KEVON GLICKMAN LAW LLC UNITED STATES DISTRICT COURT ...ipcasefilings.com/wp-content/uploads/2019/08/Milkcrate.pdf · donna, Mark Ronson, Bun B, Mobb Deep, Lily Allen, Rakim, and Kanye

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KEVON A. GLICKMAN, ESQ. KEVON GLICKMAN LAW LLC 375 Pearl Street, Suite 1410, New York, NY 10038 [email protected]; ph: 610-761-6833 Attorney for Plaintiff UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

-------------------------------------------------------------X MILKCRATE ATHLETICS, INC.,

Plaintiff,

-against- ADIDAS NORTH AMERICA, INC., and BSE GLOBAL,

Defendant.

-------------------------------------------------------------X

Civil Action No.____________

COMPLAINT

Plaintiff, MILKCRATE ATHLETICS, INC. (hereinafter “Plaintiff”), by its attorney,

Kevon A. Glickman Law, LLC complaining of the above named Defendants ADIDAS NORTH

AMERICA, INC. and BSE GLOBAL, (hereinafter “Defendants”, “adidas” and “BSE”) alleges

as follows:

NATURE OF THE CASE

1. This is an action at law and in equity for trademark infringement and false desig-

nation of origin arising under the Trademark Act of 1946, 15 U.S.C. §§ 1051 et seq.

(1994) ("Lanham Act") and for the related claims of infringement, dilution, deceptive

business practices, and unfair competition under the statutory and common law of New

York. Plaintiff seeks injunctive relief to prevent Defendants from using Plaintiff’s name

Case 1:19-cv-07513-JSR Document 1 Filed 08/12/19 Page 1 of 26

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and registered trademarks in any way and to prevent Defendants from profiting from

Plaintiff’s goodwill and further seeks compensatory, treble and punitive damages and at-

torneys’ fees resulting from Defendants’ infringing acts.

2. Although Defendants have long been aware of Plaintiff’s rights in and to the

Plaintiff’s registered trademarks, in a transparent attempt to copy Plaintiff’s trademarks

and tread on the goodwill associated with Plaintiff’s trademarks, Defendants are offering

for sale and selling clothing and apparel, which bear and are advertised and sold using

confusingly similar imitations of Plaintiff’s trademarks. Defendants’ clothing and appar-

el is not manufactured by Plaintiff, nor are Defendants connected to or affiliated with or

authorized to use Plaintiff’s trademarks. Defendants’ merchandise is likely to cause con-

fusion and to deceive consumers and the public regarding its source, and dilutes the dis-

tinctive quality of Plaintiff’s marks.

JURISDICTION AND VENUE 3. This Court has jurisdiction over the subject matter of this action pursuant to 15

U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338(a), 1338(b), and pursuant to the principles of

supplemental jurisdiction under 28 U.S.C. § 1367.

4. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b) and (c) in that a

substantial part of the events giving rise to the claim occurred in this district and the De-

fendants reside in this district as its contacts are sufficient to subject to personal jurisdic-

tion in this district.

5. Additionally, Defendants are subject to personal jurisdiction of this Court as De-

fendants regularly transact business within the State, the Defendants have manufactured

or distributed products used or consumed within this District in the ordinary course of


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trade, the Defendants have caused substantial confusion and deception among consumers

in New York and irreparable injury to Plaintiff’s valuable reputation, goodwill, trade-

mark, name and other intellectual property assets in New York.

PARTIES

6. At all relevant times herein, Plaintiff Milkcrate Athletics, Inc. has been and re-

mains a domestic corporation organized and existing under the laws of the State of New

York, with a principal place of business at 151 First Avenue, Suite 1, New York, New

York 10003.

7. Upon information and belief, at all relevant times herein, Defendant Adidas North

America, Inc. has been and remains an Oregon corporation organized and existing under

the laws of the State of Oregon, with a principal place of business at 5055 North Greeley

Avenue, Portland, Oregon 97217.

