Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA649620
`ESTTA Tracking number:
`01/13/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91220073
`Plaintiff
`Milk Studios, LLC
`Defendant
`Samsung Electronics Co., Ltd.,
`No
`
`Proceeding.
`Applicant
`
`Other Party
`
`Have the parties
`held their discov-
`ery conference
`as required under
`Trademark Rules
`2.120(a)(1) and
`(a)(2)?
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Milk Stu-
`dios, LLC hereby requests suspension of this proceeding pending a final determination of the civil action.
`Trademark Rule 2.117.
`Milk Studios, LLC has secured the express consent of all other parties to this proceeding for the suspension
`and resetting of dates requested herein.
`Milk Studios, LLC has provided an e-mail address herewith for itself and for the opposing party so that any or-
`der on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`Respectfully submitted,
`/JHD/
`James H. Donoian
`jdonoian@mccarter.com, hlewin@mccarter.com, lsawaya@mccarter.com, dlynch@mccarter.com
`trademarksf@leclairryan.com
`01/13/2015
`
`

`
`14
`CV
`UNITED STATES DISTRICT COURT,
`SOUTHERN DISTRICT OF NEW YORK
`
`5%
`
`MILK STUDIOS, LLC,
`
`X CIVIL ACTION NO.:
`
`Plaintiff,
`
`V.
`
`SAMSUNG ELECTRONICS CO., LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.,
`and SAMSUNG TELECOMMUNICATIONS
`
`AMERICA, LLC,
`
`Defendants.
`
`
`
`Pursuant to Federal Rule of Civil Procedure 7.1,
`
`Plaintiff Milk Studios, LLC states that it
`
`does not have a parent corporation, and that no publicly
`
`held corporation owns 10% or more of
`
`its stock.
`
`Dated: New York, NY
`
`November 24, 2014
`
`MEI 193I434lv.l
`
`
`
`McCarter-& English
`245 Park Avenue
`New York, New York 10167
`Tel.: (212) 609-6800
`Fax: (212) 609-6921
`h1ewin@mccarter.c0m
`jdonoian@mccarter.com
`
`Lee Carl Bromberg
`Lori J. Shyavitz
`McCarter & English, LLP
`265 Franklin Street
`Boston, Massachusetts 02110
`Tel.: (617)449-6500
`Fax: (617) 607-9200
`1bromberg@mccarter.com
`1shyavitz@mccarter.com
`
`

`
`
`
`UNITED STATES DISTRICT COURT,
`SOUTHERN DISTRICT OF NEW YORK
`
`MILK STUDIOS, LLC,
`
`CIVIL ACTION NO.:
`
`Plaintiff,
`
`I
`
`AMERICA, LLC,
`
`V.
`
`SAMSUNG ELECTRONICS CO., LTD;
`SAMSUNG ELECTRONICS AMERICA, INC.,
`and SAMSUNG TELECOMMUNICATIONS
`
`Defendants.
`
`does not have a parent corporation, and that no publicly held corporation owns 10% or more of
`
`its stock.
`
`Dated: New York, NY
`
`November 24, 2014
`
`McCarter»& English
`245 Park Avenue
`New York, New York 10167
`Tel; (212) 609-6800
`Fax: (212) 609-6921
`hlewin@mccarter.com
`jdonoian@mccarter.com
`
`Lee Carl Bromberg
`Lori J. Shyavitz
`McCarter & English, LLP
`265 Franklin Street
`Boston, Massachusetts 02110
`Tel: (617) 449-6500
`Fax: (617) 607-9200
`lbromberg@mccarter.corn
`1shyavitz@rnccarter.com
`
`MEI l931434lv.l
`
`

`
`JS 44C/SDNY
`REV. 4/2014
`
`PLAINTIFFS
`Milk Studios, LLC
`
`P!
`
`(S.
`
`The JS-4 e§IIfi;I’
`.
`.
`I
`
`CIVIL COVER SHEET
`
`
`i
`f matron contained herein neither replace nor supplement the
`‘g'I'
`.
`.
`.
`.
`
`pleadings or other papers as r
`law, except as provided by local rules of Court. This form, approved by the
`e
`e
`Judicial Conference of the United States in September 1974, is required for use of the Clerk of Court for the purpose of
`initiating the civil docket sheet.
`
`DEFENDANTS
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung
`Telecommunications America, LLC.
`
`ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER
`Mccarter & English, LLP, 245 Park Avenue, 27th Fl.
`New York, NY 10167; (212)609-6800
`
`ATTORNEYS (IF KNOWN)
`Unknown
`
`CAUSE OF ACTION(CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE A BRIEF STATEMENT OF CAUSB
`(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
`
`15 U.S.C. §§ 1114(1)(a), 1‘I25(a), 1125(0) trademark infringement, dilution, false designation of origin and unfair Competition
`
`Has this action, case, or proceeding, or one essentially the Same been previously filed in SDNY at any time? NeSI:IJudge Previously Assigned
`
`If yes, was this Case VOLEI lnvol. [:] Dismissed. No D Yes [I Ifyes, give date
`
`& Case No.
