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
`ESTTA467539
`ESTTA Tracking number:
`04/17/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91193294
`Plaintiff
`Laura Buccellati, LLC
`ALBERT BORDAS
`ALBERT BORDAS PC
`5975 SUNSET DRIVE STE 607
`MIAMI, FL 33143
`UNITED STATES
`tm@bordasiplaw.com
`Other Motions/Papers
`Albert Bordas
`albert@bordasiplaw.com
`/Albert Bordas/
`04/17/2012
`120417.TTAB Status Request and Motion.pdf ( 3 pages )(65557 bytes )
`Exhibit 1.pdf ( 53 pages )(3398351 bytes )
`Exhibit 2.pdf ( 1 page )(13741 bytes )
`Exhibit 3A.pdf ( 16 pages )(427778 bytes )
`Exhibit 3B.pdf ( 14 pages )(325066 bytes )
`Exhibit 4A.pdf ( 5 pages )(208744 bytes )
`Exhibit 4B.pdf ( 6 pages )(231466 bytes )
`Exhibit 4C.pdf ( 9 pages )(382693 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL and APPEAL BOARD
`
`
`
`In the Matter of Trademark Application No.: 77281335
`For the Mark: BUCCELLATI
`Filed on: September 17, 2007
`
`Opposition No. 91193294
`
`
`)
`
`Laura Buccellati, LLC.
`)
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`A Florida Corporation
`)
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`Opposer,
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`vs.
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`Buccellati Holding Italia SPA
`)
`A Corporation of Italy
`
`)
`Applicant.
`
`
`_____________________________ )
`
`
`
`STATUS OF OPPOSITION AND
`
`MOTION TO MAINTAIN SUSPENSION BASED ON A CIVIL ACTION
`
`
`In response to the Board’s communication dated March 23, 2011 regarding the Status of
`the completion of the depositions, Opposer states that its undersigned counsel was
`researching and coordinating with foreign legal associates to proceed with the deposition
`by written questions.
`
`However, on October 14, 2011, Applicant of the present Opposition filed a Civil Action
`in the UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW
`YORK; having Case No. 11 Civ. 7268 (PGG) against Opposer. Please see Exhibit 1.
`
`Whenever it shall come to the attention of the Board that a party or parties to a pending
`case are engaged in a civil action or another Board proceeding which may have a bearing
`on the case, proceedings before the Board may be suspended until termination of the civil
`action or the other Board proceeding. Trademark Rule 2.1 17(a), 37 CFR § 2.117(a).
`
`Generally, it is the Board's practice to suspend a Board proceeding when there is a
`pending civil action or another Board proceeding which may be dispositive of, or have a
`bearing on, the proceeding proposed to be suspended.
` "Miscellaneous Changes
`to Trademark Trial and Appeal Board Rules," 1214 TMOG 145, 147 (September 29,
`1998).
`
`In the Civil Action there is presently ongoing discovery as ordered by Federal Judge
`Gardephe presiding over said Civil Action. Please see Exhibit 2, Order by Judge
`Gardephe.
`
`

`
`
`
`Also, enclosed please find Exhibits 3A and 3B, Discovery requests from Opposer to
`Applicant; and Exhibits 4A, 4B, and 4C, Discovery requests from Applicant to Opposer.
`
`These exhibits presented to the Board evidence that the civil action may be dispositive of,
`or have a bearing on, the issues to be addressed in the present Board proceeding.
`
`
`Opposer hereby respectively files this Motion and requests that the Board maintain the
`suspension not for purposes of delay, but pursuant to Trademark Rule 2.1 17(a), 37 CFR
`§ 2.117(a) in light of the pending Civil Action.
`
`
`
`Dated: April 17, 2012
`
`
`
`Respectfully submitted,
`
`Albert Bordas, P.A.
`Counsel for Opposer
`5975 Sunset Drive
`Suite 607
`Miami, FL 33143
`
`e-mail: albert@bordasiplaw.com
`Tel: 305-669-9848
`Fax: 305-669-9851
`
`By:
`
`
`
`/Albert Bordas/
`Albert Bordas, Esq.
`FL Bar No: 330220
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`CERTIFICATE OF SERVICE
`I hereby certify that the forgoing document was served via email this 17th day of
`April 2012 to the following person(s):
`
`Perla M. Kuhn
`Partner
`Edwards Wildman Palmer LLP
`750 Lexington Avenue
`New York, NY 10022
`
`E-mail: PKuhn@edwardswildman.com
`
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`By:
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`/Albert Bordas/
`Albert Bordas, Esq.
`
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`

`
`CERTIFICATE OF ONLINE SUBMISSION
`
`
`
`I HEREBY CERTIFY that a true and correct copy of the foregoing was filed
`online with the Trademark Trial and Appeal Board using ESTTA, this 17th day of April
`2012.
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`/Albert Bordas/
`Albert Bordas, Esq.
`
`By:
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`