8. Upon information and belief, at all relevant times herein, Defendant BSE Global

has been and remains a New York corporation organized and existing under the laws of

the State of New York, with a principal place of business at 168 39th St., 7th Floor,

Brooklyn, New York 11232. Until 2018 BSE Global operated as Brooklyn Sports & En-

tertainment.

9. BSE Global has owned, operated, and managed the Brooklyn Nets (the “Nets”), a

professional basketball team competing in the National Basketball Association (the

“NBA”), since 2010.

FACTS COMMON TO ALL CLAIMS FOR RELIEF

10. Plaintiff is a long established, trend setting street wear and sportswear apparel

company that has successfully positioned itself in the market of fashion forward lifestyle


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apparel and footwear. Since 1996, Plaintiff designs, manufactures, markets and sells, its

street wear, sportswear and other lifestyle apparel with distinctive designs under the

trademark MILKCRATE ATHLETICS. Since March 2006, Plaintiff has also utilized the

trademark MILKCRATE for athletic footwear.

THE “MILKCRATE” TRADEMARKS

11. Plaintiff is the owner of several federal trademark registrations, which it uses to

advertise, promote and sell its goods in interstate commerce, including:

a. the federal trademark registration for the word mark MILKCRATE, Reg. No.

4,768,355, issued by the United States Patent and Trademark Office (“PTO”) on

December 25, 2001, in International Class 25 for "clothing, namely t-shirts,

sweatshirts, hats, headwear, jackets, jeans, pants”;

b. the federal trademark registration for the word mark MILKCRATE ATHLETICS,

Reg. No. 2,522,377 issued by the PTO on December 25, 2001, for "clothing,

namely t-shirts, sweatshirts, hats, headwear, jackets, jeans, pants”;

c. the federal trademark registration for the design:

Reg. No. 2, 573,353 in class 25 for “clothing, namely t-shirts, sweatshirts,

hats, headwear, jackets, jeans”;

d. the federal trademark registration for the design:


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Reg. No. 2,717,445, in class 25 for “clothing namely t-shirt, sweatshirts, hats,

jeans, and shirts”;

e. the federal trademark registration for the mark MILKCRATE Reg. No. 3,608,409,

issued by the PTO on April 21, 2009, for “basketball sneakers”; and

f. the federal registration for the mark and design “Milkcrate Athletics

NYC/SURFACE DIVISION”, Reg. No. 3,817,037,

in Class 25 for “clothing, namely, T-shirts, sweatshirts, hats, jeans, and

shirts.” The design part of the mark prominently features the depiction of a

milkcrate; (collectively the “Milkcrate Trademarks”).

12. Plaintiff has been continuously and exclusively using its Milkcrate Trademarks in

commerce for at least twelve years (12), some for twenty-two (22) years, by virtue of the

sale of its goods bearing and advertised under its Milkcrate Trademarks, specifically

clothing such as t-shirts, hats, sweatshirts and shirts. As such, Plaintiff’s products have

become increasingly well-known in the basketball community, fashion industry, pundits

of hip hop (rap) music, and to mass consumers in general.


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13. Additionally, since the inception of the Milkcrate brand of products, Plaintiff has

invested substantial time, money, resources and hard work to ensure that Plaintiff offers

high quality goods to customers and as such Plaintiff has established substantial goodwill

in New York, throughout the United States and Europe in its name and the Milkcrate

Trademarks.

14. Through its hard work and significant investment into the quality of its goods,

Plaintiff’s brand has continued to grow in prosperity, respect and recognition. Plaintiff’s

Milkcrate products have garnered the attention of media outlets and retail stores around

the country, and its goodwill and reputation have led to branding partnerships with high

end specialty brands such as New Balance (shoes), Vans (shoes), and Beats by Dre

(headphones and audio equipment) and media, HBO’s “The Wire”.

