complaint gabbanelli

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IN THE UNITED STATES DISTRICTFOR THE SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

GABBANELLI ACCORDIONS & §IMPORTS, L.L.C. §

§Plaintiff, § Civil Action No. 4:11-cv-850

§vs. §

§FOLK MUSIC S.L. § JURY DEMANDED

§Defendant. §

COMPLAINT

Gabbanelli Accordions & Imports, L.L.C. (“Gabbanelli” or “Plaintiff”) files this

Complaint against Folk Music S.L. (“Defendant”) and would respectfully show the Court as

follows:

PARTIES

1. Plaintiff Gabbanelli Accordions & Imports, L.L.C. is a Texas limited liability

company with its principal place of business in Houston, Texas.

2. On information and belief, Defendant Folk Music S.L., is a Spanish company

organized under the laws of Spain, having a principal place of business located at FOLK MUSIC

S.L., Avenida Barañáin, 52 bajo, E-31008 Pamplona, Navarra, Spain. Service may be affected

upon Defendant Folk Music Instruments S.L. through the Convention on the Service Abroad of

Judicial and Extra-Judicial Documents in Civil or Commercial Matters (the “Hague

Convention”). Pursuant to the Hague Convention, service may be affected by delivering a copy

of this Complaint and a translation of this Complaint into the Spanish language to the Central

Authority for Spain: Secretaría General Técnica, Subdirección General de Cooperación Jurídica

Internacional, Ministerio de Justicia, c/ San Bernardo N° 62, 28071 MADRID, Spain.

Case 4:11-cv-00850 Document 1 Filed in TXSD on 03/08/11 of 14

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JURISDICTION AND VENUE

3. The United States District Court for the Northern District of California has

jurisdiction over this action pursuant to the provisions of 28 U.S.C. §§ 1331, 1338(a) in that this

matter is a civil action arising under the Constitution, laws, or treaties of the United States,

namely, under the trademark laws of the United States, 15 U.S.C. § 1051, et seq. This action

involves federal trademark rights, federal Lanham Act violations, and other federal causes of

action.

4. This Court also has jurisdiction over this action pursuant to the provisions of 28

U.S.C. § 1332 in that this matter is a civil action between citizens of different states wherein the

amount in controversy is believed to exceed the sum of $75,000, exclusive of interest and cost.

Plaintiff is a Texas limited liability company with its principal place of business in Houston,

Texas. Defendant is a resident of the state of California and is doing business in California and

elsewhere.

FACTUAL BACKGROUND

5. Gabbanelli owns U.S. Trademark Registration No. 1,996,735, issued August 27,

1996, for the mark GABBANELLI® for accordions and accordion accessories, namely,

accordion carrying cases and accordion shoulder straps. A true and correct copy of U.S.

Trademark Registration No. 1,996,735 is attached hereto as Exhibit A and is incorporated herein

in its entirety. U.S. Trademark Registration No. 1,996,735 is valid, subsisting, and in full force

and effect.

6. Gabbanelli owns U.S. Trademark Registration No. 2,123,429, issued December

23, 1997, for the mark GABBANELLI and Design shown in U.S. Trademark Registration No.

2,123,429 for accordions. A true and correct copy of U.S. Trademark Registration No.


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2,123,429 is attached hereto as Exhibit B and is incorporated herein in its entirety. U.S.

Trademark Registration No. 2,123,429 is valid, subsisting, and in full force and effect.

7. Gabbanelli owns U.S. Trademark Registration No. 3,017,772, issued November

22, 2005, for the Design mark shown in U.S. Trademark Registration No. 3,017,772 for musical

instruments, namely, accordions. A true and correct copy of U.S. Trademark Registration No.

3,017,772 is attached hereto as Exhibit C and is incorporated herein in its entirety. U.S.


8. Gabbanelli owns U.S. Trademark Registration No. 3,017,773, issued November

22, 2005, for the Design mark shown in U.S. Trademark Registration No. 3,017,773 for musical


3,017,773 is attached hereto as Exhibit D and is incorporated herein in its entirety. U.S.


9. Gabbanelli owns U.S. Trademark Registration No. 3,037,818, issued January 3,

2006, for the Design mark shown in U.S. Trademark Registration No. 3,037,818 for musical


3,037,818 is attached hereto as Exhibit E and is incorporated herein in its entirety. U.S.


10. Gabbanelli owns U.S. Trademark Registration No. 3,239,865, issued August 27,

1996, for the mark GABBANELLI and Design mark shown in U.S. Trademark Registration No.

3,239,865 for accordions. A true and correct copy of U.S. Trademark Registration No.

