Britannica trademark complaint.pdf

JUDGE COTEJS 44C/SDNYREV. 4/2014

CIVIL COVEl15 a 02676: 7 2015The JS-44 civilcover sheet and the information contained herein neither replace nor supplement the filing and sefvice of' "

pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by theJudicial Conference of the United States in September 1974, is required for use of the Clerk of Court for the purpose ofinitiating the civil docket sheet.

PLAINTIFFSGregory A. Lewis and Britannica Capital Partners, LLC26 Broadway, Suite 934, New York, NY 10004

ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBERJeffrey Sonnabend, SonnabendLaw, 600 Prospect Avenue, Brooklyn, NY11215

DEFENDANTSMalgazorta Madej, Suite 94, 22 Notting Hill Gate, London, W11 3JE, UKKingsley Ventures Corp., 309 N Huber Drive, Casper WY 82609Sanjay Gupta (address unknown)ATTORNEYS (IF KNOWN)

CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE A BRIEFSTATEMENT OF CAUSE)(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)

Trademark infringement/invalidity

Has this action, case, or proceeding, or one essentially the same been previously filed in SDNY atany time? NoZjVesLJjudge Previously AssignedIf yes,wasthis case Vol. fj Invol. fj Dismissed. No fj Yes fj] If yes, give date &Case No.

No 0 Yes IS THIS AN INTERNATIONAL ARBITRATION CASE?(PLACE AN [x] IN ONE BOXONLY)

TORTS

NATURE OF SUIT

ACTIONS UNDER STATUTES

CONTRACT PERSONAL INJURY PERSONAL INJURY[ ] 367 HEALTHCARE/

FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES

[ 1375 FALSE CLAIMS[ ]400 STATE11110 INSURANCE [ J 310 AIRPLANE PHARMACEUTICAL PERSONAL [ ] 625 DRUG RELATED [ ] 422 APPEAL[]120 MARINE [ ] 315 AIRPLANE PRODUCT INJURY/PRODUCT LIABILITY SEIZURE OF PROPERTY 28 USC 158 REAPPORTIONMENT[]130 MILLER ACT LIABILITY [ ] 365 PERSONAL INJURY 21 USC 881 [ ] 423 WITHDRAWAL [ ] 410 ANTITRUST[ 1140 NEGOTIABLE [ ] 320 ASSAULT, LIBEL& PRODUCT LIABILITY [ ] 690 OTHER 28 USC 157 [ ] 430 BANKS & BANKING

INSTRUMENT SLANDER [ ] 368 ASBESTOS PERSONAL [ ] 450 COMMERCE[ ]150 RECOVERY OF [ ] 330 FEDERAL INJURY PRODUCT [ ] 460 DEPORTATION

OVERPAYMENT & EMPLOYERS' LIABILITY PROPERTY RIGHTS [ ] 470 RACKETEER INFLUENFORCEMENT LIABILITY ENCED & CORRUPTOF JUDGMENT [ ] 340 MARINE PERSONAL PROPERTY [ ] 820 COPYRIGHTS ORGANIZATION ACT

[ ] 151 MEDICARE ACT [ ] 345 MARINE PRODUCT [ ] 830 PATENT (RICO)[ ] 152 RECOVERY OF LIABILITY [ ] 370 OTHER FRAUD fc] 840 TRADEMARK [ ] 480 CONSUMER CREDIT

DEFAULTED [ ] 350 MOTOR VEHICLE [ ] 371 TRUTH IN LENDING [ ] 490 CABLE/SATELLITE TVSTUDENT LOANS [ ] 355 MOTOR VEHICLE(EXCL VETERANS) PRODUCT LIABILITY SOCIAL SECURITY [ ] 850 SECURITIES/

[ 1153 RECOVERY OF [ ] 360 OTHER PERSONAL COMMODITIES/OVERPAYMENT INJURY [ ] 380 OTHER PERSONAL LABOR [ ] 861 HIA (1395ff) EXCHANGEOF VETERAN'S [ ] 362 PERSONAL INJURY- PROPERTY DAMAGE [ ] 862 BLACK LUNG (923)BENEFITS MED MALPRACTICE [ ] 385 PROPERTY DAMAGE [ ] 710 FAIR LABOR [ ] 863 DIWC/DIWW (405(g))