15. Through Plaintiff’s continuous and exclusive use of the Milkcrate Trademarks,

the Plaintiff has established ownership rights of the Milkcrate Trademarks and the exclu-

sive right to use the Milkcrate Trademarks in interstate commerce in connection with the

sale of clothing.


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MILKCRATE’S HISTORY

16. Aaron LaCanfora (“LaCrate”), owner, creator, and brain child of Milkcrate Ath-

letics, was born in Baltimore, MD in 1975.

17. LaCrate, with the help of his father started the first skateboard shop in Baltimore

City in 1985 at the age of ten years old, where he sold skateboards, music mixtapes of his

own creation, and early hand-designed tee shirts which evolved into Milkcrate Athletics.

18. Since the inception of Milkcrate Athletics and the filing of the first trademark,

LaCrate and his brand have been sought after by high profile rappers, musicians, and

taste-makers as one of the most authentic street fashion brands—blending the cultures of

music and fashion into a seamless symbol of music, basketball, and athletics.

19. In 1999, Milkcrate Athletics began sponsoring numerous music shows and con-

certs for well known popular rap artists including but limited to: Eminem, A Tribe Called

Quest, Rakim, EPMD, Wu-Tang Clan, Slick Rick, and Outkast, all of whom have worn

and endorsed Milkcrate’s distinct trademarked clothing.

20. Milkcrate Athletics has produced, styled, designed, remixed, and collaborated

with such other world-renowned artists and creators, including Jay Z, Blur, Gorillaz, Ma-

donna, Mark Ronson, Bun B, Mobb Deep, Lily Allen, Rakim, and Kanye West.

21. Because Milkcrate Athletics has been and remains the clothing of choice for so

many of these popular contemporary artists, the trademarked Milkcrate logo and symbol

remains at the epicenter of cultural authenticity, connecting pop culture, sports, and

street wear.


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22. Since, 2012, Milkcrate Athletics and the trademarked Milkcrate logo have gar-

nered over one billion views on the internet, being featured in numerous music videos

and interviews as worn by several pop music and rap superstars such as Billie Elish.

DEFENDANTS AND THE INFRINGING APPAREL

23. Upon information and belief, Defendant adidas is one of the world’s leading sup-

pliers of athletic footwear, apparel and sports equipment.

24. Until 2017, Defendant adidas was the official maker and supplier of uniforms and

apparel for the NBA.

25. Defendant adidas, in partnership with Defendant BSE Global and with the name

and logo of the Brooklyn Nets, designed, manufactured and sold a series of shirts, in in-

terstate commerce, which feature and bear names and symbols that are highly similar, if

not identical with Plaintiff’s Milkcrate Trademarks (the “Infringing Apparel”). The

“Brooklyn Nets Milkcrate Tee” prominently features a milk crate and is advertised and

sold under the name “Milkcrate”.


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26. Upon information and belief the Infringing Apparel were released first released

for sale in the 2015-2016 NBA season. The Infringing Apparel was advertised for sale to

hundreds of thousands of followers through the Brooklyn Nets Twitter account on Febru-

ary 21, 2016. As of the filing of this suit, the aforementioned tweet remains present on

the Nets’ Twitter profile.

27. The Infringing Apparel were designed, manufactured, distributed, offered for sale

and sold by Defendants and are not manufactured by Plaintiff.

28. Furthermore, however confusing it may be to the public, Defendants’ Infringing

Apparel are not associated with or connected with Plaintiff, nor licensed, authorized,

sponsored, endorsed nor approved by Plaintiff in any way.

29. The Infringing Apparel sold by Defendants are similar to and compete with cloth-

ing sold by Plaintiff, are sold through overlapping channels of trade and target similar

consumers.


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30. Upon information and belief, Defendants are using designations, symbols and

names on its Infringing Apparel that are confusingly similar to Plaintiff’s Milkcrate

Trademarks.

