Opinion
Civil Action 21 CV 9294 (PAE)
11-23-2021
BURBERRY LIMITED; HERMES INTERNATIONAL; and LOUIS VUITTON MALLETIER, Plaintiffs, v. VARIOUS JOHN DOES, JANE DOES, and XYZ COMPANIES, Defendants.
PRELIMINARY INJUNCTION ORDER
PAUL A. ENGELMAYER, UNITED STATES DISTRICT JUDGE
This action having been commenced by Burberry Limited, Hermes International, and Louis Vuitton Malletier (collectively “Plaintiffs”) on November 10, 2021 against various Defendants Various John Does, Jane Does, and XYZ Companies, including those Defendants doing business at 209 Canal Street New York, New York, 10013; 211A Canal Street New York, New York, 10013; and 211B Canal Street New York, New York, 10013, alleging trademark counterfeiting and infringement of Plaintiffs' Federally Registered Trademarks (defined below) and charging defendants with, inter alia, trademark counterfeiting, infringement, dilution and false advertising, and a copy of the Summons, Complaint, Seizure Order, and the Amended Declaration of Counsel having been served upon the defendants during civil seizures at the following locations on November 16, 2021: 209 Canal Street New York, New York, 10013; 211A Canal Street New York, New York, 10013; and 21 IB Canal Street New York, New York, 10013, (collectively, “Defendants”);
It appearing to the Court that it has jurisdiction over the subject matter of this action, over Plaintiffs and over Defendants;
The Court having considered the Complaint and the exhibit thereto, Plaintiffs' Order To Show Cause and accompanying papers and the Defendants failing to appear at the hearing on November 23, 2021 after receiving notice of the same on November 16, 2021; and
It further appears that Defendants are, inter alia, counterfeiting and infringing Plaintiffs' Federally Registered Trademarks, in violation of 15 U.S.C, §1114 and will continue to counterfeit and infringe Plaintiffs' Federally Registered Trademarks unless restrained by Order of this Court.
Accordingly, the Court concludes as a matter of law:
1. This Court has jurisdiction over the subject matter of all counts of this action and over all the parties hereto;
2. Plaintiffs have established a prima facie case of ownership of Plaintiffs' Federally Registered Trademarks;
3. Plaintiffs are likely to prevail on the merits of this action in showing that Defendants are counterfeiting and infringing Plaintiffs' Federally Registered Trademarks in violation of 15 U.S.C. § 1114;
4. Defendants' actions have caused and will continue to cause immediate and irreparable harm, loss, and damage before a full trial on the merits can be held, in that monetary compensation will not afford adequate relief to Plaintiffs for Defendants' continuing acts of counterfeiting and trademark infringement;
5. The harm to Plaintiffs from the denial of this request for a Preliminary Injunction would outweigh the harm to the legitimate interests of Defendants against whom the Order would be issued and to any third parties; and
6. The public interest would best be served by granting this Preliminary Injunction prior to a full trial on the merits or a default judgment against Defendants.
NOW THEREFORE, it is hereby ORDERED as follows that:
1. The Defendants and their respective principals, officers, agents, servants, employees, and attorneys, and all persons in concert and participation with them are hereby restrained and enjoined, pending termination of this action:
(a) From using Plaintiffs' Federally Registered Trademarks, including but not limited to:
BURBERRY LIMITED
| TRADEMARK TRADEMARK | REGISTRATION NUMBER | REGISTRATION DATE | GOODS |
| BURBERRY | 259, 571 | 6-Aug-1929 | Piece goods - namely, cloths, and stuffs of wool, worsted, or hair, |
| BURBERRY | 260, 843 | 27-Aug-1929 | Clothing - namely, coats and topcoats formen, women, and children; jackets for men, women, and children; breeches for boys; suits for men and boys; waistcoats for men, women, and children; overalls for women and children; skirts for outer wear for women and children; capes for men, women, and children; hats and caps for men, women, and children; bonnets for children, hoods and toques for men, women, children; neckties for men, women, and children; stockings and socks for men, women, and children; braces and suspenders for men and children; belts for outer wear for men, women, and children; boots of rubber and fabric or combinations of these materials for men, women, and children; shoes and slippers of leather, rubber, and fabric or combinations of these materials for men, women, and children; gloves for men, women, and children, of leather and fabric. |
| BURBERRY | 1, 133, 122 | 15-Apr-1980 | Handbags, travelling bags, leather travelling cases, attache cases, leather briefcases, purses, pocket wallets, umbrellas. |
| BURBERRY | 1, 607, 316 | 24-Jul-1990 | Spectacles, sunglasses, fitted cases, frames and lenses, all for sunglasses or for spectacles. |
| BURBERRY | 1, 747, 765 | 19-Jan-1993 | Wrist watches and straps and bracelets therefor, and cuff links. |
| BURBERRY | 2, 624, 684 | 24-Sep-2002 | Retail store services featuring clothing, watches, sunglasses, accessories,, shoes |
| , luggage, leather goods, and fragrance | |||
| BURBERRY | 2, 629, 931 | 8-Oct-2002 | Fragrance; non-medicated toilet preparations, namely, perfumes, eau de cologne, and toilet water, cosmetic preparations for the hair, namely, shampoos, soaps for the body, shower gels and bath gels and bath foams; antiperspirants and deodorants; shaving preparations. |
| BURBERRY | 2, 875, 336 | 17-Aug-2004 | Sunglasses, combined sunglasses, spectacles, optical glasses, fitted frames and lenses for the aforesaid goods; cases and holders for the aforesaid goods; parts and fittings for all the aforesaid goods; cases and holders for portable computers and mobile telephones; watches, clocks and parts and fittings for all the aforesaid goods, wrist watches and straps and bracelets therefor and pocket watches, jewelry, imitation jewellery, tie-pins and cuff links; and jewelry boxes, hat and shoe ornaments all made of precious metal or coated therewith. |
