`
`ML 77/226,846
`
`July 11, 2007
`
`Cosmetics and
`
`cleansers, facial
`and skin cleansers,
`perfume, dusting
`powder, skin cream
`and lotion, facial
`make-up and
`blusher, eye
`shadow, suntan oil
`; and sun screen
`i preparations and
`E skin care products,
`stationary products,
`bath products.
`
`Sink pedestals,
`sinks, whirlpool
`l baths, bath tubs,
`toilet seats, faucets,
`hand held shower
`heads, hand
`showers, ha.nd—he1d
`showers, shower
`doors, shower
`enclosures, shower
`heads, shower
`
`August 9, 2007
`
`_i_._,
`
`
`VILLA BORGHESE
`77/251,625 ‘
`
`i 3
`
`
`
`pools.
`
`Candles, stationary
`cases, all—purpose
`carrying bags,
`toiletry cases,
`beachwear,
`
`loungewear,
`nightwear,
`sleepwear, shoes,
`undergarments.
`
`VILLA BORGHESE
`
`77/975,634
`
`July 22, 2008
`
`
`
`

`
`
`
`
`
`
`surrounds, shower
`tubs, showers,
`bathtub enclosures,
`bathtubs, spa
`surrounds, spas in
`the nature of heated
`
`
`
`77/672,123
`
`: VILLA BORGHESE
`
`pools.
`
`
`February 17,
`Bath gloves, bath
`2009
`linen, bath mitts,
`bath sheets, bath
`towels, bed
`blankets, bed
`canopies, bed
`covers, bed linen,
`bed pads, bed
`sheets, bed skirts,
`bed spreads,
`blanket throws,
`comforters,
`coverlets, curtains,
`dust ruffles, duvet
`covers, duvets,
`feather beds,
`handkerchiefs,
`household linen,
`kitchen linens,
`kitchen towels,
`mattress covers,
`mattress pads,
`pillow cases, pillow
`covers, pillow
`shams, pillowcases,
`quilts, shams,
`shower curtains,
`table linen, throws,
`toilet tank covers
`made of fabric or
`
`2
`
`fabric substitutes,
`towels, washcloths,
`washingggves,
`
`

`
`
`
`BORGHESE
`GARDENS
`
`77/252,203
`
`August 10,2007
`
`Cosmetics and
`
`cleansers, facial
`and skin cleansers,
`perfume, dusting
`powder, skin cream
`and lotion, facial
`make-up and
`blusher, eye
`shadow, suntan oil
`and sun screen
`
`preparations and
`skin care products,
`stationary products,
`bath products.
`
`W3
`
`1
`
`Sink pedestals,
`sinks, whirlpool
`baths, bath tubs,
`toilet seats, faucets,
`I hand held shower
`heads, hand
`showers, hand-held
`showers, shower
`doors, shower
`enclosures, shower
`heads, shower
`surrounds, shower
`tubs, showers,
`bathtub enclosures,
`bathtubs, spa
`surrounds, spas in
`the nature of heated
`
`
`
`
`
`§ cleansers, facial
`E and skin cleansers,
`E perfume, dusting
`powder, skin cream
`| and lotion, facial
`
`BORGHESE
`GARDENS
`
`x 77/251,633
`
`August 9, 2007
`
`_.l
`
`7 SPA DI BORGHESE 777/364,381
`
`JP
`
`January 4, 2008
`
`pools.
`
`Cosmetics and
`
`I
`
`

`
`:
`
`J _
`
`_
`
`=5‘
`
`1 E;
`
`av
`. S‘. V‘
`.2 I
`
`'
`
`
`
`.;v «-
`
`TE VERDE DI
`BORGHESE
`
`make-up and
`blusher, eye
`shadow, suntan oil
`and sun screen
`
`preparations and
`skin care products,
`stationary products,
`bath products.
`
`77/687,035
`
`March 10, 2009
`
`Skin care
`
`77/782,741
`
`November 24,
`2009 (notice of
`allowance issued
`
`February 16,
`2010)
`
`3,746,796
`
`April
`30,
`1958
`
`November 24,
`2009
`
`preparations
`including anti-
`wrinkle creams,
`body lotions,
`cosmetic creams,
`eye makeup,
`lotions for cosmetic
`
`purposes, skin
`creams, skin
`moisturizers, skin
`soaps.
`
`Eye glasses; sun
`glasses; bath
`products, namely,
`sponges; bath
`linens, bath sheets,
`bath towels,
`mattress covers,
`
`mattress pads, bath
`slippers, nightwear,
`robes.
`
`Anti-wrinkle
`
`creams; blush;
`body lotions;
`cosmetic goods;
`hair shampoos; skin
`cleansers; skin
`creams.
`
`Com uterized on-
`
`