31. Defendants’ use of these confusingly similar designations, symbols and names is

likely to deceive, confuse and mislead purchasers and prospective purchasers into believ-

ing that the Infringing Apparel sold by Defendant are co-branded by, authorized by, or in

some manner associated with Plaintiff, when they are not. The likelihood of confusion,

mistake and deception engendered by Defendants’ misappropriation of Plaintiff's Milk-

crate Trademarks is causing irreparable harm to the goodwill symbolized by the Milk-

crate Trademarks and the reputation for quality that they embody.

32. Defendants’ activities are likely to cause confusion before, during, and after the

time of purchase, because purchasers, prospective purchasers and others, viewing De-

fendants’ Infringing Apparel at the point of sale or on a wearer, are likely to mistakenly

attribute the product to Plaintiff, because of Defendants’ use of confusingly similar imita-

tions of the Plaintiff’s Milkcrate Trademarks. A simple google search buttresses the like-

lihood that Defendants’ acts may cause confusion before during and after time of pur-

chase and are likely to divert customers to the Defendants.

33. Defendants’ acts are further likely to damage the goodwill associated with Plain-

tiff’s Milkcrate Trademarks, in consumers who may perceive a defect or lack of quality

in Defendant’s products and associate them with Plaintiff. By causing such a likelihood

of confusion, mistake and deception, Defendants are inflicting irreparable harm to the

goodwill symbolized by the Milkcrate Trademarks and the reputation for quality that they

embody.


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34. Defendants began selling the Infringing Apparel well after Plaintiff established

protectable rights in the Milkcrate Trademarks.

35. Upon information and belief, Defendants began selling the Infringing Apparel af-

ter Defendants were aware of Plaintiff’s rights in and exclusive right to use the Milkcrate

Trademarks.

36. Upon information and belief, the Defendants knowingly, willfully, and intention-

ally, adopted and used confusingly similar trademarks to Plaintiff’s Milkcrate Trade-

marks without permission and without consent.

MILKCRATE EMAIL CORRESPONDENCE WITH ADIDAS: 2011 TO 2017

37. Defendants were well aware of Milkcrate Athletics, [not just due to its consistent

impact and unique presence in the worlds of fashion, music, and athletics for over 22

successive and continuous years,] but because of Lacrate’s very own polite, professional,

persistent, and passionate entreaties to the most senior adidas executives, influencers, and

decision making executives, all with the good faith hope that adidas would recognize and

collaborate with the Milkcrate Brand.

38. On July 26, 2011, Lacrate first sent a musical recording he produced to Jusepet

Rodriguez at adidas.

39. On August 5, 2013. Subject Line: Adidas X Milkcrate Basketball. Lacrate

shared his ideas, collaborations, and designs, with Daniel Roditi, Sr. (“Rotidi”) Sales

Executive, adidas Fashion Group.

40. On August 6, 2013. Subject Line: Adidas X Milkcrate Basketball. Rotidi for-

warded Lacrates email to adidas Vice President of Marketing.


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41. On Jan. 25, 2017. Badaei Barmak,(“Barmakm”) emailed Jon Wexler (“Wexler”),

Vice Pres. of Global Entertainment & Influencer Marketing for adidas.

“Jon I want to connect you with Aaron Lacrate. Aaron meet Jon, who is the VP of

Global Entertainment and Marketing for adidas.”

42. On Jan. 26, 2017. Wexler emailed Lacrate. “Thanks for your patience. I will re-

spond as soon as possible”.

43. On Feb. 28, 2017. Lacrate emailed Barmakm re: meeting in NY.

44. On April 6, 2017. Lacrate emailed Wexler. “Circling back re: your thoughts on

adidas and [recording artist] Rakim brainstorming sesh. We have some major projects in

the works for next year and would live to start some discussion with the Waxman!"

45. On April 10, 2017. Lactrate emailed Anya Valentine (“Valentine”) from adidas

regarding meeting with Brian Foresta, (“Foresta”), Global Head of Basketball for adidas,

in NYC.

