Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 1 of 24
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`Barbara A. Solomon (bsolomon@fzlz.com)
`Jessica Vosgerchian (jvosgerchian@fzlz.com)
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 W. 42nd Street, Floor 17
`New York, NY 10036
`(212) 813-5900
`Attorneys for Plaintiff
`Chanel, Inc.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`CHANEL, INC.,
`
`
`
`
`
`
`Plaintiff,
` v.
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`SHIVER AND DUKE, LLC, EDITH ANNE HUNT
`and JOHN DOES 1-10,
`
` Defendants.
`
`
`
`
`
`
`
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`
`
`COMPLAINT
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`Plaintiff, Chanel, Inc. (“Plaintiff” or “Chanel”), by its undersigned attorneys Fross
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`Zelnick Lehrman & Zissu, P.C. for its Complaint against defendant Shiver and Duke, LLC (“S &
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`D”), Edith Anne Hunt and John Does 1-10 (collectively, “Defendants”) alleges as follows:
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`SUBSTANCE OF THE ACTION
`
`1.
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`This action arises out of Defendants’ unauthorized misappropriation of Plaintiff’s
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`world famous and federally registered CC Monogram trademark and CHANEL trademark (the
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`“CHANEL Marks”) in order to create and market costume jewelry that draws and relies on the
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`selling power and fame of the CHANEL Marks. More specifically, Defendants have taken
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`buttons bearing the CC Monogram that are not intended for use other than on Chanel’s
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`authorized clothing and have put them on chains, earrings, and bracelets and are selling them as
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`“Designer” jewelry. The prominent mark and feature of the costume jewelry is Chanel’s CC
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`Monogram. The commercial interest in the Defendants’ jewelry is based on the use of Chanel’s
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`{F3884251.3 }
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`
`
`
`
`Barbara A. Solomon (bsolomon@fzlz.com)
`Jessica Vosgerchian (jvosgerchian@fzlz.com)
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 W. 42nd Street, Floor 17
`New York, NY 10036
`(212) 813-5900
`Attorneys for Plaintiff
`Chanel, Inc.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`CHANEL, INC.,
`
`
`
`
`
`
`Plaintiff,
` v.
`
`SHIVER AND DUKE, LLC, EDITH ANNE HUNT
`and JOHN DOES 1-10,
`
` Defendants.
`
`
`
`
`
`
`
`
`
`
`
`
`COMPLAINT
`
`Plaintiff, Chanel, Inc. (“Plaintiff” or “Chanel”), by its undersigned attorneys Fross
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`Zelnick Lehrman & Zissu, P.C. for its Complaint against defendant Shiver and Duke, LLC (“S &
`
`D”), Edith Anne Hunt and John Does 1-10 (collectively, “Defendants”) alleges as follows:
`
`SUBSTANCE OF THE ACTION
`
`1.
`
`This action arises out of Defendants’ unauthorized misappropriation of Plaintiff’s
`
`world famous and federally registered CC Monogram trademark and CHANEL trademark (the
`
`“CHANEL Marks”) in order to create and market costume jewelry that draws and relies on the
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`selling power and fame of the CHANEL Marks. More specifically, Defendants have taken
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`buttons bearing the CC Monogram that are not intended for use other than on Chanel’s
`
`authorized clothing and have put them on chains, earrings, and bracelets and are selling them as
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`“Designer” jewelry. The prominent mark and feature of the costume jewelry is Chanel’s CC
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`Monogram. The commercial interest in the Defendants’ jewelry is based on the use of Chanel’s
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`{F3884251.3 }
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`Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 2 of 24
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`iconic trademark on the jewelry and the use of the CHANEL name to promote and market the
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`jewelry.
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`2.
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`Rather than create a unique mark or product line, Defendants have knowingly and
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`willfully taken Chanel’s marks – which Chanel uses for and on its own costume jewelry – and
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`has appropriated Chanel’s immediately recognized, highly sought after, and federally registered
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`trademarks for their own business and their own commercial benefit. Defendants are fully aware
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`that they are not authorized to repurpose Chanel’s products to create new commercial items, and
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`that they are not authorized to sell jewelry prominently displaying or sold under the CHANEL
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`Marks. Nevertheless, Defendants persist in their conduct in order to trade on the recognition and
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`commercial value of the CHANEL Marks.
