`ESTTA333047
`ESTTA Tracking number:
`02/19/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91193740
`Defendant
`Pandora Jewelry, LLC
`Plaintiff
`Pandora Jewelers 1995, Inc.
`
`Proceeding.
`Applicant
`
`Other Party
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Pandora
`Jewelry, LLC hereby requests suspension of this proceeding pending a final determination of the civil action.
`Trademark Rule 2.117.
`Pandora Jewelry, LLC has secured the express consent of all other parties to this proceeding for the
`suspension and resetting of dates requested herein.
`Pandora Jewelry, LLC has provided an e-mail address herewith for itself and for the opposing party so that
`any order on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Facsimile or email (by agreement only) on this date.
`Respectfully submitted,
`/Thomas H. Curtin/
`Thomas H. Curtin
`tcurtin@lathropgage.com, whansen@lathropgage.com
`cf@mhdpatents.com
`02/19/2010
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL} AND APPEAL BOARD
`
`_ _ _ _ _ _ . _ _ _ _ _ _ _ , _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __x
`Pandora Jewelers 1995, Inc.,
`'
`; Opposition No. 91193740
`Serial No. 77690744
`Mark: PANDORA
`
`Opposer,
`
`-
`
`Applicant.
`
`vs.
`Pandora Jewelry, LLC,
`
`_
`
`-g
`
`_ _ _ . _ _ _ . _ _ _ _ . _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ , _ _ X
`
`MOTION TO SUSPEND OPPOSITIONPROCEEDING
`
`Applicant, Pandora Jewelry, LLC, hereby moves before the Trademark Trial and Appeal
`Board (“the Board”) for an order suspending the 'above—captioned opposition proceeding.
`
`I
`pursuant to 37 C.F.R. § 2.117; T.B.M.P. 510.02(a).
`Opposer commenced a civil action in the U.S. District Court for the Southern District of
`
`Florida against the Applicant alleging, ‘inter alia, claims of unfair competition under Section
`
`43(a) of the Trademark Act of 1946, as amended, trademark infringement under Florida State
`common law and seeking cancellation of Applicant’s federal trademark registrations. The civil
`
`action was filed on September 18., 2009 and was assigned Civil Action No. 09-61490. A copy of
`
`the Complaint filed in the civil action is attached hereto as Exhibit A.
`
`In paragraph C of the Prayer for Relief in the Complaint, Opposer requests from the
`District Court that Applicant’s federal trademark registrations that include the mark PANDORA
`be cancelled and that all pending applications of Applicant that include the mark PANDORA be
`
`abandoned. As the resolution of the issues in the civil action would have a bearing upon, if not
`
`be dispositive of, the issues in the instant opposition proceeding, Applicant respectfully requests
`
`
`
`
`
`that the aboVe—capti_oned opposition proceeding be suspended by the Board pending final
`
`determination and/or resolution of the civil action.
`
`Catherine Ferguson, Esq., attorney for Opposer, has indicated Op.poser’s consent to this
`
`motion to suspend. A copy of this motion is being served electronically upon Ms. Ferguson as
`
`_ the attorneys for Opposer Pandora Jewelers 1995, Inc. on the date indicated below.
`
`Respectfully submitted,
`
`LATHROP & GAGE LLP
`
`Attorneys for Applicant
`Pandora Jewelry, LLC
`
`By:
`
` Dated: New York, New York
`
`February 19, 2010
`
`Thomas H. Curtin
`
`
`
`230 Park Avenue, Suite 1847
`New York, New York 10169
`(212) 850-6220
`
`
`
`
`
` EXHIBIT A EXHIBIT A
`
`
`
`Case 0:09-cv—61,490—MGC Document 1
`
`Entered on FLSD Docket 09/18/2009 Page 1 of 30
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`
`Pandora Jewelers 1995, lnc.,
`a Florida corporation
`Plaintiff,
`
`S v.
`
`Pandora Jewelry, LLC
`A Maryland limited liability company
`
`)
`)
`)
`
`>
`
`)
`)
`)
`)
`
`09-CV-61490-Cooke-Bandstra
`
`CIVIL ACTION NO.
`
`'
`
`09" 61 490
`
`-
`
`.
`
`.
