Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA349116
`ESTTA Tracking number:
`05/21/2010
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91194987
`Plaintiff
`Swarm, LLC
`Jessie K. Reider, CA Bar No. 237,113
`Buchalter Nemer, A Professional Corporation
`1000 Wilshire Blvd., Suite 1500
`Los Angeles, CA 90017
`UNITED STATES
`trademark@buchalter.com
`Motion to Suspend for Civil Action
`Jessie K. Reider, CA Bar No. 237,113
`trademark@buchalter.com
`/jkr/
`05/21/2010
`MOtion to Suspend.PDF ( 20 pages )(688007 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of Trademark Application Serial Number 77/852,023
`For the Mark: SHADES OF GREY
`Published in the Official Gazette on March 23, 2010
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`SWARM, LLC,
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`Opposer;
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`V.
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`NANCY SIDONIE COHEN,
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`Applicant
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`Opposition No.: 91194987
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`Application: Serial No. 77/852,023
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`Mark: SHADES OF GREY
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`Published For Opposition: March 23,
`2010
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`MOTION TO SUSPEND OPPOSITION
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`Opposer SWARM, LLC (“Opposer”) requests that the instant Opposition be
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`suspended pending disposition of a pending civil lawsuit, pursuant to
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`37 CFR 2.117.
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`On April 28, 2010, Opposer filed a complaint in the United States District
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`Court for the Central District of California entitled Swarm, LLC v. Micah A. Cohen
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`and Nancy Sidonie Cohen, etc., which was designated as case number CV 10-3 188
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`DDP (FFMx), and which asserted claims for, inter alia, trademark infringement;
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`false designation of origin; and declaratory judgment for withdrawal of defendants’
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`trademark application (“Complaint”). A copy of the Complaint as filed is attached
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`as Exhibit “A.” The defendants named in the Complaint are Micah A. Cohen and
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`Nancy Sidonie Cohen. Nancy Sidonie Cohen is the applicant in the instant
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`Opposition (“Applicant”).
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`The allegation of trademark infringement is based on Mr. Cohen’s use of the
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`SHADES OF GREY trademark, and his mother’s, the Applicant’s, application to
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`register the SHADES OF GREY mark — which is the subject of the instant
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`Opposition.
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`The Complaint further seeks declaratory judgment that the pending
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`application to register the SHADES OF GREY mark is void and should be
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`withdrawn from the register.
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`Because final determination of the Complaint will have a bearing on the
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`issues presented in the instant Opposition, Applicant requests that the Opposition
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`proceedings be suspended during the pendency of the federal suit resulting from
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`the Complaint.
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`Applicant thanks the Trademark Trial and Appeal Board for consideration of
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`this Motion. Please contact the undersigned with any questions.
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`Date: Mayp \ ,2010
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`Respectfully submitted,
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`BUCHALTER NEMER
`A Professional Corporation
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`By:____________________________________
`(ijussell Allyn
`Jssie K. Reider
`uchalter Nemer, APC
`California Bar No. 237,113
`1000 Wilshire Boulevard, Suite 1500
`Los Angeles, California 90017-2457
`Telephone: (213) 891-5031
`Facsimile: (213) 630-5745
`Email: jreider@buchalter.com;
`trademark@buchalter.com
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`Attorneys for Opposer
`SWARM, LLC
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`2
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`Motion to Suspend — SHADES OF GREY
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`Proof of Service
`I hereby certify that a true and correct copy of the instant
`Motion to Suspend has been served on the
`Correspondence of Record, Nancy Sidonie Cohen, at the
`address of record for the instant proceeding. A copy of the
`instant Response was sent via First Class mail, postage pre
`paid, on Maya
`2010 to:
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`Nancy Sidonie Cohen
`3744 Mandeville Canyon Road
`Los Angeles, California 90049
`By: JQJJC N.
