Opinion
CIVIL 22-cv-03790
05-10-2022
CHANEL, INC., Plaintiff, v. VARIOUS JOHN DOES, JANE DOES; and XYZ COMPANIES, Defendants.
FILED UNDER SEAL
TEMPORARY RESTRAINING ORDER; SEIZURE ORDER; SUBSTIUTE CUSTODIAN ORDER; EXPEDITED DISCOVERY ORDER; AND ORDER TO SHOW CAUSE BRINGING ON MOTION FOR PRELIMINARY INJUNCTION
Upon the Complaint herein and the exhibits annexed thereto, upon the moving declarations and the Memorandum submitted in support of this Motion, it is hereby:,
ORDERED that Defendants show cause before this Court Courtroom XXXXX or as soon thereafter as counsel can be heard, why a preliminary injunction, pursuant to Fed.R.Civ.P. 65, should not be issued enjoining Defendants, their agents, servants, employees, officers, and all persons in active concert and participation with them, pending the final hearing and determination of this action:
1. From using Chanel's registered trademarks as shown on the following U.S.
Trademark
Registration Number
Registration Date
Class(es)/Goods
CHANEL
0, 626, 035
May 1, 1956
IC 018 - Women's Handbags
CHANEL
0, 955, 074
March 13, 1973
IC 14 - Watches
1, 314, 511
January 15, 1985
IC 018 ~ Leather Goods-Namely, Handbags
CHANEL
1, 347, 677
July 9, 1985
IC 018 - Leather Goods-Namely, Handbags
1, 501, 898
August 30, 1988
IC 06 - Keychains
CHANEL
1, 510, 757
November 1, 1988
IC 09 - Sun-glasses
CHANEL
1, 571, 787
December 19, 1989
IC 14 Watches and clocks
CHANEL
1, 647, 875
June 18, 1991
IC 06 - Keychains
1, 654, 252
August 20, 1991
IC 09 - Sunglasses
CHANEL
1, 733, 051
November 17, 1992
IC 018 - Leather Goods; namely, Handbags, Wallets, Travel Bags, Luggage, Business and Credit
Trademark
Registration Number
Registration Date
Class(es)/Goods
Card Cases, Change Purses, Tote Bags, Cosmetic Bags Sold Empty, and Garment Bags for Travel
1, 734, 822
November 24, 1992
IC 018 - Leather Goods; namely, Handbags, Wallets, Travel Bags, Luggage, Business Card Cases, Change Purses, Tote Bags, and Cosmetic Bags Sold Empty
3, 025, 934
December 13, 2005
IC 18 - Handbags
3, 025, 936
December 13, 2005
IC 09 - Mobile phone straps, Eyeglass frames, sunglasses
CHANEL
3, 133, 139
August 22, 2006
IC 14 - Jewelry and watches
CHANEL
3, 890, 159
December 14, 2010
IC 09 - Cases for telephones IC 18 Key cases
4, 074, 269
December 20, 2011
IC 09 - Protective covers for portable electronic devices, handheld digital devices, personal computers and cell phones IC 018 - Key cases
Trademark
Registration Number
Registration Date
Class(es)/Goods
CHANEL
4, 237, 249
November 6, 2012
IC 09 - Protective covers and cases for portable media players, portable electronic devices, handheld digital devices, personal computers and cell phones
CHANEL
4, 505, 430
April 1, 2014
IC 09 - Cellular phone accessory charms