| BURBERRY | 3, 879, 249 | 23-Nov-2010 | Articles of outer clothing, namely, coats, jackets, rainwear, ponchos, gilets, detachable coat linings, raincoats; blousons; casual coats; polo shirts; blouses; dresses; pyjamas; knitwear, namely, jerseys, jumpers, cardigans, sweaters, knitted leggings; shorts; trousers; suits; skirts; jackets; articles of underclothing, namely, boxer shorts, lingerie, loungewear, nightwear, underwear, undergarments; hosiery; headwear; footwear; sports clothing, namely, sweat pants, sweat shirts, swimwear;sports footwear; tracksuits; ready-made linings, namely, finished textile linings for garments; ties; clothing belts; wraps; scarves; shawls and stoles; gloves. |
| BURBERRY | 3, 898, 440 | 4-Jan-2011 | Articles made from material and textile, namely, bed blankets, blanket throws, children's blankets, lap blankets, towels, handkerchiefs, cushion covers. |
| BURBERRY | 4, 004, 568 | 2-Aug-2011 | Cosmetics; aftershave preparations; non-medicated preparations for the bath and shower, body care preparations, skin care preparations, nail care preparations and accessories; room fragrances; baby creams, lotions, shampoos. |
| BURBERRY | 4, 212, 001 | 25-Sep-2012 | Visual and audio recordings featuring music, video, animation, voice, still photography; digital music downloadable from the internet; custom manufacture of clothing, custom |
| manufacture of accessories, namely, bags, briefcases, handbags, wallets, purses, document holders, bags and cases for makeup, key rings, luggage, umbrellas, cases and holders for electronic devices, eyewear and cases for eyewear, belts; entertainment services, namely, production and online distribution of sound, music, and video recordings in the fields of music and fashion; providing non- downloadable music and video recordings in the fields of music and fashion for others via a global computer network; production and distribution of videos in the fields of music and fashion; design of clothing and fashion accessories for others. | |||
| BURBERRY | 510, 077 | 24-May-1949 | Clothing -namely, coats and topcoats for men, women, and children; jackets for men, women, and children; breeches for boys; suits for men and boys; waistcoats for men, women, and children; skirts for outer wear for women and children; capes for men, women, and children; hats and caps for men, women, and children; bonnets for children; hoods and toques for men, women, and children; neckties for men, women, and children; stockings and socks for men, women, and children; braces and suspenders for men and children; belts for outer wear for men, women, and children; boots for men, women, and children, of leather and rubber or combinations of these materials; shoes and slippers for men, women, and children; of leather, rubber, and fabric or combinations of these materials; gloves for men, women, and children of leather and fabric. |
| BURBERRY | 6, 331, 235 | 27-Apr-2021 | Protective industrial respiratory masks; Protective clothing for medical purposes; respiratory masks for medical use; sanitary masks for medical purposes; disposable sanitary masks for virus isolation purposes; sanitary masks made of cloth for medical purposes; face protection shields for medical purposes |
| BURBERRY BRIT | 3, 029, 220 | 13-Dec-2005 | Non-medicated toilet preparations, namely, perfumes, eau de cologne, and toilet water, shower gels and bath gels and bath foams; antiperspirants and deodorants; shaving preparations. |
| BURBERRY BRIT | 3, 910, 300 | 25-Jan-2011 | Clothing, namely, shirts, polo shirts, dresses, jumpers, sweaters, gilets, t-shirts, jeans, coats, trench coats, jackets. |
| BURBERRY CHECK | 1, 241, 222 | 7-Jun-1983 | Coats, top coats, jackets, trousers, slacks, waistcoats, skirts, capes, hats, bonnets, berets, shirts, scarves, shawls and blouses. |
| BURBERRY CHECK | 1, 855, 154 | 20-Sep-1994 | Watches and parts therefor; straps, bracelets for wrist watches; cuff links. |
| BURBERRY CHECK | 2, 015, 462 | 12-Nov-1996 | Socks. |
| BURBERRY CHECK | 2, 022, 789 | 17-Dec-1996 | Suitcases, traveling bags, holdalls, suit and garment carriers for travel, attache cases, document cases, briefcases, purses, drawstring pouches, wallets, billfolds, passport holders, key cases, handbags, shoulder bags, credit card cases, business card cases, toilet bags sold empty, toilet cases sold empty, shaving bags sold empty, tie cases for travel, umbrellas and parasols; traveling comforter, namely, fabric blanket-like articles for keeping warm, e.g., when traveling in cold climates, or for use as a stadium blanket; clothing for men and women, namely, scarves, pullovers, cardigans, sweaters, overcoats, raincoats, shirts, belts; slippers for men. |
| BURBERRY CHECK | 2, 845, 852 | 25-May-2004 | Sunglasses, spectacles, optical glasses; fitted frames and lenses for the aforesaid goods; cases and holders for the aforesaid goods; carrying cases and holders for portable computers and mobile telephones. |
| BURBERRY CHECK | 3, 529, 814 | 11-Nov-2008 | Non-metal key fobs; blankets, throws, handkerchiefs, textile used as linings for clothing and accessories, fabrics for use in the manufacture of clothing, footwear, headwear, hosiery, belts, bags, cases, holders and key rings, umbrellas, watches, jewelry, towels, blankets, throws; Coats, detachable coat linings, rainwear, ponchos, jackets, gilets, jerseys, jumpers, sweaters, blouses, shirts, polo shirts, t-shirts, vests, dresses, skirts, trousers, jeans, shorts, ski wear, sports shirts, sports trousers, sweat shirts, waterproof clothing, namely, coats, jackets, bikinis, sarongs, swimwear, bathrobes, boxer shorts, loungewear, nightwear, undergarments, ties, cravats, footwear, shoes, boots, athletic footwear, slippers, ballet slippers, socks, leggings, caps, hats, head scarves, belts, gloves, mufflers, scarves, shawls, stoles, pashminas, children's and infant's clothing, namely, coats, jackets, ponchos, jerseys, sweaters, blouses, shirts, t-shirts, singlets, vests, tank tops, waistcoats, suits, dresses, skirts, trousers, jeans, shorts, children's |