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`3.
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`Based on Defendants’ conduct, Chanel asserts claims for trademark infringement
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`under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); unfair competition under Section
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`43(a) of the Lanham Act, 15 U.S.C. § 1125(a); trademark dilution under Section 43(c) of the
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`Lanham Act, 15 U.S.C. § 1125(c); trademark infringement and unfair competition under the
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`common law of New York; and trademark dilution under Section 360-l of the New York General
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`Business Law. Plaintiff seeks injunctive relief, an accounting of Defendants’ profits flowing
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`from their use of the CHANEL Marks, damages, attorneys’ fees, and such other relief as the
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`Court deems just and proper.
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`PARTIES
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`4.
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`Plaintiff Chanel, Inc. is a corporation organized and existing under the laws of the
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`State of New York with a principal place of business at 9 West 57th Street, New York, New
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`York 10019.
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`{F3884251.3 }
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`5.
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`Upon information and belief, defendant S & D is a Georgia limited liability
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`company with a place of business at 4666 East Conway Drive, Atlanta, Georgia 30327 owned by
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`Edith Anne Hunt.
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`6.
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`Upon information and belief, defendant Edith Anne Hunt is an individual who
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`owns defendant S & D with a place of business at 4666 East Conway Drive, Atlanta, Georgia
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`30327 and who directs and controls S&D’s conduct including the conduct alleged herein.
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`7.
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`Upon information and belief, John Does 1 through 10 are individuals or entities
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`residing in or otherwise conducting and transacting business in this district, own or control the
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`actions of S & D as described below, are the alter ego of S & D, or otherwise are engaged in the
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`advertisement, promotion, marketing, display, distribution, offering for sale and/or sale of the
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`infringing S & D jewelry. Upon learning of the specific identity of said defendants, Chanel shall
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`move, as necessary, to substitute the named parties or to otherwise amend this Complaint.
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`JURISDICTION AND VENUE
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`8.
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`This Court has jurisdiction over the subject matter of this action pursuant to
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`Section 39 of the Trademark Act of 1946 (the “Lanham Act”), 15 U.S.C. § 1121, and under
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`Sections 1331, 1338(a) and 1338(b) of the Judicial Code, 28 U.S.C. §§ 1331, 1338(a) and
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`1338(b). The Court has supplemental jurisdiction over the state law claims under Section
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`1367(a) of the Judicial Code, 28 U.S.C. §§ 1367(a).
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`9.
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`This Court has personal jurisdiction over Defendants under Sections 301 and/or
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`302 of the New York Civil Practice Laws and Rules because Defendants conduct, transact and
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`solicit business in this district, including by selling the products at issue to consumers in this
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`district and shipping such products to this district, because Defendants operate a highly
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`interactive website that offers Defendants’ infringing products for sale to consumers in this
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`{F3884251.3 }
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`Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 4 of 24
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`district, and because the events giving rise to this Complaint occurred in this state and/or had
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`effects in this state, and Chanel is being harmed in this jurisdiction.
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`10.
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`Venue is proper in this district pursuant to Sections 1391(b) and (c) of the Judicial
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`Code, 28 U.S.C. § 1391(b) and (c), because Defendants are subject to personal jurisdiction in this
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`district due to their transacting of business herein, including shipping and selling infringing
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`jewelry in and to this district, because a substantial portion of the events at issue have arisen and
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`will arise in this judicial district and Plaintiff is suffering harm in this judicial district.
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`FACTS COMMON TO ALL
`CLAIMS FOR RELIEF
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`A. Chanel’s Business and Use of the CHANEL Marks
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`11.
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`Chanel is a premier manufacturer and seller of a wide variety of luxury consumer
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`products, and is a recognized leader in the field of fashion and beauty. Chanel’s products are
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`immediately recognized by the use of the CHANEL Marks.
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`12.
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`Among the trademarks long used by Chanel to identify its goods and services are
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`both the CHANEL trademark and a design mark consisting of two interlocking back-to-back
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`letter Cs as follows:
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`(the “CC Monogram”).
