Case 1:20-cv-02949 Document 1 Filed 04/10/20 Page 1 of 26
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
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`3M COMPANY,
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`Plaintiff,
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`-against-
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`Case No.:
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`Jury Trial Demand
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`PERFORMANCE SUPPLY, LLC,
`Defendant.
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`COMPLAINT
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`Plaintiff 3M Company (“Plaintiff” or “3M”), by and through its undersigned attorneys, as
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`and for its Complaint against Defendant Performance Supply, LLC (“Defendant”), hereby alleges
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`as follows based on knowledge of its own actions, and on information and belief as to all other
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`matters:
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`NATURE OF THE ACTION
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`1.
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`This lawsuit concerns Defendant’s use of Plaintiff’s famous “3M” trademarks to
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`perpetrate a false and deceptive price-gouging scheme on unwitting consumers, including agencies
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`of government, during the global COVID-19 pandemic.
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`2.
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`Throughout its history, 3M has been providing state-of-art, industry-leading
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`scientific and medical products to consumers throughout the world under its famous 3M marks.
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`Based on this longstanding, continuous use, consumers associate the 3M marks uniquely with 3M.
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`Now, more than ever, consumers are also relying on the famous 3M marks to indicate that the
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`products offered thereunder are of the same superior quality that consumers have come to expect
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`over the past century. This is especially true with respect to 3M’s numerous industry-leading
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`healthcare products and personal protective equipment (“PPE”), including Plaintiff’s 3M-brand
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`N95 respirators.
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`3.
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`Healthcare professionals and other first responders are heroically placing their
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`health and safety on the line to battle COVID-19. To assist in the battle against COVID-19, 3M
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`is supplying healthcare workers and other first responders with 3M-brand N95 respirators. For
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`example, in the last week of March 2020, 3M supplied healthcare workers throughout the United
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`States with 10 million of its 3M-brand N95 respirators. 3M also recently announced that it will
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`import 166.5 million of its 3M-brand N95 respirators into the United States in the next three
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`months to supplement its US production, and has invested the capital and resources necessary to
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`double its current annual global production of 1.1 billion respirators. In response to the COVID-
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`19 outbreak and surge in need for N95 respirators, 3M has doubled its global output rate to nearly
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`100 million respirators per month, and it expects to produce around 50 million respirators per
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`month in the United States by June 2020.
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`4.
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`The demand for 3M-branded respirators has grown exponentially in response to the
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`pandemic, and 3M has been committed to seeking to meet this demand while keeping its respirators
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`priced fairly. 3M has not increased the prices that it charges for 3M respirators as a result of the
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`COVID-19 outbreak.
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`5.
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`Unfortunately, any number of wrongdoers seek to exploit the current public health
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`emergency and prey on innocent parties through a variety of scams involving 3M N95 respirators
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`and other products in high demand. These scams include unlawful price-gouging, fake offers,
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`counterfeiting, and other unfair and deceptive practices—all of which undercut the integrity of the
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`marketplace and constitute an ongoing threat to public health and safety.
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`6.
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`In response to fraudulent activity, price-gouging and counterfeiting related to N95
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`respirator masks that has spiked in the marketplace in response to the pandemic, 3M is taking an
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`active role in combating these activities. 3M’s actions include working with law enforcement
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`2
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`Case 1:20-cv-02949 Document 1 Filed 04/10/20 Page 3 of 26
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`authorities around the world, including the U.S. Attorney General, state Attorneys General and
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`local authorities, and creating a “3M COVID-19 Fraud hotline” for the United States and Canada
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`that end users and purchasers of 3M products can call for information to help detect fraud and
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`avoid counterfeit products. 3M is also publishing information on its website to help inform the
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`purchasing public about 3M’s prices and products so that they can avoid fraud. Further
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`information about 3M’s efforts is set forth in the 3M press release and publication attached hereto
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`as Exhibits 1 and 2. This Complaint is another part of these efforts.
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`7.
