“2 399 CIV 9608 CIM COVER SHEET “IS AACISDNY REV.172008 PLAINTIFFS DEFENDANTS PHP MORFS USA INC. ‘ccm ag we ry hi ORES OP. ‘Wir ste tcc na Sane ng eu veo SA oh “ATTORNEYS (HRM NANE, ADDRESS, AND TELEPHONE ROWBERY "ATTORNEYS (F KNOWN) ‘Arseld Porter LL? 09 Pad Aone tow York Wy 0022 12}7154000) ‘CAUSE OF ACTION ite TEU ENiL STATUTE INDER WHEN TOO ARE FING AO WRITEA BE? STATENENT CF CASE), “ragomark' en 19S. 174 fae degrote fag ard vad tess gmat, 18S. § 11a campeon onda of commen tow Has ths ora sinfar case been prevousy filed in SONY at any fre? No X Yes? 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Ridwnond, Vegi 22230 Hence County, VA DEFENDANTS) ADDRESS(ES) AND COUNTY(IES) 10S CORAZONES DELI GROCERY INC ALOSWE MINI MARKET WC FANCY DELIA GROCERY CORP “G88 Nadeon tore 1069 Guern Sct S402 Wil Palos Roed Nw Yor, New Yor 10028 Ber Now You 10063 Bron New Yo D087 HARLEM TOBAOGO GROCERY INC. sanpoeny bry ELBARRIO GROCERY DELI CORP. 1916 Adam Clayfon Powel, Sonencnee SoWost 18% Creek Bouvard rons New Yor 0466 ‘Brora, Mew ‘York 10483, New York. New York 10026 - DEFENDANT(S) ADORESS UNKNOWN REPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, | HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN THE RESIDENCE ADORESSES OF THE FOLLOWING DEFENOANTS: eet ‘Check one: THIS ACTION SHOULD BE ASSIGNED TO: OC WHITE PLAINS X FOLEY SQUARE RE nou SATE, OF TORRY OF RD aso yee No br Tre amr a secepra _NoaSoitasrwon ENS prmeemmaen agitate Judge isto be designated bythe Clerk ofthe Cour Magsvale Judge es Deaton 4. Miche! Mewanon, Clerk of County Deputy Ge, DATED ‘UNITED STATES DISTRICT COURT [NEW YORK SOUTHERN) MAASUNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK, PHILIP MORRIS USA INC., JUDGE SULLIVAN Plaintiff, Case No.: ve ECF CASE LOS CORAZONES DELI GROCERY INC. a New York corporation doing COMPLAL business as FERNANDEZ GROCERY 9 6 0 L BARRIO GROCERY DELI a New York corporation doing business as EL BARRIO GROCERY DELI; ALOSHE MINI MARKET INC. a New York corporation doing business as ALOSHE MINI MARKET; HARLEM TOBACCO GROCERY INC., aNew York corporation doing business as HARLEM TOBACCO & GROCERY; FANCY DELI & GROCERY CORP., a New York corporation doing business as FANCY DELI GROCERY: NEW FRIENDLY DELI-GROCERY CORP., a New York corporation doing business as SAEED. DELI GROCERY/FRIENDLY DELI GROCERY; and DOES ONE through TEN, inclusive, Defendants. 4 Plaintiff PHILIP MORRIS USA INC. (“Philip Morris USA”), for its Complaint herein -= z o against LOS CORAZONES DELI GROCERY INC., « New York corporation doing busingss 63 FERNANDEZ GROCERY CORP.; EL BARRIO GROCERY DELI CORP., a New Vork™ 4 corporation doing business as EL BARRIO GROCERY DELI; ALOSHE MINI MARKET INC., ‘a. New York corporation doing business as ALOSHE MINI MARKET; HARLEM TOBACCO GROCERY INC., 2 New York comporation doing business as HARLEM TOBACCO & GROCERY; FANCY DELI & GROCERY CORP., a New York corporation doing business as FANCY DELI GROCERY; NEW FRIENDLY DELI-GROCERY CORP., a New Yorkcorporation doing business as SAEED DELI GROCERY/FRIENDLY DELI GROCERY; and DOES ONE through TEN, inclusive (collectively “Defendants”), alleges as follows: SURISDICTION AND VENUE 1. This Court has jurisdiction over this action pursuant to: (i) 28 US.C. $§ 1331, 1338(a) and (b); (ii) 15 U.S.C. § 1121, as an action for violation of the Lanham Act, 15, USC. §§ 1051 ef seq. and (iii) 28 U.S.C. § 1367(a), pursuant to the principles of supplemental jurisdiction. 