| headwear, children's swimwear, children's nightwear, children's under garments, and one-piece clothing, headwear, footwear; cloth bibs; teddy bears; retail store services in the fields of clothing, accessories, footwear, headgear, luggage, leather goods, timepieces, jewelry, eyewear and fragrances. | |||
| BURBERRY CHECK | 4, 123, 508 | 10-Apr-2012 | Telephones, mobile telephones, mobile electronic devices, namely, PDAs (personal digital assistants), smart phones, personal entertainment devices, namely, electronic book readers, tablet computers, netbooks, electronic notebooks, handheld computers, portable digital audio and/or video players, and accessories for the foregoing, namely, headsets, headphones, covers, fascia, lanyards specially designed for mobile electronic devices and mobile telephones, stylus, battery chargers, phone jewelry and accessory charms for mobile electronic devices; cases and holders for telephones, mobile telephones and mobile electronic devices, namely, for PDAs (personal digital assistants), smart phones, personal entertainment devices in the nature of electronic book readers, tablet computers, netbooks, electronic notebooks, handheld computers and portable digital audio and/or video players. |
| BURBERRY CHECK | 4, 166, 277 | 3-Jul-2012 | Non-medicated toilet preparations; cosmetic preparations for the bath and shower; non-medicated body and skin care preparations; cosmetic preparations for care of teeth and for hair; nail care preparations and polish; nail accessories, namely, false nails; soaps; anti-perspirants, deodorants; perfumes, eau de cologne, eau de toilette and toilet water; essential oils, massage oil; pot pourri, room fragrance and incense; cleaning preparations for leather and non-leather goods; sunglasses, spectacles, optical glasses, fitted frames and lenses for the aforesaid goods, cases and olders for the aforesaid goods, and parts and fittings for all the aforesaid goods; cases and holders specially adapted for use with portable electronic devices, mobile telephones, portable audio and video systems and computers; camera cases; mobile phones and mobile phone accessories, namely, mobile phone covers and skins, charms and lanyards for mobile phones, mobile phone fascias in the nature of protective covers; watches, clocks and parts, fittings and cases for all the aforesaid goods; watch straps and bracelets therefore; jewellery, imitation jewellery, tie- pins, |
| tie clips and cuff links; articles made of precious metals or coated therewith, namely, key rings, charms, badges, shoe ornaments; jewellery boxes and cases; models and figures of precious metal; all-purpose carrying bags, trunks, valises, suitcases, travelling bags, garment bags, baby bags, baby carriers worn on the body, baby harnesses worn on the body, rucksacks, satchels, holdalls, handbags, shoulder bags, shopping bags, wheeled hopping bags; purses, pouches; wallets, key holders made of leather or imitations of leather, credit card holders of leather and imitations of leather, pochettes; labels, luggage labels and tags all made of leather and imitations of leather; cosmetic cases and bags sold empty, cases for manicure sets sold empty; jewellery rolls for travel; umbrellas, parasols; clothing for pets; horse blankets; collars and leashes for animals; textiles and textile items, namely, bed blankets, bed covers, bed linen, cot linen, duvets, and curtains; towels; face cloths; mattress covers; pillowcases; quilts and eiderdowns; bed sheets; table covers; unfitted fabric furniture covers, wall hangings, cushion covers; placemats of textile; handkerchiefs; travelling rugs; pet blankets; textile labels; clothing, namely, shirts, polo shirts, blouses, dresses, shorts, trousers, suits, skirts, jerseys, jumpers, sweaters, cardigans, gilets, t-shirts, singlets, vests, tank tops, waistcoats, jeans, pyjamas, coats, overcoats, trench coats, casual coats, raincoats, jackets, ponchos, blousons, capes, lingerie, underwear, undergarments, sleepwear, loungewear; ski wear, sports trousers, sports shorts, sports shirts, sports jackets, sweat pants, sweat shirts, sweat shorts, tracksuits, swimwear; ready-made linings sold as component parts of coats; clothing belts; ties, wraps, serapes, sarongs, scarves, shawls and stoles; gloves; tights, socks, stockings, hosiery, leggings; footwear; headwear. | |||
| BURBERRY CHECK | 2, 689, 921 | 25-Feb-2003 | Perfumes, eau de toilettes, body lotion; soaps; personal deodorants; eau de parfums; aftershaves; shampoo for the body; shower gels; bath gels. |
| BURBERRY CHECK (No Color) | 2, 728, 709 | 24-Jun-2003 | Fabrics for use in the manufacture of clothing, underclothes, swimwear, headwear, footwear, hosiery, socks; and belts; fabrics for use in the manufacture of cosmetic cases and bags, toiletry cases and bags, and shaving cases and bags; fabrics for use in the manufacture of |
| purses, pouches, bags, luggage, carriers, travel bags, and suit and garment bags; fabrics for use in the manufacture of cases and holders for money, documents, keys, glasses, and ties; fabrics for use in the manufacture of umbrellas and parasols and cases thereof; fabrics for use in the manufacture of straps and bracelets for watches, and straps for shoes and bags; fabrics for use in the manufacture of lining for all the foregoing goods; comforters and blankets. | |||
| BURBERRY CHECK (No Color) | 2, 612, 272 | 27-Aug-2002 | Retail store services in the fields of clothing, accessories, shoes, luggage, leather goods and fragrances. |