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`Despite 3M’s extensive efforts during COVID-19, unsavory characters continue
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`their quests to take advantage of healthcare workers, first responders, and others in a time of need
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`and trade off the fame of the 3M brand and marks. Defendant is a prime example of this unlawful
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`behavior.
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`8.
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`On or about March 30, 2020, Defendant sent a Formal Quote to New York City’s
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`Office of Citywide Procurement, offering to sell millions of Plaintiff’s 3M-brand N95 respirator
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`masks at a grossly inflated aggregate price of approximately $45 million. Defendant is not an
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`authorized distributor of any of Plaintiff’s products and has no rights to use Plaintiff’s famous 3M
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`marks. Nonetheless, to confuse and deceive New York City officials into believing that Defendant
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`was an authorized distributor of Plaintiff’s products, Defendant reproduced the famous 3M marks
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`throughout the Formal Quote, and attached to it Technical Specification Sheets that prominently
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`feature Plaintiff’s famous 3M marks. The Formal Quote itself also sought to confuse its recipient
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`by referring to the St. Paul, Minnesota headquarters of 3M as opposed to Defendant’s New Jersey
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`headquarters, as well as repeatedly referring to the offer’s acceptance being at 3M’s discretion—
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`implying, falsely, that the Formal Quote came from 3M. Defendant’s scheme worked. Indeed, as
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`part of the Citywide Procurement Office’s quality-assurance measures, officials prepared a Bid
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`3
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`Evaluation Request, wherein they mistakenly identified Defendant as a “vendor” of 3M-brand N95
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`respirators—twice. Compounding Defendant’s bad acts, the prices at which it offered to sell 3M-
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`brand N95 respirators to New York City’s Procurement Office were 500%-600% above 3M’s list
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`price. This offer constituted extreme price-gouging by any measure, including under New York
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`State’s statutory provision (NEW YORK GENERAL BUSINESS LAW § 396-r). Not only does such
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`price-gouging further strain the limited resources available to combat COVID-19, but such conduct
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`justifiably has caused public outrage, which threatens imminent and irreparable harm to 3M’s
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`brand as Defendant and similar pandemic profiteers promote an improper association between
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`3M’s marks and exploitative pricing behavior.
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`9.
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`3M does not – and will not – tolerate individuals or entities deceptively trading off
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`the fame and goodwill of the 3M brand and marks for personal gain. This is particularly true
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`against those who seek to exploit the surge in demand for 3M-brand products during the COVID-
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`19 global pandemic, which already has claimed tens of thousands of lives worldwide and more
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`than 5,000 lives in New York State alone.
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`10.
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`Accordingly, to further protect governmental actors and consumers from confusion
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`and mistake, to reduce the amount of time and energy that government officials are forced to waste
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`interacting with such schemes, as well as to forestall any further diminution to the 3M brand and
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`marks’ reputation, fame, and goodwill, Plaintiff brings this lawsuit against Defendant for federal
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`and state trademark infringement, unfair competition, false association, false endorsement, false
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`designation of origin, trademark dilution, false advertising, and deceptive acts and practices.
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`Plaintiff also seeks preliminary and permanent injunctive relief. As described below, any
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`damages, costs, or fees recovered by Plaintiff will be donated to charitable COVID-19 relief
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`efforts.
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`4
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`Case 1:20-cv-02949 Document 1 Filed 04/10/20 Page 5 of 26
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`THE PARTIES
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`11.
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`Plaintiff 3M Company is a Delaware corporation, with a principal place of business
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`and corporate headquarters located at 3M Center, St. Paul, Minnesota 55144.
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`12.
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`On information and belief, Defendant Performance Supply, LLC is a New Jersey
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`limited liability company, with a principal place of business at 3 Westbrook Way, Manalapan,
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`New Jersey 07726.
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`JURISDICTION AND VENUE
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`13.
