throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA363121
`ESTTA Tracking number:
`08/13/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91195747
`Defendant
`Consolidated Property Holdings, Inc.
`JOHN M. MUELLER
`TAFT STETTINIUS & HOLLISTER LLP
`425 WALNUT ST STE 1800
`CINCINNATI, OH 45202-3957
`
`trademark@taftlaw.com
`Motion to Suspend for Civil Action
`John M Mueller
`mueller@taftlaw.com
`/john m mueller/
`08/13/2010
`motion.pdf ( 3 pages )(324812 bytes )
`exhibita.pdf ( 38 pages )(7625035 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
`
`Opposition No. 9119574’?
`Ser. No. 77f722,6?2
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`The Echo Design Group, Inc.
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`Opposcr,
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`V-
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`Consolidated Property
`Holdings, Inc.
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`Applicant.
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`Attn: BOX TTAB NO FEE
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`US. Patent and Trademark Office
`PO. Box 1451
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`Alexandria, VA 22313-1451
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`NOTICE OF PENDING CIVIL ACTIONKRE UEST FOR SUSPENSION
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`Pursuant to the TTAB’s Initiation and Scheduling Order dated July 21, 2010,
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`Applicant Consolidated Property Holdings Inc, by and through its undersigned counsel
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`herein, notifies the Board that Opposer and Applicant are parties to Civil Action 1:10 —
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`CIV 5799 filed on August 2, 2010 in the Southem District of New York. A copy of the
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`Complaint in that case is attached as Exhibit A. Given the allegations in the co-pending
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`civil action, Applicant contends that the disposition of the civil action may be dispositive
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`of the present Opposition and will be binding on this Board. Accordingly, Applicant
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`respectfully requests suspension of the present action under TBMP §S l 0.02(a).
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`

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`Respectfully submitted,
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`Consolidated Property Holdings, Inc.
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`
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`Taft, Stettinius and Hollister LLP
`425 Walnut Street
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`Suite 1800
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`Cincinnati, Ohio 45202-3957
`mue11er@taftlaw.eom
`Tel (513) 357-9610
`Fax (513) 381-0205
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`

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`CERTIFICATE OF MAILING AND SERVICE
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`The undersigned hereby certifies that the foregoing NOTICE OF PENDING
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`CIVIL ACTION/REQUEST FOR SUSPENSIONAPPLlCANT’S ANSWER TO
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`NOTICE OF OPPOSITION is being deposited with the United States Postal Service with
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`sufficient postage as first class mail on August 13, 2010 addressed as follows:
`
`Vincent A. Sircci
`
`The Echo Design Group, Inc.
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`10 East 40*“ Street 10016-0296
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`New York, NY 10016-0296
`
` ‘Jo n M. Mueller
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`ttomey for Applicant
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`

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`EXHIBITA
`
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`UNITED STATES Disrguoaneobnr
`SOUTHERN DISTRICT or NEW YORK
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`01° .
`~ COMPLAINT
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`JURY TRIAL DEMANDED
`
`TI-IE ECHO DESIGN GROUP, INC.,
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`Plaintiff,
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`V‘
`BIG LOTS, INC., BIG LOTS STORES, INC.
`and CONSOLIDATED PROPERTY
`HOLDINGS, INC.,
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`Plaintiff The Echo Design Group, Inc. (“Echo Design” or “Plaintiff”) alleges the claims
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`set forth below as its complaint against. Defendants Big Lots, Inc., Big Lots Stores, Inc. and_._,_,
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`Consolidated Property Holdings, Inc. (collectively, “Big Lots” or “Defendants”).
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`NATURE or THE ACTION
`This action arises out of Defendants’ knowing and willful use of names iiiid logos ’;i L
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`1.
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`that are confusingly similar to and infringe Plaintiff Echo Design’s well-known name and
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`trademarks for its home furnishing products and fashion accessories.
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`2.