`
`—-—————--————————~
`VT £10‘
`
`Sept. 13, 2009
`
`STEVEN M. LARIMORE
`CLERK U.S. DIST. GT.
`S.D. OF FLA. - MIAMF
`
`Defendant
`
`3
`
`COMPLAINT
`
`Plaintifi", PANDORA JEWBLERS 1995,
`
`INC.
`
`(“Pandora Inc”). by and through its
`
`undersigned counsel, hereby files this Complaint fortrademarlc infringement, unfair competition,
`
`tortious interference with a business relationship, and cancellation of a federal registration
`
`against Defendant PANDORA JEWELRY, LLC (“Pandora LLC”) and alleges as follows:
`
`I
`
`NATURE OF THIS ACTION
`
`1.
`
`Pandora Inc brings this action because Pandora LLC is currently and attempting
`
`to further use Pandora 1nc’s trademark in commerce. In addition, Pandora LLC wrongfully
`
`interfered with Pandora lnc’s ‘business relationship with Google, Inc. Finally, Pandora LLC
`
`fraudulently filed federal trademark applications and procured federal trademark registrations for
`
`the trademark PANDORA for jewelry and related goods and services. As a result, Pandora Inc is
`
`requesting both injunctive and monetary relief.
`
`PARTIES, JURISDICTION, AND VENUE
`
`2.
`
`Plaintiff, Pandora Jewelers 1995, Inc. is a Florida corporation having itsprincipal
`
`place of business in Broward County, Florida.
`
`101119
`
`ij_.____.____.__.____._______.......__..._-,...
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`._.__.,__,__T._n..r_...,____________________...
`
`.
`
`. ..
`
`,7,
`
`
`
`Case O:09—cv—61490—MGC Document 1
`
`Entered on F LSD Docket 0911812009 Page 2 of 30
`
`3.
`
`On information and belief, Defendant, Pandora Jewelry is a Maryland iirnited
`
`liability company having its principal place of business in Howard County, Maryland. On
`
`information and belief, Defendant Pandora Jewelry, LLC is a wholly owned subsidiary of
`Pandora MS, a limited liability company organized under the laws ofDenmark.
`
`4.
`
`5.
`
`This action arises under the Lanham Act and Florida state law.
`
`This Court has subject matter jurisdiction of this action pursuant to 28 U.S.C.
`
`§l33l(a), 1338(b), 1367, and 15 U.S.C. §l121. As the Plaintiff and Defendant are citizens of
`
`different states, and as the matter in controversy exceeds the sum or value of seventy-five
`
`thousand dollars ($75,000.00), exclusive of interest and costs, this Court. also has jurisdiction
`
`pursuant to 28 U.S.C. §1332.
`
`6.
`Venue is proper in the Southern District of Florida under 28 U.S.C. §l39l(b) and
`l391(c) because is doing business here and a substantial
`of Defendanfsuwrongful and
`infringing conduct occurred here.
`I
`7'.
`This Court has personal jurisdiction over the Defendant, and venue is proper in
`
`the Southern District of Florida pursuant to 28 U.S.C. §l39l(b) as Defendant is doing business in
`
`this District. Additionally, the Court has personal jurisdiction over the Defendant, and venue is
`
`proper in the Southern District of Florida because, the Defendant has advertised and continues to
`
`advertise its trademark and sell jewelry through dealers in this District; and Defendant filed a
`
`trademark complaint against Plaintiff through Google, Inc. resulting in the loss of Plaintiffs
`
`right to use its trademark in Google, Inc.’s key words and advertising resulting in Plaintiff’ s loss
`
`.of customers.
`
`' 2ol115
`
`
`
`Case 0:09-cv-61490—MGC Document 1
`
`Entered on FLSD Docket 09/18/2009 Page 3 of 30
`
`FACTUAL ALLEGATIONS
`
`8.
`
`Plaintiff is in the business of selling and marketing jewelry on the retail level both
`
`at its place of business in Deerfield Beach, Florida to customers in Florida and in other states and
`
`on the Internet through a website at the following URL www._PANDORAJEWELERS.COM.
`
`9.
