Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA626901
`ESTTA Tracking number:
`09/12/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous ex-
`tension
`Address
`
`Evergreen Enterprises, Inc.
`11/05/2014
`
`5915 Midlothian Tpke
`Richmond, VA 23225
`UNITED STATES
`
`Correspondence
`information
`
`Cheryl L Black
`Counsel
`Evergreen Enterprises, Inc.
`5915 Midlothian Tpke Legal Dept
`Richmond, VA 23225
`UNITED STATES
`legal@myevergreen.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86177716
`09/12/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`07/08/2014
`11/05/2014
`
`Working Girls Design, Inc.
`3814 Broadmead
`Las Vegas, NV 89147
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 016. First Use: 2008/06/10 First Use In Commerce: 2008/06/10
`All goods and services in the class are opposed, namely: Art pictures; Art prints; Calendars; Greeting
`cards; Invitation cards; Occasioncards; Paper banners; Paper gift bags for wine; Paper gift tags; Pa-
`per napkins;Paper party favors; Printed recipe cards; Writing pads
`Class 021. First Use: 2008/06/10 First Use In Commerce: 2008/06/10
`All goods and services in the class are opposed, namely: Bottle stoppers specially adapted for use
`with wine bottles; Mugs; Plates; Wineglasses
`
`Grounds for Opposition
`
`Torres v. Cantine Torresella S.r.l.Fraud
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`Attachments
`
`Notice of Opposition 86177716.pdf(300090 bytes )
`2010CH Catalog Pages - Exhibit A.pdf(3169001 bytes )
`Original Complaint - Exhibit B.pdf(1392819 bytes )
`Answer - Exhibit C.pdf(44310 bytes )
`
`
`ESTTA626901
`ESTTA Tracking number:
`09/12/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous ex-
`tension
`Address
`
`Evergreen Enterprises, Inc.
`11/05/2014
`
`5915 Midlothian Tpke
`Richmond, VA 23225
`UNITED STATES
`
`Correspondence
`information
`
`Cheryl L Black
`Counsel
`Evergreen Enterprises, Inc.
`5915 Midlothian Tpke Legal Dept
`Richmond, VA 23225
`UNITED STATES
`legal@myevergreen.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86177716
`09/12/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`07/08/2014
`11/05/2014
`
`Working Girls Design, Inc.
`3814 Broadmead
`Las Vegas, NV 89147
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 016. First Use: 2008/06/10 First Use In Commerce: 2008/06/10
`All goods and services in the class are opposed, namely: Art pictures; Art prints; Calendars; Greeting
`cards; Invitation cards; Occasioncards; Paper banners; Paper gift bags for wine; Paper gift tags; Pa-
`per napkins;Paper party favors; Printed recipe cards; Writing pads
`Class 021. First Use: 2008/06/10 First Use In Commerce: 2008/06/10
`All goods and services in the class are opposed, namely: Bottle stoppers specially adapted for use
`with wine bottles; Mugs; Plates; Wineglasses
`
`Grounds for Opposition
`
`Torres v. Cantine Torresella S.r.l.Fraud
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`Attachments
`
`Notice of Opposition 86177716.pdf(300090 bytes )
`2010CH Catalog Pages - Exhibit A.pdf(3169001 bytes )
`Original Complaint - Exhibit B.pdf(1392819 bytes )
`Answer - Exhibit C.pdf(44310 bytes )
`
`
`
`First Amended Complaint - Exhibit D.pdf(371862 bytes )
`808 Copyright Reg - Exhibit E.pdf(345099 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Overnight Courier on this date.
`
`Signature
`Name
`Date
`
`/CLB/
`Cheryl L Black
`09/12/2014
`
`
`
`
`»,..«~Am:<:%\7XW%:m:‘rAT:':<~»wV»mm:‘<r
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
` EVERGREEN ENTERPRISES, INC.,
`
`
`
`Opposer,
`
`Applicant.
