Marc Joseph NY v. Clark's - Complaint

Gary L.
Cutler
Gary L. Cutler, P.C.
160 Broadway, Suite 600
New York, NY 10038
Tel.: (212) 227-4358
Fax: (973) 735-6663
gcutler@garycutlerlaw.com

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
---------------------------------------------------------------:
:
Marc Joseph NY, Inc., : Case No. 13-cv-_____ (___)
: Jury Trial Demanded
Plaintiff, :
:
-against- :
:
C. & J. Clark America, Inc., C. & J. Clark, Ltd., :
C. & J. Clark Retail, Inc., C. & J. Clark :
Manufacturing, Inc. and John Does 1-20, :
:
Defendants. :
---------------------------------------------------------------:

COMPLAINT

Plaintiff Marc Joseph NY, Inc., by and through its counsel, for its Complaint and claims
for relief against defendants C. & J. Clark America, Inc., C. & J. Clark, Ltd., C. & J. Clark
Retail, Inc., C. & J. Clark Manufacturing, Inc. and John Does 1-20, alleges as follows:
NATURE OF THE ACTION

1. This is an action arising under the Trademark Laws of the United States, 15

U.S.C. 1051 et seq. (the "Lanham Act"), and in particular for (a) trade dress infringement, in
violation of 15 U.S.C. 1125(a); and (b) trade dress dilution, in violation of 15 U.S.C.
1125(c). The Lanham Act extends protection to a product's trade dress, which involves the total
image and overall appearance of a good. Trade dress is comprised of the overall composition
and design of a product including size, shape, color, texture and graphics.
Case 1:13-cv-04672-PKC-RER Document 1 Filed 08/19/13 Page 1 of 20 PageID #: 1
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2. This action also arises under New York State law and alleges: 1) trade dress
dilution in violation of N.Y. Gen. Bus. Law 360-l; 2) trade dress infringement in violation of
N.Y. Gen. Bus. Law 360-k; 3) common law unfair competition; and, 4) deceptive and unfair
trade practices in violation of N.Y. Gen. Bus. Law 349.
3. This action asks the Court to stop the brazen copying of Plaintiff Marc Joseph
NY, Inc.'s ("MJ") widely successful shoe, the "Cypress Hill" driving moccasin, by the defendants
(collectively "Clarks") and the sale of the copied item, the "Dunbar Racer." It also seeks
damages through recovery by MJ of Clarks' profits, actual and treble damages to MJ resulting
from lost profits, as well as punitive damages, attorneys' fees and prejudgment interest and other
injunctive and statutory relief. In every critical aspect, defendants have reproduced the Cypress
Hill driving moccasin in the Dunbar Racer. Defendants have appropriated for their own benefit
and profit, Cypress Hill's characteristic hand-stitching, the pattern of the shoes' rubber soles, the
rubber name plate on the exterior backs of the heels, and the stitching detail of the arch of the
foot and "Marc Joseph bow-tie" tassel (collectively referred to as the "Details" and/or "Trade
Dress"). Clarks began marketing the Dunbar Racer at least three years after MJ began
marketing the Cypress Hill. The two designs are so similar, indeed virtually identical, that it is
apparent that Clarks has copied MJ's design in bad faith, maliciously and willfully.
4. The outright arrogation of the distinctive design of the Cypress Hill Trade Dress
by defendants has led to enormous confusion in the marketplace between the two shoes.
Defendants have diluted the famous Cypress Hill Trade Dress by selling the identical Dunbar
Racer. Having copied outright the Cypress Hill Trade Dress, it is clear defendants adopted that
shoe with the intention of capitalizing on MJ's reputation and goodwill, as well as the confusion
Clarks created between the two shoes. Because defendants' actions have diluted the goodwill of
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the Cypress Hill Trade Dress and will continue to do so as long as MJ's distinctive design is
copied, a permanent injunction is warranted against the further sale of Clarks Dunbar Racer.
5. Both shoes are sold in the same markets including common shoe websites,
department stores and boutique shoe stores. MJ has suffered enormous lost sales from Clarks
trade dress infringement and trade dilution. Because of these losses and the blatant profiteering
by Clarks through the appropriation and sale in the same markets of its own identical shoe,
Clarks' profits from the sale of the Dunbar Racer should be disgorged. MJ must also be
compensated for the loss of its goodwill and damages sustained by MJ in lost sales.
PARTIES
6. Plaintiff Marc Joseph NY, Inc. ("MJ") is a corporation organized and existing
under the laws of the State of New York, with its principal place of business at 140 58th
Street, Building A, Unit 8-M, Brooklyn, NY 11220. Plaintiff resides in this Courts judicial
district.
7. Defendants C. & J. Clark America, Inc., C. & J. Clark Retail, Inc., and
C. & J. Clark Manufacturing, Inc. are corporations organized and existing under the