`
`JS 44C/SDNY
`REV. 5/201 0
`
`IIIIIII.AIIIDIIIIII
`
`CIVIL COVER SHEET‘
`
`The JS-44 civil cover sheet and the information contained herein neither replace nor supplement the filing and se ‘O; of
`pleadings or other papers as required bylaw, except as provided by local rules of court. This form, approved
`e
`Judicial Conference of the United States in September 1974, is required for use of the Clerk of Court for the purpose of
`initiating the civil docket sheet.
`
`PLAINTIFFS
`
`DEFENDANTS
`
`Buccellati Holding Italia SPA and Buccellati, Inc_
`
`Laura Buccellati, lnc., Laura Buccellati, Lilian Azel, ABC
`Corporations 1-10, and John Does 1-10
`
`ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER
`
`ATTORNEYS (IF KNOWN)
`
`Edwards Wildman Palmer LLP, 750 Lexington Avenue, New Bordas P.A., 5975 Sunset Drive, Suite 607, Miami, FL 33143
`York, NY 10022, (212) 308-4411
`(305) 669-9848
`CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE A BRIEF STATEMENT OF CAUSE)
`(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
`
`Trademark Infringement (15 USC 1114(1)(a)): False designation of on'gin (15 USC 1125(a); Trademark dilution (15 USC 1 125(c))
`
`HaS this or a similar Case been previously filed in SDNY at any time? NO?
`
`Yes? E]
`
`Judge Previously Assigned
`
`If yes, was this case VOID II'IVOI. CI Dismissed. NOEI Yes CI
`
`If yes, give date
`
`8. Case No.
`
`(PLACEAN[x]INONEBOXONLY)
`
`NATURE OF SUIT
`
`TORTS
`
`FORFEITURE/PENALTY
`
`BANKRUPTCY
`
`OTHER STATUTES
`
`ACTIONS UNDER STATUTES
`
`I 1400 STATE
`REAPPORTIONMENT
`ANTITRUST
`BANKS 8 BANKING
`COMMERCE
`DEPORTATION
`RACKETEERlNFLU-
`ENCED 8 CORRUPT
`ORGANIZATION ACT
`(RICO)
`CONSUMER CREDIT
`CABLE/SATELLITE TV
`SELECTIVE SERVICE
`SECURITIES!
`COMMODITIES!
`EXCHANGE
`CUSTOMER
`CHALLENGE
`12 USC 3410
`OTHER STATUTORY
`ACTIONS
`AGRICULTURAL ACTS
`ECONOMIC
`STABILIZATION ACT
`ENVIRONMENTAL
`MATTERS
`ENERGY
`ALLOCATION ACT
`FREEDOM OF
`INFORMATION ACT
`APPEAL OF FEE
`DETERMINATION
`UNDER EQUAL ACCESS
`TO JUSTICE
`CONSTITUTIONALITY
`OF STATE STATUTES
`
`I ]610 AGRICULTURE
`I 1620 OTHER FOOD 8.
`DRUG
`I 1625 DRUG RELATED
`SEIZURE OF
`PROPERTY
`21 USC 881
`LIOUOR LAWS
`RR 8. TRUCK
`AIRLINE REGS
`OCCUPATIONAL
`SAFETY/HEALTH
`OTHER
`
`I 1422 APPEAL
`28 USC 158
`I 1423 WITHDRAWAL
`28 USC 157
`
`PROPERTY RIGHTS
`
`I
`I
`
`1 820 COPYRIGHTS
`830 PATENT
`840 TRADEMARK
`
`FAIR LABOR
`STANDARDS ACT
`LABORIMGMT
`RELATIONS
`LABORIMGMT
`REPORTING 8.
`DISCLOSURE ACT
`RAILWAY LABOR ACT I I370 TAXES (US. Plaintiff or
`I 1740
`I
`1 790 OTHER LABOR
`Defendant)
`LITIGATION
`I 1571 IRS-THIRD PARTY
`I
`1 791
`EMPL RET INC
`26 USC 7609
`SECURITY ACT
`
`I 1710
`I 1720
`
`I
`
`1 730
`
`SOCIAL SECURITY
`I
`1 861 HIA (1395ff)
`I 1862 BLACK LUNG (923)
`I 1863 DIwCIDIww (405(g))
`I ]864 SSID TITLE XVI
`I 1865 RSI (405(g))
`
`FEDERAL TAX SUITS
`
`PERSONAL INJURY
`
`PERSONAL INJURY
`
`I 1310 AIRPLANE
`I 1315 AIRPLANE PRODUCT
`LIABILITY
`I 1320 ASSAULT, LIBEL .3.
`SLANDER
`I 1330 FEDERAL
`EMPLOYERS‘
`LIABILITY
`I 1340 MARINE
`I 1345 MARINE PRODUCT
`LIABILITY
`I 1350 MOTOR VEHICLE
`I 1355 MOTOR VEHICLE
`PRODUCT LIABILITY
`I ]36O OTHER PERSONAL
`INJURY
`
`I ]362 PERSONAL INJURY -
`MED MALPRACTICE
`I ]365 PERSONAL INJURY
`PRODUCT LIABILITY
`I ]368 ASBESTOS PERSONAL
`INJURY PRODUCT
`LIABILITY
`PERSONAL PROPERTY
`
`I 1370 OTHER FRAUD
`I 1371 TRUTH IN LENDING
`I ]380 OTHER PERSONAL
`PROPERTY DAMAGE
`I 1385 PROPERTY DAMAGE
`PRODUCT LIABILITY
`
`ACTIONS UNDER STATUTES
`CIVIL RIGHTS
`
`PRISONER PETITIONS
`
`CONTRACT
`
`I
`
`II
`
`I no INEDRANCE
`I120 MARINE
`I I130 MILLER ACT
`I 140 NEGOTIADLE
`INSTRLIMENT
`I 150 RECOVERY OF
`OVERPAYMENT .3.
`ENFORCEMENT oi:
`JUDGMENT
`I I151 MEDICARE ACT
`1 152 RECOVERY OF
`DEEADLTED
`sTLIDENT LoANs
`(EXCL VETERANsI
`1153 RECOVERY OF
`OVERPAYMENT OF
`VETERANS BENEFITS
`1 160 STOCKHOLDERS SUITS
`I 190 OTHER CONTRACT
`I 195 CONTRACT PRODUCT
`LIABILITY
`I I195 FRANCHISE
`
`I
`
`REAL PROPERTY
`
`I 1441 VOTING
`I 1210 LAND CONDEMNATION I 1442 EMPLOYMENT
`I 1220 FORECLOSURE
`I 1443 HOUSINGI
`I 1230 RENT LEASE 8
`ACCOMMODATIONS
`EJECTMENT
`I 1444 wELFARE
`I 1240 TORTS To LAND
`I 144-5 AMERICANS WITH
`I 1245 TORT PRODUCT
`DISABILITIES -
`LIABILITY
`EMPLOYMENT
`I 1290 ALL OTHER
`I 1446 AMERICANS WITH
`REAL PROPERTY
`DISABILITIES -OTHER
`I 1440 OTHER CIVIL RIGHTS
`
`IMMIGRATION
`
`I
`
`MOTIONS TO
`VACATE SENTENCE
`20 USC 2255
`1 462 NATURALIZATION
`HABEAS CORPUS
`APPLICATION
`DEATH PENALTY
`IMANDAMUS 8 OTHER I ]463 HABEAS CORPUS-
`CIVIL RIGHTS
`ALIEN DETAINEE
`PRISON CONDITION
`I 1455 OTHER IMMIGRATION
`ACTIONS
`
`Check if demanded in complaint:
`
`CHECK IF THIS IS A CLASS ACTION
`UNDER F.R.C.P. 23
`
`'
`
`DO YOU CLAIM THIS CASE IS RELATED TO A CIVIL CASE NOW PENDING IN S.D.N.Y.?
`IF SO, STATE:
`
`DEMAND $
`
`OTHER
`
`JUDGE
`
`DOCKET NUMBER
`
`Check YES only if demanded in complaint
`JURY DEMAND: D YES [I NO
`
`NOTE: Please Submit at the time of filing an explanation of why cases are deemed related.
`
`

