Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`91208653
`
`Plaintiff
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`DM Luxury, LLC
`ROBERT B BURLINGAME
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`PO BOX 2824
`SAN FRANCISCO, CA 94126-2824
`UNITED STATES
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`sftrademarks@pi||sbury|aw.com, rbur|ingame@pi||sbury|aw.com
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`Motion to Suspend for Civil Action
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`Robert B. Burlingame
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`rburlingame@pi||sbury|aw.com, sftrademarks@pi||sbury|aw.com
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`/Robert B. Burlingamel
`08/29/2013
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`8-29-13 Motion to Suspend.pdf(3669714 bytes)
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA556962
`ESTTA Tracking number:
`08/29/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91208653
`Plaintiff
`DM Luxury, LLC
`ROBERT B BURLINGAME
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`PO BOX 2824
`SAN FRANCISCO, CA 94126-2824
`UNITED STATES
`sftrademarks@pillsburylaw.com, rburlingame@pillsburylaw.com
`Motion to Suspend for Civil Action
`Robert B. Burlingame
`rburlingame@pillsburylaw.com, sftrademarks@pillsburylaw.com
`/Robert B. Burlingame/
`08/29/2013
`8-29-13 Motion to Suspend.pdf(3669714 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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`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`Opposition No. 91208653
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`Mark: THAT’S MODERN LUXURY
`Ser. No.: 85421117
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`________________________________
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`DM Luxury, LLC,
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`Opposer,
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`vs.
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`Celebrity Cruises Inc.,
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`Applicant.
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`________________________________
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`MOTION TO SUSPEND PENDING FINAL DISPOSITION OF CIVIL ACTION
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`Pursuant to 37 C.F.R. § 2.117(a) and T.B.M.P. Section 510.02(a), DM Luxury, LLC
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`(“Opposer”) hereby requests that the Trademark Trial and Appeal Board (“Board”) suspend the
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`above-identified Opposition proceeding pending the final disposition of the parties’ related civil
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`action in the United States District Court for the Northern District of Illinois.
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`On August 29, 2013, Opposer filed a civil lawsuit against Applicant in the United States
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`District Court for the Northern District of Illinois (see attached copy of the Civil Cover Sheet and
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`the Complaint). The civil action has been assigned Case No. 1:13-cv-06177 and involves issues
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`in common with those before the Board in this Opposition proceeding. The decision in the civil
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`action will likely be dispositive of this Opposition proceeding and binding upon the Board.
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`Per 37 C.F.R. § 2.117(a), it is the policy of the Board to suspend proceedings when the
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`parties are involved in a civil action which may be dispositive of or have a bearing on the Board
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`case. Opposer therefore respectfully requests:
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`1)
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`that the Board suspend this Opposition proceeding (retroactive to the date of this
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`Motion) pending final disposition of the civil action between the parties; and
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`404092884v1
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`2)
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`in the event this Motion is granted and this Opposition proceeding is later
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`resumed following the final disposition of the civil action between the parties, that the Board
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`provide the parties with an additional 30 days to complete discovery if and when the Opposition
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`proceeding is resumed.
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`Respectfully submitted,
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`DM Luxury, LLC
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`By:________________________
`Robert B. Burlingame
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`Four Embarcadero Center, 22nd Floor
`San Francisco, CA 94111
`(415) 983-1274
`SFtrademarks@pillsburylaw.com
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`Thank you.
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`Date: August 29, 2013
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`404092884v1
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`- 2 -
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`Opposition No. 91208653
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`PROOF OF SERVICE BY EMAIL
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`I, Robert B. Burlingame, the undersigned, hereby certify and declare under
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`penalty of perjury that the following statements are true and correct:
`1.
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`I am over the age of 18 years and am not a party to the within cause. I am
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`employed by Pillsbury Winthrop Shaw Pittman LLP in San Francisco, CA.
`2.
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`My business address is Four Embarcadero Center, 22nd Floor, San
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`Francisco, CA 94111. My mailing address is P.O. Box 2824, San Francisco, CA
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`94126-2824. My email address is rburlingame@pillsburylaw.com.
`3.