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`
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`13.
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`Chanel has used the CHANEL Marks for more than a century, including use for
`
`decades in United States commerce. Today, the CHANEL Marks are reproduced on millions of
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`dollars worth of consumer goods spanning the full range of Chanel’s product line, including
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`clothing, shoes, bags, jewelry, accessories, fashion and beauty products and eyewear. Products
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`{F3884251.3 }
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`bearing or sold under the CHANEL Marks are available throughout the United States in
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`hundreds of retail outlets, as well as through authorized retailers on the Internet. Chanel’s yearly
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`sales of products bearing or sold under the CHANEL Marks total in the hundreds of millions of
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`dollars. All products bearing the CHANEL Marks are renowned for their high quality and are
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`identified and recognized as being exclusively from Chanel by virtue of their use of the
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`CHANEL Marks.
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`14.
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`In addition to appearing on Chanel’s products, the CHANEL Marks are used on
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`collateral material, such as buttons on clothing, as well as on packaging, hangers, labels and
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`hangtags. The marks also are featured prominently in advertisements that regularly appear in
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`nationally distributed magazines.
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`15.
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`The recognition of the CHANEL Marks among the public at large is enhanced not
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`only by Chanel’s own advertising efforts but by fashion editorial and press coverage of Chanel
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`that frequently highlights products bearing the CHANEL Marks. Such coverage reaches
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`hundreds of millions of consumers.
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`16.
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`The CHANEL Marks have become extraordinarily well known across all social
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`and demographic groups, being instantly recognized by consumers of streetwear and haute
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`couture fashions alike. As a result, products bearing the CHANEL Marks are in demand by
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`consumers of all ages and from all demographics.
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`17.
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`Among the products that Chanel has long provided under the CHANEL Marks is
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`costume jewelry. The CC Monogram has been the featured element of much of Chanel’s
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`costume jewelry for decades. Attached hereto as Exhibit A are true and correct copies of
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`printouts of webpages from Chanel’s chanel.com website showing representative samples of
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`Chanel jewelry featuring the CHANEL Marks.
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`{F3884251.3 }
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`5
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`18.
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`Chanel advertises costume jewelry bearing the CHANEL Marks across a variety
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`of media, including the Internet, magazines and newspapers.
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`19.
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`Chanel’s revenue from sales of costume jewelry sold under and/or bearing the
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`CHANEL Marks from 2015 to 2019 exceeds $300 million.
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`20. Moreover, leading the trend of high-profile fashion collaborations, Chanel has
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`collaborated with other brands and designers to develop and release capsule collections of
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`apparel and accessories bearing the CHANEL Marks alongside the trademarks of Chanel’s
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`collaborators, which have included the footwear brand Adidas, the famed Parisian boutique
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`Colette and music mogul Pharrell Williams. Attached hereto as Exhibit B are true and correct
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`copies of articles publicizing recent collaborations by Chanel.
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`21.
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`Chanel owns numerous federal trademark registrations for the CHANEL Marks in
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`connection with a variety of goods and services, including the following registrations for
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`jewelry:
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`MARK
`
`REG. NO.
`
`REG. DATE
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`RELEVANT GOODS
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`CHANEL
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`612,169
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`Sept. 13, 1955
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`Necklaces (Class 14)
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`CHANEL
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`902,190
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`Nov. 10, 1970
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`1,501,898
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`Aug. 30, 1988
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`
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`Bracelets, pins and earrings (Class
`14)
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`Inter alia, costume jewelry (Class
`14) and brooches, buttons for
`clothing (Class 26)
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`CHANEL
`
`3,133,139
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`Aug. 22, 2006
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`Jewelry and watches (Class 14)
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`
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`All of these registrations are valid, subsisting, in full force and effect, and incontestable, thus
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`serving as conclusive evidence of the validity of the marks and as conclusive evidence of
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`Plaintiff’s exclusive right to use of the marks in connection with the identified products under
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`{F3884251.3 }
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`Sections 15 and 33(b) of the Lanham Act, 15 U.S.C. §§ 1065, 1115(b). True and correct
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`printouts from the United States Patent and Trademark Office database reflecting these
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`registrations are annexed as Exhibit C.