[1160 STOCKHOLDERS PRODUCT LIABILITY STANDARDS ACT [ ] 864 SSID TITLE XVISUITS [ ] 720 LABOR/MGMT [ ] 865 RSI (405(g)) [ ] 890 OTHER STATUTORY

[ 1190 OTHER PRISONER PETITIONS RELATIONS ACTIONSCONTRACT [ ] 463 ALIEN DETAINEE [ ] 740 RAILWAYLABOR ACT [ ]891 AGRICULTURAL ACTS

[1195 CONTRACT [ ] 510 MOTIONS TO [ ] 751 FAMILYMEDICAL FEDERAL TAX SUITSPRODUCT ACTIONS UNDER STATUTES VACATE SENTENCE LEAVE ACT (FMLA)LIABILITY 28 USC 2255 [ ] 870 TAXES (U.S. Plaintiff or [ ] 893 ENVIRONMENTAL

[ ] 196 FRANCHISE CIVIL RIGHTS [ ] 530 HABEAS CORPUS [ ] 790 OTHER LABOR Defendant) MATTERS[ ] 535 DEATH PENALTY LITIGATION [ ]871 IRS-THIRD PARTY [ ] 895 FREEDOM OF

[ ] 440 OTHER CIVIL RIGHTS(Non-Prisoner)

[ ] 540 MANDAMUS & OTHER [ ] 791 EMPL RET INC 26 USC 7609 INFORMATION ACTSECURITY ACT [ ] 896 ARBITRATION

REAL PROPERTY [ ] 899 ADMINISTRATIVE[J 210 LAND

CONDEMNATION

[ ] 441 VOTING[ ] 442 EMPLOYMENT[ ] 443 HOUSING/

PRISONER CIVIL RIGHTSIMMIGRATION

[ ] 462 NATURALIZATIONPROCEDURE ACT/REVIEW ORAPPEAL OF AGENCY DECISION

[ ] 220 FORECLOSURE ACCOMMODATIONS [ ] 550 CIVIL RIGHTS APPLICATION [ ] 950 CONSTITUTIONALITY OF[ I 230 RENT LEASE & [ ] 445 AMERICANS WITH [ ] 555 PRISON CONDITION [ ] 465 OTHER IMMIGRATION STATE STATUTES

EJECTMENT DISABILITIES - [ ] 560 CIVIL DETAINEE ACTIONS[ I 240 TORTS TO LAND EMPLOYMENT CONDITIONS OF CONFINEMENT[ I 245 TORT PRODUCT

LIABILITY

[ ] 446 AMERICANS WITHDISABILITIES -OTHER

[ ] 290 ALL OTHERREAL PROPERTY

[ ] 448 EDUCATION

Checkifdemanded in complaint:

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DEMAND $_ OTHER

Check YES onlyifdemandedincomplaintJURY DEMAND: M YES LhlO

DO YOU CLAJM THIS CASE IS RELATED TO A CIVIL CASE NOW PENDING IN S.D.N.Y.?

JUDGE DOCKET NUMBER

NOTE: You must also submit at the time of filing the Statement of Relatedness form (Form IH-32).

f(PLACEANxINONEBOXONLY) ORIGIN

E 1 Original L"] 2 Removed from II 3 Remanded d 4 Reinstated or Q 5 Transferred from 6 Multidistrict 7 Appeal to DistrictProceeding state Court from Reopened (Specify District) Litigation Judgefrom

II ~ ADDellate Magistrate JudgeLJ a. all parties represented Court Judgment| | b. At least one

party is pro se.

(PLACEANxINONEBOXONLY) BASIS OF JURISDICTION IFDIVERSITY, INDICATE 1 U.S. PLAINTIFF 2 U.S. DEFENDANT [x] 3 FEDERAL QUESTION 4 DIVERSITY CITIZENSHIP BELOW.