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`On August 29, 2013, I served a true copy of the attached “MOTION TO
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`SUSPEND PENDING FINAL DISPOSITION OF CIVIL ACTION” upon
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`Applicant’s attorney Ronald E. Shapiro by email (as previously agreed) to
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`rshapiro@sasiplaw.com.
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`Executed this 29th day of August, 2013, at San Ramon, California.
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`________________________________
`Robert B. Burlingame
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`404092884v1
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`- 3 -
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`Page 1 of 2 PagelD #:59
`Case: 1:13—cv-06177
`I844 (Rev, 3,13)
`The .1S 44 civil cover sheet and the information contained herein neither re lace nor supplement the filin and service ofpleadings or other papers as re uired by law, except as
`provided by local rules ofcourt. This form, approved by the Judicial Con erence of the
`nited States in eptember 1974, is required for the use of the
`lerk of Court for the
`purpose of initiating the civil docket sheet.
`(SEE 1NS’I'RUCTIONS ON NI:‘X'1'PAGl9,'0F THIS FORM.)
`I. (a) PLAINTIFFS
`DEFENDANTS
`DM LUXURY, LLC
`CELEBRITY CRUISES, INC.
`
`(b) County of Residence of First Listed Plaintiff COOK COUMY
`(EXCEPTIN U.S. PLAINTIFF CASES)
`
`Miami-Dade COUMY
`County of Residence of First Listed Defendant
`(IN U.S. PLAINTIFF CASES ONLY)
`NOTE:
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
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`(C) Attorneys (Firm Name, Addresr, and Telephone Number)
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`Al10me}’5 (]fK"0W")
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`(see attachment)
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`II. BASIS OF JURISDICTION (Place an "X" in One Box Only)
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`1 U.S. Government
`Plaintiff
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`J 3 Federal Question
`(U.S. Gaver/1memNoI a Party)
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`2 US Government
`Defendant
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`4 Diversity
`(Indicate Cilizensliip ofParIies in Item 11/)
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`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an "X" in Oi1e BoxforPla/‘mifl
`(For Diversity Ca.res On/)9
`and One Boxfor Defendant)
`PTF
`P;[‘F
`DEF
`1
`4
`
`DEF
`
`I
`
`of Business In This State
`Incorporated or Principal Place
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`4
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`Citizen of This State
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`Citizen of Another State
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`Citizen or Subject of a
`Foreign Country
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`2
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`3
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`2
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`3
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`Incorporated and Principal Place
`of Business In Another State
`Foreign Nation
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`5
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`6
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`_ 5
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`6
`
`
`lace an “X" in One B
`ax Only)
`IV NATURE OF SUIT (P
`~
`ToRTs'.,~w~'
`~
`’
`'
`5
`CONTRACT I:
`~ A
`
`
`PERSONAL INJURY
`PERSONAL INJURY
`Cl 110 Insurance
`CI 375 False Claims Act
`CI 310 Airplane
`C1 365 Personal Injury -
`El 120 Marine
`D 400 State Reapportionment
`CI 130 Miller Act
`CI 315 Airplane Product
`Product Liability
`D 410 Antitrust
`El 140 Negotiable Instrument
`Liability
`Cl 367 Health Care/
`U 430 Banks and Banking
`
`U 150 Recovery of Overpayment
`U 320 Assault, Libel &
`Pharmaceutical
`'**-‘PROPERTY RIGHTS Cl 450 Commerce
`& Enforcement ofJudgment
`Slander
`Personal Injury
`CI 820 Copyrights
`Cl 460 Deportation
`
`Cl 151 Medicare Act
`El 330 Federal Employers’
`Product Liability
`Cl 830 Patent
`C1 470 Racketeer Influenced and
`U 152 Recovery of Defaulted
`Liability
`CI 368 Asbestos Personal
`i 840 Trademark
`Comipt Organizations
`Student Loans
`CI 340 Marine
`Injury Product
`CI 480 Consumer Credit
`
`
`
`(Excludes Veterans)
`Cl 345 Marine Product
`Liability
`.'