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`22.
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`Because of Chanel’s exclusive and extensive use of the CHANEL Marks, the
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`marks have acquired enormous value and have become famous among the consuming public and
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`trade as identifying and distinguishing Chanel exclusively and uniquely as the source of products
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`available under or bearing the marks.
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`B. Defendants’ Unlawful Conduct
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`23.
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`Upon information and belief, Defendants manufacture, promote and sell costume
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`jewelry products featuring the iconic CC Monogram as their main source of identification.
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`24.
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`This costume jewelry is made from Chanel buttons that are not obtained from
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`Chanel or provided to Defendants by or with the consent or knowledge of Chanel and are not
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`verified as genuine by Chanel. The buttons used by Defendants are not intended or authorized
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`for use by Defendants and are not intended or authorized for use as the featured element of
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`jewelry created by Defendants who have no relationship with Chanel.
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`25.
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`The button jewelry made by S & D that features the CC Monogram includes
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`necklaces, earrings and bracelets. In promoting and marketing their costume jewelry on the
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`shiverandduke.com retail website, Defendants refer to the jewelry as “Designer” and in some
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`instances have used the CHANEL mark to identify their CC Monogram button jewelry.
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`Annexed hereto as Exhibit D is a true and correct printout of a retail listing from the
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`shiverandduke.com website depicting one of Defendants’ CC Monogram bracelets next to the
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`CHANEL mark. As evidenced by Exhibit D, there is no dispute that Defendants are aware of
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`the exclusive association between the CC Monogram and Chanel, that the CC Monogram is
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`{F3884251.3 }
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`Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 8 of 24
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`associated exclusively with Chanel, that goods bearing the CC Monogram are highly desirable
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`and sought after, and that Defendants’ use of the CC Monogram is intended to trade on the
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`goodwill that Chanel has created in its mark through decades of use and millions of dollars in
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`investments.
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`26.
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`Defendants’ button jewelry does not alter the CC Monogram and the jewelry
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`nowhere states that it was created by Defendants without the authorization of Chanel. Rather,
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`the appearance of the CC Monogram on Defendants’ jewelry is no different from the display of
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`the CC Monogram on authorized Chanel costume jewelry, and to a consumer there is no
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`distinguishable difference between the appearance of Defendants’ unauthorized product and
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`Chanel’s genuine product, as shown by the representative examples below.
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`Examples of Chanel’s Genuine Costume
`Jewelry
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`Examples of Defendants’ Button Costume
`Jewelry
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`{F3884251.3 }
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`27.
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`The CC Monogram button jewelry created by Defendants is sold throughout the
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`United States through a variety of channels of trade, including Defendants’ retail website and
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`numerous third-party online retailers, and has been shipped to and sold to consumers in this
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`district.
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`28.
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`Defendants market their button jewelry to the same consumers of costume jewelry
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`as Chanel. Moreover, Defendants’ advertising efforts, such as social media posts, focus greatly
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`on button jewelry bearing the CC Monogram, showing that Defendants’ are targeting consumers
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`who are unquestionably familiar with and who are seeking to purchase goods bearing Chanel’s
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`iconic trademark.
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`29.
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`On information and belief, as a result of Defendants’ prominent use of the
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`CHANEL Marks, retailers who purchased S & D’s costume jewelry have advertised and
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`promoted the products as CHANEL costume jewelry. For example, attached hereto as Exhibit E
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`is a true and correct printout of a webpage on the third-party retail website sassanova.com that
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`advertises one of S & D’s bracelets bearing the CC Monogram as “DESIGNER CHANEL
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`STONE BRACELET.”
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`30.
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`On September 2, 2020, Chanel sent S & D a letter explaining that its use of the
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`CHANEL Marks, including its sale of unauthorized jewelry bearing the CC Monogram, violates
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`{F3884251.3 }
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`Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 10 of 24
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`Chanel’s rights and demanding that such misconduct immediately cease. Counsel for S & D sent
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`a response letter on September 17, 2020, stating that S & D refused to cease its unauthorized use
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`of Chanel’s marks. Additional follow up communications did not result in any cessation of the
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`use of the CHANEL Marks by Defendants.