| BURBERRY CHECK (No Color) | 2, 732, 617 | 1-Jul-2003 | Perfumes, eau de toilettes, eau de parfums; body lotion, soaps; personal deodorants; aftershave; shampoo for the hair and for the body; shower gels; bath gels; articles of luggage, namely, suitcases, athletic and sport bags, beach bags, carry-on bags, clutch bags; duffel and gym bags; overnight bags; school book bags, shoulder bags, tote bags, garment bags for travel, carryall bags, traveling bags, hand bags, leather bags for computers and cameras; wallets and purses; toiletry bags sold empty and cosmetics bags sold empty; brief cases, satchels and portfolios; parasols, umbrellas, walking sticks; leather key fobs, leather key holders; articles of outerclothing, namely, coats, overcoats, trench coats, casual coats, raincoats, jackets and blousons, poloshirts, blouses, dresses, pyjamas, knitwear namely, jumpers, sweaters, gilets, knitted shirts, knitted skirts and knitted scarves; and shorts, trousers, suits, skirts, underclothes, hosiery, headwear, footwear, sports clothing namely, sports trousers, sports shorts, sports shirts, sports jackets, sports footwear; tracksuits, garments that can be attached to or detached from coats, raincoats, trench coats, or casual coats for additional warmth; ties, belts, wraps, serapes, scarves, shawls and stoles, gloves. |
| BURBERRY CHECK (No Color) | 4, 441, 542 | 26-Nov-2013 | Sunglasses, camera cases, spectacles, optical glasses, mobile phone accessories, namely, mobile phone covers charms and lanyards for mobile phones; fitted frames and lenses for the aforesaid goods; cases and holders for the aforesaid goods; parts and fittings for all the aforesaid goods; cases and holders for portable electronic devices, namely, PDAs (personal digital assistants), smart phones, electronic book readers, tablet computers, |
| netbooks, electronic notebooks, handheld computers and portable digital audio and/or video players, mobile telephones, portable audio and video systems and computers; Watches, watch straps and bracelets therefor; jewelry, imitation jewelry, tie-pins, tie clips and cufflinks; articles made of precious metals or coated therewith, namely, key rings. | |||
| BURBERRY LONDON | 3, 202, 484 | 23-Jan-2007 | Articles of outerciothing, namely, coats, trench coats, casual coats, jackets; shirts, dresses; ties. |
| EQUESTRIAN KNIGHT DEVICE | 2, 512, 119 | 27-Nov-2001 | Non-medicated toilet preparations, namely, perfumes, eau de cologne, and toilet water, hampoos, shower gels and bath gels; shaving preparations; articles of luggage, namely, suitcases, athletic and sport bags, beach bags, carry-on bags, clutch bags, overnight bags, shoulder bags, tote bags, carryall bags, traveling bags, hand bags, leather bags for computers and cameras; wallets and purses; toiletry bags sold empty and cosmetic bags sold empty; briefcases, satchels and portfolios; cases for personal organizers and for mobile telephones; umbrellas, leather key fobs, leather key holders, and dog coats. |
| EQUESTRIAN KNIGHT DEVICE w/ B PRORSUM | 863, 179 | 7-Jan-1969 | Coats, topcoats, jackets, suits, trousers, slacks, shorts, overalls, skirts, capes, hats, caps, bonnets, hoods, berets, neckties, stockings, socks, belts, boots, shoes, slippers, sandals, gloves, shirts, collars, pajamas, dressing gowns, cardigans, sweaters, pullovers, scarves, blouses, beach robes, dresses, skiwear, and handkerchiefs. |
| EQUESTRIAN KNIGHT DEVICE w/ B PRORSUM | 1, 622, 186 | 13-Nov-1990 | Sunglasses; spectacles; frames and lenses. |
| EQUESTRIAN KNIGHT DEVICE w/ B PRORSUM | 2, 952, 399 | 17-May-2005 | Sunglasses, combined sunglasses, spectacles, optical glasses, fitted frames and lenses for the aforesaid goods; cases and holders for the aforesaid goods; parts and fittings for all the aforesaid goods; computer carrying cases and specialty holsters and cases for carrying mobile telephones; watches, and parts and fittings for all the aforesaid goods, wrist watches and straps and bracelets therefor and jewelry, imitation jewelry, tie-pins and cuff links; and jewelry boxes, all made of precious metal or coated therewith. |
| EQUESTRIAN KNIGHT DEVICE w/ B PRORSUM | 4, 036, 908 | 11-Oct-2011 | Accessories for covers, and accessory charms for mobile electronic devices; cases and holders for telephones, mobile telephones and mobile electronic devices, namely, smart phones, personal entertainment devices, tablet computers. |
| EQUESTRIAN KNIGHT DEVICE W BB PRORSUM | 1, 903, 508 | 4-Jul-1995 | Watches and parts therefor; bracelets for wrist watches; jewelry; costume jewelry; tie pins and cufflinks. |
| EQUESTRIAN KNIGHT DEVICE w/ BB PRORSUM | 3, 766, 097 | 30-Mar-2010 | Textiles and textile goods, namely, household linen, bed linen, bath linen, bed blankets, blanket throws, children's blankets, beach towels, handkerchiefs, unfitted fabric furniture covers, fabrics for textile use and textile used as lining for clothing, cushion covers. |
| TB DEVICE | 6, 376, 182 | 08-Jun-2021 | Leather and imitations of leather bags, namely, handbags, shoulder bags, tote bags, clutch bags, holdalls, travel bags, waist bags, weekend bags, school bags, overnight bags; articles of luggage, namely, trunks being luggage, trunks being travelling trunks; valises, suitcases, travelling bags, garment bags for travel, vanity cases sold empty; allpurpose carrying bags, athletic and sports bags, beach bags, carry-on bags, duffel and gym bags, overnight bags, school book bags, satchels, bum-bags; textile, string, leather, reusable, canvas, and mesh shopping bags; baby bags, namely, baby carrying bags, bags for carrying babies' accessories, nappy bags; baby carriers worn on the body, pouch baby carriers; baby harnesses being baby carriers worn on the body, baby harnesses being leashes for guiding children; wheeled shopping bags, trolleys in particular general purpose sport trolley bags; purses; drawstring, felt, leather, textile, and cloth pouches; wallets; cosmetic cases and bags sold empty, cases for manicure sets sold empty; key holders being key cases made of leather or imitations of leather, key holders being pouches for holding keys; card holders being credit card holders, business card holders in the nature of card cases, and business cardholders in the nature of wallets; labels of leather for luggage, and luggage labels made of leather and imitations of leather, leather tags; pochettes; tie cases; leather boxes; umbrellas, parasols; clothing for pets; horse blankets; collars and leashes for animals; clothing, namely, coats, finished detachable coat linings, rainwear, ponchos, jackets, gilets, |