`
`Is THIS AN INTERNATIONAL ARBITRATION cAsE7
`
`No E]
`
`Yes
`
`I:]
`
`(PLACEAN[X] IN ONEBOXONLY}
`TORTS
`
`NATURE OF SUIT
`
`ACTIONS UNDER STATUTES
`
`CONTRACT
`
`PERSONAL INJURY
`
`PERSONAL INJURY
`I I357 HEALTHCAREI
`
`FORFEITUREIPENALTY
`
`BANKRUPTCY
`
`:°NI-I/L‘«JRIxI:<;|E$JDT[IJ<3CA_L PERSONAL I 1525 DRUG RELATED
`R
`LIABILITY
`I
`I 365 PERSONAL INJURY
`SEIZUSEUEE EEIOPERTY
`PRODUCT LIABILITY
`1 690 OTHER
`I I368 ASBESTOS PERSONAL
`INJURY PRODUCT
`LIABILITY
`
`I
`
`PERSONAL PROPERTY
`
`I
`I
`
`I 370 OTHER FRAUD
`I 371 TRUTH IN LENDING
`
`[ I422 APPEAL
`28 USC 158
`[ I423 WITHDRAWAL
`28 USC 157
`
`PROPERTY RIGHTS
`
`I 820 COPYRIGHTS
`[
`] 830 PATENT
`[
`Dd 840 TRADEMARK
`
`SOCIAL SECURITY
`
`I
`I 110
`I I120
`I
`I 130
`I
`I 140
`I
`I 150
`
`INSURANCE
`MARINE
`MILLER ACT
`NEGOTIABLE
`INSTRUMENT
`RECOVERY OF
`OVERPAYMENT &
`ENFORCEMENT
`OF JUDGMENT
`MEDICARE ACT
`RECOVERY OF
`DEFAULTED
`STUDENT LOANS
`(EXCL VETERANS)
`RECOVERY OF
`OVERPAYMENT
`OF VETERAN'S
`BENEFITS
`STOCKHOLDERS
`SUITS
`OTHER
`CONTRACT
`CONTRACT
`PRODUCT
`LIABILITY
`I I196 FRANCHISE
`
`I I151
`I
`I 152
`
`I I153
`
`I 160
`I
`I 190
`I
`I 1195
`
`I
`I
`
`[.1310 AIRPLANE
`I I315 AIRPLANE PRODUCT
`LIABILITY
`I 320 ASSAULT, LIBEL &
`SLANDER
`I 330 FEDERAL
`EMPLOYERS‘
`LIABILITY
`I I340 MARINE
`I
`I 345 MARINE PRODUCT
`LIABILITY
`I I350 MOTOR VEHICLE
`I I355 MOTOR VEHICLE
`PRODUCT LIABILITY
`I
`I 360 OTHER PERSONAL
`INJURY
`I
`I 362 PERSONAL INJURY -
`MED MALPRACTICE
`
`AcTIoNs UNDER STATUTES
`CIVIL RIGHTS
`
`I
`
`I I360 OTHER PERSONAL
`PROPERTY DAMAGE
`I 385 PROPERTY DAMAGE
`PRODUCT LIABILITY
`PRISONER PETITIONS
`I
`I 463 ALIEN DETAINEE
`I I510 MOTIONS TO
`VACATE SENTENCE
`23 USC 2255
`I I530 HABEAS CORPUS
`I I535 DEATH PENALTY
`
`LABOR
`
`I I710 FAIR LABOR
`STANDARDS ACT
`I I720 LABOR/MGMT
`RELATIONS
`I I740 RAILWAY LABOR ACT
`
`A\7,?AFC/I‘TI"(',:L,j,LNA'§D'CAL
`I I790 OTHER LABOR
`LITIGATION
`
`I ]861 HIA(1395ff)
`I
`I 862 BLACK LUNG (923)
`I I663 DIWC/DlWW(405(g))
`I
`I 864 SSID TITLE XVI
`I 1865 RSI (405(g))
`
`FEDERAL TAX SUITS
`
`I ]870 TAXES (U.S. Plaintiff or
`Defendant)
`[ I871 lRS—THIRD PARTY
`26 USC 7609
`
`REAL PROPERTY
`I
`I 210
`LAND
`CONDEMNATION
`I I220
`FORECLOSURE
`I I230
`RENT LEASE 8.
`EJECTMENT
`TORTS TO LAND
`I I240
`TORT PRODUCT
`I I245
`LIABILITY
`ALL OTHER
`REAL PROPERTY
`
`I I290
`
`I H40 OTHERICML RIGHTS I
`IN°”‘P”‘°"e'I
`I I441 VOTING
`I 442 EMPLOYMENT
`I
`I 1443 HOUSING!
