Case 1:20-cv-10379 Document 1 Filed 12/09/20 Page 1 of 15
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`Atari Interactive, Inc.,
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`Plaintiff,
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`v.
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`skinnyCorp, LLC d/b/a Threadless,
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`Defendant.
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`Civil Action No. 1:20­cv­10379
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`COMPLAINT
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`JURY TRIAL DEMANDED
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`Case 1:20-cv-10379 Document 1 Filed 12/09/20 Page 2 of 15
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`COMPLAINT
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`Plaintiff Atari Interactive, Inc. (“Atari”), as and for its complaint against Defendant
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`skinnyCorp, LLC d/b/a Threadless, LLC (“Threadless”), alleges as follows:
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`1.
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`Atari is a Delaware corporation with its principal place of business in New York,
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`PARTIES
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`New York.
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`2.
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`Atari is informed and believes that Threadless is a Delaware limited liability
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`company with its principal place of business in Chicago, Illinois.
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`JURISDICTION AND VENUE
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`3.
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`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
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`sections 1331 and 1338 because the action arises under the federal Lanham Act. See 15 U.S.C.
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`§§ 1051, et seq.; 17 U.S.C. §§ 101, et seq. This Court also has supplemental jurisdiction
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`pursuant to 28 U.S.C sections 1367 and 1338(b).
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`4.
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`Venue in this district is proper under 28 U.S.C. section 1391 because Threadless
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`is subject to personal jurisdiction here and Atari has suffered injury here.
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`5.
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`This Court has personal jurisdiction over Threadless because Threadless regularly
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`markets and sells goods, including certain goods at issue in this case, to customers in New York.
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`In addition, this Court has personal jurisdiction over Threadless because Threadless intentionally
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`directed the tortious conduct described below knowing that the effects would be felt by Atari in
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`this judicial district.
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`Case 1:20-cv-10379 Document 1 Filed 12/09/20 Page 3 of 15
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`A.
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`6.
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`GENERAL ALLEGATIONS
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`Atari Is an Iconic Video Game Brand.
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`Atari is one of the most famous video game brands in history. Founded in the
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`early 1970s in California, Atari became the pioneer in the video game industry during the 1970s
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`and continuing into the 1980s, developing and releasing (a) home video consoles—e.g., the Atari
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`2600—that set new standards in design and function, and (b) a series of hit games—e.g., Pong,
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`Breakout, Asteroids, and many others.
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`7.
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`Atari became known to relevant consumers and the public at large by its
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`inherently distinctive trade name, as well as its inherently distinctive A-shaped or “Fuji” logo
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`design. The Atari name and logo are depicted immediately below.
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`8.
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`Atari has continued to market, promote, license, and sell products, including a
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`catalog of more than 200 well-known games, worldwide under the Atari name and logo for over
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`four decades.
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`9.
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`Video gamers new and old recognize and revere Atari’s place as a very well-
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`known and iconic pioneer of the video game industry.
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`Case 1:20-cv-10379 Document 1 Filed 12/09/20 Page 4 of 15
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`10.
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`Atari has expanded into a multi-platform, global interactive entertainment
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`company, adapting many of its classic games for online platforms such as Facebook,
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`smartphones, and tablets.
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`11.
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`Atari has developed, promoted, and distributed new interactive entertainment and
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`products, including a new VCS console (modeled off the design of the original 2600 unit) that
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`raised more than $3 million in crowd-funding and which is currently in production.
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`12.
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`Atari has an active licensing business through which Atari has extended its brand
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`into other media, merchandising, and publishing categories.
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`13.
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`The Atari name, logo, and classic video games, consoles, and joysticks are
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`valuable intellectual property owned by Atari.
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`14.