`
`
`
`(PLACE AN x IN ONE BOX ONLY)
`
`ORIGIN
`
`I Original
`Proceeding
`
`I::I 28. Removed from D 3 Remanded from I:I 4 Reinstated or D 5 Transferred from D 6 Multidistrict
`State Court
`Appellate Court
`Reopened
`(Specify District)
`Litigation
`I] 2b.Removed from
`State Court AND
`at least one
`party is pro se.
`
`I-:I 7 Appeal to District
`Judge from
`Magistrate Judge
`Judgment
`
`IF DIVERSITY, INDICATE
`BASIS OF JURISDICTION
`(PLACE AN x IN ONE BOX ONLY)
`CITIZENSHIP BELOW.
`3 FEDERAL QUESTION
`[I4 DIVERSITY
`E] 1 us. PLAINTIFF El 2 us. DEFENDANT
`
`(u.s. NOT A PARTY) (23 use 1322, 1441)
`
`CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)
`
`DEF
`PTF
`[]5 []5
`
`[]6 []6
`
`(Place an [X] in one box for Plaintiff and one box for Defendant)
`PTF
`DEF
`[]1
`[]1
`
`CITIZEN OR SUBJECT OF A
`FOREIGN COUNTRY‘
`
`CITIZEN OF THIS STATE
`
`PTF DEF
`[]3 []3
`
`INCORPORATED EEPRINCIPAL PLACE
`OF BUSINESS IN ANOTHER STATE
`
`CITIZEN OF ANOTHER STATE
`-
`
`[]2 []2
`
`INCORPORATED gr PRINCIPAL PLACE
`OF BUSINESS IN THIS STATE
`
`[]4 []4
`
`FOREIGN NATION
`
`PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)
`
`Buccellati Holding ltalia SPA, Via Lodovico Mancini, 1, Milan 20129, Italy
`Buccellati, Inc., 1250 Waters Place, Penthouse Suite 2, Bronx, NY 10461
`
`DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)
`
`Laura Buccellati, LLC, 1000 Venetian Way, Suite 301, Miami, FL 33139
`Laura Buccellati, 1000 Venetian Way, Suite 301, Miami, FL 33139
`Lilian Azel, 601 N.E. 36th Street, #1212, Miami, FL 33137
`
`DEFENDANT(S) ADDRESS UNKNOWN
`REPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN THE
`RESIDENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:
`
`ABC Corporations 1-10
`John Does 1-10
`
`
`
`Checkone:
`
`THIS ACTION SHOULD BE ASSIGNED TO: B WHITE PLAINS
`(DO NOT check either box if this a PRISONER PETITION.)
`
`MANHATTAN
`
`
`
`D TE /
`/0 MIN
`RECEIPT #
`
`SIGNATURE/OF
`
`RNEY OF RECORD
`
`ADMITTED TO PRACTICE IN THIS DISTRICT
`[1 N0
`10
`]><] YES (DATE ADMITTED Mo.
`Yr.
`Attorney Bar Code # R.R4042
`
`,
`
`1976
`
`I
`
`I
`Magistrate Judge is to be d signated by the Clerk of the Court.
`
`Magistrate Judge
`
`I
`
`
`
`Ruby J. Krajick, Clerk of Court by __ Deputy Clerk, DATED _
`
`UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)
`
`
`
`

