Case 1:12-cv-03679-NRB Document 1

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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ROMANIAN-AMERICAN CHAMBER OF COMMERCE, INC. (a New York Corporation), COMPLAINT FOR TRADEMARK INFRINGEMENT
:

Plaintiff, -againstROMANIAN-AMERICAN CHAMBER OF COMMERCE, INC. (a Florida corporation) and ROMANIA - USA CHAMBER OF COMMERCE OF FLORIDA, INC., Defendants.

Civi~kc : : : .

No

g~

JURY TRIAL DEMANDED

Plaintiff, Romanian-American Chamber of Commerce, Inc. ("RACC NY" or "Plaintiff), by its attorneys, Herzfeld & Rubin, P.C., as and for its complaint against defendants American Chamber of Commerce, Inc. ( RACC FL ) and Romama Commerce of Florida, Inc. ("RUSACC") (collectively, "Defendants"), alleges .Parties 1. Plaintiff RACC NY is a not for profit corporation organized and existing undel

the laws of the State of New York, having a place of business at 125 Broad Street, New York, New York 10004. 2. Defendant RACC FL, upon reformation and behe, is a not fo~/ profit corporation

or other entity organized and existing under the laws of the State of Florida, and has a place of 2 business at 1581 NW 132 Ave Pembroke P~nes, Florida 330 8. 3. Defendant RUSACC, upon information and belief, is an entity related to

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defendant RACC FL.

Jurisdiction 4, This Court has original jurisdiction pursuant to 28 U.S.C. 1331 and 28 U,S.C.

1338(a) because this action arises under the trademark laws of the United States. (15 U.S.C, 1121, ct ~.). This Court also has original jurisdiction over the claim for unfair competition pursuant to 28 U,S,C, 1338(b). This Court has personal jurisdiction over Defendants because the unlawful acts complained of resulted in injuries to persons or property within New York state and Defendants regularly conduct and solicit business within New York State and/or expect or should reasonably expect the unlawful acts complained of to have consequences in New York State and derive substantial revenue from interstate or international commerce, Venu_____ee 5. Venue in this Judicial District is proper pursuant to Title 28 U.S.C. 1391,

because Defendants or their agents regularly transact and solicit business in New York and accept memberships from New York and the claim arises from substantial infringement activities and unfair competition occurring and/or causing injury within this Judicial District. FIRST CLAIM FOR RELIEF (Trademark Infringement) 6. Plaintiff is an organization the purpose of which is to promote trade and

investment between the United States and Romama through the provision of, among othe things, business, trade and networking informational services, and related activities. 7. trademarks: 2 Plaintiff is, and at all times relevant hereto has been, the owner of the following

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a. United States Trademark Registration No. 2521779, registered December 21, 2001 for the sarviee mark "Romanian-Ameriean Chamber of Commerce"; b. United States Trademark Registration No. 3912829, registered February 1,2011 for the design service mark "Romanian Amariean Chamber of Commerce - since 1990" claiming the colors blue and red as feature of the mark. e. United States Trademark Registration No. 4022675, registered September 6, 2011 for the service mark "RACC". A copy of the certificates of such registrations by the Trademark Electronic Search System of the United States Patent and Trademark office is attached as Exhibit A and such registrations are valid and subsisting, unrevoked and uneancelled. 8. Plaintiff has had substantial sales, advertising and promotion of the services using

the aforementioned trademarks (the "Marks") continuously since 1990. Plaintiff has invested substantial sums in promoting its services under the Marks and aneh Marks have acquired secondary meaning. 9. Defendant RACC FL, upon information and belief, registered the domain name

http://raecflofida.com/through which it and/or RUSACC operate a website using the Marks or confusing variations thereof, in combination with the red and blue colors, in connection with Defendants services, which use amounts to infringement of Plaintiffs Marks and a violation of 15 U.S.C. 1125, among other protective statutes and rules of common law. 10. On information and belief, Defendants infringement has been willful. Defendants are intentionally trying to take advantage of Plaintiff s name and Marks by using a confusingly similar name in a similar business providing similar services, having the same limited market and the same limited group of potential clients. 3

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11. Plaintiff has notified Defendants in writing of the infringement and has requested that Defendants cease and desist from infringing on Plaintiffs Marks. Defendants have refused to discontinue their infringing use despite the written demand by Plaintiff. 12. The infringement complained of herein has damaged Plaintiff and is causing

confusion to the public and to the clients and potential clients of Plaintiff. SECOND CLAIM FOR RELIEF (Unfair Competition) 13. Repeats and realleges paragraphs 1 through 1O above as if fully set forth herein. 14. Plalntiffhas conthmously invested substantial effort, industry and funds in building recognition of its Marks and services in the Romanian-American community and in related groups doing business with similar groups and with Romauian interests. 15. Defendants, by intentionally seeking to confuse the public, and the prospective and actual clients, contacts and customers of plaintiff, are seeking to unfairly trade on Plaintiffs established name, reputation and good will. 16. Defendants have engaged in deceptive and unfair trade practices by, among other

things, using a trade name which is similar and confusing to plaintiffs and maldng false and misleading statements on Defendants website concerning, among other things, Defendants existing activities and services. 17. Defendants acts have resulted in actual confusion by actual and prospective clients of Plaintiff, to Plaintiffs detriment. 18. The acts of Defendants eoustitute unfair competition and unfair business practices

as against Plaintiff, and have damaged Plaintiffs business, reputations and good will. 19. Defendants will continue to damage and unfairly compete with Plaintiff unless 4

