ESTTA Tracking number:
`
`ESTTA1385852
`
`Filing date:
`
`09/25/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91293528
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Defendant
`Office Depot, LLC
`
`JOSHUA M DALTON
`MORGAN LEWIS & BOCKIUS LLP
`ONE FEDERAL STREET
`BOSTON, MA 02110
`UNITED STATES
`Primary email: trademarks@morganlewis.com
`Secondary email(s): rachelle.dubow@morganlewis.com,
`erin.mcguine@morganlewis.com, jennifer.kagan@morganlewis.com,
`josh.dalton@morganlewis.com
`617-951-8284
`
`Response to Board Order/Inquiry
`
`Joshua M. Dalton, Esq.
`
`trademarks@morganlewis.com, rachelle.dubow@morganlewis.com, jen-
`nifer.kagan@morganlewis.com, javier.roldancora@morganlewis.com,
`josh.dalton@morganlewis.com
`
`Signature
`
`Date
`
`/Joshua M. Dalton/
`
`09/25/2024
`
`Attachments
`
`Complaint for Declaratory Judgment.pdf(2694167 bytes )
`
`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 1 of 14
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`WEST PALM BEACH DIVISION
`
`CASE NO.: ___________________
`
`
`OFFICE DEPOT, LLC,
`
`
`
`Plaintiff,
`
`v.
`
`THE IMAGINE GROUP, LLC,
`
`Defendant.
`_______________________________/
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`Office Depot, LLC. (“Office Depot”), by and through its undersigned counsel,
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`hereby files this Complaint for Declaratory Judgment against The Imagine Group,
`
`LLC (“Defendant”), and alleges, on knowledge as to its own actions and otherwise
`
`upon information and belief, as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action under the Declaratory Judgment Act, 28 U.S.C. §§ 2201
`
`and 2202, seeking a declaration that Office Depot’s use of its IMAGINE SUCCESS
`
`mark (the “Office Depot Mark”) does not infringe Defendant’s IMAGINE trademarks
`
`(the “Defendant’s Marks”) under the Lanham Act, Lanham Act, 15 U.S.C. §1051 et.
`
`seq., and that Office Depot is entitled to maintain its application for a registered
`
`trademark and secure registration of the Office Depot Mark.
`
`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 2 of 14
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`2.
`
`This action arises out of Defendant’s May 30, 2024 letter to Office Depot
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`(the “Defendant’s Letter”)1 and subsequent Notice of Opposition filed on August 23,
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`2024 at the United States Patent and Trademark Office’s Trademark Trial and
`
`Appeal Board (the “Notice of Opposition”)2 objecting to Office Depot’s attempted
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`registration and use of the Office Depot Mark in connection with services in the fields
`
`of printing, print supply chains, branding, design, advertising, and marketing
`
`campaigns, claiming that the registration and use is likely to cause consumer
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`confusion, and its allegations amounting to trademark infringement. Office Depot
`
`denies that it has infringed any rights of the Defendant.
`
`PARTIES
`
`3.
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`Office Depot is a Limited Liability Company organized under the laws
`
`of the states of Delaware with its principal place of business in Boca Raton, Florida.
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`4.
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`Office Depot is a leading specialty office supply retailer providing
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`innovative products and services to support the productivity and its small business,
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`home office and education clients.
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`5.
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`Defendant is a Delaware limited liability company with a principal place
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`of business in Shakopee, Minnesota.
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`6.
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`Defendant is a commercial printing company that offers its products
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`nationwide.
`
`
`1 A true and correct copy of Defendant’s Letter is attached hereto as Exhibit A.
`2 A true and correct copy of the Notice of Opposition is attached hereto as Exhibit B.
`
`- 2 -
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`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 3 of 14
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`JURISDICTION AND VENUE
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`7.
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`The Court has jurisdiction over this claim under 28 U.S.C. §§ 2201 and
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`2202, and the trademark laws of the United States, 15 U.S.C. § 1051 et seq.
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`8.