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`Echo Design, beginning with its founders Edgar C. and Theresa Hyman, and
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`continuing with their daughter and now with their grandson and granddaughter, have spent over
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`eighty~five years developing and selling high-quality fashion accessories and, more recently,
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`home furnishing products under the trademarked name, ECHO. A few months ago, Echo Design
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`learned that Defendants are selling home furnishing products in their Big Lots stores using the
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`name “Echo Point” in an attempt to capitalize on the ECHO name and mark, the Echo Design
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`trade name and product line, and benefit from the reputation and goodwill that Echo Design has
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`worked hard to achieve in the marketplace.
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`3.
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`By using a confusingly similar name to Echo Design’s ECHO name and mark on
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`the same line of products sold by Echo Design, Big Lots infringes Echo Design’s ECHO name,
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`federally registered and common law marks, engages in false designation of origin and unfair
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`competition in violation of federal and state law, dilutes Echo Design’s marks in violation of
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`federal and state law and engages in deceptive trade practices in Violation of New York law.
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`4.
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`Echo Design seeks an injunction prohibiting Big Lots from improperly using the
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`name “Echo Point” alone or in conjunction with other words or designs, as well as any other
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`names or marks that are confusingly similar to the ECHO name and federally registered
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`trademarks and common law marks. Echo Design further seeks damages, including treble
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`damages for willful infringement, lost profits, punitive damages and payment of its reasonable
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`attorneys’ fees.
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`In addition, Echo Design seeks an injunction prohibiting Defendant
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`Consolidated Property Holdings, Inc. from pursing andfor prosecuting its United States
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`Trademark Application Serial No. 77F/'22,6?2 to register “Echo Point” as a United States
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`trademark for certain home furnishing products.
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`THE PARTIES
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`5.
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`Plaintiff The Echo Design Group, Inc. is a corporation organized and existing
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`under the laws of New York, located and having a principal place of business at 10 East 40th
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`Street, New York, New York.
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`6.
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`Upon information and belief, Defendant Big Lots, Inc. is a corporation organized
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`and existing under the laws of Ohio, having a principal place of business at 300 Phillipi Road,
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`Columbus, Ohio.
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`7.
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`Upon information and belief, Defendant Big Lots Stores, Inc. is a corporation
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`organized and existing under the laws of Ohio, having its principal place of business at 300
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`Phillipi Road, Columbus, Ohio, and is the primary operating subsidiary of Big Lots, Inc.
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`8.
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`Upon information and belief, Defendant Consolidated Property Holdings, Inc. is a
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`corporation organized and existing under the laws of Nevada, having its principal place of
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`business at 330 East Warm Springs Road, Las Vegas, Nevada, and is the intellectual property
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`holding subsidiary of Big Lots, Inc.
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`JURISDICTION AND VENUE
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`9.
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`This Court has original jurisdiction over the subject matter of this action pursuant
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`to 28 U.S.C. §§ 1331 and 1333 because this case arises under the Lanham Act, 15 U.S.C.
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`§§ 1051 elseq.
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`10.
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`This Court also has original jurisdiction over this action pursuant to 28 U.S.C.
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`§ l332(a). Plaintiff is a citizen of a different State than any of the Defendants and the matter in
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`controversy exceeds the sum or value of $75,000, exclusive of interest and costs.
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`1 1.
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`This Court has supplemental jurisdiction over the state law claims pursuant to 28
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`U.S.C. § I36’? and the doctrine of supplemental jurisdiction.
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`12.
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`This Court has personal jurisdiction over the Defendants because, upon
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`information and belief, the Defendants transact business within the State of New York, contract
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`to supply goods or services in the State of New York, and have engaged in tortious acts within
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`the State of New York.
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`13.
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`Venue is proper in this Court pursuant to 28 U.S.C. § 1391(b) and (c) because, in
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`addition to the Court’s personal jurisdiction over Defendants, a substantial part of the events and
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`injury giving rise to Echo Design’s claims has and continues to occur in this district.
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`FACTUAL ALLEGATIONS COMMON TO ALL CLAIMS
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`Echo Design’s Use of the ECHO Marks
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`14.