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enjoined, and Plaintiffis without an adequate remedy at law. WHEREFORE, Plaintiff RACC requests judgment against Defendants as follows: A. Declaring that Plaintiffs United States Trademark Registrations Ntmabers

2521779, 4022675 and 3912829 are valid and have bean infringed by Defandants; B. Permanently enjoining Defendants from any further infringement, and speeifieally

enjoining Defendants from using any name or mark or symbol, in print or in electronic media or otherwise containing the words "American" and "Romanian, in eonjmaetion with the phrase "Chamber of Commerce", or any other similar name or variation thereof confusingly similar to Plaintiffs Marks; and further enjoining Defendants from making or posting or publishing false or misleading statements concerning Defendants activities or services, either on Defendants website or by any other manner of publishing or communication in print or in electronic media or otherwise; C. Transferring ownership and or eontrol &the domain name http://raccflorida.com/

to Plaintiff; D. Ordering an accounting and an award of damages to compensate Plaintiff for

infringement and unfair competition; Awarding increased damages for the willful infringement pursuant to 15 U.S.C. 1117; F. Awarding Plainfiffthe amount ofitscosts ofthissuitanditsreasonableaRorneys

fees pursuanttol5U.S.C. lll7;and

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G.

Awarding such other and further relief as the Court may deem just and proper.

Dated: New York, New York May 7, 2012 Herzfeld & Rubin, P.C. Attorneys for Plaintiff Romanian-A~eraerican /~ Chamber &qCommerce~/

1~5 Broad S~et New York, NY 10004 (212) 471-8500

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X -r"

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~Inite~ ~t~te~ ~tent ~nb ~r~bem~rl~

Reg. No. 3,912,829 Registered Feb. 1, 2011 Int. CI.: 35

SERVICE MARK PRINCIPAL REGISTER

MEYER, MAP, K (UNITED STATES INDIVIDUAL) C/O HERZFELD & RUBIN, PC, 40 WALL STREET NEW YORK, NY 10005 FOR: BILATERAL BUSINESS NETWORKING AND INFORMATIONAL SERVICES, IN CLASS 35 (U,S, CLS. 100, 101 AND 102). FIRST USE 2-0-1990; IN COMMERCE 2-0-1990. OWNER OF U.S. REG. NO. 2,521,779. TIlE COLOR(S) BLUE AND RED IS/ARE CLAIMED AS A FEATURE OF THE MARK. THE MAP, K CONSISTS OF THE WORDS "SINCE 1990* IN RED COLOR, "ROMAN]AN" IN BLUE COLOR, "AMERICAN" IN RED COLORAND "CHAMBER OF COMMERCE" IN BLUE COLOR. A VERTICAL LINE IN BLUE SEPARATES THE WORDING "SINCE 1990" FROM nROMANIAN AMERICAN CHAMBER OF COMMERCE". SEC. 2(~). SER. NO, 77-850,838, FILED 10-16-2009. NAAKWAMA Abrg2,AH, EXAMINING ATTORNEY

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Int. CL: 35 Prior U.S. Cls.: 100, 101 and 102 United States Patent and Trademark Office SERVICE MARK PRINCIPAL REGISTER Reg. No. 2,521,779
Registered Dec. 25, 2001

ROMAN]AN-AMERICAN CHAMBER OF COMMERCE

.MEYER, MARK A. (UNITED STATES CITIZEN) C/O HERZFELD & RUBIN, P.C. 40 WALL STREET NEW YORK, NY 10005 FOR: CHAMBER OF COMMERCE SERVICES, NAMELY, FOSTERING AND PROMOTING THE BUSINESS AND INDUSTRIAL INTERESTS OF ROMANIAN AND AMERICAN INDMDUALS AND COMMERCIAL ENTITIES THROUGH THE PROVISION OF BUSINESS AND TRADE INFORMATIONAL SERVICE~, IN ClaSS 35 CO.S. CLS, 100, 101 AND 102),

FIRST USE 2-0-1990; IN COMMERCE 2-0-1990. NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CHAMBER OF COMMERCE", APART FROM THE MARK AS SHOWN.

