`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`
`T-MOBILE US, INC.
`
`Plaintiff,
`
`v.
`
`Civil Action No._______________
`
`COMPLAINT FOR TRADEMARK
`INFRINGEMENT
`
`SIMPLY WIRELESS, INC.,
`
`JURY TRIAL DEMANDED
`
`Defendant.
`
`Plaintiff T-Mobile US, Inc. (“T-Mobile”) for its Complaint against Defendant, Simply
`Wireless, Inc. (“Simply Wireless”), alleges as follows:
`NATURE OF THE ACTION
`This is a civil action for trademark infringement under the Lanham Act and related
`1.
`claims under Washington State law resulting from Simply Wireless’s use of T-Mobile trade name
`and trademarks in connection with the offer for sale, sale and distribution of products and/or
`services not authorized or sold by T-Mobile.
`2.
`T-Mobile’s claims arise under the United States Trademark Act (Lanham Act of
`1946), 15 U.S.C. §§ 1051 et seq., and under Washington State law. As a result of Simply
`Wireless’s acts complained of herein, T-Mobile seeks recovery of actual damages, Simply
`Wireless’s profits, trebled damages, statutory damages, costs, attorneys’ fees, and other relief as
`more fully set forth herein.
`
`COMPLAINT FOR TRADEMARK INFRINGMENT AND
`DECLARATORY RELIEF - 1
`
`1000 SECOND AVENUE, SUITE 3500
`SEATTLE, WA 98104 • (206) 393-5400
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`Case 2:21-cv-00525 Document 1 Filed 04/19/21 Page 2 of 9
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`THE PARTIES
`T-Mobile US, Inc. is a Delaware corporation with a principal office at 12920 SE
`3.
`38th Street, Bellevue, Washington, 98006.
`4.
`On information and belief, Simply Wireless is a Virginia corporation with its
`principal place of business at 8484 Westpark Drive, Suite 800, McLean, Virginia 22102.
`JURISDICTION AND VENUE
`This action arises under the trademark laws of the United States, 15 U.S.C. §§ 1051
`5.
`et seq. (action arising under Lanham Act), and therefore this Court has jurisdiction over the subject
`matter pursuant to 28 U.S.C. § 1331 (federal question) and § 1338 (trademark infringement). This
`Court has supplemental jurisdiction over the remaining claims pursuant to 28 U.S.C. § 1367.
`6.
`The Court has personal jurisdiction over Simply Wireless because Simply Wireless
`has transacted business within the State of Washington, including entering into contracts with
`Washington residents, namely T-Mobile. Simply Wireless has also solicited and conducted
`business with Washington residents by operating commercial, interactive internet websites
`through which Simply Wireless marketed its products and services in connection with infringing
`T-Mobile’s trademarks. Finally, Simply Wireless has committed tortious acts causing T-Mobile
`to sustain injury in Washington.
`7.
`Venue is proper in this Court pursuant to 28 U.S.C. § 1391(b) & (d) because a
`substantial part of the events giving rise to the claims occurred in the Western District of
`Washington, and Simply Wireless would be subject to personal jurisdiction in this district if it was
`an independent state.
`
`FACTS
`T-Mobile’s Trademark Rights
`A.
`T-Mobile is a well-known national provider of wireless voice, messaging, and data
`8.
`services, and the United States mobile telecommunications subsidiary of Deutsche Telekom AG
`(“DTAG”).
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`COMPLAINT FOR TRADEMARK INFRINGMENT AND
`DECLARATORY RELIEF - 2
`
`1000 SECOND AVENUE, SUITE 3500
`SEATTLE, WA 98104 • (206) 393-5400
`
`
`
`Case 2:21-cv-00525 Document 1 Filed 04/19/21 Page 3 of 9
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`DTAG owns the standard character mark T-MOBILE and a stylized T-Mobile
`9.
`Mark (collectively, the “T-Mobile Marks”). Copies of the certificates of registration issued by the
`United States Patent and Trademark Office (“USPTO”) are attached hereto as Composite Exhibit
`A (CC Ex E). The stylized T-Mobile Mark is depicted below:
`
`DTAG has granted T-Mobile an exclusive license to use the T-Mobile Marks in the
`10.