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`Through commercial use and contractual agreements with its predecessors-in-
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`interest, Atari is the owner of USPTO Registration No. 4,214,210 for the ATARI name and logo
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`used in connection with, among other things, “printed matter, namely posters, stickers” and
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`“articles of clothing”; and Atari is the owner of USPTO Registration No. 4,324,638 for the
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`PONG name used in connection with, among other things “printed matter, namely posters,
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`stickers” and “articles of clothing.” Appended hereto as Exhibits 1 and 2 are true and correct
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`copies of the aforementioned trademark registrations.
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`15.
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`Through extensive and continuous promotion and sales, unsolicited press, and
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`word of mouth, Atari also owns common law rights in various trademarks and trade dress,
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`including the Atari name and logo, the Pong mark, and the overall look and feel of the classic
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`Atari 2600 game console and joystick.
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`Case 1:20-cv-10379 Document 1 Filed 12/09/20 Page 5 of 15
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`B.
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`Threadless Knowingly Infringes Upon Atari’s Intellectual Property Rights
`by Creating, Manufacturing, and Distributing Large Quantities of
`Counterfeit Atari Clothing and Printed Material.
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`16.
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`Threadless runs the website www.threadless.com, which solicits designs from
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`visitors to print on a variety of apparel and other merchandise—from t-shirts and sweaters to
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`mugs and posters—which Threadless then offers for sale. If a visitor to the site orders a product,
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`Threadless processes the payment for the product, and then makes and ships—or directs a third-
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`party to make and ship—the product to the purchaser. Threadless then splits the profits with the
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`person who originally uploaded the design.
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`17.
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`Threadless advertises, markets, creates, displays, offers for sale, sells, distributes,
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`and profits from massive quantities of counterfeit Atari products. Many of the counterfeit
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`products incorporate exact replicas of the registered ATARI trademark (name and logo) on
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`products in the classes for which the marks are registered. Other counterfeit products incorporate
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`easily identifiable depictions of the Atari 2600 console and joystick with the distinctive red
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`button. A few examples are depicted below. Others are shown in Exhibit 3.
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`Case 1:20-cv-10379 Document 1 Filed 12/09/20 Page 6 of 15
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`18.
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`Threadless also advertises, markets, creates, displays, offers for sale, sells,
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`distributes, and profits from counterfeit products incorporating exact replicas of the registered
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`PONG trademark and trade dress on products in the classes for which the marks are registered.
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`An example is depicted below. Others are shown in Exhibit 3.
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`19.
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`Threadless’ infringement is knowing and willful, as evidenced by (a) the sheer
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`quantity of different counterfeit designs being sold by Threadless, (b) the exact duplication of a
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`variety of iconic Atari designs, and (c) Threadless’ pattern and practice of infringing upon the
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`intellectual property rights of well-known brands.
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`20.
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`Threadless is aware of infringing acts on its website. Atari is informed and
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`believed that Threadless has been previously sued multiple times for trademark and copyright
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`infringement for sales of infringing products on its website.
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`21.
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`Threadless has profited from its unauthorized use of Atari’s intellectual property
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`through the sale of the infringing goods, and Threadless’ infringement has harmed Atari by
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`cheapening and diluting the Atari brand, diverting profits from the sale of authentic Atari goods,
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`and causing Atari to lose profits and licensing fees from the authorized use of its intellectual
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`property.
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`FIRST CLAIM FOR RELIEF
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`(Trademark Infringement and Counterfeiting)
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`22.
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`Atari re-alleges and incorporates herein by reference each and every allegation set
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`forth above.
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`23.
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`Atari is the owner of the registered ATARI and PONG trademarks for the
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`categories of goods on which Threadless is using the trademarks.
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`24.
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`25.
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`The Atari Trademarks are valid, protectable marks.
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`Advertising, marketing, creating, displaying, offering for sale, selling,
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`distributing, and profiting from products incorporating the Atari Trademarks or nearly identical
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`variations thereof of the Atari Trademarks is likely to cause confusion among ordinary
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`purchasers as to the source of the goods.
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`26.
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`27.
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`Atari has never consented to Threadless’ use of its trademarks.
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`Threadless infringed upon the Atari Trademarks and engaged in trademark
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`counterfeiting willfully.