`7“SOCIAL'SECURITYI»'» ':'—‘3"" CI 490 Cable/Sat TV
`Cl 153 Recovery of
`Liability
`PERSONAL PROPERTY Cl
`10 Fair Labor Standards
`CI 861 HIA (139511)
`Cl 850 Securities/Commodities/
`
`of Veteran‘s Benefits
`El 350 Motor Vehicle
`El 370 Other Fraud
`Act
`CI 862 Black Lung (923)
`Exchange
`D 720 Labor/Manageinent
`C1 160 Stockholders‘ Suits
`El 355 Motor Vehicle
`CI 371 Truth in Lending
`El 863 DIWC/DIWW (405(g))
`Cl 890 Other Statutory Actions
`
`Cl 190 Other Contract
`Product Liability
`CI 380 Other Personal
`Relations
`C1 864 SSID Title XVI
`C1 891 Agricultural Acts
`CI 195 Contract Product Liability
`CI 360 Other Personal
`Property Damage
`CI 740 Railway Labor Act
`C! 865 RSI (405(g))
`Cl 893 Environmental Matters
`U 196 Franchise
`Injury
`Cl 385 Property Damage
`Cl 751 Family and Medical
`Cl 895 Freedom of Information
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`0 362 Personal Injury -
`Product Liability
`Leave Act
`Act
`Medical Malpractice
`D 790 Other Labor Litigation
`C1 896 Arbitration
`
`‘xi-FEDERAL:TAX'SUITS
`:1
`: CIVILRIGHTS
`D 791 Employee Retirement
`Cl 899 Administrative Procedure
`Cl 510 Motions to Vacate
`440 Other Civil Rights
`Income Security Act
`13 870 Taxes (U.S. Plaintiff
`Act/Review or Appeal of
`
`
`Sentence
`or Defendant)
`Agency Decision
`441 Voting
`Habeas Corpus:
`442 Employment
`Cl 871 IRS—Third Party
`CI 950 Constitutionality of
`C1 530 General
`443 Housing/
`26 USC 7609
`State Statutes
`El 535 Death Penalty
`
`Accommodations
`540 Mandamus & Other
`'7 IMMIGRATION’ ;
`‘
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`atura ization ‘ pp ication
`‘
`E]
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`
`Cl 550 Civil Rights
`Employment
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`446 Amer. w/Disabilities Cl 555 prison Condition
`CI 463 Habeas Corpus -
`Alien Detainee
`Other
`C! 560 Civil Detainee -
`Conditions of
`(Prisoner Petition)
`Confinement
`D 465 Other Immigration
`
`Actions
`
`V. ORIGIN (Place an "X" in One Bax Onbz)
`U 5 Transfened fi'9m U 6 Multidistrict
`Reinstated or
`D 4
`D 3 Reinanded from
`M 1 Original
`El
`2 Removed fi'om
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`
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`State Court Appellate Court Reopened DlsmctProceeding Litigation
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`
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`VII. Previous Bankruptcy Matters (For nature ofsuit 422 and 423, enter the case
`VI. CAUSE OF ACTION (Enter U.S. Civil Statute under which you are filing and
`number and judge for any associated bankruptcy matter previously adjudicated by a judge of this Court.
`write a brief statement of cause.)
`Use a separate attachment if necessary.
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`~”I3ANKRUPTCY',‘r
`J 1,3’
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`‘~
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`El 422 Appeal 28 USC 158
`El 423 Withdrawal
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`28 USC 157
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`- " E.
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`'-OTHERSTATUTES’f5‘1”l
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`'‘
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`‘TORFEITUREIPENALTY 7
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`U 625 Drug Related Seizure
`of Property 21 USC 881
`Cl 690 Other
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`I3[3UUCIUD 448 Education
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`
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`. = REAL PROPERTY.‘
`CI 210 Land Condemnation
`Cl 220 Foreclosure
`Cl 230 Rent Lease & Ejectment
`CI 240 Torts to Land
`Cl 245 Tort Product Liability
`El 290 All Other Real Property
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`15 U.S.C §§1051, et seq. This is an action by Plaintiff for trademark infringement.
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`VIII. REQUESTED IN El CHECK IF THIS IS A CLASS ACTION
`COMPLAINT;
`UNDER RULE 23, F.R.Cv.P.