`
`Opposition No.:
`
`Mark: WORKING GIRLS DESIGN
`
`INC., and Design
`Serial No. 86177716
`
`Filed: January 28, 2014
`
`
`
`WORKING GIRLS DESIGN, |NC.,
`
`
`
`NOTICE OF OPPOSITION
`
`EVERGREEN ENTERPRISES, INC. (“Opposer: or “Evergreen”) believes that it is
`
`being and will be damaged by Working Girls Design’s (‘”’WGD" or "Applicant”)
`
`registration of the mark WORKING GIRLS DESIGN, NC. and Design (WGD Design
`
`Mark) for "art pictures; art prints; calendars; greeting cards; invitations; cards; occasion
`
`cards; paper banners; paper gift bags for wine; paper gift tags; paper napkins; paper
`
`party favors; printed recipe cards; writing pads,”in International Class 16, and bottle
`
`stoppers specially adapted for use with wine bottles; mugs; plates; wine giasses,” in
`
`International Class 21, and hereby opposes U.S_ Trademark Application Serial No.
`
`86177716 (“WGD Design Application”). As ground for its opposition, Evergreen aileges
`
`the following, upon actual knowledge with respect to Applicants own acts, and upon
`
`information and belief as to the other matters:
`
`
`
`
`
`EVERGREEN and Its Artwork
`
`1.
`
`Evergreen started as a home—based flag business. In its 2‘! years of
`
`existence, it has grown into a national wholesale distributorship of home and garden
`
`decor in the gift industry. Evergreen’s home décor product lines include, among other
`
`things, wine accessories, glassware, serving ware, and napkins.
`
`2.
`
`Evergreen has a iong and established relationship with licensed artists
`
`and licensing agencies. It has buiit its enterprise in partnership with independent
`
`licensed artists and through sports licensing. in addition to licensed artwork, Evergreen
`
`also uses original artwork created by commissioned artists and its in~house graphics
`
`design team.
`
`3.
`
`In 2009, Evergreen’s commissioned artist and in-house graphic art team
`
`created a line of whimsical female caricature art with long accented eyelashes and
`
`painted puckenshaped lips branded as “Let’s Talk About Me” and “Under the Mistletoe”
`
`(“Evergreen Art”). This Evergreen Art was created in February 2009 and first appear on
`
`home decor products in Evergreen’s Cypress Home Spring Summer 2010 catalog
`
`published on or about August 2009, and Cypress Home Fall Holiday 2010 catalog
`
`published on or about December 2009, Pages of the catalogs depicting the artwork are
`
`attached as Exhibit A.
`
`4.
`
`Evergreen created a subsequent line of whimsical female caricatures that
`
`are the subject of Civil Action No. 3:14-cv-159 styled Working Girls Design, Inc. v.
`
`Evergreen Enterprises, Inc, filed on March 11, 2014 in the United States District Court
`
`for the Eastern District of Virginia (“Appiicant’s Lawsuit”).
`
`
`
`
`
`5.
`
`In the originai complaint of AppEicant’s Lawsuit, Applicant alleged, among
`
`other things, trademark infringement by Opposer of Applicants WGD Design Mark
`
`identified in Application Serial No. 86177716. A copy of the complaint is attached as
`
`Exhibit B. See Ex. B, 1111 97—102.
`
`6.
`
`In its answer to the complaint in Applicant's Lawsuit filed on May 21, 2014,
`
`Evergreen alleged that Applicant did not have enforceable common law rights to the
`
`WGD Design Mark, that Applicant's use was ornamental and did not constitute
`
`trademark use, and that Applicant had unclean hands in asserting dates of use in the
`
`WGD Design Application that pre—dated the creation of the WGD Design Mark. A copy
`
`of the answer is attached as Exhibit C. See Ex. C, 1111 124-126.
`
`7.
`
`Applicant subsequentiy filed an amended complaint in Applicant's Lawsuit
`
`on August 21, 2014 and omitted the trademark infringement claims. A copy of the
`
`amended complaint is attached as Exhibit D.
`
`Applicant and its WGD Design Mark
`
`8.
`
`According to WGD’s complaint flied with the District Court, WGD is a
`
`Nevada corporation with its principal business located at 3814 Broadmead Street, Las
`
`Vegas, Nevada 89147. WGD claims to be the owner of the trademark rights asserted in
`
`this opposition. Ex. B, 11 3.
`
`9.