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`31.
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`The communications sent on behalf of Defendants did not dispute that Defendants
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`knew of the fame of the iconic CC Monogram, that Defendants’ knew that the CC Monogram is
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`exclusively associated with Chanel, that Defendants’ were not authorized to use the mark for
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`their own products, or that Defendants’ use of the CC Monogram was to capitalize on Chanel’s
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`valuable brand appeal and commercially benefit from the fame of and consumer interest in
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`Chanel and its branded goods.
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`32.
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`Rather than cease the use of the CC Monogram, and the commercial benefit they
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`reap from the use of Chanel’s iconic trademark, Defendants have made minor changes to their
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`products and packaging that do nothing to prevent consumers from mistakenly believing that
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`Defendants’ jewelry originates from or is authorized by Chanel.
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`33.
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`Defendants have altered some of the text on the jewelry’s packaging in response
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`to Chanel’s objections that Defendants’ sale of jewelry featuring the CC Monogram is likely to
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`mislead consumers into believing that Defendants’ products originate from or are authorized or
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`approved by Chanel. Shown below is an example of Defendants’ original packaging and
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`examples of packaging Defendants have adopted.
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`Example of Original S & D Packaging
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`Examples of Modified S & D Packaging
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`34.
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`However, Defendants’ packaging still does not state that the jewelry is not
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`authorized by or associated with Chanel, and the jewelry in the post-sale context conveys only
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`that it comes from Chanel when it does not.
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`35.
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`As shown below, Defendants have also added SD SHIVER + DUKE markings on
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`the backs of the CC Monogram buttons, but these added markings are not perceivable on
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`Defendants’ jewelry as displayed in the pre-sale context or as worn in the post-sale context. As
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`Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 12 of 24
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`such, Defendants’ markings on the backs of their jewelry fail to inform the public that
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`Defendants’ CC Monogram jewelry originates from Defendants, and not Chanel.
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`36.
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`In response to Chanel’s objections, Defendants have added a small tag displaying
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`the marking “SD” to their button jewelry. Such use is not consistent across the product line.
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`37. When the tag is used, it does not negate the primary visual focus of Defendant’s
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`jewelry, namely Chanel’s CC Monogram. The tag itself is generally obscured by the CC
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`Monogram button and the markings on the tag are not readily visible, as shown below in
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`photographs of one of Defendants’ necklaces bearing the tag.
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`38.
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`Further, the tag does nothing to inform the public that the product was repackaged
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`and repurposed by Defendants without the authorization of Chanel. As with the Defendants’
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`other imperceptible markings on the jewelry, this hidden tag does nothing to alter public
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`perception of Defendants’ jewelry worn in the post-sale context. That the tag is but a half-
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`hearted effort to address Chanel’s concerns and that Defendant’ intend to continue to trade on
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`Chanel’s trademarks is also shown by the lack of use of the tag on various products, including
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`earrings as shown below in promotional images displayed on Defendants’ website.
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`39.
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`Regardless whether Defendants use disclaimers, tags or markings to designate S
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`& D as the manufacturer of the costume jewelry bearing Chanel’s immediately recognizable CC
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`Monogram, in the post-sale context, the mark most prominently displayed on Defendants’
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`jewelry belongs to and identifies Chanel as the source of Defendants’ products. Further,
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`Defendants’ use of additional SD markings does not change the fact that the main source
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`identifying feature of the costume jewelry is the CC Monogram, that the jewelry is similar to
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`Chanel’s actual products bearing the CC Monogram, and that the selling power of Defendants’
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`products is based on the fame of the CC Monogram. The new addition on some products of a
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`small tag bearing the SD initials does not cure Defendants’ conduct as the tag is unlikely to be
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`seen in the post-sale context, and even if seen, may merely suggest that, as with Chanel’s prior
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`collaborations with Adidas, Colette and Pharrell Williams, the product is a collaboration that
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`bears both party’s marks.
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`40.