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`Echo Design was founded in 1923 by Edgar C. and Theresa Hyman, and
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`continues as a family-owned business to this day. The company’s headquarters have always
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`been located in Manhattan, New York. From its modest beginnings as a manufacturer of
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`handmade ladies’ scarves, Echo Design has grown into one of the world’s leading design
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`companies of home furnishing products and fashion accessories and a large and prosperous
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`business with both nationwide and international reach.
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`15.
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`Echo Design currently manufactures and sells bedding, rugs, throws, pillows, wall
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`coverings, fabrics, paper products, bath products, home decorative books, world-renowned fine
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`scarves, cold weather fashion accessories (e. g. , gloves, hats and wraps), handbags, beachwear,
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`swimwear, fragrances and perfumery, rainwear and umbrellas, among other products (the
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`“ECHO Products”).
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`16.
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`Beginning shortly after its founding, Echo Design’s products have proudly and
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`continuously borne the company’s signature trademark, ECHO (the “ECHO Trademark”). The
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`name ECHO originated from the name of its founder: the Edgar Q. flyman C_Q. Beginning in
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`the 19203 with high-fashion scarves, Echo Design has continuously expanded the line of
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`products sold under the ECHO Trademark. In the past few decades, Echo Design’s line of goods
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`sold under the ECHO Trademark has grown to include the ECHO Products referenced above.
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`1?.
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`Echo Design is the owner and holder of twenty—four registered trademarks using
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`the term ECHO, beginning with its tirst registration in 1950 (collectively, the “ECHO Marks”).
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`True and correct copies of a representative selection of Echo Design’s earlier federal trademark
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`registrations and its registrations covering its home fumishing products are attached hereto as
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`Exhibit A.
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`18.
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`Of the selection of marks included in Exhibit A, Echo Design’s Federal
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`Trademark Registration Nos. 524,118; 1,184,921; 1,335,837; 2,080,360 and 2,646,159 are in full
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`force and effect on the Principal Trademark Register and have become incontestable pursuant to
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`15 U.S.C. § 1065. As such, those trademark registrations constitute conclusive evidence of the
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`validity and ownership of those ECHO Trademarks. Echo Design’s Federal Trademark
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`Registration Nos. 3,532,354 and 3,600,069 are in full force and effect on the Principal
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`Trademark Register and constitute primafacie evidence of the validity and ownership of those
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`ECHO Trademarks.
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`19.
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`Echo Design is also the owner of six pending United States Trademark
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`Registration applications incorporating the term ECHO for use in home furnishing products.
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`20.
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`At least as early as October 1984, when Echo Design changed its name from Echo
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`Scarfs, Inc. to The Echo Design Group, Inc., Plaintiff has been using as a trade name, and been
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`known by its customers and the trade as, “Echo Design.”
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`21.
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`Since at least as early as February 2008, Echo Design has, in addition to its
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`registered ECHO Marks and common law ECHO trademarks, used the common law trademark
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`ECHO DESIGN on its line of home furnishing products and fashion accessories. (ECHO Marks
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`and the ECHO and ECHO DESIGN common law marks are hereinafter collectively referred to
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`as the “ECHO family of marks”)
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`22.
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`Echo Design maintains strict control over the nature and quality of merchandise
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`bearing the ECHO family of marks.
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`23.
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`Home furnishings and fashion accessories bearing the ECHO family of marks are
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`sold in high-end department stores and specialty stores including, Nordstrom, Bloomingdale’s,
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`Macy’s, Saks, Lord & Taylor, Ritz Carlton Resorts, Four Seasons Resorts, Rosewood Resorts,
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`Bed Bath & Beyond, Dillard’s and Neiman Marcus Direct. Additionally, Echo Design sells
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`products bearing the ECHO family of marks directly to customers through its website,
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`www.echodesign.com.
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`24.
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`Echo Design also designs custom accessories for some of the most prestigious
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`names in the corporate, retail and museum worlds, such as Ralph Lauren, and is known for its
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`unique use of print, pattern and color.
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`25.