`s e K. Reider
`J
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`BN 6240239v2
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`3
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`Motion to Suspend — SHADES OF GREY
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`

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`Exhibit A
`Exhibit A
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`Case 2:10-cv-03188-DDP-FFM Document 1
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`Filed 04128/10 Page 1 of 16
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`RUSSELL L. ALLYN (SBN: 143531)
`rallyn@buchalter.com
`2 DOUGLAS M. LIPSTONE (SBN: 141104)
`dlivstone @ buchalter. corn
`BUCHALTER NEMER
`A Professional Corporation
`1000 Wilshire Boulevard, Suite 1500
`Los Angeles, CA 90017
`Telephone: 213) 891-0700
`Facsimile: (z13) 896-0400
`Attorneys for Plaintiffs
`SWARM, LLC, dba Shades of Greige
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`F
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`F
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`—
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`j1J6) 3188 tOP (FFf
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`COMPLAINT FOR:
`(1) TRADEMARK
`INFRINGEMENT
`(2) FALSE DESIGNA’hON OF
`ORIGIN;
`(3) FEDERAL UNFAIR
`COMPETITION;
`(4) STATE UNFAIR
`COMPETITION;
`(5) INTENTIONAL
`INTERFERENCE WITH
`ECONOMIC RELATIONS;
`(6) BREACH OF DUTY OF
`LOYALTY AND
`(7) DECLARAtORY JUDGMENT
`FOR WITHDRAWAL OF
`DEFENDANTS’ TRADEMARK
`APPLICATION
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`DEMAND FOR JURY TRIAL
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`SWARM, LLC, a California limited
`liability company, dba Shades of
`12 Greige,
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`Plaintiffs,
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`vs.
`15 MICAH A. COHEN, an individual, dba
`Shades of Grey by Micah Cohen; and
`16 NANCY SIDONIE COHEN, an
`individual,
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`Defendants.
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`Case 2:10-cv-03188-DDP-FFM Document I
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`Filed 04/28110 Page 2 of 16
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`VENUE
`1.
`This action is for trademark infringement and related claims under
`the Lanham Act. This Court has jurisdiction pursuant to 15 U.S.C. § 1121(a)
`(trademark actions), 28 U.S.C. § 1331 (federal question), § 1338(a) and (b)
`(trademarks and unfair competition actions) and § 1367(a) (supplemental
`jurisdiction).
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`2.
`Venue is proper in this District under 28 U.S.C. § 1391(b) and (c) in
`that a substantial part of the events or omissions giving rise to the claims arose in
`this District and the defendants reside here.
`FIRST CLAIM
`(Federal Trademark Infringement Under 15 U.S.C. § 1125(a)
`Against All Defendants)
`3.
`Plaintiff Swarm, LLC (“Swarm”) is a limited liability company duly
`organized and existing under the laws of the State of California with a principal
`place of business in the County of Los Angeles. Swarm is now, and for several
`years has been, engaged in business in interstate commerce across the United States
`doing business as “Shades of Greige.”
`4.
`Plaintiff is informed and believes that defendant Micah A. Cohen is an
`individual residing in the County of Los Angeles, State of California, and has
`recently begun doing business as “Shades of Grey by Micah Cohen.”
`5.
`Plaintiff is informed and believes that defendant Nancy Sidonie Cohen
`is an individual residing in the County of Los Angeles, State of California, and has
`recently filed a intent-to-use trademark application for “Shades of Grey.”
`6.
`Since in or about February 2007, Plaintiff, or its predecessor in
`interest, has been engaged in the business of designing, manufacturing and
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`26 wholesale selling of men’s apparel and accessories bearing the “SHADES OF
`27 GREIGE” trademark (the “Trademark”).
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`FIAL IFR N E\I FR
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`13N 5O()93R4
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`COMPL\JNT FOR TRADEMARK INFRINGEMENT. ETC.; DEMAND FOR JURY TRIAL
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`Case 2:10-cv-03188-DDP-FFM Document I
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`Filed 04/28/10 Page 3 of 16
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`Plaintiff has been consistently and continually using the “SHADES OF
`7.
`2 GREIGE” trademark over the past three years in connection with its goods.
`Plaintiff’s Trademark is prominently displayed on its goods, in its brochures and in
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`its advertising. Plaintiff has expended substantial time, money, and effort to create
`and build-up goodwill and consumer recognition in its “SHADES OF GREIGE”
`trademark, which, as a result, is famous, well known to its wholesale and retail
`customers, and has developed a secondary meaning identifiable with Plaintiff.
`8.
`On or about March 17, 2010, Plaintiff filed an application with the
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`9 United States Patent and Trademark Office for registration of the mark “SHADES
`10 OF GREIGE,” Serial Number 77961310, for clothing, namely pants, shorts, shirts,
`tee shirts, polo style shirts, sweaters, sweatshirts, sweatpants, jackets, coats, suits
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`scarves, underwear, loungewear, pajamas, robes, belts, footwear and headwear in
`International Class 25 (“Plaintiff’s Trademark Application”). Plaintiff’s Trademark
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`14 Application identifies the date of first-use of the mark in interstate commerce as
`February 13, 2007.