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`The claims for trademark infringement, unfair competition, false association, false
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`endorsement, false designation of origin, trademark dilution, and false advertising, respectively,
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`asserted in Counts I - IV, infra, arise under the Trademark Act of 1946 (as amended; the “Lanham
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`Act”), namely, 15 U.S.C. §§ 1051 et seq. Accordingly, this Court has original and subject-matter
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`jurisdiction over Counts I – IV pursuant to 28 U.S.C. §§ 1331, 1338(a), and 15 U.S.C § 1121(a).
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`14.
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`The claims for deceptive acts and practices, false advertising, dilution, trademark
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`infringement and unfair competition, respectively, asserted in Counts V - IX, infra, arise under
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`New York statutory and common law, and are so related to the federal claims asserted in Counts
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`I - IV, infra, that they form part of the same case or controversy. Accordingly, this Court has
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`supplemental jurisdiction over Counts V - IX pursuant to 28 U.S.C. §§ 1338(b) and 1367(a).
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`15.
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`Defendant has purposefully availed itself of the privilege of transacting business in
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`this District. Defendant has also committed and intentionally directed tortious acts towards
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`residents and governmental agencies in this District. For example, Defendant recently used
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`Plaintiff’s famous 3M marks as part of a price-gouging scheme to deceive New York City
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`officials located in this District into believing that Defendant was authorized by 3M to sell
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`millions of 3M-brand N95 respirator masks for an aggregate price of roughly $45 million—
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`5
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`several multiples of the 3M list price. 3M’s claims arise out of and relate to Defendant’s
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`transactions of business, and tortious acts committed in this District. Based on the foregoing, this
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`Court has long-arm jurisdiction over Defendant pursuant to CPLR NEW YORK CIVIL PRACTICE
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`LAW AND RULES § 302(a)(1)-(2), and FED. R. CIV. P. 4(k).
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`16.
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`A substantial part of the events giving rise to the claims asserted, infra, occurred in
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`this District. Therefore, venue is proper in this district pursuant to 28 U.S.C. § 1391(b)(2).
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`17.
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`Defendant is subject to personal jurisdiction in this District. Therefore, venue is
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`also proper in this District pursuant to 28 U.S.C. § 1391(b)(3).
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`FACTS COMMON TO ALL CLAIMS FOR RELIEF
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`I.
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`Plaintiff
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`A. 3M
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`18.
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`3M has grown from humble beginnings in 1902 as a small-scale mining venture in
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`Northern Minnesota to what it is today, namely: an industry-leading provider of scientific,
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`technical, and marketing innovations throughout the world. Today, 3M’s portfolio includes more
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`than 60,000 goods and services, ranging from household and school supplies, to industrial and
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`manufacturing materials, to medical supplies and equipment.
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`B. The 3M Brand
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`19.
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`3M offers its vast array of goods and services throughout the world under numerous
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`brands, including, for example: ACE; POST-IT; SCOTCH; NEXCARE; and more. 3M also uses
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`its famous “3M Science. Applied to Life” slogan in connection with the promotion of its goods
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`and services. Notwithstanding the widespread goodwill and resounding commercial success
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`enjoyed by these brands, 3M’s most famous and widely recognized brand is its eponymous “3M”
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`brand.
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`6
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`20.
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`The 3M brand is associated with products and materials for a wide variety of
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`medical devices, supplies, and PPE, including, for example: respirators; stethoscopes; medical
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`tapes; surgical gowns, blankets, and tape; bandages and other wound-care products; and more. As
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`such, 3M-branded products are highly visible throughout hospitals, nursing homes, and other care
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`facilities where patients, care providers, and procurement officers value and rely upon the high
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`quality and integrity associated with the 3M brand.
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`C. The Famous “3M” Marks
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`21.
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`Over the past century, Plaintiff has invested hundreds of millions of dollars in
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`advertising and promoting its 3M-brand products to consumers throughout the world (including,
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`without limitation, its 3M-brand N95 respirator) under the standard-character mark “3M” and the
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`inset 3M design mark (together, the “3M Marks”):
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`22.