(U.S. NOT A PARTY)

CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)(Place an [X] in one box for Plaintiff and one box for Defendant)

PTF DEF PTFDEF PTF DEFCITIZEN OF THIS STATE []1 []1 CITIZEN OR SUBJECT OF A [ ] 3 [ ] 3 INCORPORATED and PRINCIPAL PLACE []5 []5

FOREIGN COUNTRY OF BUSINESS IN ANOTHER STATE

CITIZEN OF ANOTHER STATE []2 []2 INCORPORATED or PRINCIPAL PLACE []4[]4 FOREIGN NATION []6 []6OF BUSINESS IN THIS STATE

PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)Gregory A. Lewis and Britannica Capital Partners, LLC, 6 Broadway, Suite 934, New York, NY 10004(New York County)

DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)Malgazorta Madej, Suite 94, 22 Notting Hill Gate, London, W11 3JE, UKKingsley Ventures Corp., 309 N Huber Drive, Casper WY 82609

DEFENDANT(S) ADDRESS UNKNOWNREPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN

RE91BENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:

Sanjay Gupta

Check one: THIS ACTION SHOULD BE ASSIGNED TO: WHITE PLAINS \x\ MANHATTAN(DO NOT check either box if this a PRISONER PETITION/PRISONER CIVIL RIGHTSCOMPLAINT.)

DATE 4/7/2015 SIGNATjfoE OF ATTORNEY OF RECORD ADMITTED TO PRACTICE IN THIS DISTRICTM l/j

JUDGE COTE

UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF NEW YORK15GREGORY A. LEWIS AND BRITANNICACAPITAL PARTNERS, LLC,

Plaintiffs,

v.

MALGORZATA MADEJ, KINGSLEYVENTURES CORP. AND SANJAY GUPTA,

Defendants.

fh9 fx-ajf

-cv-

COMPLAINT

Jury Trial Demanded

en

" -\.

The Parties

1. Plaintiff Gregory A. Lewis is an individual with an address of c/o Britannica

Capital Partners, LLC, 26 Broadway, Suite 934, New York, NY 10004.

2. Plaintiff Britannica Capital Partners, LLC is a New York State LLC with an

address of 26 Broadway, Suite 934, New York, NY 10004.

3. Defendant Malgazorta Madej is an individual stated to be domiciled in the United

Kingdon with an address of Suite 94, 22 Notting Hill Gate, London, Wl 1 3JE, UK.

4. Defendant Kingsley Ventures Corp. is a Wyoming corporation with a stated place

of business at 309 N Huber Drive, Casper WY 82609.

5. Defendant Sanjay Gupta is an individual of unknown domicile.

Nature Of Action

6. This is an action for declaratory judgment of trademark invalidity and

cancellation under 15 U.S.C. 1063, brought pursuant to the Declaratory Judgment Act, 28

U.S.C. 2201-2202.

7. This is further and/or in the alternative an action for trademark infringement under

section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).

8. This is further and/or in the alternative an action for Prima Facie Tort under New

York common law.

9. This is further and/or in the alternative an action for civil conspiracy under New

York common law.

Jurisdiction And Venue

10. Subject matter jurisdiction is proper pursuant to 28 U.S.C. 1331 and 1338.

11. Subject matter jurisdiction is further proper pursuant to 28 U.S.C. 1332(a)(1),

(2) and (3).

12. Personal jurisdiction is proper under CPLR 301 and 302(a)(i) and (ii).

13. Venue is proper pursuant to 28 U.S.C. 1391(b)(1) and (2) and 28 U.S.C.

1391(c)(3).

Facts

14. plaintiffs' use of the BRITANNICA mark

15. Plaintiffs provide investment consulting and management services.

16. No later than December, 2011, Plaintiffs1 began licensing and other preparatory

actions necessary for providing such services under the mark BRITANNICA CAPITAL

PARTNERS LLC and/or BRITANNICA CAPITAL.

1 Prior to and in preparation of formation, Plaintiff Britannica Capital Partners, LLC, operatedvia its principal, Plaintiff Gregory A. Lewis. Thus, Mr. Lewis has been included as co-plaintiff here. All references to "Plaintiffs" contemplates the actions of Mr. Lewis prior to theLLC formation and the LLC thereafter, unless expressly stated to the contrary.

17. Among other preparation, Plaintiffs contacted the Financial Industry Regulatory

Authority ("FINRA"), the largest independent regulator for all securities firms doing business in

the United States. As part of the registration process with FINRA, Plaintiffs requested on

January 24, 2012, that FINRA check the availability of and if available reserve the name

BRITANNICA CAPITAL PARTNERS LLC.