`
`DEMAND S
`
`CHECK YES only ifdcmanded in complaint:
`JURY DEMAND:
`E Yes
`D No
`
`IX. RELATED CASE(S)
`' 3
`'
`'
`'
`(S
`JUDGE
`ea mmmm)
`IF ANY
`X. This case (check one box) B Is not a refiling of a previously dismissed action
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`U is a refiling of case number
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`DOCKET NUMBER
`previously dismissed by Judge
`
`DATE
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`SIGNATUREOFATTORNEYOFRECORD
`
`A.
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`P‘
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`

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`Case: iN§:3emvr€tfi»flsKrZ>D.ormniemitstt:di/iFiJefiN687i2»§l£1:3>fiaagseii§laoirai#Rar§elD #:60
`
`Authority For Civil Cover Sheet
`
`The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as required by law,
`except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of
`Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of Court for each civil complaint filed. The attorney
`filing a case should complete the form as follows:
`
`(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use only the
`I.
`full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and then the official, giving both
`name and title.
`
`(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the time of
`filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land condemnation cases, the
`county of residence of the "defendant" is the location of the tract of land involved.)
`
`(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting in this
`section "(see attachment)".
`
`Jurisdiction. The basis ofjurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X" in one of
`II.
`the boxes. If there is more than one basis ofjurisdiction, precedence is given in the order shown below.
`
`United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
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`United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
`
`Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment to the Constitution,
`an act of Congress or a treaty of the United States. In cases where the US. is a party, the US. plaintiff or defendant code takes precedence, and box I or 2 should be
`marked.
`
`Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the citizenship of the
`different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity cases.)
`
`Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this section for
`III.
`each principal party.
`
`Nature of Suit. Place an "X“ in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below, is sufficient
`IV.
`to enable the deputy clerk or the statistical clerk(s) in the Administrative Office to determine the nature of suit. If the cause fits more than one nature of suit, select the
`most definitive.
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`V.
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`Origin. Place an "X" in one ofthe six boxes.
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`Original Proceedings. (I) Cases which originate in the United States district courts.
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`Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441. When the petition for
`removal is granted, check this box.
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`Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing date.
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`Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
`
`Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or multidistrict litigation
`transfers.
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`Multidistrict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section I407. When this box is
`checked, do not check (5) above.
`
`Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional statutes
`VI.
`unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service
`
`Previous Bankruptcy Matters For nature of suit 422 and 423 enter the case number and judge for any associated bankruptcy matter previously adjudicated
`VII.
`by a judge of this court. Use a separate attachment if necessary.
`
`Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P. Demand. In this space enter the
`VIII.
`actual dollar amount being demanded or indicate other demand, such as a preliminary injunction Jury Demand. Check the appropriate box to indicate whether or not a
`jury is being demanded.
`
`Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket numbers and the
`IX.
`corresponding judge names for such cases.
`
`Refiling Information. Place an "X“ in one of the two boxes indicating if the case is or is not a refilling of a previously dismissed action. If it is a refiling of a
`X.
`previously dismissed action, insert the case number and judge.
`’
`
`Date and Attorney Signature. Date and sign the civil cover sheet.
`
`Rev0409l 3
`
`

`
`Case: 1:13—cv-06177 Document #2 2-1 Filed’: 08/29/13 Page 1 of 1 PagelD #:61
`
`Attachment to Civil Cover Sheet
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`Attorneys (Firm name, Addresses, and Telephone numbers):
`
`A. John P. Mancini
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`(admitted in N.D. Ill.)
`Allison L. Stillman
`
`(pro hac vice application anticipated)
`Elizabeth M. Winokur
`
`(pro hac vice application anticipated)
`MAYER BROWN LLP
`
`1675 Broadway
`New York, NY 10019
`
`Tel: (212) 506-2295
`Fax: (212)849-5895
`
`Richard M. Assmus
`MAYER BROWN LLP
`71 S. Wacker Drive
`
`Tel: (312) 701-8623
`Fax: (312)706-9125
`
`

`
`Case: 1:13-cv-06177 Document #: 1 Filed: 08/29/13 Page 1 of 22 PageID #11
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`UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`Case No.
`
`COMPLAINT AND DEMAND FOR
`JURY TRIAL
`
`)
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`) )
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`) )
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`) )
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`) ) \
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`DM LUXURY, LLC,
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`Plaintiff,
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`v.