`
`Plaintiff has continuously used the trade name and service mark PANDORA to
`
`sell, consign, appraise, clean, and repair jewelryat its retail store servicing customers specifically
`
`in Broward, Palm Beach, and Miami~Dade counties, and generally customers from throughout
`
`the state of Florida and from other states since 1976. Please see attached evidence of trademark
`
`usage including: consignment receipts (Exhibit A), newspaper ads (Exhibit B), appraisal receipts
`
`(Exhibit C), flyers, (Exhibit D), brochures (Exhibit E), product packaging (Exhibit F), store
`
`signage (Exhibit G), and bench ads (Exhibit H).
`
`10.
`
`Plaintiff has used the domain name “PANDORA.IEWELERS.COM” in interstate
`
`commerce in association with the sale, consignment, appraisal, cleaning, and repair ofjewelry on
`
`the intemet since 1999. Select website pages are attached hereto as Exhibit “I”.
`
`11.
`Plaintiff has expended considerable sums in advertising its retail store jewelry
`services and using said domain name; and has exerted every effort to maintain the highest
`standard of quality for said services and has created goodwill under the servicemark PANDORA
`
`and the domain name PANDORAJEWELERS among the purchasing public. Plaintiff‘ s
`
`customers have come to trust Plaintiff for its fair and honest dealings in the sale, consignment,
`
`appraisal, cleaning and repair of high end jewelry under the trademark PANDORA.
`
`12.
`
`Plaintiff has enjoyed considerable success and is well known as the source of
`
`origin of retail jewelry services, including the sale, consignment, appraisal,'cleaning, and repair
`
`301119
`
`
`
`Case 0:09-'cv—61490-MGC Document 1
`
`Entered on FLSD Docket 09/18/2009 Page 4 of 30
`
`of jewelry in South Florida servicing customers throughout the United States under the trade
`
`name and trademark PANDORA for over thirty years.
`
`13.
`
`On information and belief, Defendant manufactures and sells jewelry wholesale
`
`and in retail outlets under the name PANDORA, identified herein as its “charm line,” through
`
`dealers throughout the United States including Miami, Broward, and Palm Beach counties and
`
`also advertises its charm line jewelry through a website on the Internet under the mark
`
`“PANDORA-JEWELRY.COM” since late 2004. Typical product brochures and select website
`
`pages are attached hereto as Exhibit “J” and “K”.
`
`14.
`The Defendant, Pandora
`Jewelry, LLC has
`several Federal Trademark
`Registrations for
`the trademark PANDORA for jewelry and related services including:
`
`Registration No. 3,065,374 registered on July 3, 2006 for jewelry (attached as Exhibit “L”);
`
`Registration No. 3,640,357 registered on June 16, 2009 for jewelry and printed publications
`
`(attached as Exhibit “M”); Registration No. 3,613,181 registered on April 28, 2009 for jewelry
`
`and printed publications
`
`(attached as Exhibit “N”); ‘ several pending federal
`
`trademark
`
`applications for variations of the PANDORA trademark for jewelry and related services
`
`including: serial no. 77/690,744 filed on March 13, 2009 based on an intent to use for retail store
`
`services (Attached as Exhibit “O”); and serial no. 79/069,628 filed on May 14, 2009 for goods in
`
`precious metals, ailoys, gems, jewelers work and jewelry and related goods based on a foreign
`
`trademark application (attached as Exhibit “P”).
`
`'
`
`15.
`
`In early 2004 Defendant’s Director. of Sales of Florida, Knud Hostrup,
`
`approached the Plaintiff asking Plaintiff to sell Defendant’s charm line under the trademark
`
`PANDORA in Plaintiffs store. Plaintiff declined.
`
`
`
`Case 0:09—cv—6’l490—iVlGC Document 1
`
`Entered on FLSD Docket 0911812009 Page 5 of 30
`
`16.
`
`In late 2004 Defendant’s representative again approached Plaintiff about selling
`
`Defendant’s charm line under the PANDORA trademark and this time Plaintiff’ s President,
`Robert Wasson agreed.
`I
`
`17.
`
`In the winter of 2005 Plaintiff began displaying Defendant’s charm line in its
`
`store and by the summer of 2005 was also selling Defendant’s charm line on Plaintiffs website.
`
`18.