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`For decades, products offered under Plaintiff’s 3M Marks have enjoyed enormous
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`commercial success (including, without limitation, its 3M-brand N95 respirator). Indeed, in 2019,
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`alone, sales of products offered under Plaintiff’s 3M Marks exceeded several hundred million
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`USD.
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`23.
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`Over the same period of time, products offered under Plaintiff’s 3M Marks have
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`regularly been the subject of widespread, unsolicited media coverage and critical acclaim.
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`24.
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`Based on the foregoing, consumers associate the 3M Marks uniquely with Plaintiff
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`and recognize them as identifying Plaintiff as the exclusive source of goods and services offered
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`under the 3M Marks. Based on the foregoing, the 3M Marks have also become famous among
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`consumers in the United States.
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`7
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`25.
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`To strengthen Plaintiff’s common-law rights in and to its famous 3M Marks,
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`Plaintiff has obtained numerous federal trademark registrations, including, without limitation:
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`(i) U.S. Trademark Reg. No. 3,398,329, which covers the standard-character 3M mark in Int.
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`Classes 9 and 10 for, inter alia, respirators (the “‘329 Registration”); (ii) U.S. Trademark Reg. No.
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`2,793,534, which covers the 3M design mark in Int. Classes 1, 5, and 10 for, inter alia, respirators
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`(the “‘534 Registration”); and (iii) U.S. Trademark Reg. No. 5,469,903, which covers the “3M
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`Science. Applied to Life” slogan in a number of Int. Classes, including Int. Class 9 for facial masks
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`and respirators (the “‘903 Registration”). See Exhibits 3-5.
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`26.
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`The ‘329, ‘534, and ‘903 Registrations are valid, in effect, and on the Principal
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`Trademark Register.
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`27.
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`The ‘329 and ‘534 Registrations are “incontestable” within the meaning of 15
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`U.S.C. § 1065. Accordingly, the ‘329 and ‘534 Registrations constitute conclusive evidence of:
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`(i) Plaintiff’s ownership of the 3M Marks; (ii) the validity of the 3M Marks; (iii) the validity of the
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`registration of the 3M Marks; and (iv) Plaintiff’s exclusive right to use the 3M Marks throughout
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`the United States for, inter alia, respirators. Relatedly, the ‘903 Registration constitutes prima
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`facie evidence of: (i) Plaintiff’s ownership of the “3M Science. Applied to Life” slogan; (ii) the
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`validity of the “3M Science. Applied to Life” slogan; (iii) the validity of the registration of the
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`“3M Science. Applied to Life” slogan; and (iv) Plaintiff’s exclusive right to use the “3M Science.
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`Applied to Life” slogan throughout the United States for, inter alia, respirators (the “3M Slogan”).
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`28.
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`Plaintiff’s famous 3M Marks do more than identify Plaintiff as the exclusive source
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`of goods and services offered thereunder. Indeed, the famous 3M Marks also signify to consumers
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`that 3M-brand products offered under the 3M Marks are of the highest quality and adhere to the
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`strictest quality-control standards. Now, more than ever, consumers rely on the famous 3M Marks’
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`ability to signify that products offered under the 3M Marks are of the same high quality that
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`consumers have come to expect of the 3M brand over the past century.
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`D. Plaintiff’s Extensive Efforts to Assist With the Battle Against COVID-19
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`29. Medical professionals and first responders throughout the world are donning
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`extensive PPE as they place their health and safety on the line in the battle against COVID-19. As
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`Plaintiff states on the homepage of its website, it is “committed to getting personal protective
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`equipment to healthcare workers”:
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`30.
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`Among the PPE that 3M is providing to the heroic individuals on the front lines of
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`the battle against COVID-19 are Plaintiff’s 3M-brand N95 respirators.
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`31.
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`Inset, below, is an image of Plaintiff’s 3M-brand, Model 8210 respirator:
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`9
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`32.