4, 505, 440
April 1, 2014
IC 09 - Cellular phone accessory charms
COCO CHANEL
4, 772, 518
July 14, 2015
IC 06 - Metal key chains IC 14 - Jewelery IC 18 - Handbags
1, 241, 264
June 7, 1983
(Int'l Class: 25) suits, jackets, skirts, dresses, pants, blouses, tunics, sweaters, cardigans, tee-shirts, coats, raincoats, scarves, shoes and boots
1, 271, 876
March 27, 1984
(Int'l Class: 25) clothing-namely, coats, dresses, blouses, raincoats, suits, skirts, cardigans, sweaters, pants, jackets, blazers, and shoes
Trademark
Registration Number
Registration Date
Class(es)/Goods
CHANEL
1, 241, 265
June 7, 1983
(Int'l Class; 25) suits, jackets, skirts, dresses, pants, blouses, tunics, sweaters, cardigans, coats, raincoats, scarves, shoes and boots
4, 241, 822
November 13, 2012
(Int'l Class: 25) clothing, namely, coats, jackets, dresses, tops, blouses, sweaters, cardigans, skirts, vests, pants, jeans, belts, swim wear, pareos, beach cover-ups, hats, sun visors, scarves, shawls, ties, gloves, footwear, hosiery and socks
BLEU DE CHANEL
3, 874, 204
November 9, 2010
IC 03 - Perfumery
1, 171, 888
October 6, 1981
IC 03 - Perfume, Spray Perfume, Toilet Water, [ Cologne, Spray Cologne, Bath Powder, Bath Oil, ] [ After Bath Spray, Milk Bath, ] Body Lotion, Perfumed Body Cream, Toilet Soap
coco
1, 612, 557
September 11, 1980
IC 03 - PARFUM, EAU DE TOILETTE, BATH GEL, POWDER, BODY LOTION AND BATH SOAP.
Trademark
Registration Number
Registration Date
Class(es)/Goods
COCO
848, 755
May 7, 1968
IC 03 - Perfume [and Cologne]
CHANEL
195, 360
February 24, 1925
IC 03 - FACE POWDER, PERFUME, EAU DE COLOGNE, TOILET WATER, LIP STICK, AND ROUGE.
CHANEL
510, 992
June 14, 1949
IC 03 - PERFUME, [ TOILET WATER, ] * EAU DE TOILETTE, * EAU DE COLOGNE, FACE POWDER, BATH POWDER, [ TALCUM POWDER, ] LIPSTICKS [, AND LIP OIL, ].
CHANEL
1.348, 842
July 16, 1985
IC 03 - FULL LINE OF PERFUMERY, COSMETICS AND TOILETRIES.
1, 368, 563
November 5, 1985
IC 03 - Perfume
ALLURE HOMME
2, 370, 933
July 25, 2000
IC 03 - Fragrances and toiletries, namely eau de toilette, after shave, skin moisturizer, personal deodorant, [ toilette soap ] and shower gel for
Trademark
Registration Number
Registration Date
Class(es)/Goods
cleaning hair and body.
0, 195, 359
February 24, 1925
IC 03 - Face powder, perfume, eau de cologne, toilet water, lipstick, and rouge.
CHANCE
2, 003, 332
September 24, 1996
IC 03 - Perfume, eau de parfum, eau de toilette, [foam bath gel;] body lotion, body cream, shower gel, [body powder, toilette soap and body deodorant]
CHANEL
701, 978
July 26, 1960
IC 03, 05 - Perfume [Cologne, ] [ Talcum Powder, ][ and Bath Powder ]
COCO MADEMOISELLE
2, 557, 185
April 2, 2002
IC 03 Perfumery and cosmetics products, namely eau de parfum and skin moisturizers.