laws of the State of Pennsylvania, with their principal places of business at 156 Oak
Street, Newton Upper Falls, MA 02464. Defendant C. & J. Clark Retail, Inc. is
registered as a foreign business corporation with the state of New York.
8. Defendant C. & J. Clark, Ltd., upon information and belief, is a limited
liability company organized and existing under the laws of the State of Pennsylvania,
which is acting as a fictitiously named entity on behalf of Hanover Shoe, Inc., which is
owned, controlled and/or affiliated with Defendants C. & J. Clark America, Inc., C. & J.
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Clark Retail, Inc., and/or C. & J. Clark Manufacturing, Inc., and which has a principal place of
business at 118 Carlisle Street, Hanover, PA 17331.
9. Defendants C. & J. Clark America, Inc., C. & J. Clark Retail, Inc., C. & J.
Clark Manufacturing, Inc. and C. & J. Clark, Ltd. shall be collectively referred to as
Clarks, and the term Clarks should be read to mean all such defendants jointly and/or
severally.
JURISDICTION AND VENUE
10. This Court has jurisdiction over the subject matter of this action and of the
parties pursuant to 28 U.S.C. 1331 (federal question) and 15 U.S.C. 1121 (Lanham Act).
Subject matter jurisdiction exists over Plaintiffs state law claims pursuant to 28 U.S.C.
1367(a) (supplemental jurisdiction).
11. This Court has personal jurisdiction over all defendants because they are all
engaged in substantial and regular business in the State of New York and in the Eastern
District of New York including by selling their shoes through their own outlets and through
retail partners located in the Eastern District of New York and through numerous internet
sales into the Eastern District of New York. Personal jurisdiction over C. & J. Clark Retail,
Inc. exists for the additional reason that that entity is registered as a foreign corporation in the
State of New York. Additionally, the defendants' acts have caused injury to Plaintiff within
the State of New York and the Eastern District of New York.
12. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391 (b)(2),
(c)(2), and (d) as a substantial part of the events or omissions giving rise to the claims
occurred in this judicial district and the Clarks defendants regularly conduct business activity
in this judicial district, to wit: plaintiff resides and conducts business in this judicial district
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including selling its shoes in this district and Clarks has numerous retail stores and retail
partners in this judicial district through which it sells its shoes. (Source: The Clarksusa.com
website).
FACTS AND ALLEGATIONS COMMON TO ALL COUNTS
13. MJ opened in 2006. MJ is a leading manufacturer of designer brand fashion
forward footwear. The Marc Joseph brand is well known among both customers and industry
leaders, and has been profiled in various magazines such as TravelSmith, Colorado Springs
Style and Mom Trends. In particular, MJ is most famous for its driving moccasins, which one
writer commented are "designed by a Manhattan team recognized worldwide for its design
quality, comfort and fit." Consumer recognition of the MJ brand is further enhanced by the fact
that Marc Joseph footwear is sold in over 200 independent boutiques, 20 online retail websites,
and 1,000 retail outlets, including many high end department stores and other nationally
recognized department stores and retail distribution channels. MJs best-selling shoe since
2009 has been their Cypress Hill womens driver moccasin. As of the current date, over one
million pairs of the Cypress Hill women's driver moccasin have been sold.
14. MJ designed the Cypress Hill womens driver moccasin on May 26, 2009, sales
began in August 2009, and deliveries were being fulfilled in January, 2010.
15. The Cypress Hill womens driver moccasin has several non-functional, inherently
distinctive Trade Dress features, including but not limited to metal studded tassels on its non-
functional leather shoelace (known as the Marc Joseph bow-tie), the patterns of the shoes
hand-stitching, the pattern of the shoes rubber soles, the rubber name plate on the exterior
backs of the heels, artistic designs of the fabric and leather, and the stitching detail of the arch
of the foot (collectively referred to as the Details and/or Trade Dress). None of these
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aesthetic, artistic Details are essential to the function or use of the shoe, the purpose of the shoe,
nor do they affect the cost or quality of the shoe. Prior to the actions of Clarks complained of
herein, no other shoe in the world ever had these inherently distinctive and non-functional
Details. A true and accurate photograph of the Cypress Hill womens driver moccasin is
attached and incorporated herein as Exhibit 1.
16. MJ, directly and through its distributors and retailers, has spent substantial sums
