Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA785663
`
`Filing date:
`
`11/28/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91217872
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`American Training Center Inc
`
`RALPH N GABOURY
`COX PADMORE SKOLNIK & SHAKARCHY LLP
`630 THIRD AVENUE19TH FLOOR
`NEW YORK, NY 10017
`UNITED STATES
`gaboury@cpsslaw.com
`
`Motion to Suspend for Civil Action
`
`Ralph N. Gaboury, Esq.
`
`gaboury@cpsslaw.com
`
`/Ralph Gaboury/
`
`11/28/2016
`
`Motion to Suspend for Civil Action 91217872 11-28-2016_Part1.pdf(5015394
`bytes )
`Motion to Suspend for Civil Action 91217872 11-28-2016_Part2.pdf(5175548
`bytes )
`Motion to Suspend for Civil Action 91217872 11-28-2016_Part3.pdf(1942957
`bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA785663
`
`Filing date:
`
`11/28/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91217872
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`American Training Center Inc
`
`RALPH N GABOURY
`COX PADMORE SKOLNIK & SHAKARCHY LLP
`630 THIRD AVENUE19TH FLOOR
`NEW YORK, NY 10017
`UNITED STATES
`gaboury@cpsslaw.com
`
`Motion to Suspend for Civil Action
`
`Ralph N. Gaboury, Esq.
`
`gaboury@cpsslaw.com
`
`/Ralph Gaboury/
`
`11/28/2016
`
`Motion to Suspend for Civil Action 91217872 11-28-2016_Part1.pdf(5015394
`bytes )
`Motion to Suspend for Civil Action 91217872 11-28-2016_Part2.pdf(5175548
`bytes )
`Motion to Suspend for Civil Action 91217872 11-28-2016_Part3.pdf(1942957
`bytes )
`
`
`
`IN THE UNTED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`In the matter of Application Ser. No. 85938941
`For the mark: ·PAUL FERRARA· EDUCATION MANAGEMENT
`Date of Filing: August 18, 2014
`
`
`
`
`
`
`AMERICAN TRAINING CENTER INC.,
`
`
`Opposer,
`
`v.
`
`
`PAUL FERRARA,
`
`
`Applicant.
`
`
`
`
`
`
`Opposition No. 91217872
`
`
`
`
`
`
`OPPOSER’S MOTION TO SUSPEND PENDING CIVIL ACTION
`
`Pursuant to 37 CFR § 2.117 and TBMP § 510.02(a), Opposer, American Training Center
`
`Inc. (“ATC” or “Opposer”), respectfully moves that this proceeding be suspended pending the
`
`outcome of the civil action filed by Opposer against Applicant in the United States District Court
`
`for the District of New Jersey, styled as American Training Center Inc. v. Robert Fiance Beauty
`
`Schools Inc., Robert Fiance Makeup Academy, Inc., Ferrara Education Group, LLC and Paul
`
`Ferrara (D.N.J. 2:16-cv-08605) (hereafter the “Civil Action”), as the Civil Action will have a
`
`direct bearing on the Applicant’s right to the mark at issue.
`
`
`
`
`
`
`
`1
`
`
`
`Attached as Exhibit A is a copy of the Complaint filed with the federal district court in
`
`the Civil Action, which, inter alia, seeks to permanently enjoin Applicant’s use of the mark in
`
`the opposed Application.
`
`Dated: November 28, 2016
`
`
`
`
`
`
`
`
`
`Ralph N. Gaboury
`
`COX PADMORE SKOLNIK &
`SHAKARCHY LLP
`
`
`
`
`
`
`Attorneys for Opposer
`AMERICAN TRAINING CENTER INC.
`
`630 Third Avenue, 19th Floor
`New York, NY 10017
`P: (212) 953-6633
`F: (212) 949-6943
`E: gaboury@cpsslaw.com
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Motion to Suspend
`
`Pending Civil Action has been served on Applicant Paul Ferrara by electronic mail (by
`
`agreement) to Applicant’s counsel of record listed below on November 28, 2016:
`
`
`
`
`
`Ralph N. Gaboury
`
`
`
`
`
`
`
`
`
`Bruce T. Margulies
`Neifeld IP Law PC
`4813B Eisenhower Ave.