46. On April 10, 2017. Lacrate emailed Foresta. “I would love to discuss working

together on the Milkcrate Basketball concept with you. It seems that you see value

there and we could share a similar vision”. “Have you seen this interview w/Kanye

talking about Rakim?”

47. On April 11, 2017. Anya Valentine of adidas emailed Lacrate regarding meeting

with Foresta.

48. On April 11, 2017. Foresta emailed Lacrate. “Can you give me more details

about Milkcrate? After that I am sure we can find time to talk or meet up”.

49. On June 14, 2017. Lacrate emailed Foresta “Lets talk Milkcrate Basketball!


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50. On June 14, 2017. Foresta emailed Lacrate regarding his “stepping away from

basketball to “help out with the fashion side of the brand and the Brooklyn Fam”

51. On June 14, 2017. Lacrate emailed Foresta, regarding working together on the

“fashion side”.

52. Upon information and belief, at the time that Lacrate was sharing his thoughts,

ideas, concepts, designs, and brand with adidas’ top fashion, sports, and marketing execu-

tives, he did so knowing he was under the protection of valid “Milkcrate” trademark reg-

istrations.



tives, he did so knowingly under the protection of good faith and fair dealing,



tives, he did so in the good faith hope that he would collaborate with, or at least be treated

professionally by, adidas, and not have his creations simply taken from him without

compensation nor recognition.

IDENTICAL NAME AND UNCANNY RESEMBLANCE IN DESIGN BETWEEN

MILKCRATE BASKETBALL AND BROOKLYN NETS MILKCRATE TEE SHIRTS SOLD

BY THE BROOKLYN NETS AND ADIDAS

55. In 2008, Aaron LaCrate first created the image of a milkcrate alongside a back-

board as a unique and original symbol for his brand and the authenticity of Milkcrate

Athletics.


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56. Later, Aaron Lacrate took his original, handmade, symbol and created a design

that was able to be printed on apparel:

57. In 2011, Aaron LaCrate updated his symbol and created an iconic tee shirt design

that is synonymous with the Milkcrate Athletics brand and a clear evolution from his

original, handmade milkcrate and backboard design from years before.


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58. In August of 2016, The Brooklyn Nets and Adidas began selling Brooklyn Nets

Milkcrate Tee Shirts. The name Milkcrate is the same and the design resemblance is un-

canny and undeniable.


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59. The Defendants’ actions have been, and unless enjoined will continue to be, in vi-

olation of federal and state law governing trademark infringement and unfair competition

and are causing irreparable harm to Plaintiff, including blurring and tarnishing of its

trademarks, loss of control over its reputation and loss of goodwill.

COUNT I

TRADEMARK INFRINGEMENT IN VIOLATION OF 15 U.S.C. §1114

60. Plaintiff repeats and incorporates by reference the allegations in paragraphs 1

through 59, as if fully set forth herein.

61. Plaintiff has continuously used its registered Milkcrate Trademarks in connection

with and to identify its apparel and to distinguish said products from similar products of-

fered by other companies, by prominently displaying said marks on its goods since 1996.

62. Defendant has infringed Plaintiff’s mark in interstate commerce by various acts,

such as the selling, offering for sale, promoting and advertising of products, namely the

Infringing Apparel using the terms “Milkcrate” and milkcrate designs. The aforemen-

tioned names and designs as used by Defendants are extremely similar, if not virtually

identical, to Plaintiff’s registered Milkcrate Trademarks.

63. Additionally Defendants were selling the same goods offered for sale and sold by

Plaintiff.

64. Defendant’s use of “Milkcrate” and the milkcrate designs in connection with ap-

parel and clothing is without permission or authority of the Plaintiff and said use is likely

to cause confusion, to cause mistake and/or to deceive the consuming public.

65. Upon information and belief, Defendants’ use of “Milkcrate” and the milkcrate

design in connection with apparel has been made notwithstanding Plaintiff’s well-known


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and prior established rights in the registered Milkcrate Trademarks and with both actual

and constructive notice of Plaintiff’s federal registration rights under 15 U.S.C. § 1072.