3,239,865 is attached hereto as Exhibit F and is incorporated herein in its entirety. U.S.



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11. Federal registration of the marks shown in U.S. Trademark Registration Nos.

1,996,735, 2,123,429, 3,017,772, 3,017,773, and 3,037,818 (collectively the “Gabbanelli

Marks”) is prima facie evidence of Gabbanelli’s exclusive right to use the Gabbanelli Marks in

connection with accordions and accordion accessories. 15 U.S.C. §§ 1057(b); 1115(a).

Furthermore, U.S. Trademark Registration Nos. 1,996,735, 3,017,772, 3,017,773 and 3,037,818

are incontestable pursuant to 15 U.S.C. § 1065.

12. Additionally, Gabbanelli owns the design mark shown in U.S. Trademark

Registration No. 3,314,928 for accordions.

13. The Gabbanelli Marks are associated exclusively with Gabbanelli for use with

accordions, as well as numerous other music related products. As a result of Gabbanelli’s

marketing of its products and the extensive advertising and other business generation efforts to

promote the Gabbanelli Marks, the Gabbanelli Marks have become well-known in the State of

Texas and through-out the United States as identifying Gabbanelli’s products and business.

Customers and potential customers in these areas have come to identify the Gabbanelli Marks as

originating with Gabbanelli. Consequently, Gabbanelli has developed substantial recognition

among the consuming public for its high quality products sold under the Gabbanelli Marks and

has acquired and enjoys a valuable reputation and significant goodwill associated with the

Gabbanelli Marks and products sold under the Gabbanelli Marks.

14. Gabbanelli’s use of the Gabbanelli Marks in the United States in connection with

accordions and related accessories has been exclusive. As a result of this exclusive, long, and

widespread use of the Gabbanelli Marks by Gabbanelli, there is substantial recognition and

association of the Gabbanelli Marks with Gabbanelli by the consuming public for accordions and

other musical instruments and accessories.


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15. Gabbanelli has recently learned that Defendant is currently selling into the U.S.

and advertising, distributing, and offering for sale into the U.S., accordions by using the

Gabbanelli Marks. Defendant advertises, promotes, sells, and offers for sale its accordions as

“GABBANELLI” branded accordions having one or more of the Gabbanelli Marks.

Specifically, Defendant advertises, promotes, sells, and offers for sale these infringing

accordions through websites located at the URLs http://www.gabbanelli.es,

http://www.folkmusic.es, and http://www.boppolaaccordions.com on which are shown

accordions bearing or displaying the Gabbanelli Marks. Defendant also operates through various

“facebook” pages to promote, advertise, sell, and offer for sale the infringing accordions. In so

doing, Defendant explains to customers and potential customers, including those located in the

United States, that “Gabbanelli Accordions” recommends to customers and potential customers

to contact Defendant for the purchase of “Gabbanelli” branded accordions. Moreover,

Defendant will provide a written guarantee to customers in the U.S. that the accordion is a “real”

Gabbanelli-branded accordion.

16. By including the Gabbanelli Marks within Defendant’s promotions, marketing,

and advertisements and on the accordions themselves, as well as providing U.S. customers with a

“guarantee” that the accordions are authentic Gabbanelli-branded accordions, Defendant is

infringing upon Gabbanelli’s trademark rights as well as engaging in false advertising. Given

the identity of Defendant’s products to Gabbanelli’s genuine products, and the inclusion of one

or more of the Gabbanelli Marks as part of Defendant’s sales activities, including on the

accordions themselves, there is a substantial likelihood that consumers will be confused, misled,

or deceived. Moreover, Defendant’s infringing and competing products are inferior compared to

products bearing the Gabbanelli Marks, and/or diminish the distinctiveness of the Gabbanelli


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Marks. Accordingly, Defendant’s sales of the infringing products are diminishing the value of

the Gabbanelli Marks.

17. Furthermore, Defendant’s sales of the infringing products without Gabbanelli’s

permission are diluting the value of the Gabbanelli Marks and damaging the goodwill and high

quality reputation of Gabbanelli’s products branded with one or more of the Gabbanelli Marks.

18. As evidenced by Defendant’s promotion of his infringing products as being

“recommended by Gabbanelli Accordions” and by providing a written “guarantee” that

Defendant’s accordions are “authentic” accordions bearing or displaying the Gabbanelli Marks,

Defendant has been, and currently is, aware of the valuable trademark rights of Gabbanelli. In

fact, as evidenced by the way in which Defendant markets and sells its infringing accordions in

the U.S., Defendant is well aware of Gabbanelli’s rights in the Gabbanelli Marks. Therefore, on

information and belief, the above-described activities have been willful.