`Alexandria, VA 22304
`E: bmargulies@neifeld.com
`
`2
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBITA
`
`
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 1 of 28 PageID: 1
`
`Charles Epstein
`Stefan B. Kalina
`COX PADMORE SKOLNIK &
`SHAKARCHY LLP
`
`27 Warren Street, Suite 304
`Hackensack, New Jersey 07601
`P: (201) 489-7600
`E: ceatty@gmail.com
`
`630 Third Avenue, 19th Floor
`New York, NY 10017
`P: (212) 953-6633
`E: kalina@cpsslaw.com
`
`Attorneys for Plaintiff
`American Training Center Inc.
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`___________________________________
`
`
`
`:
`AMERICAN TRAINING CENTER INC.,
`:
`a New York Corporation,
`:
`
`:
`
`:
`:
`:
`
`:
`
`:
`
`:
`ROBERT FIANCE BEAUTY SCHOOLS
`:
`INC., a New Jersey Corporation,
`:
`ROBERT FIANCE MAKEUP
`:
`ACADEMY, INC., a New Jersey
`:
`Corporation, FERRARA EDUCATION
`:
`GROUP, LLC, a New Jersey Limited
`Liability Company, and PAUL FERRARA, :
`an individual domiciled in New Jersey,
`:
`
`:
`:
`
`Defendants.
`___________________________________ :
`
`Plaintiff,
`
`
`vs.
`
`
`Civil Action No. _______________
`
`
`
`
`
`
`Hon. _____________________
`
`
`
`
`
`
`
`
`
`
`
`
`COMPLAINT
`AND JURY DEMAND
`
`(Document filed electronically)
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 2 of 28 PageID: 2
`
`Plaintiff, American Training Center Inc. (“ATCI”), for its Complaint against defendants
`
`Robert Fiance Beauty Schools, Inc. (“RFBS”), Robert Fiance Makeup Academy, Inc.
`
`(“RFMA”), Ferrara Education Group, LLC (“FEG”) and Paul Ferrara, states as follows:
`
`Jurisdiction and Venue
`
`1.
`
`Plaintiff ATCI is a corporation organized and existing under the laws of the State
`
`of New York, with its principal place of business located at #2L, 108-22 Queens Blvd., Forest
`
`Hills, NY 11375.
`
`2.
`
`Upon information and belief, Defendant RFBS is a corporation organized and
`
`existing under the laws of the State of New Jersey, with its principal place of business located at
`
`312 State Street, Perth Amboy, New Jersey 08861.
`
`3.
`
`Upon information and belief, Defendant RFMA is a corporation organized and
`
`existing under the laws of the State of New Jersey, with its principal place of business located at
`
`314 State Street, Perth Amboy, New Jersey 08861.
`
`4.
`
`Upon information and belief, Defendant FEG is a limited liability company
`
`organized and existing under the laws of the State of New Jersey, with its principal place of
`
`business located at 314 State Street, Perth Amboy, New Jersey 08861.
`
`5.
`
`Upon information and belief, Defendant Paul Ferrara is an individual domiciled in
`
`the State of New Jersey, residing at 2 Turtle Hollow Drive, Manalapan, NJ 07726.
`
`6.
`
`This Court has subject matter jurisdiction over the claims alleged pursuant to
`
`Section 39 of the Lanham Act, 15 U.S.C. § 1121, and under 28 U.S.C. §§ 1331 and 1338,
`
`because the action arises, in part, under 15 U.S.C. §§ 1114 and 1125. This Court has subject
`
`matter jurisdiction over ATCI’s related state law and common law claims pursuant to 28 U.S.C.
`
`2
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 3 of 28 PageID: 3
`
`§ 1338 because these claims are substantial and related claims under federal trademark law and
`
`pursuant to 28 U.S.C. § 1367, which codifies the doctrine of supplemental jurisdiction.
`
`7.
`
`Venue is proper in this judicial district under 28 U.S.C. 1391(b)(1) because, upon
`
`information and belief, defendants RFBS, RFMA and FEG each reside in this judicial district
`
`and, upon information and belief, all of the defendants are residents of New Jersey. Venue is
`
`also proper in this judicial district under 28 U.S.C. 1391(b)(2) because a substantial part of the
`
`events or omissions giving rise to ATCI’s claims occurred in this district.
`
`FACTUAL BACKGROUND
`
`Ferrara’s Beauty School and the ATCI Ferrara Marks
`
`8.
`
`Since August of 2011, Plaintiff has offered beauty school educational services and
`
`related products and services under the marks FERRARA’S BEAUTY SCHOOL and
`
`FERRARA’S (collectively the “ATCI Ferrara Marks”).
`
`9.