66. Upon information and belief, the aforesaid use constitutes willful and unlawful

trademark infringement of the registered Milkcrate Trademarks in violation of federal

law, including 15 U.S.C. §1114.

67. Upon information and belief, Defendants’ infringing activities have caused and,

unless enjoined by this Court, will continue to cause, irreparable injury and other damage

to Plaintiff’s business, reputation and good will in its federally registered Milkcrate

Trademarks. Plaintiff has no adequate remedy at law.

68. Defendants have caused and is likely to continue causing substantial injury to the

public and to Plaintiff, and Plaintiff is entitled to injunctive relief and to recover Defend-

ants’ profits, actual damages, enhanced profits and damages, costs, and reasonable attor-

neys' fees under 15 U.S.C. §§ 1114, 1116 and 1117.

COUNT II

FALSE DESIGNATION OF ORIGIN IN VIOLATION OF 15 U.S.C. §1125(a)

69. Plaintiff repeats and incorporates by reference the allegations in paragraphs 1

through 68.

70. Plaintiff has exclusively used the Milkcrate Trademarks for over twenty-two (22)

years and has established ownership in the Milkcrate Trademarks and the exclusive right

to use the Milkcrate Trademarks in interstate commerce in connection with clothing as

well as related goods and services.

71. Defendants’ use of the name “Milkcrate” and milkcrate designs in connection

with clothing and apparel constitutes a false designation of origin and a false or mislead-


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ing description and representation of fact in interstate commerce which is likely to cause

confusion and mistake, and is likely to deceive as to the affiliation, connection and/or as-

sociation of Defendants with Plaintiff and is likely to mislead consumers to believe that

the Defendants’ products, specifically the Infringing Apparel, are sponsored, approved or

somehow associated with Plaintiff.

72. By reason of the foregoing, the trade and public are likely to be and will continue

to be confused, misled, or deceived, and Plaintiff has, is now, and will continue to suffer

irreparable injury to its goodwill and reputation for which it has no adequate remedy at

law.

73. Upon information and belief, Defendants have intentionally and knowingly

adopted and used a name, mark, or false designation of origin likely to cause confusion in

the marketplace as to the source, origin, or sponsorship of the goods offered for sale and

sold by the Defendants.

74. By virtue of the foregoing, Defendants’ acts are in violation of Section 43(a) of

the Lanham Act, 15 U.S.C. § 1125(a).

75. Defendants’ acts are causing and continue to cause Plaintiff irreparable harm in

the nature of loss of control over its reputation and loss of substantial consumer goodwill.

The irreparable harm to the Plaintiff will continue, without any adequate remedy at law,

unless and until Defendants’ unlawful conduct is enjoined by this Court.

76. Upon information and belief, Defendants are using the marks “Milkcrate” and the

milkcrate design in connection with the sale and advertising of the Infringing Apparel

willfully and with knowledge that said names, and symbols are false, misleading, and de-

ceptive, and with the intent to unfairly compete with Plaintiff.


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77. Defendants’ conduct has caused, and is likely to continue causing, substantial in-

jury to the public and to Plaintiff, and Plaintiff is entitled to injunctive relief and to re-

cover Defendant's profits, actual damages, enhanced profits and damages, costs, and rea-

sonable attorneys' fees pursuant to 15 U.S.C. §§ 1125(a), 1116 and 1117.

COUNT III

NEW YORK COMMON LAW TRADEMARK INFRINGEMENT

78. Plaintiff repeats and re-alleges each of the allegations set forth in paragraphs 1

through 77 above as though fully set forth herein.

79. Plaintiff has been using the Milkcrate Trademarks since 1996, and some since

2006, both in New York State and internationally to identify and signify it as the source

of its goods and services.

80. Through Plaintiff’s extensive and continuous use and publicity the Milkcrate

Trademarks have become well-known in New York state and beyond and have earned

tremendous goodwill among New Yorkers and among individuals located around the

world.