`On information and belief, over the years Defendant expanded its manufacture
`and wholesale sale of its charm line and business and began selling through an increasing
`
`number of independent retail vendors in South Florida. Defendant expanded throughout in the
`
`United States, including South Florida, and began advertising aggressively under the PANDORA
`
`trademark through numerous media including newspapers, magazines (attached as Exhibit“Q”),
`
`billboards (attached as Exhibit “R”), and the Internet. This is evidenced by Defendant’s brochure
`
`detailing Defendant’s rapid expansion and aggressive advertising campaign in the United States
`
`A
`
`in the last few years (attached as Exhibit “S").
`
`19.
`
`Beginning in 2008, Plaintiff began to observe Plaintiffs prospective and regular
`
`customers experience an increasing amount of COI'lfi,1Sl0l'l as to the source of Plaintiffs goods and
`
`services due to Defendant’s expanded advertising efforts of Defendant’s PANDORA trademark
`
`is
`
`l
`
`
`
`-
`
`on Defendant’s expanded charm line in South Florida.
`
`20.
`In Januaryof 2009, Plaintiff‘ s use of its PANDORA trademark for Google, Inc.’s '
`(“Google”) pay per click advertising was proscribed by Google. Plaintiff contacted Google and
`discovered that Defendant had filed a trademark complaint against Plaintiff through Google to
`
`4
`
`'
`
`prevent the Plaintiff from using Plaintiffs PANDORA trademark in advertising with Google.
`
`Subsequently, Plaintiffs sales decreased and prospective customers searching for the term
`
`
`
`Case 0:09p-cv—6‘l490—MGC Document 1
`
`Entered on F LSD Docket 09/1812009 Page 6 of 30
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`PANDORA would not find Plaintiff through a Google pay per click advertisement. The Google,
`
`Inc. complaint is attached hereto as Exhibit “T”.
`
`21.
`
`As a direct result of Defendant’s interference with Plaintiffs relationship with
`
`Google, Plaintiff is no longer able to use its trademark PANDORA in Google pay per click
`
`advertising, resulting in a loss of sales to the Plaintiff.
`I
`I
`22.
`Plaintiff has recently learned that Defendant is planning to use the PANDORA
`
`trademark to operate retail jewelry stores in South Florida.
`
`23.
`
`In May of 2009, Plaintiff formally ended Plaintiffs sales of the Defendanfs
`
`expanded charm line due to Defendant’s interference with Plaintiffs relationship with Google,
`
`increased customer confusion as to the source of Plaintiffs goods and the source of Defendanfs
`
`goods, and Defendanfs plan to operate retail stores in South Florida.
`
`24.
`
`The infringement by Defendant has been willful and deliberate, designed
`
`specifically to trade upon the goodwill associated with Plaintiffs trademark.
`
`25.
`
`Defendant’s first use of its trademark PANDORA in the United States for the sale
`
`of jewelry was ‘over thirty years after Plaintiff began continuously providing retail jewelry
`
`services including selling, consignment, appraisal, cleaning, and repairing jewelry using the
`
`PANDORA mark to customers located throughout the United States.
`
`26.
`
`in September of 2004, Defendant applied for a trademark for
`
`the term
`
`PANDORA for jewelry with the U.S. Patent and Trademark Office. Defendant had actual
`
`knowledge of Plaintiff’ s prior use and superior rights when Defendant executed a declaration in
`
`support of this application averring that Defendant had no actual knowledge of any prior use and
`
`superior rights in the term PANDORA forjewelry.
`
`
`
`Case 0:09-cv~6t490-MGC Document 1
`
`Entered on" FLSD Docket 09/18/2009 Page 7 of 30
`
`27.
`Defendant has subsequently applied for additional
`trademarks for the term
`PANDORA. Defendant has executed additional declarations in support of these applications
`
`averring that Defendant had no actual knowledge of any prior use and superior rights in the term
`
`PANDORA.
`
`_ 28.
`
`The goodwill of Plaintiffs retail jewelry services acquired over the last thirty
`
`years under its PANDORA trademark is of significant value in the jewelry business, and harm to
`
`such goodwill is irreparable.
`
`29.
`
`30.
`
`_Defcndant’s actions will continue unless enjoined by this Court.
`
`Plaintiff has retained the law firm of Malin, Haley, DiMaggio, Bowen, and Lhota,
`
`P.A. to represent its interest in these proceeding and is obligated to pay the firm a reasonable
`
`attomey’s fee and court costs, which fees and costs are recoverable from defendant under federal
`
`and state law.