| jerseys, jumpers, sweaters, blouses, shirts, polo shirts, t-shirts, vests, tank tops, waistcoats, dresses, skirts, trousers, jeans, shorts, ski wear, ski gloves, sports shirts, sports trousers, sports singlets, sweat shirts; waterproof clothing, namely, bathing trunks, swimming trunks, trunks being clothing; bikinis, sarongs, swimwear, bathrobes, boxer shorts, loungewear, nightwear, undergarments, ties as clothing, cravats, leggings, pashmina shawls; children's and infant's clothing, namely, coats, jackets, ponchos, jerseys, sweaters, blouses, shirts, t-shirts, vests, dresses, skirts, trousers, jeans, shorts, children's headwear, children's swimwear, children's nightwear, children's under garments, and one-piece clothing; cloth bibs; footwear, shoes, boots, athletic footwear, slippers, ballet slippers; headwear, namely, caps, baseball caps, hats, head scarves; belts, gloves, mufflers as neck scarves, scaives, shawls, stoles, pocket squares; belts being clothing | |||
| TB MONOGRAM | 6, 513, 734 | 12-Oct-2021 | Non-medicated toilet preparations, namely, cosmetics; glitter for cosmetic purposes; non-medicated toilet preparations, namely, cosmetics; glitter for cosmetic purposes; cosmetic preparations for the bath and shower; non-medicated body and skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; cosmetic preparations for the care of teeth and for hair; nail care preparations and nail polish, false nails; non-medicated soaps; anti-perspirants, deodorants for personal use; perfumes, eau de cologne, eau de toilette, toilet water and aftershave; essential oils, massage oil; pot pourri, room fragrances and incense; cleaning preparations for leather goods and care preparations Tor leather goods, namely, conditioners, balms, creams, waxes and polish; sunglasses, spectacles, optical glasses, fitted frames and lenses for sunglasses, spectacles and optical glasses; cases and holders for sunglasses, spectacles and optical glasses; parts and fittings for sunglasses, spectacles and optical glasses, namely, frames; cases and holders for portable electronic devices, namely, mobile phones, tablets, electronic book readers, and digital book readers; mobile telephones, portable audio and video systems and computers; mouse mats; camera cases; portable electronic devices, electronic book readers, portable music readers and tablets; mobile phone accessories, namely, mobile |
| phone covers and skins, lanyards for mobile phones, mobile phone fascias; watches, clocks and parts, fittings and cases for all the aforesaid goods; watch straps and bracelets therefor; jewellery, imitation jewellery, tie-pins, tie clips and cufflinks; articles made of precious metals or coated therewith, namely key rings, jewellery charms, badges, shoe jewellery; jewellery boxes and cases; models figures being ornaments and Figures of precious metal; jewellery rolls; key holders and key rings of precious and semi-precious metals; key chains and charms therefor; jewellery rolls; cufflink cases; leather and imitation leather; bags, namely, holdalls, handbags, shoulder bags; trunks being luggage, valises, suitcases, travelling bags, garment bags for travel, bumbags, vanity cases sold empty, baby carrying bags, baby carriers worn on the body, baby harnesses, namely, harnesses for guiding children, rucksacks, satchels; canvas, textile, leather or mesh shopping bags, wheeled shopping bags and general purpose sport trolleys bags; purses, pouches made out of cloth; wallets, credit card holders, pochettes; labels of leather and luggage labels, leather baggage tags; cosmetic cases and bags sold empty, cases for manicure sets sold empty; tie cases; leather boxes; umbrellas, parasols; clothing for pets; horse blankets; collars and leashes for animals; textiles and textile items, namely, fabrics, namely, bed blankets; bed covers; bed linen; cot linen; duvets; mattress covers; pillowcases; quilts and eiderdowns; bed sheets; curtains; towels; face cloths; table linen; plastic table covers; placemats of textile; unfitted fabric furniture covers, curtains, textile wall hangings, cushion covers; textile handkerchiefs; travelling rugs, picnic blankets; pet blankets; textile labels; clothing articles and outer clothing articles, namely, coats, jackets, rainwear, ponchos, gilets, detachable coat linings, raincoats, blousons; casual coats; polo shirts; blouses; t-shirts; dresses; pajamas; knitwear, namely, jerseys, jumpers, cardigans, sweaters, knitted leggings; shorts; trousers; suits for men women and children; skirts; jackets; jackets containing microprocessors; articles of underclothing, namely, boxer shorts, lingerie, loungewear, nightwear, underwear, undergarments, hosiery; sports clothing, namely, ski wear, sports jackets, sports jerseys, sports shirts, sports trousers, sweat pants, sweat shirts, sweat shorts, tracksuits, tennis wear, swimwear; sports footwear; tracksuits, ready-made linings, namely, finished textile linings for garments; ties; clothing belts; clothing wraps; serapes; scarves; shawls and stoles; gloves, footwear, headgear in the nature of headwear, belts, shirts, jeans; retail store and wholesale store services for clothing, footwear, headgear, bags, vanity cases sold empty, atchels, bumbags, purses, pouches, wallets, key holders, card holders, pochettes, labels and luggage labels, leather tags, leather belts, cosmetic cases and bags not fitted, cases for manicure sets sold empty, card cases, card holders, tie cases, cufflink cases, leather boxes, umbrellas, cases and holders for sunglasses and eye wear, cases and holders for portable electronic devices, cases and holders for mobile telephones, camera cases, phone covers and skins, charms and lanyards for mobile phones, mobile phone fascias, key rings and charms, diaries, notebooks, pen and pencil cases, pen holders, passport covers, paperweights, keyrings, home ware, perfumes, toiletries and cosmetics, watches, jewellery, eyewear and sunglasses. |