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`CELEBRITY CRUISES, INC.,
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`Defendant.
`
`/
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`DM Luxury, LLC, (“DM Luxury”), by its attorneys, Mayer Brown LLP, as and for its
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`complaint against Celebrity Cruises, Inc. (“Celebrity”), alleges as follows:
`
`NATURE OF ACTION AND RELIEF SOUGHT
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`1.
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`This is an action for trademark infringement, false designation of origin, unfair
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`competition, unfair or deceptive acts or practices, and dilution arising out of Celebrity’s
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`unauthorized,
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`improper, and willful use of DM Luxury’s registered MODERN LUXURY
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`trademark, U.S. Registration Number 2,693,696, (the “Mark”).
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`2.
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`DM Luxury, publisher of MODERN LUXURY magazines in the United States
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`and owner of the trademark rights in the Mark,
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`is the country’s premier luxury lifestyle
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`publisher, with over 45 publications in 14 major cities. The MODERN LUXURY publications
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`cover, among other topics, luxury travel.
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`3.
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`The MODERN LUXURY magazines are famous, and well known to Celebrity,
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`which has advertised in the magazines.
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`

`
`Case: 1:13—cv—06177 Document #1 1 Filed: 08/29/13 Page 2 of 22 PageID #:2
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`4.
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`With full knowledge of the Mark and without authorization from DM Luxury,
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`Celebrity launched an advertising campaign that uses DM Luxury’s MODERN LUXURY Mark
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`as the brand,
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`logo, and tag-line for its travel services, and filed U.S. Trademark Application
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`Serial No. 85421117, seeking registration of THAT’S MODERN LUXURY for cruise services.
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`Celebrity continues to use MODERN LUXURY and THAT’S MODERN LUXURY in
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`connection with the advertisement and sale of services that are substantially similar to, and
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`overlap with, the services featured in DM Luxury’s magazines (the “Infringing Use”).
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`5.
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`Celebrity’s Infringing Use of DM Luxury’s Mark has caused, and will continue to
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`cause, consumer confusion as to the source of Celebrity’s services or as to an affiliation,
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`association, or sponsorship between DM Luxury and Celebrity, which does not exist.
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`6.
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`Celebrity’s Infringing Use of the famous Mark is also likely to cause dilution by
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`blurring, and does in fact dilute and detract from the distinctiveness of DM Luxury’s Mark.
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`7.
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`Celebrity’s Infringing Use is causing, and will continue to cause, irreparable harm
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`to DM Luxury.
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`THE PARTIES
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`8.
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`DM Luxury is the owner by assignment from Modern Luxury Media, LLC
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`(“MLM”) of trademark rights in the United States in the MODERN LUXURY Mark for
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`magazines and various other electronic and non-electronic publications in fields such as travel,
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`fine food and wine, and general luxury lifestyle. DM Luxury is a limited liability company
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`organized and existing under the laws of the State of Delaware, with a primary place of business
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`located at 200 West Hubbard Street, Chicago, IL 60654.
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`9.
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`Upon information and belief, Celebrity is a corporation organized and existing
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`under the laws of Liberia, with its principal place of business at 1050 Caribbean Way, Miami,
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`

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`Case: 1:13-cv—O6177 Document #: 1 Filed: 08/29/13 Page 3 of 22 PageID #23
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`Florida 33132. Celebrity, which,
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`like DM Luxury,
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`is in the business of luxury goods and
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`services, operates cruise lines that provide, among other things: upscale restaurants, bars, clubs,
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`and lounges; onboard wine services; beverage packages; jewelry, fragrances, artwork, and
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`collectables shopping; entertainment services; casino facilities; and spa and fitness services.
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`Celebrity offers its services to various destinations throughout the country and worldwide, and
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`advertises its services globally through various media channels.
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`JURISDICTION AND VENUE
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`10.
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`This Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121 and 28
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`U.S.C. § 1331 because this action arises under federal law, namely, 15 U.S.C. §§ 1051, et seq.
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`(the Lanham Act).
`
`11.
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`This Court has supplemental jurisdiction over the state law claims asserted herein
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`pursuant to 28 U.S.C. §§ l338(b) and l367(a).
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`12.