`
`
`
`
`Perla M. Kuhn (PK 9743)
`Rory J. Radding (RR 4042)
`Jennifer L. Dereka (JD 1577)
`EDWARDS WILDMAN PALMER LLP
`
`750 Lexington Avenue
`New York, New York 10022
`Phone (212) 308-4411
`Fax (212) 308-4844
`
`
`
`Attorneysfor Plaintyfi Buccellati Holding Italia SPA
`and Buccellati, Inc.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`BUCCELLATI HOLDING ITALIA SPA and
`
`BUCCELLATI, INC.
`
`Plaintiffs,
`
`- V -
`
`LAURA BUCCELLATI, LLC, LAURA
`BUCCELLATI, LILIAN AZEL, ABC
`CORPORATIONS 1-10, and JOHN DOES 1-10
`
`Civil Action No.
`
`COMPLAINT
`
`_
`.
`
`I
`'
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`
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`vs
`
`4.5‘
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`.11?“
`
`gr.
`
`Defendants.
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`Plaintiffs Buccellati Holding Italia SPA and Buccellati, Inc. (collectively “Bucce“1lati”),
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`by and through their attorneys, Edwards Wildman Palmer LLP, complain and allege against
`defendants Laura Buccellati LLC, Ms. Laura Buccellati, Ms. Lilian Azel, ABC Corporations 1-
`
`10, and John Does 1-10 (collectively, “Laura Buccellati”) as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`Buccellati seeks injunctive relief and damages for acts of trademark infringement,
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`false designation of origin, trademark dilution, unfair competition, and unfair and deceptive trade
`
`NYC 4034074
`
`

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`practices, engaged in by Laura Buccellati in violation of the laws of the United States and the
`
`State of New York.
`
`JURISDICTION AND VENUE
`
`2.
`
`This Court has jurisdiction over the subject matter of this action pursuant to
`
`Section 39 ofthe Lanham Act (15 U.S.C. § 1121), and 28 U.S.C. §§ 1331 and 1338, and has
`
`supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a). Buccellati’s claims are predicated
`
`upon the Trademark Act of 1946, as amended, 15 U.S.C. § 1051 g s_e:c1., and substantial and
`
`related claims under the statutory and common law of the State of New York.
`
`3.
`
`Venue is properly founded in this judicial district pursuant to 28 U.S.C. § 1391(b)
`
`and (c) and 1400(a) and (b), because Laura Buccellati is subject to personal jurisdiction within
`
`this judicial district and/or because events giving rise to these claims occurred within this judicial
`
`district.
`
`THE PARTIES
`
`4.
`
`Plaintiff Buccellati Holding Italia SPA is a corporation organized and existing
`
`under the laws of the country of Italy, having its principal place of business at Via Lodovico
`
`Mancini, 1, Milan 20129, Italy. Buccellati Holding Italia SPA is engaged, inter $1, in the
`
`manufacture and sale of products bearing the world famous BUCCELLATI Trademarks (as
`
`defined in Paragraph 11 herein) including, but not limited to, jewelry, watches, silverware,
`
`writing instruments, ornamental boxes, cutlery, belt buckles, and handbags.
`
`5.
`
`_ Plaintiff Buccellati Inc. is a corporation organized and existing under the laws of
`
`the State of New York, having its principal place of business at 1250 Waters Place, Penthouse
`
`Suite 2, Bronx, New York 10461. Buccellati Inc. is the sole and exclusive distributor in the
`
`United States of products bearing the world famous BUCCELLATI Trademarks (as defined
`
`NYC 4034074
`
`