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`In addition, Echo Design sells a limited amount of excess inventory to closeout or
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`clearance retailers, such as T.J. Maxx, Home Goods and Century 21.
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`26.
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`Merchandise designed, manufactured, imported and/or sold by Echo Design and
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`bearing one or more of the ECHO family of marks has been advertised and sold throughout the
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`United States and within the State of New York and this district.
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`27.
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`Echo Design has invested a substantial amount of time and resources to build
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`goodwill in the ECHO family of marks. It now has a portfolio far exceeding thirty trademarks,
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`each of which is comprised of the distinctive EC}-IO Trademark and includes marks that are
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`federally registered as well as common law marks.
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`28.
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`The unifying and distinguishing component of the ECHO family of marks is the
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`distinctive term ECHO. The ECHO family of marks is thus an extremely important and valuable
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`asset to Echo Design, and is closely identified with high-quality home products, apparel and
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`fashion accessories by longstanding customers of the company.
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`29.
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`As a result of the continuous use, extensive sales and significant advertising and
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`promotional activities under the ECHO family of marks, they have become recognized by the
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`relevant public and the trade as identifying Echo Design’s unique and valued home furnishings
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`and fashion accessories.
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`30.
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`Over the years Echo Design has spent millions of dollars in promoting its goods
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`under the ECHO family of marks. This includes a marketing staff, the retention of an advertising
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`agency, public relations firm and independent merchandisers to promote the ECHO brand, and
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`significant expenditures on print advertisements, direct marketing and attendance at a number of
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`important trade shows.
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`31.
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`Echo Design has spent, and will continue to spend, substantial sums of money in
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`advertising and promoting its goods bearing the ECHO family of marks. The ECHO family of
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`marks uniquely identify Echo Design as the source of the goods and have achieved substantial
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`secondary meaning in the marketplace. Echo Design has significant goodwill vested in the
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`ECHO family of marks.
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`32.
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`As a result of Echo Design’s dedication to quality and its aggressive marketing,
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`the goodwill associated with the ECHO family of marks has translated into hundreds of millions
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`of dollars in sales over the years. In the past ten years alone, wholesale sales of branded ECHO
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`Products have exceeded $300 million.
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`33.
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`Although Echo Design’s origins are in high-fashion scarveswwhich it continues
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`to produce today~-throughout the years Echo Design has continuously expanded and
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`strengthened its ECHO brand. Today, Echo Design stands as an industry leader in the world of
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`fashion accessories, including, in addition to scarves, such products as cold-weather wraps, hats,
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`gloves, handbags, beachwear, swimwear and rainwear.
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`34.
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`For the past two decades, Echo Design has expanded into designer home
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`furnishing products. Echo Design launched its own home design collection in 1992, and
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`currently sells a complete line of high-fashion bedding, rugs, throws, pillows, wallpaper and wall
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`coverings, decorative fabrics and trim, bath products and paper goods under the ECHO family of
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`marks. Echo Design intends to continue this expansion into other home furnishings. A trade
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`journal article from May 2008 examining Echo Design’s natural expansion into home furnishing
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`products is attached hereto as Exhibit B.
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`35.
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`To further promote the sale and notoriety of the goods bearing the ECHO family
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`of marks, Plaintiff maintains an Internet website with the domain name www.echodesign.c0m.
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`Echo Design incurred substantial expense in the development and production of the
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`www.echodesign.com website, which contains images and information pertaining to Echo
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`Design, a limited assortment of home furnishings and fashion accessories bearing the ECHO
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`family of marks available for purchase by consumers, and a blog in which Echo Design and its
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`customers can exchange information pertaining to the merchandise sold by Echo Design.
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`36.
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`As a result of long, continuous use and extensive advertising and promotion of the
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`ECHO family of marks, those marks, and particularly the term ECHO, have come to be
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`identified with Echo Design.
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`Big Lots’ Use of the “Echo Point” Name
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`37.
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`On information and belief, Big Lots is a broad line, closeout retailer engaged in
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`the sale of a wide assortment of items throughout the United States through their Big Lots retail
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`stores. More recently, Big Lots has added a house-branded line of home furnishing products to
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`their inventory, under the name “Echo Point.”