`
`According to WGD’s complaint, WGD was established in Las Vegas,
`
`Nevada in 2009 by Jodi Pedri and Tonia Pfannenstiel to create, license and sell artwork
`
`and literary works in the gift and art design industry. Ex. B, 11 5.
`
`10.
`
`According to WGD’s complaint, among the artwork claimed by WGD are
`
`the design elements of the WGD Design Mark. See Ex. B, 1111 97-102. The design
`
`
`
`
`
`elements are also alleged to be part of the 2-D artwork in Copyright Registration No.
`
`VAu 1-086-808 issued to Jodi Pedri by the United States Copyright Office on December
`
`27, 2011 (“WGD Copyrighted Design Art”). WGD claims in its complaint that the WGD
`
`Copyrighted Design Art was completed in 2011 but unpublished when the copyright
`
`application was filed on December 27, 2011. See Ex. B, ‘ll 17. A copy of the copyright
`
`registration and deposited artwork are attached as Exhibit E."
`
`11.
`
`The WGD Design Application was filed on January 28, 2014 and
`
`published for opposition in the Trademark Official Gazette on July 8, 2014.
`
`12.
`
`According to its pending trademark application, Applicant, by its counsel,
`
`declared under penalty of perjury that the WGD Design Mark was used in commerce on
`
`all the goods identified in the WGD Design Application at least as early as June 10,
`
`2008.
`
`FRAUD
`
`13.
`
`Evergreen repeats and alleges each and every allegation set forth in
`
`Paragraphs 1~12.
`
`14.
`
`According to WGD’s trademark application, Applicant used WGD
`
`Copyrighted Design Art as the WGD Design Mark in the WGD Design Application.
`
`Applicant knowingly claimed first use dates in 2008 that pre—dated the creation and
`
`publication of the WGD Copyrighted Design Art, and hence, the WGD Design Mark, in
`
`A 2009 and 2010, respectively. In claiming so, Applicant made a false representation to
`
`the United States Patent and Trademark Office (“USPTO” or “PTO”).
`
`
`
`
`
`15.
`
`Falsely representing a date of first use in commerce is material to the
`
`A
`
`registrability of the mark, because the incorrect date of first use will prevent rightful
`
`; senior users from asserting rights through prior use.
`
`16.
`
`Applicant intends to deceive the USPTO and obtain a federal trademark
`
`registration for the WGD Design Mark to establish a presumption of validity of federal
`
`trademark rights that pre-date Evergreen Art.
`
`17.
`
`According to Applicant’s amended complaint filed with the District Court,
`
`Applicant withdrew its trademark infringement claims in Applicant’s Lawsuit after
`
`Opposer flied its answer alleging that Appiicant falsified the dates of use in the WGD
`
`Design Application to obtain federal trademark rights in the WGD Design Mark that it did
`
`not have. Compare Ex. B, with Ex. D. Applicant did not withdraw or abandon the WGD
`
`Design Application, nor did it file an amendment to change the dates of use to Eater
`
`dates. Because Evergreen has already challenged the discrepancies in alleged use in
`
`commerce, Applicant has knowledge of the falsity of the misrepresentation.
`
`18,
`
`Accordingly, Applicant seeks to obtain a trademark registration
`
`fraudulently with an intent to deceive the USPTO, having knowingly made a false,
`
`materia! representation of fact regarding the dates of use and not correcting the
`
`misrepresentation before the WGD Design Mark was approved for publication.
`
`_ Applicant intends to induce the PTO to issue it a registration, and in doing so has
`
`committed fraud upon the USPTO. See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`
`1938 (Fed. Cir. 2009); Melodrama Publishing LLC V. Santiago, Civil Action No. 12—Civ.
`
`7830, 2013 WL 1700929,i*5—*6 (S.D.N.Y. April 11, 2013); Mecka1‘zerL6Wenbréiu
`
`Benedikt Weft? KG V. White Gold, LLC, 95 USPQ2d 1185 (TTAB 2010). Opposer
`
`
`
`
`
`
`
`beiieves further evidence is likely to be revealed during discovery that would further
`
`support the claim of fraud.
`
`19.
`
`For the foregoing reasons, Opposer is and will be damaged by the
`
`registration for the WGD Design Mark based on the dates of use contained in the
`
`record.