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`9.
`Beginning in or about early 2007, Plaintiff, or its predecessor in
`interest, employed Micah A. Cohen as a designer for Plaintiff’s “SHADES OF
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`18 GREIGE” apparel line. In or about November 13, 2009, Mr. Cohen quit his job
`19 with Plaintiff. Unbeknownst to Plaintiff, approximately 3½ weeks earlier (on or
`about October 19, 2009), Mr. Cohen’s mother, Nancy Sidonie Cohen, with whom
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`he apparently resides or resided, filed an intent-to-use application with the
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`22 United States Patent and Trademark Office for registration of the mark
`“SHADES OF GREY,” Serial Number 77852023, for use upon clothing, namely
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`tee shirts, shirts, tops, pants, jeans, shorts, bottoms, jackets, suits, outerwear,
`underwear, hats, scarves, gloves and shoes in International Class 25 (“Defendants’
`Trademark Application”). Defendants then began designing, manufacturing and
`selling a men’s apparel line in direct competition with Plaintiff under the name
`“SHADES OF GREY BY MICAH COHEN” (the “Accused Goods”). And in
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`9LCHAITER NE\ER
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`BN 5S)0U931 v4
`COMPLAINT FOR TRADEMARK INFRINGEMENT, ETC.; DEMAND FOR .JURY TRIAL
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`Case 2:10-cv-03188-DDP-FFM Document I
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`Filed 04128/10 Page 4 of 16
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`doing so, Defendants are utilizing the same designs, patterns, look, pricing,
`factories and sales representatives used by Plaintiff when Mr. Cohen was employed
`by Plaintiff, and Defendants are selling the Accused Goods to the same wholesale
`customers to which Plaintiff sells its goods and has developed valuable business
`relationships. Defendants are selling the Accused Goods through the same
`channels of trade as Plaintiff and Defendants’ use of its “SHADES OF GREY BY
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`7 MICAH COHEN” trademark is causing actual confusion in the marketplace with
`Plaintiff’s “SHADES OF GREIGE” trademark.
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`10.
`Plaintiff has devoted substantial time, money, and effort in the
`establishment and protection of the goodwill, customer recognition, and nationwide
`reputation of its SHADES OF GREIGE trademark, and such Trademark is
`symbolic of the extensive goodwill, customer recognition, and nationwide
`reputation built up by Plaintiff in connection with its business and products.
`Plaintiff has a particularly valuable goodwill established in its “SHADES OF
`15 GREIGE” trademark.
`11.
`Defendants’ “SHADES OF GREY BY MJCAH COHEN” trademark
`is virtually identical to or so resembles Plaintiff’s mark as to cause confusion, to
`cause mistake, or to deceive wholesale and retail customers of the apparel line.
`Indeed, Defendants deliberately, knowingly and intentionally engaged in such
`conduct to deceive wholesale and retail customers, who buy the Accused Goods,
`believing that they were, in fact, buying legitimate, authentic SHADES OF
`22 GREIGE products from Plaintiff.
`12.
`Plaintiff is informed and believes and upon such information and
`belief alleges that customers have considered and are in fact likely to consider the
`items offered under Defendants’ name and mark as emanating from Plaintiff and
`are likely to patronize Defendants believing that the source is Plaintiff. Moreover,
`concurrent use of, and claim of rights in Plaintiff’s “SHADES OF GREIGE” mark
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`3 -HALrER Ni
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`13N 590(J93 I v4
`COI PLAINT FOR TRADEMARK INFRINGEMENT. ETC.; DEMAND FOR JURY TRIAL
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`

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`Case 2:10-cv-03188-DDP-FFM Document 1
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`Filed 04/28/10 Page 5 of 16
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`and Defendants’ “SHADES OF GREY BY MICAH COHEN” mark is resulting in
`irreparable damage to Plaintiff’s reputation and goodwill.
`13. Defendants have threatened to and, unless restrained, will continue the
`acts complained of herein, all to Plaintiff’s irreparable damage. It will be extremely
`difficult to ascertain the amount of compensation that would afford Plaintiff
`adequate relief therefor, and, unless this Court grants Plaintiff an injunction
`preventing Defendants from continuing its use of a confusingly similar trademark,
`Plaintiff will not be able to prevent infringement of its Trademark and will be
`irreparably damaged.