`
`COUNT I
`UNFAIR COMPETITION UNDER SECTION 431211
`OF THE LANHAM ACT §1S U.S.C. 1125§a}1
`
`31.
`
`Plaintiff incorporates by reference the allegations contained in Paragraphs 1
`
`through 30.
`
`32.
`
`Plaintiff adopted theptrade name of PANDORA in 1976. Since that time, Plaintiff
`
`has continuously used this trade name in connection with the marketing of Plaintiffs retail
`
`jewelry services, such as ‘the sale, cleaning, and repairofjewelry.
`
`33.
`
`34.
`
`The word PANDORA is arbitrary as applied to the retail jewelry business.
`
`Plaintiff markets its retail jewelry services in Florida and to its customers located
`
`throughout the United States. Plaintiff uses its trade name “PANDORA” in interstate commerce.
`
`
`
`
`
`Case 0:09-cv—61490—MGC Document 1
`
`Entered on FLSD Docket 09/18/2009 Page 8 of 30
`
`35.
`
`In using the name PANDORA, Defendant has adopted a trade name and
`
`trademark that is the same as that of Plaintiffs trade name and trademark. Defendant’s use of I
`
`PANDORA has caused actual customer confusion as to the source of Plaintiffs retail jewelry
`
`services and Defendant’s goods and is likely to cause further confusion.
`
`36.
`
`Plaintiff and Defendant are both involved in the sale of jewelry. The use by
`
`Defendant of Plaintiffs trademark PANDORA in its trademark and domain name has caused
`
`and is likely to cause confusion, mistake, and deception as to affiliation, connection, association,
`
`origin, sponsorship, and approval of Plaintiff and the services offered by Plaintiff, and constitutes
`
`false designation of origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §§
`
`ll25(a).
`
`37.
`
`' Upon information and belief, Defendant has commenced the process of opening
`
`one or more retail jewelry outlets in South Florida using the tradename and trademark
`
`PANDORA.
`
`38.
`
`- Plaintiff owns rights in Florida and throughout the United States in and to the
`
`trademark PANDORA for retail jewelry sales, include the sale, cleaning and repair of jewelry
`
`which are superior to any rights which Defendant may claim in and to said trademark in any
`
`form or style with respect to the sale ofjewelry and jewelry related services.
`
`39.
`
`The use of the trademark PANDORA in connection with the manufacture and sale '
`
`of Defendant’s expanded product line and retail store services. in the state of Florida and
`
`throughout the United States is likely to cause reverse confusion as to the source of Defendant’s
`
`products and retail store services in that purchasers thereof will be likely to associate or have
`
`associated such‘ products and services with and as originating with Plaintiff, all to the detriment
`
`of Plaintiff under 15 U.S.C. ll25(a). Defendant’s unauthorized use of Plaintiffs PANDORA
`
`
`
`
`
`Case 0:09—cv-61490-MGC Document 1
`
`Entered on FLSD Docket 09/18/2009 Page 9 of 30
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`marks that Defendant has used and is using in commerce is likely to cause confusion or to-cause
`
`a mistake or deceive by creating false and misleading impression that Plaintiffs retail jewelry
`
`services are associated or connected with Defendants’ products and/or services or that such
`
`product have sponsorship endorsement or approval. Such use is likely to cause confusion or to .
`
`cause a mistake or deceive and unless enjoined by this Court will continue to cause a likelihood
`of confusion and deception of members of the consuming public and will additionally continue
`
`to injure the good will and reputation of Plaintiff and Plaintiff has no adequate remedy at law.
`
`40.
`
`Defendant’s action will continue unless enjoined by this Court.
`
`WI-IEREFORE Plaintiff demands judgment as set forth in Plaintiffs Prayer for Relief.
`
`FLORIDA COMMON LAW UNFAIR COMPETITION
`
`COUNT II
`
`41.
`
`Plaintiff incorporates by reference the allegations contained in Paragraphs 1
`
`through 30.
`
`42.
`
`Defendant’s use of Plaintiffs tradename and trademark PANDORA is likely to
`
`deceive customers and prospective customers in believing that Defendant’s proposed expanded
`line of products and retail stores is that of Plaintiffor in same way is affiliated with Plaintiff and,
`
`as a consequence, will likely divert customers away from Plaintiff.