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`The Court has personal jurisdiction over Defendant because it has, on
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`information and belief, purposefully availed itself of the privilege of conducting
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`activities within the forum State, thus invoking the benefits and protections of its
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`laws. In particular, Defendant has, on information and belief, sold products that were
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`intended for and installed in this District, and has marketed those products as
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`installed in the forum State.
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`9.
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`Venue is proper in this District pursuant to 28 U.S.C. § 1391(b)–(c)
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`because, on information and belief, Defendant regularly conducts business in this
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`District and because Defendant’s contacts with this District are regular and
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`purposeful, and a substantial part of the acts or omissions giving rise to the claims
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`asserted herein occurred in this District.
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`OFFICE DEPOT’S BUSINESS AND USE OF THE OFFICE DEPOT MARK
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`10. Office Depot is a well-known, leading specialty retailer providing
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`innovative products and services delivered through its Office Depot and OfficeMax
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`retail stores and an award-winning online presence to support the productivity and
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`organizations of its small business, home office, and education clients. Office Depot
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`is committed to enabling its clients’ success, strengthening local communities, and
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`providing equal opportunities for all.
`
`- 3 -
`
`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 4 of 14
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`11. On or around March 6, 2023, Office Depot launched its new “Imagine
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`Success” slogan as part of its campaign to enable the success of its core customer base
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`of small business owners, home office works, teachers, parents, and students. The
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`slogan was created in part to be used for Office Depot’s efforts to capture and share
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`real stories of success, along with informative videos, articles, studies, and helpful
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`strategies and buying guides.
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`12. The phrase “imagine success” was selected to evoke a feeling of
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`aspiration and ambition in observers of the mark. The stylization of the mark is
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`consistent with other Office Depot branding, including its famous house brand mark,
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`with features like the use of red and black colors.
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`Example of Office Depot’s use of the Office Depot Mark
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`
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`13. On or around April 26, 2023, Office Depot filed Application Serial No.
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`97/908,890 (the “Office Depot Application”) to register the Office Depot Mark for
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`“Retail store services and online retail store services featuring furniture, computer
`
`hardware, computer software, electronics, paper goods, computer peripherals, office
`
`supplies, and office machines; Retail mail order services and online catalog ordering
`
`services featuring furniture, hardware, computer software, electronics, paper goods,
`
`computer peripherals, office supplies, and office machines; photocopying services;
`
`distributorship services in the field of computers and related products, namely,
`
`computer peripherals and consumer electronics; providing a buy-back and trade-in
`
`program for used mobile phones and used wireless and electronic devices of others.”
`
`- 4 -
`
`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 5 of 14
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`14. On February 7, 2024, the U.S. Patent and Trademark Office (“USPTO”)
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`found that the Office Depot Application was sufficient to proceed toward registration,
`
`and subsequently published it in the Official Gazette on Feb 27, 2024. The USPTO
`
`did not cite any rights of the Defendant as a basis for refusing registration under
`
`Section 2(d) of the Lanham Act.
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`15. On March 21, 2024, counsel for the Defendant filed an extension of time
`
`to oppose the Office Depot Application. Subsequent extensions were filed on April
`
`25, 2024, and June 25, 2024.
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`16. On August 23, 2024, Defendant filed a Notice of Opposition with the
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`Trademark Trial and Appeal Board (the “TTAB”) seeking to have the TTAB reject the
`
`Office Depot Application on grounds that use of the Office Depot Mark was likely to
`
`cause confusion with Defendant’s trademarks.