18. On February 9, 2012, FINRA Registration & Disclosure Manager Damian

Williams wrote to Plaintiffs confirming that the name BRITANNICA CAPITAL PARTNERS

LLC was available for registration with FINRA (i.e., no other firm was registered with FINRA

having a confusingly similar name), and the name would be reserved for 120 days by FINRA.

19. Plaintiffs understands that FINRA has responsibility for certifying and registering

every financial services firm in the United States, and therefore has record of the name if every

such firm. As a result, by confirming the availability of the name BRITANNICA CAPITAL

PARTNERS LLC, FINRA was necessarily confirming that Defendants were not operating under

that name in the United States at that time.

20. In the December, 2011 and early 2012 time period, Plaintiffs had conversations

with prior clients (i.e., clients of Plaintiffs from previous engagements) in which Plaintiffs

informed the clients that Plaintiffs would be providing investment related services under the

mark BRITANNICA in the near future, once all regulatory compliance had been completed.

21. In the December 2011 and early 2012, Plaintiffs enlisted the services of Luxor

Financial Group ("Luxor") to assist Plaintiffs in meeting Plaintiffs' regulatory compliance

requirements. In connection with this effort, Plaintiffs disclosed to Luxor Plaintiffs' intention to

use the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL in

connection with Plaintiffs' services. Luxor undertook to provide services to Plaintiffs to

establish Plaintiffs' business under that name.

22. On or about March 28,2012, Plaintiffs established BRITANNICA CAPITAL

PARTNERS, LLC and BRITANNICA HOLDINGS, LLC as New York State limited liability

companies.

23. Shortly after forming the above mentioned LLC's, Plaintiffs entered into a lease

for office space under the name BRITANNICA CAPITAL PARTNERS, LLC.

24. Plaintiffs have been providing investment related services under the

BRITANNICA mark since the firm's registration with FINRA.

25. Plaintiffs applied for registration of the mark BRITANNICA in application serial

no. 85/680188. The examining attorney identified Defendants' trademark application as being an

"earlier filed application^ that may bar registration." The examining attorney concluded that

"there may be a likelihood of confusion between Defendants' [i.e., the present Plaintiffs'] mark

and" the present Defendants' mark.

26. The registration process through FINRA (and accordingly through the SEC) under

the name BRITANNICA CAPITAL PARTNERS, LLC and/or BRITANNICA CAPITAL,

continued, and final approval and registration was completed by June 21, 2013.

27. Based in part upon Plaintiffs' review of the FINRA registration process and the

timing and nature of Defendants' activities detailed below, Plaintiffs understands that Defendants

learned of Plaintiffs' 2011 and early 2012 efforts to establish a financial services business under

the marks BRITANNICA, BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA

CAPITAL and has undertaken to frustrate Plaintiffs' ability to use and register those marks.

Defendants' Fraudulent BRITANNICA Mark

28. Defendants filed the trademark application for registration of the mark

BRITANNICA, serial no. 85/540559, on February 12, 2012. The application claimed a date of

first use of February 12, 2012, the same day as the application filing.

29. The trademark application was signed by Sanjay Gupta.

30. According to whois records, Defendants obtained the domain

on February 24, 2012, twelve days after its stated date of first use. At

some time thereafter, Defendants began operating a website at

advertising and promoting investment related services.

31. Defendants' website states and/or stated that "Britannica is an investment

advisory firm founded in 2012." Defendants' website bears and/or bore a copyright notice of

2012.

32. On September 7, 2012, an attorney for Defendants wrote to Plaintiffs demanding

that Plaintiffs cease use of the mark BRITANNICA and that Plaintiffs abandon his pending

application for registration of that mark. In that letter, the attorney for Defendants represented

that Defendants "began using the trademark BRITANNICA at least as early as 2004 in the

United States."

33. Subsequent to the September 7, 2012 letter, Plaintiffs' attorney responded to the

Plaintiffs' attorney requesting (a) explanation for the discrepancy between the date of first use

stated in the letter and the claims made on Defendants' website regarding date of formation; (b)

explanation for the discrepancy between the date of first use stated in the letter and the date of

registration of the domain ; (c) explanation for the discrepancy between

the date of first use stated in the letter and the date of first use stated in the trademark

application; and (d) documentation of Plaintiffs' alleged use dating to 2004.