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`38.
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`On or about April 2?, 2009, Consolidated Property Holdings, Inc., the intellectual
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`property holding subsidiary of Big Lots, Inc., filed an application with the United States Patent
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`and Trademark Office for the name “Echo Point” (U.S. Trademark Application Serial No.
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`77x’722,672) for rugs, pillows, comforters, curtains, silverware, potpourri, candles, lamps, clocks,
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`jewelry boxes, picture frames, foot stools, furniture, bowls and baskets (“Echo Point Trademark
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`Application”). The Echo Point Trademark Application lists a date of first use of February 28,
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`2009.
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`39.
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`Earlier this year, a page of the www.biglots.com website depicted an
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`advertisement for Big Lots’ “Echo Point” merchandise that consisted of a “60% Off“ banner in
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`conjunction with the words “Echo Point” and images of a sampling of the merchandise sold by
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`Big Lots under the “Echo Point” brand.
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`40.
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`Big Lots has used the “Echo Point” name on an assortment of home furnishing
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`products, including bedding, rugs, throws, pillows, wall coverings, prints, placemats, clocks,
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`lamps, curtains, baskets and frames. 011 information and belief, those products continue to be
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`sold at Big Lots stores throughout the country, and, in particular, within this district.
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`41.
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`The products bearing the “Echo Point” name are inferior in quality to the ECHO
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`Products and are sold at a deeply discounted price as compared to that of the retail ECHO
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`Products.
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`42.
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`Big Lots’ home furnishing products bearing “Echo Point” are promoted and
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`advertised in the substantially same channels of trade to the substantially same class of
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`consumers as some of Echo Design’s home furnishing products, in particular because Echo
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`Design’s excess inventory is sold through similar closeout or clearance retailers.
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`Similarig Between ECHO and “Echo Point”
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`43.
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`Big Lots’ “Echo Point” name, incorporating the term “Echo,” is substantially
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`similar to Plaintiffs ECHO family of marks, and particularly the original Echo Trademark
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`written in script font shown below from Registration No. 524,1 18:
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`44.
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`The most prominent feature of Big Lots’ “Echo Point” name, as shown below, is
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`the word “Echo” written in a script font nearly identical to the appearance of the original Echo
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`Trademark:
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`45.
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`The “Echo Point” logo above uses a pronounced, script “Echo,” followed by the
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`smaller word, “Point,” in block letters. As is evident from Big Lots’ use of the ECHO
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`Tradema.rk~-in its original script form-—as the dominant feature of the “Echo Point” name, Big
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`Lots has taken Echo Design’s oldest ECHO Trademark and is attempting to capitalize from the
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`notoriety and good will associated with the ECHO Trademark to sell Big Lots’ home furnishing
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`products. A copy of Big Lots’ use of the “Echo Point” name on a product label is attached
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`hereto as Exhibit C.
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`46.
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`Big Lots’ use of “Echo Point” on home furnishing products is likely to cause
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`confusion, mistake or deception of customers and potential customers as to the source or origin
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`of the Big Lots merchandise. Big Lots’ actions are likely to cause damage to the reputation and
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`goodwill of Echo Design and have caused and are likely to cause confusion as to the existence of
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`an association or relationship between Echo Design and Big Lots such that the consuming public
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`might come to believe that “Echo Point” is a brand of or associated with Echo Design.
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`47.
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`On information and belief, the actions of Big Lots have caused and continue to
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`cause actual confusion in the marketplace. Customers have mistakenly believed that Big Lots’
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`inferior “Echo Point” products are associated with Echo Design.
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`48.
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`Some customers have expressed their displeasure with the quality of the “Echo
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`Point” products on an lntemet blog.
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`49.
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`Upon infomiation and belief, customers have purchased Big Lots’ “Echo Point”
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`products under the mistaken belief that they are, or are associated with, Echo Design and its
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`products.
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`50.