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`This Court has personal
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`jurisdiction over Celebrity because Celebrity has
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`committed one or more tortious acts complained of in this Complaint within this State and
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`District.
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`13.
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`Venue is proper in this District under 28 U.S.C. § l39l(b) because Celebrity is
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`subject to personal jurisdiction in this District and because a substantial part of the events or
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`omissions giving rise to the claim occurred in this District.
`
`BACKGROUND
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`DM Luxury ’s MODERN LUXUR Y Trademarks
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`14.
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`DM Luxury publishes and markets
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`luxury lifestyle magazines and other
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`publications in the United States under the MODERN LUXURY Mark. DM Luxury currently
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`offers its publications for sale to U.S. consumers under the Mark, and the Mark has been in
`
`

`
`Case: 1:13—cv-06177 Document #2 1 Filed: 08/29/13 Page 4 of 22 PageID #:4
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`continuous use in U.S. commerce in connection with these publications since at least as early as
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`March 1, 2001. As a result of substantial resources invested in numerous national marketing
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`campaigns featuring the MODERN LUXURY Mark, and the tremendous success‘ of the
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`publications,
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`the Mark has gained substantial consumer recognition. Under the Mark, DM
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`Luxury has become the premier luxury lifestyle publisher in the country.
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`15.
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`On February 19, 2000, MLM (the predecessor in interest to DM Luxury) filed a
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`trademark application for MODERN LUXURY (Reg. No. 2,693,696) for use in connection with
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`“[m]agazines featuring lifestyle editorial focusing predominantly on personality and celebrity
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`interviews, fashion and accessories, jewelry, beauty, home design, dining out, entertaining at
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`home, travel, arts and culture and philanthropy.” This application registered on March 4, 2003,
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`and the Mark has since reached incontestable status. A copy of the U.S. trademark registration
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`certificate for the MODERN LUXURY Mark attached hereto as Exhibit A and by reference are
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`made a part hereof.
`
`16.
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`MLM also filed trademark applications for MODERN LUXURY HAWAI’I (Reg.
`
`No. 3,640,285), MODERN LUXURY DALLAS (Reg. No. 3,291,683), and HOUSTON
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`MODERN LUXURY (Reg. No. 3,428,194),
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`for use in connection with magazines and
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`“[d]ownloadable electronic publications in the nature of magazines in the field of fashion,
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`accessories, jewelry, home design, travel, fine food and wine, culture, art, real estate, society,
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`celebrity, and general luxury lifestyle,” which registered on June 16, 2009, September 11, 2007,
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`and May 13, 2008 respectively. Copies of the U.S.
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`trademark registration certificates for
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`MODERN LUXURY HAWAI’l, MODERN LUXURY DALLAS, and HOUSTON MODERN
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`LUXURY are attached hereto as Exhibit B and by reference are made a part hereof.
`
`

`
`Case: 1:13-cv—O6177 Document #: 1 Filed: 08/29/13 Page 5 of 22 PageID #:5
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`17.
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`On September 15, 2010, MLM assigned its rights in MODERN LUXURY,
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`MODERN LUXURY HAWAPI, MODERN LUXURY DALLAS, and HOUSTON MODERN
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`LUXURY to DM Luxury. The assignment was recorded with the U.S. Patent and Trademark
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`Office on June 20, 2012.
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`18.
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`Additionally, DM Luxury owns pending trademark applications
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`for NS
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`MODERN LUXURY FOR THE NORTH SHORE (Serial No. 85737240) and MODERN
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`LUXURY TRAVEL (Serial No. 85655608). Copies of the U.S. trademark applications for NS
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`MODERN LUXURY FOR THE NORTH SHORE and MODERN LUXURY TRAVEL are
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`attached hereto as Exhibit C and by reference are made a part hereof.
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`1 19.
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`The MODERN LUXURY Mark is extremely strong.
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`It is inherently distinctive
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`because ‘modern luxury’ does not merely describe the magazines or their contents.
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`20.
`
`The Mark has also acquired a high degree of distinctiveness and fame in the
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`minds of readers in Illinois and throughout the United States through consistent use, widespread
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`and substantial advertising and promotion, and tremendous commercial success nationwide.
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`Consumers recognize the Mark as representative of publications associated with the very highest
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`quality products and services.