`United States and has authorized T-Mobile to enforce said rights in this matter.
`11.
`T-Mobile has invested heavily in developing and maintaining its reputation and the
`reputation of its brands, including by and through the T-Mobile Marks.
`12.
`The T-Mobile Marks and the T-Mobile name have become an intrinsic and
`essential part of the valuable goodwill and property of T-Mobile, which protects the respective
`marks. The T-Mobile Marks are well-established and well-known to customers and the trade as a
`symbol identifying and distinguishing T-Mobile products and services, and signifying distinctive
`products and services of high quality.
`13.
`Only T-Mobile and its authorized sublicensees are permitted to use the T-Mobile
`Marks in the United States.
`14.
`The T-Mobile Marks are valid, distinctive, protectable, have acquired secondary
`meaning, and are closely associated with T-Mobile in the United States.
`15.
`Due to the amount of advertising, marketing and promotional work by T-Mobile,
`the T-Mobile Marks have such recognition that they are famous amongst the consuming public in
`the United States.
`B.
`T-Mobile’s Past Dealing with Simply Wireless
`16.
`T-Mobile and Simply Wireless have engaged in at least two prior business
`relationships between (i) 2003-2009 and (ii) July 2012-June 2015.
`
`COMPLAINT FOR TRADEMARK INFRINGMENT AND
`DECLARATORY RELIEF - 3
`
`1000 SECOND AVENUE, SUITE 3500
`SEATTLE, WA 98104 • (206) 393-5400
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`Case 2:21-cv-00525 Document 1 Filed 04/19/21 Page 4 of 9
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`From 2003 to 2009, Simply Wireless was an authorized dealer of T-Mobile devices
`17.
`and services. This relationship was memorialized in a series of agreements hereinafter referred to
`as the “Dealer Agreements” and include: 2008 Premier Retailer Agreement; 2008 Semi-Exclusive
`Retailer Agreement; and 2005 Premier Dealer Agreement.
`18.
`As part of the parties’ prior business relationships, Simply Wireless repeatedly
`entered into numerous contracts with T-Mobile over a span of 15 years that governed the parties’
`relationship.
`During the course of that business relationship, Simply Wireless engaged in co-
`19.
`operative advertising with T-Mobile at its retail stores and kiosks, on the radio, in national
`telesales, including home shopping television segments, in newspapers, on DC metro/billboard
`advertising on the trains and in the metro stations, with partnerships with other vendors (i.e., Papa
`Johns and DC United) and in direct mail materials.
`20.
`From July 12, 2012 to June 30, 2015, Simply Wireless and T-Mobile were parties
`to a Limited Purpose Co-Marketing and Distribution Agreement for Prepay Equipment Sold
`through HSN and QVC (“HSN Agreement”).
`21.
`The relationship between T-Mobile and Simply Wireless and the conduct of
`business between the parties was conducted in many respects through either the Dealer
`Agreements or the HSN Agreement.
`22.
`Simply Wireless has previously acknowledged on numerous occasions that T-
`Mobile (or T-Mobile’s parent) owns all intellectual property rights to trademarks owned by
`T-Mobile.
`Simply Wireless has also acknowledged numerous occasions that that any goodwill
`23.
`arising out of Simply Wireless’s use of the T-Mobile Marks belongs and inures solely to T-Mobile.
`24.
`Through its extensive business dealings with T-Mobile, Simply Wireless created
`or increased its goodwill and recognition in the marketplace.
`C.
`Simply Wireless’s Ongoing Misconduct
`25.
`Simply Wireless owns and maintains the website www.simplywireless.com.
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`COMPLAINT FOR TRADEMARK INFRINGMENT AND
`DECLARATORY RELIEF - 4
`
`1000 SECOND AVENUE, SUITE 3500
`SEATTLE, WA 98104 • (206) 393-5400
`
`
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`Case 2:21-cv-00525 Document 1 Filed 04/19/21 Page 5 of 9
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`A portion of the website includes a section with the header “Simply Partners” and
`26.
`includes numerous trademarks of other companies, and specifically includes the T-Mobile Marks:
`
`See www.simplywireless.com, last visited April 15, 2021.
`27.
