alex & ani v. reep - am complaint

Case 1:12-cv-07887-AJN Document 3 Filed 11/05/12 of 20

GARBARINI FITZGERALD P.C.

420 Lexington Avenue Suite 2743 New York, New York 10170 (212) 300-5358 Fax (888) 265-7054

Richard M. Garbarini (5496) Thomas J. FitzGerald (2426) Latrisha Desrosiers (6971)

Attorneys for Plaintiff Alex and Ani, LLC

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

ALEX AND ANI, LLC,

Plaintiff,

v.

RANDA I. REEP and RODNEY REEP d/b/a BELLA RYANN and R & L MERCHANDISING, LLC,

Defendants.

Case No.: 12-cv-7887 (AJN)

ECF CASE

FIRST AMENDED COMPLAINT AND JURY DEMAND

Plaintiff Alex and Ani, LLC, by and through its attorneys at GARBARINI

FITzGERALD P.c., by way of its First Amended Complaint against Randa Isa Reep and

Rodney Reep d/b/a Bella Ryann and R & L Merchandise, LLC (collectively referred to

herein as Defendants), alleges as follows:

NATURE OF THE CASE

1. This is an action at law and in equity arising under the patent laws of the

United States, 35 U.S.C. §§ 101 et seq.; the Lanham Act, 15 U.S.C. §§ 1051 et seq.; and

for substantial and related New York and common-law claims.


2. Alex and Ani, LLC is an American jewelry company based in Rhode

Island. At all times relevant to this Complaint, Alex and Ani created, mmmfactured m1d

distributed an iconic bangle which is the subject of United States Leiters Patent No.

D498, 167 entitled "Expandable Wire Bracelet" (the '" 167 Patent"). The iconic Alex and

Ani line of bangles and channs has also achieved secondary meaning in the United States

marketplace.

3. Defendant Rm1da Isa Reep ("RANDA") and Rodney Gene Reep

("RODNEY") (collectively referred to herein as the "REEPS" or the "REEP

Defendants") are individuals doing business under the name Bella Rymm. Through the

Bella Rymm label, the REEPS have manufactured, imported, sold and otherwise

distributed knockoff bangle bracelets throughout the United States, m1d attempted to

capitalize on the goodwill of the iconic Alex and Ani brand.

4. Upon infom1ation and beliefR & L Merchandise, LLC ("R & L") is a

limited liability company organized under the laws of Tennessee. The REEPS have

claimed it is actually R & L that is doing business under the nmne Bella Ryan and that

has manufactured, imported, sold and otherwise distributed knockoff bangles throughout

the United States, and attempted to capitalize on the goodwill of the iconic Alex and Ani

brand.

5. At no time has R & L filed to do business as Bella Rymm, as required

under Tennessee Law, Tenn. Code Ann.§ 48-249-106(d), or held itself out as being

affiliated in any way with Bella Rymm. For example, neither the Bella Rymm catalogue

nor website identifies Bella Rymm as being affiliated with R & L.

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6. This is simply a matter of two individuals who have distributed infringing

goods, and once caught, tried to limit their liability by claiming an unaffiliated company

somehow bears the liability.

PARTIES

7. Alex and Ani, LLC is a limited liability company organized under the

laws of the State of Rhode Island with a principal place of business located at 2000

Chapel View Boulevard, Cranston, Rhode Island. Alex and Ani also maintains offices in

this Judicial District.

8. Defendant Randa Reep is an individual residing in Nashville, Tennessee.

RANDA imports, sells ancl/or distributes jewelry throughout the United States, and in this

Judicial District under the name Bella Rya1m.

9. Defendant Rodney Reep is an individual residing in Nashville, Tennessee.

RODNEY imports, sells and/or distributes jewelry throughout the United States, and in

tllis Judicial District under the name Bella Ryann.

10. Upon information and belief, the REEPS own 100% of the Bella Ryann

bra11d.

11. Defendant R & L Merchandise, LLC is a linlitedliability company

organized tmder the laws ofTe1messee. Upon information provided by the REEPS,

R & L manufactures, imports, sells a11cllor distributes jewelry throughout the United

States, and in tllis Judicial District under the name Bella Ryann.