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`21.
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`Since MODERN LUXURY was first used in connection with the MODERN
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`LUXURY magazines (at least as early as March 1, 2001), millions of dollars have been spent to
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`cultivate the goodwill associated with the Mark. As a result, the MODERN LUXURY brand,
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`which is held in extremely high regard by consumers and advertisers alike, now covers over 45
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`publications in 14 major cities.
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`22.
`
`The MODERN LUXURY publications include City Magazines (e. g., Manhattan,
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`Miami, Chicago, etc.), which “offer award winning content featuring the finest in fashion,
`
`

`
`Case: 1:13-cv—O6177 Document #2 1 Filed: 08/29/13 Page 6 of 22 PageID #:6
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`beauty, jewelry, design, real estate, travel, dining, nightlife and the arts”; Interiors, which are
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`“premier
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`luxury home design resources”; Brides; Men ’s Book; and Front Desk.
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`See
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`hgps://store.modernluxurL_gom/subscripfins (last accessed Aug. 20, 2013).
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`23.
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`Each of these publications has city- and market-specific editions. Editions of the
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`City Magazines include, for example, Angeleno, Aspen, Beach, CS, DC, Houston, Jezebel,
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`Manhattan, Miami, Dallas, Hawaii, NS, Riviera Orange County, Riviera San Diego, San
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`Francisco, and The Atlantan. Similarly, editions of Interiors include California Interiors, CS
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`Interiors, and Modern Luxury Interiors Texas. See id.
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`24.
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`DM Luxury markets, advertises, and sells its MODERN LUXURY publications
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`directly to consumers through traditional media (including newsstands) and at live consumer
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`events
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`and
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`trade
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`shows,
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`as well
`
`as
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`on
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`the
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`Internet,
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`via websites
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`such
`
`as
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`http://wwwmodernluxury.com/ (last visited Aug. 19, 2013), and through social media including
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`Facebook, Twitter, and foursquare. The publications are also available for download on mobile
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`devices.
`
`25.
`
`As a result of enormous efforts and resources spent to cultivate the MODERN
`
`LUXURY brand and achieve its commercial success, DM Luxury’s Mark has developed
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`substantial and valuable goodwill.
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`26.
`
`In the minds of consumers, the MODERN LUXURY Mark represents a single
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`source of uniquely high quality products and the ultimate standard of luxury.
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`27.
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`Additionally, DM Luxury’s unrivaled local knowledge and regional character,
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`interactive digital extensions, and high society events make MODERN LUXURY publications a
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`prime vehicle for advertisers to market their luxury goods and services.
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`Indeed, Celebrity has
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`been among such advertisers seeking to reach the audience targeted by DM Luxury’s services.
`
`

`
`Case: 1:13—cv—06177 Document #2 1 Filed: 08/29/13 Page 7 of 22 PagelD #27
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`Celebrity ’s Infringing Use ofDM Luxury ’s Mark
`
`28.
`MLM first became aware of the Infringing Use of the Mark on or around
`November 4, 2011, when Celebrity submitted one of its new ‘Modern Luxury’ advertisements
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`for inclusion in the MODERN LUXURY magazines.
`
`29.
`
`Despite its amicable relationship with MLM and its knowledge of the Mark,
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`Celebrity launched a ‘Modern Luxury’ advertising campaign using ads that prominently display
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`the trademarks MODERN LUXURY and THAT’S MODERN LUXURY.
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`30.
`
`Because Celebrity was using the Mark in connection with the same types of
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`services that were being featured and advertised in the MODERN LUXURY magazines, MLM
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`was concerned that Celebrity’s use of the Mark would cause consumer confusion.
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`In an attempt
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`to avoid such consumer confusion, MLM declined to publish any Celebrity advertisements
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`bearing MODERN LUXURY, THAT’S MODERN LUXURY, or variations thereof, and notified
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`Celebrity that it was violating MLM’s rights.
`
`31.
`
`DM Luxury also learned that, on September 13, 2011, Celebrity filed U.S.
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`Trademark Application Serial No. 85421117, seeking registration of THAT’S MODERN
`
`LUXURY, for “cruise ship services; arranging and conducting cruises for others; transportation
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`of passengers by ship; [and] arranging and conducting travel tours for others.” In its trademark
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`application, Celebrity claimed a first use of the mark in August 25, 2011. A copy of U.S.