HERMES INTERNATIONAL
| OWNER | TRADEMARK | Reg. Date | Reg. No. | REGISTRAR | Classes |
| HERMES INTERNATIONAL | HERMES | 2/29/1972 | 930149 | USA | 03 |
| 1/22/2013 | 4278653 | USA | 3, 6, 8, 9, 11, 12, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 34, 35, 41 | ||
| HERMES INTERNATIONAL | |||||
| 12/29/1998 | 2213940 | USA | 08, 09, 21, 28, 34 | ||
| HERMES INTERNATIONAL | |||||
| 6/27/1939 | 368785 | USA | 08, 14 | ||
| HERMES INTERNATIONAL | |||||
| 7/18/1939 | 369271 | USA | 14 | ||
| HERMES INTERNATIONAL | |||||
| 8/1/1939 | 369681 | USA | 18 | ||
| 8/4/1987 | 1450841 | USA | 20 | ||
| HERMES INTERNATIONAL | |||||
| 8/15/1939 | 370082 | USA | 21 | ||
| HERMES INTERNATIONAL | |||||
| 3/9/1971 | 909653 | USA | 24 | ||
| HERMES INTERNATIONAL | |||||
| HERMES INTERNATIONAL |
| HERMES INTERNATIONAL | 8/S/l939 | 369944 | USA | 25 | |
| 10/8/1968 | 858299 | USA | 25 | ||
| HERMES INTERNATIONAL | |||||
| 1/16/2007 | 3198963 | USA | 35 | ||
| HERMES INTERNATIONAL | |||||
| 12/27/2005 | 3036116 | USA | 35 | ||
| HERMES INTERNATIONAL | |||||
| 8/15/1978 | 1099896 | USA | 42 | ||
| HERMES INTERNATIONAL | |||||
| HERMES INTERNATIONAL | HERMES | 5/1/2001 | 2447278 | USA | 08, 09, 16, 20, 24, 28, 34 |
| HERMES INTERNATIONAL | |||||
| HERMES INTERNATIONAL | |||||
| 10/8/1985 | 1364533 | USA | 21 | ||
| HERMES INTERNATIONAL | |||||
| 1/6/1970 | 883588 | USA | 03, 14, 18, 25 | ||
| HERMES INTERNATIONAL | |||||
| 1/16/2007 | 3198973 | USA | 35 | ||
| HERMES INTERNATIONAL | |||||
| 12/27/2005 | 3036117 | USA | 35 | ||
| HERMES INTERNATIONAL | |||||
| 9/24/2002 | 2623070 | USA | 37, 40, 41 | ||
| 8/15/1978 | 1099897 | USA | 42 | ||
| HERMES INTERNATIONAL | Image omitted | 9/4/1984 | 1292597 | USA | 03, 09, 14, 16, 18, 24, 25, 28, 34 |
| S/27/1975 | S011908 | USA | 14 | ||
| HERMES INTERNATIONAL | |||||
| HERMES INTERNATIONAL | Image omitted | 11/23/1993 | 1806107 | USA | 18 |
| HERMES INTERNATIONAL | Image omitted | 3/20/2001 | 2436099 | USA | 03, 08, 09, 14, 16, 18, 20, 24, 25, 28, 34 |
| HERMES INTERNATIONAL | BIRKIN | 9/6/2005 | 2991927 | USA | 16, 18 |
| HERMES INTERNATIONAL | Image omitted | 12/4/2007 | 3348789 | USA | 06, 08, 14, 16, 18, 21, 24, 25, 26, 28, 34 |
| HERMES INTERNATIONAL | Image omitted | l/20/2009 | 3564868 | USA | 06, 08, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 34 |
| HERMES INTERNATIONAL | TERRED'HERMES | 4/11/2006 | 3079963 | USA | 03 |
| HERMES INTERNATIONAL | Image omitted | 4/27/2007 | 3233558 | USA | 06, 14, 18, 25, 26 |
| HERMES INTERNATIONAL | Image omitted | 4/27/2007 | 3233557 | USA | 06, 14, 18, 25, 26 |
| HERMES INTERNATIONAL | LINDY | 48/5/2008 | 3480825 | USA | 18 |
| HERMES INTERNATIONAL | Image omitted | 1/13/2009 | 3561331 | USA | 06, 14, 16, 18, 21, 25, 26, 34 |
| HERMES INTERNATIONAL | Image omitted | 3/29/2011 | 3936105 | USA | 18 |
| HERMES INTERNATIONAL | Image omitted | 4/5/2011 | 3939358 | USA | 18 |
| HERMES INTERNATIONAL | Image omitted | 7/26/11 | 4000067 | USA | 3, 14, 18, 25, 35 |
| HERMES INTERNATIONAL | Image omitted | 2/17/2035 | 4687132 | USA | 25, 26 |
| HERMES INTERNATIONAL | Image omitted | 7/21/2020 | 6105385 | USA | 14, 18, 25, &26 |
LOUIS VUITTON MALLETIER
| TRADEMARK | REGISTRATION DATE | REGISTRATION NUMBER | GOODS and SERVICES |
| Image omited Damler Trademark | 2/17/2009 | 3576404 | IC 018. G & S: Boxes of leather or imitation leather for packaging and carrying goods, trunks, suitcases, traveling sets comprised of matching luggage, traveling bags, luggage, garment bags for travel, toiletry cases sold empty, rucksacks, satchels, handbags, beach bags, leather shopping bags, sling bags, suit carriers, shoulder bags, waist bags, purses, travel cases, briefcases, briefcase-type portfolios, leather pouches, wallets, change purses, key cases, business card cases, calling card cases. |
| Image omited Deeor Floral | 6/28/1994 | 1841850 | IC 018. G & S: trunks; travelling trunks; suitcases; bags; namely, traveling bags; bags for climbers; bags for campers; rucksacks; haversacks; shopping bags; handbags; vanity cases; attache cases, satchels; pouches; briefcases; wallets; pocket wallets; card cases; bill and card holders; key holders; change purses; portfolios; and umbrellas. |
| Image omited D6cor Floral | 6/20/2006 | 3107072 | IC 018. G & S: Leather and imitation leather products, namely, traveling bags, traveling sets comprised of bags or luggage, trunks and suitcases, garment bags for travel purposes; vanity cases sold empty, rucksacks, shoulder bags, handbags, attache cases, document wallets and briefcases made of leather, pouches made of leather, wallets, purses, business card cases, credit card cases; umbrellas. IC 025. G & S: Clothing and undergarments, namely, belts, scarves shawls, jackets, sashes for wear, shoes, boots. |
