Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA56770
`ESTTA Tracking number:
`12/08/2005
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92045212
`Defendant
`Blue Marlin
`Blue Marlin
`540 Florida Street
`San Francisco, CA 94110
`
`Correspondence
`Address
`
`Blue Marlin
`540 Florida Street
`San Francisco, CA 94110
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Motion to Suspend for Civil Action
`Maame A.F. Ewusi-Mensah
`mewusimensah@mofo.com, jleetaylor@mofo.com
`/Maame A.F. Ewusi-Mensah/
`12/08/2005
`Motion to Suspend.pdf ( 86 pages )
`
`

`
`TRADEMARK
`‘ Docket No. 52395-24009.32
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DONNA KARAN INTERNATIONAL INC.,
`
`Cancellation No.:
`Registration No.:
`
`92,045,212
`2,656,473’
`
`Petitioner,
`
`vs.
`
`BLUE MARLIN CORP.,
`
`Registrant.
`
`
`
`BOX TTAB NO FEE
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Arlington, VA 22313-1451
`
`MOTION TO SUSPEND PROCEEDINGS PENDING OUTCOME OF CIVIL ACTION
`
`Registrant Blue Marlin Corp. (“Blue Marlin”) hereby requests that the Board suspend this
`
`cancellation proceeding pending the decision of the Federal District Court for the Northern
`
`District of California in Blue Marlin Corp. v. Donna Karan International, Inc., Case No. 05-
`
`23 76 MMC(JCS). Because the civil action involves the same parties, the same mark, and the
`
`same issues as this cancellation proceeding, Blue Marlin respectfully requests that this
`
`cancellation proceeding be suspended pending the outcome of the civil action. See TBMP
`
`§510.02(a); 37 C.F.R. §2.1l7(a).
`
`I.
`
`Background
`
`Blue Marlin, the Registrant in this cancellation proceeding, and Donna Karan
`
`International Inc. (“DKI”), the Petitioner in this cancellation proceeding, are already involved in
`
`a civil action in federal district court which will resolve the issues that are at the heart of this
`
`cancellation. On June 10, 2005, Blue Marlin filed a civil action in the Federal District Court for
`
`the Northern District of California, alleging, inter alia, federal trademark infringement of its
`
`sf-2045885
`
`

`
`registered Five Star Mark (Registration No. 2,656,473). Attached hereto as Exhibit A is a copy
`
`of the Complaint as filed.
`
`On November 30, 2005, DKI filed an Answer and Counterclairn in the civil action.
`
`Attached hereto as Exhibit B is a copy of the Answer and Counterclaim as filed. In its
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`Counterclaim for Relief, DKI seeks a declaration from the court that Blue Marlin’s registration
`
`for the Five Star Mark is “invalid and unenforceable.” On the same day, DKI filed its Petition
`
`for Cancellation before the Board seeking cancellation of the Five Star Mark on the ground that it
`
`is invalid.
`
`II.
`
`H Argument
`
`Suspension of this cancellation pending the outcome of the civil action is prudent because
`
`the civil action involves issues in common with this cancellation. See TBMP §5l0.02(a); 37
`
`C.F.R. §2.1l7(a) (“Whenever it shall come to the attention of the Trademark Trial and Appeal
`
`Board that a party or parties to a pending case are engaged in a civil action or another Board
`
`proceeding which may have a bearing on the case, proceedings before the Board may be
`
`suspended until termination ofthe civil action or the other Board proceeding”). As the Board
`
`has explained on numerous occasions, the decision of the federal district court will be binding
`
`upon the Board, whereas the decision of the Board will not be binding upon the Federal District
`
`Court. See TBMP §5l0.02(a); General Motors Corp. v. Cadillac Club Fashions Inc., 22
`
`USPQ2d 1933, 1937 (TTAB 1992) (“Petitioner's motion to suspend proceedings is well taken. A
`
`decision by the district court will be dispositive of the issues before the Board. Petitioner's
`
`motion to suspend proceedings is granted”); Taro Co. v. Hardigg Industries, Inc., 187 USPQ
`
`689, 692 (TTAB 1975), rev'd on other grounds, 549 F.2d 785, 193 USPQ 149 (CCPA 1977)
`
`(“Applicant is advised that while the decision of the Federal District Court would be binding
`
`upon the Patent and Trademark Office, a decision by the Board would not be binding or res
`
`judicata as to the issues before the court”). Accordingly, to permit the Federal District Court to
`
`sf-2045885
`
`2
`
`Cancellation No. 92,045,212
`Docket No 52395—24009.32
`
`

`
`decide the issues first is efficient and permits the Board to avoid wasted time and effort in
`
`deciding issues that will ultimately decided in court.