81. Defendants’ use of the Milkcrate Trademarks, without the authorization or con-

sent of Plaintiff, in connection with its Infringing Apparel, constitutes a use in commerce

that is likely to cause confusion and mistake and to deceive consumers as to the source or

origin of the Plaintiff’s goods such that consumers may believe that Defendants’ goods

are sponsored by, endorsed by, approved by, licensed by, authorized by, or affiliated or

connected with Plaintiff.

82. By virtue of the foregoing, Defendants have infringed and continue to infringe

upon the Milkcrate Trademarks.


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83. Upon information and belief, Defendants have intentionally and knowingly

adopted and used a name, mark, or false designation of origin likely to cause confusion in

the marketplace as to the source, origin, or sponsorship of the goods offered by Defend-

ants.

84. Defendants’ acts are causing and continue to cause Plaintiff harm in the nature of

lost sales.


the nature of loss of control over its reputation and loss of substantial consumer goodwill.

The irreparable harm to the Plaintiff will continue, without any adequate remedy at law,

unless and until Defendants’ unlawful conduct is enjoined by this Court.

COUNT IV

VIOLATION OF NEW YORK GENERAL BUSINESS LAW § 360-1



87. Defendants’ use of “Milkcrate” and milkcrate designs, despite Plaintiff’s exclu-

sive use and rights in the distinctive Milkcrate Trademarks have injured and will continue

to injure Plaintiff’s business reputation and have diluted and tarnished and will continue

to dilute the distinctive quality of Plaintiff’s strong and distinctive Milkcrate Trademarks

marks by blurring the identity between the Plaintiff’s Milkcrate Trademarks and its goods

or otherwise lessening the capacity of Plaintiff’s Milkcrate Trademarks to exclusively

identify Plaintiff and its goods and/or by tarnishing the positive associations represented

by Plaintiff’s Milkcrate Trademarks.


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88. Defendants’ actions are in violation of New York General Business Law section

360-1 and are causing and continue to cause Plaintiff irreparable harm in the nature of

loss of control over its reputation and loss of substantial consumer goodwill. This irrepa-

rable harm to Plaintiff will continue, without any adequate remedy at law, unless and un-

til Defendants’ unlawful conduct is enjoined by this Court.

COUNT V

DECEPTIVE ACTS AND PRACTICES UNDER NEW YORK GENERAL BUSINESS LAW § 349



90. Defendant’s use of the “Milkcrate” name and milkcrate designs constitutes an un-

lawful and deceptive act and practice in connection with advertising, promotion, market-

ing, distribution, and sale of goods in New York.

91. Defendants’ acts, misbranding its goods and misleading consumers, have resulted

in and will continue to cause confusion and deception of the public in violation of New

York General Business Law § 349, et seq.

92. Defendants’ wrongful conduct has caused and will continue to cause irreparable

harm and injury to Plaintiff. This irreparable harm will continue, without any adequate

remedy at law, unless and until Defendants’ unlawful conduct is enjoined by this Court.

93. Upon information and belief, Defendants’ deceptive trade practices are willful, in-

tentional and egregious, justifying statutory and treble damages in an amount to be de-

termined at trial, as well as an award of attorneys fees’ under New York General Busi-

ness Law § 349(h).


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COUNT VI

COMMON LAW UNFAIR COMPETITION



95. Defendants’ use of “Milkcrate” and milkcrate designs as a source identifier and

trademark, without the authorization or consent of Plaintiff in connection with its goods

is likely to cause confusion and mistake and to deceive consumers as to the source,

origin, sponsorship or affiliation of Defendants’ goods and constitutes trade name and

trademark infringement, unfair competition and misappropriation of Plaintiff’s goodwill

and reputation in violation of the laws of the State of New York.