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`DEFENDANT’S MARK
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`17. Defendant is the owner of several “IMAGINE” trademarks, including
`
`Reg. No. 6,158,763 for the IMAGINE GROUP trademark registered and used in
`
`connection with consulting services relating to the installation of marketing
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`materials and signage for retail establishments, Reg. Nos. 6,295,713; 6,185,698;
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`6,301,779; and 6,295,714 for the IMAGINE trademark, Reg. Nos. 6,816,551 and
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`6,816,552 for the “imagine.” trademark, all registered and used in connection with
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`related reseller services, namely, distributorship services in the field of printing
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`equipment, printing accessories, printing supplies, labels, ribbons, labeling systems,
`
`label dispensers and re-winders, labeling software, scanners; Order fulfillment
`
`- 5 -
`
`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 6 of 14
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`services and merchandise packaging services to the order and specification of others,
`
`namely, preparation of customized promotional and merchandising materials for
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`others; letter shop and direct mail advertising services, namely, advertising by and
`
`through advertising letters in the nature of the distribution of advertising mail, and
`
`letter and direct mail advertising and promotion services (collectively, “Defendant’s
`
`Marks”).
`
`An Example of Defendant’s use of its “imagine.” Mark
`
`
`
`18. Defendant, in its own words, has limited the scope of its “IMAGINE”
`
`marks. On February 16, 2018, Defendant filed Application Serial No. 87/801,051 to
`
`register a stylized IMAGINE mark. In a response to an office action, Defendant
`
`limited the scope of its mark by distinguished its IMAGINE mark from “IMAGINE,
`
`CREATE, BUILD” on the grounds that the marks “differed in terms of appearance,
`
`sound and meaning,” creating a different “overall commercial impression.”
`
`Defendant argued that “focusing only on the term ‘IMAGINE’ rather than
`
`[‘IMAGINE, CREATE, BUILD’] in its entirety is misplaced and contrary to Supreme
`
`Court precedent” (citing Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252
`
`U.S. 538, 545-46 (1920) (“[T]he commercial impression of a trademark is derived from
`
`it as a whole, not from its elements separated and considered in detail.”).
`
`19. On February 16, 2018, Defendant filed Application Serial No.
`
`87/801,042 to register a stylized IMAGINE mark. Again, in response to office actions,
`
`Defendant limited the scope of the IMAGINE mark by distinguishing IMAGINE from
`
`- 6 -
`
`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 7 of 14
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`IMAGINE SIMPLE!, IMAGINE YOUR FUTURE, IMAGINE THE NEXT, and
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`IMAGINE THIS (collectively, the Registered Marks”) “in terms of appearance, sound
`
`and meaning.”
`
`20. Defendant again argued “that focusing only on the term ‘IMAGINE’
`
`rather than the Registered Marks in their entirety, is misplaced and contrary to
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`Supreme Court precedent.” (citing Estate of P.D. Beckwith, 252 U.S. at 545-46).
`
`Defendant, in its own words, stated that “[t]he validity of a trademark should be
`
`determined by looking at the mark as a whole and should not be judged by an
`
`examination of its parts… The terms “YOUR FUTURE,” “THE NEXT,” “THIS” and
`
`“SIMPLE!” convey a very different meaning when combined with the word “Imagine”
`
`that is not conveyed by the term alone.”
`
`21. Applying Defendant’s own arguments to the trademarks at issue here,
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`there is no likelihood of confusion. The Office Depot Mark and Defendant’s Marks
`
`have different commercial impressions and are used in vastly different ways,
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`ensuring that there is no likelihood of confusion between the two companies or their
`
`respective products and/or services.
`
`22. Akin to the fact that the terms “YOUR FUTURE,” “THE NEXT,” “THIS”
`
`and “SIMPLE!” convey a very different meaning when combined with the word
`
`“Imagine” that is not conveyed by the term alone,” the term “SUCCESS” in IMAGINE
`
`SUCCESS conveys a different meaning than what it conveyed by “imagine” alone.
`
`- 7 -
`
`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 8 of 14
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`WIDESPREAD USE OF “IMAGINE” IN MARKS AND SLOGANS
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`23. While Office Depot’s particular use of the Office Depot Mark is unique,
`
`it is by no means alone in using the word “imagine” in a slogan.
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`24. As of July 24, 2024, there are 2,179 registered marks that include the
`
`word “imagine,” and nearly 600 more pending registrations. This does not account
`
`for the prolific use of “imagine” in slogans that are not registered marks.