`
`43.
`
`011 information and belief, Defendant has begun or is about to provide retail store
`
`services throughout South Florida, including Dade, Broward, and Palm Beach Counties, under
`
`the Plaintiffs PANDORA tradename and trademark.
`
`44.
`
`Plaintiff has no control over the nature and quality of the expanded line of
`
`products manufactured and sold by Defendant, or Defendant’s quality of retail store services.
`
`Any failure, neglect, default, or unfair dealings by Defendant in providing such goods and
`
`services will reflect adversely on Plaintiff as the believed source of origin thereof, hampering
`
`-9-
`
`
`
`Case 0:09-cv-61490—MGC Document 1
`
`Entered on FLSD Docket 09/18/2009 Page 10 of 30
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`efforts by Plaintiff to continue to protect its Outstanding reputation for high quality, trustworthy
`
`service, resulting in the loss of sales thereof and the considerable expenditures to promote its
`
`n products and services under the mark, all to the irreparable harm of the Plaintiff. Defendant’s
`
`unauthorized use of Plaintiffs PANDORA tradename and trademark that Defendant has used
`
`and is using in commerce is likely to cause consumer confusion about the source of sponsorship
`
`of the goods. Unless Defendanfs actions are enjoined by this Court, Defendant’s actions will
`
`injure the goodwill and reputation of Plaintiff and Plaintiff has no adequate remedy at law.
`
`45.
`
`Defendanfs actions will continue unless enjoined by this Court.
`
`WHEREFORE Plaintiff demands judgment as set forth in Plaintiffs Prayer for Relief.
`
`.
`COUNT 111'
`FLORIDA COMMON LAW TRADEMARK INFRINGEMENT
`
`46.
`
`Plaintiff incorporates by reference the allegations contained in Paragraphs 1
`
`through 30.
`
`47.
`
`" Plaintiff has used the PANDORA tradename and trademark in Florida for retail
`
`jewelry services long before Defendant’s first use of the mark in Florida.
`
`48.
`
`Defendant’s
`
`imitation, copying and unauthorized use ‘of the ‘PANDORA
`
`tradename and trademark in the State of Florida is likely to cause, and has caused, confusion,
`
`‘deception, and mistake among the consuming public and trade in Florida by creating the
`
`erroneous impression that the goods and services sold, offered for sale, distributed or advertised
`
`by Defendant have been manufactured, approved, sponsored, endorsed or guaranteed by, or are
`
`in some way affiliated with Plaintiff.
`
`49.
`
`Plaintiff and Defendant offer competitive goods and services for jewelry
`
`customers.
`
`E
`
`
`
`
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`Case O:O9—cv—61490-MGC Document 1
`
`Entered on FLSD Docket 09118/2009 Page 11 of 30
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`50.
`
`Defendant’s unlawful conduct will continue to damage Plaintiff unless enjoined
`
`by this Court, and Plaintiff has no adequate remedy at law.
`
`WHEREFORE Plaintiff demands judgment as set forth in Plaintiffs Prayer for Relief.
`
`COUNT IV '
`CANCELLATION OF DEFENDANT’S IMPROPER FEDERAL REGISTRATION
`
`PURSUANT TO 15 U.S.C. § 1119 ‘
`
`51.
`
`Plaintiff incorporates by reference the allegations contained in Paragraphs 1
`
`through 30.
`
`52.
`
`The Defendan_t’s federal trademark registration and applications, as identified in
`
`Paragraph 14, were procured fraudulently in that Defendant in its trademark applications failed
`
`I to truthfully declare to the U.S. U.S. Patent and Trademark Office that Defendant was aware and
`
`had knowledge that Plaintiff had superior rights to the PANDORA trademark for identical goods
`
`and services.
`
`53.
`
`By reason foregoing, Defendant has committed and is continuing to commit fraud
`
`upon the U.S. Patent and Trademark Office by continuing to fraudulently complete and sign
`
`these declarations asserting that Defendant is unaware and without knowledge of any superior
`
`rights. Consequently, Defendant’s registration must be cancelled and Defendant’s applications
`
`must be held abandoned by this Court.
`
`54.