2. Philip Mortis USA is informed and believes and thereupon alleges that venue is proper in this district pursuant to 28 U.S.C. § 1391(b) in that, among other things, Defendants reside or are found in this judicial district and a substantial part of the events or omissions giving rise to the claims herein occurred in this judicial district. NATURE OF THE ACTION 3. This is an action for: (i) infringement of registered trademarks in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114; (ii) false designation of origin and trademark and trade dress infringement in violation of Scction 43(a) of the Lanham Act, 13 U.S.C. § 1125(2); Git) unfair competition in violation of the common law of the State of New ‘York; (iv) trademark infringement in violation of the common law of the State of New York; (~) deceptive acts and practices in violation of New York General Business Law Section 349; and (vi) trademark infringement in violation of New York General Business Law Sections 360-k et seq. As described more fully below, Defendants have sold, offered for sale, or otherwise contributed to the sale of counterfeii MARLBORO® brand cigarettes, and are therefore liable for direct andior contributory infringement of Philip Morris USA's lawfully owned trademarks and trade dress. Defendants’ conduct has produced and, unless enjoined by this Court, will continueto produce a likelihood of consumer confusion and deception as well as irreparable injury to Philip Morris USA. 4, For several decades, Philip Morris USA has used, in connection with its tobacco products, the MARLBORO® trademark and various other trademarks incorporating the word MARLBOROB and/or the MARLBORO Roof Design® trademark, a pentagonal figure with a horizontal top and two vertical sides with two upwardly and inwardly sloping diagonals (collectively, the “Marlboro Trademarks”). Philip Morris USA has spent substantial time, effort and money advertising and promoting the Marlboro Trademarks throughout the United States, and these trademarks have consequently developed significant goodwill, have become distinetive, and have acquired secondary meaning. 5. Inanattempt to profit from Philip Morris USA’s substantial investment in its Marlboro Trademarks, Defendants have sold cigarettes in packaging that bears spurious marks that are either identical to or substantially indistinguishable from the Marlboro Trademarks. ‘Consumers naturally would expect that cigarettes sold in packaging that hears the famous Marlboro Trademarks would be manufactured, licensed or sponsored by Philip Mortis USA However, Philip Mortis USA has confirmed that the cigarettes at issue were not manufactured, licensed or sponsored by Philip Morris USA and arc counterfeit. Thus, consumers are likely to be confused and/or disappointed by obtaining counterfeit cigarettes when they intended to purchase genuine MARLBORO® brand cigarettes manufactured and sold by Philip Morris USA. 6. As a result of Defendants’ actions, Philip Morris USA is suffering a loss of the ‘enormous goodwill Philip Morris USA created in its MARLBORO® brand products and is losing profits trom lost sales of genuine products. This ection seeks permanent injunctive relief and damages for Defendants’ infringement of Philip Morris USA's intellectual property rights.THE PARTIES 7. Plaintiff Philip Mortis USA is 2 corporation organized and existing under the laws of the Commonwealth of Virginia with its principal place of business at 6501 West Broad Street, Richmond, Virginia 23230. 8. Defendant Los Corazones Deli Grocery, Ine. is a corporation organized and existing under the laws of the State of New York with its principal place of business at 1665 Madison Avenue, New York, New York 10029. Defendant Los Corazones Deli Grocery, Inc. is doing business as Fernandez Grocery Corp., located at 1665 Madison Avenue, New York, New York 10029. 9. Defendant El Barrio Grocery Deli Corp. is a corporation organized and existing under the laws of the State of New York with its principal place of business at 39 West 183" Street, Bronx, New York 10453. Defendant El Barrio Grocery Deli Corp. is doing business as El Barrio Grocery Deli, located at 39 West 183 Street, Bronx, New York 10453. 