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`25. There are many instances of third-party use of “imagine” in printing and
`
`related services, including Imaginethis Printing, Imagine X Printing Corp, Imagine
`
`Fine Art Printing, Imagine Prints, Imagine Printworks, Imagine, Inc., and Imagine
`
`Custom T-Shirt and Embroidery Store.
`
`26.
`
`“Imagine” is popular in other industries as well, for example, in the
`
`medical imaging industry, including Imagine Imaging, IMAGINE (Intelligent
`
`Medical Imaging Research Group at Boston Children’s Hospital), Imagine Scientific,
`
`Inc., IMAGINE (IAEA Medical imAGIng and Nuclear mEdicine global resources
`
`database), and ImagineSoftware.
`
`27.
`
`“Imagine” is popular in registered tagline marks. For example,
`
`IMAGINE THE POSSIBILITIES is registered by at least eight entities, and
`
`IMAGINE MORE is registered by at least three. Other examples include IMAGINE
`
`BETTER, IMAGINE WHAT’S NEXT!, IMAGINE A PLACE, ASPIRE IMAGINE
`
`MORE, to name a few.
`
`28. There are countless uses of “imagine” in unregistered slogans. One
`
`example is the State of Oklahoma’s official slogan, “Imagine That.” The State of
`
`- 8 -
`
`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 9 of 14
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`Oklahoma describes the slogan as “an expression that universally represents surprise
`
`while inviting audiences to dream of their own personal opportunities.”3
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`29.
`
`“Imagine” alone is registered as a mark not only by Defendant, but also
`
`for goods and services ranging from website design, credit card services, software and
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`electronic games, cafeteria services, and more.
`
`EXISTENCE OF AN ACTUAL CONTROVERSY
`
`30. There is an actual controversy within the jurisdiction of this Court
`
`under 28 U.S.C. §§ 2201 and 2202.
`
`31. On May 30, 2024, Office Depot received Defendant’s Letter objecting to
`
`Office Depot’s registration and use of the Office Depot Mark and claiming that the
`
`registration and use of the Office Depot Mark is likely to cause consumer confusion.
`
`Defendant’s Letter not only demanded that Office Depot limit the registration of the
`
`Office Depot Mark, but also demanded Office Depot agree cease use of the Office
`
`Depot Mark or similar ‘IMAGINE’ marks in connection with goods or services in the
`
`fields of printing, print supply chains, branding, design, advertising, and marketing
`
`campaigns. See Exhibit A.
`
`32. On August 23, 2024, Defendant filed a Notice of Opposition with the
`
`Trademark Trial and Appeal Board (the “TTAB”) seeking to have the TTAB reject the
`
`Office Depot Application on grounds that use of the Office Depot Mark was likely to
`
`cause confusion with Defendant’s trademarks. See Exhibit B.
`
`
`3 See https://oklahoma.gov/branding/verbal-
`identity.html#:~:text=%E2%80%9CImagine%20that%E2%80%9D%20is%20an%20expression,the%20state%20for
`%20external%20communications.
`
`- 9 -
`
`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 10 of 14
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`33. Defendant’s allegations of a likelihood of confusion amounting to
`
`trademark infringement set out in Defendant’s Letter and Notice of Opposition are
`
`without basis because consumers are not likely to be confused by Office Depot’s use
`
`of the Office Depot Mark.
`
`34.
`
`IMAGINE SUCCESS is used as a slogan in close proximity to the
`
`famous OFFICE DEPOT house mark. IMAGINE SUCCESS is never used separately
`
`from the OFFICE DEPOT house mark nor as a brand name for products or services.
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`35. Office Depot has developed substantial goodwill around the Office Depot
`
`Mark as a slogan on its catalogs and other marketing materials.
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`36. Based on the foregoing, a justiciable controversy exists between Office
`
`Depot and Defendant as to whether Office Depot’s use and registration of the Office
`
`Depot mark should be permitted or not.
`
`37.
`
`In view of Defendant’s threats, allegations, and the Notice of Opposition,
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`Office Depot needs—and is entitled to—a judicial declaration that Office Depot’s
`
`conduct, use, and registration of the Office Depot Mark does not infringe Defendant’s
`
`trademark rights in Defendants Marks.