19. On information and belief, Defendant will continue to undertake such activities

which infringe each of the Gabbanelli Marks unless enjoined by the Court.

20. As a consequence of these activities and the impairment to Gabbanelli’s goodwill,

reputation, and customer base, Gabbanelli has been irreparably harmed to an extent not yet

determined and will continue to be irreparably damaged by such acts in the future unless

Defendant is immediately and, after trial, permanently enjoined by this Court from continuing

his unlawful activity.

COUNT I - TRADEMARK INFRINGEMENTAND UNFAIR COMPETITION UNDER THE LANHAM ACT

21. Gabbanelli repeats and realleges the allegations set forth in paragraphs 1-17.

22. Defendant’s improper use of the Gabbanelli Marks and sale of products by using

the Gabbanelli Marks is confusing to consumers and constitutes infringement of Gabbanelli’s


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trademark rights in violation of the Lanham Trademark Act (“Lanham Act”). Defendant’s

unauthorized use of the Gabbanelli Marks violates Section 43 of the Lanham Act which prohibits

the use of a trademark in such a manner as is likely to cause confusion as to the source of the

goods bearing the trademark. See 15 U.S.C. § 1125. Defendant’s use of the Gabbanelli Marks

also violates Section 32 of the Lanham Act prohibiting the unauthorized use of a trademark

which is likely to cause confusion. See 15 U.S.C. § 1114.

23. Defendant is currently selling his infringing accordions in connection with each of

the Gabbanelli Marks and will continue to do so unless enjoined from doing so by this Court. If

Defendant is allowed to continue to sell under an infringing mark, the distinctiveness of the

Gabbanelli Marks will be diminished or destroyed. Gabbanelli will also lose its goodwill created

by the Gabbanelli Marks. The continuing acts of Defendant is jeopardizing the goodwill of

Gabbanelli and its valuable Gabbanelli Marks, and such acts have caused and are causing

irreparable injury to Gabbanelli and to the consuming public. Unless the acts of the Defendant

complained of herein are enjoined by this Court, they will continue to cause irreparable injury to

Gabbanelli and to the public, for which there is no adequate remedy at law. Accordingly,

Gabbanelli seeks injunctive relief prohibiting the infringing acts by Defendant complained of

herein.

24. Additionally or, in the alternative, Gabbanelli seeks an accounting of Defendant’s

profits and Gabbanelli’s actual and consequential damages and/or statutory damages resulting

from Defendant’s infringing acts. Moreover, Gabbanelli seeks punitive, additional, and

enhanced damages from Defendant.

COUNT II - FALSE DESIGNATION OF ORIGIN



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26. In violation of 15 U.S.C. § 1125(a), Defendant uses a false and misleading

designation of origin in connection with the sale of his accordions by using the Gabbanelli

Marks. For example, Defendant tells his customers, whether individual consumers or retail

distributors, that its accordions are “authentic” and offers a written “guarantee” that the

accordions are “authentic” accordions bearing or displaying the Gabbanelli Marks. Defendant

also describes on its websites that “Gabbanelli Accordions recommends” the accordions

available on the website located at the URL http://www.boppolaaccordions.com, when, in fact,

Plaintiff makes no such recommendation. These statements by Defendant are false and

misleading. In fact, Defendant’s accordions do not originate from any source that is any way

affiliated with, connected to, or sponsored by Gabbanelli.

27. Gabbanelli has and is being damaged by the false designations of origin and

passing-off by Defendant and has no adequate remedy at law. Defendant’s unlawful conduct is

willful and will continue to damage Gabbanelli unless enjoined by this Court.



from Defendant’s acts. Moreover, Gabbanelli seeks punitive, additional, and enhanced damages

from Defendant.

COUNT III - FALSE ADVERTISING


30. The representations made by Defendant that his accordions are “recommended”

by “Gabbanelli Accordions” and that, through Defendant’s written guarantee, Defendant’s

accordions are “authentic” accordions bearing or displaying the Gabbanelli Marks renders

Defendant liable for engaging in false advertising by making material omissions and


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misrepresentations regarding the source and quality of his accordions in violation of Section

43(a)(1)(B) of the Lanham Act [15 U.S.C. § 1125(a)(1)(B)].