`
`WHEREFORE, Evergreen respectfully requests that the opposition be sustained,
`
`and that the registration of the WGD Design Mark in U.S. Trademark Application Serial
`
`No. 86177716 be refused.
`
`The filing fee has been submitted electronically.
`
`Date:
`
`Respectfully submitted,
`
`EVERGREEN ENTERPRlSES, INC.
`By:
`5
`I {Z
`
`lack, Esq.
`Cheryl
`Legal Dept
`5915 Midtothian Tpke
`Richmond, VA 23225
`800-774-3837
`
`Opposer
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a true and accurate copy of the foregoing NOTICE OF OPPOSITION was
`served by transmission by overnight courier, postage paid on this lgikaay of
`
`September, 2014, upon Attorney of Record at the following address:
`
`
`
`
`
`Emily A. Danchuk, Esq.
`963 Washington Ave #4
`Portland, Maine 04103-2850
`
`Cheryl L Black
`Counsel
`
`
`
`
`
`
`
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`Case 3:14-cv-00159-JRS Document 1 Filed 03/11/14 Page 1 of 26 PageID# 1
`Case 3:14—Cv—OO159—JRS Document 1 Filed 03/11/14 Page 1 Qf 26 Page|D# 1
`
`ll|L.E
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`
`Richmond Division
`
`RICHMOND, VA
`
`WAR l
`
`l 20M
`
`CLERK, u.s. DISTRICT COURT
`
`.
`No. 5 - I
`
`(LV l 5
`
`JURY TRIAL DEMANDED
`
`§ §
`
`§
`§
`
`§ §
`
`§
`§
`
`§ §
`
`WORKING GIRLS DESIGN, INC.
`
`Plaintiff,
`
`V.
`
`EVERGREEN ENTERPRISES, INC.
`
`Defendant.
`
`ORIGINAL COMPLAINT
`
`Plaintiff Working Girls Design, Inc. (hereinafter “Working Girls Design,” “WGD,” or
`
`“Plaintiff"), by and through its undersigned counsel, hereby files this Original Complaint
`requesting injunctive relief and damages, and upon personal knowledge as to its own acts and
`
`circumstances, and upon information and belief as to the acts and circumstances of others,
`
`alleges as follows:
`
`NATURE OF ACTION AND CLAIMS
`
`This is an action for copyright infringement under 17 U.S.C. § 101 et seq., for trademark
`
`infringement under 15 U.S.C. § 1125, for common law trademark infringement, and for federal
`
`unfair competition under 15 U.S.C. § ll25(a).
`
`JURSIDICTION AND VENUE
`
`1.
`
`This is, in part, an action for copyright infiingement arising out of the U.S.
`
`Copyright Laws, and for unfair competition and trademark infringement arising out of both the
`
`Lanham Act and the Virginia Trademark and Service Mark Act. This Court has jurisdiction
`
`under 15 U.S.C. § 1121, 28 U.S.C. §§ 1331 and l338(a), and under its supplementaljurisdiction.
`EXHIBIT B
`EXHIBIT B
`
`1
`
`
`
`Case 3:14-cv-00159-JRS Document 1 Filed 03/11/14 Page 2 of 26 PageID# 2
`Case 3:14—cv—OO159—JRS Document 1 Filed 03/11/14 Page 2 of 26 Page|D# 2
`
`2.
`
`Venue is proper in this district under 28 U.S.C. § § 1391 and 1400(a) because
`
`Defendant may be found in this Judicial District Judicial District namely its principal office
`
`address as reported by the Virginia State Corporation Commission is 5915 Midlothian Turnpike,
`
`Richmond, VA 23225, and has committed acts of infringement in this Judicial District, and
`
`because a substantial part of the acts or omissions giving rise to Plaintiffs claims occurred in this
`
`District.
`
`PARTIES
`
`3.
`
`Working Girls Design, Inc. is a corporation organized under the laws of the State
`
`of Nevada with its principal place of business located at 3814 Broadmead Street, Las Vegas, NV
`
`89147. Plaintiff is a well-known design and art licensing company that licenses its artwork to
`
`industry leading companies, and creates unique artwork lines incorporated onto products that are
`
`carried nationally and internationally, in retail stores and via the internet.