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`Authentic N95 respirators reduce exposure to airborne biological particles and
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`liquid contamination when appropriately selected, fitted, and worn.
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`33.
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`Based on the exponential increase in demand for 3M-brand N95 respirators,
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`Plaintiff has invested the necessary capital and resources to double its global annual production of
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`1.1 billion 3M-brand N95 respirators. See Exhs. 1,2 What 3M has not done, though, is increase
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`its prices. See id.
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`34.
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`Unfortunately, certain third parties do not share 3M’s sense of civic responsibility
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`during this time of crisis. Indeed, opportunistic third parties are seeking to exploit the increased
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`demand for Plaintiff’s 3M-brand N95 respirators by offering to sell them for exorbitant prices,
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`selling counterfeit versions of them, and accepting money for 3M-brand N95 respirators despite
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`not having the product to sell and/or never intending to deliver the product to the unwitting buyer—
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`in many instances, a public authority, such as the City of New York, which struggles to address
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`the enormous financial and logistical challenges presented by COVID-19.
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`35.
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`Accordingly, to protect consumers on the front lines of the COVID-19 battle from
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`deception and inferior products, to reduce time wasted by governmental officials on scams, as well
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`as to protect the widespread reputation and goodwill enjoyed by Plaintiff’s carefully curated 3M
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`brand, Plaintiff is working diligently with law enforcement, retail partners, and others to combat
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`unethical and unlawful business practices related to 3M-brand N95 respirators. For example, in
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`late-March 2019, 3M’s Chief Executive Officer, Mike Roman, sent a letter to U.S. Attorney
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`General, William Barr, and the President of the National Governor’s Association, Larry Hogan of
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`Maryland, to offer 3M’s partnership in combatting price-gouging. As shown in the inset image,
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`additional examples of 3M’s efforts to combat price-gouging, counterfeiting, and other unlawful
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`conduct during COVID-19 include:
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`10
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`a. 3M posted on its website the list price for its 3M-brand N95 respirators so that
`consumers can readily identify price-gouging (See Exhibit 6);
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`b. 3M created a form on its website that consumers can use to report suspected
`incidents of price-gouging and counterfeiting (See Exhibit 7); and
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`c. 3M created a fraud “hotline” that consumers can call to report suspect incidents of
`price-gouging and counterfeiting:
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`II.
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`Defendant’s Unlawful Conduct
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`36.
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`Despite Plaintiff’s extensive measures to combat price-gouging and counterfeiting
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`of its 3M-brand N95 respirators, these illicit activities continue. Defendant is a prime example of
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`this unlawful behavior, which is damaging to the 3M brand and public health.
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`37.
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`On or about March 30, 2020 – while New York City was reporting record numbers
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`of COVID-19 positive tests and deaths – Defendant emailed a document, titled Formal Quote, to
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`Ebony Roberson of New York City’s Office of Citywide Procurement. See Exhibit 8.
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`38.
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`In the Formal Quote, Defendant offered to sell New York City’s Procurement
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`Office: (i) 2 million 3M-brand, N95 Model 8210 respirators for $6.05 each, and (ii) 5 million 3M-
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`brand, N95 Model 1860 respirators for $6.35 each. See Exh. 8.
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`39.
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`In the one-page Formal Quote, Defendant reproduced Plaintiff’s famous 3M marks
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`nine times. See Exh. 8.
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`40.
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`Defendant also attached to the Formal Quote a Technical Specification Sheet for
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`both Models of 3M-brand N95 respirators that Defendant purportedly had available for sale. See
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`Exh. 8. Plaintiff’s famous 3M design mark, and 3M Slogan, prominently appeared in the upper
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`left-hand corner of both Technical Specification Sheets. See id. Plaintiff’s famous 3M design
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`mark also appeared in the lower left-hand corner of both Technical Specification Sheets. See id.
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`Additionally, Plaintiff’s famous standard-character 3M mark appeared in the Technical
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`Specification Sheets. See id.
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`41.