`ACCOMMODATIONS
`I I445 AMERICANS WITH
`DISABILITIES -
`EMPLOYMENT
`[ I446 AMERICANS WITH
`DISABILITIES -OTHER
`[ ]448 EDUCATION
`
`I 540 MANDAMUS 3. OTHER
`
`I I791 EIQEESEEINECT
`IMMIGRATION
`
`PRISONER CIVIL RIGHTS
`I I462 NATURALIZATION
`APPLICATION
`I I550 CIVIL RIGHTS
`I 465 OTHER IMMIGRATION
`I
`I I555 PRISON CONDITION
`ACTIONS
`I 560 CIVIL DETAINEE
`CONDITIONS OF CONFINEMENT
`
`OTHER sTATuTEs
`400 STATE
`I I 375 FALSE CLAIMS
`REAPPORTIONMENT
`I I410 ANTITRUST
`I I430 BANKS & BANKING
`I I450 COMMERCE
`I 1460 DEPORTATION
`I I470 RACKETEER INFLU-
`ENCED & CORRUPT
`ORGANIZATION ACT
`(RICO)
`I I450 CONSUMER CREDIT
`I I490 CABLE/SATELLITE TV
`[
`] B50 SECURITIESI
`COMMODITIES}
`EXCHANGE
`
`I
`
`] 890 OTHER STATUTORY
`ACTIONS
`[ I891 AGRICULTURAL ACTS
`
`[
`
`] 893 ENVIRONMENTAL
`MATTERS
`[ ]895 FREEDOM OF
`INFORMATION ACT
`I
`I 896 ARBITRATION
`I
`I 699 ADMINISTRATIVE
`PROCEDURE ACT/REVIEW OR
`APPEAL OF AGENCY DECISION
`
`[ ]95O CONSTITUTIONALITY OF
`STATE STATUTES
`
`THIS CASE IS RELATED TO A CIVIL CASE NOW PENDING IN S.D.N.Y.?
`DOCKET NUMBER
`
`Check ifdemanded in complaint:
`
`CHECK IF THIS IS ACLASS ACTION
`UNDER F.R.C.P. 23
`
`D D
`
`EMAND $
`
`OTHER
`
`JUDGE
`
`Check YES only ifdemanded in com Iaint
`JURY DEMAND: YES
`0
`
`NOTE: You must also Submit at the time of filing the Statement of Relatedness form (Form IH-32).
`
`

`
`(PLACEAN x IN ONE BOX ONLY)
`
`OR|G|N
`
`1 Original
`Proceeding
`
`ET 2 Removed from
`State Com
`_
`. all partnes represented
`
`D a
`
`E] 3 Remanded D 4 Reinstated or D 5 Transferred from D 6 Multidistrict
`from
`Reopened
`(Specify District)
`Litigation
`Appellate
`Coufi
`
`E] 7 Appeal to District
`Judge from
`Magistrate Judge
`Judgment
`
`At least one
`party is pro se.
`(PLACE/‘IN X W ONE BOX ONLY)
`
`E]
`
`E] 1 u.s. PLAINTIFF
`
`[I2 u.s. DEFENDANT
`
`BASIS OF JURISDICTION
`
`3 FEDERAL QUESTION
`(us. NOT A PARTY)
`
`|'_‘I4 DIVERSITY
`
`IF DIVERSITY, INDICATE
`
`ClTIZEN$HIPBELOW-
`
`CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)
`
`(Place an [X] in one box for Plaintiff and one box for Defendant)
`PTF
`DEF
`I
`I 1
`I
`I 1
`
`CITIZEN OR SUBJECT OF A
`FOREIGN COUNTRY
`
`CITIZEN OF THIS STATE
`
`PTF DEF
`I
`I 3 I 33
`
`INCORPORATED and PRINCIPAL PLACE
`OF BUSINESS IN ANOTHER STATE
`
`CITIZEN OF ANOTHER STATE
`
`I I2
`
`I I2
`
`INCORPORATED or PRINCIPAL PLACE
`OF BUSINESS IN THIS STATE
`
`I I4I I4
`
`FOREIGN NATION
`
`PLA|NT|FF(S) ADDRESS(ES) AND COUNTY(|ES)
`Milk Studios, LLC
`450 West 15th Street
`
`New York, NY10011
`
`PTF DEF
`I
`I 5
`I I5
`
`I ]6
`
`I 16
`
`DEFENDANT(S) ADDRESS(ES) AND COUNTY(|ES)
`Samsung Electronics Co., Ltd., 416 Maetan-3dong, Yeongtong-gu, Suwon city, GyeOnggi—do, Korea
`443-742
`
`Samsung Electronics America, Inc, 85 Challenger Road, Ridgefield Park, New Jersey 07660
`Samsung Telecommunications America, LLC, 1301 East Lockout Drive, Richardson, Texas 75082
`
`DEFENDANT(S) ADDRESS UNKNOWN
`REPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN
`RESIBENOE ADDRESSES OF THE FOLLOWING DEFENDANTS:
`
`N/A
`
`Check one:
`
`E] WHITE PLAINS
`THIS ACTION SHOULD BE ASSIGNED TO:
`(DO NOT check either box if this a PRISONER PETITION/PRISONER CIVIL RIGHTS
`COMPLAINT.)