34. Defendants' counsel did not provide any explanation for foregoing requests (a),

(b) and (c), supporting the aforementioned allegations concerning Defendants' knowledge and

intent underlying its activities.

35. Defendants' counsel provided purported documentation of Plaintiffs' use dating to

2004, such documentation appearing to be fabricated, supporting the aforementioned allegations

concerning Defendants' knowledge and intent underlying its activities.

36. Defendants were aware of Plaintiffs' activities surrounding Plaintiffs' adoption of

the mark BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL at all

relevant times, including as of the filing date of Defendants' trademark application.

37. Defendants believed that its use of the applied-for mark would likely cause

confusion with Plaintiffs' use of the mark BRITANNICA, as evidenced by the aforementioned

correspondence from Defendants' attorney to Plaintiffs.

38. Plaintiffs' aforementioned activities constitute analogous use of the marks

BRITANNICA, BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL

by Plaintiffs. As a result of the analogous use, Plaintiffs has priority to the applied-for mark over

Defendants.

39. There is a likelihood of confusion between the marks BRITANNICA,

BRITANNICA CAPITAL PARTNERS LLC and/or BRITANNICA CAPITAL as used and owned

by Plaintiffs and the applied-for mark as allegedly used and applied-for by Defendants.

40. In connection with the trademark application, Defendants made the following

declaration:

The undersigned, being hereby warned that willful false statementsand the like so made are punishable by fine or imprisonment, orboth, under 18 U.S.C. Section 1001, and that such willful falsestatements, and the like, may jeopardize the validity of theapplication or any resulting registration, declares that he/she isproperly authorized to execute this application on behalf of theDefendants; he/she believes the Defendants to be the owner of thetrademark/service mark sought to be registered, or, if theapplication is being filed under 15 U.S.C. Section 1051(b), he/shebelieves Defendants to be entitled to use such mark in commerce;to the best of his/her knowledge and belief no other person, firm,corporation, or association has the right to use the mark incommerce, either in the identical form thereof or in such nearresemblance thereto as to be likely, when used on or in connectionwith the goods/services of such other person, to cause confusion,or to cause mistake, or to deceive; and that all statements made ofhis/her own knowledge are true; and that all statements made oninformation and belief are believed to be true.

41. As evidenced in part by the foregoing specifically alleged facts, Defendants knew

that, at the time of filing, Defendants were not the owner of the trademark/service mark sought to

be registered.


that, at the time of filing, Plaintiffs was using the mark BRITANNICA at the time Defendants

filed the aforementioned oath with the Trademark Office in the manner described herein, such

use creating in Plaintiffs rights to the mark that were superior to Defendants' rights to the

applied-for mark.


that, at the time of filing that its use of the applied-for mark was likely to cause confusion with

Plaintiffs' BRITANNICA mark.

44. As a result of the foregoing, Defendants knew at the time of filing the falsity of

the statement that "no other person, firm, corporation, or association has the right to use the mark

in commerce, either in the identical form thereof or in such near resemblance thereto as to be

likely, when used on or in connection with the goods/services of such other person, to cause

confusion, or to cause mistake, or to deceive."

45. As evidenced in part by the foregoing specifically alleged facts, Defendants made

the aforementioned statement with the intent to deceive the Trademark Office and procure

registration of the applied-for mark, to which Defendants were not entitled.

46. Defendants therefore fraudulently executed the declaration submitted with the

filing of the trademark application.

47. In connection with the trademark application, Defendants has submitted specimen

which is or are fabrications.

48. In connection with the trademark application, the submission of the fabricated

specimen to the Trademark Office was material because the application would not be allowed

without such submission.

49. In connection with the trademark application, Defendants made the foregoing

submission to the Trademark Office knowing of its falsity.

50. In connection with the trademark application, Defendants made the foregoing

submission to the Trademark Office with the specific intent to deceive the Trademark Office and

obtain registration of the applied-for mark.

51. For the foregoing reasons, Defendants has committed fraud in connection with the

trademark application.

52. Defendants are not and have not actually used in commerce the applied-for mark.

53. Defendants were not using the applied-for mark in commerce as of the filing date

of the application.

Defendants' Fraudulent BRITANNICA With Illustration Mark


BRITANNICA with illustration, serial no. 85730110, on September 16, 2012. The application

alleged a date of first use in commerce no later than June 1, 2004.