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`Defendant’s rampant use of the 3M Marks throughout the Formal Quote, combined
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`with the presence of the Plaintiff’s 3M Marks and 3M Slogan in Technical Specification Sheets,
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`caused New York City officials to mistakenly believe that Defendant was an authorized distributor
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`of Plaintiff’s products and/or otherwise had an association or affiliation with Plaintiff and its
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`products. To be sure, after Defendant sent the Formal Quote to Ms. Roberson, New York City
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`officials prepared an “Evaluation Request – Bid Document Review” as part of their quality-
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`assurance measures. See Exh. 8. In the Evaluation Request, New York City officials identified
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`Defendant as a “vendor” – twice – of 3M-brand, N95 Model 8210 and 1860 respirators. See id.
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`However, the New York City officials were mistaken. Defendant is not, and never has been, an
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`authorized distributor or vendor of Plaintiff’s products. Defendant also does not have, and has
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`never had, an association or affiliation with Plaintiff.
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`42.
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`Defendant’s Formal Quote also contained false, misleading, and/or deceptive
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`statements. For example, in the Formal Quote, Defendant stated:
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`“Due to the national emergency, acceptance of the purchase order is at the full
`discretion of 3M and supplies are based upon availability. The N95 masks 3M can
`begin shipping in 2-4 weeks CIF at any of 3M [sic] plants in the USA or 3M Plants
`Overseas according to their manufacturing schedule. 3M choose the plant. Order
`may be shipped in whole or in part.” See Exh. 8.
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`12
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`43.
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`The level of specificity in the above-quoted portion of the Formal Quote, including,
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`for example, that any purchase order is subject to 3M’s discretionary approval, that 3M allegedly
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`ships its products CIF, and that 3M will determine the production site for the order, are all false
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`and likely to mislead and/or deceive a reasonable consumer into believing that Defendant is an
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`authorized distributor of 3M products and/or has an association or affiliation with 3M. Sadly, in
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`this case, Defendant’s Formal Quote actually misled and deceived experienced buyers in the
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`Procurement Office of one of the world’s largest cities into believing that Defendant was an
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`authorized “vendor” of approximately $45 million-worth of 3M-brand N95 respirators.
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`44.
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`Another equally detestable element of Defendant’s unlawful conduct is price-
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`gouging. Defendant’s quote of $6.05 per 3M brand, N95 Model 8120 respirator is approximately
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`600% over 3M’s suggested list price of $1.02-$1.31 per respirator. See Exh. 3. Defendant’s quote
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`of $6.35 per 3M brand, N95 Model 1860 respirator is 500% increase over 3M’s list price of $1.27
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`per respirator. See Exh. 3.
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`45.
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`The mere association of 3M’s valuable brand with such shameless price-gouging
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`harms the brand, not to mention its more serious threat to public health agencies that are under
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`strain in the midst of a worldwide pandemic.
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`46.
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`Based on the foregoing, Plaintiff seeks relief against Defendant for federal and state
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`trademark infringement, unfair competition, false association, false endorsement, false designation
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`of origin, trademark dilution, false advertising, and deceptive acts and business practices.
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`CLAIMS FOR RELIEF
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`FIRST CLAIM FOR RELIEF
`(Trademark Infringement Under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1))
`(Infringement of the Federally Registered 3M Marks and 3M Slogan)
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`47.
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`Plaintiff repeats and incorporates by reference the statements and allegations in
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`paragraphs 1 - 46 of the Complaint as though set forth fully herein.
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`48.
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`49.
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`Count I is a claim for trademark infringement under 15 U.S.C. § 1114.
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`Plaintiff is the exclusive owner of each of the federally registered 3M Marks, and
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`the 3M Slogan.
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`50.
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`Plaintiff has the exclusive right to use each of the 3M Marks, and the 3M Slogan,
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`in United States commerce for, inter alia, advertising, promoting, offering for sale, and selling
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`Plaintiff’s 3M-brand N95 respirators.
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`51.