`14. Defendants’ conduct has caused, continues to cause, and is likely in
`the future to cause confusion, mistake, and deception in the minds of customers and
`to injure and damage Plaintiff’s goodwill for which there is no adequate remedy at
`law. By reason of the foregoing, Plaintiff has suffered and continues to suffer
`damages and injury to its business, goodwill and profits, the precise amount to be
`determined at trial, and Plaintiff is entitled to the remedies provided for in
`l5U.S.C. 1116 et seq.
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`15.
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`SECOND CLAIM
`(False Designation Of Origin Under 15 U.S.C. § 1125(a)
`Against All Defendants)
`Plaintiff hereby realleges, repeats and incorporates paragraphs 1-14
`above as though set forth in full.
`Plaintiff is informed and believes that Defendants, by their acts herein
`16.
`alleged, willfully, knowingly, and intentionally have engaged in behavior, and
`taken actions that are likely to confuse the trade and customers in violation of the
`Lanham Act § 43(a), 15 U.S.C. § 1125(a).
`17.
`Plaintiff is informed and believes that Defendants’ choice of and
`subsequent use of a confusingly similar and/or identical name and trademark to that
`of Plaintiff, without Plaintiffs knowledge and/or authorization, has led and will
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`3LCHLrER N’IFR
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`Case 2:10-cv-03188-DDP-FFM Document I
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`Filed 04128/10 Page 6 of 16
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`lead customers and the trade to mistakenly believe that Defendants are Plaintiff,
`andlor that Defendants’ products and services originate from, or are authorized,
`approved, sponsored, or licensed by Plaintiff, and that said conduct misappropriates
`Plaintiffs Trademark, trademark rights and goodwill, all to Plaintiff’s continuing
`detriment.
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`Defendants’ use of said name and trademark constitutes willful and
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`deliberate uses of a false designation of origin or a false or misleading
`representation, and is likely to cause confusion, mistake or deception by inducing
`the impression among customers that the products and services offered by
`10 Defendants have been offered by Plaintiff.
`As a direct, proximate and foreseeable result of the wrongful actions of
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`12 Defendants, Plaintiff has been irreparably injured and suffered, and continues to
`suffer, damages in an amount to be determined at trial.
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`THIRD CLAIM
`(Unfair Competition Under 15 U.S.C. § 1125
`Against All Defendants)
`Plaintiff hereby realleges, repeats and incorporates paragraphs 1-. 14
`above as though set forth in full.
`21. Defendants are competing with Plaintiff in the same channels of trade
`and using a trademark that is identical or confusingly similar to that of Plaintiffs
`with knowledge of Plaintiff’s prior use of its mark.
`22. Defendants are engaging in unfair competition, by utilizing the same
`designs, patterns, look, pricing, factories and sales representatives that were used
`24 when Mr. Cohen was employed by Plaintiff, and Defendants are selling the
`25 Accused Goods to the same wholesale customers to which Plaintiff sells its goods
`and has developed valuable business relationships.
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`23. Moreover, while Mr. Cohen was still employed by Plaintiff,
`Defendants arranged to have registered a competing trademark and began
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`3 CHALVER NEiR
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`13N 59O(3Iv4
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`Case 2:10-cv-03188-DDP-FFM Document I
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`Filed 04128/10 Page 7 of 16
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`competing to usurp business opportunities from Plaintiff and establish a competing
`collection of apparel, all with the intention of depriving Plaintiff of customers and
`revenue.
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`24. Defendants are selling and offering to sell the Accused Goods in such
`5 manner as to misleadingly imply that they are emanating from, or sponsored or
`approved by Plaintiff resulting in lost sales by Plaintiff, dilution of Plaintiff’s
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`Trademark and irreparable damage to Plaintiff’s reputation and goodwill.
`25.
`As a direct, proximate and foreseeable result of the wrongful conduct
`of Defendants, Plaintiff has been irreparably injured and suffered and continues to
`suffer damages, the precise amount to be determined at trial.
`FOURTH CLAIM
`(Unfair Competition Under California Business & Professions Code
`§ 17200, 17203 and 17500 Against All Defendants)
`Plaintiff hereby realleges, repeats and incorporates paragraphs 1-14
`above as though set forth in full.
`27. Defendants are engaging in unfair competition, by utilizing the same
`designs, patterns, look, pricing, factories and sales representatives that were used
`18 when Mr. Cohen was employed by Plaintiff, and selling to the same wholesale
`customers to which Plaintiff sells and has developed relationships.
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`28. Moreover, while Mr. Cohen was still employed by Plaintiff,
`Defendants arranged to have registered a competing trademark and began
`competing to usurp business opportunities from Plaintiff and establish a competing
`collection of apparel, all with the intention to deprive Plaintiff of customers and
`revenue.