| Image omitted Flower | 8/4/1998 | 2177828 | IC 018. G & S: goods made of leather or imitations of leather are not included in other classes, namely, boxes made from leather, trunks, valises, traveling bags, luggage for travel, garment bags for travel, vanity cases sold empty, rucksacks, hand bags, beach bags, shopping bags, shoulder bags, attache cases, briefcases, and fine leather goods, namely, pocket wallets, purses, leather key holders, business card cases, calling card cases, and credit card cases, umbrellas. IC 025. G & S: clothing and underwear, namely shawls, stoles, belts, shoes, boots and |
| sandals. | |||
| Flower in circle | 8/18/1998 | 2181753 | IC 018. G & S: goods made of leather or imitations of leather are not included in other classes, namely, boxes made from leather; trunks, valises, traveling bags, luggage for travel, garment bags for travel, vanity cases sold empty, rucksacks, hand bags, beach bags, shopping bags, shoulder bags, attache cases, briefcases, and fine leather goods, namely, pocket wallets, purses, leather key holders, business card cases, calling card cases, credit card cases, and umbrellas. IC 025. G & S: clothing and underwear, namely, shirts, waistcoats, raincoats, skirts, coats, pullovers, trousers, dresses, jackets, shawls, stoles, scarves, neckties, pocket squares, belts shoes, boots and sandals. |
| Flower in Rhombus | 10/14/2003 | 2773107 | IC 018. G & S: Travel bags, travel bags made of leather; luggage trunks and valises, garment bags for travel, vanity-cases sold empty; rucksacks, shoulder bags, handbags; attache-cases, briefcases, drawstring pouches, pocket wallets, purses, umbrellas, business card cases made of leather or of imitation leather, credit card cases made of leather or of imitation leather; key holders made of leather or of imitation. IC 025. G & S: Clothing, namely, shirts, T-shirts, belts, scarves, neck ties, shawls, raincoats, overcoats, high-heeled shoes, low-heeled shoes, boots, tennis shoes. |
| LOUIS VUITTON | 8/6/1996 | 1990760 | IC 018. G & S: trunks; traveling trunks; suitcases; traveling bags; luggage; garment bags for travel; hat boxes for travel; shoe bags for travel; umbrellas; animal carriers; rucksacks; haversacks; leather or textile shopping bags; beach bags; handbags; vanity cases sold empty; attache cases; tote bags, travel satchels; clutch bags; briefcases; wallets; pocket wallets; credit card cases; business card cases; bill and card holders; checkbook holders; key cases; change purses; briefcase-type portfolios. IC 025. G & S: shirts; sweatshirts; polo shirts; T-shirts; headwear; jackets; ties; belts; shawls; scarves. |
| LOUIS VUITTON | 8/10/1976 | 1045932 | IC 018 Luggage and ladies1 handbags. |
| LOUIS VUITTON | 8/10/1976 | 4530921 | IC 009 G & S: Optical apparatus, namely, binoculars; blank USB sticks; spectacles; sunglasses; spectacle frames; spectacle glasses; spectacle cases; accessories for telephones, mobile phones, smart phones, tablet devices, PDAs, and MP3 players, namely, covers, neck straps, neck cords, and bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories. IC 025. G & S: Clothing, namely, pullovers, vests, shirts, tee-shirts, trousers, jackets, suits, coats, rain coats, waterproof jackets, waterproof pants, overcoats, parkas, skirts, dresses, pajamas, dressing gowns, nightgowns, robe, gloves, neck ties, belts for clothing, leather belts, scarves, pocket squares, sashes for wear, shawls, stockings, socks, tights, braces for clothing, suspenders, stoles, underwear, lingerie, bathing suits; headwear; shoes; slippers; boots; half-boots. |
| LOUIS VUITTON | 12/7/2004 | 2909003 | IC 009 G & S: Optical instruments and apparatus, namely, spectacles, eyeglasses, spectacle cases. |
| LOUIS VUITTON | 10/2/1990 | 1615681 | IC 018. G & S: traveling bags, trunks, valises, satchels, hat boxes and shoe boxes for travel, pouches and shoulder bags used for luggage, travel kits and vanity cases sold empty and used for luggage, rucksacks, shopping bags and beach bags in the nature of luggage, hand bags, pocketbooks, briefcases, briefcase-type portfolios, wallets, billfolds, passport cases, key cases, credit card cases, business card cases, change purses. |
| LOUIS VUITTON PARIS | 5/2/2000 | 2346373 | IC 018. G & S: Goods made of leather or of imitations of leather not included in other classes, namely, boxes of leather, trunks, valises, travelling bags, traveling sets for containing cosmetics, garment bags for travel, rucksacks, handbags, beach bags, shopping bags, shoulder bags, briefcases, pouches; fine leather goods, namely, pocket wallets, purses, key cases, card holders, checkbook holders. IC 025. G & S: Clothing and underwear, namely, sweaters, shirts, suits, waistcoats, skirts, coats, pullovers, trousers, dresses, |
| clothing jackets, shawls, stoles, scarves, neckties, clothing belts, bathing suits, footwear; head wear and waterproof clothing, namely, raincoats. | |||
| LV Logo | 9/30/2014 | 4617736 | IC 009. G & S: Optical apparatus, namely, binoculars; blank USB sticks; spectacles; sunglasses; spectacle frames; spectacle glasses; spectacle cases; accessories for telephones, mobile phones, smart phones, tablet devices, PDAs, and MP3 players, namely, covers, neck straps, neck cords, and bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories. |
| LV Logo | 9/28/1993 | 1794905 | IC 025. G & S: clothing for men and women; namely belts, shawls, sashes, scarves; footwear headgear. |
| LV Logo | 1/10/1989 | 1519828 | IC 018. G & S: trunks, valises, traveling bags, satchels, hat boxes and shoe boxes used for luggage, hand bags, pocketbooks. |
| LV Logo | 6/27/2000 | 2361695 | IC 025. G & S: Clothing, namely, sweaters, shirts, sweatshirts, polo shirts, t-shirts, suits, waistcoats, raincoats, skirts, coats, pullovers, trousers, dresses, jackets, shawls, stoies, scarves, neckties, pocket squares, pocket handkerchief squares for wear, gloves, ties, belts, bathing suits, shoes, boots and sandals, hats. |
| LV Logo | 12/7/2002 | 2909002 | IC 009 G & S: Optical instruments and apparatus, namely, spectacles, eyeglasses, spectacle cases. |