JURISDICTION AND VENUE

12. Tllis action arises under the Patent Act of 1952, 35 U.S.C. §§ 101 et seq.,

a11d Section 39 of the Lanha1n Act 15 U.S.C. § 1121, and tmder principles of

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supplemental jurisdiction, 28 U.S.C. § 1367. This Comi has subject matter jurisdiction

pursuant to 15 U.S.C. § 1121 and 28 U.S. C. §§ 1331, 1338 and 1367.

13. This Court has genera/jurisdiction over the Defendants pursuant to

Section 301 of the New Y ode CPLR because over the past year and a half Defendants,

individually and through their purported company, have engaged in such a continuous

and systematic course of doing business here that a finding of their presence in tllis

jurisdiction is wmranted. Defendm1ts maintain a pennm1ent presence with a fair measure

ofpennm1ence and continuity.

14. Tills Court has spec?fic jurisdiction over Defendants pmsuant to New

York's long-arm statute codified at CPLR § 302. Jurisdiction is confened here under

§ 302(a)(l) because the Defendants, individually m1d through their purpmied company,

"transact business" in New York, and tills cause of action arises from such transaction of

business in New York.

15. Tills Court has in personam jurisdiction over the REEP Defendants

because the REEP Defendants have distributed or sold infringing merchm1dise under the

nmne Bella Ryann witilln tllis Judicial District, have manufactmed or distributed products

used or consumed within tills Judicial District in the ordinary comse of trade, or have

otherwise made or established contacts within tills Judicial District, sufficient to pennit

the exercise of personal jmisdiction.

16. Venue is proper in tills District under 38 U.S.C. §§ 1391(b) and (c) and

§ 1400(b) because the Defendants reside and/or may be found in tills Judicial District and

acts of infringement were co111111itted in this Judicial District. Venue is also proper in this

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District pursuant to 28 U.S.C. § 1391(b)(2) because a substantial pati ofthe events or

omissions giving rise to Plaintiff's claims occmred in this District.

General Jurisdictional Facts

17. Sometime in 2011, Defendm1ts plotted to enter the New York mm·ket by

retaining sales associates in the New York City and Long Island areas. One of the agents

was, atld is, Cheryl Cohen of Don Mar Associates.

18. Upon information at1d belief, Ms. Cohen is a resident ofNew York.

19. Defendm1ts' New York representatives render services on behalf of the

Defendants that go beyond mere solicitation and are sufficiently important to Defendants

that the Defendants themselves would perfonn equivalent services if no agent were

available.

20. In fact, on or about October 23, 2012 when contacted to list the retail

stores in New York selling infringing Bella Ryann products, RODNEY did not know, but

deferred to Ms. Cohen as his agent responsible for independently determining which

stores in New York Defendants sold their products.

21. At all times material to this Complaint, Ms. Cohen and Don Mar

Associates had the authority to enter into contracts atld enter new account locations.

22. Upon information and belief, Ms. Cohen contacted many New York City

and Long Island retail outlets and entered into numerous contracts to sell Defendants'

infi:inging Bella Ryann products.

23. From July 2011 through 2012, the infringing Bella Ryann products were

also shown and sold at various trade shows like the New York International Gift Fair held

at the Jacob K. Javits Convention Center.

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24. Defendants also entered into contracts with national retailers including

Hallmark Stores for distribution ofthe infringing Bella Rymm bangles into the New York

metropolitan area.

Personal Jurisdictional Facts

25. At all times relevant to this Complaint, the REEPS have held themselves

out as the owners of Bella Ryann.

26. Bella Rymm has no corporate fonn or affiliation. The REEPS have

claimed R & L is the corporate parent of Bella Rymm. R & L has never filed under

Te1messee Law, Tel111. Code Ann.§ 48-249-106(d), to do business as Bella Ryann.

27. The Bella Ryann catalogue does not list any corporate parent or affiliation.

See Catalogue Exhibit A. Nor does the Face book page for Bella Rymm list any

affiliation to R & L. See Facebook Page Exhibit B. In fact, the phone number and

address associated with Bella Rymm is for the REEPS' personal phone and address.

28. While Bella Ryal111 identifies itself with a common law "TM", it has

neither registered nor sought to register, the trademark within the United States Patent

and Trademark Office.