55. The application was signed by Malgorzata Madej.

56. Defendants are owner of copending application 85/540559 for the mark

BRITANICA.

57. Both the trademark application and application 85/540559 include the literal

BRITANNICA and no other literal element. Both the trademark application and application

85/540559 are for financial and investment related services.

58. Application filed application 85/540559 on February 12, 2012, claiming a date of

first use of February 12, 2012, the same day as that application's filing.

59. The entirety of the mark of application 85/540559 is contained in the trademark

application; that is, the literal element of the trademark application is identical to and co

extensive with the entire mark applied-for in application 85/540559. Thus, based on this identity

of literal elements and substantive identity of the claimed services of each application, the date of

first use of application 85/540559, the date of first use of the instant application and application

85/540559 must be the same.


on February 24, 2012. At some time thereafter, Defendants began

operating a website at advertising and promoting investment related

services.



2012.





United States."






the date of first use stated in the letter and the date of first use stated in the instant application;

and (d) documentation of Plaintiffs' alleged use dating to 2004.




65. Defendants' counsel provided purported documentation of Defendants' use dating

to 2004, such documentation appearing to be fabricated, supporting the aforementioned

allegations concerning Defendants' knowledge and intent underlying its activities.



relevant times, including as of the filing date of Defendants' instant application.







Defendants.




70. As a result, Defendants are not entitled to registration of the applied-for mark.

71. In connection with the instant application, Defendants made the following

declaration:

72. The undersigned, being hereby warned that willful false statements and the like somade are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and thatsuch willful false statements, and the like, may jeopardize the validity of the application or anyresulting registration, declares that he/she is properly authorized to execute this application onbehalf of the Defendants; he/she believes the Defendants to be the owner of thetrademark/service mark sought to be registered, or, if the application is being filed under 15

U.S.C. Section 1051(b), he/she believes Defendants to be entitled to use such mark in commerce;to the best of his/her knowledge and belief no other person, firm, corporation, or association hasthe right to use the mark in commerce, either in the identical form thereof or in such nearresemblance thereto as to be likely, when used on or in connection with the goods/services ofsuch other person, to cause confusion, or to cause mistake, or to deceive; and that all statementsmade of his/her own knowledge are true; and that all statements made on information and beliefare believed to be true.



be registered.





applied-for mark.









12






79. In connection with the instant application, Defendants has submitted specimen


80. The specimen purports to be portions of a brochure (or similar publication);

however, no such brochure was ever created nor distributed by Defendants. Instead, Defendants

created the alleged brochure (or similar publication) portions solely for the purpose of

submission with the instant application. The entirety of the specimen is therefore a fabrication as

it never formed a part of any brochure (or similar publication) as alleged by Defendants.

81. In connection with the instant application, the submission of the fabricated



82. In connection with the instant application, Defendants made the foregoing


83. Defendants new of the falsity because it created a document purporting to be a

portion of a brochure (or similar publication) knowing that no such brochure (or similar

publication) ever existed.

13




85. Defendants must have intended to deceive the Trademark Office because is

submitted a document purporting to be a portion of a brochure (or similar publication) knowing

that no such brochure (or similar publication) ever existed.





of the application.

89. The mark of the instant application is:

BRITANNICA

90. The mark of the instant application is described as:

91. The mark consists of the wording "BRITANNICA", and to the left of the wordingis the design of a lion-like animal with a spear-shaped tail with a flame coming from its mouth.

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92. The specimen shows the mark:

BRITANNICA"

93. The mark of the instant application as shown in the drawing and described in the

application differs substantially from the mark appearing in the specimen.

94. The mark on the drawing of the trademark application is not a substantially exact

representation of the mark on the specimen, and is thus not proper to show use pursuant to 37

C.F.R. 2.51(a).

95. Defendants has provided no specimen showing the applied-for mark.

96. Defendants are not and have not actually used in commerce the applied-for mark

as shown and described in the application.

Defendants' Fraudulent BRITANNICA CAPITAL Mark


BRITANNICA CAPITAL, serial no. 85/659514, on June 22, 2012. The application claimed a

date of first use of February 12, 2012, the same date as the application filing date for Defendants'

copending application for registration of the mark BRITANNICA , serial no. 85/540559.




15





2012.