`
`4.
`
`On information and belief, Defendant Evergreen Enterprises, Inc. (“Evergreen
`
`Enterprises”) is a corporation with a principal place of business located at 5915 Midlothian
`
`Turnpike, Richmond, VA 23225, and is doing business in this jurisdiction. Defendant is a large
`
`distributor of home decor and horneware products throughout the United States.
`
`FACTUAL BACKGROUND
`
`5.
`
`Jodi Pedri and Tonja Pfarmenstiel began creating designs together in 2008, and
`
`Working Girls Design, Inc. was established in Las Vegas, Nevada in 2009. Working Girls
`
`Design is a creative company that creates unique artwork and literary works.
`
`6.
`
`Working Girls Design is the creator and owner of several lines of artwork that
`
`humorousl
`
`Y
`
`address women’s issues such as meno ause, marria e,
`
`re nanc , motherhood and
`
`widowhood.
`
`
`
`Case 3:14-cv-00159-JRS Document 1 Filed 03/11/14 Page 3 of 26 PageID# 3
`Case 3:14—cv—OO159—JRS Document 1 Filed 03/11/14 Page 3 of 26 Page|D# 3
`
`7.
`
`Working Girls Design has been designing, creating,
`
`licensing and selling its
`
`artwork and literary works for approximately six years, and has developed a number of well-
`
`known product lines.
`
`8.
`
`Working Girls Design has established itself in the gift and art design industry, and
`
`its artwork is presently featured on over 1,000 gift products worldwide.
`
`9.
`
`Working Girls Design has spent an enormous amount of time, effort and
`
`resources in establishing goodwill in the gift, design and art industries.
`
`10. Working Girls Design has carefully developed its branding strategy to ensure that
`
`its artwork lines are licensed only to respectable companies in the homeware industry that create
`
`and manufacture quality products.
`
`11.
`
`As a result of its branding strategies, Working Girls Design’s artwork has been
`
`licensed by industry leaders such as PJ Salvage, Avalanche Publishing, Leanin’ Tree, and C.R.
`
`Gibson.
`
`12.
`
`All products that contain the Working Girls Design licensed works also contain
`
`the Working Girls Design trademarks.
`
`13.
`
`The Working Girls Design trademarks act as a source indicator of the licensed
`
`product lines and informs consumers that the artwork is genuine Working Girls Design product.
`
`14. Working Girls Design has built up considerable goodwill
`
`in carefully and
`
`deliberately creating unique designs and in licensing its artwork and trademarks to reputable
`
`companies.
`
`THE WORKING GIRLS DESIGN COPYRIGHTS
`
`15.
`
`In 2009, WGD created a line of literary works and artwork designs called the
`
`“Hair Today Cure Tomorrow Line” (“Hair Today Cure Tomorrow Text and Artwork Line”),
`
`which includes the publishing trademark design (“Publishing Trademark”), as shown below.
`
`3
`
`
`
`Case 3:14-cv-00159-JRS Document 1 Filed 03/11/14 Page 4 of 26 PageID# 4
`Case 3:14—cv—0O159—JRS Document 1 Filed 03/11/14 Page 4 of 26 Page|D# 4
`
`
`
`WGD has offered the Hair Today Cure Tomorrow Text and Artwork Line for license at various
`
`tradeshows throughout the country.
`
`Images of WGD’s Hair Today Cure Tomorrow Text and
`
`Artwork Line are attached as Exhibit A.
`
`16.
`
`In 2010, WGD created a line of artwork designs (“Working Girls Design
`
`Collection 1 2010 Artwork Line”), which includes the artwork designs as shown below.
`
`
`
`WGD has offered the Working Girls Design Collection 1 2010 Artwork Line for license at
`
`various tradeshows throughout the country. Images of WGD’s Working Girls Design Collection
`
`1 2010 Artwork Line are attached as Exhibit B.
`
`17.
`
`In 2011, WGD created a line of artwork designs (“Fetch This Artwork Line”),
`
`which includes this artwork design:
`
`
`
`Case 3:14-cv-00159-JRS Document 1 Filed 03/11/14 Page 5 of 26 PageID# 5
`Case 3:14—cv—OO159—JRS Document 1 Filed 03/11/14 Page 5 of 26 Page|D# 5
`
`
`
`WGD has offered the Fetch This Artwork Line for
`
`license at various tradeshows throughout the country. Images of WGD’s Fetch This
`
`Artwork Line are attached as Exhibit C.