5, 848, 275
September 3, 2019
IC 03 - Fragrances
1, 687, 481
September 3, 2019
IC 03 - Fragrances
Trademark
Registration Number
Registration Date
Class(es)/Goods
2, 382, 784
September 5, 2020
IC - Perfume, eau de parfum
1, 782, 330
July 20, 1993
IC - eau de toilette, [cologne]
GABRIELLE CHANEL
5, 009, 591
July 26, 2016
IC - Perfumery
(hereinafter collectively referred to as the “Plaintiffs Registered Trademarks”);
2. From possessing, receiving, manufacturing, distributing, advertising, promoting, returning, offering for sale or otherwise disposing of in any manner, holding for sale or selling any goods including, but not limited to, handbags, fragrances, 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 Registered Trademarks;
3. 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 the Plaintiff;
4. From infringing Plaintiffs Registered Trademarks;
5. From otherwise unfairly competing with Plaintiff;
6. From falsely representing themselves as being connected with Plaintiff or sponsored by or associated with Plaintiff;
7. From using any reproduction, counterfeit, copy, or colorable imitation of Plaintiff s Registered Trademarks in connection with the publicity, promotion, sale, or advertising of goods sold by Defendants including, but not limited to, handbags, fragrances, logos, decals, emblems, signs, and other forms of markings any packaging, wrappers, pouches, containers and receptacles, and the like bearing a copy or colorable imitation of Plaintiff s Registered Trademarks;
8. 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 Plaintiff and from offering such goods in commerce;
9. 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 Plaintiff; and
10. 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 the Plaintiffs Registered Trademarks; and it is further
ORDERED that pending the hearing and determination of Plaintiffs' motion for preliminary injunction, Defendants, their agents, servants, employees, officers, and all other persons in active concert or participation with them, be and hereby are, without prior written or oral notice, temporarily restrained and enjoined from in any matter, either directly or indirectly, committing any of the acts set forth above which are sought to be enjoined by Plaintiffs; and it is further
ORDERED that pending the hearing and determination of Plaintiffs motion for preliminary injunction, Defendants, their agents, servants, employees, officers, and all other persons in active concert or participation with them, be and hereby are, without prior written or oral notice, temporarily restrained and enjoined from in any manner, either directly or indirectly, committing any of the acts set forth above which are sought to be enjoined by Plaintiff; and it is further
ORDERED, that the United States Marshal for the Southern District of New York, the City of New York, Office of the Sheriff, New York City Police Department, or a local law enforcement officer having jurisdiction (hereinafter collectively referred to as "Law Enforcement"), assisted by one or more attorneys or agents of the Plaintiff (jointly or severally referred to as Plaintiffs representatives"), is directed to seize and sequester or impound the following in the possession, custody or control of Defendants, at the locations listed in Para 3 (ii) below, where there is reasonable cause to believe that counterfeit Chanel merchandise is sold, offered for sale, distributed, assembled or manufactured or stored, including any vehicles in the possession, custody, or control of Defendants:
1. All merchandise, including but not limited to handbags, fragrances, clothing and accessories bearing any copy or counterfeit of Plaintiffs Registered Trademarks or any markings substantially indistinguishable therefrom;
2. All labels, tags, logos, emblems, signs, and other forms of markings, all packaging, wrappers, pouches, containers and receptacles, and all advertisements, catalogs, price lists, guarantees, promotional materials and the like bearing any copy or counterfeit of the Plaintiffs 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
3. All books and records showing:
i. Defendants' manufacture, receipt and sale of merchandise bearing the aforesaid trademarks either by reference to such trademarks or by style or code number or otherwise; 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 the aforesaid trademarks, either by reference to such trademarks or by style or code number or otherwise; at the following locations:
1. 17 8B Hester New York, New York 10013 .