SEC. 2(~.
SER. NO, 75-915,~9, FILED 2-2-2000, ANNE ENDIEVERI, EXAMI2~ING ATI~OKNEY

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RACC
Reg. No. 4,022,675 Registered Sep. 6, 2011 Int. CI.: 35
SERVICE MARK PRINCIPAL REGISTER FOR: CHAMBER OF COiVEvIERCE SERVICES, NAMELY, FOSTERING AND PROMOTING THE BUSINESS AND INDUSTRIAL INYERESTS OF ROMANIAN AND AMERICAN INDIVIDUALS AND COMMERCIAL ENTHIES THROUGH THE PROVISION OF BUSINESS, TRADE NETWORKING, AND INFORMATIONAL SERVICES, IN CLASS 35 0A.S. CLS. 100, 101 AND 102). FIRST USE 2-0-1990; IN COMMERCE 2-0-1990. THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT, STYLE, SIZE, OR COLOR. SER. NO. 85-240,917, FILED 2-12-2011. K1MBERLY FRYE, EXAMINING ATTOIGNEY MEYER, MARK A. (HNITED STATES INDIVIDUAL) HERZFF, LD & RUBIN, 125 BROAD STREET NEW YORK, NY 10004

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REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS. Requirements in the First Ten Years* What and When to File: First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date. See 15 U.S.C. 1058, 114 lk. If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period, calculated from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a federal court. Second Filing Deadline: You must file a Declaration of Use (or Excusable Noanse) and an Application for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. 1059. Requirements in Successive Ten-Year Periods* What and When to File: You must file a Declaration of Use (or Excusable Nonuse) and anAppilcation for Renewal between every 9th and 10th-year period, calculated from the registration date.* Grace Period Filings* The above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee. The United States Patent and Trademark Office (USPTO) will NOT send you any fl~tare notice or reminder of these filing requirements, *ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an extension of protection to the United States undar the Madrid Protocol mnst timely file the Declarations of Use (or Excusable Nonnse) referenced above directly with the USPTO. The time periods for filing are based on the U.S. registration date (not the international registration da~). The deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for nalianaiiy issued registrations. See 15U.S.C. 1058, l141k. However, owners ofintemalionalregistrations do not filerenewalappficalions at the USPTO. Instead, the holder must tile a renewal of the underlying international registration at the International Bureau of the World Intellectanl Property Organization, under Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calctdated ~om the date of the international registration. SeeI5U.S.C.ll41j. Formoreinformationandrenewalformsfortheintematianairegistration, see http://www.wipo.int/madrid/en/. NOTE: Fees and rcqnircments for maintaining registrations are subject to chaage. Please check the USPTO webaite for further information. With the exception of renewal applications for registered extensions of protection, you can file the registration maintenance documents referenced above online at http://www.uspto.gov.

Page: 2 / RN # 4,022,675

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Int. CI.: 35 Prior U.S. Cls.: 100, 101 and 102 United States Patent and Trademark Office SERVICE MARK PRINCIPAL REGISTER Reg. No. 2,521,779
Registered Dee. 25, 2001

ROMANIAN-AMERICAN CHAMBER OF COMMERCE

.MEYER, MARK A. (U~ITED STATES CITIZEN) C/O HERZFELD & RUEIN, P.C, 40 WALL STREET NEW YORK, NY 10005 FOR: CHAMBER OF COMMERCE SERVICES, NAMELY, FOSTERING AND PROMOTING THE BUSINESS AND INDUSTRIAL INTERESTS OF ROMANIAN AND AMERICAN INDIVIDUALS AND COMMERCIAL ENTITIES THKOUGH THE PROVISION OF BUSINESS AND TRADE INFORMATIONAL SERVICES, 1N CLASS 35 (U.S, CLS. 100, 101 AND 102).

FIRST USE 2-0-1990; IN COMMERCE 2-0-1990. NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CHAMBER OF COMMERCE", APART FROM THE MARK AS SHOWN. SEC. SER. NO. 75-915,469, FILED 2-2-2000. ANNE ENDIEVERI, EXAMINING ATIOILNEY

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UNITED STATES.DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

ROMANIAN-AMERICAN CHAMBER OF COMMERCE, INC. (a New York Corporation),

Plaintiff.

-againstROMANIAN-AMERICAN CHAMBER OF COMMERCE. INC. (a Florida Corporation) and ROMANIAUSA CHAMBER OF COMMERCE OF FLORIDA INC. Defendants

SUMMONS AND COMPLAINT FOR TRADENARK INFRINGEMENT

HERZFELD & RUBIN. P.C,

Attorneys for Plaintiffs Office and Post Office Address. Telephone, Facsimile 125 BROAD STREET NEWYORK NY 10004 TELEPHONE {~1~) 471-8500

Certified Pursuant to Rule 130=1.1-a

By: Print name beneath Attorney(s) for

Service of a copy of the within Dated.

Attorney(s)

is hereby admitted.

Sir: Please take nouce that the within is a ~cert~fied) true copy of a duly entered in the office of the clerk of the within named court on that an order settlement to the HON. of the within named court, a~ 20 on Dated. 20

at

of which the within is a true copy will be presented for one of the judges M.

HERZFELD &RUBIN P.C.

Office and Post Office Address. Telephone Facsimile eB BROAD STREET Attotaley(s) for