`
`Plaintiff operates and promotes using the ATCI Ferrara Marks a trade school in
`
`Flushing, New York, that offers courses in hairdressing, cosmetology, makeup and other
`
`vocational topics for students wishing to find employment in the beauty industry. Although
`
`Plaintiff operates its trade school in Flushing, New York, it advertises into and attracts students
`
`from New Jersey, Connecticut and other locations outside of New York and the United States,
`
`using the ATCI Ferrara Marks. Plaintiff is a Student and Exchange Visitor Program-certified
`
`(“SEVP-certified”) school authorized to issue international students the Form I-20 Certificate of
`
`Eligibility for Nonimmigrant Student Status-For Academic and Language Students.
`
`10.
`
`As part of its educational offerings, Plaintiff provides career training and
`
`counseling to students, which includes instruction on business management, marketing and
`
`advertising for students seeking to open their own beauty business, or to enter management at
`
`3
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 4 of 28 PageID: 4
`
`such a business. In connection with these offerings, Plaintiff also promotes its business and the
`
`ATCI Ferrara Marks through the use of clothing items such as men’s and women’s collared and
`
`knit shirts.
`
`11.
`
`In addition to its education services, Plaintiff also offers for sale hair care
`
`products using the ATCI Ferrara Marks, including hair gel, hair mousse, hair spray, make-up,
`
`and shampoo-conditioners.
`
`12.
`
`Plaintiff has invested substantial monetary and other resources in the ATCI
`
`Ferrara Marks, which through advertising and promotion has resulted in tremendous value and
`
`recognition of the ATCI Ferrara Marks.
`
`13.
`
`To protect the good will associated with the ATCI Ferrara Marks, Plaintiff
`
`applied for and was granted by the United States Patent and Trademark Office (“USPTO”) on
`
`March 25, 2014, United States Trademark Registration No. 4,500,158 for FERRARA’S
`
`BEAUTY SCHOOL for “educational services in the nature of beauty schools” in Class 041 in
`
`the following stylized script (the “ATCI ‘158 Registration”):
`
`
`
`Attached hereto as Exhibit A is a true and correct copy of the ATCI ‘158 Registration.
`
`14.
`
`In addition, on May 8, 2012, Plaintiff filed with the USPTO App. Ser No.
`
`85/619337 for the mark FERRARA’S BEAUTY SCHOOL for both “education services in the
`
`nature of beauty schools” in Class 041 and “Hair gel; Hair mousse; Hair spray; Make-up;
`
`Shampoo-conditioners” in Class 003 (the “ATCI ‘337 Application”). Attached hereto as Exhibit
`
`4
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 5 of 28 PageID: 5
`
`B is a true and correct copy of the ATCI ‘337 Application from the USPTO Trademark
`
`Electronic Search System (“TESS”).
`
`15.
`
`Plaintiff also filed with the USPTO on August 27, 2012, App. Ser. No.
`
`85/713594 for the mark FERRARA’S, for “educational services in the nature of beauty schools”
`
`in Class 041 (the “ATCI ‘594 Application”). Attached hereto as Exhibit C is a true and correct
`
`copy of the ATCI ‘594 Application from the TESS system.
`
`Infringing Use of FERRARA by Defendants and
`ATCI’s Demands that the Defendants Cease and Desist
`
`
`
`
`16.
`
`Upon information and belief, Defendant Paul Ferrara is the owner and/or principal
`
`of Defendants RFBS, RFMA and FEG.
`
`17.
`
`Upon information and belief, Defendants Paul Ferrara, RFBS and RFMA operate
`
`beauty schools at five locations in New Jersey under the name “Robert Fiance Beauty Schools.”
`
`Upon information and belief, Defendant FEG is party to a lease for the Robert Fiance Beauty
`
`Schools, and/or is also engaged in operations involving the Robert Fiance Beauty Schools.
`
`18.
`
`Upon information and belief, notwithstanding Plaintiff’s prior and superior rights
`
`in the ATCI Ferrara Marks, starting in or about July of 2012, the Defendants began using the
`
`term FERRARA EDUCATION GROUP, and other terms using the word FERRARA, to
`
`promote the Defendants’ beauty school and related services.
`
`19.
`
`Specifically, in July of 2012, the Defendants used the term FERRARA
`
`EDUCATION GROUP on several websites associated with the Robert Fiance Beauty Schools,
`
`including websites located at the following Internet addresses: robertfiance.com,
`
`robertfiancemakeup.com, learnhairandmakeup.com. On the robertfiancemakeup.com website,
`
`Linda Karas was listed at that time as the “Director of Operations; Ferrara Education Group.”