`As part of their prior business dealings, T-Mobile granted Simply Wireless a
`limited license to utilize the T-Mobile Marks.
`28.
`But any license to utilize the T-Mobile Marks has expired and Simply Wireless has
`no right or authority to utilize the T-Mobile Marks.
`29.
`T-Mobile is not a “partner” of Simply Wireless and has no authority to represent
`itself as such.
`Despite this, Simply Wireless is still representing to the public, at least through its
`30.
`website, that T-Mobile is a partner of Simply Wireless, and is utilizing the T-Mobile Marks to sell
`and advertise its goods and services.
`
`COUNT I
`VIOLATION OF LANHAM ACT
`T-Mobile re-alleges and incorporates by reference the allegations set forth above.
`31.
`Simply Wireless’s aforementioned conduct constitutes use of T-Mobile’s trade
`32.
`name and at least one of the T-Mobile Marks without authorization.
`
`COMPLAINT FOR TRADEMARK INFRINGMENT AND
`DECLARATORY RELIEF - 5
`
`1000 SECOND AVENUE, SUITE 3500
`SEATTLE, WA 98104 • (206) 393-5400
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`Case 2:21-cv-00525 Document 1 Filed 04/19/21 Page 6 of 9
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`Simply Wireless’s use of T-Mobile’s trade name and at least one of the T-Mobile
`33.
`Marks in connection with the sale or advertisement of its goods and/or services through
`www.simplywireless.com has caused, and will further cause, a likelihood of confusion, mistake,
`and deception as to the source of origin of Simply Wireless’s products and/or services, and the
`relationship between T-Mobile and Simply Wireless.
`34.
`Simply Wireless’s use of the T-Mobile Marks and representation that it is a “T-
`Mobile Partner” in connection with the sale or advertisement of its goods and/or services evokes
`an immediate, favorable impression or association, and constitutes a false representation that its
`products/services and business have some connection, association, or affiliation with T-Mobile.
`This constitutes false designation of origin and is likely to mislead the trade and public into
`believing Simply Wireless’s products and services originate from, are affiliated with, or are
`sponsored, authorized, approved or sanctioned by T-Mobile.
`35.
`Simply Wireless, in committing the foregoing acts in commerce, has damaged and
`will continue to damage T-Mobile, and has been unjustly enriched and will continue to unjustly
`enrich itself at T-Mobile’s expense.
`36.
`Simply Wireless’s use of the T-Mobile Marks in promotion of its business
`misrepresents the nature, characteristics, and/or qualities of its infringing products. Such
`promotion is false and/or misleading and deceives or has the capacity to deceive customers.
`37.
`Simply Wireless’s actions constitute a violation of the Lanham Act, including, but
`not limited to as follows:
`a.
`false designation of origin, false descriptions and representations, and false
`advertising in commerce in violation of § 43(a) of the Lanham Act, 15 U.S.C.
`§1125(a)(1)(A) and (B); and
`infringement of federally registered marks under Section 32, 15 U.S.C.
`§1114.
`Simply Wireless knew, at least through the terms of the HSN Agreement and
`38.
`Dealer Agreements, that T-Mobile is the owner of the T-Mobile Marks and that Simply Wireless
`
`b.
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`COMPLAINT FOR TRADEMARK INFRINGMENT AND
`DECLARATORY RELIEF - 6
`
`1000 SECOND AVENUE, SUITE 3500
`SEATTLE, WA 98104 • (206) 393-5400
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`Case 2:21-cv-00525 Document 1 Filed 04/19/21 Page 7 of 9
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`has no legal right to use any of these marks on its products or in connection with its services.
`39.
`Simply Wireless is engaged in and continues to engage in the alleged activities
`knowingly, willfully, and deliberately, so as to justify the assessment of damages under the
`Lanham Act, including exemplary damages, and an award of T-Mobile’s lost profits, Simply
`Wireless’s profits, and T-Mobile’s attorneys’ fees, to the extent allowable by law.
`
`COUNT II
`VIOLATION OF THE WASHINGTON CONSUMER PROTECTION ACT
`
`T-Mobile re-alleges and incorporates by reference the allegations set forth above.
`40.
`Simply Wireless’s false association of itself as a partner of T-Mobile constitutes an
`41.