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`Plaintiff’s exclusive rights in and to each of the 3M Marks, and the 3M Slogan,
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`predate any rights that Defendant could establish in and to any mark that consists of “3M” in whole
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`and/or in part.
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`52.
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`Both of the 3M Marks, and the 3M Slogan, are fanciful and/or arbitrary when used
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`for respirators and, therefore, are inherently distinctive.
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`53.
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`Both of the 3M Marks, and the 3M Slogan, identify Plaintiff as the exclusive source
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`of products offered under the 3M Marks (including, without limitation, 3M-brand N95 respirators)
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`and, therefore, the 3M Marks, and the 3M Slogan, have acquired distinctiveness.
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`54.
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`Defendant is using the 3M Marks, and the 3M Slogan, in commerce to advertise,
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`promote, offer for sale, and sell 3M-brand N95 respirators, including, for example, in the Formal
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`Quote.
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`55.
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`Defendant’s use of the 3M Marks, and the 3M Slogan, in commerce on, for, and/or
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`in connection with the advertising, promotion, offering for sale, and/or sale of products, as alleged,
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`herein, is causing, and is likely to continue causing, consumer confusion, mistake, and/or deception
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`about whether Defendant is 3M, and/or whether Defendant is a licensee, authorized distributor,
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`and/or affiliate of 3M and/or products that Plaintiff offers under its 3M Marks and/or 3M Slogan,
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`including, without limitation, 3M-brand N95 respirators.
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`Case 1:20-cv-02949 Document 1 Filed 04/10/20 Page 15 of 26
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`56.
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`Defendant’s use of the 3M Marks, and the 3M Slogan, in commerce on, for, and/or
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`in connection with the advertising, promotion, offering for sale, and/or sale of products, as alleged,
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`herein, is causing, and is likely to continue causing, consumer confusion, mistake, and/or deception
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`about whether Defendant and/or Defendant’s products are affiliated, connected, and/or associated
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`with 3M and/or products that Plaintiff offers under its 3M Marks and/or 3M Slogan, including,
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`without limitation, 3M-brand N95 respirators.
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`57.
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`Defendant’s use of the 3M Marks, and the 3M Slogan, in commerce on, for, and/or
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`in connection with the advertising, promotion, offering for sale, and/or sale of products, as alleged,
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`herein is causing, and is likely to continue causing, consumer confusion, mistake, and/or deception
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`about whether Defendant and/or Defendant’s products originate with, and/or are sponsored or
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`approved by, and/or offered under a license from, 3M or vice versa.
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`58.
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`Plaintiff has not consented to the use of its famous 3M Marks, or 3M Slogan, by
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`Defendant.
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`59.
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`Based on Plaintiff’s longstanding and continuous use of its 3M Marks, and 3M
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`Slogan, in United States commerce, as well as the federal registration of Plaintiff’s 3M Marks, and
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`3M Slogan, Defendant had actual and constructive knowledge of Plaintiff’s superior rights in and
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`to the 3M Marks, and the 3M Slogan, when Defendant began using the 3M Marks, and the 3M
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`Slogan, as part of its bad-faith scheme to confuse and deceive consumers, as alleged, herein.
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`60.
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`Upon information and belief, Defendant adopted and uses the 3M Marks, and the
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`3M Slogan, in furtherance of Defendant’s willful, deliberate, and bad-faith scheme of exploiting
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`the extensive consumer goodwill, reputation, fame, and commercial success of products that
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`Plaintiff offers under its 3M Marks, and its 3M Slogan, including, without limitation, 3M-brand
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`N95 respirators.
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`61.
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`Upon information and belief, Defendant has made, and will continue to make,
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`substantial profits and gain from its unauthorized use of Plaintiff’s 3M Marks, and 3M Slogan, to
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`which Defendant is not entitled at law or in equity.
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`62.
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`Upon information and belief, Defendant’s acts and conduct complained of herein
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`constitute trademark infringement in violation of 15 U.S.C. § 1114(a).