of money advertising, promoting and otherwise cultivating the goodwill in the Cypress Hill
Trade Dress, such that the Details have come to be associated with MJs high quality
workmanship and detail in shoemaking. The non-functional Details of the Cypress Hill
womens driver moccasin have developed secondary meaning in the marketplace. When
people see any of these Details, they immediately recognize the shoe as the Marc Joseph
Cypress Hill womens driver moccasin. Some evidence of the secondary meaning of the
Details of the Cypress Hill womens driver moccasin is attached and incorporated herein as
Exhibit 2A - Exhibit 2N.
17. MJ has at all times been the owner of the Trade Dress and Details of the Cypress
Hill womens driver moccasin as well as all of the Cypress Hill intellectual property. MJ has
used the Details as its Trade Dress in interstate commerce continuously since 2009.
18. MJs exclusive right to use this Trade Dress and Details of the Cypress Hill
womens driver moccasin has never put competitors at any significant non-reputation-related
disadvantage. None of the Details make the shoe more functional. In fact, Plaintiffs
competitors, including Clarks, sell dozens of varieties of womens drivers moccasins, none of
which infringe upon MJs Trade Dress. (See Clarks website with other versions of drivers
moccasins, attached as Plaintiffs Exhibit 3).
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19. At some point in 2012 or 2013, Clarks, without the authority or consent of MJ,
began using MJs Details and Trade Dress in interstate commerce. Clarks began the
manufacture, distribution, sale, offering for sale and advertising of its Dunbar Racer driver
moccasin (the Infringing Product), which is identical in aesthetic design to MJs Cypress Hill
shoe, using each and every one of the aforementioned Details in its design, and is likely to
cause confusion or mistake or to deceive as to the affiliation, connection, or association of such
person with another person, or as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person, in violation of 15 U.S.C. 1125(a). (See
Clarks website featuring Dunbar Racer, attached as Plaintiffs Exhibit 4).
20. When the Infringing Product is held next to the MJ Cypress Hill shoe, the two are
virtually indistinguishable.
21. Clarks sells the Infringing Product to consumers for a price significantly below
the price of MJs Cypress Hill shoe.
22. Clarks advertises, sells and/or offers for sale the Infringing Product on no less
than thirty one (31+) websites, including many websites where MJs Cypress Hill shoe is sold,
including but not limited to 6pm.com, Amazon.com, Belk.com, Bonton.com, ClarksUSA.com,
Comfortfeetshop.com, Dillards.com, Footwearetc.com, Lord&Taylor.com, Macys.com,
Nordstrom.com, Onlineshoes.com, Orvadirect.com, Overstock.com, Peltzshoes.com,
Piperlime.com, Planetshoes.com, Plow&hearth.com, Polyvore.com, QVC.com, Schnees.com,
Seventhavenue.com, Sterlingleather.com, Shoebuy.com, Shoegalleryonline.com,
Shoemall.com, Shoes.com, Shoestation.com, Supershoes.com, Walkingonacloud.com, and
Zappos.com. (See websites, attached as Plaintiffs Exhibit 5).
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23. Clarks advertises, sells and/or offers for sale the Infringing Product in thousands
of its own retail stores around the country (the exact number of Clarks stores in the United
States is not known to Plaintiff). (See Clarksusa.com website and Exhibits 4, 5).
24. Clarks advertises, sells and/or offers for sale the Infringing Product in thousands
of third party retails stores around the country, including retail stores where MJs Cypress Hill
shoe is sold. Clarks provides the Infringing Product to thousands of retail stores with the intent
of causing the retail stores to put the Infringing Product in use. In fact, to further add to the
confusion of the Trade Dress, some of these retail stores display MJs Cypress Hill shoe
directly next to the Infringing Product.
25. Confusion in the marketplace is evident to MJ, as numerous distributors, retail
customers and end users have purchased the Infringing Product when they intended to purchase
MJs Cypress Hill Shoe. Some have ceased purchasing the MJ Cypress Hill shoe and have
started purchasing the Infringing Product instead. At least one website has been discovered that
tells consumers who intend to purchase MJs Cypress Hill Shoe to purchase the Infringing
Product instead due to the lower price of the Clarks shoe. A copy of said website is attached
and incorporated herein as Exhibit 6.
26. On January 29, 2013, Plaintiff, by and through different legal counsel, caused a
written cease and desist letter and notice of infringement (including trade dress) to be served
upon Clarks. On February 4, 2013, Clarks responded through its counsel that it refuses to cease
and desist on its infringement upon MJs trade dress. (See correspondence attached and
incorporated herein as Exhibit 7).