31. The foregoing acts and conduct of Defendant, and in particular Defendant’s

failure to disclose adequately that the infringing accordions are not associated with, sponsored

by, or affiliated with Gabbanelli have caused and are likely to cause and in the future will cause

confusion, have caused and are likely to continue to cause and in the future will cause mistake

and/or have deceived and are likely to continue to deceive and/or in the future will deceive the

trade and public into believing that the activities of Defendant are those of Gabbanelli or are

sponsored by, licensed by, endorsed by, or are otherwise associated with Gabbanelli, thereby

resulting in the misappropriation of Gabbanelli’s goodwill and reputation which are associated

with the Gabbanelli Marks.

32. By reason of the all the foregoing, Gabbanelli is being damaged by Defendant’s

acts in the manner set forth above and will continue to be damaged unless Defendant is enjoined

from continuing to commit the aforesaid acts. Gabbanelli has been and will continue to be

irreparably injured by the continuing acts of Defendant unless Defendant is enjoined from

continuing to commit such acts. Gabbanelli has no adequate remedy at law.



from Defendant’s acts. Moreover, Gabbanelli seeks punitive, additional, and enhanced damages

from Defendant.

COUNT IV - TRADEMARK DILUTION UNDER TEXAS LAW

34. Gabbanelli repeats and re-alleges the allegations of paragraphs 1 through 30 of

this Complaint as if fully set forth herein.


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35. The facts set out above demonstrate that Defendant is diluting the exclusivity and

distinctiveness of the Gabbanelli Marks in violation of the Texas Anti-Dilution Act. Defendant’s

unauthorized use of the Gabbanelli Marks constitutes a dilution of the Gabbanelli Marks and

injures Gabbanelli’s business reputation, in violation of TEX. BUS. & COM. CODE § 16.29.

36. Defendant’s importation, manufacture, distribution, sale and/or offer for sale in

commerce of the infringing accordions dilutes the distinctive quality of the Gabbanelli Marks,

and was done with the willful intent to trade on Gabbanelli’s reputation and/or to cause dilution

of the Gabbanelli Marks.

37. Defendant’s unauthorized use of the Gabbanelli Marks on or in connection with

the infringing accordions was done with notice and full knowledge that such manufacture,

distribution, sale and/or offer for sale was not authorized or licensed by Gabbanelli.

38. As a result of the dilution by Defendant, Gabbanelli has suffered, and is suffering,

injury and damage in an amount yet to be determined. Upon information and belief, the acts of

dilution by Defendant have resulted in and are currently resulting in substantial unjust profits and

unjust enrichment on the part of Defendant in an amount yet to be determined. Gabbanelli seeks

injunctive relief to prevent this type of injury from continuing. Additionally or, in the

alternative, Gabbanelli seeks an accounting of Defendant’s profits and Gabbanelli’s actual and

consequential damages and/or statutory damages resulting from Defendant’s acts. Moreover,

Gabbanelli seeks punitive, additional, and enhanced damages from Defendant.

COUNT V - COMMON LAW TRADEMARK AND TRADE NAME INFRINGEMENT

39. Gabbanelli repeats and re-alleges the allegations of paragraphs 1 through 35 of

this Complaint as if fully set forth herein.


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40. Gabbanelli has built up valuable goodwill in the Gabbanelli Marks and its trade

name Gabbanelli

41. With full knowledge of the fame of the Gabbanelli Marks and trade name,

Defendant has traded, and continue to trade, on the goodwill associated with the Gabbanelli

Marks and trade name, and mislead the public into assuming a connection between Defendant’s

infringing accordions and Gabbanelli.

42. Defendant’s acts of trademark and trade name infringement causes confusion and,

misleads and deceives the pubic as to the source of Defendant’s infringing accordions, permits

Defendant to pass-off his infringing accordions as Gabbanelli’s products, and falsely suggests a

connection between the Defendant and Gabbanelli and, unless restrained by this Court, will

continue to do so, in violation of the common law of the State of Texas, and to the detriment of

Gabbanelli and the unjust enrichment of Defendant.

43. Defendant’s acts of trademark and trade name infringement have caused and will

continue to cause Gabbanelli’s irreparable harm unless restrained by this Court.

44. Gabbanelli is without an adequate remedy at law.

45. The continuing acts of Defendant are jeopardizing the goodwill of Gabbanelli and

its valuable Gabbanelli Marks, and such acts have caused and will continue to cause irreparable

injury to Gabbanelli and to the consuming public. Unless the acts of the Defendant complained

of herein are enjoined by this Court, they will continue to cause irreparable injury to Gabbanelli

and to the public, for which there is no adequate remedy at law. Additionally or in the

alternative, Gabbanelli seeks an accounting of Defendant’s profits and Gabbanelli’s actual and

consequential and/or statutory damages as a result of Defendant’s infringing acts which have


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resulted in confusion among the public. Moreover, Gabbanelli seeks punitive and enhanced

damages for Defendant’s willful conduct.