PLAINTIFF'S FAMOUS MARK

29. Alex and Ani is a manufacturer and distributor of the finest quality fashion

jewelry designs that cmTy self-affim1ing messages based on the life and experiences of

their creator, Carolyn Rafaelian. The products bem·ing the Alex and Ani Trade Dress are

manufactured in Rhode Islm1d m1d sold through authorized retailers.

30. The distinctive Alex and Ani products feature a bangle style bracelet with

a single medallion-style chann attached to it, where the medallion-style cham1 bears one

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of a number of distinctive Alex and Ani-designed images. The iconic bm1gles also have a

small metal tag for which Alex and Ani is fmnous m1d that identifies the products as Alex

and Ani designs.

31. This unique combination of elements (the "Alex and Ani Trade Dress")

serves to readily distinguish for consumers Plaintiffs wide rm1ge of products from the

goods of competitors. Plaintiff enjoys substm1tial goodwill in the design of the Alex m1d

Ani products, owing to Plaintiffs lengthy, innovative and exclusive use of the distinctive

product design.

32. A smnple of the Alex m1d Ani Trade Dress is shown below:

33. Plaintiff has continuously used the Alex m1d Ani Trade Dress in

commerce since at least as early as 2004.

34. Since that time, Plaintiff has gone to great expense m1d effort to develop,

promote m1d protect the Alex m1d Ani Trade Dress. As a result of Alex and Ani's effmis

m1dlongevity, the Alex m1d Ani Trade Dress m1d all products sold bearing the Alex m1d

Ani Trade Dress have become widely recognized by consumers m1d the industry as being

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associated with Plaintiff. Alex and Ani's products have achieved a well-deserved

reputation for quality and have experienced impressive sales growth and success over the

last eight years.

35. The excellence of Alex and Ani products has been widely recognized in

the United States and worldwide and has favorably been reported upon by the press. Just

a few of the many publications that have reported on Plaintiffs well-known Trade Dress

are Vogue, Glamour, Redbook, InStyle Spain, Lucky Magazine, Daily Front Row, ELLE,

ELLE Spain, Women's Health and Brides.

36. The Alex and Ani Trade Dress has become well known and identified in

the minds of the trade and the pmchasing public as identifying these products as the

products of Alex and Ani. The Alex and Ani Trade Dress has come to indicate the source

and quality of these products, to signify the association with Alex and Ani, and has

become an important business asset of immense and incalculable value.

DEFENDANTS' WRONGFUL ACTS

37. Plaintiff discovered that Defendants were manufactming, importing,

selling, and/or distributing goods bearing Plaintiff's Trade Dress (the "Infringing

Goods") in retail outlets throughout the United States, and in particular New York.

38. An inspection of Defendants' products confirmed that Defendants' goods

bear Plaintiff's valuable Trade Dress.

3 9. A representative example of the Infringing Design of an Alex and Ani

bangle along with the genuine design is shown below:

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Infringing Bella Ryann Bangle Genuine Alex and Ani Bangles

40. A representative example of the Infringing Design of an Alex and Ani line

of bangles along with the genuine line is shown below:

Infringing Bella Ryann Line Genuine Alex and Ani Line

41. Upon information and belief, Defendants are offering for sale and selling

goods bearing the Alex and Ani Trade Dress to wholesalers, distributors, retail outlets

and individuals.

42. Defendants' Infringing Goods bearing the Infringing Designs are otlered

in the same channels of trade as Plaintiff's goods bearing the Alex and Ani Trade Dress.

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4 3. Alex and Ani has not consented to Defendants' use of the Infringing

Designs, nor has Plaintiff sponsored, endorsed or approved the goods or services offered

or promoted by Defendants.

44. Defendants' unauthorized use of the Infringing Designs is likely to cause

confusion, to cause mistake, and to deceive an appreciable number of reasonably prudent

customers and prospective customers into falsely believing that Defendants'' goods are

provided, sponsored or approved by Alex and Ani or that there is a connection or

affiliation between Alex and Ani and Defendants.

45. Upon infom1ation and belief, Defendants intentionally and deliberately

employ Infringing Designs identical to Plaintiffs Trade Dress to mislead and confuse

consumers into believing that Defendants' goods are provided, sponsored, or approved by

Alex and Ani.

