Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA561790
`ESTTA Tracking number:
`09/27/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91211304
`Defendant
`Fab.com, Inc.
`MARGRET CARUSO
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`555 TWIN DOLPHIN DR, 5TH FLOOR
`REDWOOD SHORES, CA 94065
`UNITED STATES
`benjamingildin@quinnemanuel.com, margretcaruso@quinnemanuel.com,
`claudiabogdanos@quinnemanuel.com
`Motion to Suspend for Civil Action
`Kenneth A. Plevan
`bgoldner@skadden.com, kplevan@skadden.com, smarquez@skadden.com
`/Kenneth A. Plevan/
`09/27/2013
`FAB DEALS 91211304.pdf(1238136 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`. _ . . . . _ _ _ _ _ _ _ _ . _ _ _ _ . _ _ _ _ _ _ _ _ _ _ _ _ _ X
`
`JUST FABULOUS, INC,
`
`In the Matter of Trademark
`
`Opposer,
`
`'
`
`Application Serial No. 85/230,638
`
`Opposition No. 9121 1304
`
`Mark: FAB DEALS
`
`— against -
`
`FAB.COM, INC,
`
`Applicant
`_ _ _ _ . _ _ _ _ _ . . _ _ _ _ _ _ _ _ _ _ _ _ . _ . _ _ _ _ - _ X
`
`MOTION TO SUSPEND OPPOSITION UNDER 37 CFR §2.l 17
`
`Pursuant to Section 2.1 17 of the Trademark Rule of Practice (37 CFR
`
`§ 2.117) and Section 510.02(a) of the Trademark Trial and Appeal Board Manual of Procedure,
`
`Third Edition, Revision 2 (June 2013) (“TBMP”), Fab.com, Inc. (“Applicant”), hereby informs
`
`the Trademark Trial and Appeal Board (the “Board”) that the parties to Opposition No.
`
`91211304 are also parties to a civil action, commenced by Opposer herein, currently pending
`
`before the United States District Court for the Central District of California, No. CV-13-05330.
`
`A copy of the Complaint, dated and filed July 24, 2013, as filed with the Clerk of the Court is
`
`attached hereto as Exhibit 1.
`
`Inasmuch as said federal court civil action involves issues common with those in
`
`this opposition proceeding before the Board, and that the decision of the federal district court
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`will be binding upon the Board, while the decision ofthe Board would not be binding upon the
`
`federal court, Applicant respectfully requests that the Board suspend Opposition No. 9121 1304
`
`pending the outcome of the proceeding
`
`

`
`before the United States District Court for the Central District of California, No. CV-13-05330.
`
`Applicant has notified Opposer of this Motion, and is authorized to state that
`
`Opposer does not object to the relief requested herein.
`
`Dated: September 25, 2013
`
`Respectfiilly submitted,
`
`SKADDEN, ARPS, SLATE, MEAGHER
`& FLOM LLP
`
`Attorneys for Applicant
`
`Kenneth A. Plevan
`
`Four Times Square
`New York, New York 10036
`kenneth.p1evan@skadden.com
`(212) 735-3000 (Phone)
`(212) 735-2000 (Fax)
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing MOTION TO SUSPEND
`OPPOSITION was served on the attorney for Opposer by first class mail, this 25”‘ day of
`September 2013, addressed to:
`
`Patricia H. Benson, Esq.
`Mitchell Silberberg & Knupp
`11377 West Olympic Boulevard
`Los Angeles, CA 90064-1683
`
`Attorneys for Opposer
`
`Date: September25,2013
`
`By: .L__;____
`
`Kenneth A. Plevan
`
`1080851-NYCSROIA - MSW
`
`