`
`herein) including, but not limited to, jewelry, watches, silverware, writing instruments,
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`ornamental boxes, cutlery, belt buckles, and handbags.
`
`6.
`
`Upon information and belief, defendant Laura Buccellati LLC is a limited liability
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`company organized and existing under the laws of the State of Florida, having an address for
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`service of process at 1000 Venetian Way, Suite 301, Miami, Florida 33139. Laura Buccellati
`
`LLC is engaged in the business of, among other things, selling handbags in the State of New
`
`York and elsewhere in the United States.
`
`7.
`
`Upon information and belief, defendant Ms. Laura Buccellati, an individual and a
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`co-founder of Laura Buccellati LLC, and resident of the State of Florida, is the conscious and
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`active force behind the wrongful acts of Laura Buccellati LLC, complained of herein, and such
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`wrongful acts have been and are engaged in for the benefit of Laura Buccellati LLC and for her
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`own individual gain and benefit.
`
`8.
`
`Upon information and belief, defendant Ms. Lilian Azel, an individual and a co-
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`founder of Laura Buccellati LLC, and resident of the State of Florida, is the conscious and active
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`force behind the wrongful acts of Laura Buccellati LLC, complained of herein, and such
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`wrongful acts have been and are engaged in for the benefit of Laura Buccellati LLC and for her
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`own individual gain and benefit..
`
`9.
`
`ABC Corporations 1-10 and John Does 1-10 are corporations and other legal
`
`entities and/or individuals whose identities or location are unknown to Buccellati, and who are
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`also engaged in designing, manufacturing, advertising, promoting, distributing, importing,
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`selling, and/or offering for sale products under agreement from Laura Buccellati and/or Ms.
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`Laura Buccellati and/or Ms. Lilian Azel.
`
`NYC 403407.4
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`

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`THE FAMOUS BUCCELLATI BRAND AND TRADEMARKS
`
`10.
`
`Buccellati is the owner, and the sole and exclusive distributor, of high-quality
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`products and services sold and/or offered for sale under the world famous BUCCELLATI brand.
`
`Since the 1700s, the Buccellati family has been crafting some of the finest jewelry in the world.
`
`Beginning in the 1920s, with the release of its ruby encrusted Evening Bag, Buccellati has
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`manufactured and sold handbags, clutches, and purses, made of various materials, including,
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`leather, gold, silver, and textiles. Today the BUCCELLATI brand is synonymous with luxury,
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`quality, and craftsmanship, and consumers and the trade instantly identify Buccellati as the
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`source of all products and services bearing the BUCCELLATI name and trademark.
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`11.
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`Buccellati’s products and services are sold and/or offered for sale under its
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`various trademarks, including BUCCELLATI and LAURA (collectively, the “BUCCELLATI
`
`Trademarks”). Buccellati is the owner of the right, title and interest in and to, ii $1, the
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`following federally registered trademarks and service marks:
`
`Mark
`
`Reg. No.
`
`Reg. Date
`
`First Use
`
`Int’! Classgesg
`
`BUCCELLATI
`
`841,635
`
`1/2/1968
`
`12/13/1952
`
`8, 14
`
`BUCCELLATI
`
`865,932
`
`3/14/1969
`
`12/31/1958
`
`BUCCELLATI
`
`2,156,171
`
`5/12/2008
`
`12/31/1952
`
`35
`
`14
`
`Attached hereto as Exhibit A are true and correct copies of the U.S. Patent and Trademark Office
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`registration certificates evidencing Buccellati’s ownership of the foregoing trademarks
`
`(collectively, the “BUCCELLATI Registrations”). All of the registrations set forth in Exhibit A
`
`are valid, subsisting, and in full force and effect. Moreover, all of the registrations are
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`incontestable pursuant to 15 U.S.C. § 1065, and have become distinctive of Buccellati’s products
`
`and services in commerce pursuant to 15 U.S.C. § 1052.
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`NYC 4034074
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`4
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`