46. As a direct and proximate result of Defendants' conduct set forth above,

Alex and Ani has been irreparably injured.

4 7. Defendants' conduct is continuing and will continue, constituting an

ongoing threat to Alex and Ani and the public. Unless Defendants are restrained and

enjoined from engaging in the wrongful conduct described herein, Alex and Ani will

suffer irreparable injury. It would be difficult to ascertain the amount of compensation

that could afford Alex and Ani adequate relief for the acts of Defendants, present and

threatened, and Plaintiffs remedy at law is not adequate in and of itself to compensate it

for said harm and damage.

48. Alex and Ani has extensively and continuously promoted and used the

Trade Dress and its associated goodwill throughout the United States and world, and the

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i I .

I. Trade Dress has thereby become a famous and well-known indicator of the origin of the

Alex and Ani goods and has achieved significant secondary meaning.

THE PATENT

49. To further protect her invention, Ms. Rafaelian applied for and received

United States Letters Patent No. D498,167 entitled "Expandable Wire Bracelet" (the

'" 167 Patent").

50. The '167 Patent was duly and legally issued by the United States Patent

and Trademark Office on November 9, 2004 to Carolyn Rafaelian, who has assigned all

right, title, and interest in the patent to Alex and Ani.

51. A true and correct copy of the '167 Patent is attached hereto as Exhibit C.

52. Less than one year before Defendants began knocking off Plaintiffs

patented bangles, Defendants ordered a quantity of the bangles and associated charms

through an intem1ediary. Defendants then began to willfully and deliberately copy the

Plaintiff's patented design.

FIRST CLAIM FOR RELIEF WILLFUL INFRINGEMENT OF U.S. PATENT NO. D498,167

(35 u.s.c. § 271)

53. Plaintiff repeats and realleges all of the preceding paragraphs as if stated at

length herein.

54. In violation of35 U.S.C. § 271(a), the Defendants have made, used,

offered for sale, distributed, imported, and/or sold in the United States, expandable

bangle bracelets that infringe the '167 Patent.

55. In violation of35 U.S.C. §§ 271(b) and (c), the Defendants have actively

induced the infringement of, and/or contributed to the infringement of the '167 Patent.

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I . !

56. The infringement of the '167 Patent by the Defendants has occuned with

knowledge of the '167 Patent and has been willful and wanton.

57. Plaintiffhas been infonned that Defendants ordered Plaintiff's products

for the sole purpose of knocking them off.

58. Alex and Ani has suffered and will continue to suffer serious and

inepmable injury unless the Defendants' infringement ofthe '167 Patent is enjoined.

59. Plaintiff is entitled to damages adequate to compensate for the

Defendants' infringement of the '167 Patent in an amOlmt to be determined at trial, but in

no event less than a reasonable royalty, treble damages, interest, attomeys' fees and the

costs incurred in this action;

SECOND CLAIM FOR RELIEF FEDERAL TRADE DRESS INFRINGEMENT

(15 U.S.C. § 1125(a))

60. Alex and Ani incorporates by reference each and every allegation in the

preceding paragraphs, as if set forth in full herein.

61. Upon information and belief, commencing at some time tmknown to

Plaintiff Alex and Ani and continuing to the present, Defendants manufactured,

advertised, offered for sale and have engaged in the sale, resale and distribution of

Infringing Goods bearing an Infringing Designs without Plaintiff's consent, and thereby

infringing the Alex and Ani Trade Dress.

62. The labels of Defendants' Infringing Design bem a striking resemblance

to, and me a blatant and obvious imitation of, the Alex and Ani Trade Dress featured on

genuine Alex and Ani products.

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63. The Alex and Ani Trade Dress and the Infringing Designs of the

Infringing Goods create the same general overall impression and have the same "look and

feel" as genuine Alex and Ani products. Upon information and belief, the similarities

between the Alex and Ani Trade Dress and the Infringing Designs of the Infringing

Goods are not a mere coincidence.