`
`MANHATTAN
`
`DATE 11/24/2014 SIGNATU OF ATTO
`
`RECEIPT #
`
`OF RECORD
`
`ADMITTED TO PRACTICE IN THIS DISTRICT
`[
`] NO
`A/‘)e:_
`Ix] YES (DATE ADMITTED Mo. Pfit
`Attorney Bar Code # 1«3vr9;J—o 1.3»;
`
`war
`Yr. 1970
`
`)
`
`Magistrate Judge is to be designated by the Clerk of the Court.
`MAG. JUDGE COW
`
`Magistrate Judge
`
`is so Designated.
`
`Ruby J. Krajick, Clerk of Court by
`
`Deputy Clerk, DATED
`
`UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)
`
`

`
`_
`
`_
`
`. 7
`
`I
`MILK STUDIOS, LLC,
`
`_
`
`V.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YO
`
`1 4
`Q CIVIL ACTION NO.:
`
`P1a‘““ff=
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.;
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`and SAMSUNG TELECOMMUNICATIONS
`
`AMERICA, LLC,
`
`Defendants.
`
`Plaintiff Milk Studios, LLC (“Plaintiff" or “Milk”), as and for its Complaint against
`
`Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung
`
`Telecommunications America, LLC (collectively “Samsung” or the “Defendants”) states as
`
`follows:
`
`THE NATURE OF THE ACTION
`
`1.
`
`For more than 15' years, Plaintiff Milk built and continues today to build a
`
`multimedia and creative content business under the MILK trademark and tradename that serves as
`
`a contemporary culture think tank for innovation, promotion and collaboration with some of
`
`today’s most talented artists, celebrities, designers, fashion icons, and producers. Milk stands at
`
`the crossroads of the fashion, music, photography and film worlds. Through its leadership and
`
`melding of today’s culture and creativity, Milk has become the epicenter of expression for
`
`emerging artists and designers, world famous entertainers and musicians.
`
`2.
`
`With full knowledge of Milk’s well—known MILK brand and trademark rights,
`
`Samsung, a sometimes client of and collaborator with Milk, has recently rebranded its music
`
`streaming service and related mobile application under the name MILK,
`
`instituted a major
`
`MEI l9289060v.l
`
`

`
`marketing campaign to promote the service, and has now expanded its MILK platform to various
`
`other media, including video streaming and related mobile application,
`
`in blatant disregard of
`
`Plaintiff Milk’s rights (“collectively the “Infringing Media”)
`
`3.
`
`To protect
`
`its recognized rights in its MILK brand and trademark, after its
`
`objections to Samsung’s use of the term “milk” went nowhere with Samsung, Milk is compelled
`
`to bring this action against Defendants, seeking injunctive relief as well as damages for trademark
`
`infringement, unfair competition and false designation of origin, and trademark dilution arising
`
`under the Trademark Act of 1946, 15 U.S.C. §§ 1051, et seq.
`
`(the “Lanham Act”), and for
`
`trademark infringement, trademark dilution, unfair competition, deceptive acts and practices and
`
`unjust enrichment under the laws of the State of New York and common law.
`
`THE PARTIES
`
`4.
`
`Plaintiff Milk Studios, LLC is a limited liability company, organized and existing
`
`under the laws of the State of Delaware, having its principal place of business at 450 West 15th
`
`Street, New York, New York 10011. Under the umbrella of its house mark MILK, Plaintiff
`
`operates studios used for photography, video and music, and from the same premises engages in
`
`advertising, film equipment rental, music production, digital content production, post—production
`
`editing and similar services for all forms of digital media, and hosts events on behalf of fashion,
`corporate and individual clients, many of which feature live musical performances.
`C
`
`5.
`
`Upon information and belief, defendant Samsung Electronics Co., Ltd.
`
`is a
`
`corporation organized under the laws of Korea, with its principal place of business at 416 Maetan-
`
`3dong, Yeongtong—gu, Suwon-City, Gyeonggi-do, Korea 443-742 (“SEC”). Upon information
`
`and belief, SEC is one of the world’s largest‘ electronics companies and designs, manufactures,
`
`and provides to the U.S. and world markets a wide range of products and services, including
`
`consumer electronics, computer components, and mobile and entertaimnent products.