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`As a direct, proximate and foreseeable result of the wrongful conduct
`of Defendants, Plaintiff has been irreparably injured and suffered and continues to
`suffer irreparable injury for which Plaintiff has no adequate remedy at law.
`III
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`c3LCHALTEZ JE\1R
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`HN 5900931
`COMPLAINT FOR TRADEMARK INFRINGEMENT, ETC.; DEMAND FOR JURY TRIAL
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`Case 2:10-cv-03188-DDP-FFM Document I
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`FHed 04/28/10 Page 8 of 16
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`FIFTH CLAIM
`(Intentional Interference with Economic Relations Against All Defendants)
`30.
`Plaintiff hereby realleges, repeats and incorporates paragraphs 1-29
`above as though set forth in full.
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`31.
`Plaintiff is informed and believes and thereupon alleges that
`6 Defendants were aware of Plaintiff’s beneficial contractual relationships with its
`7 wholesale customers for goods designed, manufactured and sold by Plaintiff, which
`contractual relationships contained the probability of future economic benefit to
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`Plaintiff for the Fall 2010 collection and beyond.
`Plaintiff is informed and believes and thereupon alleges that sometime
`32.
`in 2009, Defendants began soliciting these wholesale customers for the purpose of
`competing with Plaintiff and inducing them to purchase goods from Defendants,
`instead of placing orders with Plaintiff for goods from collections that should have
`been manufactured and sold by Plaintiff.
`Based upon Defendants’ usurpation of Plaintiff’s designs, patterns,
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`look, pricing, factories and sales representatives and other acts of unfair
`competition as alleged herein, Defendants succeeded in interfering with Plaintiff’s
`economic relationships and prospective economic advantages with its wholesale
`customers.
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`Plaintiff’s economic relationships and prospective economic
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`advantages with its wholesale customers would have continued but for the
`interference of Defendants.
`35.
`As a proximate result of Defendants’ wrongful conduct and their
`interference with Plaintiff’s customers, Plaintiff has suffered damages in an amount
`to be proven at trial.
`36.
`The aforementioned acts of Defendants were oppressive, fraudulent or
`27 malicious. Plaintiff is, therefore, entitled to punitive damages.
`III
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`CH4LrER NF:\lR
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`COTPLAINT FOR TRADEMARK INFRINGEMENT. ETC.: DEMAND FOR JURY TRIAL
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`Case 2:10cv-03188-DDP-FFM Document I
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`Filed 04128110 Page 9 of 16
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`SIXTH CLAIM
`(Breach of Duty of Loyalty Against Micah A. Cohen)
`Plaintiff hereby realleges, repeats and incorporates paragraphs 1-14
`above as though set forth in full
`38. While still employed by Plaintiff, Mr. Cohen arranged to have his
`5
`6 mother tile Defendants’ Trademark Application and began designing,
`7 manufacturing and selling a men’s apparel line in direct competition with Plaintiff’s
`existing apparel line. And in doing so, Mr. Cohen utilized the same designs,
`8
`patterns, look, pricing, factories and sales representatives that were used during his
`employment with Plaintiff, and sold to the same wholesale customers to which
`Plaintiff sells and has developed relationships.
`In taking the above actions, Mr. Cohen breached his duty of loyalty
`39.
`toward Plaintiff during his term of employment. He failed to faithfully serve
`Plaintiff during his term of employment by engaging in competing, outside business
`for his own benefit and to the detriment of Plaintiff.
`40. Mr. Cohen’s breach of his duty of loyalty has caused damages to
`Plaintiff, the amount of which will be proven at trial
`41. Mr. Cohen’s aforementioned conduct was intended by him to cause
`injury to Plaintiff or was despicable conduct carried on by him with a willful and
`conscious disregard of the rights of Plaintiff, or subjected Plaintiff to cruel and
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`unjust hardship in conscious disregard of Plaintiffs rights or was an intentional
`22 misrepresentation, deceit or concealment of material facts known to Mr. Cohen
`with the intention to deprive Plaintiff of property, legal rights or to otherwise cause
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`injury, such as to constitute malice, oppression or fraud under California Civil Code
`section 3294, thereby entitling Plaintiff to punitive damages in an amount
`appropriate to punish or set an example of Mr. Cohen.