`
`Defendant’s unlawful conduct before the U.S. trademark office will continue to
`
`damage Plaintiff and Plaintiff’s procurement of a federal trademark registration for the trademark
`
`PANDORA unless so ordered by this Court, and Plaintiff has no adequate remedy at law.
`
`WHEREFORE Plaintiff demands judgment as set forth in Plaintiffs Prayer for Relief.
`
`-11-
`
`
`
`Case 0:09-cv—61490-MGC Document 1
`
`Entered on F LSD Docket 09/18/2009 Page ‘I2 of 30
`
`COUNT v
`TORTIOUS INTERFERENCE WITH AN ADVANTAGEOUS
`BUSINESS RELATIONSHIP
`'
`
`55.
`
`Plaintiff incorporates by reference the allegations contained in Paragraphs 1
`
`through 30.
`
`56.
`
`Plaintiff has had an ongoing business relationship with Google for several years.
`
`57.
`As evidenced by Defendant’s filing of a complaint with Google in regards to
`Google’s relationship with Plaintiff, Defendant had knowledge of Plaintiffs relationship with
`
`Googie. Defendant filed a complaint with Google in which Defendant falsely accused Plaintiff of
`
`abusing Defendant’s brandby selling counterfeit products (Google Complaint attached hereto as
`
`Exhibit M). Defendant falsely accused Plaintiff of illegal acts by placing Plaintiffs website on a
`“blacklist” Defendant provided to Google, in an effort to persuade Google to end business
`
`relations with Plaintiff, specifically, Plaintiffs ability to use its trademark PANDORA for
`
`jewelry in its key words and ads on the Internet.
`
`I
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`58.
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`As a result of Defendant’s complaint and other allegations, Google terminated
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`Plaintiffs ability to advertise with Google using Plaintiffs trademark PANDORA.
`
`Google terminating Plaintiff‘S ability: to advertise with Google using Plaintiffs
`59.
`trademark PANDORA has caused‘Plaintiff to be unable to effectively use its trademark in
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`keyword searches and advertisements on Google. The ability to use a trademark in keyword
`
`searches and advertisements on Google is an important way to allow potential or current
`
`customers to find an entity’s website or information about the entity when searching for the
`
`entity by a word the customer identifies with the entity, such as a trademark.
`
`60.
`
`Defendant’s actions resulted in damage to Plaintiff in that Plaintiff has lost sales
`
`and sales opportunities from being unable to effectively use its trademark in keyword searche_s
`
`-12-
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`Case 0:O9~cv—61490—MGC Document 1
`
`Entered on F-"LSD Docket 09/18/2009 Page 13 of 30
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`and advertisements because the ability of potential or current customers to find Plaintiffs
`
`website or information about Plaintiff when searching for PANDORA on Google has been
`
`greatly restricted.
`
`WHEREFORB Plaintiff demands judgment as set forth in Plaintiffs Prayer for Relief.
`
`.
`
`'
`
`WHEREFORE, Plaintiff demands the following:
`
`PRAYER FOR RELIEF .
`
`A.
`
`That a preliminary and permanent injunction issue restraining Defendant,
`
`its
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`agents, servants, employees, successors and assigns and all others in concert and privity with
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`them from infringement of Plaintiffs trademark, from injuring Plaintiffs business reputation,
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`from unfairly competing with Plaintiff, and from engaging in unfair and deceptive trade practices
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`and inferring with Plaintiffs use of its trademark on the internet and as keywords and advertising
`
`through Google; all of the foregoing in Plaintiffs trademark territory of Palm Beach'County,
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`Dade County, and Broward County, Florida the state of Florida and the United States;
`
`B."
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`That Defendant withdraw its complaint against Piaintiff with Google enabling
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`Plaintiff to resume its contract with Google and its use of its PANDORA trademark in its Google
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`keywords and advertisements;
`
`C.
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`That Defendant’s US. Federal Trademark applications, identified in Paragraph 14
`
`herein, be abandoned and Defendant’s U.S. Trademark Registrations, identified in Paragraph 14
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`herein, be cancelled;
`
`D.
`
`.
`That Defendant provide an accounting to Plaintiff for Defendanfs profits, and a
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`judgment for the actual damages suffered by Plaintiff as a result of Defendant’s acts of
`
`r
`
`E
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`i
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`-13-
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`
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`Case 0:09—cv«81490-MGC Document 1
`
`Entered on FLSD Docket 09f18/2009 Page 14 of 30
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`infringement, unfair competition, and tortious interference together with interests and cost; and
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`pay for corrective advertising;
`E.