`
`ME] I9289060v.1
`
`2
`
`

`
`6.
`
`Upon information and belief, defendant Samsung Electronics America, Inc. is a
`
`corporation organized under the laws of New York, with its principal place of business at 85
`
`Challenger Road, Ridgefield Park, New Jersey 07660 (“SEA”). Upon information and belief,
`
`SEA is a subsidiary of SEC and manages the North American operations of Samsung
`
`Telecommunications America. Upon information, SEA markets, sells, and/or offers for sale a
`
`variety of consumer electronic devices for which Samsung also provides music and video
`
`streaming software applications and services under the name MILK.
`
`7.
`
`Upon information and belief, defendant Samsung Telecommunications America,
`
`LLC is a limited liability company organized under the laws of Delaware, with its principal place
`
`of business at 1301 East Lookout Drive, Richardson, Texas 75082 (“STA”). Upon information
`
`and belief, STA is a subsidiary of SEC and markets, sells, and/orioffers for sale a variety of
`
`personal and business communications devices in the United States, including Samsung Galaxy
`
`cell phones, for which Defendants also provide music and video streaming software applications
`
`and services under the misappropriated name MILK.
`
`JURISDICTION AND VENUE
`
`8.
`
`This Court has original jurisdiction over this action pursuant to 28 U.S.C. §§ l33l
`
`and 1338(a) and (b) and 15 U.S.C. §§ 1116 and 1 121. This Court has jurisdiction pursuant to the
`
`principles of supplemental jurisdiction and 28 U.S.C. § 1367 over Milk’s claims for trademark
`
`infringement, trademark dilution, unfair competition and deceptive acts and practices under the
`
`laws of the State of New York and common law.
`
`9.
`
`This Court has personal jurisdiction over all of the Defendants because they do
`
`continual and ongoing business in the State of New York. Samsung distributes, promotes,
`
`provides, offers for sale and sells the music streaming downloadable software applications and
`
`services that are the subject of this Complaint via websites that are accessible to consumers in this
`
`ME] l9289060v.l
`
`3
`
`

`
`District. Samsung also distributes, promotes, offers for sale and sells the devices to which the
`
`music and video streaming services that are the subject of this Complaint are downloaded to
`
`consumers in this District.
`
`10.
`
`Venue is proper in this District pursuant to 28 U.S.C. §§ 1391 and l400(a)
`
`because Samsung transacts business in this District and/or is subject to personal jurisdiction in
`
`this District. Venue is also proper in this District because Mi1k’s principal place of business is in
`
`this District, a substantial portion of the events giving rise to the claims asserted herein occurred
`
`in this District and Milk suffered harm in this District.
`
`FACTUAL BACKGROUND
`
`Plaintiff’s Development of the MILK Trademark
`
`11.
`
`Plaintiff Milk is a creative, content and multimedia company that launched in
`
`1998 in New York City. Milk’s trademark and tradename were conceived by co—founder and
`
`Creative Director, Mazdack Rassi, who was drawn both to the architectural quality of the word
`
`MILK and its uniqueness in the context of Mi1k’s business.
`
`V 12.
`
`Milk began as, and remains today, a premiere photography studio and gallery
`
`attracting preeminent photographers, fashion designers, celebrities, artists, musicians and brands
`
`for editorial and commercial photo shoots and events. Milk grew rapidly from such beginnings
`
`and in 2009, expanded across the country opening facilities in Los Angeles. Mi1k’s offices and
`
`various galleries, photography studios, video production studios, music services and video
`
`equipment rental and music performance space are housed in its facilities in Manhattan (80,000
`
`square feet), Los Angeles (45,000 square feet) and Brooklyn (6,000 square feet).
`
`13.
`
`Milk operates its various businesses together as Milk, including among others,
`
`Milk Studios, Milk Gallery, Milk Made, Milk Agency and Milk Digital.
`
`MEI l9289060v.l
`
`

`
`14.
`
`As Plaintiff Milk’s reputation grew so did the convergence of photography, art,
`
`fashion, media, music and creativity under its roof. Recent events illustrate this convergence.
`
`15.
`
`On October 30, 2014, Milk Studios in Los Angeles hosted the “amFAR
`
`Inspiration Gala,” honoring fashion designer and film director, Tom Ford. The event was attended
`
`by celebrities and musicians such as Gwyneth Paltrow, Justin Timberlake, Miley Cyrus, and
`
`Rihanna and featured musical performances by Diana Ross and Chris Martin, lead-singer of the
`
`band Coldplay. Mr. Ford, recognizing Milk’s reputation, has chosen to show his Fall 2015
`
`collection at Milk in Los Angeles.
`
`16.