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`12.
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`Buccellati’s products bearing or displaying the BUCCELLATI Trademarks
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`include jewelry, watches, silverware, writing instruments, ornamental boxes, cutlery, belt
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`buckles, handbags, and other products. Buccellati offers retail services in the United States,
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`including storefront locations in New York, New York, Beverly Hills, California, and Aspen,
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`Colorado. Examples of the BUCCELLATI Trademarks as they are used in connection with
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`Buccellati’s products and services are attached hereto as Exhibit B.
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`13.
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`Buccellati has extensively advertised and promoted the products manufactured
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`and services offered under the BUCCELLATI Trademarks. Millions of consumers have been
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`exposed to the BUCCELLATI Trademarks through extensive advertising campaigns, in
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`mainstream and industry magazines and other periodicals, as depicted in motion pictures, on the
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`Internet, and in other forms of unsolicited media coverage. Products bearing the BUCCELLATI
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`Trademarks are closely associated with Buccellati’s reputation in the eyes of the public and the
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`trade. The BUCCELLATI Trademarks are, thus, invaluable assets to Buccellati.
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`
`
`14.
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`Further, over many years, Buccellati has realized enormous and ever-increasing
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`success in its sales of products bearing the BUCCELLATI Trademarks, and for the last five
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`years has had tens of millions of dollars in sales in the United States alone.
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`15 .
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`Moreover, Buccellati always endeavors to maintain the prestige and reputation for
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`quality and luxury associated with the BUCCELLATI Trademarks. Strict quality control
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`standards are imposed in the manufacture of all the products bearing the BUCCELLATI
`Trademarks. Buccellati’s painstaking adherence to only the highest quality standards has
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`resulted in widespread and favorable public acceptance among consumers for all products
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`bearing the BUCCELLATI Trademarks.
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`NYC 403407.4
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`

`
`16.
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`As a result of Buccellati’s extensive advertising and promotion, adherence to the
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`highest quality standards, and extraordinary sales success, the BUCCELLATI Trademarks, as
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`well as other well known designs, logos and indicia introduced by Buccellati, are among the
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`most widely-recognized trademarks in the United States, possessing strong secondary meaning
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`among consumers and the trade, immediately identifying Buccellati as the exclusive source of
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`the products to which they are affixed, and signifying goodwill of incalculable value.
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`DEFENDANTS’ ACTS OF INFRINGEMENT AND UNFAIR COMPETITION
`
`17.
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`Buccellati has discovered that Laura Buccellati is engaging in designing,
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`manufacturing, promoting, importing, selling, and offering for sale consumer products in a
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`variety of product categories under the LAURA BUCCELLATI name and trademark, in
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`conjunction with various other designs, logos, and indicia that are imitations of the
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`BUCCELLATI Trademarks (the “Infringing Mark”). Upon information and belief, Laura
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`Buccellati is using the Infringing Mark on goods and services that are identical or closely related
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`to products bearing the famous BUCCELLATI Trademarks, including, but not limited to,
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`handbags, carryalls, purses, wallets, belts, and scarves. Copies of products sold by and
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`marketing materials published by Laura Buccellati depicting the Infringing Mark are attached
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`hereto as Exhibit C.
`
`l$.
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`Upon information and belief, Ms. Laura Buccellati is a Buccellati family member,
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`who sold her entire interest in the Buccellati companies in or about 1989, and who otherwise has
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`no commercial affiliation with Buccellati, but has individually and through Laura Buccellati
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`LLC attempted to capitalize on the popularity of the BUCCELLATI Trademarks by using and/or
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`permitting various companies to use the Infringing Mark.
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`NYC 403407.4
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`6
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`

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`19.
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`Upon information and belief, Ms. Lilian Azel, a co-founder with Ms. Laura
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`Buccellati of Laura Buccellati LLC, has no affiliation with Buccellati, but has individually and
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`through Laura Buccellati LLC attempted to capitalize on the popularity of the BUCCELLATI
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`Trademarks by using any/or permitting various companies to use the Infringing Mark.
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`20.
`
`Upon information and belief, ABC Corporations 1-10 and John Does 1-10,
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`pursuant to agreements with Laura Buccellati LLC and/or Laura Buccellati and/or Lilian Azel,
`have designed, manufactured, advertised, promoted, distributed, imported, sold and/or offered
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`for sale, without authorization or license, additional products bearing the Infringing Mark. Upon
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`learning the identities of these defendants, Buccellati will seek leave to amend its complaint to
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`add them as parties.
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`21.
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`Upon information and belief, Ms. Laura Buccellati, through Laura Buccellati
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`LLC, has, on several occasions over a period of years, attempted to register trademarks
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`comprising or containing the name LAURA BUCCELLATI, both in the United States and
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`internationally. In the United States, such attempted registration has been refused on the basis
`that the name LAURA BUCCELLATI is likely to be confused with the world famous
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`BUCCELLATI Trademarks. On January 6, 2010, Laura Buccellati commenced an opposition
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`proceeding against Buccellati U.S. Trademark Application Serial No. 77/281,335 for
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`BUCCELLATI. This proceeding is currently pending before the United States Patent and
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`Trademark Office.
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`22.
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`On October 21, 2010, Buccellati sent a letter to Laura Buccellati requesting that it
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`immediately cease all use of the Infringing Mark in connection with the manufacture,
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`distribution, and sale of handbags and related products. Laura Buccellati failed to substantively
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`NYC 403407.4
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`

