2Patent & Trademark Office. Accordingly, the counterclaims seeking cancellation should bedismissed without prejudice.
Counterclaims for Tortious Interference and Unfair Competition
. YSL’s fifth andsixth counterclaims, for tortious interference and unfair competition, are based on Louboutin’sefforts in early 2011 to pressure certain retailers to return to YSL the red monochromatic shoeschallenged in this case. Although YSL maintains its view that such actions were wrongful, YSLwas able to mitigate some of its damages by re-selling the returned inventory at YSL boutiquesor through e-commerce. In light of that, and given its desire to refocus its energies on its business and creative designs, YSL has decided that these claims are no longer worth pursuing.Accordingly, YSL voluntarily dismisses those counterclaims with prejudice.
Louboutin filed its Complaint and moved for a preliminary injunction on April 7, 2011,challenging four models of red monochromatic shoes sold by YSL, and asserting federaltrademark claims and related state law claims. YSL filed an Answer and Counterclaims on May20, 2011, and an Amended Answer and Counterclaims on June 27, 2011. YSL asserted sixcounterclaims: four seeking cancellation of Louboutin’s federal Trademark Registration onvarious grounds, and the two for tortious interference and unfair competition, respectively, basedon Louboutin’s efforts in early 2011 to pressure certain retailers to return to YSL the redmonochromatic shoes challenged in this case.On July 22, 2011, this Court held a hearing on Louboutin’s motion for a preliminaryinjunction. Preceding the hearing was a period for expedited discovery and full briefing, but both the discovery and the briefing were limited to issues raised by Louboutin’s motion; they didnot include any discovery or briefing on YSL’s counterclaims. To date, no discovery of any kindhas been taken or exchanged on the counterclaims.
Case 1:11-cv-02381-VM Document 69-1 Filed 10/16/12 Page 3 of 7