`
`Milk is often retained for photo shoots by major design houses, coinciding with
`
`their marketing and advertising campaigns, and during which Milk will often create video,
`
`photographic and music content to be used in various media in connection therewith.
`
`17.
`
`The resources Milk provides to its clients and collaborators include the equipment
`
`and tools to create, edit and perform a work; a place to create, edit, perform and display such
`
`work; events to showcase the performer; and the opportunity to connect with existing and new
`
`fans in person and through,
`
`for example, various social media and online platforms. For
`
`musicians, in particular, Milk can provide a place to play music, create and fine-tune new music
`
`and music videos, launch new albums, announce tours and projects and connect with fans through
`
`both live and digital performances, as well as through social media and online platforms where
`
`their music and other videos can be and are streamed digitally.
`
`18.
`
`Milk’s extraordinary reputation has been built in part on its special relationship
`
`with industry influencers -~ those who are celebrities in their own fields and who enjoy a
`
`significant public following. Through these influencers and through contemporary channels of
`
`communication, including internet communication, social media and live events, Milk reaches the
`
`MEI l9289060v.l
`
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`
`larger community of those involved in the fashion, beauty, music, art and film industries, and
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`their fans or followers.
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`19.
`
`In furtherance of its strategic growth plans, in 2010, Milk launched its own online
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`editorial platform, MILK MADE (www.milkmade.com), through which it showcases innovative
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`talent in fashion, music, photography, art and film, by, among other things, streaming videos and
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`curated playlists of music, using applications such as SoundCloud, Grooveshark, YouTube and
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`Spotify.
`
`20.
`
`Since April 2011, Milk’s MILK MADE platform has been viewed more than 5.5
`
`million times by approximately 1.8 million visitors. As detailed below, Milk is present on a host
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`of different web-based platforms with an even greater viewership.
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`Building Goodwill and Brand Recognition in the MILK Mark
`
`21.
`
`From inception, Milk focused on building goodwill and brand recognition of the
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`MILK mark. As part of its branding strategy, Milk consistently features the MILK mark as the
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`banner under which all its businesses and services operate, including Milk’s website, marketing
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`campaigns and materials, and even on the flag outside its New York offices. Milk strategically
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`markets, advertises and promotes its creative services in the United States and throughout the
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`world using word of mouth, strong. social media presence, unsolicited press coverage and
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`advertising, experiential public relations events, gallery events, established and new media, and
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`editorial in such publications as New York Magazine, Spin, The New York Times and others.
`
`22.
`
`Seeking to capitalize on Milk’s reputation and associations with influencers,
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`corporate clients such as Ford Motor Company, Absolut Vodka, Red Bull, Smartwater, Lexus and
`
`Samsung hire Milk to produce and present promotional events in various locations around the
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`world. For example,
`
`to promote the redesign of the Ford Fusion automobile, Ford Motor
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`Company collaborated with Milk’s creative Legs division to create the “Wall to Wall: The Fusion
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`Collective,” a multimedia exhibit featuring six artists, including Been Trill, Lady Gaga’s former
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`creative director who now collaborates with Kanye West and ShowStudio, and renowned fashion
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`and conceptual art designer Cyril Duval. The contributors each created original artwork and
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`documented their creative processes through‘ editorial and video. content. The Wall to Wall project
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`opened in New York and traveled to Los Angeles.
`
`23.
`
`Milk promotes its sponsorship and cultural services, including its music and Video
`
`services, by partnering with social networking sites like Tumblr (httg//mlk.md/MilkTumblr)
`
`where Milk is ranked in the top ten fashion pages, Twitter (https://twitter.com/MilkStudios),
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`Facebook (https://www.facebook.com/MilkMadeNY), Google+
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`(https://plus.google.com/+MilkmadeNY/posts), Instagram (httg//instaggm.com/milkstudios/),
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`SoundCloud (https://soundcloud.com/milkmade), Pinterest
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`(flp://www.pinterest.com/milkstudios/), Vimeo (htt}3:_//mlk.md/MilkVimeo), and MySpace
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`(https://myspace.com/milkmade). Over 1 million people follow Milk’s social channels, and more
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`than 3 million people follow Mill<’s artists and media partners’ social channels.
`
`Milk, Music and Video
`
`24.
`
`Plaintiff repeats and realleges the allegations contained in paragraphs 1 through
`
`23 of this Complaint as if fully recited herein.
`
`25.
`
`Milk, while first launched as a premier photography studio, has in the past and
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`continues today to provide a myriad of services relating to music, including streaming curated
`
`playlists of music through its website, creating and editing music videos, hosting musical
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`performances and events, and enabling musicians to create and record music.
`
`26.
`
`Milk’s reputation and involvement in music is enhanced by its association and
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`production of various live events such as the Creators Project, a 2010 Milk—hosted, day-long event
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`sponsored by Intel Corporation and VICE that featured the work of leading international artists
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`and musical performances by critically acclaimed artists, including M.I.A., Sleigh Bells, Die
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`Antwoord and Interpol.