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COUNT I
FEDERAL TRADE DRESS INFRINGEMENT
(15 U.S.C. 1125(a))

27. MJ incorporates herein by reference all of the allegations set forth herein by
reference as if rewritten fully.
28. Clarks, without the consent of MJ, are using or have used in commerce MJs
Details and Trade Dress, in connection with the sale, offering for sale, distribution and
advertising of the Infringing Product, which, because of its confusing similarity to the MJ
Cypress Hill Trade Dress, is likely to cause confusion or mistake or to deceive as to the
affiliation, connection, or association of such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or commercial activities by another
person, in violation of 15 U.S.C. 1125(a).
29. Clarks adoption, use and continued use after being warned by MJ of MJs
Details and Trade Dress in connection with its Infringing Product, including as described
above, was in bad faith, malicious and in willful disregard of MJ's rights, with intent to trade
on and appropriate the reputation and goodwill that MJ has built in the MJ Cypress Hill
Details and Trade Dress, and to divert customers and revenues from MJ.
30. The aforementioned actions and activities of Clarks have caused and will
continue to cause MJ irreparable harm unless and until such time as they are enjoined by
this Court. Pursuant to 15 U.S.C. 1116, a district court has the power to grant injunctions
for trade dress violations contrary to 15 U.S.C. 1125(a), (c) according to the principles of
equity and upon such terms as the Court may deem reasonable. A permanent injunction will
be entered upon a showing of irreparable harm and the absence of an adequate remedy at
law.
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31. MJ will suffer irreparable harm in that it has and will continue to lose control
over the reputation of its trade dress in the Cypress Hill Trade Dress. The Cypress Hill
driving moccasin has a solid reputation and garnered substantial goodwill among its
customers as evidenced by the volume of sales, MJ's extensive marketing and advertising
campaigns, and word of mouth recommendations by its customers.
32. Defendants by employing MJ's trade dress in the Dunbar Racer have attempted
to directly profit from the goodwill and reputation that MJ has created for the Cypress Hill
Trade Dress.
33. Due to the high likelihood of confusion and actual confusion between the two
shoes, MJ's reputation and goodwill will be substantially damaged without the issuance of a
permanent injunction enjoining future sales of Clarks Dunbar Racer.
34. The balance of the equities favor MJ in its request for a permanent injunction.
Consumer confusion and potential loss to plaintiffs in terms of reputation, goodwill, and
sales threaten to cause MJ serious continuing harm. Any harm to defendants is mitigated by
the fact that Clarks can continue to market an extensive line of non-infringing shoes under
the Clarks brand.
35. The consuming public has a protectable interest in being free from confusion,
deception and mistake. The public has a right to not be deceived, that is, in being assured
that the trade dress it associates with a product is not attached to goods of unknown origin
and quality. Due to the likelihood of confusion and actual confusion engendered by Clarks
Dunbar Racer, the public interest would be served through a permanent injunction against
further sales of that shoe.
36. The aforementioned actions of Defendants have caused and will continue to
cause irreparable harm unless and until such time as they are enjoined by this Court.
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37. Defendants' conduct has caused and is likely to continue causing substantial
injury to the public and to plaintiff and plaintiff is entitled to injunctive relief and to recover
defendants' profits, actual damages sustained by the plaintiff, punitive damages, costs,
reasonable attorneys' fees and other remedies pursuant to 15 U.S.C. 1125(a), 1116, 1117
and 1118.
COUNT II
FEDERAL TRADE DRESS DILUTION
(15 U.S.C. 1125(c))

38. MJ realleges and incorporates herein by reference all of the allegations set
forth in paragraphs 1 through 37.
39. The MJ Cypress Hill Details and Trade Dress are distinctive and famous,
having been used by MJ in connection with the advertisement, promotion and sale of its
goods and services since 2009.
40. Clarks began using the MJ Cypress Hill Details and Trade Dress after the
Details and Trade Dress became famous, and thereby caused, and are causing, the dilution of
the distinctive quality of the MJ Cypress Hill Details and Trade Dress in violation of 15 U.S.C.
1125(c).
41. Clarks adoption, use and continued use despite warning to cease and
desist from such use of the MJ Cypress Hill Details and Trade Dress in connection with its
Infringing Product, was in bad faith, malicious and in willful disregard of MJ's rights, with
intent to trade on and appropriate the reputation and goodwill that MJ has built in the MJ
Cypress Hill Details and Trade Dress, and to divert customers and revenues from MJ.
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43. As the acts alleged herein constitute a willful violation of 15 U.S.C. 1125(c),
Plaintiff is entitled to injunctive relief as well as monetary damages and other remedies
provided by 15 U.S.C. 1116, 1117, 1118 and 1125(c), including defendants' profits,
damages sustained by the plaintiff, treble damages, reasonable attorney's fees, costs and
prejudgment interest.
COUNT III
NEW YORK TRADE DRESS DILUTION
(N.Y. GEN. BUS. LAW 360-l)

44. Plaintiff realleges and incorporates herein by reference all of the allegations in
Paragraphs 1 through 43.
45. The MJ Cypress Hill Details and Trade Dress are distinctive and famous, having
been used by MJ in connection with the advertisement, promotion and sale of its goods and
services since 2009.
46. Defendants began using the MJ Cypress Hill Details and Trade Dress after the
trade dress became famous, and thereby caused, and are causing and/or are likely to cause, the
dilution of the distinctive quality of the MJ Cypress Hill Details and Trade Dress in violation of
N.Y. Gen. Bus. Law 360-1.
47. Defendants' adoption and use of the MJ Cypress Hill Details and Trade Dress in
connection with its goods, including as described above, was in bad faith and in willful
disregard of MJs rights, with intent to trade on and appropriate the reputation and goodwill
that MJ has built in the MJ Cypress Hill Details and Trade Dress, and to divert customers and
revenues from MJ. Under NY Gen. Bus. Law 360-l, injunction may be entered where there is
a likelihood of dilution of the distinctive quality of a mark or trade name. Dilution is the
blurring of a mark's product identification or the tarnishment of the affirmative associations a
mark has come to convey.
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48. Sale of Clarks Dunbar Racer has led to a likelihood of dilution of the distinctive
quality of the trade dress Cypress Hill Trade Dress. Accordingly, a permanent injunction
against further sales of the Dunbar Racer also is warranted under NY Gen. Bus. Law 360-l.
49. The aforementioned actions of Defendants have caused and will continue to cause
irreparable harm unless and until such time as they are enjoined by this Court.
COUNT IV
NEW YORK COMMON LAW UNFAIR COMPETITION