`unfair or deceptive act or practice.
`42.
`Simply Wireless has no right to utilize the T-Mobile Marks or represent itself as a
`“T-Mobile Partner.”
`43.
`This unfair or deceptive act or practice was made in trade or commerce at least
`through Simply Wireless’s website advertising its products and services.
`44.
`This unfair or deceptive act has an impact on public interest in that, among other
`things, it will confuse the public into thinking that T-Mobile is a partner of Simply Wireless when
`it is not.
`This has caused injury to T-Mobile including, but not limited to loss of good will
`45.
`amongst its customers based on the actions of Simply Wireless.
`46.
`Such injury was caused by Simply Wireless’s unfair and deceptive act of holding
`itself out as a partner of T-Mobile in that, among other things, a customer will likely associate T-
`Mobile with complaints they have about Simply Wireless’s products and services.
`47.
`T-Mobile is therefore entitled to damages, fees and expenses and other relief as
`allowable under the Washington Consumer Protection Act and the parties’ agreements.
`JURY DEMAND
`Plaintiff respectfully requests a trial by jury on all issues so triable.
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`COMPLAINT FOR TRADEMARK INFRINGMENT AND
`DECLARATORY RELIEF - 7
`
`1000 SECOND AVENUE, SUITE 3500
`SEATTLE, WA 98104 • (206) 393-5400
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`
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`Case 2:21-cv-00525 Document 1 Filed 04/19/21 Page 8 of 9
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`PRAYER FOR RELIEF
`WHEREFORE, T-Mobile respectfully requests a judgment in its favor and for the Court
`to grant T-Mobile the following relief:
`a) Ordering Simply Wireless, its officers, agents, employees, and all those working in
`concert with Simply Wireless to halt use of the T-Mobile Marks;
`b) Awarding T-Mobile its damages and costs as allowed by the Lanham Act and the
`Washington Consumer Protection Act for Simply Wireless’s unlawful use of the
`T-Mobile Marks;
`c) Finding this case “exceptional” due to Simply Wireless’s willful and deliberate
`infringement of T-Mobile’s well-known rights, and to award T-Mobile enhanced
`damages, its reasonable attorneys’ fees, and other litigation expenses not subsumed
`in the award of costs;
`d) An award of damages and all other relief as allowed by the Washington Consumer
`Protection Act; and
`e) Awarding all further relief that is just and appropriate.
`Dated: April 19, 2021.
` Respectfully submitted,
`
`/s/ Jessica Andrade
`Gary E. Hood (WA 26209)
`Jessica Andrade (WA 39297)
`1000 2nd Avenue, Ste. 3500
`Seattle, WA 98104
`T: (206) 393-5400
`F: (206) 393-5401
`ghood@polsinelli.com
`
`Of Counsel:
`
`/s/ Jay E. Heidrick
`Jay E. Heidrick
`(pro hac vice application forthcoming)
`POLSINELLI PC
`900 W. 48th Place, Suite 900
`Kansas City, Missouri 64112
`
`COMPLAINT FOR TRADEMARK INFRINGMENT AND
`DECLARATORY RELIEF - 8
`
`1000 SECOND AVENUE, SUITE 3500
`SEATTLE, WA 98104 • (206) 393-5400
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`Case 2:21-cv-00525 Document 1 Filed 04/19/21 Page 9 of 9
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`T: (816) 753-1000
`F: (816) 753-1536
`jheidrick@polsinelli.com
`
`
`
`/s/ Randal S. Alexander
`Randal S. Alexander
`Monica M. Gutierrez
`(pro hac vice applications forthcoming)
`POLSINELLI PC
`150 North Riverside Plaza, Suite 3000
`Chicago, Illinois 60606
`T: (312) 819-1900
`F: (312) 819-1910
`ghood@polsinelli.com
`ralexander@polsinelli.com
`mgutierrez@polsinelli.com
`
`Attorneys for T-Mobile US, Inc.
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`COMPLAINT FOR TRADEMARK INFRINGMENT AND
`DECLARATORY RELIEF - 9
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`1000 SECOND AVENUE, SUITE 3500
`SEATTLE, WA 98104 • (206) 393-5400
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