`
`Exhibit 1
`
`

`
`. Case 2:13—cv—O5330—SJO-VBK Document 1 Filed 07/24/13 Page 1 of 21 Page ID #:56
`
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`1 PATRICIA H. BENSON (SBN 60565),
`hb
`sk.com
`G. PAGNANELLI (SBN 174763)
`2
`msk.com
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`3
`C E. MAYER (SBN 190969)
`mem msk.com
`4 EL
`K. KIM SBN 242066
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`ekk
`sk.com (
`5 MI HELL SILBERBERG & ICNUPP LLP
`11377 West 01 In ic Boulevard
`6 Los Angeles A 0064-1683
`Telephone: §310) 312-2000
`
`7 Facslmilez ( 10) 312-3100
`
`8 Attorneys for Plaintiff Just Fabulous, Inc.
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`.
`I
`
`9
`10
`11
`12
`
`14
`
`_
`
`V.
`
`JUST FABULOUS, INC., a Delaware
`13 Corporation,
`_
`_
`Plamtiff,
`-
`
`53:
`[56
`
`.
`CA
`COMPLAINT FOR:
`
`1
`
`‘
`INFRINGEMENT OF
`DERALLY REGISTERED
`MARK [15 U.S.C. § 1114];
`
`1 5
`
`FAB.COM, INC., a Delaware
`15 Corporanon,
`
`Defendant.
`
`
`g FALSE DESIGNATION OF
`GIN [15 U.S.C. § 1125(3)]
`
`%) UNFAIR COMPETITION
`al. Bus. & Prof. Code §§ 17200,
`7208 and 17500 et seq.]
`
`~
`
`OMPETITION
`
`gt) COMMON LAW UNFAIR
`§5) DECLARATORY RELIEF
`
`28 U.S.C. § 2201]
`
`DEMAND FOR JURY TRIAL
`
`17
`
`13
`19
`
`20
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`Mitchell 28
`Silberberg &
`Knupp LLP
`54484051/44453-000
`
`1
`COMPLAINT
`
`

`
`.Cas 2:13—cV-05330-SJO—VBK Documentl Filed 07/24/13 Page2of 21 Page ID #257
`
`Plaintiff Just Fabulous, Inc. (“Just Fab” or “Plaintiff’) for its Complaint
`
`against Defendant Fab.com, Inc. (“Fab.com” or “Defendant”), alleges as follows,
`
`based upon actual knowledge with respect to Just Fab and Just Fab’s acts, and
`
`upon information and belief as to all other matters.
`
`
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for trademark infringement and unfair competition
`
`under federal law and California statutory and common law, which Just Fab brings .
`
`to protect some of its most valuable assets, namely, the goodwill and consumer
`
`recognition associated with the family of JUST FAB marks that distinguish in
`
`commerce its goods and services (the “JUST FAB marks”). Since at least 2010,
`
`Just Fab has continuously used and extensively promoted the JUST FAB name and
`
`marks in connection with its online retail service and store, JustFab.com, and
`
`various lines of shoes, clothing, and accessories sold therein. By virtue of those
`
`efforts, Just Fab has developed a reputation as one of the world’s leading online
`
`providers of fashion products and accessories, and as one of the best services in its
`
`class.
`
`2.
`
`As described more fully below, without Just Fab’s authorization or
`
`consent, and with knowledge of Just Fab’s prior rights in its JUST FAB marks,
`
`Fab.com recently commenced use of the confusingly similar FAB mark in
`
`connection with services which are substantially similar to those offered by Just
`
`Fab. Through its conduct, Fab.com has created circumstances whereby members
`
`of the public are likely to be led to believe incorrectly that Fab.com and its services
`
`are authorized by, sponsored by, or affiliated with Just Fab and its well—known
`
`JUST FAB marks and the services and goods provided thereunder.
`
`2
`COMPLAINT
`
`

`
`. Cas 2:13-cv-O5330—SJO—VBK Documentl Filed 07/24/13 Page3of 21 Page ID #:58
`
`JURISDICTION AND VENUE
`
`3.
`
`This Court has subject-matter jurisdiction of this action pursuant to 28
`
`\DOO\lC\(II-bU0l\3*-‘
`
`
`
`U.S.C. Sections 1331 and 1338 and 15 U.S.C. Section 1121, as it involves claims
`
`arising under the Lanham Act. This Court has supplemental subj ect~matter
`
`jurisdiction over all other claims pursuant to 28 U.S.C. Section 1367 because they
`
`are so related that they form part of the same case or controversy.
`
`4.
`
`Just Fab is informed and believes, and on that basis avers, that
`
`Fab.com is subject to personal jurisdiction in the state of California because,
`
`among other reasons, the unlawful conduct complained of herein causes injury in
`
`r—A O
`
`the State of California because Fab.com has directed its activities at Just Fab and
`
`1 1
`
`12
`
`13
`
`1 4
`
`15
`
`16-
`
`its trademarks in California, and because, on information and belief, Fab.com
`
`advertises in, transacts business in, offers its products for sale and sells its products
`
`in, and derives substantial revenue from those activities in the State of California.
`
`5.
`
`Venue in this Court exists under 28 U.S.C. Sections l39l(a),
`
`139 l(b)(2) and l391(e)(2) because Defendant is subject to personal jurisdiction in
`this District and a substantial part ofthe events giving rise to the claims alleged in
`
`17
`
`this Complaint occurred in this District. Among other reasons, the unlawful
`
`18
`
`conduct complained of herein causes injury in the Central District of California,
`
`1 9
`
`because Fab.com has directed its activities at Just Fab and its trademarks in the
`
`20
`
`2 1
`
`Central District of California, and because, on information and belief, Fab.com
`
`advertises in, transacts business in, offers its products for sale and sells its products
`
`22
`
`in, and derives substantial revenue from those activities in the Central District of
`
`23
`
`California.
`
`24
`
`25
`
`26
`
`27
`
`Mitchell 28
`Silberberg &
`Knupp LLP
`5448405.1l44453-00
`
`6
`
`
`
`THE PARTIES
`
`6.
`
`Just Fab is a Delaware corporation,with its principal place of business
`
`in El Segundo, California.
`
`3
`COMPLAINT
`
`