50. Plaintiff realleges and incorporates herein by reference all of the allegations in
Paragraphs 1 through 49.
51. Consumers primarily associate the trade dress of the Cypress Hill driving
moccasin to MJ and MJ possesses a valid and protectable trade dress in its Cypress Hill Trade
Dress.
52. Defendants have misappropriated the labors and expenditures of MJ through
copying the trade dress of the Cypress Hill Trade Dress.
53. Defendants' unlawful conduct causes actual confusion between the Cypress Hill
Trade Dress and the Dunbar Racer and is likely to cause confusion between the two designs.
54. Defendants' foregoing unlawful conduct, including the adoption and use of the MJ
Cypress Hill Details and Trade Dress, in connection with Defendants' goods and commercial
activities, was in bad faith and in willful disregard of MJ's rights, with intent to trade on and
misappropriate the reputation and goodwill that MJ has built, and to divert customers and
revenues from MJ.
55. The aforementioned actions of Defendants have caused and are likely to continue
to cause confusion and irreparable harm unless and until such time as the actions of Defendants
are enjoined by this Court.
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56. The aforementioned activities of Defendants constitute unfair competition,
including but not limited to the unlawful brand confusion between the MJ Cypress Hill
Details and Trade Dress and the Infringing Product, in violation of the common law of the
State of New York.
57. Defendants' foregoing unlawful conduct, including the adoption and use of
the MJ Cypress Hill Details and Trade Dress, in connection with its goods and commercial
activities, was in bad faith and in willful disregard of MJs rights, with intent to trade on
and appropriate the reputation and goodwill that MJ has built, and to divert customers and
revenues from MJ.
58. By reason of the foregoing, Plaintiff has suffered and will suffer substantial damages
and Defendants have made and will make substantial profits in amounts to be determined at trial.
59. Plaintiff has no adequate remedy at law for defendants' continuing violation of its
rights as set forth above. Plaintiff seeks injunctive relief, and exemplary or punitive damages
for defendants' intentional misconduct.

COUNT V
NEW YORK TRADE DRESS INFRINGEMENT
(N.Y. GEN. BUS. LAW 360-k)

60. Plaintiff realleges and incorporates herein by reference all of the
allegations in Paragraphs 1 through 59.
61. Defendants, without the consent of MJ, are using or have used in
commerce MJ Cypress Hill Details and Trade Dress, in connection with the sale, offering
for sale, distribution and advertising of the Infringing Product, which, because of its
confusing similarity to the MJ Cypress Hill Details and Trade Dress, is likely to cause
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confusion or mistake among consumers, or to deceive consumers, as to the source of
such goods, services, in violation of N.Y. Gen. Bus. Law 360-k.
62. Defendants' unlawful conduct, including as described above, was in bad
faith and in willful disregard of MJs rights, with intent to trade on and appropriate the
reputation and goodwill that MJ has built, and to divert customers and revenues from
MJ. Defendants committed the foregoing acts with the intent to cause confusion and
mistake and to deceive
63. By reason of the foregoing, Plaintiff has suffered and will suffer substantial
damages and Defendants have made and will make substantial profits in amounts to be
determined at trial.
Plaintiff has no adequate remedy at law for defendants' continuing violation of its rights as
set forth above. Plaintiff seeks injunctive relief, and defendants' profits, exemplary and
punitive damages for defendants' intentional misconduct.
COUNT VI
NEW YORK DECEPTIVE AND UNFAIR TRADE PRACTICES
(N.Y. GEN. BUS. LAW 349)