| Toile Monogram | 9/20/1932 | 0297594 | IC 018. G & S: trunks, valises, traveling bags, satchels, hat boxes and shoe boxes used for luggage, hand bags, and pocketbooks. |
| Image omited | 10/31/2000 | 2399161 | IC 025. G & S: Clothing and underwear, namely, shirts, polo shirts, t-shirts, waistcoats, raincoats, skirts, coats, trousers, dresses, jackets, shawls, stoles, scarves, neckties, gloves, ties, belts, bathing suits, shoes, boots and sandals, hats. |
| Image omited ToUe Monogram | 08/21/2012 | 4192541 | IC 018. G & S: Boxes of leather or imitation leather for packaging and carrying goods; traveling bags; leather traveling sets of luggage; trunks; suitcases; garment bags for travel; vanity cases sold empty; toiletry bags sold empty; backpacks; handbags; attache cases; leather document cases; wallets; purses; leather key cases. IC 025. G & S: Clothing, namely, underwear, shirts, tee-shirts, pullovers, skirts, dresses, trousers, coats, jackets, belts for clothing, scarves, sashes for wear, gloves, neckties, socks, bathing suits; footwear; headwear. |
(hereinafter collectively referred to as “Plaintiffs' Federally Registered Trademarks”);
(b) From receiving, manufacturing, distributing, advertising, promoting, returning, offering for sale or otherwise disposing of in any manner, holding for sale or selling any goods, labels, tags, logos, decals, emblems, signs, and other forms of markings, any packaging, wrappers, pouches, containers and receptacles, and any catalogs, price lists, promotional materials and the like bearing a copy or colorable imitation of Plaintiffs' Federally Registered Trademarks;
(c) From using any logo, trade name or trademark which may be calculated to falsely represent or which has the effect of falsely representing that the services or products of Defendants are sponsored by, authorized by, or in any way associated with Plaintiffs;
(d) From infringing Plaintiffs' Federally Registered Trademarks;
(e) From falsely representing themselves as being connected with Plaintiffs or sponsored by or associated with Plaintiffs;
(f) From using any reproduction, counterfeit, copy, or colorable imitation of Plaintiffs' Federally Registered Trademarks in connection with the publicity, promotion, sale, or advertising of goods sold by Defendants including, without limitation, apparel, belts, cosmetics, eyewear, footwear, handbags, jackets, jewelry, perfumes, wallets, watches, and other products bearing a copy or colorable imitation of Plaintiffs' Federally Registered Trademarks;
(g) From affixing, applying, annexing, or using in connection with the sale of any goods, a false description or representation, including words or other symbols tending to falsely describe or represent such goods as being those of Plaintiffs and from offering such goods in commerce;
(h) From using any trademark or trade name in connection with the sale of any goods which may be calculated to falsely represent such goods as being connected with, approved by or sponsored by Plaintiffs; and
(i) From destroying, altering, disposing of, concealing, tampering with or in any manner secreting any and all business records, invoices, correspondence, books of account, receipts or other documentation relating or referring in any manner to the manufacture, advertising, receiving, acquisition, importation, purchase, sale or offer for sale, or distribution of any merchandise bearing Plaintiffs' Federally Registered Trademarks.
2. Defendants, their principals, officers, agents, servants, employees and attorneys and all persons in active concert or participation with them are hereby enjoined, from transferring, discarding, destroying or otherwise disposing of the following currently in the possession, custody or control of Defendants:
(a) All merchandise bearing any copy or counterfeit of Plaintiffs' Federally Registered Trademarks or any markings substantially indistinguishable therefrom;
(b) All labels, tags, logos, emblems, watch faces, signs, and other forms of markings, all packaging, wrappers, pouches, containers, receptacles, and all advertisements, catalogs, price lists, guarantees, promotional materials and the like bearing any copy or counterfeit of Plaintiffs' Federally Registered Trademarks or any markings substantially indistinguishable therefrom, and all plates molds, dies, tooling, machinery, assembly equipment and other means of making the same; and
(c) All books and records showing:
(i) Defendants manufacture, receipt and sale of merchandise bearing Plaintiffs' Federally Registered Trademarks; and
(ii) Defendants' manufacture, receipt and sale of any labels, tags, logos, decals, emblems, signs, and other forms of markings, any packaging, wrappers, pouches, containers and receptacles, and any catalogs, price lists, guarantees, promotional materials and the like bearing Plaintiffs' Federally Registered Trademarks, either by reference to such trademarks or by style or code number or otherwise.
3. The parties may take immediate and expedited discovery, limited to document requests and interrogatories, without regard to the time limitations set forth in Rules 30, 33, 34 and 36 of the Federal Rules of Civil Procedure.
4. The seizures outlined in the opening paragraph are hereby confirmed, and the counterfeit goods seized pursuant to the Court's Seizure Order may be destroyed after the appropriate 10 days' notice is given to the United States Attorney for the Southern District of New York, as provided for in 15 U.S.C. § 1118. i
5. Service of this Order by first-class mail to the Defendants or by leaving a copy of this Order at each of Defendants' business addresses identified in the opening paragraph shall constitute sufficient service of this Order. Service shall be deemed complete on the mailing or i delivery of this Order as permitted above.
6. All papers under seal in this action are now unsealed.
SO ORDERED: