throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1120204
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`ESTTA Tracking number:
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`Filing date:
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`03/12/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92076329
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`Thursday LLC
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`THURSDAY LLC
`325 COLUMBIA TURNPIKE, SUITE 108
`C/O PIEMONTE & LIEBHAUSER, LLC
`FLORHAM PARK, NJ 07932-1220
`UNITED STATES
`No email provided.
`No phone number provided.
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`Motion to Suspend for Civil Action
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`Peter Nussbaum
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`pnussbaum@csglaw.com, ajremore@csglaw.com, pbrueckner@csglaw.com,
`trademarks@csglaw.com, tmdocketing@csglaw.com, ralph@kranesmith.com
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`/Peter Nussbaum/
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`03/12/2021
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`Thursday Motion to Suspend.pdf(109181 bytes )
`Exhibit A.pdf(5323327 bytes )
`Exhibit B.pdf(5841791 bytes )
`Exhibit C_Part1.pdf(4863972 bytes )
`Exhibit C_Part2.pdf(1747539 bytes )
`Exhibit D_Part1.pdf(5358682 bytes )
`Exhibit D_Part2.pdf(4430628 bytes )
`Exhibit D_Part3.pdf(2991642 bytes )
`Exhibit D_Part4.pdf(4823181 bytes )
`Exhibit D_Part5.pdf(795272 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Cancellation No. 92076329
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`In the matter of Registration Nos. 2,482,453, 2,763,676, 2,758,356 and 2,761,157
`_________________________________
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`DNVB Inc. dba Thursday Boot Co.
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`Petitioner,
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`Thursday LLC
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`Registrant.
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`________________________________ :
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`THURSDAY LLC’S MOTION TO SUSPEND
`PENDING DISPOSITION OF CIVIL ACTION
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`Registrant Thursday LLC1 (“Thursday”) hereby moves the Trademark Trial and
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`Appeal Board (the “Board”) for an order in accordance with 37 C.F.R. § 2.117
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`suspending the instant Cancellation pending disposition of Civil Action No. 1:20-cv-
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`09142-AKH (the “Civil Action”) that Thursday filed against Petitioner DNVB Inc. dba
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`Thursday Boot Co. (“DNVB”) in the United States District Court for the Southern District
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`of New York.
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`The
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`instant Cancellation Proceeding seeks
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`to cancel Registration Nos.
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`2,482,453, 2,763,676, 2,758,356 and 2,761,157 owned by Thursday for the mark
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`THURSDAY in Classes 9, 16, 25, and 41 (hereinafter collectively the “THURSDAY
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`Marks”) on the grounds of abandonment and fraud. DNVB is the owner of Trademark
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`1 Thursday recorded a nunc pro tunc assignment with the USPTO on February 2, 2021 at Reel/Frame
`7177/0767 reflecting the transfer of the Thursday Marks from Thursday LLC, a New Jersey limited liability
`company, to Thursday LLC, a Delaware limited liability company. After the nunc pro tunc assignment was
`recorded, it came to Thursday’s attention that there were clerical errors in the February 2, 2021 nunc pro
`tunc assignment. Thursday promptly executed a corrective assignment on February 9, 2021 and recorded
`it with the USPTO on February 10, 2021. The owner and registrant of the Thursday Marks at issue in this
`cancellation proceeding is Thursday LLC, a Delaware limited liability company.
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`1
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`Application Serial Nos. 88/568,828, 88/568,838, 88/976,546 and 88/976,547 in Classes
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`18 and 25 (hereinafter collectively the “THURSDAY BOOT CO. Marks”). On March 16,
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`2020, the USPTO issued final refusals to register the THURSDAY BOOT CO. Marks
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`“because of a likelihood of confusion” with Thursday’s Registration for the mark
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`THURSDAY, Registration No. 2,763,676 in Class 25. DNVB subsequently abandoned
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`Application Serial No. 88/568,838 on September 29, 2020, the same day that the
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`USPTO denied DNVB’s Request for Reconsideration. The USPTO again confirmed its
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`refusal to register the three remaining THURSDAY BOOT CO. Marks based on their
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`likelihood of confusion with Plaintiff’s THURSDAY Mark, Registration No. 2,763,676 on
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`October 7, 2020. Appeals are currently pending.
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`DNVB requested that Thursday consent to its registration of the THURSDAY
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`BOOT CO. Marks. Thursday, after analyzing DNVB’s use of the THURSDAY BOOT
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`CO. Marks as well as its advertising, marketing and promotional materials, confirmed
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`that the THURSDAY BOOT CO. Marks have caused and are likely to continue to cause
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`confusion between the parties’ goods and refused to consent to DNVB’s request.
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`Thursday sued DNVB for its infringement of the THURSDAY Marks under Lanham Act
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`§§ 32 and 1125(a)(1)(A), New York General Business Law Article 24 § 360, and New
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`York common law as well as unfair competition under New York common law and
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`seeking cancellation of DNVB’s Registrations for the marks THURSDAY EVERDAY,
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`Registration Nos. 6,001,893 and 6,001,895. A true and correct copy of the Complaint is
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`attached hereto as Exhibit A.
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`In the Civil Action, DNVB included allegations of abandonment and fraud as
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`affirmative defenses and counterclaims in its Answer. A true and correct copy of
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`2
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`DNVB’s Answer is attached hereto as Exhibit B. DNVB filed the instant Cancellation
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`proceeding on January 30, 2021. Thursday filed its First Amendment Complaint on
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`February 1, 2021, alleging that DNVB infringed the THURSDAY Marks pursuant to
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`Lanham Act §§ 32 and 1125(a)(1)(A), New York General Business Law Article 24 §
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`360, and New York common law as well as unfair competition under New York common
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`law and seeking cancellation of DNVB’s Registrations for the marks THURSDAY
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`EVERDAY, Registration Nos. 6,001,893 and 6,001,895. A true and correct copy of the
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`First Amended Complaint is attached hereto as Exhibit C. DNVB, instead of filing an
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`answer to the First Amended Complaint, filed a Motion to Dismiss on February 17,
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`2021, challenging Thursday’s ownership of the THURSDAY Marks and the validity of
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`the THURSDAY Marks. A copy of DNVB’s Motion to Dismiss is attached hereto as
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`Exhibit D. Thursday anticipates that DNVB will again allege abandonment and fraud as
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`affirmative defenses and counterclaims in its Answer to the First Amendment
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`Complaint.
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` “Whenever it shall come to the attention of the Trademark Trial and Appeal
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`Board that a party or parties to a pending case are engaged in a civil action... which
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`may have a bearing on the case, proceedings before the Board may be suspended until
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`termination of the civil action.” 37 C.F.R. §2.117(a). As is the case here, where a civil
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`action involves "other matters outside Board jurisdiction and considers broader issues
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`beyond right to registration . . . judicial economy is usually served by suspension.”
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`T.B.M.P. § 510.02(a) (June 2020).
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`3
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`Because the final determination of the Civil Action will have a substantial bearing
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`on the issues before the Board in the instant opposition, Thursday submits that
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`suspension is appropriate and respectfully requests that the Board suspend the instant
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`proceeding.
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`Dated: March 12, 2021
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`Respectfully submitted,
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`THURSDAY LLC
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`By: s/ Peter E. Nussbaum
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`PETER E. NUSSBAUM
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`Chiesa Shahinian & Giantomasi PC
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`One Boland Drive
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`West Orange, New Jersey 07052
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`(973) 530-2025 Telephone
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`(973) 530-2225 Facsimile
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`pnussbaum@csglaw.com
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`Attorneys for Registrant Thursday LLC
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`By: s/ Ralph C.Loeb
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`Ralph C. Loeb
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`Krane & Smith, APC
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`16255 Ventura Boulevard, Suite 600
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`Encino, California 01436
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`(818) 382-4000 Telephone
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`(818) 382-4001 Facsimile
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`ralph@kranesmith.com
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`Attorneys for Registrant Thursday LLC
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`4
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`CERTIFICATE OF SERVICE
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`It is hereby certified that a true and correct copy of the foregoing Thursday LLC’s
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`Motion to Suspend Pending Civil Action was served via email on counsel for Petitioner
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`at
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`jbarks@beardandbarks.com,
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`rbeard@beardandbarks.com
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`and
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`tm@beardandbarks.com.
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`Dated: March 12, 2021
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`s/ Peter E. Nussbaum
`Peter E. Nussbaum
`CHIESA SHAHINIAN & GIANTOMASI PC
`Attorneys for Opposer Thursday LLC
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`5
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`EXHIBIT A
`EXHIBIT A
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`

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`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 1 of 22
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`Civil Action No.
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`UNITED STATES DISTRICT COURT OF
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`SOUTHERN DISTRICT OF NEW YORK
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`THURSDAY LLC,
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`Plaintiff,
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`V.
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`DNVB, INC. d/b/a THURSDAY BOOT
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`CO.,
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`Defendant.
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`
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`COMPLAINT AND JURY DEMAND
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`Plaintiff THURSDAY LLC (“Plaintiff”),
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`through its undersigned attorneys,
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`complains of Defendant DNVB, INC. d/b/a THURSDAY BOOT CO. (“Defendant”), as
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`follows:
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`Nature of the Action
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`1.
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`This is a civil action for trademark infringement, false advertising, false
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`designation of origin, and unfair competition arising under the Lanham Act of 1946, as
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`amended, 15 U.S.C. §§ 1051-1127 and the laws of the State of New York.
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`Jurisdiction and Venue
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`2.
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`The Court has federal jurisdiction over this matter pursuant to 15 U.S.C. §
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`1121 and 28 U.S.C. §§ 1331 and 1338(a) and (b) and supplemental jurisdiction over
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`Plaintiff’ s claims arising under state law pursuant to 28 U.S.C. § 1367.
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`3.
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`Venue in this District is proper under 28 U.S.C. § 1391(b) and (c).
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`1
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`COMPLAINT AND JURY DEMAND
`
`

`

`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 2 of 22
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`4.
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`The Court has personal jurisdiction over Defendant because Defendant’s
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`principal place of business is in this judicial district.
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`Parties
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`5.
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`Plaintiff is a limited liability company organized and existing under the laws
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`of New Jersey, with a principal place of business in the state of New Jersey. Plaintiff was
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`formed to do business for the band “Thursday” and is the owner of the band’s trademark
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`rights to the mark “THURSDAY”.
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`6.
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`Upon information and belief, Defendant is a limited liability company
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`organized and existing under the laws of the state of Delaware, with its principal place of
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`business in New York.
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`Substantive Allegations
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`“Thursday” The Band
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`7.
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`“Thursday” are a six-piece rock band who formed in 1997 in New
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`Brunswick, New Jersey. Over the last 23 years, Thursday have released six albums and
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`have routinely performed sold-out concerts across the United States, Europe, and Asia.
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`Thursday have been recognized as one of the architects of the American alternative “emo”
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`genre and have influenced numerous world-famous bands and musical artists.
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`Thursday’s Involvement with Clothing, Footwear, and Fashion
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`8.
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`In addition to their success and acclaim as a musical group, since at least as
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`early as December 1998, Thursday have continuously used their mark THURSDAY in
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`connection with the sale of clothing goods, such as:
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`2
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`COMPLAINT AND JURY DEMAND
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`

`

`THURSDAY
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`9.
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`In or about March 2020, Thursday responded to the COVID-19 pandemic by
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`turning its in-stock merchandise from their online store into medical fabric masks with
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`their marks to assist frontline medical workers and essential personnel with all proceeds
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`being used to make more masks:
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`THURSDAY,”
`N Em" AFN:- l'WA LS
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`Daily Face Cover
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`3
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`COMPLAINT AND JURY DEMAND
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`

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`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 4 of 22
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`Thursday received a great deal of publicity for their face mask efforts, including on the
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`BBC and in such publications as NJ.com, NME, and Rolling Stone, which stated in part:
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`5mm
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`APRILT. 2020 7:30AM ET
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`-W
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`m
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`HOME 3' HUSIC > MUSIC NEWS
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`Thursday ls Turning Old March into Masks for Fans and
`Healthoare Professionals
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`"If you Tau-3.:r one, then a minimum of two ‘faot or?“ masks [and even more when we scale} will he donated
`to one of the “WM area has pitals," hand says
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`10.
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`Thursday have also established themselves as an important “influencer” in
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`the fashion and footwear space. In that regard, Thursday have been and continue to be a
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`sought-after collaborator within the fashion and footwear industry. The following are
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`representative examples of Thursday’s influence in the fashion and footwear spaces:
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`a.
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`Since 2001, Thursday have endorsed the VANS Footwear brand and
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`have been a headlining artist on numerous VANS Warped Tours throughout the years:
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`VANS I H1 1» CSLJAV
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`#1
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`4
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`COMPLAINT AND JURY DEMAND
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`

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`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 5 of 22
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`b.
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`Thursday and VANS also collaborated with Fender (the largest guitar
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`manufacturer in the world) to make a custom Thursday vs. Vans Off The Wall “footwear”
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`based guitar which has become a highly collectible item:
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`THURSDAY
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`0.
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`Thursday also participated in an advertising campaign with the ethical
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`shoe company MacBeth where the band’s name and image were featured on boxes of shoes
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`that were sold and distributed.
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`(1.
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`The popular shoe brand Converse has also recognized Thursday as an
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`important representative of their brand and have supplied Thursday with Converse
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`products.
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`e.
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`Thursday has collaborated with Gerard Way (of the highly successfirl
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`musical group My Chemical Romance) on the development of clothing items as well as its
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`SUPERDOVE character and logo that routinely appears on Thursday’s clothing items:
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`5
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`COMPLAINT AND JURY DEMAND
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`

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`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 6 of 22
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`Thursday further collaborated with the world-famous artist Shepard
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`Fairey to create the Thursday “Peace Dove” design that has also been routinely used on
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`Thursday’s clothing items:
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`6
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`COMPLAINT AND JURY DEMAND
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`

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`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 7 of 22
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`g.
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`Several well-known fashion labels have credited Thursday as having
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`been highly influential on the fashion label’s esthetic, including Vetements and Ovadia &
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`Sons as documented in publications such as Vogue and Highsnobiety:
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`For New York Fashion Week Men's, New York-
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`based brand Ovadia ll Sons showcases an
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`impressive FW18 collection riddled with western
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`influences merged with ounk~rockthemes
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`The Ovadia twins, Ariel and Shimon, show their
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`love for music, specifically latter-clay punk bands
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`like—My Chemical Romance, Underoath,
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`Thursday, to name a few. They also pay homage
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`h.
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`Individual members of Thursday have been endorsed by Dr. Martens,
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`perhaps the most famous boot company in the world.
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`i.
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`Moreover, Thursday’s lead singer Geoff Rickly is a well-known
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`fashion influencer in his own right and both he and the band have been profiled in such
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`publications as GQ, Brooklyn Magazine, Buzzfeed and many others.
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`Plaintiff’s Trademarks for the Mark “THURSDAY”
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`1 1.
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`Plaintiff is the owner of the band Thursday’s trademark rights under common
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`law and federal law to the mark THURSDAY, including the following Federal Trademark
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`Registrations: (a) THURSDAY, U.S. Registration No. 2,761,157 in International Class 9
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`including for “Musical sound recordings; audio-visual recordings featuring music. ..’; (b)
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`THURSDAY, U.S. Registration No. 2,758,356 in International Class 16 for “posters, post
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`cards, record cards, blank cards, stickers, bumper stickers and printed paper signs”; (c)
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`7
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`COMPLAINT AND JURY DEMAND
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`

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`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 8 of 22
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`THURSDAY, U.S. Registration No. 2,763,676 for “Clothing, namely, shirts, t-shirts, tank
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`tops, jerseys, jackets and sweatshirts” in International Class 25; and (d) THURSDAY, U.S.
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`Registration No. 2,482,453 in International Class 41 for “entertainment services, namely
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`live musical performances by a musical group, production of music recordings, shows and
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`videos featuring musical performances, shows and Videos featuring musical performances,
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`music shows and events before a live audience, which may be broadcast live or recorded
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`for late broadcast” (collectively, the “THURSDAY Marks”).
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`Defendant’s Business and Trademark Applications
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`12.
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`Upon information and belief, Defendant sells men’s and women’s boots,
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`shoes, belts, and other clothing items.
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`13.
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`On or about August 6, 2019, Defendant filed trademark applications for
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`THURSDAY BOOT CO., Serial No. 88568828 for “leather bags and wallets” in
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`International Class 18; THURSDAY BOOT CO. w/Design, Serial No. 88568838 for
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`“Leather bags and wallets” in International Class 18 and “Jackets and Leather belts in
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`International Class 25; THURSDAY BOOT CO. in standard letters, Serial No. 88976546
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`for “footwear” in International Class 25; and THURSDAY BOOT CO. w/Design, Serial
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`No. 88976547 for “footwear” in International Class 25 (collectively referred to as the
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`“THURSDAY BOOT CO. Marks”).
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`14.
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`On March 16, 2020, after issuing multiple preliminary refusals, the United
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`States Patent and Trademark Office (“USPTO”) issued final refusals to register the
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`THURSDAY BOOT CO. Marks “because of a likelihood of confusion” with Plaintiff’ s
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`THURSDAY Mark, Registration No. 2,763,676 for “Clothing, namely, shirts, t-shirts,
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`8
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`COMPLAINT AND JURY DEMAND
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`