64. Defendants' Infringing Goods were designed intentionally to mimic the

Alex and Ani Trade Dress in that the designs of the jewelry goods are exactly the same,

having identical designs and distinctive arrangement of design elements. This creates the

itmnediate commercial impression that goods bearing such designs are associated with

and emanate from Alex and Ani.

65. Defendants' sale of its Infringing Goods in the United States constitutes a

false designation of origin and is intentionally designed to deceive, and has deceived,

customers into believing that the Infringing Goods are genuine goods of Alex and Ani.

66. Defendants have without permission, willfully, and with the intention of

benefiting from the reputation and goodwill of Plaintiff Alex and Ani, imitated the

design, style, and layout of the Alex and Ani Trade Dress.

67. As a consequence, the Infringing Designs on the Infringing Goods are

likely to deceive and divert, and have deceived and diverted, customers away from the

competing genuine Alex and Ani products and create a likelihood of consumer confusion

as to the source of the Alex and Ani products and the Infringing Goods.

68. Defendants' conduct, as alleged in the foregoing paragraphs, constitutes

trade dress infringement in violation of Section 43(a) of the Lanham Act, 15 U.S. C.

§ 1125(a), which prohibits the use in commerce in connection with the sale of goods of

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any word, term, name, symbol, or device, or any combination thereof which is likely to

cause conf-usion, or to cause mistake, or to deceive as to the source of the goods.

69. Without injunctive relief, Alex and Ani has no means by which to control

the continuing injury to its reputation and goodwill. Alex and Ani has been and will

continue to be ineparably harmed. No amount of money damages can adequately

compensate Alex and Ani if it loses the ability to control the use of its Trade Dress,

reputation, and goodwill though the false and unauthorized use of its Trade Dress. Alex

and Ani is entitled to monetary damages and injtmctive relief prohibiting Defendants

from using the Infringing Design, or any other trademark or designation which is likely to

be confused with the Alex and Ani Trade Dress.

70. Because Defendants' actions have been committed willfully and with

intent to profit from Plaintiffs goodwill in the Alex and Ani Trade Dress, tlris is an

exceptional case and Alex and Alri is entitled to recover Defendants' profits together with

Alex and Ani's damages, trebled, costs of the action, and reasonable attorneys' fees

pursuant to Section35(a) of the Lanhan1 Act, 15 U.S.C. § 1125(a).

THIRD CLAIM FOR RELIEF FEDERAL UNFAIR COMPETITION

(15 U.S.C. § 1125(a))

71. Alex and Ani incorporates by reference each and every allegation in the

preceding paragraphs, as if set fmih in full herein.

72. Defendants' use of the Infringing Designs, a mark identical and

confusingly similar to the Alex and Ani Trade Dress, in a similar manner in connection

with identical and highly related goods constitutes unfair competition in violation of

Section43 of the Lanham Act, 15 U.S.C. § 1125(a).

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73. As a direct m1d proximate result of the willf-ul and won ton acts and

conduct of Defendants, Alex and Ani has been injured m1d will continue to suffer

ineparable injury to its business and reputation unless Defendm1ts are restrained by the

Court from unfairly competing with Alex and Ani. No m110Unt of money danmges cm1

adequately compensate Alex and Ani. Without injunctive relief, Alex and Ani has no

means by which to control the continuing injury to its reputation and goodwill.

74. Because Defendm1ts' actions have been committed willfully and with

intent to profit from Plaintiffs goodwill in the Trade Dress, this is an exceptional case

and Alex m1d Ani is entitled to recover Defendm1t' s profits together with Alex and Ani's

dmnages, trebled, costs of the action, and reasonable attomeys' fees pursum1t to section

35(a) of the Lmlhmn Act, 15 U.S.C. § 1125(a).

FOURTH CLAIM FOR RELIEF COMMON LAW UNFAIR COMPETITION

75. The Plaintiffrealleges and incorporates by tllis reference, each and every

allegation set forth in the previous paragraphs.

76. The acts and conduct of Defendants alleged in this Complaint constitute

unfair competition under the common law of this state.