96. Upon information and belief, Defendants have adopted and used “Milkcrate” and

the milkcrate designs as a trade name and trademarks in bad faith with the intent to trade

off of Plaintiff’s goodwill. Defendants adopted and continued to use this name with

knowledge of Plaintiff’s many years of exclusive use of its Milkcrate Trademarks. De-

spite this knowledge and the fact that Defendants could provide goods and services under

another name, it decided instead to misappropriate Plaintiff’s name and use it as its own.


the nature of loss of control over its reputation, and loss of substantial consumer good-

will. This irreparable harm to Plaintiff will continue, without any adequate remedy at

law, unless and until Defendants’ unlawful conduct is enjoined by this Court.


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WHEREFORE, Plaintiff Milkcrate Athletics, Inc. prays that:

1. Defendants and all agents, officers, employees, representatives, successors, as-

signs, attorneys, and all other persons acting for, with, by, through, or under authority from De-

fendants, or in concert or participation with Defendants, and each of them, should be perma-

nently enjoined, from:

a. using any of the Milkcrate Trademarks, or any other copy, repro-

duction, or colorable imitation or simulation of Plaintiff's trademarks on or in connection with

Defendants’ goods or services;

b. using any trademark, service mark, name, logo, design or source

designation of any kind on or in connection with Defendants’ goods or services that is a copy,

reproduction, colorable imitation, or simulation of, or confusingly similar to, or in any way simi-

lar to the trademarks, service marks, names, or logos of Plaintiff, including the Milkcrate Trade-

marks;

c. using any trademark, service mark, name, logo, design or source

designation of any kind on or in connection with Defendants’ goods or services that is likely to

cause confusion, mistake, deception, or public misunderstanding that such goods or services are

produced or provided by Plaintiff, or are sponsored or authorized by or in any way connected or

related to Plaintiff;

d. passing off, palming off, or assisting in passing off or palming off,

Defendants’ goods or services as those of Plaintiff, or otherwise continuing any and all acts of

unfair competition as alleged in this Complaint;

e. Engaging in any activity constituting unfair competition with

Plaintiff, or constituting an infringement of Plaintiff’s Milkcrate Trademarks; and


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f. Registering or applying to register as a trademark, service mark,

trade name, internet domain name or any other source identifier or symbol of origin, that is at all

similar to any of the Milkcrate Trademarks, or any other mark or name that infringes on or is

likely to be confused with Plaintiff’s Milkcrate Trademarks or trade name.

2. That Defendants be required to account for all inventory of merchandise bear-

ing, sold or advertised using the name “Milkcrate” or a picture or drawing of a milkcrate that is

similar to the designs that are part of the Milkcrate Trademarks;

3. Defendants should be ordered to recall all of the Infringing Apparel and any oth-

er products bearing any of the Milkcrate Trademarks, or any other confusingly similar mark or

designation, which have been shipped by Defendants or under its authority, to any customer in-

cluding, but not limited to, any wholesaler, distributor, retailer, consignor, or marketer and also

to deliver to each customer a copy of this Court's order as it relates to said injunctive relief

against Defendants;

4. Defendants should be ordered to deliver up for impoundment and for destruction

all goods including but not limited to apparel, bags, boxes, labels, tags, signs, packages, recep-

tacles, advertising, sample books, promotional material, stationery or other materials in the pos-

session, custody, or under the control of Defendants that are found to adopt, to infringe, or to

dilute any of Plaintiff's Milkcrate Trademarks or that otherwise unfairly compete with Plaintiff

and its products and services;

5. That Defendants account to and pay Plaintiff for all of Defendants’ profits, gains

and sums arising from the acts of infringement and unfair competition alleged herein, including

that Plaintiff should be awarded all damages caused by the acts forming the basis of this Com-

plaint;




Documents

KEVON GLICKMAN LAW LLC UNITED STATES DISTRICT COURT ...ipcasefilings.com/wp-content/uploads/2019/08/Milkcrate.pdf · donna, Mark Ronson, Bun B, Mobb Deep, Lily Allen, Rakim, and Kanye