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`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 9 of 22
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`tank top, jerseys, jackets and sweatshirts in International Class 25. On September 16, 2020
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`Defendant requested reconsideration of the final refilsal to register the THURSDAY BOOT
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`CO. Marks. On September 29, 2020,
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`the USPTO denied Defendant’s request for
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`reconsideration as to the THURSDAY BOOT CO. Mark, Application No. 88568838 and
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`Defendant abandoned that trademark application on the same day. On October 7, 2020,
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`the USPTO confirmed its refusal to register the three remaining THURSDAY BOOT CO.
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`Marks based on their likelihood of confusion with Plaintiff’s THURSDAY Mark
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`Registration No. 2,763,676. Defendant has filed appeals from the USPTO’s final refusal
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`to register the three remaining THURSDAY BOOT CO. MARKS.
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`Defendant’s Unlawful Activities
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`15. With full knowledge of Plaintiff’s registered trademarks for THURSDAY
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`and after being advised by the United States Patent and Trademark Office that its
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`THURSDAY BOOT CO. Marks were confusingly similar to Plaintiff’s THURSDAY
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`Mark in Class 25, Defendant has nevertheless persisted in using the THURSDAY BOOT
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`CO. Marks to identify its goods.
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`16.
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`Instead of ceasing its use of the THURSDAY BOOT CO. Marks, in or about
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`May 2020, Defendant requested that Plaintiff consent
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`to the registration of the
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`THURSDAY BOOT CO. Marks. After receipt of Defendant’s request, Plaintiff’s analysis
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`of Defendant’s use of the THURSDAY BOOT CO. Marks as well as its advertising,
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`marketing, and promotional activities confirmed that the THURSDAY BOOT CO. Marks
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`have caused and are likely to continue to cause confusion between Plaintiff’s and
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`Defendant’s goods. Thus, Defendant’s use of the THURSDAY BOOT CO. Marks
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`9
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`COMPLAINT AND JURY DEMAND
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`

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`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 10 of 22
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`constitutes infringement of Plaintiff’s THURSDAY Marks.
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`17.
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`Plaintiff further discovered that Defendant had engaged in infringement of
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`Plaintiff’s THURSDAY Marks by using the THURSDAY Marks without the additional
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`word “Boot” and abbreviation “Co.” including the following:
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`a.
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`Defendant has made widespread use of the mark THURSDAY by
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`itself in connection with the sale of clothing goods and footwear.
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`Indeed, Defendant has
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`been selling the same type of clothing that Plaintiff has sold for many years:
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`THURSDAY BOOT COMPANY
`THURSDAY
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`.4
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`THURSDAY
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`<
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`I C W (
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`I)
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`U > -
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`1 0
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`COMPLAINT AND JURY DEMAND
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`

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`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 11 of 22
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`b.
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`Defendant
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`recently launched a
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`sneaker
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`line marketed as
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`a
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`“collaboration” between Defendant and Nothing New (an entity that was founded by Nolan
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`Walsh, the CEO and creative director of Defendant). This sneaker line utilizes the mark
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`THURSDAY by itself as well as the confusingly similar marks “THURSDAY x
`
`NOTHING NEW” and “NOTHING NEW ON THURSDAY”:
`
`
`
`1 1
`
`COMPLAINT AND JURY DEMAND
`
`

`

`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 12 of 22
`
`c.
`
`Defendant further infringed Plaintiff’ s THURSDAY Marks by selling
`
`footwear and wallets with the confusingly similar mark “THURSDAY EVERYDAY”:
`
`
`
`(1.
`
`Defendant further infringed Plaintiff’ s THURSDAY Marks when,
`
`after Plaintiff had started producing face masks for the COVID-19 pandemic, Defendant
`
`began producing COVID-19 masks under a very similar charitable auspices and began
`
`marketing its face masks as “Thursday Face Masks.” These actions fithher suggest that
`
`Defendant’s true motivation is to trade upon the goodwill already established by Plaintiff
`
`and is, especially in this instance, in poor taste.
`
`e.
`
`Defendant also uses the mark THURSDAY by itself in its print and
`
`12
`
`COMPLAINT AND JURY DEMAND
`
`