`
`.Cas 2:13-cv-05330-SJO-VBK Documentl Filed 07/24/13 Page4of21 Page H5 #:59
`
`
`
`7.
`
`Just Fab is informed and believes, and on that basis avers, that
`
`Fab.com is a Delaware corporation, with its principal place of business in New
`
`York, New York.
`
`JUST FAB AND ITS SUCCESSFUL JUST FAB® BRAND
`
`8.
`
`Just Fab is a retailer that owns and operates an online retail business
`
`through its JustFab.com Website, as well as a “brick and mortar” store that will be
`
`opening soon in Glendale, California called Just Fab. Just Fab’s JustFab.com
`
`website offers members access to celebrity stylists and their fashion picks, most of
`
`which are designed in Los Angeles and manufactured specifically for Just Fab, and
`
`some of which are from well-known third party collections, such as Hello Kitty
`
`and Iron Fist. Founded in 2010, Just Fab provides access to both the latest trends
`and classic styles by combining the convenience of online shopping with the
`
`luxury of having a personal shopper, all at prices significantly below those offered
`
`by traditional department stores. As Just Fab explains on its website, it is able to
`
`offer such bargain prices because it designs its own products, cuts out the
`
`middleman, and works directly with manufacturers, unlike traditional retailers.
`
`Just Fab’s team of style experts, led by President and Creative Director Kirnora
`
`Lee Simmons, keeps JustFab.com members on trend by recommending a monthly
`
`selection of the latest fashions and accessories based on the member’s individual
`
`style. Just Fab’s growth has been meteoric. Since its launch in 2010, JustFab.com
`has acquired more than 15 million members worldwide and receives over six
`million unique page views per month. Just Fab has also sold more than five
`
`24 million products worldwide bearing the JUST FAB name and marks. JustFab.com
`
`25
`
`26
`
`27
`
`Mitchell 28
`Silberberg &
`
`Knupp 1.1.9
`5448405.]/44453-000
`
`is known for providing a first-rate shopping experience for stylish, quality products
`
`at extraordinarily low prices.
`
`4
`COMPLAINT
`
`
`
`

`
`. Cas
`
`2:13-cv-05330-SJO-VBK Document 1 Filed 07/24/13 Page 5 of 21 Page ID #160
`
`9.
`
`Just Fab’s website, JustFab.com, as well as all of its marketing
`
`materials, and countless of its products, prominently display the JUST FAB name
`
`and marks.
`
`
`
`10.
`
`Just Fab has invested millions of dollars and enormous time, effort,
`
`and resources advertising and promoting the JustFab.com website, and the JUST
`
`FAB name and marks. Among other things, JustFab.com, its services and JUST
`
`FAB products have been featured in some of the most popular fashion and lifestyle
`
`publications in the world, including, but not limited to, People, In Style, Us,
`
`Glamour, Essence, Family Circle, Redbook and Health. Just Fab’s President and
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`Creative Director — fashion icon Kirnora Lee Simmons — stars in The Style
`
`Network’s “Kimora: House of Fab,” which also is syndicated on the E! Television ‘
`
`Network and viewed in more than 100 countries, and which provides a behind the
`
`scene look at the Just Fab business, further familiarizing viewers with the
`
`company, its services, products, and marks. In addition, Just Fab promotes the
`
`JUST FAB and JustFab.com names and marks through social media, including
`Facebook, Twitter, Pinterest and Instagram, as well as on YouTube and on its Just
`
`Fab blog. As a result of Just Fab’s extensive use and promotion of the
`
`JustFab.com and JUST FAB names and marks in interstate commerce, the
`
`JustFab.com and JUST FAB names and marks have become known throughout the
`
`United States by consumers, purchasers and members of the public as signifying
`
`Just Fab and its high-quality service and products. Just Fab has worked diligently
`
`to establish, and now owns, considerable and valuable reputation and goodwill in
`
`the JustFab.com and JUST FAB names and marks.
`
`11. While Just Fab has gained significant common law trademark and
`
`other rights in its JUST FAB service and products through its use, advertising and
`
`promotion of the JUST FAB brand, Just Fab also has protected its valuable rights
`
`by filing for and obtaining federal trademark registrations.
`
`5
`COMPLAINT
`
`Mitchell 28
`Silberberg &
`Knupp um
`5448405. 1/44453~00
`
`