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`Upon information and belief, Big Lots, with full knowledge of Echo Design’s
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`ownership and use of the ECHO family of marks and the www.echodesign.com website, used a
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`confusingly similar mark, in conjunction with their line of home furnishing products, with the
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`purpose of embarking upon a malicious and intentional scheme and plan to mislead and deceive
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`the public and unfairly trade upon and appropriate to themselves Echo Design’s goodwill.
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`S1.
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`The confusion engendered in the marketplace by Big Lots’ deliberate
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`infringement of the ECHO Marks and ECHO family of marks has caused -substantial damage to
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`Echo Design’s reputation and goodwill.
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`Echo Desigg Sends Big Lots a Cease-and-Desist Letter
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`52.
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`On or about May 12, 2010, shortly after learning of the existence of “Echo Point,”
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`Echo Design sent a cease—and—desist letter to Big Lots’ counsel, demanding that Big Lots cease
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`all use of their confusingly similar “Echo Point” name on their home furnishing products in the
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`United States and that they abandon their pending Echo Point Trademark Application in the
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`United States.
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`53.
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`On or about May 17, 2010, Big Lots’ counsel responded by telephone, indicating
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`that Big Lots did not intend to change their use of the “Echo Point” name or their goal of
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`obtaining a Federal Trademark Registration for “Echo Point.”
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`54.
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`On information and belief, through the date of this Complaint, Big Lots continues
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`to sell home fumishing products bearing the “Echo Point” name in Big Lots stores within the
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`United States.
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`Infrin ement of Re istered Trademarks Pursuant to 15 U.S.C.
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`1114
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`FIRST CLAIM FOR RELIEF
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`55.
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`Echo Design repeats and realleges the allegations set forth in Paragraphs 1
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`through 54 hereof, as if fully set forth herein.
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`56.
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`Echo Design is the owner of the ECHO Marks, which are used to identify and
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`promote its home furnishing and fashion accessory products and related goods and services, and
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`which are distinctive and have acquired secondary meaning.
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`57.
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`Defendants wrongfully have used and are using in interstate commerce the “Echo
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`Point” name, which is confusingly similar to the ECHO Marks, to identify and promote their
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`home fumishing products and related goods and services in interstate commerce, without Echo
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`Design’s consent.
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`58.
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`Defendants’ unauthorized imitation of the ECHO Marks and distribution of
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`inferior goods bearing these marks are likely causing and will continue to cause confusion or
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`‘mistake as to the source of Defendants’ goods and services, and as to the sponsorship andfor
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`affiliation with Echo Design.
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`59.
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`Defendants’ unauthorized imitation of the ECHO Marks and distribution of
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`inferior goods hearing this imitation constitute trademark infringement under Section 32 of the
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`Lanham Act, 15 U.S.C. § 1114.
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`60.
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`Upon information and belief, Defendants have realized sales, profits and
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`economic gain through their use, promotion, sale and marketing of products under the
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`deceptively similar name, “Echo Point.”
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`61.
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`Echo Design has requested Defendants to cease and desist from their acts of
`
`infringement and has given Defendants actual notice of Echo Design’s registrations of the ECHO
`
`Marks, but Defendants have refused to cease such acts.
`
`62.
`
`Upon information and belief, Defendants’ acts of infringement have been
`
`committed willfully and knowingly with the intent to cause confusion or mistake or to deceive.
`
`63.
`
`Defendants’ actions and conduct complained of herein have damaged Echo
`
`Design and the ECHO Marks, and, unless and until Defendants’ infringing conduct is enjoined,
`
`the value and reputation of Echo Design and the ECHO Marks, and the goodwill associated with
`
`them, will suffer irreparable injury for which Plaintiffs have no adequate remedy at law.
`
`64.
`
`Echo Design should be awarded damages in an amount to be determined at trial
`
`for the injuries sustained by Echo Design in consequence of the Defendants’ acts complained of
`
`herein, including, but not limited to, lost profits and injury to Echo Design’s reputation, and such
`
`damages should be trebled because of the willful acts described herein in disregard of Echo
`
`Design’s known rights. Defendants should also be ordered to account for and pay over to Echo
`
`Design all gains, profits and advantages derived by Defendants from the acts complained of
`
`herein.