`
`5
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 6 of 28 PageID: 6
`
`20.
`
`In addition, although the Defendants had not secured any federal trademark
`
`registrations for FERRARA EDUCATION GROUP, the Defendants improperly place a circled-
`
`R (®) symbol next to FERRARA EDUCATION GROUP on the learnhairandmakeup.com
`
`website.
`
`21.
`
`On or about August 1, 2012, ATCI’s principal, Vincent Ferrara, through his
`
`attorneys, delivered to Defendants Paul Ferrara a letter demanding that he cease all use of the
`
`term FERRARA EDUCATION GROUP. Despite this letter, the Defendants continued to use
`
`FERRARA EDUCATION GROUP, and to use the term FERRARA in connection with other
`
`products and services.
`
`22.
`
`Upon information and belief, starting in or about June of 2013, Defendants began
`
`using the term FERRARA PRO and/or FERRARA PRO SALON PROFESSIONAL to label and
`
`promote various hair care products. Attached hereto as Exhibit D is a true and correct copy of
`
`the Amendment to Allege Use and specimen submitted by Defendants Paul Ferrara to the
`
`USPTO in connection with his application to register the mark FERRARA PRO (App. Ser. No.
`
`85979926), in which he, through his counsel, attested under penalty of perjury that he first used
`
`the term on June 22, 2013.
`
`23.
`
`Starting in the fall of 2013, the attorneys for Plaintiff and Defendants Paul Ferrara
`
`exchanged numerous telephone calls and electronic mail correspondence. Throughout these
`
`communications, Plaintiff maintained its demand that Defendants cease all infringing use of the
`
`term FERRARA, including FERRARA EDUCATION GROUP. The parties were unable to
`
`reach any agreement, the result being a series of proceedings filed by the parties with the USPTO
`
`Trademark Trial and Appeal Board (the “TTAB”).
`
`6
`
`
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 7 of 28 PageID: 7
`
`The USPTO Proceedings
`
`24.
`
`On August 7, 2012, Defendant Paul Ferrara filed with the TTAB a Notice of
`
`Opposition to Plaintiff’s then-pending application Serial No. 85457503 to register the stylized
`
`FERRARA’S BEAUTY SCHOOL mark, in an administrative proceeding styled as Paul Ferrara
`
`v. American Training Center Inc., Opposition No. 91206451 (“Defendants’ Opposition
`
`Proceeding”).
`
`25.
`
`During the course of Defendants’ Opposition Proceeding, the parties exchanged
`
`limited discovery and engaged in settlement negotiations.
`
`26.
`
`Settlement negotiations broke down in February of 2014, and on February 9,
`
`2014, Defendant Paul Ferrara voluntarily withdrew Defendants’ Opposition Proceeding,
`
`resulting in dismissal of the proceeding with prejudice in favor of Plaintiff ATCI. As a result,
`
`the ATCI ‘158 Registration issued shortly thereafter on March 25, 2014.
`
`27.
`
`Although the parties made another attempt at settlement during the spring and
`
`summer of 2014, no agreement could be reached.
`
`28.
`
`On or about August 18, 2014, Plaintiff filed a Notice of Opposition with the
`
`TTAB to Defendant Paul Ferrara’s Application Serial No. 85938941 for federal registration of
`
`the term PAUL FERRARA EDUCATION MANAGEMENT in an administrative proceeding
`
`styled as American Training Center Inc. v. Paul Ferrara, Opposition No. 91217872 (“ATCI’s
`
`‘872 TTAB Proceeding”), which is still pending before the TTAB.
`
`29.
`
`On or about November 23, 2014, Plaintiff filed a Notice of Opposition with the
`
`TTAB to Defendant Paul Ferrara’s Application Serial No. 86099446 for federal registration of
`
`the term FERRARA PRO SALON PROFESSIONAL in an administrative proceeding styled as
`
`7
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 8 of 28 PageID: 8
`
`American Training Center Inc. v. Paul Ferrara, Opposition No. 91219457 (“ATCI’s ‘457 TTAB
`
`Proceeding”), which is still pending before the TTAB.
`
`30.
`
`On or about December 26, 2014, Plaintiff filed a Notice of Opposition with the
`
`TTAB to Defendant Paul Ferrara’s Application Serial No. 85563514 for federal registration of
`
`the term FERRARA PRO in an administrative proceeding styled as American Training Center
`
`Inc. v. Paul Ferrara, Opposition No. 91219936 (“ATCI’s ‘936 TTAB Proceeding”), which is
`
`still pending before the TTAB.
`
`31.