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`The use of the CHANEL Marks on and in connection with costume jewelry sold
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`by Defendants falsely suggests that Defendants’ jewelry comes from or is otherwise associated
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`with Chanel or is created with the approval of or in collaboration with Chanel. This is especially
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`so given that Chanel itself sells costume jewelry bearing and/or sold under the CHANEL Marks.
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`41.
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`Upon information and belief, Defendants design and manufacture button jewelry
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`bearing the CC Monogram, and sell such costume jewelry under the CHANEL Marks, in order
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`to derive the benefit of the enormous goodwill in the iconic status of the CHANEL Marks
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`developed by Chanel over a century of use.
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`42.
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`Despite numerous overtures from Chanel attempting to resolve this matter
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`amicably, Defendants not only have persisted in the unlawful conduct described herein but also
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`Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 15 of 24
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`have indicated that they are committed to continuing to sell their unauthorized CHANEL
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`products.
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`43.
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`Defendants are using the CHANEL Marks for the type of goods, jewelry, for
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`which Chanel has registrations and on which Chanel itself uses its CHANEL Marks.
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`44.
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`Defendants are not associated or affiliated with Chanel and have never been
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`authorized or otherwise licensed to use the CHANEL Marks or any other confusingly similar
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`mark in connection with the sale or offering for sale of any products or services. In fact,
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`Defendants have been asked to cease their use of the CHANEL Marks.
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`45.
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`Upon information and belief, Defendants’ use of the CHANEL Marks is with full
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`and active knowledge of Chanel’s exclusive rights to the CHANEL Marks, with knowledge of
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`the iconic status of those marks, and with knowledge that the marks are associated exclusively
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`with products of Chanel.
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`46.
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`As a matter of law, Defendants were on constructive notice of Chanel’s rights in
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`the CHANEL Marks based on Chanel’s registrations that issued long prior to Defendants’ use of
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`the marks for their own jewelry.
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`47.
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`Defendants’ unauthorized use of the CHANEL Marks for jewelry is with a
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`deliberate intent to ride on the fame and goodwill of Chanel’s trademarks, the deliberate intent to
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`profit from the CHANEL Marks, and the deliberate intent to create a false impression as to the
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`source or sponsorship of Defendants’ goods or to otherwise compete unfairly with Chanel. The
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`goodwill that Chanel has built up in its brand and in the CHANEL Marks through years of
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`substantial investment and effort is put at risk by virtue of Defendants’ wholesale appropriation
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`of the CHANEL Marks to sell and advertise their own competing products.
`
`{F3884251.3 }
`
`
`
`
`
`15
`
`
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`Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 16 of 24
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`48.
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`Defendants’ acts have and are likely to continue to irreparably harm Chanel’s
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`goodwill and reputation. Defendants’ use of the CHANEL Marks unfairly and unlawfully wrests
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`from Chanel control over its trademarks and reputation. Chanel has no control over the quality
`
`of Defendants’ products sold under or bearing the CHANEL Marks. As a result, Chanel’s
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`extremely valuable reputation is put in jeopardy and may be permanently damaged.
`
`49.
`
`Defendants’ conduct has caused and, unless enjoined by this Court, will continue
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`to cause irreparable injury to Chanel. Chanel has no adequate remedy at law.
`
`FIRST CLAIM FOR RELIEF
`TRADEMARK INFRINGEMENT (15 U.S.C. § 1114(1))
`
`Chanel repeats and realleges each of the allegations set forth in paragraphs 1
`
`50.
`
`through 49 above as if fully set forth herein.
`
`51.
`
`Defendants’ unauthorized use of the CHANEL Marks for goods that are covered
`
`by Chanel’s incontestable trademark registrations and for goods that are identical in type (i.e.,
`
`jewelry products) to those provided by Chanel under the CHANEL Marks is likely to cause
`
`confusion or to cause mistake or to deceive Defendants’ customers or potential consumers and
`
`the public as to the source or sponsorship of Defendants’ goods. Consumers are likely to be
`
`misled into believing that Defendants’ products are manufactured by, licensed by, sponsored by,
`
`approved by or otherwise associated with Chanel.
`
`52.