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`In 2014, Milk again partnered with Intel Corporation to launch MUZSE,
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`a multi—workshop initiative involving designers from different creative disciplines who aim to
`
`present ideas that connect technology to culture.
`
`27.
`
`Milk’s association with music goes further than current popular styles. In 2007,
`
`recognizing the ‘lack of classical music performances in downtown New York City, Milk
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`partnered with CAMI, a division of Columbia Artists Management, and with Align Entertainment
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`to create MILK Salon, a series of intimate gatherings held at Milk Studios at which classical
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`musicians such as Lang Lang, Yundi Li and Janine Jensen performed. MILK Salon was designed
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`to introduce classical music to trendsetters and people in the fashion industry in the hopes of
`
`spreading classical music to a new generation. Milk’s MILK Salon events found popularity in the
`
`music industry with collaborations with Universal Music Classics Group, Columbia Artists
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`Management and Align Entertainment Group and were widely covered by the press, including
`
`The New York Times.
`
`28.
`
`Milk’s on—prernises “MILK Jam Room”, which started in 2006 as an in—house
`
`rehearsal space for its employees, has now become a unique recording, performance and event
`
`space.
`
`29.
`
`The MILK Jam Room has hosted performances and/or rehearsals by Cyndi
`
`Lauper, the Kills, Mark Ronson, Patti Smith, Thoephilus London and Icona Pop, among others.
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`Audio and video content from MILK Jam Room performances as well as interviews with the
`
`performers is routinely streamed or otherwise made available on Milk’s MILKMADE.com digital
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`platform.
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`30.
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`Milk’s trademark MILK features prominently in MILK Jam Room photos as
`
`shown below:
`
`
`
`31.
`
`Since 2011, Milk’s involvement with music has largely focused on creating and
`
`streaming curated music playlists, music videos and interviews with musicians on its MILK
`
`MADE internet platform. See, e. g., mtp://www.milkmade.con1/articles/3144-CMJ-5-Bands-Who-
`
`Killed-It#.VFGyKMmCXPw. For example, Milk cultivated a playlist of songs from bands that
`
`performed at the 2013 Coachella music festival and streamed it to the public on its MILK MADE
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`platform. See http://wvvw.milkmade.com/articles/1970-Milk-Made-Mixtape—Coachella
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`#.VFGOaMmCXPw.
`
`32.
`
`Milk also hosts listening sessions under the MILK brand for both established and
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`up-and-coming artists across a variety of genres, including a listening party for the release of
`
`Kanye West’s critically acclaimed “Yeezuz” album that was attended by Jay-Z, Beyonce and
`
`Justin Timberlake, among others.
`
`33.
`
`Milk hosts art exhibits in its MILK GALLERY that often center around music. In
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`2013, MILK GALLERY, with partner Boo Hooray, displayed hundreds of examples of
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`homemade album cover—art by musicians from the 1970s’ and 19805’ North American, British
`
`and Australian punk scene, as well as from the world of Jamaican Dub, Ska and Rocksteady.
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`In
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`2009, MILK GALLERY held an exhibit of photographs detailing the history of the musical group
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`THE POLICE, which lead to an informal musical performance in Milk’s Jam Room that same
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`day. In 2007, MILK GALLERY also hosted an exhibit celebrating the release of the book “Tom
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`Petty and the Heartbreakers Runnin’ Down a Dream.”
`
`34.
`
`Milk promotes music festivals such as the 2014 Global Citizens Festival in New
`
`York City during which artists such as Jay-Z, Beyonce, Tiesto, Fun, No Doubt and The Roots
`
`performed. Milk launched the festival at an event
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`in the MILK Jam Room and the MILK
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`GALLERY.
`
`35.
`
`Due to the remarkable unsolicited media coverage of Milk, brand opportunities,
`
`celebrity and influencer appreciation and its own marketing efforts, Milk has become the
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`collaborating sponsor of choice to many creative and corporate leaders in all fields, in developing
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`photographic, audio, and video content regularly featuring music.
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`Milk’s Federally Registered Family of Milk Marks
`
`36.
`
`Milk is the owner of the following family of MILK-formative marks (collectively
`
`the “MILK Marks”):
`
`Mark
`
`MILK
`
`Registration No. /
`Serial No.
`
`Services
`
`3,312,318
`
`Class 35: Gallery for art exhibits; conducting
`and providing facilities for trade show
`exhibitions and for launching new products for
`others in the fields of art, photography, beauty
`products, print publications, automobiles,
`
`Al electronics, films, music, and fashions.
`
`Class 41: Providing a website featuring news,
`commentary, non—downloadable videos and
`photographs in the fields of music,
`entertainment and art; online journals, namely,
`blogs and online columns in the fields of
`fashion, beauty, music, entertainment and art.