77. The Plaintiff is infonned and believes and on that basis alleges that

Defendm1ts have cmnmitted the acts alleged with previous knowledge of Plaintiffs prior

use and superior rights to its Trade Dress in the U1lited States and tllis State. Further,

Defendants' actions were for the willful and calculated purpose of trading upon the

Plaintiff's goodwill and for the willful and calculated purpose of selling Defendm1ts'

infringing products based upon the goodwill of Plaintiff's Trade Dress m1d business

reputation so as to nlislead and deceive purchasers and the public. Defendants' actions

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are likely to cause conf-usion and mistake among purchasers and the public as to the

origin, quality or affiliation, connection or association of the infringing products, all to

Defendants' gain and the Plaintiff's damage.

78. Defendants' conduct as alleged above has damaged and continues to

damage the Plaintiff's goodwill and reputation and has resulted in a loss of profits to the

Plaintiff in an amount which is tmknown at present time.

FIFTH CLAIM FOR RELIEF DILUTION

(Under Section 360-L of the N.Y. Gen. Bus. Law)

79. The Plaintiff realleges and incorporates by this reference, each and every

allegation set forth in the previous paragraphs.

80. Defendants' acts and conduct as previously alleged in this Complaint

constitute dilution of the distinctive qualities of Plaintiff's trademark within the meaning

ofNew York's Anti-Dilution Statute, N.Y. Gen. Bus. Law Section 360-L, in that said use

causes likelihood of confusion or of misunderstanding as to the source, sponsorship or

approval ofDefendants' products and will likely cause a blurring of the distinctive source

identification quality of Plaintiff's trademark in the United States.

81. Unless this Court enjoins Defendants, tmder the provisions ofN. Y. Gen.

Bus. Law Section 360-L, Defendants will continue to engage in activities which dilute

the distinctive quality of Plaintiff's trademark thereby deceiving the purchasing public

and causing Plaintiff's immediate irreparable damage and injury for which it has no

adequate remedy at law.

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PRAYER FOR RELIEli'

WHEREFORE, Plaintiff Alex and Ani prays for judgment against Defendants,

jointly and severally, as follows:

AS TO THE FIRST CLAIM FOR RELIEF

A. A judgment that the Defendants have infringed the '167 Patent in

violation of35 U.S.C. §§ 271(a), (b), and/or (c);

B. A judgment that the Defendants' infringement of the '167 Patent has been

willful and wanton;

C. A pem1anent injunction, pursuant to 35 U.S.C. § 283, enjoining the

Defendants, and all persons in active concert or pariicipation with the Defendants, from

any fmiher acts of infringement, inducement of infringement, or contributory

infringement of the '167 Patent;

D. An order, pursuant to 35 U.S.C. § 284, awar-ding Plaintiff damages

adequate to compensate for the Defendants' infringement of the '167 Patent, in an

amount to be detem1ined at trial, but in no event less than a reasonable royalty;

E. An order, pursuant to 35 U.S.C. § 284, and based on the Defendants'

willful and wanton infringement of the '167 Patent, trebling all damages awar-ded to

Plaintiff;

F. An order, pursuant to 35 U.S.C. § 284, awar-ding Plaintiff interest on the

darnages and its costs incurred in this action;

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G. An order, pursuant to 35 U.S. C. § 285, finding that this is an exceptional

case and awarding to Plaintiff its reasonable attorneys' fees and costs incmred in tllis

action;

AS TO THE SECOND CLAIM FOR RELIEF

H. An order awarding Plaintiff such damages as it has sustained or will

sustain by reason ofDefendants' Trade Dress infringement;

I. An order awarding Plaintiff all gains, profits, property, and advantages

derived by Defendants from such conduct, and, pursuant to 15 U.S.C. § 1117, awarding

Plaintiff an amount up to three times the an1ount of the actual damages sustained as a

result of Defendants' violation of the Lanhan1 Act;

J. An order awarding Plaintiff exemplary and punitive dan1ages to deter any

future willful infringement as the CoUii finds appropriate;

K. An order awarding Plaintiff its costs and disbursements incurred in tllis

action, including its reasonable attorneys' fees, as provided by 15 U.S.C. § 1117;

L. An order awarding Plaintiff interest, including pre-judgment interest, on

the foregoing smn;

M. An order pe1manently enjoining Defendants and all their agents, officers,

employees, representatives, successors, assigns, attorneys, and all other persons acting

for, with, by, through, or under authority from Defendants, or in concert or pa1iicipation

with Defendants, from:

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1. using the trade dress, or any other copy, reproduction, or colorable imitation or simulation of Plaintiffs Trade Dress on or in connection with Defendants' goods or services;

2. using any trademark, service mark, name, logo, design or source designation of any kind on or in cmmection with Defendants' goods or services that is a copy, reproduction, colorable imitation, or simulation of, or conf-usingly similar to, or in any way similar to the trademarks, service marks, names, or logos of Plaintiff;

3. using any trademark, service mark, name, logo, design or source designation of any kind on or in cmmection 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;

4. 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;

N. An order requiring Defendants to recall all products bearing the Trade

Dress or any other confusingly similar mark, which have been shipped by Defendants or

under its authority, to any customer including, but not limited to, any wholesaler,

distributor, retailer, consignor, or marketer and also to deliver to each customer a copy of

tllis Court's order as it relates to said injtmctive relief against Defendants;

0. An order requiring Defendants to deliver up for impoundment and for

destruction all bangles, tags, signs, packages, receptacles, advertising, sample books,

promotional material, stationery or other materials in the possession, custody, or under

the control of Defendants that are found to adopt or to infringe any of Plaintiffs

trademarks or trade dress or that otherwise unfairly compete with Plaintiff and their

products and services; Defendants be compelled to accmmt to Plaintiff for any and all

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profits derived by Defendants from the sale or distribution of infringing goods as

described in this Complaint;

AS TO THE THIRD AND FOURTH CLAIMS FOR RELIEF

P. To enter a judgment that Defendants have engaged in tmfair competition;

Q. To award Plaintiff exemplary and punitive damages to deter any future

willful infringement as the Court finds appropriate;

R. To award Plaintiff interest, including pre-judgment interest, on the

foregoing sum;

S. To enter an order pem1anently enjoining and restraining Defendants and

its parents, subsidiaries, divisions, agents, dealers, officers, employees, successors, and

assigns, and all other acting in concert or participation with Defendants, from:

1. engaging in any activity constituting unfair competition with Plaintiff; and

2. aiding, assisting, or abetting any other party in doing any act prohibited by sub-paragraph (1 );

T. To direct Defendants to deliver up for impoundment and for destruction

all bangles, tags, signs, packages, receptacles, advertising, sample books, promotional

material, stationery or other materials in the possession, custody, or under the control of

Defendants incorporating or bearing simulations, variations, or colorable imitations of

Plaintiffs Trade Dress used alone or in combination with other words or designs; and

U. That Defendants be ordered to pay Alex and Ani pre-judgn1ent interest on

any monetary award;

AS TO THE FIFTH CLAIM FOR RELIEF

V. That Defendants be enjoined from the manufacture, use, display or sale of

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Case 1:12-cv-07887-AJN Document 3-1 Filed 11/05/12 Page 1 of 20

any counterfeits or imitations thereof;

W. That Defendants be required to pay to Plaintiff all profits derived from

and/or all damages suffered by reason of Defendants' wrongful manufacture, use, display

or sale;

X. An Order commanding that any cotmterfeits or imitations in the

possession or m1der the control of Defendants be delivered to an officer of the Comi or to

Plaintiff to be destroyed;

Y. An Order entering judgment for an an1otmt three times the ammmt of

Defendants' profits and damages, including all of Plaintiff's reasonable attorneys' fees;

and

Z. Such further relief as the Court deems just, proper and equitable.

DEMAND FOR JURY TRIAL

Pursuant to Fed. R. Civ. P. 38(b), Plaintiff Alex and Ani hereby demands a trial of

this dispute by a jury.