`
`65.
`
`In addition, as a result of Defendants’ wrongful conduct, Echo Design and the
`
`public are entitled to an order from this Court permanently enjoining Defendants from pursuing
`
`ny—933687
`
`13
`
`

`
`and/or prosecuting the registration of the mark described in the Echo Point Trademark
`
`Application or any similar application for trademark registration in the United States.
`
`{Unfair Competition and False Designation of Origin Pursuant to 15 U.S.C. § l125(a)1
`
`SECOND CLAIM FOR RELIEF
`
`66.
`
`Echo Design repeats and realleges the allegations set forth in Paragraphs 1
`
`through 65 hereof, as if fully set forth herein.
`
`6?.
`
`Echo Design’s claim hereunder arises under Section 43(a) of the Lanham Act, 15
`
`U.S.C. § I12S(a), for trademark infringement, unfair competition, false designation of origin and
`
`false description and representation in commerce.
`
`68.
`
`Echo Design has engaged in and continues to engage in interstate activities
`
`designed to promote the goods and goodwill associated with the ECHO family of marks and the
`
`Echo Design trade name in interstate commerce and to expand the use and reputation of the
`
`ECHO family of marks and the Echo Design trade name throughout the United States.
`
`69.
`
`Echo Design has expended substantial sums of money to build, maintain and
`
`extend its reputation and the reputation of the ECHO family of marks and the Echo Design trade
`
`name.
`
`70.
`
`The ECHO family of marks, including the original ECHO Trademark, and the
`
`Echo Design trade name are known across the United States as identifying and distinguishing the
`
`goods of Echo Design.
`
`7].
`
`Echo Design has provided and sold goods in interstate commerce utilizing the
`
`ECHO family of marks, including the original ECHO Trademark, and the Echo Design trade
`
`name, and has realized substantial income from the provision and sale of goods bearing the
`
`EC}-IO family of marks and the Echo Design trade name.
`
`ny—93368’?
`
`14
`
`

`
`72.
`
`As a result of the foregoing, the ECHO family of marks, including the original
`
`ECHO Trademark, and the Echo Design trade name are well recognized, distinctive and famous
`
`among consumers and retailers, and have acquired secondary meaning.
`
`73.
`
`Defendants have offered and sold goods and services in interstate commerce with
`
`the designation and representation “Echo Point,” including prominently utilizing a script font for
`
`the word “Echo,” nearly identical to the original ECHO Trademark.
`
`?4.
`
`The name “Echo Point,” and the prominence of the word “Echo” in a script font
`
`in particular, is confusingly similar and has a similar commercial impression to the ECHO family
`
`of marks, including the original ECHO Trademark, and the Echo Design trade name.
`
`75.
`
`Defendants use the name “Echo Point” to sell products in the same product
`
`category and market as certain ECHO Products and to the same customers who are likely to
`
`purchase ECHO Products.
`
`76.
`
`Defendants’ aforesaid acts are in violation of Section 43(a) of the Lanham Act in
`
`that Defendants have used in connection with goods or services a false designation of origin,
`
`andfor a false or misleading description and representation in commerce, that is likely to cause
`
`confusion or mistake, or to deceive as to the affiliation, connection or association of Defendants
`
`with Echo Design, or as to the origin, sponsorship and approval of Defendants’ goods, services
`
`and commercial activities by Echo Design.
`
`77.
`
`Upon information and belief, Defendants have realized sales, profits and
`
`economic gain through their use, promotion, sale and marketing of products under the
`
`deceptively similar name, “Echo Point.”
`
`I 78.
`
`The aforesaid acts have enabled Defendants to misappropriate the labors and
`
`expenditures of Echo Design in developing the market for home furnishing products and related
`
`goods and services.
`
`my-93368’?
`
`15
`
`

`
`79.