`
`. Case 2:13-cv—O5330—SJO-VBK Document 1 Filed 07/24/13 Page 6 of 21 Page ID #261
`
`.12.
`
`The JUST FAB marks include a servicemark that is registered on the
`
`Principal Register of the United States Patent and Trademark Ofifice (Reg. No.
`
`4183738) for “Online retail store services featuring shoes, footwear, bags,
`
`handbags, luggage, clothing and sunglasses; retail store services featuringshoes,
`
`footwear, bags, handbags, luggage, clothing and sunglasses,” and “Fashion trend
`
`consulting services; personal fashion consulting services; providing information
`
`about fashion trends; provision of a website featuring information on fashion;
`
`providing online fashion questions to help users determine the style of clothing
`
`best suited to their individual needs and preferences; personal shopping for others.”
`
`The foregoing registration is valid, subsisting, and exclusively owned by Just Fab.
`
`13.
`
`The JUST FAB marks also include a trademark that is registered on
`
`the Principal Register of the United States Patent and Trademark Office for
`
`“Women’s shoes, sandals, shoes and footwear; Clothing, namely, bandanas,
`
`beanies, belts, blazers, blouses, boots, caps, coats, dresses, gloves, hats, headwear,
`
`jackets, jeans, jogging outfits, neckties, overalls, pajamas, pants, parkas, ponchos,
`
`pullovers, rainwear, robes, sandals, sarongs, scarves, shirts, shorts, skirts, slacks,
`
`socks, sun visors, suspenders, sweat bands, sweat pants, sweat shirts, sweaters,
`
`tank tops, turtlenecks, ‘vests, wristbands” (Reg. No. 4292790), and for “Purses,
`
`E>\c>oo\)o~x&J1-t><.»->t\.>»—-
`
`p—|
`
`g—a
`
`s—a B3
`
`r-I U.)
`
`I-4 -F
`
`15
`
`16
`
`17
`
`l8
`
`I9_
`
`handbags, luggage; travel back packs, backpacks, daypacks, farmy packs, waist
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`20
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`packs, garment bags for travel, duffle bags, all purpose athletic bags, travel bags,
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`21
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`shoulder bags, briefcases, attache cases” (Reg. No. 4293503). The foregoing
`
`22
`
`registrations are also valid, subsisting, and exclusively owned by Just Fab.
`
`23
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`14.
`
`Just Fab owns the www.JustFab.com domain name and uses, and has
`
`24
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`used since 2010, the corresponding website as one of the means to promote the
`
`25
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`JUST FAB marks and the products and services provided thereunder.
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`26
`
`27
`
`28
`
`Mitchell
`Silberberg &
`Knupp LLP
`54484011/44453-00
`
`6
`
`6
`COMPLAINT
`
`

`
`. Cas 2:13—cv—05330-SJO-VBK Document 1 Filed 07/24/13 Page 7 of 21 Page ID #:62
`
`FAB.COM’S BUSINESS AND WRONGFUL CONDUCT
`
`15.
`
`Just Fab is informed and believes, and on that basis avers, that
`
`Fab.com is a New York—based online retailer, which sells a variety of goods,
`
`including women’s shoes, clothes, and accessories. According to published
`
`reports, Fab.com began as a gay social networking site, fabulis.com, but was not
`
`successful. However, one of the few “bright spots” on the fabulis.com site
`
`reportedly was a “Gay Deal of the Day” feature through which fabulis.com sold an
`
`assortment of items to women as well as men. As a result, the founders of
`
`fabulis.com decided to change their business model. Aware, on information and
`
`\DOO'\1O’\U'I-bU~>l\)1—‘
`
`
`
`r—I~ G belief, of the enormous success of Just Fab and its website, the founders of
`
`p—|
`
`p—A
`
`fabulis.com changed the name of their company and the domain name of its
`
`»— t\D website, to Fab.com, and completely changed their business model from social
`
`)—d L») networking to on—line retailing that, like Just Fab’s business, emphasized excellent
`
`r—- -l> design at bargain prices. Fab.com’s website, Fab.com, which Just Fab is informed
`
`r-4 U:
`
`and believes was launched in June, 2011, promotes itself as a site for “design
`
`»-—« ON products” at “great prices.” Fab.com prominently displays on its website the
`
`v--A \l
`
`significant discount of the prices it charges from normal retail prices. Some of the
`
`)-—l 00 products that Fab.com offers or has offered on its Fab.com website are advertised
`
`i—- \O
`
`and promoted as having been “designed by Fab,” including items of apparel. The
`
`[Q G Fab.com website also offers or has offered products from some of the same third
`
`l\) r-- parties as those offered by JustFab.com, including Hello Kitty and Iron Fist. Like
`
`l\J [9
`
`JustFab.com, Fab.com requires individuals to become members in order to
`
`(0DJ purchase products fi'om the site. According to recent press reports, Fab.com is
`
`l\J-P plarming in the near future to expand its “Fab” business fiom exclusively e-
`
`l\>(J1
`
`l\>ON
`
`commerce into “brick and mortar” stores.
`
`16.
`
`Fab.com began applying for trademark registrations in July, @011.
`
`I0\l The applications describe Fab.com’s mark as a stylized mark with the word FAB
`
`Mitchell 28
`Silbcrberg &
`Knupp LLP
`5448405.l/44453-000
`
`and a heart design in the lower portion of a box (the “FAB mark”).
`
`
`7
`COMPLAINT
`
`