`
`On or about November 7, 2016, Plaintiff filed a Notice of Opposition with the
`
`TTAB to Defendant Paul Ferrara’s Application Serial No. 85982549 for federal registration of
`
`the term FERRARA PRO SALON PROFESSIONAL in an administrative proceeding styled as
`
`American Training Center Inc. v. Paul Ferrara, Opposition No. 91231047 (“ATCI’s ‘047 TTAB
`
`Proceeding”), which is still pending before the TTAB.
`
`32.
`
`On or about November 17, 2016, Plaintiff filed a Petition for Cancellation with
`
`the TTAB to Defendant Paul Ferrara’s United States Registration No. 4,443,963 for the term
`
`FERRARA PRO in an administrative proceeding styled as American Training Center Inc. v.
`
`Paul Ferrara, for which the TTAB assigned Tracking No. ESTTA783579 (“ATCI’s ‘579 TTAB
`
`Proceeding”), which is now pending before the TTAB.
`
`Breakdown of Settlement Discussions – Defendants’ Continued Infringing Use of
`FERRARA EDUCATION GROUP and other Infringing Terms
`
`
`33.
`
`Throughout much of 2015 and 2016, the parties continued settlement discussions,
`
`but were unable to reach an agreement.
`
`34.
`
`Despite Plaintiff’s attempts to reach an amicable settlement with the Defendants,
`
`Defendants continue to use FERRARA EDUCATION GROUP to promote the Robert Fiance
`
`8
`
`Beauty Schools.
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 9 of 28 PageID: 9
`
`35.
`
`Defendants use FERRARA EDUCATION GROUP together with a graduation-
`
`cap logo on the website titled “Salon Professional Partners” to promote the Robert Fiance Beauty
`
`Schools located at http://paolo314.wixsite.com/salonpro. Attached hereto as Exhibit E is a true
`
`and correct copy of this website as of November 15, 2016 (annotated with red circle to show use
`
`of the infringing term).
`
`36.
`
`Defendants use FERRARA EDUCATION GROUP on the “B2B Yellowpages”
`
`website to promote the Robert Fiance Beauty Schools at
`
`http://www.b2byellowpages.com/companyinformation/286249685robertfiancebeautyschools.
`
`Attached hereto as Exhibit F is a true and correct copy of this website as of November 15, 2016
`
`(highlighted to show use of infringing term).
`
`37.
`
`Defendants use FERRARA EDUCATION GROUP three times on the
`
`“Local.com” website to promote the Robert Fiance Beauty Schools at
`
`http://jetcapital.local.com/business/details/sewellnj/robertfiancebeautyschools134240420/.
`
`Attached hereto as Exhibit G is a true and correct copy of this website as of November 15, 2016
`
`(highlighted to show use of infringing term).
`
`38.
`
`Defendants use FERRARA EDUCATION GROUP on the
`
`“myCentralJersey.com” website to promote the Robert Fiance Beauty Schools at
`
`http://www.mycentraljersey.com/story/news/local/middlesex-county/2014/06/09/robert-fiance-
`
`beauty-school-battle-of-tri-states/10254109/?from=global. Attached hereto as Exhibit H is a true
`
`and correct copy of this website as of November 15, 2016.
`
`39.
`
`Defendants use FERRARA EDUCATION GROUP on the “hub.biz” website to
`
`promote the Robert Fiance Beauty Schools at https://robert-fiance-beauty-schools-nj-8.hub.biz/.
`
`9
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 10 of 28 PageID: 10
`
`Attached hereto as Exhibit I is a true and correct copy of this website as of November 15, 2016
`
`(highlighted to show infringing use of term).
`
`40.
`
`Upon information and belief, despite Plaintiff’s pre-existing and superior rights in
`
`the ATCI Ferrara Marks, Defendants continue to sell hair care products branded with the terms
`
`FERRARA PRO and FERRARA PRO SALON PROFESSIONAL, including sales to beauty
`
`school students attending the Robert Fiance Beauty Schools.
`
`41.
`
`Despite Plaintiff’s pre-existing and superior rights in the ATCI Ferrara Marks,
`
`upon information and belief, Defendants have bona fide plans to use in commerce the term
`
`PAUL FERRARA EDUCATION MANAGEMENT, as evidenced by Defendant Paul Ferrara’s
`
`pending Application Ser. No. 85938941 on file with the USPTO. This Application is also the
`
`subject of ATCI’s ‘872 TTAB Proceeding.
`
`42.