`

`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 13 of 22
`
`online advertising, marketing, and promotional materials. In fact, Defendant refers to itself
`
`as “Thursday” or “Team Thursday” far more often than it refers to itself by the
`
`THURSDAY BOOT CO. Marks:
`
`At Thursday, we? share a strong sense of criyr'nn'rltment to the world arOLmCl us and continually look for ways to
`
`Téarn Thursday l3 bigger than Cir—ioairifilers, eqairty—l‘raldirig Erripleyéeg, Or
`
`rvarurfacturing partner-5. Vu’hErn we thrnk about Tean‘ Thursday we tfimk about all
`of the people "who dedicate their ivE-s t0 rTraklr’rg each Of the r'mater'lals that go
`
`rnIG our products, we think about the local {on‘rrflpnitres in whrc'h those rr'raterials
`
`are made; and of course, we thmk about you, our ar‘naerfig custar‘rier's! \Ne are:
`
`honored to have fit; Opportunity t0 Husker productg out; love and to rhalce 9
`
`positive Uri-pact in thrik lives of everyorre in the Team Thursday tamily, Frczrh all of
`
`us_. thank you?
`
`f.
`
`Defendant has further infringed Plaintiff’ s THURSDAY Marks by
`
`shipping its products in boxes that bear the word “Thursday” by itself.
`
`18.
`
`Defendant’s sale of clothing and footwear in connection with the use of the
`
`THURSDAY BOOT CO. Marks and through the use of the THURSDAY Marks or
`
`confusingly similar variations thereof are hereafter collectively referred to as the
`
`“Infringing Brand”.
`
`w
`
`Trademark Infringement Under the Lanham Act § 32, 15 U.S.C. § 1114
`
`19.
`
`To the extent applicable, Plaintiff incorporates the allegations hereinabove
`
`as though fully set forth herein.
`
`20.
`
`The aforesaid acts of Defendant constitute willful
`
`infringement of the
`
`THURSDAY Marks, in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1 1 14(1).
`
`21.
`
`Defendant’s unauthorized use of the Infringing Brand is likely to cause
`
`1 3
`
`COMPLAINT AND JURY DEMAND
`
`

`

`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 14 of 22
`
`confusion, to cause mistake, and to deceive customers and potential customers as to the
`
`source or origin of Defendant’s goods, and to cause them to mistakenly believe that
`
`Defendant’s goods are Plaintiff’s goods, or are otherwise affiliated, connected, or
`
`associated with Plaintiff in violation of Section 32(1) of the Lanham Act, 15 U.S.C. §
`
`1 1 14(1).
`
`22.
`
`By reason of the acts of Defendant alleged herein, Plaintiff has suffered, is
`
`suffering and will continue to suffer damages and irreparable injury. Unless Defendant is
`
`restrained from continuing its wrongful acts, the damage to Plaintiff will increase. Plaintiff
`
`has no adequate remedy at law.
`
`w
`
`Violation of Lanham Act, 15 U.S.C. §1125(a)(1)(A) Against Defendant
`
`23.
`
`To the extent applicable, Plaintiff incorporates the allegations hereinabove
`
`as though fully set forth herein.
`
`24.
`
`Defendant’s acts as alleged above constitute a false designation of origin and
`
`unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a).
`
`25.
`
`Defendant’s unauthorized use of the Infringing Brand constitutes unfair
`
`competition and the use of a false designation of origin that
`
`is likely to cause confusion,
`
`or to cause mistake, or to deceive as to the affiliation, connection or association of
`
`Defendant with Plaintiff or as to the origin, sponsorship or approval of Defendant’s goods,
`
`services and/or activities by Defendant in violation of Section 43(a) of the Lanham Act,
`
`15 U.S.C. § 1125(a).
`
`26.
`
`By reason of the acts of Defendant alleged herein, Plaintiff has suffered, is
`
`14
`
`COMPLAINT AND JURY DEMAND
`
`