`
`2:13-cv-05330~SJO—VBK Document 1 Filed 07/24/13 Page 8 of 21 Page ID #263
`
`17.
`
`Three registrations for the FAB mark were issued to Fab.com on
`
`August 28, 2012, including for “Providing incentive award programs for users
`
`through the issuance of credit for referrals” (Reg. No. 4,197,722); for “Internet-
`
`based social networking services” (Reg. No. 4,198,555); and for “Computer
`
`application software for mobile phones or handheld computers, namely, software
`
`for online retail shopping.” (Reg. No. 4,198,556). Additionally, the U.S.
`
`Trademark Office has issued a notice of allowance for the FAB mark for a variety
`
`of other services, including, inter alia, for “[p]roviding information in the field of
`
`fashion.” (Serial No. 85/368,444, Reg. No. 4,350,737).
`
`1 8.
`
`Fab.com recently applied to register its FAB mark for International
`
`Class 35: “Advertising and directory services, namely, promoting the services of
`
`others by providing a web page featuring links to the websites of others;
`
`Advertising and marketing services, namely, promoting the goods and services of
`
`others; Computerized on—line retail store services in the field‘ of a wide variety of
`
`consumer goods of others; On—line retail store services featuring a wide variety of
`
`consumer goods of others” (Serial No. 85/683,373).
`
`19.
`
`Fab.com also has trademark applications for the FAB mark pending
`
`for other classes, such as “[c]omputerized on—line retail store services in the field
`
`. Cas
`
`1 2 3 4 5 6 7 8 9
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`10
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`11
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`of a wide variety of consumer goods of others,” “[p]romoting the goods and
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`20
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`services of others, namely, providing online information regarding discounts,
`
`21
`
`coupons, rebates, vouchers and special offers for the goods and services of others”;
`
`22
`
`and “[o]n-line retail store services featuring a wide variety of consumer goods of
`
`23
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`others.” See, e.g., Serial Nos. 85/230,638, 85/683,373, and 85/696,541.
`
`24
`
`25
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`26
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`20.
`
`Fab.com’s FAB mark is Visually similar to Just Fab’s IUST FAB
`
`marks. The registered and pending FAB marks also are used for the same
`
`categories and classes of goods and services, and are used in the same relevant
`
`27
`
`market, as Just Fab’s IUST FAB marks, and thus create the same commercial
`
`impression in the marketplace.
`
`Mitchell 28
`Silberberg &
`Knupp LLP
`54484051/44453-000 6
`
`8
`COMPLAINT
`
`