`
`Despite Plaintiff’s pre-existing and superior rights in the ATCI Ferrara Marks,
`
`upon information and belief, Defendants have bona fide plans to use in commerce the term
`
`FERRARA MAKEUP ACADEMY, as evidenced by Defendant Paul Ferrara’s pending
`
`Application Ser. No. 85563508 on file with the USPTO.
`
`43.
`
`Defendants’ use of FERRARA EDUCATION GROUP is, and continues to cause
`
`confusion among prospective beauty school students, to the detriment and harm of Plaintiff.
`
`Plaintiff’s ATCI Ferrara Marks and FERRARA EDUCATION GROUP share the word
`
`“FERRARA”, which constitutes the most distinctive aspect of each. In addition, Plaintiff and
`
`Defendants operate and promote their goods and services through the same channels of trade.
`
`44.
`
`Defendants’ use of FERRARA PRO and FERRARA PRO SALON
`
`PROFESSIONAL is, and continues to cause confusion among consumers of hair care products,
`
`to the detriment and harm of Plaintiff. Plaintiff’s ATCI Ferrara Marks and FERRARA PRO and
`
`10
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 11 of 28 PageID: 11
`
`FERRARA PRO SALON PROFESSIONAL share the word “FERRARA”, which constitutes the
`
`most distinctive aspect of each. In addition, Plaintiff and Defendants operate and promote their
`
`goods and services through the same channels of trade.
`
`45.
`
`Defendants’ planned use of PAUL FERRARA EDUCATION MANAGEMENT
`
`will cause confusion among prospective beauty school students, to the detriment and harm of
`
`Plaintiff. Plaintiff’s ATCI Ferrara Marks and PAUL FERRARA EDUCATION
`
`MANAGEMENT share the word “FERRARA”, which constitutes the most distinctive aspect of
`
`each. In addition, Plaintiff and Defendants operate and promote their goods and services through
`
`the same channels of trade.
`
`46.
`
`Defendants’ planned use of FERRARA MAKEUP ACADEMY will cause
`
`confusion among prospective beauty school students, to the detriment and harm of Plaintiff.
`
`Plaintiff’s ATCI Ferrara Marks and FERRARA MAKEUP ACADEMY share the word
`
`“FERRARA”, which constitutes the most distinctive aspect of each. In addition, Plaintiff and
`
`Defendants operate and promote their goods and services through the same channels of trade.
`
`COUNT I
`Federal Registered Trademark Infringement, 15 U.S.C. § 1114(1)
`As to Infringing Use of FERRARA EDUCATION GROUP
`
`Plaintiff incorporates by reference the preceding paragraphs.
`
`47.
`
`48.
`
`Defendants’ use of FERRARA EDUCATION GROUP in commerce in
`
`connection with the sale, distribution, and advertising of beauty school and related services is
`
`likely to cause confusion, mistake, and deception as to the affiliation, connection, or association
`
`of Defendants with Plaintiff, or as to the origin, sponsorship, approval, or certification of
`
`Defendants’ services by Plaintiff. Defendants’ actions therefore constitute infringement of
`
`11
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 12 of 28 PageID: 12
`
`Plaintiff’s ATCI ‘158 Registration in violation of Section 32(1) of the Lanham Act, 15 U.S.C. §
`
`1114(1).
`
`49.
`
`Defendants’ activities have caused and, unless enjoined by this Court, will
`
`continue to cause a likelihood of confusion, mistake, and deception among members of the trade
`
`and among consumers and the public at large.
`
`50.
`
`The likelihood of confusion, mistake, and deception caused by Defendants’ use of
`
`FERRARA EDUCATION GROUP in connection with beauty school services is causing
`
`irreparable harm to the goodwill and reputation symbolized by Plaintiff’s ATCI ‘158
`
`Registration.
`
`51.
`
`Plaintiff lacks an adequate remedy at law because the mark that is the subject of
`
`the ATCI ‘158 Registration is unique and represents the source, reputation, and goodwill of the
`
`Plaintiff’s brand to the public. Certain damages caused by Defendants’ acts may not be
`
`susceptible to any ready or precise calculation of damages because such damages involve lost
`
`business opportunities and loss of goodwill. Accordingly, monetary damages alone cannot fully
`
`compensate Plaintiff for Defendants’ misconduct.
`
`52.
`
`Plaintiff is entitled to an injunction under 15 U.S.C. § 1116 against Defendants’
`
`continued use of FERRARA EDUCATION GROUP, or any confusingly similar variations of the
`
`mark that is the subject of the ATCI ‘158 Registration. Unless enjoined, Defendants will
`
`continue to use FERRARA EDUCATION GROUP and continue to cause consumer confusion
`
`and injure Plaintiff’s goodwill and reputation.