United States."











16



allegationsconcerning Defendants' knowledge and intent underlying its activities.










Defendants.





declaration:

110. The undersigned, being hereby warned that willful false statements and the like somade are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and thatsuch willful false statements, and the like, may jeopardize the validity of the application or anyresulting registration, declares that he/she is properly authorized to execute this application onbehalf of the Defendants; he/she believes the Defendants to be the owner of thetrademark/service mark sought to be registered, or, if the application is being filed under 15U.S.C. Section 1051(b), he/she believes Defendants to be entitled to use such mark in commerce;to the best of his/her knowledge and belief no other person, firm, corporation, or association has

17

the right to use the mark in commerce, either in the identical form thereof or in such nearresemblance thereto as to be likely, when used on or in connection with the goods/services ofsuch other person, to cause confusion, or to cause mistake, or to deceive; and that all statementsmade of his/her own knowledge are true; and that all statements made on information and beliefare believed to be true.



be registered.





applied-for mark.
































19








of the application.

Defendants' Fraudulent BRITTANIC Mark

127. Defendants filed the trademark application for registration of the BRITANNIC

mark, serial no. 85/671115, on July 8, 2012. The application claimed a date of first use of

February 12, 2012, the same date as the application filing date for Defendants' copending

application for registration of the mark BRITANNICA, serial no. 85/540559 . The date of first

use was later amended to reflect an earlier date of first use of March 1, 2008.








2012.

20





United States."

















21







Defendants.





declaration:

140. The undersigned, being hereby warned that willful false statements and the like somade are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and thatsuch willful false statements, and the like, may jeopardize the validity of the application or anyresulting registration, declares that he/she is properly authorized to execute this application onbehalf of the Defendants; he/she believes the Defendants to be the owner of thetrademark/service mark sought to be registered, or, if the application is being filed under 15U.S.C. Section 1051(b), he/she believes Defendants to be entitled to use such mark in commerce;to the best of his/her knowledge and belief no other person, firm, corporation, or association hasthe right to use the mark in commerce, either in the identical form thereof or in such nearresemblance thereto as to be likely, when used on or in connection with the goods/services ofsuch other person, to cause confusion, or to cause mistake, or to deceive; and that all statementsmade of his/her own knowledge are true; and that all statements made on information and beliefare believed to be true.



be registered.

22





applied-for mark.


















23





specimento the Trademark Office was material because the application would not be allowed

















of the application.

24

Defendants' Fraudulent BRITANNIA Mark


BRITANNIA, serial no. 85/671118, on July 8, 2012. The application claimed a date of first use

of February 12, 2012, the same date as the application filing date for Defendants' copending

application for registration of the mark BRITANNICA, serial no. 85/540559. The date of first

use was subsequently amended to state a date of first use of June 1, 2004.








2012.

161. Defendants operate and/or previously operated no website in connection with the

mark BRITANNIA.





United States."

25






















26


Defendants.




170. As a result, Defendants are not entitled to registration of the applied-for mark.


declaration:

172. The undersigned, being hereby warned that willful false statements and the like somade are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and thatsuch willful false statements, and the like, may jeopardize the validity of the application or anyresulting registration, declares that he/she is properly authorized to execute this application onbehalf of the Defendants; he/she believes the Defendants to be the owner of thetrademark/service mark sought to be registered, or, if the application is being filed under 15U.S.C. Section 1051(b), he/she believes Defendants to be entitled to use such mark in commerce;to the best of his/her knowledge and belief no other person, firm, corporation, or association hasthe right to use the mark in commerce, either in the identical form thereof or in such nearresemblance thereto as to be likely, when used on or in connection with the goods/services ofsuch other person, to cause confusion, or to cause mistake, or to deceive; and that all statementsmade of his/her own knowledge are true; and that all statements made on information and beliefare believed to be true.



be registered.




27


applied-for mark.





















28



















of the application.

29

Defendants' Additional Fraudulent BRITANNICA Marks

189. In addition to the aforementioned fraudulent BRITANNICA marks, Defendants

filed applications for registration of the mark BRITANNICA, serial nos. 85/820123, 85/816239,

abd 85/815398.

190. The applications were signed by Malgorzata Madej.

191. Each of these additional fraudulent marks suffered the same fraudulent

deficiencies of the aforementioned BRITANNICA marks.