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`respond to Buccellati’s letter, and continued to manufacture, distribute, and sell products bearing
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`the Infringing Mark.
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`23.
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`Together with the Infringing Mark, Laura Buccellati LLC is using Ms. Laura
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`Buccellati’s relationship with the Buccellati family in promotional material to suggest an
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`association with Buccellati, all with the deliberate intention to cause consumers and the trade to
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`believe that the products bearing the Infringing Mark are authorized, sponsored, approved,
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`endorsed or licensed by Buccellati, or that Laura Buccellati LLC, or Ms. Laura Buccellati, is in
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`some way commercially affiliated with Buccellati. For example, at www. Zaurabuccellaticom,
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`Laura Buccellati LLC associates its products with the famous BUCCELLATI Trademarks and
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`the “Buccellati legacy” by claiming that the “collection of fine leather accessories follows in the
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`footsteps of [the Buccellati] family’s tradition of excellence and impeccable craftsmanship.”
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`Moreover, Laura Buccellati’s products and services are marketed with the Infringing Mark,
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`LAURA BUCCELLATI, surrounded by a bracelet design element, reminiscent ofj ewelry,
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`further suggesting a connection with the famous Buccellati brand. In another attempt to
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`associate its mark with Buccellati, Laura Buccellati uses the slogan “Jewel of a Bag” to suggest a
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`relationship between her products and Buccellati’s famed jewelry. For example, at
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`. www.ZaurabucceZZati.c0m, Laura Buccellati LLC directly associates its products with Buccellati,
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`stating: “Coined as ‘a jewel of a bag,’ Laura’s Signature Collection follows in the footsteps of
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`the Buccellati family tradition of excellence and impeccable craftsmanship.” Copies of the
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`referenced marketing materials published by Laura Buccellati are attached hereto as Exhibit D.
`
`24.
`
`Upon information and belief, Laura Buccellati’s use of the Infringing Marks
`
`caused (and will likely continue to cause): actual confusion in the marketplace, harm to the
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`NYC 403407.4
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`

`
`
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`business reputation and goodwill of Buccellati, and damage to Buccellati’s business relations
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`with consumers and prospective consumers.
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`25.
`
`Laura Buccellati is well aware of the extraordinary fame and strength of the
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`BUCCELLATI Trademarks," and the incalculable goodwill symbolized thereby, and that the
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`Infringing Mark cannot be used as an indicator of source or sponsorship for the products they are
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`designing, manufacturing, distributing, importing, and/or selling. Accordingly, Laura Buccellati
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`has been engaging in the above-described unlawful activities knowingly and intentionally, or
`with reckless disregard for Buccellati’s rights in the BUCCELLATI Trademarks.
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`FIRST CLAIM FOR RELIEF
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`TRADEMARK INFRINGEMENT (15 U.S.C. § 1114111121}!
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`26.
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`The allegations set forth in paragraphs 1 through 25 hereof are adopted and
`
`incorporated by reference as if fully set forth herein.
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`27.
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`Laura Buccellati’s use of the Infringing Mark is intended to cause, has caused and
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`is likely to continue to cause confiision, mistake and deception among the general consuming
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`public and the trade as to whether products bearing the Infringing Mark originate from, or are
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`affiliated with, sponsored by, or endorsed by Buccellati.
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`28.
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`Upon information and belief, Laura Buccellati has acted with knowledge of
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`Buccellati’s ownership of the BUCCELLATI Registrations and with the deliberate intention to
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`unfairly benefit from the incalculable goodwill symbolized thereby.
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`29.
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`Laura Buccellati’s acts constitute trademark infringement in violation of
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`Section 32 ofthe, Lanham Act (15 U.S.C. § 1114).
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`30.
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`Upon information and belief, by its acts, Laura Buccellati has made and will ‘make
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`substantial profits and gains to which it is not in law or equity entitled.
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`NYC 403407/1
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`

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`31.
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`Upon information and belief, Laura Buccellati intends to continue its infringing
`
`acts, and will continue to willfully infringe the BUCCELLATI Registrations, unless restrained
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`by this Court.
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`32.
`
`Laura Buccellati’s acts have damaged and will continue to damage Buccellati, and
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`Buccellati has no adequate remedy at law.
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`SECOND CLAIM FOR RELIEF
`
`FALSE DESIGNATION OF ORIGIN 115 U.S.C. § 1125gan
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`33.
`
`The allegations set forth in paragraphs 1 through 32 hereof are adopted and
`
`incorporated by reference as if fully set forth herein.
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`34.
`
`Laura Buccellati’s use of the Infringing Mark and other designations, and indicia,
`
`such as “Jewel of a Bag,” as well as association with the Buccellati name and goodwill
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`established over the years by Buccellati, is intended, and is likely to confuse, mislead, or deceive
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`consumers, the public, and the trade as to the origin, source, sponsorship, association, or
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`affiliation of products bearing the Infringing Mark, and is intended, and is likely to cause such
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`parties to believe in error that the products bearing the Infringing Mark have been authorized,
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`sponsored, approved, endorsed or licensed by Buccellati, or that Laura Buccellati is in some way
`
`affiliated with Buccellati.
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`35.
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`Laura Buccellati’s acts constitute a false designation of origin, and false and
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`misleading descriptions and representations of fact, all in violation of Section 43(a) of the
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`Lanham Act (15 U.S.C. § ll25(a)).
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`36.
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`Upon information and belief, by its acts, Laura Buccellati has made and will make
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`substantial profits and gains to which it is not in law or equity entitled.
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`NYC 403407.4
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`