`III
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`III
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`(CHALTER NEMER
`r
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`HN 590f)93 1v4
`COPLAINT FOR TRADEMARK INFRINGEMENT, ETC. DEMAND FOR .JURY TRIAL
`
`9
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`

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`Case 2:10-cv-03188-DDP-FFM Document 1
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`Filed 04/28/10 Page 10 of 16
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`42.
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`ii
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`SEVENTH CLAIM
`(Declaratory Judgment for Withdrawal of Defendants’
`Trademark Application, inter a/ia, Against All Defendants)
`Plaintiff hereby realleges, repeats and incorporates paragraphs 1-14
`above as though set forth in full
`43.
`An actual, present and justiciable controversy has arisen between
`Plaintiff and Defendants regarding their respective ownership and/or usage of the
`trademark “SHADES OF GREIGE,” Plaintiff’s Trademark Application,
`8
`9 Defendants’ usage of “SHADES OF GREY BY MICAH COHEN” and
`10 Defendants’ Trademark Application.
`44.
`Plaintiff contends that Micah A. Cohen has abandoned any interest that
`he may have had in the trademark “SHADES OF GREIGE” by the manner in
`12
`13 which he left his employment with Plaintiff, his promise not to use “SHADES OF
`14 GREIGE,” and his adoption of a different, though confusingly similar, trademark
`for use in his competing business. Plaintiff is informed and believes and thereupon
`15
`alleges that Defendants contend otherwise.
`Plaintiff contends that Nancy Sidonie Cohen is not the proper
`45.
`applicant for Defendant’s Trademark Application as she never had a bonafide
`intention to use the mark in commerce on the goods identified in Defendants’
`Trademark Application; that the marks “SHADES OF GREY” or “SHADES OF
`20
`21 GREY BY MICAH COHEN” are likely to cause, and have caused, confusion in the
`22 marketplace with Plaintiff’s Trademark “SHADES OF GREIGE;” and that
`23 Defendants’ Trademark Application is void and should be withdrawn and that
`registration must be refused or canceled. Plaintiff is informed and believes and
`24
`thereupon alleges that Defendants contend otherwise.
`46.
`An actual controversy exists between Plaintiff and Defendants with
`respect to their respective rights and duties under the circumstances alleged above,
`and Plaintiff seeks a judicial determination thereof. A judicial determination is
`10
`RN 590U931’v4
`CO1PLAINT FOR TRADEMARK INFRINGEMENT, ETC.; DEIAND FOR .JURY TRIAL
`
`16
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`31;CHALTER N\IER
`r L
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`

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`Case 2:10-cv03188-DDP-FFM Document I
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`Filed 04/28/10 Page II of 16
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`necessary and appropriate at this time under the circumstances in order that the
`parties may ascertain their rights, duties and obligations with respect to their
`competing trademarks and Trademark Applications.
`47.
`Plaintiff seeks declaratory judgment from this Court that
`4
`5 Micah A. Cohen has abandoned any interest that he may have had in the trademark
`6
`“SHADES OF GREIGE” and that Defendants’ Trademark Application for
`“SHADES OF GREY” is void and therefore should be withdrawn and that
`registration must be refused or canceled.
`WHEREFORE, Plaintiff prays for judgment against Defendants as follows:
`1.
`For a temporary restraining order and preliminary and permanent
`injunctions ordering Defendants, their agents, servants, employees, and attorneys,
`and all persons in active concert or participation with it to refrain from using and or
`seeking protection of the name or trademark “SHADES OF GREY” or “SHADES
`14 OF GREY BY MTCAH COHEN” or any other trademark, corporate name or
`tradename comprised in whole or in part of “SHADES OF GREY” or that is
`15
`otherwise confusingly similar to “SHADES OF GREIGE,” using Plaintiff’s
`Trademark, designs, patterns or photographs in order to sell Defendants’ line of
`product, diluting or otherwise injuring the reputation of Plaintiff or its Trademark.
`2.
`For actual and compensatory damages in an amount to be proven at the
`time of trial not less than $100,000.00;
`3.
`For Defendants’ profits and an accounting thereof, pursuant to
`15 U.S.C. § 1117(a);
`4.
`For restitution of all designs, patterns and other items misappropriated
`by Defendants from Plaintiff and disgorgement of profits wrongfully obtained by
`24
`25 Defendants by virtue of their unfair competition and intentional interference with
`economic relations;
`26
`III
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`/1/
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`1Ci1ALi ER NFER
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`13N59U0Y3 I
`(OE1PLAINT FOR TRADEMARK INFRINGEMENT. ETC.; DEMND FOR JURY TRIAL
`
`1 1
`
`

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`Case 2:10-cv03188DDP-FFM Document 1
`
`Filed 04/28/10 Page 12 of 16
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`5.