192. Each of these additional fraudulent marks concerned investment related services.

First Cause Of ActionDeclaratory Judgment Of Trademark Invalidity

193. Plaintiffs reallege the allegations contained in the above paragraphs as if stated

fully herein.

194. For each and every aforementioned trademark in which Defendants claim legally

cognizable rights, Defendants have failed to use such marks, in commerce and otherwise, in

connection with the provision of any goods and/or services, sufficient to give rise to trademark

rights therein.

195. In connection with each and every aforementioned trademark in which

Defendants claim legally cognizable rights, Defendants have sought to obtain federal registration

of such trademarks through fraud and deceit, with the intention of deceiving the Trademark

Office.

196. Defendants' assertion of trademark rights in the aforementioned marks against

Plaintiffs has given rise to an actual controversy between the parties.

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197. Plaintiffs have been and continue to be damaged by Defendants' assertion of the

aforementioned trademark rights.

198. Second Cause Of ActionTrademark Infringement


fully herein.

200. To the extent that Defendants have used the aforementioned marks, in commerce

and otherwise, in connection with the provision of any goods and/or services, such use is junior

to Plaitniffs' use of its BRITANNICA marks. Plaintiffs' rights in its BRITANNICA marks are

therefore senior to any rights Defendants' may have in the aforementioned marks.

201. Any use by Defendants of Defendants' aforementioned marks is likely to cause

confusion between Plaintiffs and Defendants.

202. Any us by Defendants of Defendants' aforementioned marks constitutes

trademark infringement of Plaintiffs' marks in violation of section 43(a) of the Lanham Act, 15

U.S.C. 1125(a).

203. Plaintiffs have been and continue to be damaged by such infringement.

Third Cause Of ActionPrima-Facie Tort/Civil Conspiracy


fully herein.

205. Defendants, jointly and severally, undertook the aforementioned acts,

intentionally and withoutjustification or right, for the malicious purposeof interfering withPlaintiffs' business, further with the specific intention to harm Plaintiffs.

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206. Defendants, jointlyand severally, conspired andagreed to undertake theaforementioned acts in concert, and did in fact act in furtherance ofthe agreement by filing the

fraudulent documents previously described, as well as additional documents in connection with

the proceedings before the Trademark Trial and Appeal Board, all ofwhich resulted in damages

to Plaintiffs.

207. The facts alleged herein support an inference that Defendants knowingly agreed

to cooperate in a fraudulent scheme, and shared a perfidious purpose.

208. Plaintiffs have been and continue to be harmed by Plaintiffs' acts.

Prayer For Relief

WHEREFORE, Plaintiffs respectfully request that the Court enter judgment in favorPlaintiffs:

a. declaring Defendants' aforementioned trademarks invalid;

b. ordering that Defendants' pending applications for trademark registration, serial nos.:

85/820123; 85/816239; 85/815398; 85/730110; 85/671118; 85/671115; 85/659514; and

85/540559 be canceled and/or abandoned with prejudice;

c. awarding actual damages to Plaintiffs for each Defendants' trademark infringement

under 15 U.S.C. 1125(a), pursuant to section 35 of the Lanham Act, 15 U.S.C. 1117(a), in anamount to be determined;

d. awarding Plaintiffs their costs and attorney's fees pursuant to section 35 of the

Lanham Act 15 U.S.C. 1117(a);

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e. ordering the destruction ofinfringing articles, including without limitation websites,

promotional materials, and printed materials, pursuant to section 34 ofthe Lanham Act, 15

U.S.C. 1116(a);

f. permanently enjoining further infringement by Defendants pursuant to section 34 ofthe Lanham Act, 15 U.S.C. 1116(a);

g. awarding actual damages to Plaintiffs for Defendants' prima facia tort and civil

conspiracy;

h. permanently enjoining Defendants and all parties acting in concert therewith fromfurther interference with Plaintiffs' business; and

i. providing all other equitable relief that the Court deems just and proper.Dated: April 7,2015

Respectfully submitted,

JerfreJy SonnaoendJonnabendLaw

600 Prospect AvenueBrooklyn, NY 11215

Attorney for PlaintiffsGregory A. Lewis andBritannica CapitalPartners, LLC

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Documents

Britannica trademark complaint.pdf