`

`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 15 of 22
`
`suffering and will continue to suffer damages and irreparable injury. Unless Defendant is
`
`restrained fi'om continuing its wrongful acts, the damage to Plaintiff will increase. Plaintiff
`
`has no adequate remedy at law.
`
`w
`
`Violation of New York General Business Law Article 24 § 360 Against Defendant
`
`27.
`
`To the extent applicable, Plaintiff incorporates the allegations hereinabove
`
`as though fully set forth herein.
`
`28. Without Plaintiff’s authorization or consent, and having lmowledge of
`
`Plaintiff’s, prior rights in the THURSDAY Marks, Defendant manufactured, distributed,
`
`promoted, offered for sale, and sold to the public goods in connection with the Infringing
`
`Brand.
`
`29.
`
`Defendant’s unauthorized offer to sell, sale, distribution, and advertisement
`
`of goods bearing the THURSDAY Marks violates Section 3 60-L of the New York General
`
`Business Law.
`
`30.
`
`The THURSDAY Marks are entitled to protection under both federal and
`
`New York common law.
`
`31.
`
`Defendant’s unauthorized use of the Infringing Brand is likely to confuse and
`
`deceive consumers as to Plaintiff’s sponsorship or approval of Defendant’s goods by
`
`creating the false and misleading impression that the Infringing Brands are authorized,
`
`licensed or otherwise associated with Plaintiff.
`
`32.
`
`Defendants’ unauthorized use of the THURSDAY Marks, unless enjoined,
`
`will cause substantial and irreparable injury to Plaintiff for which Plaintiff has no adequate
`
`1 5
`
`COMPLAINT AND JURY DEMAND
`
`

`

`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 16 of 22
`
`remedy at law, including at least substantial and irreparable injury to the goodwill and
`
`reputation associated with the THURSDAY Marks.
`
`33.
`
`Defendant’s unauthorized use of the Infringing Brand has diluted and
`
`damaged the distinctiveness of Plaintiff’s THURSDAY Marks and has caused, and unless
`
`enjoined, will continue to cause substantial and irreparable injury to Plaintiff for which it
`
`has no adequate remedy at law, including substantial and irreparable injury to the goodwill
`
`and reputation associated with the THURSDAY Marks.
`
`COUNT IV
`
`Trademark Infringement in Violation of New York Common Law Against
`
`Defendant
`
`34.
`
`To the extent applicable, Plaintiff incorporates the allegations hereinabove
`
`as though fully set forth herein.
`
`35.
`
`Defendant’s offer to sell, sale, distribution, and advertisement of goods under
`
`the Infringing Brand constitutes common law trademark infringement.
`
`36.
`
`The THURSDAY Marks include federally registered trademarks as well as
`
`unregistered marks, and are used in New York and elsewhere extensively, and are entitled
`
`to protection under both federal law and New York common law.
`
`37.
`
`Defendant’s unauthorized use of the Infringing Brand is likely to cause
`
`confusion and deceive consumers as to the origin, sponsorship, or approval of Defendant’s
`
`products by creating the false and misleading impression that Defendant’s products are
`
`manufactured by, authorized by, or otherwise associated with Plaintiff.
`
`38.
`
`Defendant’s unauthorized use of the Infringing Brand has caused, and unless
`
`1 6
`
`COMPLAINT AND JURY DEMAND
`
`

`

`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 17 of 22
`
`enjoined, will continue to cause substantial and irreparable injury to Plaintiff for which it
`
`has no adequate remedy at law, including substantial and irreparable injury to the goodwill
`
`and reputation associated with the THURSDAY Marks.
`
`39.
`
`Upon information and belief, Defendant’s infringement of the THURSDAY
`
`Marks is willful and reflects Defendant’s intent to trade on the goodwill associated with
`
`the THURSDAY Marks.
`
`40.
`
`Upon information and belief, Defendants’ infringement of the THURSDAY
`
`Marks has been deliberate and calculated and resulting in damage to Plaintiff.
`
`41.
`
`Defendant’s acts constitute trademark infringement
`
`in violation of the
`
`common law of the State of New York.
`
`COUNT V
`
`Unfair Competition in Violation of New York Common Law Against Defendant
`
`42.
`
`To the extent applicable, Plaintiff incorporates the allegations hereinabove
`
`as though fillly set forth herein.
`
`43. With full knowledge of Plaintiff’s rights to THURSDAY Marks, Defendant
`
`intended to and did trade on the goodwill and strong brand recognition associated with the
`
`THURSDAY Marks by manufacturing, distributing, promoting and selling products using
`
`the THURSDAY Marks or its confusingly similar THURSDAY BOOT CO. Marks in
`
`connection with the Infringing Brand.
`
`44.
`
`Defendant’s acts as alleged herein are likely to cause confusion, mistake, and
`
`deception to consumers as to the affiliation, connection, or association of Defendant with
`
`Plaintiff, and as to the origin, sponsorship, or approval of Defendant’s products under the
`
`1 7
`
`COMPLAINT AND JURY DEMAND
`
`