`
`. Cas
`
`2:13—cv—O5330—SJO—VBK Documentl Filed 07/24/13 Page9of21 Page ID #264
`
`21.
`
`Just ‘Fab has never authorized Fab.com to use the JUST FAB marks or
`
`any confusingly similar mark. Fab.com’s unauthorized use of the confusingly
`
`similar mark, FAB, is likely to confuse, to cause mistake or to deceive, including
`
`because members of the public and the relevant trade are likely to believe that Just
`
`Fab is the source of, has endorsed or approved, or is somehow otherwise
`
`legitimately associated with Fab.com and its products and services.
`
`22.
`
`Just Fab is informed and believes, and on that basis avers, that in
`
`adopting the FAB mark for its website, Fab.com intended to appropriate and trade
`
`off Just Fab’s goodwill, and the reputation and selling power of its JUST FAB
`
`marks, including by capturing initial consumer attention and the resulting
`
`marketplace confusion.
`
`FIRST CLAIM FOR RELIEF
`
`(Infringement of Federally Registered Trademark)
`
`23.
`
`Just Fab incorporates herein by reference the averrnents of paragraphs
`
`1 through 22 as though fully set forth herein.
`
`24.
`
`Just Fab is the owner of all right, title, and interest in the JUST FAB
`
`marks identified in paragraphs 12 and 13, above, and has standing to maintain an
`
`\OOO~dG\(J1-vb‘-DJIQF-‘
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
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`19
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`action for trademark infringement under 15 U.S.C. Section 1114.
`
`20
`
`21
`
`25. With actual and constructive notice of Just Fab’s federal trademark
`registration and of Just Fab’s extensive and continuous use ofthe JUST FAB
`
`22
`
`marks, Fab.com has used and continues to use the confusingly similar FAB mark
`
`23
`
`24
`
`25
`
`(“Infringing Mark”) in the United States on its website and in connection with both
`
`services and the promotion, sale, offering for sale, and distribution of goods,
`
`identical to, or similar to services and goods in connection with which Just Fab
`
`26
`
`uses its JUST FAB marks.
`
`27
`
`26.
`
`Fab.com’s use of the Infringing Mark, including on its website and in
`
`2 8
`
`Mitchell
`Silberberg &
`Knupp LLP
`5448405.lI44453-000 6
`
`connection with the advertising, promotion, sale, offering for sale and distribution
`
`
`9
`.
`COMPLAINT
`
`

`
`. Case 2:13—cv—05330—SJO—VBK Document 1 Filed 07/24/13 Page 10 of 21 Page ID #:65
`
`of services and products identical or closely related to those offered by Just Fab,
`
`including, but not limited to, apparel, shoes, handbags and fashion accessories, is
`
`likely to cause confusion, deception or mistake. Buyers and persons who visit
`
`Fab.com’s Fab.com website and/or who see Fab.com products bearing the FAB
`
`mark are likely to think that the Website is owned, affiliated with, licensed or
`
`approved by Just Fab and/or that products and services offered flirough the
`
`Fab.com website are designed, made, affiliated with, licensed or approved by, Just
`
`Fab. In actual fact, Just Fab does not approve Fab.com’s use of the Infringing
`
`Mark and strongly objects thereto.
`
`27.
`
`Just Fab is informed and believes, and on that basis avers, that
`
`Fab.com has willfully and intentionally used the Fab and Fab.com designations in
`connection with the same and complimentary services and products as to which
`
`Just Fab uses the JUST FAB marks, in an attempt to trade upon the enormous
`
`l 2 3 4 5 6 7 8 9
`
`10
`
`ll
`
`12
`
`13
`
`14
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`goodwill, reputation and selling power established by Just Fab under the JUST
`
`15
`
`FAB marks.
`
`16
`
`17
`
`18
`
`28.
`
`Fab.com’s acts have caused or are likely to cause, unless restrained by
`
`this Court, Just Fab and the public to suffer great and irreparable damage and
`
`injury through, inter alia, (a) a likelihood of confusion, mistake, and deception as
`
`19
`
`to the affiliation, connection or association of Fab.com and its services and
`
`20
`
`products with Just Fab and its services and products, and (b) the loss of Just Fab’s
`
`' 21
`
`valuable goodwill and business reputation symbolized by its JUST FAB marks.
`
`22
`
`Just Fab has no adequate remedy at law.
`
`23
`
`29.
`
`Fab.com’s wrongful conduct also has permitted or will permit it to
`
`24
`
`make substantial diverted revenue on the strength of Just Fab’s marketing,
`
`25
`
`advertising, sales and consumer recognition. As a direct and proximate result of
`
`26
`
`27
`
`28
`
`Mitchell
`Silberberg &
`Knupp LLP
`5448405. l/44453-000
`
`Fab.com’s wrongful conduct, as alleged herein, Just Fab has been deprived and
`
`will be deprived ofthe value of its IUST FAB and JustFab.com marks and names
`
`as commercial assets in an amount as yet unknown but to be determined at trial.
`
`
`1 0
`COMPLAINT
`
`