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`28.
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`As a proximate result of the unfair advantage accruing to Threadless from using
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`identical or nearly identical marks and deceptively trading on Atari’s goodwill, Threadless has
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`made substantial sales and profits in amounts to be established according to proof.
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`29.
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`As a proximate result of the unfair advantage accruing to Threadless from using
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`identical or nearly identical marks and deceptively trading on Atari’s goodwill, Atari has been
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`damaged and deprived of substantial sales and has been deprived of the value of its trademarks
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`as commercial assets, in amounts to be established according to proof.
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`30.
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`Unless restrained by the Court, Threadless will continue to infringe Atari’s
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`trademarks. Pecuniary compensation alone will not afford Atari adequate relief for the damage to
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`its trademarks and brand. In the absence of injunctive relief, consumers are likely to continue to
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`be mistaken or deceived as to the true source, origin, sponsorship, and affiliation of Threadless
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`and their purported goods.
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`31.
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`Threadless’ acts were committed, and continue to be committed, with actual
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`notice of Atari’s exclusive rights and with the intent to cause confusion, to cause mistake, or to
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`deceive, and to cause injury to the reputation and goodwill associated with Atari and its products.
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`Pursuant to 15 U.S.C. section 1117, Atari is therefore entitled to recover three times its actual
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`damages or three times Threadless’ profits, whichever is greater, together with its attorneys’ fees.
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`Atari is also entitled to statutory damages of $2 million per registered mark. In addition, pursuant
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`to 15 U.S.C. section 1118, Atari is entitled to an order requiring destruction of all infringing
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`products and promotional materials in Threadless’ possession.
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`32.
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`Threadless’ acts have caused and will continue to cause irreparable harm to Atari
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`unless restrained by this Court. Atari has no adequate remedy at law. Accordingly, Atari is
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`entitled to an order enjoining and restraining Threadless and all those acting in concert with
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`Threadless, during the pendency of this action and permanently thereafter, from manufacturing,
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`distributing, importing, exporting, marketing, offering for sale, or selling copies or substantially
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`similar copies of Atari’s trademarks.
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`SECOND CLAIM FOR RELIEF
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`(Trademark Dilution)
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`33.
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`Atari re-alleges and incorporates herein by reference each and every allegation set
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`forth above.
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`34.
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`The ATARI and PONG trademarks are widely recognized by the general
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`consuming public of the United States.
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`35.
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`Threadless’ unauthorized use of the ATARI and PONG trademarks has the effect
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`of tarnishing and blurring Atari’s authentic trademark.
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`36.
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`Atari is entitled to recover damages and/or Threadless’ profits in an amount to be
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`determined at trial.
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`37.
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`Atari is entitled to an order preliminarily and permanently enjoining Threadless
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`from using its trademarks in the future.
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`38.
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`Because Threadless has willfully intended to cause dilution of Atari’s trademarks,
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`Atari is further entitled to recover its costs of suit and reasonable attorney’s fees pursuant to 15
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`U.S.C. sections 1117 and 1125(c)(2).
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`THIRD CLAIM FOR RELIEF
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`(False Designation of Origin)
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`39.
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`Atari re-alleges and incorporates herein by reference each and every allegation set
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`forth above.
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`40.
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`The Atari Trademarks, as well as the overall look and feel of Atari’s 2600 console
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`and joystick (the “2600 trade dress”), are inherently distinctive and have also acquired secondary
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`meaning through extensive promotion and sales, over unsolicited press, and word of mouth for
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`over four decades.
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`41.
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`Threadless is advertising, marketing, creating, displaying, offering for sale,
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`selling, distributing, and profiting from products incorporating the Atari Trademarks and the
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`2600 trade dress or nearly identical variations thereof.
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`42.
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`Threadless’ use of the Atari Trademarks and the 2600 trade dress is likely to
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`cause confusion among ordinary purchasers as to the source of the goods.
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`43.
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`44.