`That Defendanfs be compelled to pat! Plaintiff’s attorneys fees, together with all
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`costs of this suit; and
`
`F.
`
`For such other and further relief as may be just and equitable.
`
`Onthis
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`.
`
`41,
`
`day of
`
`,2o09.
`
`
`
`at No. 23,351)
`aley, Esq (Fla.
`Barry L.
`Catherine Ferguson, Esq. (Fla. Bar No. 20055)
`
`MALIN HALEY DiMAGGIO
`
`BOWEN & LHOTA, RA.
`1936 South Andrews Ave.
`Fort Lauderdale, FL 33316
`Telephone: (954) 763-3303
`Facsimile: (954) 522-6507
`Counselfor Plaintifl’
`‘
`
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`I:\l ]000\l I 165\Litigali0n\PLEAD1'NGS\3902.001.Complaint.doc
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`I, Robert Wesson deciare as foliowsz I
`
`‘
`
`VEEI E 1_(_IAT[.ON
`
`I am the President of Pandora Jewelers 1995, Inc., the Plaintiff in this action.
`
`I have read
`
`the foregoing Complaint and know the ctmteuts. thereof and ihe sauna are true based upon my
`
`personal knowledge except as "to such matters therein suited to be on informafion and belief, and
`
`as to those matters I believe to be true, Pursuant to the provisidns of 28 1.1.8.0. § 1746. I declare
`
`undar penalty of pesjury that the foregoing is true and comes: and 'fiJ.rth.er that these statements
`
`and the like so made are punishable by fine or i11’1_p1'iSOI1m611t, or bo,th, under Section 1001 of
`
`Title 18 of the Uxfitcd States Code.
`
`Exacutec11his__/fidayof / ,2009.
`
`/
`
`
`
`Case 0:09-cv-61490~i\/IGC Document 1
`
`Entered on FLSD Docket 09/18/2009 Page 16 of 30
`
`....... ...-,_....\. .....
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`Exhibit A
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`Case 0:09-CV-61490-MGC Document 1
`
`Entered on FLSD Docket O9/1812009 Page 17 of 30
`
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`Case 0:09«cv-61490-MGC Document 1
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`Entered on FLSD Docket 09/18/2009 Page 18 of 30
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`Exhibit B
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`Daerfleld Beach, Florida 33441
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` Descflpiion 0! Article ' ' Estimated
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`Replacement Value
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`0;
`
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`
`One ladies 14K yellow gold diamond wedding band. The
`ring contains 22 square princess cut diamonds which
`have an actual total weight of approx. -1.50ct, channe
`set in two rows. The diamonds average approx. “S11”
`clarity and "H-1" color (using GIA grading terms). Th
`ring has a white gold ribbed design on both sides of '0
`the diamonds. The ring weighs approx. 5,5dwt.
`,
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`$3,200.00
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`
`
`* This avpraisal is to be used by Renee Dolan for insu ance‘
`purposes only.
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`Case 0:O9—cv-61490-MGC Document 1
`
`Entered on FLSD Docket 09/18/2009 Page 22 of 30
`
` Exhibit D
`
`
`
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`STORE-WID‘E;STORE-WID‘E;
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`SALE!SALE!
`
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`Case 0:09-CV-61490—MCase 0:09-CV-61490—M
`
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`
`wvvw.pandorajewelerscom
`
`109 SE 15th Terrace
`since ,975
`1) DetarfielcJEJe '
`.Fl_ 33¢-'11
`In the Cove Sh-J|Jg,. no Center
`‘\77(~f’W/fife
`(954) 421-8343
`A “*""°"°" °*'“‘““‘
`
`50%; Off Store Wide Sale Until» December 24, 2008.
`lt‘s been over 30 years since Pandora Jewelers
`opened its doors and we wanted to give you
`a special reason to celebrate the holidays. Use
`this card until December 24, 2008 to receive
`50% off your holiday purchase of one item.
`Our services include Rolex Watch Repair,
`Custom Jewelry Design, Jewelry Appraisals,
`and Jewelry Repair. Shop our Pre—owned
`Rolexes, Exquisite Dia