`
`.Case 2:13-cv-05330-830-VBK Document 1 Filed 07/24/13 Page 11 of 21 Page ID #166
`
`Just Fab seeks an accounting of Fab.com’s profits, and requests that the Court
`
`grant Just Fab three times that amount in the Court’s discretion.
`
`30.
`
`Just Fab is informed and believes, and on that basis avers, that the
`
`intentional and willful nature of Fab.com’s aforementioned conduct renders this an
`
`exceptional case under 15 U.S.C. Section 1117(a).
`
`SECOND CLAIM FOR RELIEF
`(False Designation of Origin)
`
`31.
`
`Just Fab incorporates herein by reference the averments of paragraphs
`
`1 through 30 as though fully set forth herein.
`
`32.
`
`Just Fab, as the owner of all common law right, title, and interest in
`
`and to the JUST FAB name and marks, has standing to maintain an action for false
`
`designation of origin and unfair competition under Section 43 (a) of the Lanham
`
`1
`
`2 3 4 5 6 7
`
`8
`
`9
`
`10
`
`1]
`
`12
`
`13
`
`14 Act, 15 U.S.C. Section 1l25(a).
`
`15
`
`33.
`
`Fab.com has, without authorization, used in commerce marks and
`
`16 names that are confusingly similar to Just Fab’s JUST FAB and JustFab.com
`
`17 marks and names, including on its website and in connection with the promotion,
`
`18
`
`19
`
`sale, offering for sale and distribution of services and products identical or closely
`
`related to those offered by Just Fab, including, but not limited to, apparel, shoes,
`
`'
`
`20 handbags and fashion accessories, and which are likely to cause confusion or cause
`
`21 mistake or to deceive as to the affiliation, connection or association of Fab.com
`
`22 with Just Fab, and/or as to the origin, sponsorship or approval of the Fab.com
`
`23 website and!or Fab.com’s goods or services or commercial activities.
`
`24
`
`34.
`
`Just Fab is informed and believes, and on that basis avers, that the
`
`25 conduct of Fab.com has been knowing, deliberate and willful, in its use of the Fab
`
`26 and Fab.com designations in connection with the same and complimentary services
`
`27
`
`and products as to which Just Fab uses the JUST FAB marks, which is intended to
`
`Mitchell 28
`Silberberg &
`
`Knupp LLP
`5448405.l/44453-000 6
`
`
`1 1
`COMPLAINT
`
`

`
`-Case :13—cv—05330-SJO—VBK Document 1 Filed 07/24/13 Page 12 of 21 Page ID #:67
`
`cause confusion, or to cause mistake or to deceive among purchasers, users and the
`public, and in blatant disregard of Just Fab’s rights.
`
`35.
`
`Fab.com’s wrongful conduct has permitted or will permit it to make
`
`substantial diverted revenue on the strength of Just Fab’s marketing, advertising,
`
`sales and consumer recognition. As a direct and proximate result of Fab.com’s
`
`wrongful conduct, as alleged herein, Just Fab has been deprived and will be
`
`deprived of the value of its JUST FAB and JustFab.com marks and names as
`
`commercial assets in an amount as yet unknown but to be determined at trial. Just
`
`Fab seeks an accounting of Fab.com’s profits, and requests that the Court grant
`
`Just Fab three times that amount in the Court’ s discretion.
`
`36.
`
`Fab.com’s acts and omissions have caused and, unless restrained by
`
`this Court, will continue to cause Just Fab and the public to suffer great and
`
`irreparable damage and injury through, inter alia, (a) a likelihood of confilsion,
`
`\OOO\}O\UI-|>~U-3i\)'—'
`
`i-- 0
`
`y.—|
`
`g_A
`
`n-—I IQ
`
`I-4 U)
`
`14 mistake and deception as to the affiliation, connection or association of Fab.com
`
`15
`
`and its services and products with Just Fab and its services and (b) the loss of Just
`
`16 Fab’s valuable goodwill and business reputation symbolized by its JUST FAB
`
`17 marks. Just Fab has no adequate remedy at law..
`
`18
`
`37.
`
`Just Fab is informed and believes, and on that basis avers, that the
`
`19
`
`intentional and willful nature of Fab.com’s aforementioned conduct renders this an
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`exceptional case under 15 U.S.C. Section 1117(a).
`
`THIRD CLAIM FOR RELIEF
`
`(Unfair Competition Under California Business and Professions Code Sections
`
`17200, 17208 and 17500 Et Seq.)
`
`38.
`
`Just Fab incorporates herein by reference the averments of paragraphs
`
`26
`
`1 through 37 as though fully set forth herein.
`
`27
`
`39.
`
`Fab.com has, by reason of the foregoing acts, engaged in unlawful,
`
`S“:1::I:;I& 28 unfair and fraudulent business practices.
`Knupp LLP
`54484051/44453-000
`
`12
`
`