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`45.
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`Atari has never consented to Threadless’ use of its trademarks or trade dress.
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`Threadless infringed upon Atari’s trademarks and trade dress willfully.
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`As a proximate result of the unfair advantage accruing to Threadless from using
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`similar or quasi-similar marks and trade dress and deceptively trading on Atari’s goodwill,
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`Threadless has made substantial sales and profits in amounts to be established according to
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`proof.
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`46.
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`As a proximate result of the unfair advantage accruing to Threadless from using
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`confusingly similar marks and trade dress and deceptively trading on Atari’s goodwill, Atari has
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`been damaged and deprived of substantial sales and has been deprived of the value of its
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`trademarks as commercial assets, in amounts to be established according to proof.
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`47.
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`Unless restrained by the Court, Threadless will continue to infringe Atari’s
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`trademarks and trade dress. Pecuniary compensation alone will not afford Atari adequate relief
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`for the damage to its trademarks, trade dress, and brand. In the absence of injunctive relief,
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`consumers are likely to continue to be mistaken or deceived as to the true source, origin,
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`sponsorship, and affiliation of Threadless and their purported goods.
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`48.
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`Threadless’ acts were committed, and continue to be committed, with actual notice
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`of Atari’s exclusive rights and with the intent to cause confusion, to cause mistake, and/or to
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`deceive, and to cause injury to the reputation and goodwill associated with Atari and its products.
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`Pursuant to 15 U.S.C. section 1117, Atari is therefore entitled to recover three times its actual
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`damages or three times Threadless’ profits, whichever is greater, together with its attorneys’ fees.
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`Atari is also entitled to statutory damages of $2 million per registered mark. In addition, pursuant
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`to 15 U.S.C. section 1118, Atari is entitled to an order requiring destruction of all infringing
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`products and promotional materials in Threadless’ possession.
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`FOURTH CLAIM FOR RELIEF
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`(Common Law Unfair Competition)
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`49.
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`Atari re-alleges and incorporates herein by reference each and every allegation set
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`forth above.
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`50.
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`Threadless’ unauthorized use of Atari’s trademarks and trade dress is likely to
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`cause consumer confusion as to the source, origin, sponsorship, and association of Threadless’
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`products.
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`51.
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`Atari has been, and will continue to be, damaged and irreparably harmed by the
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`actions of Threadless unless Threadless is enjoined by this Court.
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`52.
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`Atari is entitled to recover damages and/or Threadless’ profits in an amount to be
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`determined at trial.
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`53.
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`Atari is informed and believes that Threadless committed the foregoing acts with
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`the intention of depriving Atari of its legal rights, with oppression, fraud, and/or malice, and in
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`conscious disregard of Atari’s rights. Atari is therefore entitled to an award of exemplary and
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`punitive damages, according to proof.
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`Case 1:20-cv-10379 Document 1 Filed 12/09/20 Page 12 of 15
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`FIFTH CLAIM FOR RELIEF
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`(Contributory Trademark Infringement and Counterfeiting)
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`54.
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`Atari re-alleges and incorporates herein by reference each and every allegation set
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`forth above.
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`55.
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`Threadless has been and continues to be aware of – and has been and continues to
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`contribute to – the infringement of Atari’s trademarks and the use of counterfeit Atari products
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`on its site. The infringing and counterfeit products are prominently displayed and promoted on
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`Threadless’ website. Threadless’ website is configured so that a search for “Atari” or other Atari
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`trade names will lead directly to the infringing and counterfeit goods. Threadless creates and
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`distributes the infringing and counterfeit goods to the end consumer and facilitates the financial
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`transactions.
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`56.
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`Alternatively, Threadless has remained willfully blind to the infringement and/or
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`counterfeiting of Atari trademarks on its website and on the products it creates and distributes to
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`the end consumer.
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`57.
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`Atari has been damaged by and Threadless has profited from Threadless’
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`contributory trademark infringement and counterfeiting.
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`58.