`
`1999).
`
`line retail store
`services in the field
`of cosmetics (first
`use date - May 3,
`
`,
`
`(the “BORGHESE Marks”)
`
`(together,
`
`the BORGHESE Crest, BORGHESE Marks and
`
`BORGHESE History, the “BORGHESE Brand”).
`
`
`
`-15-
`
`

`
`-17-
`
`

`
`

`
`

`
`Plaintiffs’ BORGHESE Brand Today
`
`51.
`
`The BORGHESE Brand represents Italian beauty and the lush natural ingredients
`
`found in the mineral-rich hills of the Tuscan landscape.
`
`It has more than fifiy (50) years of
`
`prominence in the beauty industry.
`
`52.
`
`The BORGHESE Products are leading products in the beauty industry.
`
`53.
`
`Since its introduction, Plaintiffs and their Predecessors in Interest have used the
`
`BORGHESE Crest, BORGHESE Marks and BORGHESE History to distinguish their products
`
`from the products of others.
`
`54.
`
`The BORGHESE Marks and BORGHESE Crest are inherently distinctive.
`
`55.
`
`The BORGHESE Brand is recognized by consumers in the United States and
`
`elsewhere. The BORGHESE Products are available throughout the world including Europe,
`
`North America and Asia.
`
`56.
`
`BORGHESE skin and nail care products are sold at cosmetic boutiques and shop-
`
`in-shop counters in department stores throughout the United States, including Bloomingdale’s
`
`and Lord & Taylor. They are also available nationwide at Costco stores under the “Kirkland
`
`Signature, by Borghese” brand, at cosmetic boutiques and at more than 17,000 pharmacies
`
`nationwide including CVS, Walgreens, Rite Aid, and Duane Reade.
`
`57.
`
`From 2005 to 2008, BORGHESE Products were available for sale on SHOPNBC,
`
`a home shopping television network.
`
`58.
`
`BORGHESE Products may be purchased online at several sites,
`
`including
`
`www.amazon.com and Plaintiffs’ website www.borg1;ese.com.
`
`59.
`
`Plaintiffs have expanded the BORGHESE Brand beyond cosmetics and skin and
`
`nail care products. BORGHESE eyewear products are available throughout the United States,
`
`- 20-
`
`

`
`with distribution in more than 5,000 stores nationwide. BORGHBSE bedding products are
`
`available at more than 25 Boomingdale’s department stores.
`
`60.
`
`Plaintiffs’ expansion into bedding and eyewear is the start of their expansion into
`
`a range of consumer lifestyle products that leverage the BORGHBSE Brand.
`
`61.
`
`Plaintiffs and their Predecessors in Interest have invested considerable effort and
`
`enormous resources advertising, marketing and promoting the BORGHBSE Brand.
`
`In the last
`
`five years alone, Plaintiffs have spent more than $—worldwide on such efforts, of which
`
`almost $— was spent exclusively in the United States.
`
`62.
`
`Plaintiffs and their Predecessors in Interest have advertised, marketed and
`
`promoted the BORGHBSE Brand nationally. For example, Plaintiffs advertise in major national
`
`newspapers and magazines including The New York Times, The Newark Star-Ledger, Vogue,
`
`Vanity Fair, The New York Times Magazine, W Magazine and InStyle. Plaintiffs also advertise
`
`in various beauty and spa periodicals, including Spa Finder, Spa Magazine, New York Look,
`
`New Beauty, More Magazine and Self.
`
`63.
`
`The BORGHBSE Brand is also advertised in nontraditional ways including,
`
`during Thanksgiving week of 2007, on the CBS Jumbotron in Times Square in two, thirty-
`
`second advertisements per hour, for seven consecutive days.
`
`64.
`
`Plaintiffs also spend significant resources promoting the BORGHBSE Brand
`
`through events, including celebrity and charity events.
`
`65.
`
`In the last five years alone, sales of BORGHESE Products in the United States
`
`have been approximately_
`
`