`
`18.
`
`A number of WGD’s artwork designs and images have been available and
`
`accessible
`
`online
`
`on
`
`the Working Girls Design’s YouTube
`
`channel,
`
`located
`
`at
`
`www.youtubecom/watch?v=39dQF Ugbg4 since May 17, 2009.
`
`Images of the artwork
`
`accessible on the Working Girls Design’s YouTube channel are attached as Exhibit D.
`
`19.
`
`Jodi Pedri and Tonja Pfarmenstiel (a.k.a. Tonja Steel), the principals and owners
`
`of WGD obtained three United States copyright registrations for the Hair Today Cure Tomorrow
`
`Text and Artwork Line, Working Girls Design Collection I 2010 Artwork Line and Fetch This
`
`Artwork Line (“Artwork Lines”). The registrations have been assigned to Plaintiff. Copies of
`
`the copyright registrations for the Artwork Lines, specifically, Copyright Registration Nos. TXu
`1-607-5-62, VAu 1-019-571 and VAu 1-086-808, respectively, are attached as Exhibit E.
`
`EVERGREEN’S COPYRIGHT INFRINGEMENT
`
`20.
`
`On or about July 16, 2010, Jodi Pedri and Tonja Pfannenstiel (a.k.a. Tonja Steel),
`
`the principals and owners of WGD were approached by Evergreen Enterprises, Inc.’s employee,
`
`Audrey Lockett, who seemed to be interested in licensing WGD’s Artwork Lines.
`
`21.
`
`Upon information and belief, Audrey Lockett
`
`is the Creative Director of
`
`Evergreen Enterprises.
`
`
`
`Case 3:14-cv-00159-JRS Document 1 Filed 03/11/14 Page 6 of 26 PageID# 6
`Case 3:14—cv—OO159—JRS Document 1 Filed 03/11/14 Page 6 of 26 Page|D# 6
`
`22.
`
`On or about July 18, 2010, Jodi Pedri sent an email message to Audrey Lockett
`
`containing images of WGD’s Artwork Lines. Jodi Pedri also included a website link to images
`
`of many of WGD’s artwork and designs in order to provide Audrey Lockett with access to many
`
`of WGD’s artwork and designs.
`
`23.
`
`On or about August 21, 2010, Tonja Steel sent an email message to Audrey
`
`Lockett to follow up to see if Evergreen Enterprises had made any decisions regarding a
`
`licensing arrangement with WGD. Tonja Steel also stated, in her email, that, “We have some
`
`meetings [coming] up in September with some manufacturers and we just want to make sure that
`
`you are given first shot at [the artwork that] you want.” Additionally, Tonja Steel re-sent the
`
`website link to the WGD artwork and designs. A copy of the complete email correspondence
`
`thread beginning on August 21, 2010 and ending on or about October 8, 2010 is attached as
`
`Exhibit F.
`
`24.
`
`On or about August 22, 2010, Audrey Lockett sent an email message to Tonja
`
`Steel confirming receipt of Tonja Steel’s email and stating that Evergreen would be reviewing
`
`the WGD artwork and designs shortly and would be providing feedback.
`
`25.
`
`On August 25, 2010, Audrey Lockett sent an email message to Tonja Steel stating
`
`that “[Evergreen Enterprises] is very interested in pursuing a working partnership with [Working
`
`Girls Design].”
`
`26.
`
`On October 5, 2010, Audrey Lockett sent an email response to Ms. Steel’s email
`
`correspondence of September 18, 2010, stating that Evergreen Enterprises had “not found the
`
`right spot for Working Girls Art yet,” and that Audrey would keep Ms. Steel posted “if any Key
`
`Accounts nibble.”
`
`
`
`Case 3:14-cv-00159-JRS Document 1 Filed 03/11/14 Page 7 of 26 PageID# 7
`Case 3:14—cv—OO159—JRS Document 1 Filed 03/11/14 Page 7 of 26 Page|D# 7
`
`27.