`
`38. Absent a declaration to this effect, Defendant will continue to wrongfully
`
`allege that Office Depot’s use of the Office Depot Mark infringes Defendant’s
`
`trademark rights, thereby causing Office Depot irreparable injury and damage.
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`COUNT I: DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`39. Office Depot incorporates and realleges the allegations in paragraphs 1
`
`through 38 as if fully set forth herein.
`
`- 10 -
`
`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 11 of 14
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`40. There is a bona fide, actual, present and practical need for a declaration
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`because Defendant has alleged that Office Depot is infringing on its trademarks and
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`has moved to oppose and prevent the registration of the Office Depot Mark.
`
`41. The dispute between Office Depot and Defendant is definite and
`
`concrete because Defendant claims that there is a likelihood of confusion between the
`
`Office Depot Mark and Defendant’s Marks, has repeatedly demanded that Office
`
`Depot cease all use of the Office Depot Mark, and has taken affirmative steps to
`
`prevent Office Depot from registering the Office Depot Mark.
`
`42. The dispute directly impacts the legal interests of Office Depot and
`
`Defendant which are directly adverse with respect to Office Depot’s ability to continue
`
`using the Office Depot Mark.
`
`43. Office Depot believes that the Office Depot Mark and Defendant’s Marks
`
`can coexist without causing consumer confusion.
`
`44.
`
` Without the declaration, Office Depot’s rights to use the word “imagine”
`
`as part of its slogan are and will continue to be in question and subject to further,
`
`unnecessary, legal actions and claims.
`
`45. Office Depot requests a declaration by the Court, pursuant to 28 U.S.C.
`
`§§ 2201 and 2202, that: (a) the word “imagine” has substantial and widespread use
`
`in slogans and marks to evoke feelings of aspiration and ambition; (b) that there is
`
`no likelihood of confusion regarding the source of and/or any affiliation between the
`
`Office Depot Mark and Defendant’s Marks; and that (c) Office Depot’s current use of
`
`the Office Depot Mark does not infringe, either directly or indirectly, any valid and
`
`- 11 -
`
`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 12 of 14
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`enforceable trademark rights of Defendant under 15 U.S.C. § 1114(1) or 15 U.S.C. §
`
`1125(a).
`
`COUNT II: DECLARATORY JUDGMENT OF REGISTRATION
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`46. Office Depot incorporates and realleges the allegations in paragraphs 1
`
`through 38 as if fully set forth herein.
`
`47. On or around April 26, 2023, Office Depot filed the Office Depot
`
`Application.
`
`48. On February 7, 2024, the USPTO found that the Office Depot
`
`Application was sufficient to proceed toward registration, and subsequently
`
`published it in the Official Gazette on Feb 27, 2024.
`
`49. The USPTO did not cite any rights of Defendant as a basis for refusing
`
`registration under Section 2(d) of the Lanham Act.
`
`50. On August 23, 2024, Defendant filed the Notice of Opposition seeking to
`
`have the TTAB reject the Office Depot Application on grounds that it was likely to
`
`cause confusion with Defendant’s trademarks.
`
`51. There is a bona fide, actual, present and practical need for a declaration
`
`because Defendant has alleged that Office Depot is infringing on its trademarks and
`
`has moved to oppose and prevent the registration of the Office Depot Mark.
`
`52. Office Depot believes that the Office Depot Mark and Defendant’s Marks
`
`can coexist on the U.S. Trademark Registry and that the Office Depot Application
`
`should be permitted to proceed to registration.
`
`- 12 -
`
`

`

`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 13 of 14
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`53. The dispute between Office Depot and Defendant is definite and
`
`concrete because Defendant has repeatedly demanded that Office Depot cease all use
`
`of the Office Depot Mark and has taken affirmative steps to prevent Office Depot from
`
`registering the Office Depot Mark.