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`63.
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`Plaintiff has suffered, and will continue to suffer, irreparable harm from
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`Defendant’s acts and conduct complained of herein, unless restrained by law. The damage suffered
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`by Plaintiff is exacerbated by the fact that Defendant is advertising and offering for sale 3M-
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`branded N95 respirator masks at exorbitantly inflated prices during a global pandemic when
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`Plaintiff’s products are necessary to protect public health. Such conduct has inspired intense public
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`criticism of the manner in which Plaintiff’s respirator masks are being distributed and sold during
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`the COVID-19 pandemic and significant confusion about Plaintiff’s role in the marketplace for
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`masks that are essential to safeguarding public health. Whereas Plaintiff’s corporate values and
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`brand image center around the application of science to improve lives, Defendant’s conduct
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`imminently and irreparably harms Plaintiff’s 3M brand.
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`64.
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`Plaintiff has no adequate remedy at law.
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`SECOND CLAIM FOR RELIEF
`(Unfair Competition, False Endorsement, False Association, and False Designation of Origin
`Under Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A))
`(Use of the 3M Marks and 3M Slogan)
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`65.
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`Plaintiff repeats and incorporates by reference the statements and allegations in
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`paragraphs 1 - 64 of the Complaint as set forth fully herein.
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`66.
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`Count II is a claim for federal unfair competition, false endorsement, false
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`association, and false designation of origin under 15 U.S.C. § 1125(a)(1)(A).
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`Case 1:20-cv-02949 Document 1 Filed 04/10/20 Page 17 of 26
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`67.
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`Upon information and belief, Defendant’s acts and conduct complained of herein
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`constitute unfair competition, false endorsement, false association, and/or false designation of
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`origin in violation of 15 U.S.C. § 1125(a)(1)(A).
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`68.
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`Upon information and belief, Defendant’s use of Plaintiff’s famous 3M Marks, and
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`3M Slogan, to advertise, market, offer for sale, and/or sell purported 3M-brand N95 respirators to
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`consumers at exorbitant prices, in general, and during a global pandemic such as COVID-19,
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`specifically, also constitutes unfair competition in violation of 15 U.S.C. § 1125(a)(1)(A).
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`69.
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`Defendant has also falsely held itself out to be an agent of and/or authorized by
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`Plaintiff to sell and/or distribute 3M-branded products, when this is not the case.
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`70.
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`Plaintiff has suffered, and will continue to suffer, irreparable harm from
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`Defendant’s acts and conduct complained of herein, unless restrained by law.
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`71.
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`Plaintiff has no adequate remedy at law.
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`THIRD CLAIM FOR RELIEF
`(Trademark Dilution Under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c))
`(Dilution of the Famous 3M Marks)
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`72.
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`Plaintiff repeats and incorporates by reference the statements and allegations in
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`paragraphs 1 - 71 of the Complaint as though set forth fully herein.
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`73.
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`74.
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`Count III is a claim for federal trademark dilution under 15 U.S.C. § 1125(c).
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`Plaintiff’s 3M Marks were famous before and at the time Defendant began using
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`the 3M Marks in commerce on, for, and/or in connection with the advertising, promotion, offering
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`for sale, and/or sale of products (including, without limitation, 3M-brand N95 respirators).
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`75.
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`Defendant’s use of Plaintiff’s famous 3M Marks in commerce on, for, and/or in
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`connection with the advertising, promotion, offering for sale, and/or sale of products (including,
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`without limitation, 3M-brand N95 respirators) is likely to dilute the distinctive quality of the
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`Case 1:20-cv-02949 Document 1 Filed 04/10/20 Page 18 of 26
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`famous 3M Marks, such that famous 3M Marks’ established selling power and value will be
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`whittled away.
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`76.
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`Defendant’s use of Plaintiff’s famous 3M Marks in commerce on, for, and/or in
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`connection with the advertising, promotion, offering for sale, and/or sale of products (including,
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`without limitation, 3M-brand N9