`
`After a few more email messages between Tonja Steel and Audrey Lockett in late
`
`2010, communication between the parties ceased without the development of any licensing
`
`arrangement of WGD’s Artwork Lines.
`
`28.
`
`On or about November 24, 2013, Working Girls Design discovered that Party
`
`USA retail stores were selling wine glasses and wine bottle stoppers containing images that are
`
`virtually identical to WGD’s artwork contained in its Artwork Lines (“Infiinging Products”).
`
`Images of the Infringing Products are attached as Exhibit G.
`
`29.
`
`Upon inspecting the tags on the Infringing Products, Working Girls Design
`
`discovered that the Infringing Products had been manufactured, sourced and distributed by
`
`Evergreen Enterprises.
`
`30.
`
`On December 5, 2013, Working Girls Design, through its counsel, sent a letter to
`
`Evergreen Enterprises notifying Evergreen Enterprises of Working Girls Design’s intellectual
`
`property rights in and to the Artwork Lines, demanding that Evergreen Enterprises cease all
`
`manufacture, sales and distribution of the Infringing Product, account for all sales of the
`
`Infringing Products, recall all Infiinging Products, and provide WGD with a full list of retailers
`
`to whom the Infringing Products had been distributed.
`
`31.
`
`To date, Evergreen Enterprises has failed to cease the sale of the Infringing
`
`Products, to recall the Infringing Products, and to provide Working Girls Designs with any
`
`information regarding the retailers to whom the Infringing Products have been distributed.
`
`32.
`
`On or about January 16, 2014, WGD discovered that the Infringing Products were
`
`being sold in Michaels retail stores, a mass retailer of arts and crafts products.
`
`
`
`Case 3:14-cv-00159-JRS Document 1 Filed 03/11/14 Page 8 of 26 PageID# 8
`Case 3:14—cv—OO159—JRS Document 1 Filed 03/11/14 Page 8 of 26 Page|D# 8
`
`33.
`
`On or about January 26, 2014, WGD discovered that the Inffinging Products were
`
`being sold on a discount retail website, www.belk.com.
`
`34.
`
`The Infiinging Products are strikingly similar
`
`to WGD’s Artwork Lines.
`
`Comparison images of the Infringing Products and the original WGD artwork are attached as
`
`Exhibit H.
`
`35.
`
`On information and belief, Defendant made a business decision to copy a number
`
`of artwork designs from WGD’s Artwork Lines in violation of Working Girls Design’s
`
`copyrights and without Working Girls Design’s authorization.
`
`36.
`
`Defendant sold the low quality Infringing Items at mass discount stores, damaging
`
`Working Girls Design’s reputation and hindering Plaintiffs ability to license the designs to
`
`homeware and decor companies.
`
`37.
`
`Defendant’s infringing actions have resulted in significant degradation of WGD’s
`
`Artwork Lines.
`
`38.
`
`WGD’s customers and licensees have been and will continue to believe that
`
`Working Girls Design has licensed its Artwork Lines to Evergreen Enterprises to sell in mass
`
`discount retail stores, and that Working Girls Designs has authorized Evergreen Enterprises to
`
`make a cheaper, inferior product using artwork from WGD’s Artwork Lines.
`
`39.
`
`The willful actions undertaken by Evergreen Enterprises undermine Working
`
`Girls Design’s ability to sell product incorporating the original WGD Artwork Lines, and to
`
`license WGD’s Artwork Lines.
`
`WORKING GIRLS DESIGN TRADEMARKS
`
`Working Girls Design’s Publishing Trademark
`
`40. WGD designed its Publishing Trademark to be used in connection with its
`
`products and gift book series. WGD began using its Publishing Trademark at least as early as
`
`8
`
`
`
`Case 3:14-cv-00159-JRS Document 1 Filed 03/11/14 Page 9 of 26 PageID# 9
`Case 3:14—cv—OO159—JRS Document 1 Filed 03/11/14 Page 9 of 26 Page|D# 9
`
`April 20, 2008 in connection with its gift books. Working Girls Design’s gift books contain
`
`WGD’s Artwork Line and literary works, and its Publishing Trademark acts as the source of
`
`Work
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