`
`.Case :13—cv—O5330-SJO—VBK Documentl Filed 07/24/13 Page 13 of 21 Page ID #:68
`
`40.
`
`Fab.com’s acts have impaired Just Fab’s business and have otherwise
`
`adversely affected Just Fab’s business and reputation by use of unlawfiil, unfair
`
`and fraudulent business practices in violation of California Business & Professions
`
`Code, including Sections 17200 to 17208, 17500, et seq.
`
`41.
`
`Just Fab is informed and believes, and on that basis avers, that
`
`Fab.com’s acts have caused and, unless restrained by this Court, will continue to
`
`cause Just Fab to suffer great and irreparable damage and injury, for which Just
`
`Fab has no adequate remedy at law.
`
`FOURTH CLAIM FOR RELIEF
`
`(Common Law Unfair Competition)
`
`. 42.
`
`Just Fab incorporates herein by reference the averments of paragraphs
`
`1 through 41 as though fully set forth herein.
`
`43.
`
`Just Fab is the owner of all common law right, title, and interest in and
`
`to the JUST FAB marks in California and the United States.
`
`44.
`
`Fab.com’s unlawful acts in appropriating rights in Just Fab’s common
`
`law trademarks were intended to capitalize on Just Fab’s goodwill for Fab.com’s
`
`own pecuniary gain.
`
`45.
`
`Fab.com has, without authorization, on its Fab.com website and/or in
`
`connection with s goods and services offered through that website, used in
`
`commerce marks and names that are confusingly similar to Just Fab’s JUST FAB
`
`and JustFab.com marks and names and which are likely to cause confusion or
`
`cause mistake or to deceive as to the affiliation, connection or association of
`
`Fab.com with Just Fab, and/or as to the origin, sponsorship or approval of the
`
`Fab.com website and/or Fab.com’s goods or services or commercial activities.
`
`26
`
`27
`
`Mitchell 28
`Silberberg &
`Knupp LLP
`5448405. l/44453-00
`
`6
`
`46.
`
`Just Fab has expended substantial time, resources and effort to obtain
`
`an excellent reputation for itself and its JUST FAB and JustFab.com names and
`
`1 3
`COMPLAINT
`
`

`
`-Case 2:13~cv-05330-S.]O—VBK Document 1 Filed 07/24/13 Page 14 of 21 Page ID #:69
`
`marks. As a result of Just Fab’s efforts, Fab.com is now unjustly enriched and is
`
`benefiting from property rights that rightfully belong to Just Fab.
`
`47.
`
`Just Fab is informed and believes, and on that basis avers, that the
`
`conduct of Fab.com has been knowing, deliberate, willful, intended to cause
`
`confusion, or to cause mistake or to deceive and in blatant disregard of Just Fab’s
`
`rights.
`
`.
`
`48.
`
`Fab.com’s acts and omissions have caused and, unless restrained by
`
`this Court, will continue to cause Just Fab and the public to suffer great and
`
`irreparable damage and injury through, inter alia, (a) a likelihood of confusion,
`
`1 2 3 4 5
`
`6
`
`7
`
`8
`
`9
`
`10 mistake and deception as to the affiliation, connection or association of Fab.com
`
`11
`
`and its services and products with Just Fab and its services and (b) the loss of Just
`
`12 Fab’s valuable goodwill and business reputation symbolized by its JUST FAB
`
`13 marks. Just Fab has no adequate remedy at law.
`
`1 4
`
`15
`
`16
`
`17
`
`18
`
`19
`
`FIFTH CLAIM FOR RELIEF
`
`(Declaratory Relief)
`
`49.
`
`Just Fab incorporates herein by reference the averments of paragraphs
`
`1 through 48 as though fully set forth herein.
`
`50. An actual dispute has arisen and now exists between Just Fab, on the
`
`20 one part, and Fab.com, on the other part.
`
`21
`
`51.
`
`Just Fab contends that Fab.com is not entitled to the registration with
`
`22 the United States Patent and Trademark Office of the trademarks that are the
`23
`subject ofthe Applications bearing Serial Nos. 85/230,638, 85/683,373 and
`
`24 85/969,541 (the “Fab.com Applications”), as the marks submitted in each such
`
`25 Application, when used on or in connection with Fab.com’s products and/or
`
`26
`
`services, are in such near resemblance to Just Fab’s pre-existing JUST FAB marks
`
`27
`
`as to be likely to cause confusion, or to cause mistake, or to deceive as to the
`
`Mitchell 28 affiliation, connection, or association of such person with another person, or as to
`Silberberg&
`
`Knupp LLP
`5448405.]/44453-000
`
`14
`CONIPLAINT
`
`

`
`~Case 2:13-cv—05330-SJO—VBK Document 1 Filed 07/24/13 Page 15 of 21 Page ID #:7O
`
`the origin, sponsorship, or approval of his or her goods, services, or commercial
`
`activities by Just Fab. Just Fab is informed and believes, and on that basis avers,
`
`that Fab.com disputes -Just