COUNT VI - REQUEST FOR MONETARY RELIEF,TREBLE DAMAGES AND ATTORNEYS’ FEES AND COSTS


47. The acts of Defendant complained of above have resulted in trademark

infringement and unfair competition. Accordingly, pursuant to 15 U.S.C. § 1117(a), Gabbanelli

is entitled to recover 1) Defendant’s profits; 2) any damages sustained as a result of Defendant’s

infringing acts; and 3) the costs associated with these causes of action. In addition, or in the

alternative, Gabbanelli is entitled to recover statutory damages pursuant to 15 U.S.C. § 1117(c).

48. Moreover, Gabbanelli is entitled to an award of treble damages, as well as an

award of punitive damages, pursuant to 15 U.S.C. § 1117(b) as a result of the extenuating

circumstances of this case, Defendant’s intentional use of the Gabbanelli Marks, and its gross,

wanton, and/or willful conduct.

49. Furthermore, as a result of Defendant’s actions, Gabbanelli has been required to

retain the services of counsel to represent it in this matter, and it has been forced to incur and is

presently incurring attorneys’ fees in order to enforce its trademark rights. These fees and

expenses are necessary and reasonable in order to prosecute this matter. Accordingly,

Gabbanelli requests that it be granted an award of attorneys’ fees and costs as a result of

Defendant’s actions.

DEMAND FOR JURY TRIAL

50. Gabbanelli demands a trial by jury on all claims and issues.


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CONCLUSION AND PRAYER

51. WHEREFORE, Gabbanelli Accordions & Imports, L.L.C. prays for entry of

judgment:

a. finding that Defendant has infringed U.S. Trademark Registration Nos. 1,996,735,2,123,429, 3,017,772, 3,017,773, and 3,037,818, and Gabbanelli Accordions &Imports, L.L.C.’s common law trademark rights in the Gabbanelli Marks;

b. finding that Defendant has falsely and intentionally mislead consumers by directlyor indirectly representing that infringing products are endorsed by, sponsored by,or affiliated with Gabbanelli Accordions & Imports, L.L.C.;

c. finding that Defendant has diluted the goodwill associated with the GabbanelliMarks;

d. finding that Defendant has engaged in unfair competition;

e. enjoining Defendant, his officers, directors, agents, employees, representatives,successors, assigns, if any, and those in privity or concert with them from furtheracts that would amount to infringement of U.S. Trademark Registration Nos.1,996,735, 2,123,429, 3,017,772, 3,017,773, and 3,037,818, and GabbanelliAccordions & Imports, L.L.C.’s common law trademark rights in the GabbanelliMarks, dilution of Gabbanelli Accordions & Imports, L.L.C.’s goodwillassociated with the Gabbanelli Marks, and unfair competition;

f. awarding Gabbanelli Accordions & Imports, L.L.C. all damages caused by theacts of Defendant and all profits of Defendant from acts complained of, and/or allcosts to Gabbanelli Accordions & Imports, L.L.C. caused by Defendant’sactivities complained of herein;

g. trebling the damages and profits awarded to Gabbanelli Accordions & Imports,L.L.C. as authorized by 15 U.S.C. § 1117;

h. awarding the maximum statutory damages for willful use of counterfeitGabbanelli Marks as authorized by 15 U.S.C. § 1117(c);

i. granting Gabbanelli Accordions & Imports, L.L.C. pre-judgment and post-judgment interest on the damages caused to Gabbanelli Accordions & Imports,L.L.C. by reasons of Defendant’s activities complained of herein at the highestrates allowed by law;

j. finding that this is an exceptional case and awarding Gabbanelli Accordions &Imports, L.L.C. its reasonable and necessary attorneys’ fees in accordance with 15U.S.C. § 1117;


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k. awarding costs to Gabbanelli Accordions & Imports, L.L.C.; and

l. awarding Gabbanelli Accordions & Imports, L.L.C. such other and further relief,at law or in equity, as the Court may deem just and proper under thecircumstances.

Respectfully submitted,

GREENBERG TRAURIG LLP

By: /Anthony F. Matheny/Anthony MathenyAttorney-In-ChargeTexas State Bar No. 24002543S.D. Texas Admission No. 3031571000 Louisiana, Suite 1700Houston, Texas 77002(713) 374-3583 (Telephone)(713) 754-7583 (Fax)

ATTORNEYS FOR PLAINTIFFFAROUK SYSTEMS, INC.