10, Defendant Aloshe Mini Market Inc., is a corporation organized and existing under the laws of the State of New York with its principal place of business at 1889 Guerlain Street, Bronx, New York 10463. Defendant Aloshe Mini Market Inc. is doing business as Aloshe Mini Market, located at 1889 Guerlain Street, Bronx, New York 10463. 11. Defendant Harlem Tobaceo Grocery Inc. is a corporation organized and existing under the laws of the State of New York with its principal place of business at 1916 Adam Clayton Powell, Jr. Boulevard, New York, New York 10026, Defendant Harlem Tobacco. Grocery Inc. is doing business as Harlem Tobacco & Grocery, located at 1916 Adam Clayton Powell, Jr. Boulevard, New York, New York 10026. 12. Defendant Fancy Deli & Grocery Comp. is ¢ corporation organized and existing under the laws of the State of New York with its principal place of business at 3540-42 WhitePlains Road, Bronx, New York 10467. Defendant Fancy Deli & Grocery Corp. is doing business ‘as Fanoy Deli Grocery, located at 3540-42 White Plains Road, Bronx, New York 10467. 13. Defendant New Friendly Deli-Grocery Corp. is a corporation organized and existing under the laws of the State of New York with its principal place of business at 3949 White Plains Road, Bronx, New York 10466. Defendant New Friendly Deli-Grocery Corp. is doing business as Saced Deli Grocery/Friendly Deli Grocery, located at 3949 White Plains Road, Bronx, New York 10466, 14, Philip Morris USA does not know the true names and capacities of the Defendants sued herein es Docs One through Ten, inclusive, and therefore sues these Defendants, by such fictitious names. Philip Morris USA will amend this Complaint to allege the true names and capacities of these Defendants when it ascertains the same. FACTS GIVING RISE TO THIS ACTION A. ‘The Infringed Trademarks 15. Philip Morris USA is the United States owner of the famous Marlboro ‘Trademarks under which MARLBORO® brand cigarettes are sold. The Marlboro Trademarks include, without limitation, MARLBORO® and MARLBORO LIGHTS®. Philip Morris USA has invested substantial time, effort and money in advertising and promoting the Marlboro Trademarks throughout the United States, The vast majority of MARLBORO® advertising and promotional activities display the Roof Design® trademark and/or a MARLBORO® word trademark. Asa result, the Marlboro Trademarks are reportedly among the most widely recognized trademarks in the United States, and Philip Morris USA hes developed significant goodwill in these trademarks, Today, the MARLBORO® brands are the most popular brands of cigarettes sold in the United States.16. Philip Morris USA is the registered owner of the following trademarks on the Principal Register of the United States Patent and Trademark Office (“USPTO”), all of which are valid, subsisting and incontestable pursuant to 15 U.S.C. § 1065: Registration Registration ‘Trademark Number Date 68,502 April 14, 1908 MARLBORO 938,510 July 25, 1972 MARLBORO Red Label 1,039,412 May 11, 1976 MARLBORO LIGHTS 1,039,413 May 11,1976 | MARLBORO LIGHTS Label ‘Truc and correct copies of these registration certificates and/or computer printouts from the records of the USPTO are attached hereto as Exhibits B through E. B. Defondants? Sale of Counterfeit Cigarettes 17, Philip Morris USA manufactures cigarettes, including the famous MARLBORO® brand, for sale in the United States. Retail establishments throughout the United States offer these cigarettes for sale to the adult public. 