`
`MILK MADE
`
`4,446,712
`
`‘
`
`MEI 19289060v.l
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`10
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`MILK GALLERY
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`86/346,828
`
`Milk
`
`4,620,902
`
`Class 44: Providing a website featuring news,
`commentary, non-downloadable videos and
`photographs in the field of beauty.
`
`Class 45: Providing a website featuring news,
`commentary, non-downloadable videos and
`photographs in the field of fashion.
`
`Class 35: Gallery for art exhibits; conducting
`and providing facilities for trade show
`exhibitions and for launching new products for
`others in the fields of art, photography, beauty
`products, print publications, automobiles,
`electronics, films, music, and fashions.
`
`Class 35: Gallery for art exhibits; conducting
`and providing facilities for trade show
`exhibitions and for launching new products for
`others in the fields of art, photography, beauty
`products, print publications, automobiles,
`electronics, films, music, and fashions
`
`“l
`
` Class 481: Rental of photographic equipment
`
`3,236,886
`
`1
`
`(I§',‘¢y;;i;;.nn¢:}tt
`
`3,324,347
`
`""1
`
`Class 41: Photography studio; rental of
`photographic equipment
`
`8 Milk sihasqs
`
`Certified copies of the Certificates of Registration for Milk’s MILK-formative marks are
`
`attached as Exhibit B.
`
`37.
`
`The federal registrations for each of Mill<’s registered MILK-formative marks are
`
`valid, subsisting, unrevoked and uncancelled, and, at all times relevant, in full force and effect,
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`MEI l9289060v.l
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`ll
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`and U.S. Application Serial No. 86/346,828 for the mark MILK GALLERY is valid, subsisting,
`
`unrevoked and, at all times relevant, in full force and effect. U.S. Registration Nos. 3,312,318,
`
`3,236,886 and 3,324,347 are incontestable pursuant to 15 U.S.C. § 1065, and thus serve as
`
`conclusive evidence of the validity of the marks MILK, MILK EQUIPMENT RENTAL (and
`
`Design) and MILK STUDIOS (and Design), respectively, pursuant to 15 U.S.C. § 1115(b).
`
`Samsung’s Knowledge of Plaintiff Milk
`
`38.
`
`Samsung has long been aware of Milk and the products and services that Milk
`
`provides under the MILK trademark. On no less than eighteen, separate occasions since August
`
`2006, Samsung has availed itself of Milk’s services and/or collaborated with Milk. These projects
`
`have included:
`
`I 0 Creating promotional materials for Samsung products;
`
`0 Launching the Samsung Infuse 4G mobile telephone in 2011;
`
`0 Launching Samsung’s new appliance offerings at the “Make Your House Work”
`
`exhibit held at Milk Gallery on June 18-20, 2012;
`
`0
`
`Sponsoring and providing various Samsung devices for GROUND magazine’s
`
`first exhibit at Milk’s MILK GALLERY on September 25, 2012. The Samsung
`
`devices were used to transform GROUND magazine into an interactive
`
`experience; and
`
`0 Holding a multiday photo shoot at Milk Studios for Vogue and GQ magazines in
`
`September 2014.
`
`39.
`
`Samsung’s personnel, including Samsung’s management, has routinely interfaced
`
`with Milk personnel and visited the premises and studios of Milk. Samsung personnel and its
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`management have had personal knowledge of the MILK marks, the services Milk provides and
`
`Milk’s reputation for providing cutting-edge media services under the MILK brand.
`
`Samsung Usurps Milk’s Trademark MILK
`
`40.
`Plaintiff repeats and restates the allegations contained in paragraphs 1 through 39
`of this Complaint as if fully restated herein.
`
`41.
`
`Upon information and belief, there are approximately 174 million smartphone
`
`users in the United States, and Samsung is the second largest smartphone seller, commanding
`
`approximately twenty—nine percent of the market.
`
`In other words, more than 50 million people in
`
`the United States use Samsung smartphones.
`
`42.
`
`Upon information and belief, Samsung’s U.S. smartphone market share rose
`
`steadily in June, July and August 2014 inlconnection with the introduction of Samsung’s Galaxy
`
`S5 model.
`
`43.
`
`In 2013, Forbes rated Samsung the ninth most valuable global brand, up three
`
`positions from its 2012 rankings. According to Forbes, in 2013, Samsung’s brand value grew
`
`more than thirty percent faster than the most valuable brand, Apple.
`
`44.
`
`Upon information and belief, Samsung’s brand value grew fifty-three percent in
`
`2013.
`
`45.
`
`Samsung’s advertising reflects its worldwide business. Upon information and
`
`belief, in 2012, Samsung spent at least $4.3 billion globally on the advertising of its products and
`
`services, $597 million dollars of which was directed to the United States advertising mark