2. 224D Canal Street New York, New York 10013 3. 106-B Mulberry Street New York, New York 10013 4. 201 Canal Street New York, New York 10013 5. 117 Mulberry Street New York, New York 10013 6. HOB Mulberry Street (North) New York, New York 10013 7. 110A Mulberry Street (South) New York, New York 10013 8. 205 Canal Street (East) New York, New York 10013 9. 205 Canal Street (West) New York, New York 10013 10. 105 Mulberry Street New York, New York 10013 (including but not limited to any area within reasonable proximity to the locations identified above where there is reasonable cause to believe that counterfeits of Plaintiffs merchandise is sold, offered for sale, distributed, assembled, manufactured or stored, including any vehicles in the possession, custody, or control of Defendants); and it is further
ORDERED, that upon receipt of this Order, Law Enforcement is authorized and directed to take any and all necessary actions, including but not limited to, the use of reasonable force, and the right to enter and remain on the premises, which includes, but is not limited to, the land, the buildings, vehicles and any structures located thereon, for the purpose of executing this Order. Law Enforcement is further authorized and directed to arrest from the premises any and all persons who obstruct, attempt to obstruct, or interfere or attempt to interfere, in anyway with the execution of this Order; and it is further
ORDERED that Plaintiff provide in advance of each and every execution of this Order an advance deposit to Law Enforcement of any and all estimated fees and costs, as determined by Law Enforcement; and it is further
ORDERED that Plaintiff shall provide a person or persons capable of determining whether or not an item is covered by the preceding paragraphs, and Law Enforcement shall follow such person or persons' determination in the seizure; and it is further
ORDERED that Law Enforcement shall transfer possession of all such seized merchandise and materials to Plaintiffs representatives as substitute custodians for the Court, upon their authorized signature on behalf of Chanel on all proper receipts, pending further order of this Court; and it is further
ORDERED that Plaintiffs representatives shall promptly inspect the items seized, and if any items are found to be genuine products, such items are to be returned to Defendants within seven (7) business days of the date this Order is executed; and it is further
ORDERED that Defendants show cause before this Court on the date and place set forth on page one (1) herein, or as soon thereafter as counsel can be heard, why an order should not be entered, pursuant to 15 U.S.C. § 1116(d)(1)(A), Fed.R.Civ.P. 65(b) and the common law of trademark, confirming the seizure authorized herein; and it is further
ORDERED that the search, seizure and sequestration and/or impoundment ordered hereinabove may be photographed and/or videotaped for the purpose of authenticating and assisting in the obtaining of evidence and to prevent subsequent controversy concerning the events occurring during such search, seizure and sequestration and/or impoundment; and it is further
ORDERED that pursuant to 15 U.S.C. § 1116(d)(1)(B) and Rules 30 and 34 of the Federal Rules of Civil Procedure, Plaintiff be given expedited discovery of Defendants with respect to the seized merchandise bearing Plaintiffs trademarks including discovery of the source thereof, the creation of such trademarks, the quantity of goods bearing such trademarks ordered, in inventory and sold by Defendants, and other matters relevant to this action and that such discovery shall take place no later than one (1) day prior to the show cause hearings scheduled herein; and it is further
ORDERED that Plaintiff post a bond in the amount of $ Thousand Dollars is deemed sufficient as security for the payment of such costs and damages as may be incurred or suffered by any party who is subsequently found to be wrongfully enjoined or restrained hereby, or as a result of a wrongful seizure and/or impoundment or wrongfully attempted seizure and/or impoundment; and it is further
ORDERED that personal service of the Summons and Complaint, this Order and the Supporting Declaration of Plaintiff s counsel may be made on Defendants by leaving copies of the same at the locations specified above or by hand-delivering a copy of the same to individuals at the locations specified above during the execution of this seizure order, and that such service shall be deemed sufficient service; and it is further
ORDERED that service of the documents referenced in the prior Paragraph shall be completed, either in accordance with the prior Paragraph or the Federal Rules of Civil Procedure, within one week of the date of this Order; and it is further
ORDERED that Plaintiffs may redact service copies of the Summons and Complaint, of this Order, and of Counsel's Declaration in support of this Order to remove information identifying any other Defendants, including but not limited to Defendants' addresses, to prevent premature disclosure of the locations identified in this Order and the papers filed in support of this Order; and it is further