`For an order for destruction andlor elimination of all Accused Goods
`and advertising, brochures and other promotional material bearing the words
`“SHADES OF GREY” or “SHADES OF GREY BY MICAH COHEN”;
`6.
`For a declaratory judgment that Micah A. Cohen has abandoned any
`interest that he may have had in the trademark “SHADES OF GREIGE”;
`7.
`For a declaratory judgment that Defendants’ Trademark Application
`for “SHADES OF GREY” (Serial No. 77852023) is void and that registration must
`be refused or cancelled, and for an injunction requiring Defendants to withdraw
`said application;
`For treble damages for trademark infringement and false designation
`
`8.
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`of origin;
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`11.
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`17 DATED:
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`L ER N EtER
`•
`L’.
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`9.
`For exemplary and punitive damages against Defendants for their
`intentional interference with economic relations and against for Mr. Cohen for
`breach of his duty of loyalty;
`10.
`For an award of attorneys’ fees and costs as allowed by law; and
`For such other and further relief as this Court deems just and proper.
`April 28, 2010
`Russell L. Allyn
`Douglas M. Lipstone
`Buchalter Nemer
`
`rofessional Corporation
`
`By:__
`Attom vs for Plaintiff
`SWARM, LLC
`
`1’
`RN 5900931 v4
`(O’ilPLAIT FOR TRADENIARK 1NFRINGETENT. ETC.; DEvIAND FOR JURY TRIAL
`
`—
`
`

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`Case 2:10-cv-03188-DDP-FFM Document 1
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`Filed 04/28/10 Page 13 of 16
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`DEMAN1) FOR JURY TRIAL
`Pursuant to F.R.C.P. 3 8(b), Plaintiff hereby demands a trial by jury in this
`action of any issues triable by jury.
`
`Russell L. Allyn
`Douglas M. Lipstone
`Buchalter Neme
`Professional Corporation
`/1 /
`
`By:
`
`/ I
`(issell LJM1yn
`Attorneys for Plaintiff
`SWARM, LLC
`
`4 DATED:
`5
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`April 28, 2010
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`RLCHALTLR NEMER
`‘:,.e. TLW
`
`BN590093lv4
`(‘OMPLINT FOR TRADEMARK INFRINGEMENT. ETC.; DEMAND FOR JURY TRIAL
`
`3
`
`

`
`Case 2:10-cv-03188-DDP-FFM Document I
`
`FHed 04/28/10 Page 14 of 16
`
`UNITED STATES DISTRICT COURT
`CENTRAL IMSTRICT OF CALIFORNIA
`
`NOTICE OF ASSIGNMENT TO UNITED STATES MAGISTRATE JUDGE FOR DISCOVERY
`
`This case has been assigned to District Judge Dean D. Pregerson and the assigned
`discovery Magistrate Judge is Frederick F. Mumm.
`
`The case number on all documents filed with the Court should read as follows:
`
`CV1O- 3188 DDP (FFMx)
`
`Pursuant to General Order 05-07 of the United States District Court for the Central
`District of California, the Magistrate Judge has been designated to hear discovery related
`motions.
`
`All discovery related motions should be noticed on the calendar of the Magistrate Judge
`
`NOTICE TO COUNSEL
`
`A copy of this notice must be served with the summons and complaint on all defendants (if a removal action is
`filed, a copy of this notice must be served on all plaintiffs).
`
`Subsequent documents must be filed at the following location:
`
`[X] Western Division
`312 N. Spring St., Rm. G-8
`Los Angeles, CA 90012
`
`Southern Division
`411 West Fourth St., Rm. 1-053
`Santa Ana, CA 92701-4516
`
`u Eastern Division
`
`3470 Twelfth St., Rm. 134
`Riverside, CA 92501
`
`Failure to file at the proper location Will result in your documents being returned to you.
`
`CV-18 (03/06)
`
`NOTICE OF ASSIGNMENT TO UNITED STATES MAGISTRATE JUDGE FOR DISCOVERY
`
`

`
`Case
`
`fCoP,f1jL j
`
`CIVIL COVER SHEET
`
`21(9A9Nt of 16
`
`I (a) PLAINTIFFS (Check box. if you are representing yourself Q
`SWARM, LLC, a California limited liability company, dba
`Shades of Greige
`
`DEFENDANTS
`
`MICAH A. COHEN, an individual, dba Shades of Grey by Micah
`Cohen; and NANCY SIDONIE COHEN, an individual
`
`Attorneys (If Known)
`
`(b) Attorneys ( Firm Name. Address and Telephone Number. If you are representing
`yourself, provide same.)