Dated: New York, New York November 5, 2012

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Respectfully submitted,

GARB7;;;TZGERALD PC

By:~k-~ Richard M. Garbarini 420 Lexington Ave, Suite 2743 New York, New York Phone: 212.300.5358 Fax: 888.265.7054

Attorneys for Plaintiff


EXHIBIT A Bella Ryann Catalogue


Item# 10745 Initial Bracelet Asst. 2ea. Silver, lea. Gold, lea. Display $448.00

Item# 10746 Zodiac Bracelete Asst. 2ea. Silver, lea. Gold, lea. Display $226.00


Item# 10747 Word Bracelet Asst. 2 ea. Silver, lea. Gold, lea. Display $172.00

Item# 10748 Birth .. Bracelet .Asst. 2ea. Silver, lea. Gold, lea. Display $226.00

Item# 10749 Nautical Bracelet Asst. 2ea. Silver, lea. Gold, lea. Display $244.00


Item# 10750 General Bracelet Asst. 2ea. Silver, lea. Gold, lea. Display $226.00

Item# 10740 Zodiac Necklace Asst. 2ea. Silver, lea. Gold, w/Display $226.00


Item# 10742 Birthstone Necklace Asst. 2ea. Silver, lea. Gold, w/Display $226.00

Item# 10739 Initial Necklace Asst. 2ea. Silver, lea. Gold, w/Display $448.00

picture coming soon

Item# 10741 Word Necklace Asst. 2ea. Silver, lea. Gold, w/Display $172.00

picture coming soon

Item# 10743 Nautical Necklace Asst. 2ea. Silver, lea. Gold, w/Display $244.00

picture coming soon

Item# 10744 General Necklace Asst. 2ea. Silver, lea. Gold, w/Display $226.00

picture coming soon


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EXHIBITC U.S. Patent No. D498,167


111111111111111111111111111111111111111111111111111111111111111111111111111 USUOJWJ~I67S

(12) United States Design Patent (Io) Patent No.: US D498,167 S ** Nov. 9, 2004 .Fcrlisc (45) Date of Patent:

(54) Exl>ANOAfiLE WTRE BRACELET

(7li) lnvcmor: Cumlyn Rafut'linn Fl'.disl', 41 Highgntc Rd., Crnnston, RT (US) 02920

(*"') Tc.:rm: 14 Years

(?.1) AppL Nn.: 29(194,0$3

(22) fik.tl: Nov. 19, 2003

Related IJ.S. Applk:ation nata

(62) Division of application No. 2'J;1Hl,S44, filed on Mny 11), 2003, now Pnt. Nn. /)c;. 4fi7;70').

(51) LOC (7) CJ ..................................................... 11-01 (52) U.S. Cl. .......................................................... D1U5 (SR) Fi~ld of Search .......................... n·1 l/H 5, 1R-20,

D 11/22-2.5, <.!3; 5<.!/79.1, 79.3, 71\, K3; 63!3-4, 9, 2"1, 38

(Sti) References CitL'<I

U.S. PATENT DOCUMENTS

4?,q;n9 ;\ + S/1 1\90 !Townrd ......................... fi.Vll D69.012 S • l2i1925 Dulin .......................... Dll;::\1)

D247,l02 S • 1/1978 Durunk ........................ Dll/5 5,247:.Bl4 A • Wl!J'l3 l'vlcl:h1nnld .................... <i3/3.2

, -...

0471,177 S • 3i2ULB McCidlough-.Md'h~rson Dlli4

+ cit~d by ~xaminer

I'1imarr Examiner--l.J.Jui~ S. Z:nf:1s .1ssisla~ll }.).·mniner-Jdm Wimlmulkr (74) Attorney, Agent, or Fit111-!.inda M. Huck1cy; ChtU;iioe- C. O'Day; Edwards & Angdl, LU'

(57) ClAIM

The omamcntn.! design for an expandable wire bracelet, ns &hown and tlesnibell.

DESCRUYfiON

[-if(i. ·1 is a pcrspccJ.ive view of ,111 ex-pandable wire hracclc.r, showiug my n~w design; HG. 1 is a top plan view there-of; l'TG. 3 is a bottom view thereof:; J<!(i. 4 i1: a left side vtcw thereof; l'TG. 5 is a riglll side view lhereol'; HC.i. 6 is ~ r~-ar view· thereof; nnd, HG. 7 is '' from vit.w !hereof. The subjcd m<tltcr tlcpickd in dashed lines in fiGS. 1-7 is shown for illustrative purposes only and forms no part of tho

claimed dcsi!,'ll.

1 Chlim, 7 Drawing Sheets


U.S. Patent Nov. 9, 2004 Sheet 1 of 7 US D498,167 S

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alex & ani v. reep - am complaint

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