65. Plaintiff realleges and incorporates by reference paragraphs 1 to 64 as if fully set
forth herein.
66. Defendants intentionally engaged in a consumer-oriented act in copying the trade
dress of MJ's Cypress Hill Driver Moccasin and marketing and selling the Clarks Dunbar Racer
in department stores, shoe web sites and boutique shoe stores.
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67. Defendants' sale and marketing of the Clarks Dunbar Racer was misleading in a
material way in that the design of the shoe was copied from and virtually identical to the pre-
existing MJ's Cypress Hill Trade Dress. The virtually identical design was likely to and did
cause confusion between the two shoes and diluted the goodwill of MJ's Cypress Hill Trade
Dress built by MJ through extensive marketing and advertising campaigns and word of mouth
promotion by satisfied consumers. Defendants copied the Cypress Hill Trade Dress and
marketed and sold the Dunbar Racer with the intention of capitalizing on MJ's reputation and
goodwill as well as the confusion Clarks created between the two shoes.
68. As a result of Clarks intentional copying of MJ's Cypress Hill Trade Dress and
marketing and sales of the Dunbar Racer, MJ suffered injuries in the form of lost profits and lost
reputation and goodwill for the future sales of its Cypress Hill Trade Dress and confusion Clarks
created between the two shoes.
69. As a result of the intentional foregoing acts of defendants and Clarks' intentional
marketing and sale of the Dunbar Racer, Clarks has engaged in Deceptive and Unfair Trade
Practices in violation of N.Y. Gen. Bus. Law 349.
70. By reason of the foregoing, Plaintiff has suffered and will suffer substantial
damages and Defendants have made and will make substantial profits in amounts to be
determined at trial.
cause irreparable harm unless and until such time as they are enjoined by this Court. The
aforementioned actions of Defendants have caused and will continue to cause irreparable
harm unless and until such time as they are enjoined by this Court. Plaintiff has no adequate
remedy at law for defendants' continuing violation of its rights as set forth above. Plaintiff
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seeks injunctive relief, actual damages, and treble damages for defendants' intentional
misconduct.

REQUEST FOR RELIEF

WHEREFORE, Plaintiff prays for the following relief as may be applicable to the
various defendants, jointly and severally herein:
1. That defendants, their officers, agents, servants, employees and attorneys, and
those in active concert or participation with them or any of them, pursuant to 15 U.S.C.
1116, N.Y. Gen. Bus. Law 360-l, N.Y. Gen. Bus. Law 360-k, N.Y. Gen. Bus. Law
349, common law and the law of equity be permanently enjoined and restrained:
(a) from using in any manner MJ Trade Dress and Designs, alone or in
combination with any other words or designs, in manner likely to
cause confusion, deception, or mistake on or in in connection with
advertising, offering for sale or sale of any goods not manufactured by
MJ, or not authorized by MJ to be sold in connections with their
respective said marks;
(b) From representing, suggesting in any fashion to any third party,
performing any act which may give rise to the belief that
Defendants, or any of their goods, are authorized or sponsored by MJ;
(c) From passing off, inducing or enabling others to sell or pass off any
goods as products produced by plaintiffs which are not in fact genuine
MJ goods, or not produced under the control and supervision of MJ
approved by MJ; and
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(d) From otherwise competing unfairly with plaintiffs in any manner;
2. That Defendants be required to deliver up to plaintiffs for destruction, any and all
goods in their possession or under their control that were or are being advertised, promoted,
offered for sale or sold in connection with the MJ Trade Dress and/or Designs, whether

alone or in any combination with any words or designs.
3. That Defendants be required to deliver up to plaintiffs for destruction, any and
all catalogs, circulars and other printed material in their possession or under control
displaying or promoting the goods which were or are being advertising, promoted, offered
for sale or sold in connection with the MJ Trade Dress and/or Designs, whether

alone or in
any combination with any words or designs.
4. That Defendants be required to supply Plaintiff with a complete list of entities
or individuals to whom they have offered for sale the goods which were or are being
advertising, promoted, offered for sale or sold in connection with the MJ Trade Dress and/or
Designs, whether

alone or in any combination with any words or designs, and be required to
contact such entities, inform them that such items in Defendants' catalog or on Defendants'
websites are no longer for sale and may no longer be offered for sale, and providing them with
the means of blacking out the offerings of infringing goods in such catalogs or other
advertising materials.
5. That Defendants be ordered pursuant to 15 U.S.C. 1116(a) to file, with the
Court and serve upon Plaintiff, within thirty (30) days of the entry of injunction prayed for
herein, a written report under oath or affirmed under penalty of perjury setting forth in detail
the form and manner in which it has complied with permanent injunction.
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6. That Defendants be required, pursuant to 15 U.S.C. 1117, to account to
plaint iffs for any and all profits derived by them, individually and/or jointly, and for all
damages sustained by Plaintiff by reason of Defendants actions complained of herein,
including an award of treble damages as provided for statute.
7. That Plaintiff be awarded actual damages to be proven at trial.
8. That Plaintiff be awarded as damages Defendants profits from its sale of the
Infringing Product
9. That Plaintiff be awarded treble its actual damages as a result of Clarks
knowing and willful misconduct;
10. That Plaintiff be awarded punitive damages.
11. That Plaintiff be awarded both pre-judgment and post-judgment interest on
each and every damage award.
12. That pursuant to 15 U.S.C. 1117 and N.Y. Gen. Bus. Law 349, Plaintiff
recovers from Defendants, its reasonable attorneys fees, costs and disbursements of this
civil action.
13. That Plaintiff receive such other and further relief as the Court may deem just
and proper.
DEMAND FOR JURY TRIAL

Plaintiff requests trial by jury of all issues so triable.