`
`53.
`
`As a direct and proximate result of Defendants’ conduct, Plaintiff is also entitled
`
`to recover three times its actual damages and the profits wrongfully obtained by Defendants
`
`attributable to the infringement in an amount to be proven at trial.
`
`12
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 13 of 28 PageID: 13
`
`54.
`
`Defendants were aware of Plaintiff’s prior and superior rights in the mark that is
`
`the subject of the ATCI ‘158 Registration at the time Defendants started using FERRARA
`
`EDUCATION GROUP. The fact that Defendants use the mark in connection with the
`
`promotion of beauty school services further gives rise to an inference of intentional, willful, and
`
`malicious intent on the part of Defendants to trade on the goodwill associated with the mark that
`
`is the subject of the ATCI ‘158 Registration, and to cause public confusion, mistake, and
`
`deception about the source and affiliation of Defendants’ services. Accordingly, this is an
`
`exceptional case under 15 U.S.C. § 1117(a) justifying an award of Plaintiff’s reasonable
`
`attorneys’ fees.
`
`COUNT II
`Federal Registered Trademark Infringement, 15 U.S.C. § 1114(1)
`As to Infringing Use of FERRARA PRO and FERRARA PRO SALON PROFESSIONAL
`
`Plaintiff incorporates by reference the preceding paragraphs.
`
`55.
`
`56.
`
`Defendants’ use of FERRARA PRO and FERRARA PRO SALON
`
`PROFESSIONAL in commerce in connection with the sale, distribution, and advertising of hair
`
`care products is likely to cause confusion, mistake, and deception as to the affiliation,
`
`connection, or association of Defendants with Plaintiff, or as to the origin, sponsorship, approval,
`
`or certification of Defendants’ products by Plaintiff. Defendants’ actions therefore constitute
`
`infringement of Plaintiff’s ATCI ‘158 Registration in violation of Section 32(1) of the Lanham
`
`Act, 15 U.S.C. § 1114(1).
`
`57.
`
`Defendants’ activities have caused and, unless enjoined by this Court, will
`
`continue to cause a likelihood of confusion, mistake, and deception among members of the trade
`
`and among consumers and the public at large.
`
`13
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 14 of 28 PageID: 14
`
`58.
`
`The likelihood of confusion, mistake, and deception caused by Defendants’ use of
`
`FERRARA PRO and FERRARA PRO SALON PROFESSIONAL in connection with hair care
`
`products is causing irreparable harm to the goodwill and reputation symbolized by Plaintiff’s
`
`ATCI ‘158 Registration.
`
`59.
`
`Plaintiff lacks an adequate remedy at law because the mark that is the subject of
`
`the ATCI ‘158 Registration is unique and represents the source, reputation, and goodwill of the
`
`Plaintiff’s brand to the public. Certain damages caused by Defendants’ acts may not be
`
`susceptible to any ready or precise calculation of damages because such damages involve lost
`
`business opportunities and loss of goodwill. Accordingly, monetary damages alone cannot fully
`
`compensate Plaintiff for Defendants’ misconduct.
`
`60.
`
`Plaintiff is entitled to an injunction under 15 U.S.C. § 1116 against Defendants’
`
`continued use of FERRARA PRO and FERRARA PRO SALON PROFESSIONAL, or any
`
`confusingly similar variations of the mark that is the subject of the ATCI ‘158 Registration.
`
`Unless enjoined, Defendants will continue to use FERRARA PRO and FERRARA PRO SALON
`
`PROFESSIONAL and continue to cause consumer confusion and injure Plaintiff’s goodwill and
`
`reputation.
`
`61.
`
`As a direct and proximate result of Defendants’ conduct, Plaintiff is also entitled
`
`to recover three times its actual damages and the profits wrongfully obtained by Defendants
`
`attributable to the infringement in an amount to be proven at trial.
`
`62.
`
`Defendants were aware of Plaintiff’s prior and superior rights in the mark that is
`
`the subject of the ATCI ‘158 Registration at the time Defendants started using FERRARA PRO
`
`and FERRARA PRO SALON PROFESSIONAL. The fact that Defendants use the mark in
`
`connection with the sale of hair care products to beauty school students further gives rise to an
`
`14
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 15 of 28 PageID: 15
`
`inference of intentional, willful, and malicious intent on the part of Defendants to trade on the
`
`goodwill associated with the mark that is the subject of the ATCI ‘158 Registration, and to cause
`
`public confusion, mistake, and deception about the source and affiliation of Defendants’ products
`
`and services. Accordingly, this is an exceptional case under 15 U.S.C. § 1117(a) justifying an
`
`award of Plaintiff’s reasonable attorneys’ fees.