`
`Upon information and belief, Defendants were on both actual and constructive
`
`notice of Chanel’s exclusive rights in the registered CHANEL Marks prior to their own use of
`
`the CHANEL Marks. Defendants’ use of CHANEL Marks is willful, in bad faith, and with full
`
`knowledge of the goodwill and reputation associated with the CHANEL Marks, and with full
`
`knowledge that Defendants have no right, license or authority to use the CHANEL Marks or any
`
`other mark confusingly similar thereto.
`
`{F3884251.3 }
`
`
`
`
`
`16
`
`
`
`Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 17 of 24
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`53.
`
`Defendants’ acts are intended to reap the benefit of the goodwill that Chanel has
`
`created in its CHANEL Marks and constitutes infringement of Plaintiff’s federally registered
`
`trademarks in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
`
`54.
`
`Defendants’ conduct has caused and is causing immediate and irreparable injury
`
`to Chanel and, unless enjoined by this Court, will continue to both damage Chanel and deceive
`
`the public. Chanel has no adequate remedy at law.
`
`SECOND CLAIM FOR RELIEF
`FEDERAL UNFAIR COMPETITION (15 U.S.C. § 1125(a))
`
`Chanel repeats and realleges paragraphs 1 through 54 above as if fully set forth
`
`55.
`
`herein.
`
`56.
`
`Defendants’ use of the CHANEL Marks constitutes false designation of origin
`
`and false representation with respect to the origin of Defendants’ goods. Defendants’ use of the
`
`CHANEL Marks is likely to cause confusion, mistake, or deception as to the source of
`
`Defendants’ goods and is likely to create the false impression that Defendants are affiliated with
`
`Chanel or that their goods are authorized, sponsored, endorsed, licensed by, or affiliated with
`
`Chanel. Defendants’ actions constitute unfair competition in violation of Section 43(a) of the
`
`Lanham Act, 15 U.S.C. § 1125(a).
`
`57.
`
`Defendants’ use of the CHANEL Marks in connection with their own jewelry
`
`destroys the value, exclusivity and reputation of the CHANEL Marks.
`
`58.
`
`Defendants’ conduct has caused and is causing immediate and irreparable injury
`
`to Chanel and will continue both to damage Chanel and to deceive the public unless enjoined by
`
`this Court. Chanel has no adequate remedy at law.
`
`{F3884251.3 }
`
`
`
`
`
`17
`
`
`
`Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 18 of 24
`
`THIRD CLAIM FOR RELIEF
`FEDERAL TRADEMARK DILUTION (15 U.S.C. § 1125(c))
`
`59.
`
`Chanel repeats and realleges paragraphs 1 through 58 above as if fully set forth
`
`herein.
`
`60.
`
`As a result of extensive use and promotion of the CHANEL Marks and the goods
`
`offered thereunder by Chanel for decades, each of the CHANEL Marks is famous throughout the
`
`United States, is highly distinctive of Chanel’s goods and is widely recognized among the
`
`consuming public as a designation of source of Chanel’s goods. The CHANEL Marks became
`
`famous long before Defendants commenced their unauthorized use of the CHANEL Marks as
`
`described herein.
`
`61.
`
`The Defendants’ commercial use of the CHANEL Marks on and in connection
`
`with the sale of jewelry is diluting or is likely to dilute Chanel’s famous marks by impairing their
`
`distinctiveness, thereby lessening the capacity of the marks to identify and distinguish Chanel
`
`exclusively as the source of the products.
`
`62.
`
`Defendants’ commercial use of the CHANEL Marks on and in connection with
`
`the sale of jewelry also is diluting or is likely to dilute Chanel’s famous CHANEL Marks by
`
`harming the reputation of the marks, thereby damaging the good reputation of Chanel and the
`
`CHANEL Marks.
`
`63.
`
`Upon information and belief, the foregoing acts were done willfully and
`
`deliberately, commencing long after the CHANEL Marks became famous, and with an intent to
`
`reap the benefit of Chanel’s goodwill and dilute the distinctiveness of the CHANEL Marks in
`
`violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
`
`{F3884251.3 }
`
`
`
`
`
`18
`
`
`
`Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 19 of 24
`
`64.