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Dated: New York, NY Gary L. Cutler, P.C.
August 19, 2013
By: _____/s/_________
Gary L. Cutler
New York, NY 10038
Tel.: (212) 227-4358
Fax: (973) 735-6663
gcutler@garycutlerlaw.com

Attorney for Marc Joseph NY, Inc.

The Lindner Law Firm LLC
Daniel A. Lindner, Esq.
2077 E. 4
th
Street, 2
nd
Floor
Cleveland, OH 44115
Tel.: (216) 737-8888
Attorney for March Joseph NY, Inc.
(Not Yet Admitted Pro Hac Vice)

JS 44 (Rev. 1/2013)
CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the c ivil docket sheet. (SEE lNSTRUCTIONS ON NEXT PAGE OF THIS FORM)
DEFENDANTS I. (a) PLAINTIFFS
Marc Joseph NY, Inc. C. & J. Clark America, Inc., C. & J. Clark, Ltd., C.& J. Clark Retail, Inc.
C. & J. Clark Manufacturing, Inc. and John Does 1-20
(b) County of Residence of First Listed Plaintiff Kings County, NY
(EXCEPT lN US. PLAlNTIFF CASES)
( C) Attorneys (Firm Name, Address, and Telephone Number)
Gary L. Cutler, P.C.
New York, NY 10038 - (212) 227-4358
County of Residence of First Listed Defendant Middlesex County, MA
(IN US. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
Attorneys (If Known)
Stephen P. McNamara, Esq.
St. Onge Steward Johnston & Reens LLC
986 Bedford St, Stamford. CT 06905 - (203) 324-6155
II. BASIS OF JURISDICTION (P/acean "X"inOneBoxOnly) ill. CITIZENSHIP OF PRINCIPAL PARTIES (Place an "X" in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
0 1 U.S. Government ~ 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State 0 1 0 I Incorporated or Principal Place 0 4 04
of Business In This State
0 2 U.S. Government 04 Diversity Citizen of Another State 0 2 0 2 incorporated and Principal Place 0 5 0 5
Defendant (Indicate Citizenship of Parties in Item l/l) of Business In Another State
0 3 0 3 Foreign Nation 0 6 0 6
IV. NATURE OF SUIT (Place an "X" in One Box Only)
I CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
0 I I 0 Insurance PERSONAL INJURY PERSONAL INJURY 0 625 Drug Related Seizure 0 422 Appeal 28 USC 158 0 375 False Claims Act
0 120 Marine 0 3 I 0 Airplane 0 365 Personal Injury - of Property 21USC881 0 423 Withdrawal 0 400 State Reapportionment
0 !30Miller Act 0 3 I 5 Airplane Product Product Liability 0 690 Other 28 USC 157 0 410 Antitrust
0 l 40 Negotiable Instrument Liability 0 3 67 Health Care/ 0 430 Banks and Banking
0 150 Recovery of Overpayment 0 320 Assault, Libel & Pharmaceutical PROPERTY RIGHTS 0 450 Commerce
& Enforcement of Judgment Slander Personal Injury 0 820 Copyrights 0 460 Deportation
0 I 5 I Medicare Act 0 330 Federal Employers' Product Liability 0 830 Patent 0 4 70 Racketeer Influenced and
0 152 Recovery of Defaulted Liabi lity 0 368 Asbestos Personal ~ 840 Trademark Corrupt Organizations
Student Loans 0 340 Marine Injury Product 0 480 Consumer Credit
(Excludes Veterans) 0 345 Marine Product Liability LABOR so ...... TS.Er 11.1TY
0 490 Cable/Sat TV
0 153 Recovery of Overpayment Liability PERSONAL PROPERTY 0 7 I 0 Fair Labor Standards 0 861 illA (1395ff) 0 850 Securities/Commodities/
of Veteran's Benefits 0 350 Motor Vehicle 0 370 Other Fraud Act 0 862 Black Lung (923) Exchange
0 160 Stockholders' Suits 0 355 Motor Vehicle 0 371 Truth in Lending 0 720 Labor/Management 0 863 DIWC/DTWW (405(g)) 0 890 Other Statutory Actions
0 I 90 Other Contract Product Liability 0 380 Other Personal Relations 0 864 SSID Title XVI 0 891 Agricultural Acts
0 195 Contract Product Liability 0 360 Other Personal Property Damage 0 740 Railway Labor Act 0 865 RSI (405(g)) 0 893 Environmental Matters
0 196 Franchise Injury 0 3 85 Property Damage 0 75 I Family and Medical 0 895 Freedom of Infonnation
0 362 Personal Injury - Product Liability Leave Act Act
Medical Maloractice 0 790 Other Labor Litigation 0 896 Arbitration
I REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 0 791 Employee Retirement FEDERAL TAX SUITS 0 899 Administrative Procedure
0 210 Land Condemnation 0 440 Other Civi l Ri ghts Habeas Corpus: Income Security Act 0 870 Taxes (U.S. Plaintiff Act/Review or Appeal of
0 220 Foreclosure 0 441 Voting 0 463 Alien Detainee or Defendant) Agency Decision
0 230 Rent Lease & Ejectment 0 442 Employment 0 5 IO Motions to Vacate 0 871 IRS- Third Party 0 950 Constitutionality of
0 240 Torts to Land 0 443 Housing/ Sentence 26 use 7609 State Statutes
0 245 Tort Product Liability Accommodations 0 530 General