18. In October and November 2009, employees of an independent firm retained on behalf of Philip Morris USA by the Brand Integrity Department of Altria Client Services Inc. (“Brand Integrity”) purchased one or more packs of cigarettes beating the MARLBORO® trademarks from the named Defendants’ retail establishments, ‘The dates of these purchases and brands purchased are listed in Exhibit A, attached hereto, 19. The purchasers caused the purchased packs of cigarettes to be delivered to a Brand Integrity facility. Upon receiving the cigarette packs, Brand Integrity employees ‘examined them using a series of confidential and proprietary inspection methods andconclusively determined that one or more of the packs purchased from each Defendant's retail establishment were counterfeit. c Likelihood of Confusion and Injury Caused by Defendants’ Actions 20. Counterfeit MARLBORO brand cigarettes are not the same or of the same ‘quality as those manufactured and sold by Philip Morris USA under the samme brand name. AS such, consumers who purchase counterfeit MARLBOROB brand cigarettes arc likely to be contfused anc/or disappointed by obtaining counterfeit cigarettes when they intended to purchase genuine MARLBORO® brand cigarettes. In addition, the sale of counterfeit MARLBORO® brand cigarettes is likely to cause confusion among consumers regarding Philip Morris USA’s Sponsorship or approval of the counterfeit cigarettes. As a result of Defendants? actions, Philip Morris USA is suffering a loss of the enormous goodwill Philip Morris USA created in its MARI-BORO® brand products and is losing profits from lost sales of genuine products. 21. Defendants are likely to continue to commit the acts complained of herein, and unless restrained and enjoined, will continue to do so, all to Philip Morris USA’s irreparable damage. FIRST CLAIM FOR RELIEF (or Infringement of Registered Trademarks in Violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1)) 22. Philip Morris USA specifically realleges and incorporates herein by reference each and every allegation contained in Paragraphs | through 21 hereof. 23. ‘The acts of Defendants alleged herein constitute the use in commerce, without the consent of Philip Mortis USA, of a reproduction, counterfeit, copy, or colorable imitation of one or more of the Marlboro Trademarks in connection with the sale, offering for sale, distribution, or advertising of goods, which use is likely to cause confusion or mistake, or to deceive‘consumers and therefore infringe Philip Morris USA"s rights in one or more of the Marlboro ‘Trademarks, in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1). 24. Defendants’ use of the counterfeit versions of the Marlboro Trademarks was willful, intentional and done with knowledge that the marks used were counterfeit marks, as defined in Section 34(d)(1)(B) of the Lanham Aci, 15 U.S.C. § 1116(@)(1)B), 25, Philip Morris USA has no adequate remedy at law for the foregoing wrongful conduct. Philip Morris USA has been, and absent injunctive relief will continue to be, irreparably harmed by Defendants’ actions. SECOND CLAIM FOR RELIEF (For False Designation of Origin and Trademark and Trade Dress Infringement in Violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1128(a)(1)(A)) 26. Philip Mortis USA specifically realleges and incorporates herein by reference ‘cach and every allegation contained in Paragraphs | through 25 hereof. 27. Theacts of Defendants alleged herein constitute the use in interstate commerce of a word, term, name, symbol, or device, or any combination thereof, or false designation of origin, in connection with the sale, or offering for sale, of goods in violation of section 43(a)(1 (A) of the Lanham Act, 15 U.S.C. § 1125(a)(I)(A). These acts of Dofendants are likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendants with Philip Mortis USA, of as to the origin, sponsorship, or approval of counterfeit cigarettes by Philip Morris USA. 28. Defendants? use of the counterfeit versions of the Marlboro Trademarks was willful, intentional and done with knowledge that the marks used were counterfeit marks, as defined in Section 34(d)(1)(B) of the Lanham Act, 15 U.S.C. § 1116(4)(1)(B).