`
`Defendants’ conduct has caused and is causing immediate and irreparable injury
`
`to Chanel and will continue to damage Chanel unless enjoined by this Court. Chanel has no
`
`adequate remedy at law.
`
`FOURTH CLAIM FOR RELIEF
`TRADEMARK INFRINGEMENT AND
`UNFAIR COMPETITION UNDER NEW YORK COMMON LAW
`
`65.
`
`Chanel repeats and realleges paragraphs 1 through 64 above as if fully set forth
`
`
`
`herein.
`
`66.
`
`Defendants have used the CHANEL Marks with full knowledge of Chanel’s prior
`
`rights in the marks and of the fame and success of Chanel’s products sold under and bearing the
`
`marks. Defendants’ use of the CHANEL Marks is for the willful and calculated purpose of
`
`misappropriating and trading on Chanel’s goodwill and business reputation. Furthermore,
`
`Defendants have used the CHANEL Marks for the willful and calculated purpose of causing
`
`confusion and mistake among the public and of deceiving the public as to the nature and origin
`
`of Defendants’ products in violation of Chanel’s rights under the common law of the state of
`
`New York.
`
`67.
`
`Upon information and belief, Defendants were on notice of Chanel’s exclusive
`
`rights in the CHANEL Marks before using the marks on and in connection with their jewelry
`
`products by virtue of Chanel’s open sale and use of the CHANEL Marks mark and by virtue of
`
`Chanel’s federal trademark registrations for the marks. As a result, Defendants’ use of the
`
`CHANEL Marks is willful, in bad faith and with full knowledge of Chanel’s prior use of,
`
`exclusive rights in and ownership of the CHANEL Marks, and with full knowledge of the
`
`reputation and goodwill associated with that marks. By using the CHANEL Marks without
`
`authorization, Defendants have been unjustly enriched and Chanel has been damaged.
`
`{F3884251.3 }
`
`
`
`
`
`19
`
`
`
`Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 20 of 24
`
`68.
`
`The aforesaid conduct of Defendants constitutes unfair competition and trademark
`
`infringement under the common law of the State of New York.
`
`69.
`
`Defendants’ conduct has caused and is causing immediate and irreparable injury
`
`to Chanel and will continue to both damage Chanel and to deceive the public unless enjoined by
`
`this Court. Chanel has no adequate remedy at law.
`
`FIFTH CLAIM FOR RELIEF
`TRADEMARK DILUTION UNDER NEW YORK LAW (N.Y. General Business Law § 360-l)
`
`Chanel repeats and realleges paragraphs 1 through 69 above as if fully set forth
`
`70.
`
`herein.
`
`71.
`
`As a result of extensive use and promotion of the CHANEL Marks and the goods
`
`offered thereunder by Chanel for decades, each of the CHANEL Marks is famous throughout the
`
`United States, is highly distinctive of Chanel’s goods and is widely recognized among the
`
`consuming public as designations of source of Chanel’s goods. The CHANEL Marks became
`
`famous long before Defendants commenced their unauthorized use of the CHANEL Marks as
`
`described herein.
`
`72.
`
`Defendants’ unauthorized use the CHANEL Marks is diluting and is likely to
`
`continue diluting such marks by blurring the distinctiveness thereof, and is likely to injure
`
`Chanel’s business reputation in that it has removed Chanel’s reputation from its own control and
`
`that deficiencies in or complaints about Defendants’ goods will redound to the harm of Chanel,
`
`all in violation of Section 360-l of the General Business Law of the State of New York.
`
`73.
`
`Defendants’ conduct has caused and is causing immediate and irreparable injury
`
`to Chanel and will continue to both damage Chanel and to deceive the public unless enjoined by
`
`this Court. Chanel has no adequate remedy at law.
`
`WHEREFORE, Plaintiff Chanel, Inc. respectfully demands judgment as follows:
`
`{F3884251.3 }
`
`
`
`
`
`20
`
`
`
`Case 1:21-cv-01277 Document 1 Filed 02/12/21 Page 21 of 24
`
`1)
`
`That a permanent injunction be issued enjoining Defendants, any entity owned
`
`and/or controlled in whole or in part by Defendants, and the partners, officers, agents, privies,
`
`sharehol
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