`
`This case is appropriate for suspension because DKI’s allegations in its Petition for
`
`Cancellation are identical to those in its Counterclaim, and even set forth in precisely the same
`
`language, as demonstrated in the chart below:
`
`Allegationl
`
`Alleged in
`
`Alleged in
`
`Petition
`
`Counterclaimz
`
`
`
`
`Graphic designs are commonly used in the apparel
`
`
`
`industry as ornamentation. “[S]ing1e and multiple star configurations are commonly
` used as omamentation on apparel .
`along with graphic designs used as ornamentation.
`
`a trademark or source identifying indicia of any type.”
`
`.
`
`. .”
`
`
`
`On its apparel, DKI uses source identifying brand indicia
`
`Blue Marlin does not “use the [Five Star Design Mark] as
`
`Paragraph 4
`
`Paragraph 69
`
`Paragraph 5
`
`Paragraph 70
`
`
`
`The Five Star Design Mark “is not inherently distinctive,
`
`
`
`has not acquired secondary meaning, and does not, under
`
`
`
` any circumstance, function as a trademar .”
`Blue Marlin uses its Five Star Design Mark “only as
`
` omamentation,” and neither the public or the trade
`
`uniquely associate the Mark with Blue Marlin or its goods.
`
`I Direct quotations are from the Petition.
`
`2 Exhibit B.
`
`sf—2045 885
`
`3
`
`Cancellation No. 92,045,212
`Docket No 52395-24009.32
`
`

`
`Allegationl
`
`Alleged in
`
`Counterclaimz
`
`Paragraph 72
`
`The specimen of use filed for the Five Star Design Mark is Paragraphs 6-7
`
`Paragraph 71
`
`unacceptable and does not match the drawing of the mark
`
`in the registration.
`
`Blue Marlin “seeks to monopolize all uses of star design
`
`Paragraph 8
`
`Paragraph 73
`
`ornamentation on clothing and accessories.”
`
`It is in the interest of the public to preclude registration of
`
`Paragraph 8
`
`merely ornamental designs.
`
`As demonstrated above, the civil action involves issues that directly overlap with those in this
`
`cancellation. In fact, there are no matters to be decided in this cancellation proceeding that are
`
`not at issue in the civil action. Because the decision of the Federal District Court with respect to
`
`the validity of the registration Five Star Mark and the question of whether Blue Marlin is
`
`misusing the Five Star Mark to “monopolize” certain ornamental designs will be binding on the
`
`Board, the Board’s policy in such cases dictates that this proceeding be suspended. See TBMP
`
`510.02(a). Suspension is particularly appropriate here where no action has been taken by the
`
`parties in the cancellation, the Board has yet taken no action in the cancellation proceeding
`
`(besides the setting of the schedule), and there are no other motions pending before the Board.
`
`sf-2045885
`
`4
`
`Cancellation No. 92,045,212
`Docket No 52395-24009.32
`
`

`
`Accordingly, Blue Marlin respectfully requests that the Board suspend this cancellation
`
`proceeding pending the outcome of Blue Marlin Corp. v. Donna Karan International Inc.
`
` Dated: December 8, 2005
`
`By:
`
`e A.F. Ewusi-Mensah
`Attorney for Registrant
`Blue Marlin Corp.
`Morrison & Foerster LLP
`425 Market Street
`
`San Francisco, Califomia 94104-2482
`Telephone: (415) 268-6842
`
`sf-2045885
`
`5
`
`Cancellation No. 92,045,212
`Docket No 52395~24009.32
`
`

`
`EXHIBIT A
`
`

`
`.
`
`@ /V76-MMC Document1—1
`
`Filed 06/10/2005
`
`
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`JENNIFER LEE TAYLOR (BAR NO. 161368) (JLeeTaylor@mofo.com)
`MAAME A.F. EWUSI-MENSAH (BAR NO. 222968) (MEwusiMensah@mofo
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105_24s2
`Telephone: (415)268-7000
`Telefacsimile: (415) 268-7522
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`Attorneys for Plaintiff
`BLUE MARLIN CORP.
`
`E'Fm"9
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`BLUE MARLIN CORP., a Califorrf
`corporation,
`
`0.
`
`Plaintiff,
`
`v.
`
`DONNA KARAN INTERNATIONAL INC ., a
`Delaware corporation, and DOES 1 through 10,
`
`Defendants.
`
`COMPLAINT FOR TRADEMARK
`INFRINGEMENT, UNFAIR
`COMPETITION, FALSE
`DESIGNATION OF ORIGIN; STATE
`LAW FALSE ADVERTISING,
`COMMON LAW TRADEMARK
`INFRINGEMENT; AND INJUNCTIVE
`RELIEF
`
`
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff BLUE MARLIN CORP. (“Blue Marlin”), as its complaint against Defendant
`
`DONNA KARAN INTERNATIONAL INC. (“Defendant DKI”) and Does 1 through 10 (collectiveiy
`
`“Defendants”), alleges as follows:
`
`PARTIES
`
`1.
`
`Blue Marlin is a corporation organized and existing under the laws of California, with its
`
`corporate headquarters and principal place of business at 299 Kansas Street, San Francisco,
`
`California 94103. Blue Marlin is the owner of and has been using various trademarks which
`
`comprise or contain the words FIVE STAR and a design mark of five stars on or in connection with a
`
`COMPLAINT
`
`sf-1940698
`
`I
`
`

`
`Case 3:05-cv—O237,6-MMC Document 1-1
`
`Filed 06/10/2005
`
`Page 2 of 27
`
`I-I
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`wide variety ofvintage and casual style apparel (collectiveiy “Blue Marlin’s FIVE STAR
`
`Trademarks”).
`
`2. On information and belief, Defendant DKI is a Delaware corporation with its corporate
`
`headquarters and principal place of business at 550 7th Avenue, New York, New York 10018. On
`
`information and belief, Defendant DKI has used trademarks which comprise or contain a design mark
`
`of five stars on or in connection with apparel, including vintage and casual style apparel (“Defendant
`
`DKI’s FIVE STAR Trademark”). On information and belief, Defendant DKI is transacting and
`
`doing business within this judicial district.
`
`3. On information and belief, Does 1-10 have used Defendant DKI’s FIVE STAR
`
`Trademark on or in connection with apparel, including vintage and casual style apparel. On
`
`information and belief, Does 1-10 are transacting and doing business within this judicial district.
`
`Blue Marlin is ignorant of the true names of Docs 1-10, and these names are fictitious. The true
`
`names of Docs 1-10 are not ascertainable without formal discovery. Blue Marlin will seek leave of
`
`the Court to amend its Complaint to state the true names of Docs 1-10 when the true names of Does
`
`1-10 have been ascertained.
`
`JURISDICTION
`
`4.
`
`This Court has jurisdiction over this action pursuant to 15 U.S.C. § 1121 (action arising
`
`under the Lanham Act); 28 U.S.C. § 1331 (federal question); 28 U.S.C. § 1332 (diversity of parties);
`
`and 28 U.S.C. § l338(a) (any Act of Congress relating to trademarks); 28 U.S.C. § 1338(b) (action
`
`asserting claim of unfair competition joined with a substantial and related claim under the trademark
`
`laws); and 28 U.S.C. § 1367 (supplemental jurisdiction).
`
`VENUE
`
`5. Venue is proper in this district pursuant to 28 U.S.C. §§ 139l(b) and (c) because
`Defendants transact business within this district and offer for sale in this district goods under a
`
`designation that infringes Blue Mar1in’s marks.
`
`In addition, Blue Marlin's principal place of business
`
`is in this district, Blue Marlin has suffered harm in this district, and a substantial part of the events or
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`omissions giving rise to the claim occurred in this district.
`
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`sf—1940698
`
`2
`
`

`
`Case 3:05-cv-02376-MMC Document 1-1
`
`Filed 06/10/2005
`
`Page 3 of 27
`
`GENERAL ALLEGATIONS
`
`History of Blue Marlin and Blue Marlin’s FIVE STAR Trademarks
`
`6. Blue Marlin designs, markets, and distributes premium quality vintage and casual
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`American sportswear.
`
`7.
`
`Founded in 1994, Blue Marlin launched its apparel business with a line of vintage
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`baseball caps inspired by teams from the Negro Leagues, the Latin Leagues, the Pacific Coast
`
`Leagues, and other defunct baseball teams from the early 1900s. As examples, two of the earliest
`
`Blue Marlin creations included caps with the logos of the New York Black Yankees of the Negro
`League and the New York Knickerbockers, the first organized baseball team.
`
`8. Blue Marlin baseball caps were an instant hit and have continued to enjoy enormous
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`success. Called the “hats of choice for many Hollywood headliners,” they have been purchased and
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`worn by such stars as Bruce Willis and Bruce Springsteen, as well as sports figures such as former
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`San Francisco Giants manager, Dusty Baker, who reportedly owns twenty-eight Blue Marlin caps.
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`Blue Marlin caps have also been worn by stars in a number of movies and television shows.
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`9. Beginning in 1996, Blue Marlin expanded into vintage, sport-inspired clothing. The
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`clothing line initially consisted primarily of sweatshirts, sweatpants, and knit shirts for both men and
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`women. The clothing line has since expanded to include jeans, khakis, sweatshirts, sweatpants, track
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`jackets, track pants, t—shirts, halter tops, skirts, nylon jackets, sweaters, woven shirts, and sweaters for
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`both men and women. All Blue Marlin products are designed at its headquarters in the city of San
`
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`10
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`Francisco.
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`10. Blue Marlin apparel has been as Sl1CCCSSf|.ll as the Blue Marlin baseball caps. Blue
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`Marlin apparel has been purchased and worn by many celebrities, including Bono, John Leguizamo,
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`Rosie Perez, and Jack Osbourne, and has also been worn in numerous movies, television shows, and
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`magazine articles.
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`I 1. Blue Marlin apparel is found in approximately five hundred stores nationwide,
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`including Bloomingdale’s, Macy’s, Marshall Field’s, Lord & Taylor, Nordstrom, Virgin Superstores,
`
`and in a variety of specialty stores.
`
`COMPLAINT
`
`sf-1940698
`
`3
`
`

`
`Case 3:05-cv—02376-MMC Document 1-1
`
`Filed 06/10/2005
`
`Page 4 of 27
`
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`12. Blue Marlin has also enjoyed much success in other parts of the world. International
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`sales account for a significant portion of Blue Marlin’s business. In particular, the American vintage
`
`quality of Blue Marlin apparel is popular in Japan.
`I
`13. Blue Marlin has used, and continues to use, the following FIVE STAR trademarks:
`
`(a)
`
`Since 1999, Blue Marlin has used, and continues to use, a design mark of five stars
`
`on a variety of clothing items alone and in conjunction with other trademarks owned by Blue Marlin.
`
`(b)
`
`Since May 2001, Blue Marlin has used, and continues to use, a mark of FIVE
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`STAR VINTAGE on a variety of clothing items.
`
`(c)
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`Since May 2001, Blue Marlin has used a mark of BLUE MARLIN FIVE STAR
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`VINTAGE on a variety of clothing items.
`
`14. Blue Marlin owns three federal trademark registrations on the Principal Register ofthe
`
`United States Patent and Trademark Office for its FIVE STAR trademarks:
`
`(a) The mark FIVE STAR VINTAGE (and Design) is registered for “vintage style
`
`apparel, namely hats, caps, dresses, jackets, jeans, jogging suits, warm~up suits, lounge wear,
`
`nightshirts, sweaters, vests, halter tops, undershirts, t-shirts, sweatshirts, shorts, gym shorts, sweat
`
`shorts, trousers, khakis, and woven shirts” in the United States Patent and Trademark Office on the
`
`Principal Register under Registration No. 2,658,876, issued on December 10, 2002. Blue Marlin
`
`claimed a first use date of May 1, 2001 in its application of October 16, 2001. Blue Marlin is the
`
`owner of the registration, which is valid, subsisting, uncancelled and unrevoked, and is the owner of
`
`the trademark covered thereby and of the goodwill and reputation of the business connected with and
`
`symbolized by this registered mark.
`
`(b)
`
`The mark BLUE MARLIN FIVE STAR VINTAGE is registered for “vintage style
`
`apparel, namely hats, caps, dresses, jackets, jeans, jogging suits, warm-up suits, lounge wear,
`
`nightshirts, sweaters, vests, halter tops, undershirts, t-shirts, sweatshirts, shorts, gym shorts, sweat
`
`shorts, trousers, khakis, and woven shirts” in the United States Patent and Trademark Office on the
`Principal Register under Registration No. 2,639,177, issued on October 22, 2002. Blue Marlin
`
`claimed a first use date of May 1, 2001 in its application of October 16, 2001. Blue Marlin is the
`
`owner of the registration, which is valid, subsisting, uncancelled and unrevoked, and is the owner of
`
`COMPLAINT
`
`sf-l 940698
`
`4
`
`

`
`pd
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`22
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`23
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`24
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`25
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`26
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`27
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`Case 3:05-cv—02376-MMC Document 1-1
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`Filed 06/10/2005
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`Page 5 of 27
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`the trademark covered thereby and of the goodwill and reputation of the business connected with and
`
`symbolized by this registered mark.
`
`(c)
`
`The design mark of five stars, as shown below,
`
`, nor
`
`(the “FIVE STAR Design Mark”) is registered for “vintage style apparel, namely hats, caps, dresses,
`
`jackets, jeans, jogging suits, warm-up suits, lounge wear, nightshirts, sweaters, vests, halter tops,
`
`undershirts, t-shirts, sweatshirts, shorts, gym shorts, sweat shorts, trousers, khakis, and woven shirts”
`in the United States Patent and Trademark Office on the Principal Register under Registration No.
`
`2,656,473, issued on December 3, 2002. Blue Marlin claimed a first use date of May 1, 2001 in its
`
`application of February 15, 2002. Blue Marlin is the owner of the registration, which is valid,
`
`subsisting, uncancelled and unrevoked, and is the owner of the trademark covered thereby and of the
`
`goodwill and reputation of the business connected with and symbolized by this registered mark.
`
`15.
`
`In addition, Blue Marlin has applied to register on the Principal Register of the United
`
`States Patent and Trademark Office a design of a lion incorporating the FIVE STAR Design Mark, as
`
`shown below,
`
`
`
`COMPLAINT
`
`sf—l 940698
`
`‘
`
`5
`
`

`
`Case 3:05-cv—02376-MMC Document 1-1
`
`Filed 06/10/2005
`
`Page 6 of 27
`
`for “vintage style apparel, namely hats, caps, dresses, jackets, jeans, jogging suits, warrn-up suits,
`lounge wear, nightshirts, sweaters, vests, halter tops, undershirts, t~shirts, sweatshirts, shorts, gym
`
`shorts, sweat shorts, trousers, khakis, and woven shirts.” Blue Marlin filed this application on an
`
`intent-to-use basis on May 21, 2004; the application was accorded Serial No. 78/423,274 and was
`
`published on April 12, 2005. Blue Marlin owns the mark covered by application Serial No.
`
`78/423,274, the application, and the goodwill and reputation of the business connected with and
`
`symbolized by the mark.
`
`16. Blue Marlin has incorporated its FIVE STAR Design Mark throughout its clothing line.
`For instance, it uses the FIVE STAR Design Mark on labels, hang tags, buttons, zipper pulls, and
`
`patches. Blue Marlin also integrates the FIVE STAR Design Mark into the design of the clothing
`
`itself, typically displaying the mark on the front or back of shirts, track suits, and bags. The FIVE
`
`STAR Design Mark is used both alone and together with other company trademarks, such as BLUE
`
`MARLIN, FIVE STAR VINTAGE, and a lion design.
`
`17.
`
`The key to Blue Marlin’s strategy in promoting the Blue Marlin brand is the Blue
`
`Marlin FIVE STAR Design Mark. For this reason, the Blue Marlin FIVE STAR Design Mark
`appears externally on the majority of Blue Marlin’s clothing so thatiprospective customers can
`
`identify Blue Marlin as the source of a product even after the initial purchaser has removed the hang
`
`tags and other material commonly used to identify products.
`
`18.
`
`For many years now, Blue Marlin has been using its FIVE STAR Design Mark on the
`
`front of tops, jackets, and pants, adjacent to terms such as New York, NYC, Harlem, Brooklyn, Ft.
`
`Greene, Bronx, Rockaway Beach, and Coney Island. “NYC” is a common abbreviation for New
`
`York City, and Harlem, Brooklyn, Ft. Greene, Bronx, Rockaway Beach, and Coney Island are all
`
`geographic locations in and around New York City. In many instances, the selected term is arched
`across the center ofthe front ofthe clothing item, with the FIVE STAR Design Mark appearing just
`
`above and to the right of the selected term. The tenns are commonly displayed in old-fashioned
`
`fonts. The overall style is reminiscent of vintage jerseys and uniforms, yet the use of the FIVE STAR
`
`Design Mark unmistakably identifies the item as a genuine Blue Marlin product. Attached as
`
`Exhibit A are true and correct copies of printouts fi'om the Blue Marlin website,
`
`-B
`
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`22
`
`23
`
`24
`
`25
`
`26
`
`27
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`28
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`COMPLAINT
`
`sf- l 940698
`
`-_
`
`6
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`Case 3:05-cv—02376-MMC Document 1-1
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`Filed 06/10/2005
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`Page 7 of 27
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`www.bluemar1incorp.com, showing a representative sample of Blue Marlin apparel featuring selected
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`terms and the FIVE STAR Design Mark.
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`Defendant DKI’s FIVE STAR Design Mark
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`19. On information and belief, Defendant DKI is a New York company that designs,
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`manufactures, and sells casual clothing and accessories under the DONNA KARAN and DKNY
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`brands, among others.
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`20. On information and belief, Does 1-10 design, manufacture, and sell casual clothing and
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`accessories under_Defendant DKI’s DONNA KARAN and DKNY brands, among others.
`21. On information and belief, Defendant DKI’s DONNA KARAN and DKNY brand
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`clothing and accessories are sold throughout the worid in high-end department stores such as
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`Bergdorf Goodman, Bloomingdale’s, Neiman Marcus, Saks Fifth Avenue, as well as through
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`discount retailers such as Loehman’s. In addition, Defendant DKI has almost fifty company-owned
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`stores in North America, Europe, the Middle East, and Asia. On information and belief, Defendant
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`DKI generates most of its revenue (65%) within the United States.
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`22. On information and belief, Defendants recently began using on their clothing a FIVE
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`STAR Design Mark that is identical to Blue Marlin’s FIVE STAR Design Mark, as shown below:
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`irir
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`Defendants have used Defendant DKI’s FIVE STAR Design Mark on the front of fleece jackets, t-
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`shirts, and sweat pants, just above and to the right of arched lettering bearing the DKNY mark, which
`is displayed in an old-fashioned font. “DKNY” is an acronym for “Donna Karan New York,” and
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`"NY” is the common abbreviation for “New York.” The overall look is reminiscent of vintage
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`jerseys and uniforms, and of Blue Marlin’s products. Attached as Exhibit B are true and correct
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`color photographs of Defendants’ apparel featuring Defendant DKI’s FIVE STAR Design Mark.
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`COMPLAINT
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`sf-1940698
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`7
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`

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`Case 3:05-cv—02376-MMC Document 1-1
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`Filed 06/10/2005
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`Page 8 of 27
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`The Likelihood of Consumer Confusion
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`23. Defendants’ use of an identical FIVE STAR Design Mark for competitive and related
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`products is likely to cause confusion with Blue Marlin’s FIVE STAR Design Mark. The likelihood
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`of confusion is exacerbated by the fact that Defendants are placing the FIVE STAR Design Mark on
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`the upper right portion of tops, jackets, and pants, just above an arched term that includes a reference
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`to New York (namely, “DKNY”), precisely how Blue Marlin has been using its own FIVE STAR
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`Design Mark for years. As set forth above, Blue Marlin frequently uses its FIVE STAR Design Mark
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`in connection with tenns connoting New York, among other locales, with arched lettering. When
`constuners encounter Defendant DK.1's FIVE STAR Design Mark used on apparel adjacent to a
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`reference to New York in arched lettering, they will likely conclude that Defendants’ apparel is also
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`designed, manufactured, and sold by Blue Marlin. Defendants’ selection and placement of Defendant
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`DKI’s FIVE STAR mark in a manner identical to that of Blue Marlin cannot be a coincidence.
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`Defendants are clearly mimicking Blue Marlin’s distinctive style of vintage clothing, to the point that
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`they have copied the design and placement of the FIVE STAR Design Mark.
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`24. Both Blue Marlin and Defendant DKI’s FIVE STAR Design Marks are for use on
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`vintage and casual style apparel that will be sold in high-end retail establishments such as
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`Bloomingdale’s. The products are competitive and offered for sale through the same channels of
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`trade.
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`25. On information and belief, Defendants knew of Blue Marlin’s prior use and registration
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`of its FIVE STAR Design Mark and other trademarks using the FIVE STAR designation, and by
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`adopting and using Defendant DK.I’s FIVE STAR Design Mark, intended to and did induce, and
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`intend to and will induce, customers to purchase their products by trading off the extensive goodwill
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`built up by Blue Marlin.
`26. Defendants’ unauthorized use of a mark that is identical to Blue-Marlin’s FIVE STAR
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`Design Mark on directly competitive and related products constitutes an attempt to exploit for their
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`own benefit Blue Marlin’s popular and well-known FIVE STAR Trademarks. Defendants’ conduct
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`has caused and is likely to continue to cause confusion or mistake or deception, now and in the
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`|—|
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`COMPLAINT
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`sf- 1940698
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`8
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`

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`Case 3:05-cv—02376-MMC Document 1-1
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`Filed 06/10/2005
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`Page 9 of 27
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`fixture, as to the origin, source, and sponsorship of Defendants’ products bearing Defendant DKl’s
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`FIVE STAR Design Mark.
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`27. Defendants’ actions are likely to injure Blue Marlin’s business reputation.
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`28. Defendants’ unauthorized use of Blue MarIin’s FIVE STAR Design Mark will result in
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`lost sales opportunities for Blue Marlin due to a likelihood of confusion between Defendant DKJ’s
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`FIVE STAR Design Mark and Blue Marlin’s FIVE STAR Design Mark and other trademarks using
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`the FIVE STAR designation.
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`29. Defendants’ adoption of the FIVE STAR Design Mark for products that compete
`directly with Blue Marlin’s products will result in incalculable harm to Blue Marlin due to confusion
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`among the consuming public and injury to Blue Mar1in’s reputation.
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`30.
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`The various practices described herein threaten irreparable injury to Blue Mar[in’s
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`business and reputation with respect to its FIVE STAR Trademarks. The injury from lost sales
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`opportunities is particularly irreparable given the highly competitive world of retailing.
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`31. Defendants’ conduct is continuing and will continue unless restrained by the Court.
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`Unless Defendants are enjoined from engaging in the wrongful conduct described above, Blue Marlin
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`will suffer irreparable injury and further harm. Blue Marlin has no adequate remedy at law. In the
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`alternative, Blue Marlin has been damaged in an amount to be determined by the Court.
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`FIRST CLAIM FOR RELIEF
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`(TRADEMARK INFRINGEMENT - FEDERAL LAW)
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`32. Blue Marlin incorporates by reference paragraphs 1 through 31 above as though fully
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`set forth herein.
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`33.
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`The acts of Defendants described above are likely to cause confusion, or to cause
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`mistakes, or to deceive and therefore constitute infringement of Blue Marlin’s federally registered
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`trademarks under Section 32 of the Lanharn Act, 15 U.S.C. § 1114.
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`34- As alleged above, Blue Marlin has valid federal trademark registrations for the BLUE
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`MARLIN FIVE STAR VINTAGE, FIVE STAR VINTAGE and Design, and FIVE STAR Design
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`Marks.
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`COMPLAINT
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`sf-1940698
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`9
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`n--tr—-
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`[\)|--Ir-II—Ir--It-|—It-—Ii—nCNDOO-.IchUn.t>u.>|~.>
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`I0 I-I
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`Case 3:05-cv—02376-MMC Document 1-1
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`Filed 06/10/2005
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`Page 10 of 27
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`35. Defendants’ use of a FIVE STAR Design Mark is likely to cause COI1fl.lSlOl'l for
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`consumers as to the origin of Defendants’ products.
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`36. Defendants’ wrongful acts will permit Defendants to make substantial sales and profits
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`on the strength of Blue Marlin’s success, goodwill, and consumer recognition.
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`37. As a direct and proximate result of Defendants’ wrongful conduct, Blue Marlin will be
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`deprived of the value of, among other things, its FIVE STAR Trademarks as commercial assets.
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`38. As a direct and proxiinate result ofDefendants’ wrongfirl conduct, Blue Marlin has
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`been damagedby Defendants’ wrongful acts, and such damage will continue unless the Court enjoins
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`Defendants’ acts.
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`.
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`SECOND CLAIM FOR RELIEF
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`(UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN -— FEDERAL LAW)
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`39- Blue Marlin incorporates by reference paragraphs 1 through 38 above as though fiilly
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`set forth herein.
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`40.
`The acts of Defendants described above constitute unfair competition and false
`designation of origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1l2S(a).
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`41. As alleged above, Blue Marlin has used its FIVE STAR Trademarks to distinguish its
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`products from those offered by others. Those products have been distributed in the exact same
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`channels of trade in which Defendants do business.
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`42- Defendants’ use of a FIVE STAR Design Mark is likely to cause confusion for
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`consumers as to the origin of Defendants’ products.
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`43.
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`In addition, Defendants’ use of Defendant DKI’s FIVE STAR Design Mark under the
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`circumstances constitutes a false designation oforigin ofproducts and services.
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`44. As a direct and proximate result of Defendants’ wrongfitl conduct, Blue Marlin has
`been damaged by Defendants’ wrongful acts, and such damage will continue unless the Court enjoins
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`Defendants’ acts.
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`COMPLAINT
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`sf-l 940698
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`10
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`Case 3:05-cv—02376-MMC Document 1-1
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`Filed 06/10/2005
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`Page 11 of 27
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`THIRD CLAIM FOR RELIEF
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`(UNFAIR BUSINESS PRACTICES — CALIFORNIA LAW)
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`45. Blue Marlin incorporates by reference paragraphs 1 through 44 above as though fully
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`set forth herein.
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`46.
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`The acts of Defendants described above are likely to mislead the general public and
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`therefore constitute unfair and fraudulent business practices and unfair, deceptive, untrue, and
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`misleading advertising in violation ofCalifornia Business & Professions Code §§ 17200, et seq.
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`47.
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`'I'he unfair and fraudulent business practices and deceptive and untrue advertising of
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`Defendants described above present a continuing threat to members of the public in that Defendants
`intend to promote and advertise their sale of apparel by wrongfully trading on the name and goodwill
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`of Blue Marlin’s FIVE STAR Trademarks.
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`48. As a direct and proximate result of these acts, Defendants will receive substantial sales
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`and profits generated fi'om the strength of Blue Marlin’s' successes, goodwill, and consumer
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`recognition.
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`49. As a direct and proximate result of Defendants’ wrongful conduct, Blue Marlin has
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`been injured by Defendants’ wrongfiil acts, and such harm will continue unless the Court enjoins
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`Defendants’ acts. Blue Marlin has no adequate remedy at law for Defendants‘ continuing violation
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`of Blue Marlin’s rights.
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`FOURTH CLAIM FOR RELIEF
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`(DECEPTIVE, FALSE, AND MISLEADING ADVERTISING — CALIFORNIA LAW)
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`50. Blue Marlin incorporates by reference paragraphs 1 through 49 above as though fully
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`set forth herein.
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`5}.
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`The acts of Defendants described above constitute untrue and misleading advertising as
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`defined by California Business & Professions Code § 17500, et seq.
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`52.
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`The acts of untrue and misleading advertising by Defendants described above present a
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`continuing threat to members of the public in that Defendants will misrepresent the source of their
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`apparel .
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`COMPLAINT
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`sf-1940698
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`l I
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`Case 3:O5—cv-02376-MMC. Document 1-1
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`Filed 06/10/2005
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`Page 12 of 27
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`53. Defendants’ false and misleading advertising will permit Defendants to make
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`substantial sales and profits on the strength of Blue Marlin’s success, goodwill, and consumer
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`recognition.
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`54. As a direct and proximate result of Defendants’ wrongful conduct, Blue Marlin has
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`been damaged by Defendants’ wrongful acts, and such damage will continue unless the Court enjoins
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`Defendants’ wrongfiil acts.
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`FIFTH CLAIM FOR RELIEF
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`(TRADEMARK INFRINGEMENT — COMMON LAW)
`55. Blue Marlin incorporates by reference paragraphs 1 through 54 above as though fully
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`set forth herein.
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`56.
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`In addition to the rights under the Lanham Act and state statutory law, set forth above,
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`Blue Marlin also has valid and existing common law rights with respect to its FIVE STAR
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`Trademarks.
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`57.
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`The acts of Defendants described above constitute trademark infringement of Blue
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`Marlin’s FIVE STAR Trademarks in violation of Blue Marlin’s common law rights.
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`58. Defendants’