`
`54. The dispute directly impacts the legal interests of Office Depot and
`
`Defendant which are directly adverse with respect to Office Depot’s ability to proceed
`
`with the Office Depot Application and secure registration for the Office Depot Mark.
`
`55. Office Depot requests a declaration by the Court, pursuant to 28 U.S.C.
`
`§§ 2201 and 2202, that Office Depot is entitled to maintain the Office Depot
`
`Application and to secure registration of Trademark Application Serial No.
`
`97/908,890.
`
`WHEREFORE Office Depot respectfully requests that the Court enter a
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`declaratory judgment in its favor declaring that:
`
`(a) the word “imagine” has substantial and widespread use in slogans and
`
`marks to evoke feelings of aspiration and ambition;
`
`(b) that there is no likelihood of confusion regarding the source of and/or any
`
`affiliation between the Office Depot Mark and Defendant’s Marks;
`
`(c) Office Depot’s current use of the Office Depot Mark does not infringe, either
`
`directly or indirectly, any valid and enforceable trademark rights of Defendant under
`
`15 U.S.C. § 1114(1) or 15 U.S.C. § 1125(a);
`
`(d) that Office Depot is entitled to maintain the Office Depot Application and
`
`to secure registration of Trademark Application Serial No. 97/908,890; and
`
`- 13 -
`
`

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`Case 9:24-cv-81039-XXXX Document 1 Entered on FLSD Docket 08/27/2024 Page 14 of 14
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`(e) for any such other relief as the Court deems just and proper.
`
`DEMAND FOR JURY TRIAL
`
`
`
`Office Depot demands a jury trial as to its claim in this litigation.
`
`
`Dated: August 27, 2024
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/s/ Javier A. Roldán Cora
`Javier Roldán Cora
`FL Bar No. 1010311
`MORGAN, LEWIS, & BOCKIUS LLP
`600 Brickell Avenue, Suite 1600
`Miami, FL 33131-3075
`javier.roldancora@morganlewis.com
`Telephone: (305) 415-3000
`
`Joshua M. Dalton (pro-hac forthcoming)
`MORGAN, LEWIS, & BOCKIUS LLP
`One Federal Street
`Boston, MA 02110-1726
`josh.dalton@morganlewis.com
`
`Counsel for Office Depot, LLC
`
`
`
`
`- 14 -
`
`

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`Case 9:24-cv-81039-XXXX Document 1-1 Entered on FLSD Docket 08/27/2024 Page 1 of 11
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`EXHIBIT A
`
`

`

`Case 9:24-cv-81039-XXXX Document 1-1 Entered on FLSD Docket 08/27/2024 Page 2 of 11
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`
`
`
`
`
`
`May 30, 2024
`
`Paxton A. Fleming
`Direct Dial: (612) 604-6524
`Main Fax: (612) 604-6800
`pfleming@winthrop.com
`
`
`
`Morgan, Lewis & Bockius LLP
`Rachelle A. Dubow, Esq.
`
`One Federal Street
`
`
`Boston, Massachusetts 02110
`
`
`
`
`
`
`
`Re: US Trademark Serial No. 97/908,890 for IMAGINE SUCCESS
`
`
`Dear Ms. Dubow:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`SENT VIA EMAIL ONLY
`trademarks@morganlewis.com
`rachelle.dubow@morganlewis.com
`erin.mcguine@morganlewis.com
`jennifer.kagen@morganlewis.com
`
`We are trademark counsel for The Imagine Group, LLC (“Imagine”). It has come to Imagine’s
`attention that Office Depot, LLC (“Office Depot”) recently applied to register the trademark
`IMAGINE SUCCESS for “Retail store services and online retail store services featuring furniture,
`computer hardware, computer software, electronics, paper goods, computer peripherals, office
`supplies, and office machines; Retail mail order services and online catalog ordering services
`featuring furniture, hardware, computer software, electronics, paper goods, computer peripherals,
`office supplies, and office machines; photocopying services; distributorship services in the field
`of computers and related products, namely, computer peripherals and consumer electronics;
`providing a buy-back and trade-in program for used mobile phones and used wireless and
`electronic devices of others.”