`Russell L. Allyn (SBN: 143531), ral1yn@buchalter.com
`Douglas M. Lipstone (SBN: 141104); dlipstone@buchalter.com
`BUCHALTER NEMER, A Professional Corporation
`1000 Wilshire Blvd., Suite 1500
`L,os Angeles, CA 90017-2457
`Telephone: (213) 891-0700; Facsimile: (213) 896-0400
`II. BASIS OF JURISDICTION (Place an X in one box Only.)
`III. CITIZENSHIP OF PRINCIPAL PARTIES - For Diversity Cases Only
`(Place an X in one box for plaintiff and one for defendant.)
`
`El 1 U.S. Government Plaintiff 0 3 Federal Question (U.S.
`Government Not a Party
`
`Citizen of This State
`
`0 2 U.S. Government Defendant
`
`4 Diversity (Indicate Citizenship Citisen of Another State
`of Parties in Item Ill)
`
`PTF DEF
`0 I 0 1
`
`El 2 El 2
`
`p DEF
`4
`4
`
`Incorporated or Principal Place
`of Business in this State
`Incorporated and Principal Place fl5 Q 5
`of Business in Another State
`
`IV. ORIGIN (Place an X in one box only.)
`0 1 Original
`0 2 Removed from Q 3 Remanded from Q 4 Reinstated or Q 5 Transferred from another district (specify): 0 6 Multi- Q 7 Appeal to District
`Proceeding
`State Court
`Appellate Court
`Reopened
`District
`Judge from
`Litigation
`Magistrate Judge
`
`Citizen or Subject of a Foreign Country 0 3 [] 3
`
`Foreign Nation
`
`Q 6 El 6
`
`V. REQUESTED IN COMPLAINT: JURY DEMAND:
`Yes Q No (Check Yes only if demanded in complaint.)
`CLASS ACTION under F.R.C.P. 23:0 Yes
`No
`0 MONEY DEMANDED IN COMPLAINT: $
`til. 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.)
`15 U.S.C. § 1125 Trademark infringement; false designation of origin; unfair competition
`VIL NATURE OF SUIT (Place an X in one box only.)
`I
`
`.
`
`OTHER STATUTES
`CONTRACT
`TORTS
`TORTS
`PRISONER
`LABOR
`PERSONAL INJURY
`0 400 State Reapportionment
`PERSONAL
`PETITIONS
`110 Insurance
`0 710 Fair Labor Standards
`PROPERTY
`El 310 Airplane
`0 410 Antitrust
`:i 510 Motions to Vacate
`120 Marine
`Act
`315 Airplane Product El 370 Other Fraud
`0 430 Banks and Banking
`Sentence Habeas
`130 Miller Act
`720 Labor/Mgmt.
`I
`El 371 Truth in Lending
`Liability
`0 450 Commerce/ICC
`Corpus
`El 140 Negotiable Instrument
`Relations
`El
`0 320 Assault, Libel & 0 380 Other Personal
`530 General
`Rates/etc.
`0 150 Recovery of
`El 730 Labor/Mgmt.
`Property Damage : 535 Death Penalty
`Slander
`0 460 Deportation
`Overpayment &
`Reporting &
`:i 330 Fed. Employers’ 0 385 Property Damage 0 540 Mandamusl
`0 470 Racketeer Influenced
`Enforcement of
`Disclosure Act
`Liability
`Product Liability
`Judgment
`0 740 Railway Labor Act
`Other
`and Corrupt
`0 340 Marine
`] 151 Medicare Act
`: 550 Civil Rights
`BANKRUPTCY
`Organizations
`0 790 Other Labor
`22 Appeal 28 USC El 555 Prison Condition
`0 152 Recovery of Defaulted 0 345 Marine Product
`480 Consumer Credit
`Litigation
`158
`Liability
`0 490 Cable/Sat TV
`Student Loan (ExcI.
`FORFEfI’URE/ 0 791 EmpI. Ret. Inc.
`423 Withdrawal 28
`Q 350 Motor Vehicle
`Veterans)
`El 810 Selective Service
`Security Act
`PENALTY
`ID 355 Motor Vehicle
`USC 157
`153 Recovery of
`PROPERTY RIGI-ITS
`El 850 Securities/Commoditie