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`Trademark Application No. 854211 17 is attached hereto as Exhibit D and by reference is made a
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`part hereof.
`
`32.
`
`On December 28, 2012, DM Luxury filed a Notice of Opposition to Celebrity’s
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`pending trademark application before the Trademark Trial and Appeal Board.
`
`

`
`Case: 1:13—cv—O6l77 Document #: 1 Filed: 08/29/13 Page 8 of 22 Page|D #:8
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`33.
`
`On February 12, 2013, Celebrity filed an Answer to DM Luxury’s Notice of
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`Opposition, conceding that Celebrity does not have any actual or constructive use of THAT’S
`
`MODERN LUXURY prior to August 25, 2011. Celebrity did not assert any affirmative
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`defenses.
`
`34.
`
`DM Luxury has attempted to reach an amicable resolution of this matter with
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`Celebrity, but has been unable to do so.
`
`35.
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`Upon
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`information and belief, Celebrity is
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`still
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`running the
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`infringing
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`advertisements in numerous publications (excluding the MODERN LUXURY magazines) and
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`marketing the MODERN LUXURY brand through a variety of other media channels (e.g.,
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`billboards, commercials, live consumer events, etc.). Celebrity is also using the Mark to sell its
`
`services. Examples of Celebrity’s Infringing Use of DM Luxury’s Mark are attached hereto as
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`Exhibit E and by reference are made a part hereof.
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`The Likelihood of Confusion, Dilution, and Irreparable Harm to DM Luxury
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`36.
`
`Celebrity’s use of DM Luxury’s MODERN LUXURY Mark in connection with
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`services that are substantially similar to, and overlap with, those advertised and featured in DM
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`Luxury’s magazines is likely to cause consumer confusion as to the ultimate source of
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`Celebrity’s services, and is likely to imply a false affiliation, sponsorship, or other connection
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`between Celebrity and DM Luxury.
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`37.
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`Celebrity’s use of THAT’S MODERN LUXURY, a nearly identical mark,
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`in
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`connection with services that are substantially similar to, and overlap with, those advertised and
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`featured in DM Luxury’s magazines is likely to cause consumer confusion as to the ultimate
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`source of Celebrity’s services and is likely to imply a false affiliation, sponsorship, or other
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`connection between Celebrity and DM Luxury.
`
`

`
`Case: 1:13—cv—O6177 Document #: 1 Filed: 08/29/13 Page 9 of 22 PageID #19
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`38.
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`Celebrity’s Infringing Use of DM Luxury’s Mark in connection with services that
`
`are substantially similar to those featured and advertised in DM Luxury’s magazines, to the same
`
`consumers who read DM Luxury’s magazines, makes consumer confusion inevitable.
`
`39.
`
`Celebrity’s Infringing Use constitutes trademark infringement, false designation
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`of origin, and unfair and deceptive practices.
`
`40.
`
`Celebrity’s Infringing Use of DM Luxury’s famous Mark is also likely to cause
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`dilution by blurring, and does in fact dilute and detract from the distinctiveness of DM Luxury’s
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`Mark.
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`41.
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`Celebrity’s Infringing Use is causing, and will continue to cause, irreparable harm
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`to DM Luxury’s business reputation and goodwill as well as inevitable public confusion and
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`substantial and irreparable harm to the public.
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`Celebrity ’s Bad Faith and Willful Infringement
`
`42.
`
`Furthermore, evidence suggests that Celebrity has acted, and continues to act, in
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`bad faith.
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`43.
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`Before beginning its Infringing Use of the MODERN LUXURY Mark in August
`
`2011, Celebrity had actual and constructive notice of MLM’s prior rights in the Mark. MLM’s
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`registration of the MODERN LUXURY Mark on March 4, 2003 provided constructive notice of
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`MLM’s rights (see Ex. A), and Celebrity had acquired actual knowledge of M LM’s rights in the
`
`Mark through its business relationship with MLM. Moreover, since then, DM Luxury has
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`clearly expressed to Celebrity, through correspondence, the filing of its Notice