`
`Imagine is the owner of exclusive rights in the IMAGINE® and “imagine.”® marks, including
`Reg. No. 6,295,713; 6,185,698; 6,301,779; and 6,295,714 for the IMAGINE trademark, Reg. No.
`6,816,551 and 6,816,552 for the “imagine.” trademark, all registered and used in connection with
`related reseller services, namely, distributorship services in the field of printing equipment,
`printing accessories, printing supplies, labels, ribbons, labeling systems, label dispensers and re-
`winders, labeling software, scanners; Order fulfillment services and merchandise packaging
`services to the order and specification of others, namely, preparation of customized promotional
`and merchandising materials for others; Letter shop and direct mail advertising services, namely,
`advertising by and through advertising letters in the nature of the distribution of advertising mail,
`and letter and direct mail advertising and promotion services. Copies of Imagine’s numerous
`Certificates of Registration are enclosed for your reference, See Exhibit A (the “IMAGINE
`Marks”).
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`Imagine has a first use date for its IMAGINE Marks since at least as early as March of 2005. Over
`that time period, Imagine has established the IMAGINE® brand in connection with the above
`mentioned services. This commercial success is attributed in part to the considerable time and
`expense incurred by Imagine in promoting the IMAGINE Marks.
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`

`

`Case 9:24-cv-81039-XXXX Document 1-1 Entered on FLSD Docket 08/27/2024 Page 3 of 11
`
`Rachelle A. Dubow, Esq.
`May 30, 2024
`Page 2
`
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`Imagine is concerned that Office Depot’s registration and use of the IMAGINE SUCCESS mark
`is likely to cause consumer confusion with Imagine’s very similar IMAGINE Marks. As you may
`know, consumers are likely to be confused when the trademarks are so similar and the goods and/or
`services for which they are used are so related that consumers would mistakenly believe they
`emanate from the same source. Notably, neither the marks nor the goods/services need to be
`identical for a court to find a likelihood of confusion between competing marks. Courts frequently
`find infringement where the substantial and distinctive part of a senior user’s trademark is copied
`or imitated. Queen Mfg. Co. v. Isaac Ginsberg & Bros., 25 F.2d 284 (8th Cir. 1928); David
`Sherman Corp. v. Heublein, Inc., 340 F.2d 377 (8th Cir. 1965); Hallmark Cards, Inc. v. Hallmark
`Dodge, Inc., 634 F. Supp. 990 (W.D. Mo. 1986).
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`Here, the IMAGINE SUCCESS mark creates a very similar overall commercial impression to the
`IMAGINE Marks in terms of look, sound, and meaning. Indeed, the dominant term for both
`parties’ marks is the similar term IMAGINE. The fact that Office Depot has added the term
`“SUCCESS” does not alter the meaning and is therefore insufficient to distinguish the marks.
`Office Depot has applied for a mark which encompasses Imagine’s IMAGINE Marks for services
`related to the services identified in the federal registration for the IMAGINE Marks. Office Depot’s
`registration and use of the IMAGINE SUCCESS mark in connection with related services is likely
`to cause consumers to mistakenly assume that the services identified in Office Depot’s application
`are endorsed by, affiliated with, or in some way connected to Imagine and its IMAGINE brand for
`printing, branding, design, advertising, and marketing campaign services.
`
`Notwithstanding the foregoing, Imagine prefers to resolve this matter amicably. We presume
`Office Depot shares this sentiment. Therefore, please contact us by June 14, 2024 to confirm that
`Office Depot will agree to file the following amendment to the identification of services in class
`35 in U.S. Serial No. 97/908,890 for IMAGINE SUCCESS, and any other related foreign
`applications for the same, which would read as:
`
`Class 35: Retail store services and online retail store services featuring furniture, computer
`hardware, computer software, electronics, paper goods, computer peripherals, office supplies, and
`office machines; Retail mail order services and online catalog ordering services featuring furniture,
`hardware, computer software, electronics, paper goods, computer peripherals, office supplies, and
`office machines; photocopying services; distributorship services in the field of computers and
`related products, namely, computer peripherals and consumer electronics; providing a buy-back
`and trade-in program for used mobile phones and used wireless and electronic devices of others
`excluding services in the fields of printing, print supply chains, branding, design, advertising, and
`marketing campaigns;
`
`We also ask that Office Depot acknowledge in writing below that it will not provide services under
`the IMAGINE SUCCESS mark or similar “IMAGINE” marks for goods and services in the fields
`of printing, print supply chains, branding, design, advertising, and marketing campaigns.