`
`66.
`
`Plaintiffs have developed an excellent reputation among consumers and in the
`
`industry.
`
`In fact, the BORGHESE Products have such a following that there are more than
`
`63,000 consumers registered on plaintiffs website Borghese.com.
`
`67.
`
`The BORGHESE Brand is known by the purchasing public throughout the United
`
`States as being of the highest quality and a trusted brand.
`
`68.
`
`A 2001 consumer awareness survey of “highly recognizable names in fashion”
`
`conducted by Women’s Wear Daily, ranked the BORGHESE Brand 60th out of 100 luxury
`
`brands, ahead of notable brands such as David Yurman, Burberry, Ray-Ban and Kenneth Cole.
`
`69.
`
`The same survey found that, out of the 39 luxury beauty and fragrance brands that
`
`made the list of the top 100 luxury brands, consumers ranked the BORGHESE Brand 9th in
`
`terms of luxury, ahead of brands such as Elizabeth Arden, Ralph Lauren, MAC and Shiseido.
`
`70.
`
`As a result, the BORGHESE Marks are strong trademarks and have become a
`
`distinctive symbol that the public recognizes and uniquely associates with Plaintiffs.
`
`71.
`
`The BORGHESE Brand and the goodwill associated with it are of inestimable
`
`value to Plaintiffs.
`
`Plaintiffs’ History Of Conflict With Defendants
`
`
`
`- 22-
`
`

`
`
`
`73.
`
`In 2002, Lorenzo Borghese, defendants’ Francesco and Amanda Borghese’s son,
`
`advised Plaintiffs that he intended to open a spa under the name “Borghese Spa.” Mr. Borghese
`
`contacted Plaintiffs to discuss the sale of BORGHESE Products in his Borghese Spa.
`
`In
`
`response, Plaintiffs demanded that Mr. Borghese “cease and desist from any use of the
`
`BORGHESE name or mark” and reminded Mr. Borghese that Plaintiffs are the owner of the
`
`“mark and name BORGHESE.” Mr. Borghese complied with Plaintiffs’
`
`request,
`
`tacitly
`
`acknowledging Plaintiffs’ rights in and to the “mark and name BORGHESE.”
`
`74.
`
`In April 2006, Lorenzo Borghese sought again to associate himself with the
`
`BORGHESE Brand in connection with an ABC reality television show, “The Bachelor.”
`
`Plaintiffs again contacted Mr. Borghese and urged that he “not take any actions in connection
`
`with [his] appearance in or promotion of ‘The Bachelor’ that would dilute [Plaintiffs’] marks and
`
`related goodwill in any way, including but not limited to causing any false impression in the
`
`marketplace that there is a connection or relationship between yourself and Borghese Inc. and
`
`our cosmetic products.” Mr. Borghese stopped his plarmed conduct.
`
`Defendants’ Current Unlawful Conduct
`
`75.
`
`In September 2009, Plaintiffs learned that Defendants were using without
`
`authorization the BORGHESE Marks, Crest and History in connection with the advertising,
`
`marketing, promotion, offer to sell and sale of Defendants’ Products.
`
`76.
`
`Defendants claim to manufacture, advertise, market, promote, offer to sell or sell
`
`(i) a variety of allegedly high-end, luxury bath, skin and body products under the name “Italian
`
`Bath & Body,” (ii) a variety of allegedly high-end pet skin care products under the name “Royal
`
`.. 23-
`
`