ORDERED that copies of the documents filed in this action in support of this Order, but not served, be furnished to Defendants or their counsel upon request; and it is further
ORDERED that Defendants' answering papers, if any, be personally filed with this Court and personally served upon Plaintiffs counsel, Gibney, Anthony & Flaherty, LLP on or before one day prior to the show cause hearing scheduled herein; and it is further
ORDERED that upon each and every execution of this Order, Plaintiffs representatives shall prepare and sign, and Law Enforcement shall confirm and sign, an inventory of all items seized pursuant to this order, noting, inter alia, the date and location of each seizure and a brief description of all items seized, and that Law Enforcement file a return to this Court upon each and every execution of this Order with a copy of the pertinent above-described inventory signed by the Plaintiffs representatives and Law Enforcement; and it is further
ORDERED that the Plaintiff, on behalf of itself, its officers, employees, principals and assigns (hereinafter individually and collectively known as "Plaintiff s Group"), hereby release any and all claims, demands, rights, and causes of action of any kind, whether known or unknown, arising from any and all known or unknown, foreseen or unforeseen causes, which they may have or hereafter acquire against the Law Enforcement, whichever is involved in the execution of this Order, as well as its agencies, agents, officers, or employees, arising from the execution of this Order to the extent that the underlying acts or omissions were performed, precipitated, sanctioned or condoned by Plaintiffs Group; and it is further
ORDERED that Law Enforcement is not an agent of the Plaintiff when executing this Order, but is instead acting under the authority and at the direction of this Court. Accordingly, Plaintiff is not responsible for any acts performed by Law Enforcement without its knowledge, direction, consent or control that exceed the scope and/or intent of this Order; and it is further
ORDERED that, pursuant to 15 U.S.C. § 1116(d)(5)(C), any seizures authorized under this Order shall be made within seven (7) days of the date of entry or within seven (7) days of any amendment to this Order, and pursuant to Rule 65(b)(2) of the Federal Rules of Civil Procedure, all other relief authorized under this Order shall expire within fourteen (14) days of the date of the entry, unless before that time, the Court, for good cause, extends this period for an additional fourteen (14) days.
Defendants are hereby put on notice that failure to attend the show cause hearing scheduled herein may result in the confirmation of the seizure authorized herein and the immediate issuance of the preliminary injunction, which may be deemed to take effect immediately upon the expiration or dissolution of the order herein, and shall extend during the pendency of this suit the same injunctive relief previously granted by the Order. Defendants are hereby further notified that they may be deemed to have actual notice of the issuance and terms of such preliminary injunction, and that any act by them in violation of any of its terms may be considered and prosecuted as contempt of this Court.
The Court has granted the foregoing Orders without prior written or oral notice to Defendants for the reasons set forth below:
a. The entry of any order other than a seizure order without notice will not serve to adequately achieve the objectives underlying the Trademark Counterfeiting Act and the common law of trademark infringement;
b. Plaintiff has not publicized its proposed seizure;
c. Plaintiff has given the United States Attorney for this District notice of Plaintiff s seizure application for a seizure order without notice pursuant to 15 U.S.C. § 1116(d)(2);
d. Plaintiff is likely to succeed in showing that Defendants have used a counterfeit mark in connection with the sale, offering for sale or distribution of goods or services;
e. Plaintiff will incur immediate and irreparable injury with no adequate remedy at law if this Court declines to grant a seizure and/or impoundment order without notice;
f. The matters subject to said seizure order will be located at: 178B Hester New York, New York 10013; 224D Canal Street New York, New York 10013; 106-B Mulberry Street New York, New York 10013; 201 Canal Street New York, New York 10013; 117 Mulberry Street New York, New York 10013; 1 lOB Mulberry Street (North) New York, New York 10013; 110A Mulberry Street (South) New York, New York 10013; 205 Canal Street (East) New York, New York 10013; 205 Canal Street (West) New York, New York 10013; and 105 Mulberry Street New York, New York 10013.
g. The harm to Plaintiff should this Court decline to grant Plaintiffs motion for a seizure order without notice outweighs any harm which Defendants may incur in the event this Court grants Plaintiffs motion for a seizure and impoundment order;
h, Defendants, or persons acting in concert with them, would likely destroy, move, hide or otherwise make inaccessible to the Court the matters which are subject to the proposed seizure orders if Plaintiff is required to proceed on notice.