`

`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 18 of 22
`
`Infringing Brand, all to the detriment and damage of Plaintiff and to the unjust enrichment
`
`of Defendant.
`
`45.
`
`Defendant’s unauthorized use of the Infringing Brand, unless enjoined, will
`
`cause substantial and irreparable injury to Plaintiff for which it has no adequate remedy at
`
`law, including at least substantial and irreparable injury to the goodwill and reputation
`
`associated with the THURSDAY Marks.
`
`w
`
`Cancellation of Trademark Registration Nos. 6,001,893 and 6,001,895
`
`46.
`
`To the extent applicable, Plaintiff incorporates the allegations hereinabove
`
`as though fully set forth herein.
`
`47.
`
`Plaintiff seeks cancellation of Defendant’s Trademark Registration Nos.
`
`6,001,893 and 6,001,895 for the mark “THURSDAY EVERYDAY”.
`
`48.
`
`This Court “may order the cancellation of registrations, in whole or in part
`
`pursuant to 15 U.S.C. § 1119.
`
`49.
`
`Plaintiff has used the THURSDAY Marks long before Defendant’s use of
`
`the mark THURSDAY EVERYDAY. Thus, Plaintiff has priority of use of the
`
`THURSDAY Marks.
`
`50.
`
`Defendant’s THURSDAY EVERYDAY mark is confusingly similar to
`
`Plaintiff’ s THURSDAY Marks, and Defendant’s mark is likely to cause confusion, to
`
`cause mistake, and/or deceive members of the public concerning an affiliation, connection,
`
`association, or sponsorship relationship with Plaintiff’s goods provided under the
`
`THURSDAY Marks.
`
`1 8
`
`COMPLAINT AND JURY DEMAND
`
`

`

`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 19 of 22
`
`51.
`
`For the reasons set forth above, Plaintiff is being damaged by the continued
`
`registration of the mark THURSDAY EVERYDAY by Defendant.
`
`52.
`
`Accordingly, the Court should cancel U.S. Trademark Registration Nos.
`
`6,001,893 and 6,001,895.
`
`Prayer for Relief
`
`WHEREFORE, Plaintiff prays for judgment against Defendant as follows:
`
`1.
`
`Defendant, its officers, agents, servants, employees and attorneys, and those
`
`persons in active concert or participation with them, be preliminarily and permanently
`
`enjoined from:
`
`a.
`
`Using the THURSDAY Marks or any of them, or any colorable
`
`imitation thereof, or any other name or mark likely to cause confiision, mistake, or
`
`deception, in connection with the sale, offering for sale, distribution, manufacturing,
`
`advertising, or promotion of their goods or services;
`
`b.
`
`Holding themselves out as Plaintiff, engaging in false and/or
`
`misleading advertising and ordering Defendant to retract and correct its false and/or
`
`misleading advertising;
`
`0.
`
`Using any false designation of origin or false description that can, or
`
`is likely to, lead the trade or public, or individual members thereof, to believe that any
`
`product or service manufactured, distributed, sold, offered for sale, or advertised by
`
`Defendant are in any manner associated or connected with Plaintiff or
`
`is sold,
`
`manufactured, licensed, sponsored, or approved or authorized by Plaintiff;
`
`d.
`
`Engaging in any other activity constituting an infringement of
`
`1 9
`
`COMPLAINT AND JURY DEMAND
`
`

`

`Case 1:20-cv-09142-AKH Document 1 Filed 10/30/20 Page 20 of 22
`
`Plaintiff’s trademark rights or otherwise unfairly competing with Plaintiff;
`
`e.
`
`Engaging in any other activity that dilutes the distinctive quality of
`
`the THURSDAY Marks by, among other things, using the THURSDAY Marks in
`
`connection with the sale, offering for sale, distribution, manufacturing, advertising, or
`
`promotion of its goods or services; and
`
`2.
`
`Defendant be directed to deliver to Plaintiff all products bearing the
`
`THURSDAY Marks and any copy, simulation, variati

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