`
`Treatment” and (iii) a variety of allegedly high-end home fiagrance products under the name
`
`“Casa di Francesca.”
`
`77.
`
`Defendants’ Products are available for sale, among other places, on defendant
`
`HSN’s website www.hsn.com and through its television channel. Consumers may access
`
`information regarding the Defendants’ Products directly from the HSN website.
`
`78.
`
`At least Defendants Francesco Borghese, Amanda Borghese, Lorenzo Borghese,
`
`Scipione Borghese, another of defendants’ Francesco and Amanda Borghese’s sons, Multimedia
`
`Exposure, Inc. and HSN (together, the “Royal Treatment Defendants”) manufacture, advertise,
`
`market, promote, offer to sell or sell the Royal Treatment pet skin care products.
`
`79.
`
`In connection with the sale of Royal Treatment products on HSN, defendant HSN
`
`prominently features a link entitled “The Story Behind Royal Treatmen ” on the main banner
`
`appearing on HSN’s webpage offering the Royal Treatment products.
`
`80.
`
`Previously, “The Story Behind Royal Treatment” included several paragraphs that
`
`associated or affiliated the Defendants and Royal Treatment on the one hand and Plaintiffs, the
`
`BORGHESE Brand and BORGHESE Products on the other:
`
`His grandmother, Princess Marcella, founded the Borghese
`Cosmetics line. Like her, Lorenzo creates his products from the
`finest natural ingredients and fragrances found in Italy.
`
`****
`
`HSN shoppers familiar with the luxurious Italian Bath & Body line
`(for people) know to trust the Borghese name when it comes to
`quality. And let's face it - our pets are people too, and deserve the
`royal treatment!
`
`(See Ex. E, emphasis added).
`
`81.
`
`Once Plaintiffs discovered the infiinging use, Plaintiffs complained to Defendants
`
`via an extensive letter-writing campaign. Today, Defendants have modified “The Story Behind
`
`- 24..
`
`

`
`Royal Treatmen ,” but
`
`it still contains several paragraphs that associate or affiliate the
`
`Defendants and Royal Treatment on the one hand with Plaintifis, the BORGHESE Brand and
`
`BORGHESE Products on the other:
`
`Lorenzo is a descendant of the noble Borghese family ofItaly and
`comes from a long line of dukes, generals, scholars, artistic patrons
`and even one pope.
`
`****
`
`HSN shoppers familiar with the luxurious Italian Bath & Body line
`(for people) know to trust the Borghese name when it comes to
`quality. And let's face it - our pets are people too, and deserve the
`royal treatment!
`
`(See Ex. F, emphasis added).
`
`82.
`
`Additionally, the Royal Treatment website, www.getroyaltreatment.com, contains
`
`links to news and magazine articles featuring Royal Treatment products which reference the
`
`BORGHESE Marks and BORGHESE History.
`
`83.
`
`The Royal Treatment Defendants did not seek or obtain permission to use the
`
`BORGHESE Marks or BORGHESE History in connection with the advertisement or sale of the
`
`Royal Treatment, despite knowledge of Plaintifis’ rights in and to the BORGHESE Marks and
`
`History.
`
`84.
`
`At least Defendants Francesco Borghese, Amanda Borghese, Scipioni Borghese,
`
`Lorenzo Borghese, Multimedia Exposure, Inc., Perlier, Inc., Ebpd, LLC, Orlane, Inc. and HSN
`
`(together, the “Italian Bath & Body Defendants”) manufacture, advertise, market, promote, offer
`
`to sell or sell the Italian Bath & Body skin care products.
`
`85.
`
`The Italian Bath & Body Defendants previously ofiered a line of products under
`
`the Italian Bath & Body name. Today, The Italian Bath & Body Defendants ofier the same
`
`products under the name “Italian Beauty.”
`
`- 25-
`
`

`
`86.
`
`The Italian Bath & Body Defendants’ website previously included a page entitled
`
`“The Royal Borghese Family History.”
`
`87.
`
`“The Royal Borghese Family History” associated or affiliated the Italian Bath &
`
`Body Defendants and Italian Bath & Body products on the one hand and Plaintiffs,
`
`the
`
`BORGHESE Brand and BORGHESE Products on the other:
`
`It was Princess Marcella Borghese who began the family beauty
`legacy. After marrying Prince Paolo Borghese in 1937, she began
`having her cosmetics specially made, mostly from all natural
`ingredients. When her children reached adulthood and she had
`more time, she turned it
`into a business,
`thus beginning the
`Borghese beauty legacy.
`
`***
`
`Today, HSN shoppers know the Borghese family from their high-
`end bath and body products .
`.
`.
`. Princess Amanda Borghese and
`her son Prince Scipione draw upon their farnily’s long history in
`t

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