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`37.
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`Upon information and belief, Laura Buccellati intends to continue its willfully
`
`infringing acts unless restrained by this Court.
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`38,
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`Laura Buccellati’s acts have damaged and will continue to damage Buccellati, and
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`Buccellati has no adequate remedy at law.
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`THIRD CLAIM FOR RELIEF
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`TRADEMARK DILUTION (15 U.S.C. § l125jc[}
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`39.
`
`The allegations set forth in paragraphs 1 through 38 hereof are adopted and
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`incorporated by reference as if fully set forth herein.
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`40.
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`Buccellati is the exclusive owner of the BUCCELLATI Trademarks in the United
`
`States.
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`41.
`
`The BUCCELLATI Trademarks are strong and distinctive marks that have been
`
`in use for many years and have achieved enormous and widespread public recognition.
`42.
`The BUCCELLATI Trademarks are famous within the meaning of Section 43(c)
`
`ofthe Lanham Act (15 U.S.C.i§ 1125(c)).
`
`43.
`Laura Buccellati’s use of the Infringing Mark, without authorization from
`Buccellati, is diluting the distinctive quality ofthe BUCCELLATI Trademarks and decreasing
`
`the capacity of such marks to identify and distinguish Buccellati’s products and services.
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`44.
`
`A Laura Buccellati has intentionally and willfully diluted the distinctive quality of
`
`the famous BUCCELLATI Trademarks in violation of Section 43(c) of the Lanham Act,
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`15 U.S.C. § 1125(c).
`
`45.
`
`Upon information and belief, by its acts, Laura Buccellati has made and will make
`
`substantial profits and gains to which it is not in law or equity entitled.
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`46.
`
`Upon information and belief, Laura Buccellati intends to continue its willfully
`
`infringing acts unless restrained by this Court.
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`NYC 4o34o7.4
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`1 1
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`

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`47.
`
`Laura Buccellati’s acts have damaged’ and will continue to damage Buccellati, and
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`Buccellati has no adequate remedy at law.
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`FOURTH CLAIM FOR RELIEF
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`COMMON LAW TRADEMARK INFRINGEMENT
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`48.
`
`The allegations set forth in paragraphs 1 through 47 hereof are adopted and
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`incorporated by reference as if fully set forth herein.
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`49.
`
`Buccellati owns all right, title, and interest in and to the BUCCELLATI
`
`Trademarks as aforesaid, including all common law rights in such marks, and such marks are
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`distinctive.
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`50.
`
`The aforesaid acts of Laura Buccellati constitute trademark infringement in
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`violation of the common law of the State of New York.
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`51.
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`Upon information and belief, Laura Buccellati has made and will make substantial
`
`profits and gains to which it is not in law or equity entitled.
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`52.
`
`Upon information and belief, Laura Buccellati intends to continue its willfillly
`
`infringing acts unless restrained by this Court.
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`53.
`
`Laura Buccellati’s acts have damaged and will continue to damage Buccellati, and
`
`Buccellati has no adequate remedy at law.
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`FIFTH CLAIM FOR RELIEF V
`COMMON LAW UNFAIR COMPETITION
`
`54.‘
`
`The allegations set forth in paragraphs 1 through 53 hereof are adopted and
`
`incorporated by reference as if fully set forth herein.
`
`55.
`
`The aforesaid acts of Laura Buccellati constitute unfair competition in violation of
`
`the common law of the State of New York.
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`NYC 4034014
`
`12
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`

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`56.
`
`Upon information and belief, by its acts, Laura Buccellati has made and will make
`
`substantial profits and gains to which it is not in law or equity entitled.
`
`I 57.
`
`Upon information and belief, Laura Buccellati intends to continue its willfully
`
`infringing acts unless restrained by this Court.
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`58.
`
`Laura Buccellati’s acts have damaged and will continue to damage Buccellati, and
`
`Buccellati has no adequate remedy at law.
`
`SIXTH CLAIM FOR RELIEF
`
`DECEPTIVE ACTS AND PRACTICES
`
`.Y. G.B.L.
`
`349
`
`59.
`
`The allegations set forth in paragraphs 1 through 58 her