`
`Given Defendants’ knowledge that the “Echo Point” name is confusingly similar
`
`to the ECHO family of marks, including the original ECHO Trademark, and the Echo Design
`
`trade name, upon information and belief, Defendants’ acts have been committed willfully and
`
`knowingly with the intent to cause confusion or mistake or to deceive.
`
`80.
`
`Echo Design has been and continues to be damaged by Defendants’ activities and
`
`conduct. Defendants have profited and will continue to profit thereby, and unless and until their
`
`conduct is enjoined, Echo Design and its goodwill and reputation will suffer irreparable injury
`
`for which Plaintiffs have no adequate remedy at law.
`
`8!.
`
`Echo Design should be awarded damages in an amount to be determined at trial
`
`for the injuries sustained by Echo Design in consequence of the Defendants’ acts complained of
`
`herein, including, but not limited to, lost profits and injury to Echo Design’s reputation, and such
`
`damages should be trebled because of the willfiil acts described herein in disregard of Echo
`
`Design’s known rights. Defendants should also be ordered to account for and pay over to Echo
`
`Design all gains, profits and advantages derived by Defendants from the acts complained of
`
`herein.
`
`82.
`
`In addition, as a result of Defendants’ wrongful conduct, Echo Design and the
`
`public are entitled to an order from this Court permanently enjoining Defendants from pursuing
`
`andfor prosecuting the registration of the mark described in the Echo Point Trademark
`
`Application or any similar application for trademark registration in the United States.
`
`THIRD CLAIM FOR RELIEF
`
`§Federal Trademark Dilution Pursuant to 15 U.S.C. § 1l25|c[[
`
`83.
`
`Echo Design repeats and realleges the allegations set forth in Paragraphs 1
`
`through 82 hereof, as if fully set forth herein.
`
`84.
`
`This claim for trademark dilution arises under Section 43(c) of the Lanharn
`
`Trademark Act, 15 U.S.C. § 1125(0).
`
`ny-933687
`
`16
`
`

`
`85.
`
`Plaintiff’ s ECHO family of marks are strong marks with both inherent and
`
`acquired distinctiveness, and are famous marks, based upon Echo Desigrfs extensive, continuous
`
`and exclusive use and nationwide promotion of the marks in association with its services, since
`
`at least as early as 1928, with respect to scarves, 1950 with respect to other fashion accessories,
`
`and 1992, with respect to home furnishings.
`
`86.
`
`Echo Design has expended substantial sums of money to build, maintain and
`
`extend its reputation and the reputation and awareness of the ECHO family of marks, which are
`
`widely recognized by retailers and consumers.
`
`87.
`
`As a result of its efforts, Echo Design derives significant revenue from the sales
`
`of goods and services offered under the ECHO family of marks.
`
`88.
`
`The ECHO family of marks acquired their strength, distinctiveness and fame
`
`before Defendants began using the name “Echo Point,” which prominently utilizes and displays
`
`the ECHO Trademark.
`
`89.
`
`Defendants’ use of the name “Echo Point” on their inferior-quality products
`
`intentionally creates an association with Plaintiffs distinctive and famous ECHO family of
`
`marks, including the original ECHO Trademark, and is diluting the distinctive quality and
`
`harming the reputation of the ECHO family of marks in violation of the Federal Trademark
`
`Dilution Act, 15 U.S.C. § 1l25(c).
`
`90.
`
`Defendants’ acts have lessened, or are likely to lessen, the capacity of Echo
`
`Design’s famous and distinctive ECHO family of marks to identify and distinguish the goods of
`
`Echo Design. Defendants’ acts have blurred, or are likely to blur, the unique association that has
`
`heretofore existed between Echo Design’s ECHO family of marks and goods manufactured and
`
`sold by Echo Design.
`
`ny-933687
`
`17
`
`

`
`91.
`
`Upon information and belief, Defendants have willfully traded on Echo Design’s
`
`reputation and have willfully diluted Echo Design’s famous ECHO family of marks.
`
`92.
`
`Echo Design has been, and is likely to be, irreparably damaged by Defendants’
`
`activities alleged herein in an amount which cannot be determined without an accounting, and
`
`damage will c

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