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`To remedy Threadless’ contributory trademark infringement, Atari is entitled to
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`all of the remedies set forth above for direct trademark infringement, counterfeiting, false
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`designation of origin, and unfair competition.
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`SIXTH CLAIM FOR RELIEF
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`(Vicarious Trademark Infringement and Counterfeiting)
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`59.
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`Atari re-alleges and incorporates herein by reference each and every allegation set
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`forth above.
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`60.
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`Threadless and the third parties who design and upload the infringing designs, and
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`Threadless and third parties that Threadless hires to manufacture the infringing products, if any, are
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`in an apparent or actual partnership, have the authority to bind one another in transactions with
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`third parties, or exercise joint ownership or control over the infringing products. Threadless is thus
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`vicariously liable for the trademark infringement and counterfeiting of the third parties who
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`design and upload the infringing designs onto the Threadless site as well as for that of the third
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`parties, if any, who manufacture the infringing goods.
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`61.
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`Atari has been damaged by and Threadless has profited from Threadless’
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`vicarious trademark infringement and counterfeiting.
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`62.
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`To remedy Threadless’ vicarious trademark infringement and counterfeiting,
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`Atari is entitled to all of the remedies set forth above for direct trademark infringement,
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`counterfeiting, false designation of origin, and unfair competition.
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`63.
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`Atari has been damaged by and Threadless has profited from Threadless’
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`vicarious trademark infringement. To remedy Threadless’ vicarious trademark infringement,
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`Atari is entitled to all of the remedies set forth above for direct trademark infringement.
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`PRAYER FOR RELIEF
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`WHEREFORE, Atari prays for relief against Threadless as follows:
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`1.
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`For preliminary and permanent injunctions enjoining and restraining Threadless,
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`its agents, employees, representatives, partners, joint venturers, and anyone acting on behalf of,
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`or in concert with Threadless, from:
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`a.
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`designing, manufacturing, importing, shipping, delivering, selling,
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`marketing, displaying, advertising, or promoting any product that
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`incorporates or is marketed in conjunction any Atari trademark or trade
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`dress;
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`b.
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`representing or implying, directly or indirectly, to retailers, customers,
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`distributors, licensees, or any other customers or potential customers of
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`Threadless’ products that Threadless’ products originate with or are
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`sponsored, endorsed, or licensed by, or are otherwise associated or
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`affiliated with, Atari;
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`2.
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`For an order requiring the destruction of all of Threadless’ infringing products and
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`all marketing, advertising, or promotional materials depicting Threadless’ infringing products;
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`3.
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`For an accounting of all profits obtained by Threadless from sales of the
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`infringing products and an order that Threadless hold all such profits in a constructive trust for
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`the benefit of Atari;
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`4.
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`For an award to Atari of all profits earned by Threadless from their infringing
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`acts;
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`5.
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`6.
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`7.
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`8.
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`9.
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`For compensatory damages according to proof;
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`For statutory damages of $2 million per registered trademark per type of goods;
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`For pre-judgment interest on all damages awarded by this Court;
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`For reasonable attorney’s fees and costs of suit incurred herein; and
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`For such other and further relief as the Court deems just and proper.
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`Case 1:20-cv-10379 Document 1 Filed 12/09/20 Page 15 of 15
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`JURY TRIAL DEMANDED
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`Defendant hereby demands a jury trial as provided by Federal Rule of Civil Procedure
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`38(a).
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`Dated: San Francisco, California.
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`December 9, 2020
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`Respectfully submitted,
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`BROWNE GEORGE ROSS
`O’BRIEN ANNAGUEY & ELLIS LLP
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`By: /s/ Joachim B. Steinberg
`Joachim B. Steinberg
`44 Montgomery Street, Suite 1280
`San Francisco, California 94104
`Tel: (415) 391-7100
`Fax: (415) 391-7198
`Email: jsteinberg@bgrfirm.com
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`Attorney for Plaintiff Atari Interactive, Inc.
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