0 290 All Other Real Property 0 445 Amer. w/Disabilities - 0 535 Death Penalty IMMIGRATION
Employment Other: 0 462 Naturalization Application
0 446 Amer. w/Disabilities - 0 540 Mandamus & Other 0 465 Other Immigration
Other 0 550 Civil Rights Actions
0 448 Education 0 555 Prison Condition
0 560 Civil Detainee -
Conditions of
Confinement
V_ ORIGIN (Place an ''X'' in One Box Only)
JI( I Original 0 2 Removed from
Proceeding State Court
0 3 Remanded from
Appell ate Court
O 4 Reinstated or
Reopened
0 5 Transferred from
Another District
(specify)
0 6 Multidistrict
Litigation
I
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
VI. CAUSE OF ACTION 1-1-5-u_._s_ .c_._1-12- 5--a_,_,_ ..._c..._. _____________________________ _
Brief description of cause:
VII. REQUESTED IN
COMPLAINT:
VIII. RELATED CASE(S)
IF ANY
DATE
08/19/2013
Trade dress infringement and trade dress dilution.
0 CHECK IF THIS IS A CLASS ACTION DEMAND $
UNDER RULE 23, F.R.Cv.P.
(See instructions):
FOR OFFICE USE ONLY
RECEIPT# AMOUNT APPLYING IFP
CHECK YES only if demanded in complaint:
JURY DEMAND: )!3 Yes 0 No
JUDGE MAG.JUDGE
Case 1:13-cv-04672-PKC-RER Document 1-1 Filed 08/19/13 Page 1 of 2 PageID #: 21
EDNY Revision 1/2013
CERTIFICATION OF ARBITRATION ELIGIBILITY
Local Arbitration Rule 83. 10 provides that with certain exceptions, actions seeking money damages only in an amount not in excess of $150,000,
exclusive of interest and costs, are eligible for compulsory arbitration. The amount of damages is presumed to be below the threshold amount unless a
certification to the contrary is filed.
I, , counsel for , do hereby certify that the above captioned civil action is
ineligible for compulsory arbitration for the following reason(s):
D monetary damages sought are in excess of$150,000, exclusive of interest and costs,
D the complaint seeks injunctive relief,
D the matter is otherwise ineligible for the following reason
DISCLOSURE STATEMENT - FEDERAL RULES CIVIL PROCEDURE 7.1
Identify any parent corporation and any publicly held corporation that owns 10% or more or its stocks:
None.
RELATED CASE STATEMENT (Section VIII on the Front of this Form)
Please list all cases that are arguably related pursuant to Division of Business Rule 50.3.1 in Section VIII on the front of this fonn. Rule 50.3.1 (a)
provides that "A civil case is "related" to another civil case for purposes of this guideline when, because of the similarity of facts and legal issues or
because the cases arise from the same transactions or events, a substantial saving of judicial resources is likely to result from assigning both cases to the
same judge and magistrate judge." Rule 50.3.1 (b) provides that" A civil case shall not be deemed "related" to another civil case merely because the civil
case: (A) involves identical legal issues, or (B) involves the same parties." Rule 50.3.1 (c) further provides that "Presumptively, and subject to the power
of a judge to determine otherwise pursuant to paragraph (d), civil cases shall not be deemed to be "related" unless both cases are still pending before the
court."
NY-E DIVISION OF BUSINESS RULE SO.l(d)(2)
1.) Is the civil action being filed in the Eastern District removed from a New York State Court located in Nassau or Suffolk

2.) If you answered "no" above:
a) Did the events or omissions giving rise to the claim or claims, or a substantial part thereof, occur in Nassau or Suffolk
County?_N_o_. _ _ ____ ___ _
b) Did the events of omissions giving rise to the claim or claims, or a substantial part thereof, occur in the Eastern
District? Yes.

If your answer to question 2 (b) is "No," does the defendant (or a majority of the defendants, ifthere is more than one) reside in Nassau or
Suffolk County, or, in an interpleader action, does the claimant (or a majority of the claimants, if there is more than one) reside in Nassau
or Suffolk County? ___ _____ _ _
(Note: A corporation shall be considered a resident of the County in which it has the most significant contacts).
BAR ADMISSION
I am currently admitted in the Eastern District of New York and currently a member in good standing of the bar of this court.
lgj Yes D No
Are you currently the subject of any disciplinary action (s) in this or any other state or federal court?
D Yes (If yes, please explain) lgj No
I certify the accuracy o

EXHIBIT 1

Marc Joseph NY v. Clark's - Complaint

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