`
`This letter is without prejudice to any rights of, or remedies to, Imagine, all of which are expressly
`reserved. Please contact me if you have any questions regarding this matter. Otherwise, we look
`forward to your prompt confirmation that Office Depot will comply with our client’s reasonable
`request.
`
`
`
`

`

`Case 9:24-cv-81039-XXXX Document 1-1 Entered on FLSD Docket 08/27/2024 Page 4 of 11
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`Rachelle A. Dubow, Esq.
`May 30, 2024
`Page 3
`
`
`Sincerely,
`
`WINTHROP & WEINSTINE, P.A.
`
`
`
`
`
`Paxton A. Fleming
`
`Enclosures
`
`cc:
`
`molsen@winthrop.com, jbriley@winthrop.com
`
`The undersigned authorized representative of Office Depot, LLC has read the foregoing and
`agrees that it will not provide services under the IMAGINE SUCCESS mark or similar
`“IMAGINE” marks for goods and services in the fields of printing, print supply chains,
`branding, design, advertising, and marketing campaigns. In addition, Office Depot, LLC agrees
`to file an amendment to the identification of goods and services in class 35 in U.S. Serial No.
`97/908,890 for IMAGINE SUCCESS, and any other related foreign applications for the same,
`which would read as: “excluding any services in the fields of printing, print supply chains,
`branding, design, advertising, and marketing campaigns.”
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`28837061v1
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`Office Depot, LLC
`
`By:______________________________________
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`Its:_______________________________
`
`Date:______________________________
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`
`
`

`

`Case 9:24-cv-81039-XXXX Document 1-1 Entered on FLSD Docket 08/27/2024 Page 5 of 11
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`EXHIBIT A
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`
`
`

`

`Case 9:24-cv-81039-XXXX Document 1-1 Entered on FLSD Docket 08/27/2024 Page 6 of 11
`
`Reg. No. 6,295,713
`
`Registered Mar. 16, 2021
`
`Int. Cl.: 35
`
`Service Mark
`
`Principal Register
`
`THE IMAGINE GROUP, LLC (DELAWARE LIMITED LIABILITY
`COMPANY)
`1000 Valley Park Drive
`Shakopee, MINNESOTA 55379
`
`CLASS 35: Reseller services, namely, distributorship services in the field of printing
`equipment, printing accessories, printing supplies, labels, ribbons, labeling systems,
`label dispensers and re-winders, labeling software, scanners; Order fulfillment services
`and merchandise packaging services to the order and specification of others, namely,
`preparation of customized promotional and merchandising materials for others;
`Business and supply chain consulting services in the field of ecommerce, namely,
`business consultation services in the field of business data analysis for e-commerce
`businesses; Letter shop and direct mail advertising services, namely, advertising by and
`through advertising letters in the nature of the distribution of advertising mail, and letter
`and direct mail advertising and promotion services; Branding services, namely,
`consulting, development, management and marketing of brands for businesses and/or
`individuals; Developing promotional campaigns for business; Market research and
`business data analysis; Planning, design, development, maintenance, tracking and
`reporting of online marketing activities for third parties; Creative marketing design
`services; Consultation services, namely, creative and strategic consultation regarding
`development and production of marketing campaigns for others; Business consulting
`services, namely, providing assistance in development of business strategies and
`creative ideation; Production of advertising matter and commercials; Production of
`advertising materials; Business consulting
`services
`relating
`to
`the design,
`implementation, management and delivery