`
`COUNT III
`Federal Unfair Competition, 15 U.S.C. § 1125(a)(1)(A)
`As to Infringing Use of FERRARA EDUCATION GROUP
`
`Plaintiff incorporates by reference the preceding paragraphs.
`
`63.
`
`64.
`
`Defendants’ use of FERRARA EDUCATION GROUP in commerce in
`
`connection with Defendants’ beauty school services is likely to cause confusion, mistake, and
`
`deception by creating the false and misleading impression that Defendants’ services are provided
`
`by Plaintiff; are affiliated, connected, or associated with Plaintiff; or have the certification,
`
`sponsorship, endorsement, or approval of Plaintiff.
`
`65.
`
`Defendants have made false or misleading descriptions of fact, false or misleading
`
`representations of fact, and/or false designations of origin of their services in violation of 15
`
`U.S.C. § 1125(a) by using FERRARA EDUCATION GROUP in connection with their services.
`
`66.
`
` Defendants use of FERRARA EDUCATION GROUP infringes the ATCI
`
`Ferrara Marks, and thus Defendants are liable under 15 U.S.C. § 1125(a)(1)(A) for unfair
`
`competition.
`
`67.
`
`Defendants’ activities have caused and, unless enjoined by this Court, will
`
`continue to cause a likelihood of confusion, mistake, and deception of customers and potential
`
`students of Plaintiff as well as the general public.
`
`15
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 16 of 28 PageID: 16
`
`68.
`
`The likelihood of confusion, mistake, and deception created as a result of
`
`Defendants’ use of FERRARA EDUCATION GROUP in connection with their services is
`
`causing irreparable harm to Plaintiff’s goodwill and reputation symbolized by the ATCI Ferrara
`
`Marks.
`
`69.
`
` Plaintiff lacks an adequate remedy at law because the ATCI Ferrara Marks are
`
`unique and represent the source, reputation, and goodwill of services promoted using the ATCI
`
`Ferrara Marks to the public. Certain damages caused by Defendants’ acts may not be susceptible
`
`to any ready or precise calculation of damages because such damages involve lost business
`
`opportunities and loss of goodwill. Accordingly, monetary damages alone cannot fully
`
`compensate Plaintiff for Defendants’ misconduct.
`
`70.
`
` Plaintiff is entitled to an injunction under 15 U.S.C. § 1116 against Defendants’
`
`continued use of FERRARA EDUCATION GROUP or any confusingly similar variations of
`
`Plaintiff’s ATCI Ferrara Marks. Unless enjoined, Defendants will continue to use FERRARA
`
`EDUCATION GROUP and continue to cause consumer confusion and injure Plaintiff’s
`
`goodwill and reputation.
`
`71.
`
` As a direct and proximate result of Defendants’ willful conduct, Plaintiff is also
`
`entitled to recover three times its actual damages and the profits wrongfully obtained by
`
`Defendants attributable to the infringement in an amount to be proven at trial.
`
`72.
`
`Defendants’ actions in adopting and using FERRARA EDUCATION GROUP in
`
`connection with directly related services gives rise to an inference of intentional, willful, and
`
`malicious intent on the part of Defendants to trade on the goodwill associated with Plaintiff’s
`
`ATCI Ferrara Marks and to cause public confusion, mistake, and deception about the
`
`16
`
`
`
`
`
`Case 2:16-cv-08605 Document 1 Filed 11/17/16 Page 17 of 28 PageID: 17
`
`certification, source, or affiliation of Defendants’ services. Accordingly, this is an exceptional
`
`case under 15 U.S.C. § 1117(a) justifying an award of Plaintiff’s reasonable attorneys’ fees.
`
`COUNT IV
`Federal Unfair Competition, 15 U.S.C. § 1125(a)(1)(A)
`As to Infringing Use of FERRARA PRO and FERRARA PRO SALON PROFESSIONAL
`
`Plaintiff incorporates by reference the preceding paragraphs.
`
`73.
`
`74.
`
`Defendants’ use of FERRARA PRO and FERRARA PRO SALON
`
`PROFESSIONAL in commerce in connection with Defendants’ hair care products is likely to
`
`cause confusion, mistake, and deception by creating th
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